DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Claims 18-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/10/2026.
Applicant’s election without traverse of Group I, claims 1-17 in the reply filed on 02/10/2026 is acknowledged.
Claim Interpretation
The phrase “basic composition” is not seen to refer to the pH of the composition as there is no mention of pH in the instant specification. Rather, the term “basic composition” is understood to be a composition that can then be combined with other materials [041].
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 requires a roasted coffee grind. Based upon the specification, a coffee “grind” is considered coffee beans that have been ground (i.e. broken apart). However, claim 3 states that the mixture comprising coffee in a form of whole beans OR in a form of a grind having a particle size greater than 25 microns and fat is ground to reach the particle size between 5 and 25 microns that is recited in claim 1. Here, the scope of claim 1 is rendered unclear as it is not clear if claim 1 is intended to encompass both a coffee grind and a coffee bean. Moreover, it is not clear in claim 3 if “a mixture” is a different mixture from that formed by the “mixing step” of claim 1. There are only two materials mixed in claim 1, coffee grind and fat. However, claim 3 (assuming that claim 3 further narrows claim 1, i.e. compliant with 112(d)), refers to ground coffee mixed with fat and ground to reach the particle size recited in claim 1. Clarity is requested as to whether claim 1 encompasses mixing coffee beans with fat followed by grinding as well as mixing coffee grind (i.e. coffee that has already been ground) with fat and then ground again to reach the claimed range of between 5-25 microns. The instant specification encompasses embodiments where grind OR beans are mixed with fat and subsequently ground together, thus claim 1 based upon the limitations of claim 3 will be interpreted in a manner consistent with the specification.
Claim 4 recites “and a liquid or at least partially liquid state at a temperature above 35C, or 32C”. It is not clear if “above” applies to both 35C and 32C or if 32C is an exact temperature with no range associated. If the intent is that the claim should be interpreted as “above 32C”, an amendment as such is suggested.
Note that the claim currently appears to encompass temperatures from 20C and above (between 20C and 35C and above 35) and the basic preparation can be solid, liquid, or partially solid/liquid for the entirety of this range. In other words, the claim does not limit any part of the temperature range to being solid or liquid since each range includes “at least partially” for both solid and liquid. “Partially liquid” and “partially solid” are each interpreted as being including a form that is part solid and part liquid.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3, 4, 8, 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2017/171849 (Abaurre) (cited on IDS filed 10/24/2024).
Regarding claims 1 and 10, Abaurre discloses roasting beans, then milling the beans to a diameter of 75-110 microns, lowering the temperature to 25-45C and blending the milled beans with cocoa butter in a mixer, followed by milling the beans (milled previously) to a diameter of 15-30 microns. Thus, Abaurre discloses providing a fat (cocoa butter) and roasted coffee grind (milled beans), mixing (blending) the fat and roasted milled beans, milling to a particle size of 15-30microns which overlaps with sufficient specificity the claimed range of 5-25microns, and the mixing temperature is kept between 28-45C which falls within the claimed range of 28-85C.
Regarding claim 3, Abaurre discloses grinding the coffee beans to a first diameter of 75-110microns which is within the claimed range of “greater than 25 microns”. The milled coffee beans with size 75-110 microns are blended with the fat and then milled again to the final size of 15-30 microns.
Regarding claim 4, the ground coffee and cocoa butter is expected to have a partial solid or partial liquid form in the claimed temperature ranges since Abaurre discloses finely ground coffee and cocoa butter which are the same materials recited in the claims.
Regarding claim 8, Abaurre discloses cocoa butter.
Regarding claim 9, Abaurre discloses roasting the coffee beans.
Claim(s) 1, and 3-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2007/0212453 (Niness) (cited on IDS filed 10/24/2024).
Regarding claims 1, 5, 6 and 8, Niness discloses pre-milling fresh roasted coffee beans [0049] before mixing with other particulates. In example 1, granular sucrose, ground coffee beans, whole milk powder and cocoa butter (fat) are mixed together to form a paste and the milled to a particle size of approximately 20 microns, preferably below 20 microns [0051-52]. The powder is then mixed at 140F (60C).
Regarding claims 3 and 10, Niness discloses that pre-milling is to approximately 100-200 microns and the paste mix is a particle size of approximately 20 microns [0049-0051]. Example 1 discloses 400 microns and 20 microns.
Regarding claim 4, the formation of a paste is considered partially liquid and partially solid.
Regarding claim 7, the cocoa butter is 23wt% and coffee is 4.6wt%.
Regarding claim 9, Niness discloses using roasted coffee beans.
Regarding claim 10, Niness discloses milling/grinding [0049]
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2, 5, 6, 7 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/171849 (Abaurre) (cited on IDS filed 10/24/2024).
Abaurre discloses the method of encapsulating coffee grind as disclosed above.
Regarding claim 2, Abaurre does not disclose grinding to the particle size of 5-25 microns before mixing with cocoa butter. However, it would have been obvious to change the order of steps with a reasonable expectation that the finally formed product would be essentially identical and useful in the same manner.
See MPEP 2144.04(IV)(C) Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
Moreover, since Abaurre discloses milling twice, one of ordinary skill would have found it obvious to mill a second time to ensure the desired final particle size even if the original size of the ground coffee was within the claimed range. Ensuring the desired final particle size by a second milling step would have been obvious to one of ordinary skill in the art. Alternatively, milling to a fine level at the outset could remove the need for the second milling or decrease the time needed to mill to the desired level.
Regarding claim 5, the particle range of 15-30 microns overlaps the claimed range of 10-20 microns and therefore presents a prima facie case of obviousness.
Regarding claim 6, Abuerre discloses that the mixing temperature is kept between 28-45C which overlaps the claims range of 35-70C and therefore presents a prima facie case of obviousness.
Regarding claim 7, Abuerre discloses the fat is between 40-70wt% and the coffee grind is 30-60wt% which overlap the claimed ranges of 15-55 wt% and 1-40 wt%, respectively and are therefore obvious.
Claim(s) 11, 12, and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/171849 (Abaurre) (cited on IDS filed 10/24/2024) and further in view of BR 102017015717-2 (Abaurre II).
Abaurre discloses the method of encapsulating coffee grind as disclosed above.
Abaurre II discloses a method for producing an encapsulated powdered coffee liquor from finely ground roasted whole coffee beans in the range of 2-20 microns, and where the encapsulated ground coffee liquor may be used to manufacture other products (abstract).
The method of Abaurre II includes roasting green coffee beans, grinding the roasted beans reaching the range of 1-10 microns, mixing the coffee powder with vegetable oil (such as palm oil, palm kernel, coconut, cotton, sunflower, corn or soy) and storing the mass in a storage tank with a hot water jacket and mechanical stirrer at preferably 30C. Abaurre II discloses that from the coffee in instant powder encapsulated agglomerated form, it is possible to prepare a vertical line of edible products and drinks, where the flavor of the fresh roasted coffee bean is maintained. Abaurre discloses mixing the encapsulated solubilized powdered coffee liquor with other materials to form drinks [0046-0048]. For example, 4-8wt% of the powdered coffee liquor may be mixed with 4-20wt% whole or skimmed milk powder (dairy) and 20-50wt% sugar (sweetener) (Examples 5 and 6). The powdered coffee liquor may also be used for espresso blend (Example 7) and for making cappuccino-type cakes and cookies where 4-14wt% of the powdered coffee liquor is combined with 4-20wt% powdered milk, 4-8wt% starch, 4-20 wt% wheat flour and 20-50wt% sugar (Example 9). Also mousse, flan, puddings and sorbets may be prepared with 4-8wt% powdered coffee liquor, 4-20wt% powdered milk, 0.5-4wt% gum (emulsifier) and 20-50wt% sugar. Thus, Abaurre II discloses adding to the encapsulated coffee other additives depending upon the desired food product. It would have been obvious to use the encapsulated coffee of Abaurre in a similar manner disclosed by Abaurre II to form various food products with coffee flavoring with a reasonable expectation of success since the coffee products of Abaurre and Abaurre II are both finely ground coffee encapsulated in oil and one would expect a similar outcome of conferring a coffee flavor to the food product using the coffee powder of Abaurre when used in a manner disclosed by Abaurre II.
Further regarding claim 11, it would have been obvious to one of ordinary skill to homogenize the mixture of the coffee powder and other ingredients to ensure dispersion of the coffee powder flavoring and other ingredients in an even distribution. Mixing of ingredients is well known to provide an even distribution of the materials and one of ordinary skill would have found it obvious to do so.
Regarding claim 12, as discussed above, Abaurre II discloses sugar, dairy and gums (emulsifiers).
Regarding claim 15, Abaurre II discloses the sugar may be added in amounts of 20-50wt% which falls within the range claimed.
Regarding claim 16, Abaurre II discloses dairy (milk powder) in amounts including 4-20wt% falling within the claimed range.
Regarding claim 17, Abaurre II discloses gums in an amount of 0.5-4wt% which falls within the claimed range.
Claim(s) 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/171849 (Abaurre) (cited on IDS filed 10/24/2024) and further in view of EP 2724621 (Abaurre III) (cited on IDS filed 10/24/2024).
Abaurre discloses the method of encapsulating coffee grind as disclosed above but does not disclose additions to the encapsulated coffee grind.
Abaurre III discloses a similar process of forming a mixture of coffee grind and cocoa butter (claim 1 of Abaurre III) to form coffee liquor and that it is possible to obtain solid bars made of coffee liquor, capable of maintaining the R&G coffee's organoleptical properties stable for a large period of time, ensuring a shelf life of up to one year for the product. From the coffee liquor solid bars, it is then possible to prepare a interlinked family line of composite coffee-based products formulated with other ingredients, with application to various market segments such as the industrial, foodservice and domestic ones.
Abaurre III discloses that in the method of making the coffee liquor the oil/coffee is milled to a particle fineness of 50-75 microns and formed into a coffee liquor plastic filled moulds to make bars (molded). These coffee liquor bars are then used in a process where the bars are liquefied and combined with sugars, powdered milks, sweeteners, and more cocoa butter and then mixed together. This composite mass is then milled to reach a fineness of 10-50 microns (claim 2 of Abaurre). Thus, Abaurre III discloses adding ingredients (additives) to the basic preparation of the coffee/oil composite and then grinding the mixture of additives and coffee/oil to reach a fineness of 10-50 microns, thus considered homogenized.
It would have been obvious to one of ordinary skill in the art to use the coffee/oil composite of Abaurre in the method of Abaurre III to form various food products with coffee flavoring with a reasonable expectation of success since the coffee products of Abaurre and Abaurre III are both finely ground coffee encapsulated in oil and one would expect a similar outcome of conferring a coffee flavor to the food product using the coffee powder of Abaurre when used in a manner disclosed by Abaurre III.
Regarding claims 12 and 15, the examples of Abaurre III include 25-50wt% sugar.
Regarding claim 13, as noted above, Abaurre III discloses grinding the mixture of ingredients to a fineness range of 10-50 microns (claim 2 of Abaurre III) and the examples provide more narrow ranges.
Regarding claim 14, Abaurre III discloses missing the ingredients under a temperature range of 45-70C which falls within the claimed range (claim 2 of Abaurre III).
Regarding claim 16, Abaurre III discloses 6-14 wt% milk powder in Example 2.
Claim(s) 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over US 2007/0212453 (Niness) (cited on IDS filed 10/24/2024).
Regarding claim 2, Niness does not disclose grinding to the particle size of 5-25 microns before mixing with cocoa butter. However, it would have been obvious to change the order of steps with a reasonable expectation that the finally formed product would be essentially identical and useful in the same manner.
See MPEP 2144.04(IV)(C) Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
Moreover, since Niness discloses milling twice, one of ordinary skill would have found it obvious to mill a second time to ensure the desired final particle size even if the original size of the ground coffee was within the claimed range. Ensuring the desired final particle size by a second milling step would have been obvious to one of ordinary skill in the art. Alternatively, milling to a fine level at the outset could remove the need for the second milling or decrease the time needed to mill to the desired level.
Regarding claim 5, the disclosure of Niness of preferably below 20 microns is seen to anticipate the range of claim 5. Alternatively, the disclosure of approximately 20 microns is seen to be so close as to not be patentably distinct from “between 10 microns and 20 microns”. Still further, the “below 20 microns” is seen to obviate the claimed range as well.
Claim(s) 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over EP 2724621 (Abaurre III) (cited on IDS filed 10/24/2024) in view of WO 2017/171849 (Abaurre) (cited on IDS filed 10/24/2024).
Regarding claims 1 and 11, Abaurre III discloses a process of forming a mixture of coffee grind and cocoa butter (claim 1 of Abaurre III) to form coffee liquor and that it is possible to obtain solid bars made of coffee liquor, capable of maintaining the R&G coffee's organoleptical properties stable for a large period of time, ensuring a shelf life of up to one year for the product. From the coffee liquor solid bars, it is then possible to prepare a interlinked family line of composite coffee-based products formulated with other ingredients, with application to various market segments such as the industrial, foodservice and domestic ones.
Abaurre III discloses that in the method of making the coffee liquor the oil/coffee is milled to a particle fineness of 50-75 microns and formed into a coffee liquor plastic filled moulds to make bars (molded). These coffee liquor bars are then used in a process where the bars are liquefied and combined with sugars, powdered milks, sweeteners, and more cocoa butter and then mixed together. This composite mass is then milled to reach a fineness of 10-50 microns (claim 2 of Abaurre III). Thus, Abaurre III discloses adding ingredients (additives) to the basic preparation of the coffee/oil composite and then grinding the mixture of additives and coffee/oil to reach a fineness of 10-50 microns, thus considered homogenized.
Abaurre III does not disclose the coffee/cocoa butter formed into the coffee liquor has a particle size of 5-25microns. Abaurre discloses providing a fat (cocoa butter) and roasted coffee grind (milled beans), mixing (blending) the fat and roasted milled beans, milling to a particle size of 15-30microns which overlaps with sufficient specificity the claimed range of 5-25microns, and the mixing temperature is kept between 28-45C which falls within the claimed range of 28-85C. As Abaurre discloses that a particle size range of 15-30 microns is useful for forming a coffee/cocoa butter composite for use in food products, it would have been obvious to form the composite coffee/cocoa butter of Abaurre III with a similar size, absent a showing of unexpected results. Moreover, Abaurre III discloses forming the composite product with other materials present to a fineness of 10-50 microns which indicates that the particular size of the coffee/cocoa butter could be provided in a similar size since the finally formed product may be provided at greater fineness.
Regarding the mixing temperature of claim 1 and claim 6, Abaurre III does not disclose mixing at a temperature of 28-85C or 35-70C but does disclose storing at a temperature of 35-55C. Abaurre discloses the mixing temperature is kept between 28-45C which falls within the claimed range of 28-85C and overlaps the range of 35-70C. It would have been obvious to one of ordinary skill to mix the cocoa butter/coffee of Abaurre III at the temperature disclosed by Abaurre as it is demonstrated as an effective temperature for mixing the same ingredients and there is no disclosure in Abaurre III that the mixing temperature is critical and even discloses storing at a temperature of 35-55C which falls within the ranges of claims 1 and 6.
Regarding claims 2, 3, and 5, the particle size is addressed above. Further, Abaurre III does disclose grinding before mixing with cocoa butter thus meeting the order of steps of claim 2. However, with regard to claims 3 and 5, it would have been obvious to change the order of steps with a reasonable expectation that the finally formed product would be essentially identical and useful in the same manner.
See MPEP 2144.04(IV)(C) Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
Regarding claims 4 and 8, Abaurre III discloses cocoa butter and ground coffee, thus providing the same ingredients as claimed.
Regarding claim 7, Abaurre III discloses overlapping ranges of 10-75wt% coffee and 25-90wt% cocoa butter, thus providing a prima facie case for obviousness.
Regarding claim 9, Abuerre III discloses the use of roasted coffee.
Regarding claim 10, Abaurre III discloses cryogenic grinding (abstract).
Regarding claims 12 and 15, the examples of Abaurre III include 25-50wt% sugar.
Regarding claim 13, as noted above, Abaurre III discloses grinding the mixture of ingredients to a fineness range of 10-50 microns (claim 2 of Abaurre III) and the examples provide more narrow ranges.
Regarding claim 14, Abaurre III discloses missing the ingredients under a temperature range of 45-70C which falls within the claimed range (claim 2 of Abaurre III).
Regarding claim 16, Abaurre III discloses 6-14 wt% milk powder in Example 2.
Claim(s) 17 is rejected under 35 U.S.C. 103 as being unpatentable over EP 2724621 (Abaurre III) (cited on IDS filed 10/24/2024) in view of WO 2017/171849 (Abaurre) (cited on IDS filed 10/24/2024) and further in view of BR 102017015717-2 (Abaurre II).
Abaurre III and Abaurre disclose making food products, but do not disclose using an emulsifier. Emulsifiers are well-known in food products and are used depending upon the food product made.
Abaurre II discloses a method for producing an encapsulated powdered coffee liquor from finely ground roasted whole coffee beans in the range of 2-20 microns, and where the encapsulated ground coffee liquor may be used to manufacture other products (abstract).
The powdered coffee liquor may be used for espresso blend (Example 7) and for making cappuccino-type cakes and cookies where 4-14wt% of the powdered coffee liquor is combined with 4-20wt% powdered milk, 4-8wt% starch, 4-20 wt% wheat flour and 20-50wt% sugar (Example 9). Also mousse, flan, puddings and sorbets may be prepared with 4-8wt% powdered coffee liquor, 4-20wt% powdered milk, 0.5-4wt% gum (emulsifier) and 20-50wt% sugar. Thus, Abaurre II discloses adding to the encapsulated coffee other additives depending upon the desired food product. It would have been obvious to use the encapsulated coffee of Abaurre in a similar manner disclosed by Abaurre II to form various food products with coffee flavoring with a reasonable expectation of success since the coffee products of Abaurre and Abaurre II are both finely ground coffee encapsulated in oil and one would expect a similar outcome of conferring a coffee flavor to the food product using the coffee powder of Abaurre when used in a manner disclosed by Abaurre II.
Regarding claim 17, Abaurre II discloses gums in an amount of 0.5-4wt% which falls within the claimed range and depending upon the food product in which the powdered coffee liquor is incorporated, the use of an emulsifier as exemplified by Abaurre would have been obvious to one of ordinary skill.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER C MCNEIL whose telephone number is (571)272-1540. The examiner can normally be reached M-F 9-5.
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JENNIFER C. MCNEIL
Primary Examiner
Art Unit 1793
/Jennifer McNeil/ Primary Examiner, Art Unit 1793