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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/1/2026 has been entered.
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.
Claim 16 is 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.
The limitation “to a highest roast temperature or end of roast temperature” renders the claim indefinite since the value of the recited temperatures is unclear. The claim previously recited “to at least around 230oC” which established an upper bound. The amended claim no longer recites an upper bound, and therefore it is unclear what value(s) is/are encompassed by “a highest roast temperature” and “end of roast temperature”. It is further unclear what the difference is between said temperatures, and if either of said temperatures is the “250oC” recited by claim 1.
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.
Claims 1-4, 7, 11-13, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Wasserman et al. (US 6,207,211 B1) in view of Eichner (US 6,607,768 B1) and Hernandez et al. “Analysis of the heat and mass transfer during coffee batch roasting”.
Regarding claim 1, Wasserman et al. teaches a two-stage roasting process of green coffee beans (abstract) comprising a step of heating the beans from a temperature of 352oF to 448oF (178 to 231oC) or 350oF to 450oF (177 to 232oC) in one minute (column 5 to column 6, examples 4 and 5), resulting in a rate of 53 or 55oC per minute.
Wasserman et al. does not teach raising the temperature of the beans from around 80oC to around 170oC at a rate of 5-18oC/minute and from around 170oC to around 200oC at a rate of 5-15oC/minute.
However, the reference teaches a two-step roasting process where the first step is performed at a lower temperature for a longer period of time (examples 4 and 5).
Eichner teaches a method of roasting coffee beans (abstract), where coffees with “highly desirable tastes” have been produced by using concave-upward bean-temperature-versus-time profiles i.e., by using bean temperatures that rise slowly at the start of the roast and then rise sharply at the end of a roast (figure 4 profile 204; column 16 lines 21-46). The inlet gas temperature is controlled to increase gradually with time to obtain the desired profile (column 16 lines 51-56). Further, changing the roasting time and bean-temperature-versus-time curve shape yields coffees having different chemical compositions and taste, even when the final roast color is the same (column 16 lines 16-20).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the process of Wasserman et al. to perform roasting such that the bean temperature rises through the claimed ranges at the claimed rates since the reference already teaches multiple heating stages, since the prior art recognizes the temperature/time curve can be controlled to obtain a “concave” profile having lower initial rates of temperature increase, and thus to obtain roasting coffee having desirable flavor, since the evidence of record does not indicate criticality or unexpected results, and since the ranges would have been used during the course of routine experimentation and optimization procedures due to factors such as the characteristics of the bean itself, and desired flavor, aroma, or color.
Wasserman et al. does not teach heating to around 250oC.
Hernandez et al. teaches roasting the beans to a temperature above 250oC, where the temperature of the bean raises from 200 to 250oC in a time period of less than about 1 minute (figure 4 “T’ air 300 oC”). The rate would therefore be “at least around 25oC/minute”.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the process of Wasserman et al. to heat the beans to about 250oC since the prior art recognizes the claimed range, since heavily roasted beans are known in the art e.g., French, Espresso, Italian, etc., since the evidence of record does not indicate criticality or unexpected results, and since the values would have been used during the course of routine experimentation and optimization procedures due to factors such as type of beans, desired roasting level, color, aroma, and density.
Regarding claims 2-4, the combination applied to claim 1 teaches heating the beans from about 200oC to about 250oC at a rate of “at least around 25oC/minute” as taught by Hernandez et al., but does not teach the range temperature increase rates recited by claims 2-4.
However, Wasserman et al. teaches different types of coffee are shown to be roasted using different maximum temperatures and rates (examples 1-7). The process results in roasted beans having a reduced free flow density similar to fast roast coffee, said fast roast coffee providing advantages over conventional roasted coffees (column 1 lines 23-37; column 3 lines 41-45). Further, the method obtains enhanced methanethiol content for desirable aroma in the packaging (column 1 lines 45-53).
While the range temperature increase rates recited by claims 2-4 are not explicitly taught, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the process of Wasserman et al. to roast at the claimed rates since the references already acknowledges adjusting roasting parameters based on coffee type, for the reasons stated for claim 1, and since the values would have been used during the course of routine experimentation and optimization procedures due to factors such as type of beans, desired color, aroma, and density.
Regarding claim 7, Wasserman et al. teaches the process comprises reducing the moisture content of the coffee to “preferably about 5% by weight” (column 4 lines 45-46), and therefore reads on “no more than around 5 %wt.”
Regarding claim 11, Wasserman et al. teaches the roasted beans are cooled by quenching with water followed by air-cooling to ambient temperature (column 4 lines 49-54). The process is construed to be a type of “incubating step” since the limitation is not defined by the specification, and therefore given its broadest reasonable interpretation to any process in which the beans are cooled to ambient temperature.
While the reference does not explicitly teach “ambient temperature” to be between -10 to 40oC, one of ordinary skill would have reasonably expected ambient temperatures to be within said range e.g., 20-25oC.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the process of Wasserman et al. to cool the beans to the claimed temperature range in an “incubating step” since there is no evidence of criticality or unexpected results associated with the claimed features, since ambient temperatures are known to be encompassed by the claimed range, and based on the ambient temperature of the environment in which the beans are cooled.
Regarding claim 12, Wasserman et al. teaches the beans are cooled by contacting with a cooling agent such as water as stated for claim 11.
Regarding claim 13, Wasserman et al. does not teach the incubating step lasts for 30-300 minutes.
However, the reference teaches are first cooled to about 140oF or less using quenching, after which the beans are “permitted to cool to ambient temperature” (column 4 lines 49-54).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the cooling step to be 30-300 minute since there is no evidence of criticality or unexpected results associated with the claimed range, since cooling time is understood to be a result effective variable, where the claimed range would have been used during the course of routine experimentation and optimization procedures due to factors such as type/temperature of cooling agent used, the presence of forced convection, and final ambient temperature.
Regarding claim 15, the process of Wasserman et al. necessarily obtains roasted whole coffee beans.
Regarding claim 16, the combination applied to claim 1 raises the temperature to about 250oC (highest or end of roast temperature) at a rate of at least 25oC per minute as stated for claim 1.
Claims 6, 8 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Wasserman et al. in view of Eichner and Hernandez et al. as applied to claims 1 and 7 above, and further in view of MacAllister (US 3,122,439).
Regarding claim 6, Wasserman et al. does not teach the roasting is carried out at atmospheric pressure.
MacAllister teaches a method of rapid roasting coffee beans (column 1 lines 10-11), where the beans are roasted with heated air and the pressure “is usually atmospheric” (column 1 lines 60 and 64-65; claims 1-2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the process of Wasserman et al. such that the claimed roasting step is performed at atmospheric pressure since the reference does not particularly limit the type of roasting in the second stage (column 4 lines 17-23), since roasting at atmospheric pressure is known, since there is no evidence of criticality or unexpected results, and to obtain a roasted coffee bean having desired characteristics such as color, flavor, aroma, density, etc.
Regarding claims 8 and 17, Wasserman et al. does not teach the moisture content of the beans is lowered to 1-2 wt% (claim 8) and no more than 2.5 wt% (claim 17).
MacAllister teaches the moisture content of the roasted beans should be 1.5-2 wt% in order to assure the production in the beans of a certain minimum content of soluble solids and formation of an increased titratable acidity (column 2 lines 18-25).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the process of Wasserman et al. to roast the beans to the claimed moisture content since roasting the prior art recognizes moisture contents in the claimed range, since there is no evidence of criticality or unexpected results, and since the claimed range would have been used during the course of routine experimentation and optimization procedures due to factors such desired minimum soluble solids content and titratable acidity.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Wasserman et al. in view of Eichner and Hernandez et al. as applied to claim 1 above, and further in view of Zapp et al. (US 2005/0003067 A1).
Regarding claim 14, Wasserman et al. teaches the coffee is ground then packaged (column 2 lines 24-28), but does not teach packaging the whole roasted beans.
Zapp et al. teaches roasted coffee beans can be packaged as whole beans (paragraph 26).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the process of Wasserman et al. to package the whole roasted coffee beans since doing so is known in the art, since there is no evidence of criticality or unexpected results associated with the claimed feature, since one of ordinary skill in the art understands that grinding coffee beans accelerates loss of desired aroma and flavor compounds, and to provide consumers with a whole bean option.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Wasserman et al. in view of Eichner and Hernandez et al. as applied to claim 1 above, and further in view of Scarsella et al. (US 3,725,076).
Regarding claim 18, Wasserman et al. teaches cooling as stated for claim 11 above, but does not teach cooling to a final temperature between -10 to 8oC.
Scarsella et al. teaches a method comprising cooling roasted whole coffee beans to a bean temperature below 32oF and grinding the frozen beans to obtain enhanced aroma retention and freshness after prolonged storage (column 2 lines 18-24 and 51-55).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the process of Wasserman et al. to cool the beans to the claimed final temperature range since the prior art teaches freezing roasted coffee beans, where the final temperature would have at least reached 0oC, and in order to obtain a ground coffee product with enhanced aroma retention and freshness after prolonged storage.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 6-8 and 11-18 (particularly claim 1) are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-5, and 7-21 (particularly claims 1 and 8) of copending Application No. 18/269,251 in view of Hernandez et al.
The ‘251 application teaches roasting beans by raising the temperature from 80-170oC and 170-200oC at rates within the claimed range (claims 1 and 8), but does not teach 200-250oC at a rate of at least around 25oC/minute.
Hernandez et al. teaches roasting the beans to a temperature above 250oC, where the temperature of the bean raises from 200 to 250oC in a time period of less than about 1 minute (figure 4 “T’ air 300 oC”). The rate would therefore be “at least around 25oC/minute”.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ‘251 application to use the claimed ranges for the same reasons stated for claim 1 of the prior art rejection above, particularly to obtain a desired roast level, flavor, aroma, color, etc. using temperatures recognized by the prior art.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s argument against the double patenting rejection has been fully considered but the instant rejection relies on new grounds of rejection in view of Hernandez as stated above.
Applicant's arguments filed 7/1/2026 have been fully considered but they are not persuasive.
Applicant argues that Eichner is completely silent regarding specific bean-temperature ramp rates required by claim 1, and instead broadly and qualitatively discloses a curve shape for temperature versus time profile, and therefore would not guide one of ordinary skill to use the specific claimed rates.
This is not persuasive since the reference establishes a trend for heating rates, where one of ordinary skill in the art would have been capable of adjusting the trend to match the claimed rates based on routine experimentation and optimization as stated for claim 1. The evidence of record is insufficient to establish criticality of the claimed ranges.
Applicant argues Hernandez describes an experimental and theoretical analysis of heat and mass transfer during batch coffee roasting, and does not disclose or suggest a discrete temperature step for incorporation into Wasserman’s roasting process, the reference does not teach a controlled final roasting stage at the specified heating rate to be incorporated, and one of ordinary skill would not interpret the observed temperature behavior of the beans as a teaching that the temperature should be increased from 200-250oC at a defined rate.
This is not persuasive since Hernandez nonetheless teaches a roasting temperature can be increased up to 250oC, where the combination of Wasserman with Eichner provides motivation for adjusting the rates across the claimed temperature ranges. The evidence of record does not indicate criticality or unexpected results associated with the claimed values as stated above.
Applicant argues figure 4 of Hernandez teaches constant 300oC air, where such conditions would cause the bean temperature to rise through the lower claimed temperature ranges at an extremely high rate above that of the claimed rates.
This is not persuasive since the reference is relied on to show that the temperature can be increased to 250oC, where Wasserman and Eichner teach and suggest control of the temperature rate as stated above.
Applicant argues the data of the specification indicates unexpected results associated with the claimed temperature ranges and heating rates.
This is not persuasive since the cited evidence is not commensurate in scope with the claimed ranges. One of ordinary skill in the art would not be able to determine from the data as currently presented whether the argued result is observed over the entire claimed temperature range and temperature increase rate. See MPEP 716.02(d) II.
Applicant’s argument against the dependent claims is not persuasive for the same reasons stated above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYAN KIM whose telephone number is (571)270-0338. The examiner can normally be reached 9:30-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached at (571)-270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRYAN KIM/Examiner, Art Unit 1792
