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 .
Claim Objections
Claims 1-5 and 16 are objected to because of the following informalities:
Regarding claim 1, in line 5 after “and” delete “a step of heating said whole coffee beans such that the temperature of said beans rises from a” and insert “raising the temperature of said beans from the” for consistency with the language of the new limitations and in order to place the claim in better form.
Regarding claim 2, in line 2 delete “the step of heating” and insert “raising the temperature of” for consistency with the language of claim 1.
In line 2, before “temperature of” delete “a” and insert “the” for consistency with the language of claim 1.
Regarding claims 3-5 and 16, in line 2 of each claim delete “the step of heating” and insert “raising the temperature of”, and before “temperature of” delete “a” and insert “the” for the same reasons stated for claim 2.
Appropriate correction is required.
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).
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. The temperature of the beans would have necessarily passed through the range of 200 to 230oC.
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 at the time of the 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.
Regarding claim 2, the rate of temperature increase is within the claimed range as stated for claim 1.
Regarding claims 3-4, the embodiment of Wasserman et al. relied on for claim 1 above does not teach the recited ranges for temperature rate.
However, the reference teaches second stage roasting is performed for about 1-3 minutes until the beans reach a temperature up to about 232oC and obtain a desired roast color (column 4 lines 28-34). Further, 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).
It would have been obvious to one of ordinary skill in the art at the time of the 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 at the time of the 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 at the time of the 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 process of Wasserman et al. raises the temperature to 232oC (highest or end of roast temperature above 230oC) at a rate of 53 and 55oC per minute as stated for claim 1.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Wasserman et al. in view of Eichner as applied to claim 1 above, and further in view of Hernandez et al. “Analysis of the heat and mass transfer during coffee batch roasting”
Regarding claim 5, Wasserman et al. does not teach heating to at least 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 at the time of the invention the process of Wasserman et al. to heat the beans to at least 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.
Claims 6, 8 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Wasserman et al. in view of Eichner 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 at the time of the 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 at the time of the 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 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 at the time of the 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 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 at the time of the 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 1-8 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 Wasserman 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 at least 230oC at a rate of at least around 25oC/minute.
Wasserman et al. teaches heating to 450oF (232oC) at the claimed rate as stated in the prior art rejection above.
It would have been obvious to one of ordinary skill in the art at the time of the 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
The amendment to claim 1 necessitated new grounds of rejection. The rejections under 35 USC 102(a)(1) are withdrawn. Claim 5 was previously rejected under 35 USC 102(a)(1) to Hernandez et al. The amendment overcomes the reference with respect to claim 1, but the reference is now combined with Wasserman et al. to address claim 5.
The amendment necessitated a new obviousness-type double patenting rejection since independent claim 1 now overlaps subject matter disclosed by the ‘251 application
The rejections under 35 USC 112(b) and 112(d) are withdrawn in view of the claim amendments.
Applicant's arguments filed 12/22/2025 have been fully considered but they are not persuasive.
Applicant notes Wasserman fails to disclose or suggest a specific rate of temperature increase from 200oC to at least 230oC.
The reference teaches 352oF to 448oF (178 to 231oC) or 350oF to 450oF (177 to 232oC) in one minute, resulting in a rate of 53 or 55oC per minute. The temperature would have necessarily passed through the argued range, and is well above the minimum claimed rate.
Applicant argues Eichner does not explicitly teach the ranges recited by claim 1, and there is no guidance to use the specific three claimed rates and temperature ranges.
This is not persuasive since the reference suggests to one of ordinary skill that the heating profile of Wasserman can be modified based on desired results of flavor, aroma, color, etc. While the claimed ranges are not explicitly taught by the cited prior art, one of ordinary skill would have determined such values through routine experimentation and optimization as stated in the rejection above.
Applicant argues the claimed temperatures and rates yield unexpected results of increased total phenolics and diene-functional phenolics at all degrees of roasting, as well as brew quality, citing the evidence of example 1.
This is not persuasive since example 1 provides only a single data point for the alleged results i.e., the “fast rate” of 34oC/minute (table 2), whereas claim 1 recites an open-ended range of “at least around 25oC/minute”. It is unclear if the results are observed across the entire claimed range. The evidence is not commensurate in scope with the claims, see also MPEP 716.02(d) II. Likewise, example 1 discloses a single rate for each of the temperature ranges of 80-170oC and 170-200oC, and there is no indication the rates contribute to the alleged unexpected results.
Applicant argues Wasserman merely discloses a rapid increase without indication of controlled intermediate heating rates or their respective impacts, does not teach two different rates for the ranges as claimed, Eichner does not disclose ranges or rates falling within the claimed ranges nor recognize technical benefits achieved, and there would be no motivation or reasonable expectation of success by the proposed modification.
This is not persuasive since the Wasserman acknowledges technical benefits such as the 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), and enhanced methanethiol content for desirable aroma in the packaging (column 1 lines 45-53). Eichner teaches 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), and “roasted coffee having desired, precisely controlled flavors and roast colors can be reliably produced” by controlling the roasting profile, where “different desirable flavors can be readily produced by using experimentally-determined bean temperature-time histories” (column 15 lines 16-20 and 29-39). Therefore, the prior art suggests optimization of the roasting profile, where flavor (including the argued compounds) depends on the profile. Further, the evidence of record is insufficient to establish criticality or unexpected results as stated above.
Applicant’s argument against the dependent claims is not persuasive for the same reasons stated above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/BRYAN KIM/Examiner, Art Unit 1792