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 .
Status of Application
Claims 1-20 are pending and presented for examination.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
1. Claim 20 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because claim 20 is a “use” claim and “use” claims that do not purport to claim a process, machine, manufacture, or composition fail to comply with 35 U.S.C. 101. See In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961)("one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. § 101 "). In Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967), the Board held the following claim to be an improper definition of a process: "The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction." In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the district court held the following claim was definite, but that it was not a proper process claim under 35 U.S.C. 101: "The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid."
Claim Rejections - 35 USC § 112(b)
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.
2. Claims 3-10 and 14-20 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.
Regarding claim 3, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Claims 4-10 depend from claim 3 and are indefinite for the same reasons.
Regarding claim 6, the phrases "preferably" and “more preferably” render the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 8, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 9, the phrases "preferably" and “more preferably” render the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 10, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 14, the phrases "preferably" and “more preferably” render the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Claims 15-20 depend from claim 14 and are indefinite for the same reasons.
Regarding claim 16, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 19, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 20 is indefinite because it merely recites a use of the plastic composite without any active, positive steps delimiting how this use is actually practiced. Attempts to claim a process without setting forth any steps involved in the process raises the issue of indefiniteness. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986).
Claim Rejections - 35 USC § 103
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.
3. Claim(s) 1-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhou et al. (CN110283471) in view of Ammerlaan et al. (“Tales of a Forgotten Bioresource: The recycling of spent coffee grounds”).
I. Regarding claims 1, 2 and 11-13, Zhou teaches a method of preparing a plastic composite including coffee grounds (abstract): comprising providing coffee grounds and a plastic (abstract), such as polypropylene (claim 3); pretreating the coffee grounds by washing with water, drying, extracting oil, and heating to carbonize the coffee grounds (claim 7); and mixing the pretreated coffee grounds with the plastic and an additional binder (maleic anhydride grafted polyethylene) which will increase the viscosity (claim 1). Zhou teaches the coffee grounds are ground before performing the extraction to a particle size of 60 mesh (which is 250 microns) and that the coffee grounds are mixed with the plastic in a ratio of 1:2 to 1:4 (abstract). Zhou fails to teach that the oil extraction is a solvent extraction and then the solvent is removed from the coffee grounds.
However, Ammerlaan teaches that it is conventional to extract the oil from spent coffee grounds by extraction with boiling solvent, such as hexane, filtration of the solvent from the grounds (Section 5.2.1), followed by removing solvent from the coffee grounds in a fume hood (Section 3.5 Oil extraction) or with a desolventizer (Section 5.2.3). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Zhou’s process by performing the oil extraction using a solvent extraction process using boiling hexane as disclosed by Ammerlaan. One would have been motivated to make this modification as Ammerlaan teaches that their optimized oil extraction process allows for optimal extraction and ability to process large amounts of coffee grounds efficiently (Section 1 Executive Summary).
II. Regarding claims 3-6, 9 and 10, Zhou in view of Ammerlaan make obvious the process of claim 1, including grinding to the particle size as claimed in claim 6 (see above), the use of boiling hexane as the extraction solvent (see above), and washing with water at room temperature followed by drying and removing the solvent from the grounds after extraction (see above), and the ratio as claimed in claim 9. Zhou in view of Ammerlaan fail to explicitly teach the use of deionized water and drying to a water content of not more than 20 wt%. However, the Examiner takes Official Notice that it is conventional to utilize deionized water in place of generic tap water in laboratory experiments and washings. One would have been motivated to make this modification to ensure that the water doesn’t introduce other impurities during the washing step.
Furthermore, Zhou in view of Ammerlaan teach drying but fail to teach to less than 20 wt% water in the grounds. However, Zhou in view of Ammerlaan make clear that water content is a result-effective variable that will potentially impede the oil extraction process (see Ammerlaan at Section 3.2). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed range for water content through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
III. Regarding claim 7, Zhou in view of Ammerlaan make obvious the process of claim 3 (see above), filtering to separate excess solvent from the grounds and evaporation to remove the solvent (see above). Zhou in view of Ammerlaan fail to explicitly teach removing the solvent and residual water by evaporation using rotary evaporation at a temperature as claimed till the grounds are substantially free of solvent and water. However, the Examiner takes Official Notice that heated rotary evaporators are conventional lab instruments used for removing solvent. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute rotary evaporation at the claimed temperature to achieve evaporation of water and hexane for Zhou in view of Ammerlaan’s evaporation process. One would have been motivated to make this modification as one could have substituted one evaporation method for another with a reasonable expectation of success, and the predictable result of providing solvent and water free coffee grounds. Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to conduct the evaporation step until substantially all of the water and solvent is removed. One would have been motivated to make this modification to ensure an optimal coffee ground product that contains minimal impurities especially if it is intended for food packaging or other applications.
IV. Regarding claim 8, Zhou in view of Ammerlaan make obvious all the limitations of claim 7, including heating the coffee grounds at a rate of 10 ºC/min from room temperature to a temperature of 200 ºC and then maintaining that temperature (see Zhou at claim 9 and Example 2). Zhou in view of Ammerlaan fail to teach maintaining the temperature for 2-4 hours. However, adjusting the temperature and time the temperature is maintained for carbonization is well within the level of one of ordinary skill in the art to arrive at conditions to achieve the desired carbonization of the coffee grounds. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed range for the time the temperature is maintained for through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
V. Regarding claims 14-19, Zhou in view of Ammerlaan make obvious the process of preparing the plastic composite (see above), and Zhou teaches a plastic composite made by the process, wherein the composite comprises 10-20% coffee grounds and 20-40% polymer (abstract), such as polypropylene (see above), a binder, such as maleic anhydride grafted polyethylene in an amount of 0.5-2% (abstract, and note that overlapping ranges are prima facie evidence of obviousness), and that the coffee grounds can have a size of 60-80 mesh (claim 6, and note that this is a range of 177-250 microns, and that this range does not overlap with the claimed range of 100-150 microns but is so close as to make obvious the claimed range as adjusting the particle size from 177 microns to 150 microns would not materially change the properties of the composite). Zhou in view of Ammerlaan fail to explicitly teach the polymer present in an amount of 50-93%.
However, the Examiner notes that different types of polymers will result in different properties of the resultant composite and may necessitate higher or lower loading of polymer. Additionally, depending upon the final use and the properties required adjusting the amount of polymer may be necessary to allow for the resultant properties and for use in the desired application. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed range of 50-93% plastic through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
4. Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhou in view of Ammerlaan as applied to claim 14 above, and further in view of Oliveira et al. (“Coffee By-Products and Their Suitability for Developing Active Food Packaging Materials”).
Regarding claim 20, Zhou in view of Ammerlaan make obvious the composite coffee ground plastic composite of claim 14 (see above), but fail to explicitly teach its use in making food containers. However, Oliveira teaches the use of composites of coffee grounds and plastics for use as food packaging (Figure 2). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Zhou in view of Ammerlaan’s product for use as food packaging as disclosed by Oliveira. One would have been motivated to make this modification as it would allow for a practical use of Zhou in view of Ammerlaan’s product for use as biodegradable food packaging to help minimize plastic waste.
Conclusion
Claims 1-20 are pending.
Claims 1-20 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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, Dah-Wei Yuan can be reached at 571-272-1295. 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.
/ROBERT S WALTERS JR/
February 22, 2026Primary Examiner, Art Unit 1717