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 .
In the claim sets filed October 6, 2023, claims 31-50 are pending in the application. Claims 1-30 have been cancelled. Claims 49-50 are withdrawn from consideration (see below).
Election/Restriction
Applicant's election with traverse of Group I, claims 31-48, in the reply filed on November 4, 2025 is acknowledged. The traversal is on the ground(s) that the Office Action has not shown that a serious burden would be required to examine all of the claims.
However, this is not found persuasive. Showing that a serious burden exists on the Examiner pertains to a restriction requirement for applications filed under 35 USC 111(a). However, the present application is a national stage application submitted under 35 USC 371. Applicant is reminded that unity of invention analysis (not an independent and distinct analysis along with the existence of a serious burden on Examiner) is applicable in national stage applications submitted under 35 USC 371. See MPEP 823, 1850, and 1893.03(d).
As previously addressed, the shared feature of a freeze-dried beverage comprising dextrin was known prior to the filing thereof of the international application as demonstrated by Katsurayama JP 2002-171905 (hereinafter “Katsurayama”, cited on the IDS dated 1/08/2024). Katsurayama relates to a freeze-dried beverage product comprising dextrin (P1, claims 1, 2, and 7).
Thus, the requirement is still deemed proper and is therefore made FINAL.
Claims 49 and 50 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claims 32-44 and 46-48 are objected to because of the following informalities:
In claim 32 at line 1, it is suggested to amend “Claim” to “claim” after “to” and before “31” to correct the uppercase “C” to the lowercase form.
In claims 33-35 at line 1, it is suggested to amend “Claim” to “claim” after “to” and before “32” to correct the uppercase “C” to the lowercase form.
In claims 36-42 at line 1, it is suggested to amend “Claim” to “claim” after “to” and before “31” to correct the uppercase “C” to the lowercase form.
In claim 42 at line 2, it is suggested to amend “Oolong” to “oolong” after “black tea” and before “tea” to correct the uppercase “O” to the lowercase form.
In claim 43 at line 1, it is suggested to amend “Claim” to “claim” after “to” and before “42” to correct the uppercase “C” to the lowercase form.
In claim 44 at line 1, it is suggested to amend “Claim” to “claim” after “to” and before “31” to correct the uppercase “C” to the lowercase form.
In claims 46-48 at line 1, it is suggested to amend “Claim” to “claim” after “to” and before “45” to correct the uppercase “C” to the lowercase form.
Appropriate correction is required.
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 31-48 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.
Independent claim 31 recites “A freeze-dried beverage solidified product that is mixed with water or hot water to prepare a beverage, said beverage solidified product comprising…” at lines 1-3. It is unclear what is intended by this recitation. More specifically, it is uncertain how the recitation of “that is mixed with water or hot water to prepare a beverage” in the preamble of the claim relates to the claimed freeze-dried beverage solidified product. Additionally, it is uncertain whether the water/hot water and the beverage are required components of the claimed freeze-dried beverage solidified product. Therefore, the scope of the claim is indefinite. Applicant is reminded that a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
For the purpose of the examination, the recitation of “A freeze-dried beverage solidified product that is mixed with water or hot water to prepare a beverage” at lines 1-2 of claim 31 (emphasis added) is interpreted as “A freeze-dried beverage solidified product for preparing a beverage” (emphasis added).
Claim 32 is not specifically discussed but is rejected due to its dependence on claim 31.
Claim 33 recites “the finely ground product” at line 3, and this claim depends upon claims 32 and 31. This recitation lacks antecedent basis as there is no previous recitation of a finely ground product in claim 31 or claim 32. Therefore, the scope of claim 33 is indefinite.
For the purpose of the examination, the recitation of “the finely ground product” at line 3 of claim 33 (emphasis added) is interpreted as “a finely ground product” (emphasis added).
Claims 34-39 are not specifically discussed but are rejected due to their dependence on claims 31.
Claim 40 recites “a volume of the beverage solidified product is 4 to 0.50 g/cm3” at line 2. It is unclear what is encompassed by this recitation. More specifically, g/cm3 is a unit of density as opposed to volume as presently claimed. Therefore, the scope of the claim is indefinite.
For the purpose of the examination, the recitation of “a volume of the beverage solidified product is 4 to 0.50 g/cm3” at line 2 of claim 40 (emphasis added) is interpreted as “a volume of the beverage solidified product is 4 to 50 cm3” (emphasis added, see paragraph [0025] of the instant specification).
Claims 41-44 are not specifically discussed but are rejected due to their dependence on claim 31.
Independent claim 45 recites “A freeze-dried coffee beverage solidified product that is mixed with water or hot water to prepare a coffee beverage, said coffee beverage solidified product comprising…” at lines 1-3. It is unclear what is intended by this recitation. More specifically, it is uncertain how the recitation of “that is mixed with water or hot water to prepare a coffee beverage” in the preamble of the claim relates to the claimed freeze-dried coffee beverage solidified product. Additionally, it is uncertain whether the water/hot water and the coffee beverage are required components of the claimed freeze-dried coffee beverage solidified product. Therefore, the scope of the claim is indefinite. Applicant is reminded that a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
For the purpose of the examination, the recitation of “A freeze-dried coffee beverage solidified product that is mixed with water or hot water to prepare a coffee beverage” at lines 1-2 of claim 45 (emphasis added) is interpreted as “A freeze-dried coffee beverage solidified product for preparing a coffee beverage” (emphasis added).
Claims 46-48 are not specifically discussed but are rejected due to their dependence on claim 45.
Definitions and Claim Interpretation
During patent examination, the pending claims must be "given their broadest reasonable interpretation consistent with the specification." The Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). Under a broadest reasonable interpretation (BRI), words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification or the term has been given a special definition in the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification - the greatest clarity is obtained when the specification serves as a glossary for the claim terms. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) (discussed below); Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1372, 69 USPQ2d 1857 (Fed. Cir. 2004).
It is noted that the meaning of the following term(s) presented in the claims are determined by the definition(s) provided in the instant specification:
“Saccharides” refers to monosaccharides, disaccharides, and sugar alcohols and does not include polysaccharides (see paragraph [0020] of the instant specification).
Claim Rejections - 35 USC § 102
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.
Claims 31-33, 36, and 42-44 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Katsurayama JP 2002171905 (hereinafter “Katsurayama”) (refer to the corresponding machine translation published in English).
With respect to claim 31, Katsurayama relates to a freeze-dried tea product (paragraphs [0064] and [0078]).
Regarding “for preparing a beverage” in the preamble of claim 31, it is noted that this claim language is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of said beverage solidified product comprising dextrin wherein a saccharide content of the beverage solidified product is 8.5% by mass or less in claim 31, Katsurayama teaches the product comprises dextrin. Additionally, the reference is silent with respect to saccharide (monosaccharide, disaccharide, and sugar alcohol) and reads on the claimed saccharide content of 8.5% or less which includes zero (paragraphs [0064] and [0078]).
With respect to claim 32, Katsurayama is relied upon for the teaching of the product of claim 31 as addressed above.
Regarding the recitation of further comprising insoluble fine particles of tea raw material in claim 32, Katsurayama teaches the product comprises insoluble components of tea leaf powder (paragraphs [0027], [0064], and [0078]).
With respect to claim 33, Katsurayama is relied upon for the teaching of the product of claim 32 as addressed above.
Regarding the recitation of wherein the insoluble fine particles of tea raw material are finely ground green tea leaves and/or stems, or a finely ground product of at least one of barley, adlay, buckwheat, black beans, corn, or brown rice in claim 33, Katsurayama teaches green tea leaf powder is used (paragraphs [0027], [0064], and [0078]).
With respect to claim 36, Katsurayama is relied upon for the teaching of the product of claim 31 as addressed above.
Regarding the recitation of wherein the beverage solidified product is formulated into individual single-serving units per a given amount of water or hot water in claim 36, Katsurayama teaches the product may be molded to a form, such as in the shape of a tablet, that can be drunk when combined with water or hot water (paragraphs [0023], [0027], [0064], [0068], and [0078]).
With respect to claim 42, Katsurayama is relied upon for the teaching of the product of claim 31 as addressed above.
Regarding the recitation of wherein the beverage is green tea, black tea, oolong tea, grain tea, or coffee in claim 42, Katsurayama teaches green tea or oolong tea may be used (paragraphs [0064] and [0076]).
With respect to claim 43, Katsurayama is relied upon for the teaching of the product of claim 42 as addressed above.
Regarding the recitation of wherein the grain tea is barley tea in claim 43, Katsurayama meets the claim since claim 43 depends upon claim 42, claim 42 recites “wherein the beverage is a green tea, black tea, oolong tea, grain tea, or coffee”, and Katsurayama teaches green tea or oolong tea may be used (paragraphs [0064] and [0076]) as addressed above in claim 42.
With respect to claim 44, Katsurayama is relied upon for the teaching of the product of claim 31 as addressed above.
Regarding the recitation of wherein a beverage is obtained by mixing the beverage solidified product with water or hot water in claim 44, it is noted that this recitation relates to the future intended use of the claimed product. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04.
Additionally, Katsurayama teaches the claimed product as addressed above in claim 31, and there is no structural difference between the composition of the claimed invention and the composition of Katsurayama. Further, Katsurayama teaches the product can be dissolved in water or hot water and drunk as a drink (paragraphs [0025], [0027], [0070], and [0079]). Applicant is reminded the broadest reasonable interpretation of a system (or a product) claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur. The claimed structure must be present in the system regardless of whether the condition is met and the function is actually performed. See MPEP 2111.04.
Claims 31, 32, 36, and 44 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aoi et al. JP 2003052316 (hereinafter “Aoi”) (refer to the corresponding machine translation published in English).
With respect to claim 31, Aoi relates to a freeze-dried beverage product (paragraphs [0001], [0011], [0032], and [0049]).
Regarding “for preparing a beverage” in the preamble of claim 31, it is noted that this claim language is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of said beverage solidified product comprising dextrin wherein a saccharide content of the beverage solidified product is 8.5% by mass or less in claim 31, Aoi teaches the product comprises dextrin and is silent with respect to saccharide (monosaccharide, disaccharide, and sugar alcohol) in one embodiment which reads on the claimed saccharide content of 8.5% or less and including zero (paragraphs [0001], [0011], [0031], [0032], [0044], and [0049]).
With respect to claim 32, Aoi is relied upon for the teaching of the product of claim 31 as addressed above.
Regarding the recitation of further comprising insoluble fine particles of tea raw material in claim 32, Aoi teaches the product comprises fine particles of tea leaf (paragraphs [0001], [0011], [0012], [0013], [0018], [0019], and [0023]).
With respect to claim 36, Aoi is relied upon for the teaching of the product of claim 31 as addressed above.
Regarding the recitation of wherein the beverage solidified product is formulated into individual single-serving units per a given amount of water or hot water in claim 36, Aoi teaches the product may be in the form of a block that can be dispersed in water or hot water to prepare a beverage (paragraphs [0001], [0011], [0015], [0034], [0042], [0047], and [0049]).
With respect to claim 44, Aoi is relied upon for the teaching of the product of claim 31 as addressed above.
Regarding the recitation of wherein a beverage is obtained by mixing the beverage solidified product with water or hot water in claim 44, it is noted that this recitation relates to the future intended use of the claimed product. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04.
Additionally, Aoi teaches the claimed product as addressed above in claim 31, and there is no structural difference between the composition of the claimed invention and the composition of Aoi. Further, Aoi teaches the product may be dispersed in water or hot water to prepare a beverage (paragraphs [0001], [0011], [0042], [0047], and [0049]). Applicant is reminded the broadest reasonable interpretation of a system (or a product) claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur. The claimed structure must be present in the system regardless of whether the condition is met and the function is actually performed. See MPEP 2111.04.
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.
Claims 34, 35, 37, 39, and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Katsurayama JP 2002171905 (hereinafter “Katsurayama”) (refer to the corresponding machine translation published in English) as applied to claims 31 and 32 above.
With respect to claim 34, Katsurayama is relied upon for the teaching of the product of claim 32 as addressed above.
Regarding the recitation of wherein the content of the insoluble fine particles of tea raw material in the beverage solidified product is more than 0% by mass and not more than 30% by mass in claim 34, Katsurayama does not expressly disclose the quantity of green tea leaf powder in the product ([0027], [0064], and [0078]). However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the quantity of green tea leaf powder in Katsurayama through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Katsurayama teaches the tea has a health effect and a taste effect as well as the taste depends on the blending ratio of dextrin and green tea (paragraphs [0072] and [0078]), which is a matter of choice and may be adjusted to obtain an organoleptically desirable product, and it is understood that, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. There would have been a reasonable expectation of success. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 II).
With respect to claim 35, Katsurayama is relied upon for the teaching of the product of claim 32 as addressed above.
Regarding the recitation of wherein a particle diameter of 90% of a total volume of the insoluble fine particles of tea raw material is 200 pm or less in claim 35, Katsurayama teaches the tea powder passes through a 0.3 mm mesh (paragraph [0066]), which is interpreted as 100% of the tea powder having a particle size of less than 300 microns and encompasses the presently claimed ranges. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 37, Katsurayama is relied upon for the teaching of the product of claim 31 as addressed above.
Regarding the recitation of wherein a dextrin content of the beverage solidified product is 0.5 to 40% by mass in claim 37, Katsurayama does not expressly disclose the quantity of dextrin (paragraphs [0064 and [0078]). However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the quantity of dextrin in Katsurayama through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Katsurayama teaches the taste depends on the blending ratio of dextrin and green tea (paragraphs [0072] and [0078]), which is a matter of choice and may be adjusted to obtain an organoleptically desirable product, and it is understood that, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. There would have been a reasonable expectation of success. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 II).
With respect to claims 39 and 40, Katsurayama is relied upon for the teaching of the product of claim 31 as addressed above.
Regarding the recitation of wherein a density of the beverage solidified product is greater than 0.13 g/cm3 and less than 0.40 g/cm3 in claim 39 and wherein a volume of the beverage solidified product is 4 to 50 cm3 in claim 40, Katsurayama does not expressly disclose these limitations. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the density and volume of the product of Katsurayama through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because these features are a function of the ingredients present and their respect quantities which have been shown to be obvious in view of Katsurayama as addressed above, Katsurayama teaches the taste depends on the blending ratio of dextrin and green tea (paragraphs [0072] and [0078]), which is a matter of choice and may be adjusted to obtain an organoleptically desirable product, Katsurayama also teaches the product may be molded to a form, such as in the shape of a tablet, that can be drunk when combined with water or hot water (paragraphs [0023], [0027], [0064], [0068], and [0078]), and such a modification would have involved a mere change in the dimensions of a component. There would have been a reasonable expectation of success. A change in dimension is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Katsurayama JP 2002171905 (hereinafter “Katsurayama”) (refer to the corresponding machine translation published in English) as applied to claim 31 above, and in further view of Nishimori et al. JP 2015119657 (hereinafter “Nishimori”) (refer to the corresponding machine translation published in English).
With respect to claim 38, Katsurayama is relied upon for the teaching of the product of claim 31 as addressed above.
Regarding the recitation of wherein the dextrin has a dextrose equivalent value of 2 to 30 in claim 38, Katsurayama does not expressly disclose the dextrose equivalent value of the dextrin (paragraphs [0064] and [0078]).
Nishimori relates to a freeze-dried tea product. The product comprises dextrin with a dextrose equivalent of about 5-21 (paragraphs [0011], [0014], [0021], and [0022]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select any portions of the disclosed range, including the instantly claimed range for dextrose equivalent value, from the range disclosed in the prior art with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Katsurayama and Nishimori similarly teach freeze-dried tea products comprising dextrin, and Nishimori teaches dextrin with a dextrose equivalent of about 5-21 has no adverse effect on the flavor of the product and dextrin suppresses loss of flavor during freeze-drying (paragraphs [0021]-[0022]). There would have been a reasonable expectation of success. "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages " In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
Claims 34, 35, 37, 39, and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Aoi et al. JP 2003052316 (hereinafter “Aoi”) (refer to the corresponding machine translation published in English) as applied to claims 31 and 32 above.
With respect to claim 34, Aoi is relied upon for the teaching of the product of claim 32 as addressed above.
Regarding the recitation of wherein the content of the insoluble fine particles of tea raw material in the beverage solidified product is more than 0% by mass and not more than 30% by mass in claim 34, Aoi teaches the fine particles of tea leaf are present in the product in an amount of 2-60% and overlaps with the presently claimed range (paragraphs [0012] and [0013]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 35, Aoi is relied upon for the teaching of the product of claim 32 as addressed above.
Regarding the recitation of wherein a particle diameter of 90% of a total volume of the insoluble fine particles of tea raw material is 200 pm or less in claim 35, Aoi teaches the fine particles of tea leaf have a particle size of less than 1 mm (paragraph [0023]) which is interpreted as 100% of the fine particles of tea leaf having a particle size of less than 1000 microns and encompasses the presently claimed ranges. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 37, Aoi is relied upon for the teaching of the product of claim 31 as addressed above.
Regarding the recitation of wherein a dextrin content of the beverage solidified product is 0.5 to 40% by mass in claim 37, Aoi teaches dextrin is present in the product in an amount of 5-90% and encompasses the presently claimed range (paragraphs [0012] and [0013]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 39, Aoi is relied upon for the teaching of the product of claim 31 as addressed above.
Regarding the recitation of wherein a density of the beverage solidified product is greater than 0.13 g/cm3 and less than 0.40 g/cm3 in claim 39, Aoi does not expressly disclose this limitation. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the density of the product of Aoi through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because this feature is a function of the ingredients present and their respect quantities which have been shown to be obvious in view of Aoi as addressed above, Aoi teaches the blending ratio of dextrin and the fine tea leaf particles is influenced by the content of the fine particles of tea leaf and dextrin increases the shape retention of the product (paragraphs [0018]-[0020]), and such a modification would have involved a mere change in the dimension of a component. There would have been a reasonable expectation of success. A change in dimension is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
With respect to claim 40, Aoi is relied upon for the teaching of the product of claim 31 as addressed above.
Regarding the recitation of wherein a volume of the beverage solidified product is 4 to 50 cm3 in claim 40, Aoi teaches the product has a volume of 8 cm3 to 64 cm3 (paragraph 15]) and overlaps with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 33, 38, 42, and 43 are rejected under 35 U.S.C. 103 as being unpatentable over Aoi et al. JP 2003052316 (hereinafter “Aoi”) (refer to the corresponding machine translation published in English) as applied to claims 31 and 32 above, and in further view of Nishimori et al. JP 2015119657 (hereinafter “Nishimori”) (refer to the corresponding machine translation published in English).
With respect to claim 33, Aoi is relied upon for the teaching of the product of claim 32 as addressed above.
Regarding the recitation of wherein the insoluble fine particles of tea raw material are finely ground green tea leaves and/or stems, or a finely ground product of at least one of barley, adlay, buckwheat, black beans, corn, or brown rice in claim 33, Aoi does not expressly disclose the specifically claimed tea raw material (paragraphs [0001], [0011], [0012], [0013], [0018], [0019], and [0023]).
Nishimori relates to a freeze-dried tea product comprising dextrin. The tea material includes green tea leaves or stems, brown rice, barley, adlay, corn, or combinations thereof (paragraphs [0011], [0014], [0016], and [0022]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Nishimori, to select the tea materials based in their suitability for their intended purpose as the fine particles in Aoi with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Aoi and Nishimori similarly teach freeze-dried tea products comprising dextrin, Nishimori teaches the product has excellent flavor (paragraph [0011]), Aoi teaches the particles of raw material used are not limited and are healthy food materials (paragraphs [0011], [0022], and [0023]), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected results. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
With respect to claim 38, Aoi is relied upon for the teaching of the product of claim 31 as addressed above.
Regarding the recitation of wherein the dextrin has a dextrose equivalent value of 2 to 30 in claim 38, Aoi does not expressly disclose the dextrose equivalent value of the dextrin (paragraph [0031]).
Nishimori relates to a freeze-dried tea product. The product comprises dextrin with a dextrose equivalent of about 5-21 (paragraphs [0011], [0014], [0021], and [0022]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select any portions of the disclosed range, including the instantly claimed range for dextrose equivalent value, from the range disclosed in the prior art with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Aoi and Nishimori similarly teach freeze-dried tea products comprising dextrin, and Nishimori teaches dextrin with a dextrose equivalent of about 5-21 has no adverse effect on the flavor of the product and dextrin suppresses loss of flavor during freeze-drying (paragraphs [0021]-[0022]). There would have been a reasonable expectation of success. "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages " In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
With respect to claims 42 and 43, Aoi is relied upon for the teaching of the product of claim 31 as addressed above.
Regarding the recitation of wherein the beverage is green tea, black tea, oolong tea, grain tea, or coffee in claim 42 and wherein the grain tea is barley tea in claim 43, Aoi does not expressly disclose the claimed limitation.
Nishimori relates to a freeze-dried tea product comprising dextrin. The tea material includes green tea, black tea, oolong tea, brown rice, wheat, amaranth, quinoa, barley, adlay, corn, or combinations thereof (paragraphs [0011], [0014], [0016], and [0022]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Nishimori, to select the tea materials based in their suitability for their intended purpose as the materials in Aoi with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Aoi and Nishimori similarly teach freeze-dried tea products comprising dextrin, Nishimori teaches the product has excellent flavor (paragraph [0011]), Aoi teaches the particles of raw material used are not limited and are healthy food materials (paragraphs [0001], [0011], [0022], [0023], and [0049]), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected results. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Claim 41 is rejected under 35 U.S.C. 103 as being unpatentable over Aoi et al. JP 2003052316 (hereinafter “Aoi”) (refer to the corresponding machine translation published in English) as applied to claim 31 above, and in further view of Achterkamp et al. WO 2006222220 (hereinafter “Achterkamp”).
With respect to claim 41, Aoi is relied upon for the teaching of the product of claim 31 as addressed above.
Regarding the recitation of wherein the beverage solidified product is packaged in a moisture-resistant packaging material in claim 41, Aoi teaches the product is packaged in a pouch (paragraph [0034]).
However, Aoi does not expressly disclose the packaging material is moisture-resistant.
Achterkamp relates to a concentrated solid foodstuff material. The solid foodstuff material comprises powdered or particulate foodstuff and dextrin. The solid foodstuff material may be packaged with a wide variety of material, such as plastic, metal, aluminum, carton, jar, or blister pack (Abstract; P1, L6-9; P4, L1-2 and 29-34; P8, L1-5, 11-12, and 16; P18, L11-14; and P19, L10-13).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Achterkamp, to select the packaging material based in their suitability for their intended purpose as the packaging material in Aoi with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Aoi and Achterkamp similarly teach packaged concentrated, solid food products comprising powdered foodstuff and dextrin, Achterkamp teaches the packaged product remains stable (P2, L25), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected results. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Claims 45-48 are rejected under 35 U.S.C. 103 as being unpatentable over Aoi et al. JP 2003052316 (hereinafter “Aoi”) (refer to the corresponding machine translation published in English) in view of Shirohata JP 5115661 (hereinafter “Shirohata”) (refer to the corresponding machine translation published in English).
With respect to claim 45, Aoi relates to a freeze-dried beverage product (paragraphs [0001], [0011], [0032], and [0049]).
Regarding “for preparing a coffee beverage” in the preamble of claim 45, it is noted that this claim language is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of said coffee beverage solidified product comprising dextrin and finely ground coffee beans, wherein a saccharide content of the coffee beverage solidified product is 5.0% by mass or less in claim 45, Aoi teaches the product comprises dextrin and finely crushed food material. Additionally, Aoi is silent with respect to the product comprising saccharide (monosaccharide, disaccharide, and sugar alcohol) in one embodiment which reads on the claimed saccharide content of 5.0% or less and including zero (paragraphs [0001], [0011], [0023], [0031], [0032], [0044], and [0049]).
However, Aoi does not expressly disclose the product comprises finely ground coffee beans.
Shirohata relates to a freeze-dried food product. The product comprises dextrin and crushed foods such as coffee beans (P1, bottom – P2, top).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Shirohata, to select the crushed coffee beans based in their suitability for their intended purpose as the finely crushed food in Aoi with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Aoi and Shirohata similarly teach freeze-dried food products comprising dextrin, Shirohata teaches the product comprises active ingredients and is rich in flavor (P1-P2, top), Aoi teaches the finely crushed food material used is not limited and are healthy food materials (paragraphs [0001], [0011], [0022], [0023], and [0049]), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected results. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
With respect to claim 46, modified Aoi is relied upon for the teaching of the product of claim 45 as addressed above.
Regarding the recitation of wherein the content of the finely ground coffee beans in the coffee beverage solidified product is 0.3% by mass or more in claim 46, modified Aoi teaches this limitation since Shirohata is relied upon for the teaching of crushed coffee beans as addressed above in claim 45, and Aoi teaches the finely crushed food material is present in the product in an amount of 2-60% which overlaps with the presently claimed range (paragraphs [0012], [0013], and [0049]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 47, modified Aoi is relied upon for the teaching of the product of claim 45 as addressed above.
Regarding the recitation of wherein a dextrin content in the coffee beverage solidified product is 11 to 50% by mass in claim 47, modified Aoi teaches this limitation since Aoi teaches dextrin is present in the product in an amount of 5-90% and encompasses the presently claimed range (paragraphs [0012], [0013], and [0049]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 48, modified Aoi is relied upon for the teaching of the product of claim 45 as addressed above.
Regarding the recitation of wherein a density of the coffee beverage solidified product is 0.17 to 0.50 g/cm3 in claim 48, modified Aoi does not expressly disclose this limitation. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the density of the product of modified Aoi through routine experimentation with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because this feature is a function of the ingredients present and their respect quantities which have been shown to be obvious in view of modified Aoi as addressed above, Aoi teaches the blending ratio of dextrin and the finely crushed food material is influenced by the content of the finely crushed food material and dextrin increases the shape retention of the product (paragraphs [0018]-[0020] and [0049]), and such a modification would have involved a mere change in the dimension of a component. There would have been a reasonable expectation of success. A change in dimension is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Conclusion
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/T.L.M/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793