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 .
The amendment filed May 11, 2026 is acknowledged. Claims 31-36, 38-43, 45-46, and 48-50 are pending in the application. Claims 1-30, 37, 44, and 47 have been cancelled. Claims 49-50 are withdrawn from consideration.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 31-36, 38-43, 45-46, and 48 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claim 31 has been amended to recite “wherein a dextrin content of the beverage solidified product is 28% by mass or more” at line 6. Although the instant specification provides support for a range of dextrin of 0.5 to 40% by mass (see paragraph [0007]), the specification fails to provide support for values greater than 40% as presently claimed.
Claims 32-36 and 38-43 are not specifically discussed but are rejected due to their dependence on claim 31.
Independent claim 45 has been amended to recite “wherein a dextrin content of the beverage solidified product is 28% by mass or more” at line 6. Although the instant specification provides support for a range of dextrin of 0.5 to 40% by mass (see paragraph [0007]), the specification fails to provide support for values greater than 40% as presently claimed.
Claims 46 and 48 are not specifically discussed but are rejected due to their dependence on claim 45.
Accordingly, there is no indication that applicant had possession of the presently claimed invention at the time of the filing the instant application.
Applicant is reminded with respect to changing numerical range limitations, the analysis must take into account which ranges one skilled in the art would consider inherently supported by the discussion in the original disclosure. In the decision in In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), the ranges described in the original specification included a range of "25%- 60%" and specific examples of "36%" and "50%." A corresponding new claim limitation to "at least 35%" did not meet the description requirement because the phrase "at least" had no upper limit and caused the claim to read literally on embodiments outside the "25% to 60%" range. See MPEP 2163.05.
Additionally, the failure to meet the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, commonly arises when the claims are changed after filing to either broaden or narrow the breadth of the claim limitations, or to alter a numerical range limitation or to use claim language which is not synonymous with the terminology used in the original disclosure. To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, or 365(c), each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure. SEE MPEP 2163.05.
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 31-36, 38-43, 45-46, and 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…wherein the freeze-dried beverage solidified product is mixed with water or hot water to prepare a beverage” at lines 1-5. It is unclear what is intended by this recitation. More specifically, it is uncertain how the recitation of “is mixed with water or hot water to prepare a beverage” (i.e., a liquid product) relates to the claimed freeze-dried beverage solidified product at line 1. 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.
For the purpose of the examination, the recitation of “wherein the freeze-dried beverage solidified product is mixed with water or hot water to prepare a beverage” at lines 4-5 of claim 31 (emphasis added) is interpreted as “wherein the freeze-dried beverage solidified product can be mixed with water or hot water to prepare a beverage”.
Claims 32-36 and 38-43 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…wherein the beverage solidified product is mixed with water or hot water to prepare a coffee beverage” at lines 1-5. It is unclear what is intended by this recitation. More specifically, it is uncertain how the recitation of “is mixed with water or hot water to prepare a beverage” (i.e., a liquid product) relates to the claimed freeze-dried coffee beverage solidified product at line 1. 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.
For the purpose of the examination, the recitation of “wherein the beverage solidified product is mixed with water or hot water to prepare a coffee beverage” at lines 4-5 of claim 45 (emphasis added) is interpreted as “wherein the beverage solidified product can be mixed with water or hot water to prepare a coffee beverage”.
Claims 46 and 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 § 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 31-36, 39, 40, 42, and 43 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).
With respect to claim 31, Katsurayama relates to a freeze-dried tea product (paragraphs [0064] and [0078]).
Regarding the recitation of comprising dextrin and insoluble fine particles of beverage raw material, wherein a dextrin content of the beverage solidified product is 28% by mass or more; and 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 and insoluble components of tea leaf powder. 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 [0027], [0064] and [0078]).
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).
Regarding wherein the freeze-dried beverage solidified product can be mixed with water or hot water to prepare a beverage in claim 31, it is noted that this claim language relates to the future intended use of the claimed beverage solidified 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, it has been held that the recitation that an element is “capable of” performing a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense.
Further, there is no structural difference between the composition of claim 31 and the composition of Katsurayama as demonstrated above, and Katsurayama teaches the product can be combined with 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.
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 wherein the insoluble fine particles of beverage raw material comprise 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 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 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 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 in claim 31, 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).
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.
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 31, 32, 34-36, 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).
With respect to claim 31, Aoi relates to a freeze-dried beverage product (paragraphs [0001], [0011], [0032], and [0049]).
Regarding the recitation of comprising dextrin and insoluble fine particles of beverage raw material, wherein a dextrin content of the beverage solidified product is 28% by mass or more; and wherein a saccharide content of the beverage solidified product is 8.5% by mass or less in claim 31, Aoi teaches the product comprises 5-90% dextrin and water dispersible (insoluble) fine particles of beverage material 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]-[0013], [0018], [0019], [0023], [0031], [0032], [0044], 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).
Regarding wherein the freeze-dried beverage solidified product can be mixed with water or hot water to prepare a beverage in claim 31, it is noted that this claim language relates to the future intended use of the claimed beverage solidified 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, it has been held that the recitation that an element is “capable of” performing a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense.
Further, there is no structural difference between the composition of claim 31 and the composition of Aoi as demonstrated above, and 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.
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 wherein the insoluble fine particles of beverage raw material comprise insoluble fine particles of tea raw material in claim 32, Aoi teaches the product comprises water dispersible (insoluble) fine particles of tea leaf (paragraphs [0001], [0011], [0012], [0013], [0018], [0019], and [0023]).
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 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 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, 46, and 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 the recitation of comprising dextrin and finely ground coffee beans, wherein a dextrin content of the beverage solidified product is 28% by mass or more, and 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 5-90% 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]-[0013], [0023], [0031], [0032], [0044], 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).
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).
Regarding wherein the beverage solidified product can be mixed with water or hot water to prepare a coffee beverage in claim 45, it is noted that this claim language relates to the future intended use of the claimed beverage solidified 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, it has been held that the recitation that an element is “capable of” performing a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense.
Further, there is no structural difference between the composition of claim 45 and the composition of modified Aoi as demonstrated above, and 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.
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 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).
Response to Arguments
Applicant’s remarks filed May 11, 2026 are acknowledged.
Due to the amendments to the claims, the claim objections as well as the 35 USC 112 rejection in the previous Office Action have been withdrawn (P5-P6). However, the 35 USC 112 rejection above is necessitated by the amendments made to the claims.
Applicant’s arguments have been fully considered, but they are unpersuasive.
Applicant argues the instantly claimed dextrin content of 28% by mass or more is not obvious in view of Katsurayama. Katsurayama describes that taste depends on the blending ratio of xylitol and green tea. It would not be obvious to 1) replace xylitol with dextrin, and 20 adjust the amount of dextrin based on the taste, as the neutral taste of dextrin would have a negligible effect on the overall taste of the product. The teachings of Katsurayama regarding the amount of xylitol used could not be directly applied to dextrin with a reasonable expectation of preparing a functional and good tasting product. A dextrin content of 28% by mass or more surprisingly confers a considerably higher moisture resistance to the beverage solidified product. This effect is not considered or appreciated by Katsurayama (P6-P8).
Examiner disagrees. The claimed invention is obvious in view of Katsurayama, and there is ample motivation to arrive at the claimed dextrin content. Applicant is reminded that the Examiner recognizes that obviousness may be established by modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the reference or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation to arrive at the presently claimed invention is found within Katsurayama as well as in the knowledge generally available to one of ordinary skill in the art.
As addressed above, Katsurayama teaches a freeze-dried tea product comprising dextrin and insoluble components of tea leaf powder and is silent with respect to saccharide (paragraphs [0027], [0064] and [0078]). Katsurayama does not expressly disclose the quantity of dextrin. However, one of ordinary skill in the art would have been motivated to adjust the quantity of dextrin in Katsurayama through routine experimentation with the expectation of successfully preparing a functional product 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. Given that dextrin provides a bland/neutral taste, one of ordinary skill in the art would have been motivated to adjust the ratio of dextrin and green tea, which has a taste effect (paragraph [0072]), to obtain the desired strength/taste of green tea. Additionally, 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. “[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). Further, Katsurayama teaches dextrin provides the product with high moldability. Applicant is reminded that any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (differences in sedative and anticholinergic effects between prior art and claimed antidepressants were not unexpected). In other words, the unexpectedness must be sufficient “to secure the validity of the claims in suit.” Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1381 (Fed. Cir. 2005) and MPEP 716.02.
Applicant argues Aoi does not disclose insoluble fine particles of raw beverage material. It would not be obvious to include insoluble fine particles in the freeze-dried tea of Aoi, as this would be contrary to the principle of operation of Aoi of providing a freeze-dried tea with improved solubility (P6-P7 and P9-P10).
Examiner disagrees. Aoi clearly teaches the presently claimed invention. As previously addressed, Aoi teaches a freeze-dried beverage product comprising dextrin and water dispersible fine particles of beverage material which is interpreted as insoluble fine particles of beverage material (paragraphs [0001], [0011]-[0013], [0018], [0019], [0023], [0031], [0032], [0044], and [0049]). Applicant is reminded that "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). Additionally, if a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc).
Applicant argues Nishimori and Achterkamp do not teach or suggest a dextrin content of 28% by mass or more, or that the beverage solidified product comprises insoluble fine particles of beverage raw material (P8-P10).
Examiner disagrees. As previously addressed, Katsurayama and Aoi teach the presently claimed beverage solidified product comprising dextrin and insoluble fine particles of beverage raw material. Nishimori and Achterkamp are relied upon for the teaching of limitations found in some of the dependent claims. While Nishimori and Achterkamp do not disclose all the features of the presently claimed invention, Nishimori and Achterkamp are used as teaching references, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981).
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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/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793
/T.L.M/Examiner, Art Unit 1793
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