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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1 and 3-10 and new claim 12) in the reply filed on 2/3/2026 is acknowledged. Claim 2 and 11 are withdrawn and claims 1, 3-10 and 12 are examined in this office action.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over IDS reference to Nakahara (US 20160242431 A1 ), hereinafter Nakahara.
Regarding claims 1 and 3-4, Nakahara teaches that isovaleric acid is present in coffee beans and is a known volatile aromatic component of coffee (para 2)
and are known to affect flavor of coffee (para 17 and Figure 4) and this effect has been
studied (para 83) and in this study, 10 ppb of isovaleric acid was used (para 84 ). and
improvement in flavor of coffee was improved by isovaleric acid in conjunction with
other organic acids (para 87). Nakahara that common coffees include Coffea liberica and coffee beans may be used (see para 25).
Nakahara does not teach that an isovaleric acid content "per soluble solids of less than 10 ppm" ( as required by claims 1 and 3 ); and that "the soluble solids include Liberica coffee bean-derived soluble solids, and the Liberica coffee bean-derived soluble solids content is more than 0.0001 mass%." (as required by claim 4). But given that Nakahara teaches the importance of isovaleric acid (as explained above) and that liberica coffee is known to have its own unique flavor, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nakahara so that the coffee bean extract comprising isovaleric acid and where beans used may be Liberica coffee beans, to adjust the isovaleric acid content and Liberica content for the desired flavor level, such as the claimed "isovaleric acid content per soluble solids of less than 10 ppm" and "the soluble solids include Liberica coffee bean-derived soluble solids, and the Liberica coffee bean derived soluble solids content is more than 0.0001 mass%." . The ordinary artisan would have been motivated to modify Nakahara for at least the purpose of adjusting the aromatic component content as per customer preference such as by panelists representing the customer base preference for a fruity acidity added to coffee product (para 87 of Nakahara).
Regarding claims 5-7, Nakahara teaches the food or beverage according to claim 3,
wherein the food or beverage is coffee, but does not specify if it a beverage, concentrate or instant coffee. However, the above a common types of coffee dispensed in the market that are well known in the art. It would have been obvious to one of ordinary skills in the art at the time of the effective filing of the claimed invention to modify Nakahara so that the coffee is beverage, concentrate or instant coffee. The ordinary artisan would have been motivated to modify Nakahara for at least the purpose of producing flavorful coffee product in popular forms, such as beverage (best for
immediate consumption), concentrate (for ease of shipping) and instant coffee (to
increase storage time and reduce preparation time).
Regarding claim 8, Nakahara teaches an aroma-imparting composition, comprising: the
coffee bean extract according to claim I (as explained for claim 1 above; also see para 31 that explains aroma effect).
Regarding claims 9-10, Nakahara teaches all limitations have been addressed in claim 1, except for the use of a sealed container. However, given that that isovaleric acid is
present in coffee beans and is a known volatile aromatic component of coffee (para 2 of
Nakahara) and are known to affect flavor of coffee (para 17 and Figure 4 of Nakahara), it would have been obvious to one of ordinary skills in the art before the
effective filing date of the claimed invention to modify Nakahara so that the beverage is
stored in sealed container to lock in the volatile aromatic component. The ordinary
artisan would have been motivated to modify Nakahara for at least the purpose of
maintaining the desired flavor of coffee over time, with increased shelf life and
also prevent contamination from external contaminants.
Regarding claim 12, we are not equipped to conduct the test as recited in the
claim to determine that there is a compound that will meet the test conditions
specified. Applicant has described the product with parameters and equations which cannot be measured by the office for prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability purposes. As there is a sound basis for believing that the prior art product and the instantly claimed invention are substantially the same, a prima facia case of obviousness has been properly established, the burden is shifted to the applicant to show that the prior art product is different.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
IDS reference to Iwasa (US 20190223463) is pertinent as it teaches Liberica coffee beans but does not specify the isovaleric acid.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JYOTI CHAWLA whose telephone number is (571)272-8212. The examiner can normally be reached M-F 9:30- 5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached on 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JYOTI CHAWLA/Primary Examiner, Art Unit 1791
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