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 .
This office action is in response to amendment filed on 4/17/26. Claims 1 and 18 are amended. Claims 1-19 are pending.
Upon further consideration, the previous 112 second paragraph rejection is withdrawn.
Claim Rejections - 35 USC § 112
Claims 1-19 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.
In claim 1, the limitation, “ wherein a first concentration of the first portion of the extract is lower than a second concentration of the second portion of the extract” is not supported by the original disclosure. Applicant does not point out the support for the limitation in the specification. There is no such disclosure in the instant specification. Instead, the specification discloses the opposite. In paragraphs 0025-0026, 0037, the specification discloses “ in some examples, 50-90%, 60-90%, 70-90 or 80-90% of the extract is treated with reverse osmosis. In some examples, 50-10%,40-10%,30-10% or 20-10% of the extract is treated with freeze concentration”. The concentration of the extract treated with reverse osmosis is higher than the one treated with freeze concentration. Even at the low end of 50% of one and the high end of 50% of the other, the concentration is equal and not lower as claimed. There is no indication that applicant is in possession of the subject matter now claimed.
Claim Rejections - 35 USC § 103
Claim(s) 1-8,10-13,16-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Niven ( 3458320) in view of Schlecht ( 5242700), Scher ( 2013/0101705) and Glahn ( 6143346)
For claims 1,6, Niven discloses a method of producing instant coffee. The process comprises the step purifying a portion of an extract using freeze concentration, concentrating another portion of extract using evaporation, combining certain proportions of the two extracts and drying the portions. One portion of the extract has a low concentration of water soluble components and the other portion contains high concentration of water soluble components. Thus, the two extracts are separate. The drying is done by spray drying. The combined product is used to prepare beverage. For claims 2-3, Niven discloses one portion is subjected to freeze concentration and one portion is subjected to evaporation. Thus, the one subjecting to evaporation is not subjected freeze concentration and the one subjected to freeze concentration is not subjected to evaporation. For claim 10, the extract comprises hot coffee because the extraction is done on coffee that has hot water added ( see col. 3-4, col. 8 and claim 1)
For claim 11, Niven discloses roasting the coffee. ( see col. 6 lines 35-45)
For claims 12-13, Niven disclose introducing an extraction medium into the extraction material to extract and the medium is water. ( see claim 1)
For claims 16-17, Niven discloses reconstituting dried particles with water to make beverage. ( see col. 3)
Niven does not disclose concentrating with reverse osmosis, the concentration and the ratio as in claim 1, the ratio as in claims 4-5, the sequence as in claims 7-8 and the BX values as in claims 18-19.
Sher discloses coffee extract. She discloses concentrating of the extract may by performed by evaporation or filtration such as reverse osmosis. ( see paragraph 0011)
Schlecht discloses treatment of extracts by extraction of coffee. Schlecht teaches concentrating by evaporator equipped with means for condensing and concentrating the vapor produced by reverse osmosis. ( see col. 3 lines 45-56)
Glahn teaches that purifying of extract can be carried out by reverse osmosis to concentrate and purify the extract in the same step. ( see col. 1 lines 38-41)
The designation of first portion and second portion in the claims are just terminology. There is no parameter defining the first portion and second portion other than that they are separate. The requirement of claim 1 is that one portion is concentrated by freeze concentration and another by reverse osmosis. Niven discloses concentrating one portion by freeze concentration and another portion by evaporation but places no restriction or limitation on the evaporation. As shown in Sher, evaporation and reverse osmosis is used interchangeably. Schlecht shows the two techniques can be combined and Glahn show that reverse osmosis achieves both purification and concentration. Thus, it would have been obvious to one of ordinary skill in the art to substitute reverse osmosis for evaporation because it’s a well known alternative technique to achieve the same end result. One of skill would have been motivated to use reverse osmosis for the reason taught by Schlecht and Glahn. Niven discloses the two extracts are obtained from different parts of the coffee and contain different components. Niven teach to mix the two different concentrated extracts. It would have been obvious to one of ordinary skill in the art to vary the ratios of the two portions depending on the taste and flavor desired. It would have been obvious to one of ordinary skill in the art to subject different amount to the different purifying and concentrating steps depending on what is desired. For instance, it would have been obvious to subject more of extract to freeze concentration when desiring more of the water soluble components because the step gives less amount of the water soluble components. Such parameter can readily be determined by one skilled in the art through routine experimentation. It would have been an obvious matter of choice to dry the two extracts first before combining or vice versa. It would have been readily apparent to one of ordinary skill in the art to dry the two extracts separately if they are combined after spray-drying because they are two separate portions. The Bx value indicates the solid content in the extract. Niven discloses the first and second extracts have a dry matter content of about 45%. Thus, it is expected that the Bx ranges are within the claimed ranges. If not, it would have been within the skill of one in the art to determine the appropriate Bx depending on the solid content desired.
Claim(s) 9,14,15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Niven in view of Sher, Schlecht and Glahn as applied to claims 1-8,10-13,16-19 above, and further in view of Sahai ( 11350645).
Niven does not disclose cold brew as in claims 9,14,15.
Sahai discloses a process for preparing soluble instant coffee. Sahai teaches extraction using water at a temperature of between 0-110 degrees C, between 20-30 degrees C. ( see col. 2 lines 30-45)
As shown in Sahai, extraction can be carried out at cool to hot temperature. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform the extraction in water having the temperature disclosed in Sahai as a known alternative of extraction technique. Extraction at cooler temperature would give cold brew.
Response to Arguments
Applicant's arguments filed 4/17/26 have been fully considered but they are not persuasive.
In the response, applicant argues Niven uses freeze concentration for the low concentration extract and evaporation for the high concentration extract. This argument is not persuasive. The low and high concentration pointed out by applicant refers specifically to the water soluble components. The claimed limitation does not define the concentration of any particular components. The concentration claimed is the amount of extract that subjected to reverse osmosis and amount that is subjected to freeze concentration. It would have been obvious to one of ordinary skill in the art to subject different amounts to the different purifying and concentrating steps depending on what is desired. For instance, it would have been obvious to subject more of extract to freeze concentration when desiring more of the water soluble components because the step gives less amount of the water soluble components. Such parameter can readily be determined by one skilled in the art through routine experimentation. Niven discloses to treat different portions of the extract by different methods. The designation of first portion and second portion in the claims are just terminology. There is no parameter defining the first portion and second portion other than that they are separate. The requirement of claim 1 is that one portion is concentrated by freeze concentration and another by reverse osmosis. Niven discloses concentrating one portion by freeze concentration and another portion by evaporation but places no restriction or limitation on the evaporation. As shown in Sher, evaporation and reverse osmosis is used interchangeably. Schlecht shows the two techniques can be combined and Glahn show that reverse osmosis achieves both purification and concentration. Thus, it would have been obvious to one of ordinary skill in the art to substitute reverse osmosis for evaporation because it’s a well known alternative technique to achieve the same end result. One of skill would have been motivated to use reverse osmosis for the reason taught by Schlecht and Glahn.
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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June 17, 2026
/LIEN T TRAN/Primary Examiner, Art Unit 1793
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