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 1-14 are pending in the application. Claims 3-6 are withdrawn from consideration.
Claim Objections
Claim 1 is objected to because of the following informalities:
The amendments to claim 1 in the claim set of May 11, 2026 are not reflective of the previous version of the claim in the claim set of October 18, 2023. In claim 1, the recitation of “a coffee component and” after “comprising” and before “a creamer” at line 1 as well as the recitation of “creamer” after “the” and before “composition” in line 2 in the claim set of October 18, 2023 have been omitted from the amendments filed May 11, 2026. Also, “and a coffee component” after “about 0.035:1” at line 3 and before “”wherein…” at line 4 of claim 1 have been added to the amendments of May 11, 2026. These amendments in the claim set of May 11, 2026 do not include the proper claim markings.
Applicant is reminded that amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered). All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of “currently amended,” and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. Only claims having the status of “currently amended,” or “withdrawn” if also being amended, shall include markings. If a withdrawn claim is currently amended, its status in the claim listing may be identified as “withdrawn— currently amended.” See MPEP 714.
Although the claim amendments to claim 1 submitted on May 11, 2026 fail to comply with 37 CFR 1.121, this claim will be examined and interpreted as follows (emphasis added) in order to advance prosecution:
Claim 1: A coffee beverage composition comprising a coffee component and a creamer composition, the creamer composition comprising casein or a salt thereof and an oil, wherein a weight ratio …to about 0.035:1, wherein the composition comprises 0.20 wt.% to 0.8 wt.% casein or a salt thereof, and wherein the composition is in the form of a powder.
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 1, 2, and 7-14 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 1 has been amended to recite “the composition comprises 0.20 wt.% to 0.8 wt.% casein or a salt thereof” at line 4. It is uncertain what is intended by this recitation. More specifically, it is unclear whether the composition at line 4 refers to the coffee beverage composition (see line 1) or the creamer composition (see line 2). Therefore, the scope of claim 1 is indefinite.
For the purpose of the examination, the recitation of “the composition” at line 4 of claim 1 is interpreted as “the creamer composition” (emphasis added).
Claim 1 also has been amended to recite “the composition is in the form of a powder” at line 5. It is unclear what is intended by this recitation. More specifically, it is unclear whether the composition at line 5 refers to the coffee beverage composition (see line 1), the coffee component (see line 1-2), or the creamer composition (see line 2). Additionally, the recitation of “the form” lacks antecedent basis as there is no prior recitation of a form in the claim. Therefore, the scope of the claim is indefinite.
For the purpose of the examination, the recitation of “the composition is in the form of a powder” at line 5 of claim 1 (emphasis added) is interpreted as “the coffee component is in powder form” (emphasis added).
Claim 2 is not specifically discussed but is rejected due to its dependence on claim 1.
New claim 7 recites “the composition” at line 2, and this claim depends upon claims 1 and 2. It is uncertain what is intended by this recitation. More specifically, it is unclear whether the composition at line 2 refers to the coffee beverage composition (see line 1 of claim 1) or the creamer composition (see line 2 of claim 1). Therefore, the scope of claim 7 is indefinite.
For the purpose of the examination, the recitation of “the composition” at line 2 of claim 7 is interpreted as “the creamer composition” (emphasis added).
Claims 8-13 are not specifically discussed but are rejected due to their dependence on claim 1.
New claim 14 recites “the composition” at the end of lines 1, 2, and 3, and this claim depends upon claim 1. It is uncertain what is intended by this recitation. More specifically, it is unclear whether the composition at lines 1, 2, and 3 refers to the coffee beverage composition (see line 1 of claim 1) or the creamer composition (see line 2 of claim 1). Therefore, the scope of claim 14 is indefinite.
For the purpose of the examination, the recitation of “the composition” at the end of lines 1, 2, and 3 of claim 14 is interpreted as “the creamer composition” (emphasis added).
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 1, 2, 7, and 11-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sargent et al. US 20040062846 (hereinafter “Sargent”).
With respect to claim 1, Sargent relates to a coffee beverage composition (paragraphs [0001], [0002], [0012], [0071], [0107], and [0109]).
Regarding comprising a coffee component and a creamer composition, the creamer composition comprising casein or a salt thereof and an oil, wherein a weight ratio of the casein or salt thereof to the oil is about 0.005:1 to about 0.035:1, wherein the creamer composition comprises 0.20 wt.% to 0.8 wt.% casein or a salt thereof, and wherein the coffee component is in powder form in claim 1, Sargent teaches the coffee beverage composition comprises a coffee component in powder form and a creamer composition. The ratio of the sodium caseinate (casein salt) to the oil in the creamer composition is 0.035:1 (0.6% sodium caseinate : (8.5% coconut oil + 8.5% canola oil)) in the example (paragraphs [0001], [0002], [0012], [0071], [0107], [0109], and [0131]; and P13, Table 6).
With respect to claim 2, Sargent is relied upon for the teaching of the coffee beverage composition as addressed above in claim 1.
Regarding the recitation of wherein upon reconstitution of the coffee beverage composition in water at a temperature of at least 70⁰C to form a coffee beverage a creamy layer is formed on top of a coffee beverage, wherein the creamy layer comprises a plurality of oil droplet aggregations in claim 2, it is noted that this recitation relates to the future intended use of the claimed coffee beverage composition. 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, Sargent teaches a composition that is identical to the claimed composition as addressed above in claim 1, and there is no structural difference between the composition of claim 1 and the composition of Sargent. Further, Sargent teaches the creamer composition delivers a creamy, rich, improved mouthfeel and thickness, smooth and emulsion-like organoleptic character when used in beverage products, and the coffee beverage composition may be combined with hot water to form a creamy coffee beverage (paragraphs [0002], [0010], [0012], [0071], [0107], and [0109]). 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 7, Sargent is relied upon for the teaching of the coffee beverage composition as addressed above in claim 2.
Regarding the recitation of wherein about 25 wt.% to about 80 wt.% of the oil of the composition is present in the creamy layer in claim 7, it is noted that this recitation relates to the future intended use of the claimed coffee beverage composition. 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, Sargent teaches a composition that is identical to the claimed composition as addressed above in claim 1, and there is no structural difference between the composition of claim 1 and the composition of Sargent. Further, Sargent teaches the creamer composition comprises oil, delivers a creamy, rich, improved mouthfeel and thickness, smooth and emulsion-like organoleptic character when used in beverage products, and the coffee beverage composition may be combined with hot water to form a creamy coffee beverage (paragraphs [0002], [0010], [0012], [0071], [0107], and [0109]; and P13, Table 6). 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 11, Sargent is relied upon for the teaching of the coffee beverage composition as addressed above in claim 1.
Regarding the recitation of wherein the casein or salt thereof is sodium caseinate in claim 11, Sargent teaches sodium caseinate is used (paragraph [0131] and P13, Table 6).
With respect to claim 12, Sargent is relied upon for the teaching of the coffee beverage composition as addressed above in claim 1.
Regarding the recitation of wherein the creamer composition comprises about 10 wt.% to about 80 wt.% oil in claim 12, Sargent teaches the creamer composition comprises 17% oil (8.5% coconut oil + 8.5% canola oil) (paragraph [0131]; and P13, Table 6).
With respect to claim 13, Sargent is relied upon for the teaching of the coffee beverage composition as addressed above in claim 1.
Regarding the recitation of wherein the creamer composition is a coffee creamer in claim 13, Sargent teaches using a coffee creamer in the beverage composition (paragraphs [0001], [0002], [0012], [0071], [0107], [0109], and [0131]; P13, Table 6).
With respect to claim 14, Sargent is relied upon for the teaching of the coffee beverage composition as addressed above in claim 1.
Regarding wherein the creamer composition further comprises a sweetener, wherein the sweetener is present in the creamer composition at a concentration ranging from about 20-70% by weight of the creamer composition in claim 14, Sargent teaches the creamer composition comprises 21.4% of sweetener (5% corn syrup solids + 16.33% + 0.07% acesulfame potassium) (paragraph [0131]; and P13, Table 6).
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 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Sargent et al. US 20040062846 (hereinafter “Sargent”) as applied to claim 1 above.
With respect to claims 8-10, Sargent is relied upon for the teaching of the coffee beverage composition as addressed above in claim 1.
Regarding the recitation of wherein the weight ratio of casein or a salt thereof to oil is 0.010:1 to 0.030:1 in claim 8, wherein the weight ratio of casein or a salt thereof to oil is 0.012:1 to 0.028:1 in claim 9, and wherein the weight ratio of casein or a salt thereof to oil is 0.015:1 to 0.025:1 in claim 10, Sargent teaches the amount of emulsifier such as sodium caseinate that may be used in the creamer composition is about 0.05% to about 50%, which provides a weight ratio of sodium caseinate (casein salt) to oil of about 0.0029:1 to about 2.9:1 (0.05% to 50% sodium caseinate : (8.5% coconut oil + 8.5% canola oil)) and encompasses the presently claimed ranges (paragraphs [0052] and [0131]; and P13, Table 6). 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).
Response to Arguments
Applicant’s reply filed May 11, 2026 is acknowledged.
Due to the submission of Fig. 11, the objections to the drawings in the previous Office Action have been withdrawn (P5).
The 35 USC 112 rejections above are necessitated by the amendments made to the claims.
Applicant’s arguments have been fully considered, but they are unpersuasive.
Applicant argues Sargent fails to disclose or suggest each and every element of the present claims. Sargent does not suggest or disclose the composition comprises 0.20 wt.% to 0.8 wt.% casein or a salt thereof, and the composition is in the form of a powder as presently claimed (P5-P7).
Examiner disagrees. Sargent teaches the claimed invention. As addressed above, the newly added limitation in claim 1 is interpreted as “wherein the creamer composition comprises 0.20 wt.% to 0.8 wt.% casein or a salt thereof, and wherein the coffee component is in powder form” since the scope of claim 1 in the claim set filed May 11, 2026 cannot be ascertained (see the 35 USC 112 rejection above). Sargent teaches the claimed beverage composition since Sargent teaches the coffee beverage composition comprises a coffee component in powder form and a creamer composition. The ratio of the sodium caseinate (casein salt) to the oil in the creamer composition is 0.035:1 (0.6% sodium caseinate : (8.5% coconut oil + 8.5% canola oil)) in the example (paragraphs [0001], [0002], [0012], [0071], [0107], [0109], and [0131]; P13, Table 6).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TYNESHA L. MCCLAIN whose telephone number is (571)270-1153. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM ET.
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/T.L.M/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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