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 .
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 1-4 and 6-21 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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation “flash hot brewing ground coffee for a range of 5 minutes to 45 minutes to brew a hot coffee extract” in lines 3-4. The term “hot” is a relative term which renders the claim indefinite. The term “hot” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 9 recites the limitation “flash hot brewing ground coffee for a range of 5 minutes to 45 minutes to brew a hot coffee extract” in lines 3-4. The term “hot” is a relative term which renders the claim indefinite. The term “hot” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 15 recites the limitation “flash hot brewing ground coffee for a range of 5 minutes to 45 minutes to brew a hot coffee extract” in lines 3-4. The term “hot” is a relative term which renders the claim indefinite. The term “hot” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 21 recites the limitation “the flash brewed coffee concentrate which requires further dilution to be ready to drink” in lines 2-3. It is unclear what dilution levels/water levels reads on the claimed “ready to drink” status.
Clarification is required.
Claims 2-4, 6-8, 10-14, and 16-20 are rejected as being dependent on a rejected base claim.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Mamo US 2014/0322397 in view of Sherwood et al. US 2011/0183052, Smits et al. US 2017/0295814 (cited on Information Disclosure Statement filed January 31, 2024), and Cevallos et al. US 6,447,830.
Regarding Claim 1, Mamo discloses a method of flash brewing brewed coffee (‘397, Paragraph [0032]) having any solubles concentration (‘397, Paragraph [0018]) comprising the steps of hot brewing ground coffee using any suitable hot brewing method using liquid water for extraction (‘397, Paragraph [0017]), flash pasteurizing the hot brewed coffee beverage by heating at about 250°F and then filling and sealing the container (‘397, Paragraph [0032]).
Mamo discloses the coffee beverage being made using any suitable hot brewing process (‘397, Paragraph [0017]). However, Mamo is silent regarding the method being applied to making a coffee concentrate, flash hot brewing the ground coffee for a range of 5 minutes to 45 minutes, mixing the hot coffee extract at a temperature greater than 145 degrees Fahrenheit with a concentrated coffee extract to form the flash brewed coffee concentrate having a concentration of coffee solids greater than a concentration of coffee solids in the hot coffee extract. Mamo is also silent regarding explicitly stating the hot packing temperature of the concentrated coffee extract to be a temperature greater than 145 degrees Fahrenheit.
Smits et al. discloses a method of brewing a flash brewed coffee concentrate. The method comprises flash hot brewing ground coffee (‘814, Paragraph [0040]) to brew a hot coffee extract (secondary primary extract) and mixing the hot coffee extract (secondary primary extract) with a concentrated coffee extract (secondary extract) to form a flash brewed coffee concentrate (concentrated extract) (‘814, Paragraph [0047]) wherein extraction occurs for a cycle time of between 10 and 60 minutes (‘814, Paragraph [0040]). The disclosure of an extraction process cycle time taking up between 10 and 60 minutes (‘814, Paragraph [0040]) broadly reads on the claimed “flash brew” method and also overlaps the claimed flash hot brewing ground coffee for a range of 5 minutes to 45 minutes to brew a hot coffee extract. It is noted that the claims do not specify any particular temperature range at which the flash hot brewing step occurs. Smits et al. also discloses a step of subjecting the second primary extract and the secondary extract to evaporation to obtain a concentrated extract wherein evaporation is conducted separately for both extracts after which the concentrated extracts are combined (‘814, Paragraph [0047]). Smits et al. is directed to mixing different coffee extracts to obtain a more concentrated concentrate, which necessarily entails the final flash brewed coffee concentrate mixture of combined concentrated extracts having a concentration of coffee solids greater than a concentration of coffee solids in the singular hot coffee extract.
Mamo discloses the coffee beverage being made using any suitable hot brewing process (‘397, Paragraph [0017]). Both Mamo and Smits et al. are directed towards the same field of endeavor of methods of making coffee products using thermal processes. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the coffee making process of Mamo that can be made using any suitable hot brewing process and utilize the hot brewing methods of Smits et al. that teaches the claimed steps of flash hot brewing ground coffee to make the hot coffee extract and mix the hot coffee extract with a concentrated coffee extract to form a flash brewed coffee concentrate having a concentration of coffee solids greater than a concentration of coffee solids in the hot coffee extract as taught by Smits et al. based upon the desired coffee brewing process and concentration of brewed coffee concentrate desired to be made. Furthermore, it would have been obvious to one of ordinary skill in the art to modify the process of Mamo and subject the flash hot brewed ground coffee for the claimed time duration as taught by Smits et al. since where the claimed flash hot brewing ground coffee duration overlaps flash hot brewing ground coffee durations disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.). Furthermore, differences in the flash hot brewing ground coffee duration will not support the patentability of subject matter disclosed by the prior art unless there is evidence indicating such flash hot brewing ground coffee duration is critical. Where 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the flash hot brewing ground coffee duration based upon the particular temperature at which the flash hot brewing ground coffee step occurs as well as the desired concentration of the end product (‘814, Paragraph [0041]).
Further regarding Claim 1, Mamo discloses flash pasteurizing the coffee at a temperature of about 250°F and then packing (filling) the container with the coffee (‘397, Paragraph [0032]). However, Mamo modified with Smits et al. does not explicitly state that the filing/packing step occurs as the concentrated coffee extract is hot packaged at a temperature of greater than 145 degrees Fahrenheit.
Sherwood et al. discloses a method of treating beverages to inactivate or remove microbes by thermal processing by exposure to elevated temperature and aseptic packaging (‘052, Paragraph [0070]) and hot filling the product by thermally processing the product with a maximum temperature of about 160°F to about 200°F and cooling the product slightly to about 160°F to about 185°F just prior to being filled into glass or plastic containers designed for hot fill (‘052, Paragraph [0076]) wherein the product is a coffee beverage concentrated syrup (‘052, Paragraph [0105]). The disclosure of hot filling the coffee beverage concentrated syrup into a container at about 160°F to about 185°F falls within the claimed hot packing temperature range of greater than 145 degrees Fahrenheit.
Both modified Mamo and Sherwood et al. are directed towards the same field of endeavor of methods of thermally processing concentrated coffee. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of modified Mamo and hot pack the concentrated coffee extract at the claimed temperature range of greater than 145 degrees Fahrenheit as taught by Sherwood et al. since where the claimed step of hot packing the concentrated coffee extract overlaps temperatures of hot packing concentrated coffee extracts disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.). Furthermore, differences in the temperature of hot packing the concentrated coffee extract will not support the patentability of subject matter disclosed by the prior art unless there is evidence indicating such temperature of hot packing the concentrated coffee extract is critical. Where 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the packing/filling temperature into a container of Mamo to heat treated elevated temperatures such that microbes in the drink are inactivated to product a final product having long storage shelf stability as suggested by Sherwood et al. (‘052, Paragraphs [0058] and [0076]).
Further regarding Claim 1, Smits et al. discloses extraction of water soluble coffee components at a temperature of between 85°C and 95°C (‘814, Paragraph [0040]), which converts to about 185°F to about 203°F, which overlaps the hot coffee extract processing temperature at a temperature greater than 145 degrees Fahrenheit. Sherwood et al. discloses thermally processing the beverage in a continuous flow at a maximum temperature of about 160°F to about 200°F (‘052, Paragraph [0076]). The disclosure of a continuous flow of the beverage necessarily entails a mixing step and the continuous flow thermally processing temperature of about 160°F to about 200°F (‘052, Paragraph [0076]) also falls within the claimed step of mixing at a temperature greater than 145 degrees Fahrenheit. However, Mamo modified with Smits et al. and Sherwood et al. is silent regarding explicitly teaching a step of mixing the hot coffee extract with the concentrated coffee extract at the claimed temperature of greater than 145 degrees Fahrenheit.
Cevallos et al. discloses a method of hot packing (hot filling) a concentrated coffee extract intermediate with heat treatment at a temperature of between about 80°C and 100°C prior to hot packing (hot filling) (‘830, Column 5, lines 57-64) wherein the concentrated coffee extract intermediate comprises a mixture of a hot coffee extract (base coffee concentrate) and a concentrated coffee extract (aromatized coffee concentrate) to form a mixture (whitened coffee concentrate) of a brewed coffee concentrate having a concentration of coffee solids greater than a concentration of coffee solids in the hot coffee extract (‘830, Column 6, lines 44-61). The mixture of hot coffee extract and concentrated coffee extract is mixed (subjected to colloidal milling then homogenized) at a temperature of 93°C (‘830, Column 7, lines 6-18), which converts to about 200°F, which falls within the claimed mixing temperature range of greater than 145 degrees Fahrenheit.
Modified Mamo and Cevallos et al. are directed towards the same field of endeavor of methods of thermally processing coffee products at elevated temperatures. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of modified Mamo and mix a hot coffee extract with a concentrated coffee extract at the claimed temperature range as taught by Cevallos et al. since where the claimed temperature of the step of mixing a hot coffee extract with a concentrated coffee extract overlaps mixing temperature steps disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.). Furthermore, differences in the step of mixing a hot coffee extract with a concentrated coffee extract will not support the patentability of subject matter disclosed by the prior art unless there is evidence indicating such mixing temperature is critical. Where 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the hot brewing that can use any suitable method disclosed by Mamo (‘397, Paragraph [0032]) and adjust the temperature of the step of mixing a hot coffee extract with a concentrated coffee extract or any of the process steps of modified Mamo to the claimed elevated temperature of greater than 145 degrees Fahrenheit in order to inactivate or remove microbes from the composition as taught by Sherwood et al. (‘052, Paragraphs [0070] and [0076]).
Regarding Claims 2-3, Mamo discloses the coffee being made using any suitable method (‘397, Paragraph [0032]). Smits et al. discloses a step of subjecting the second primary extract and the secondary extract to evaporation to obtain a concentrated extract wherein evaporation is conducted separately for both extracts after which the concentrated extracts are combined (‘814, Paragraph [0047]). Smits et al. is directed to mixing different coffee extracts to obtain a more concentrated concentrate, which necessarily entails the final flash brewed coffee concentrate mixture of combined concentrated extracts having a concentration of coffee solids greater than a concentration of coffee solids in the singular hot coffee extract. Although Smits et al. does not explicitly state that the concentration of coffee solids of hot coffee extract is less than 15 Brix or in a range of 1 Brix to 12 Brix wherein mixing the hot coffee extract with the concentrated coffee extract forms the flash brewed coffee concentrate with a concentration of coffee solids greater than 15 Brix, differences the concentration of the coffee solids within either the initial hot coffee extract or the mixture of hot coffee extract with the concentrated coffee extract that forms the flash brewed coffee concentrate will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentrations are critical. Where 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the concentration of the coffee solids within the concentrated coffee extract of modified Smits et al. based upon the desired strength of the final flash brewed coffee concentrate containing the mixture of hot coffee extract and concentrated coffee extract.
Regarding Claim 4, Mamo discloses the packaged hot brewed coffee beverage being stored with or without refrigeration for an indefinite period at near ambient temperatures of about 77°F (‘397, Paragraph [0027]), which falls within the claimed storage temperature in a range of 75 degrees Fahrenheit to 85 degrees Fahrenheit. This storage temperature would necessarily occur after the hot packing step disclosed by Sherwood et al. (‘052, Paragraph [0076]) that is also stored at about 75°F after packaging (‘052, Paragraph [0068]). One of ordinary skill in the art at the time of the invention would modify the coffee beverage product to be stored at ambient temperatures without being refrigerated for extended periods (‘397, Paragraph [0015]) in order to store the coffee product without refrigeration costs until desired to be consumed.
Regarding Claim 6, Mamo discloses adding additives (flavorants) before, during, or after brewing (‘397, Paragraph [0025]).
Further regarding Claim 6, although Mamo modified with Sherwood et al., Smits et al., and Cevallos et al. does not explicitly disclose the order in which the additives are added to be after mixing the hot coffee extract with the concentrated coffee extract, the selection or any order of mixing ingredients is prima facie obvious in view of In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (MPEP § 2144.04.IV.C.). The additives would be mixed into the hot coffee extract and concentrated coffee extract mixture regardless of the order in the processing steps.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Mamo US 2014/0322397 in view of Sherwood et al. US 2011/0183052, Smits et al. US 2017/0295814 (cited on Information Disclosure Statement filed January 31, 2024), and Cevallos et al. US 6,447,830 as applied to claim 6 above in further view of Birch et al. US 2020/0170277.
Regarding Claim 7, Mamo modified with Sherwood et al., Smits et al., and Cevallos et al. is silent regarding the additives being dry coffee solids added to the concentrated coffee extract to further increase the concentration of coffee solids in the concentrated coffee extract.
Birch et al. discloses a coffee concentrate made of extracts of coffee beans comprising water soluble coffee solids wherein it is known to add an amount of finely ground roast coffee particles into a soluble coffee extract to achieve a good aroma (‘277, Paragraph [0003]). The disclosure of finely ground roast coffee particles reads on the claimed added dry coffee solids that increases the concentration of coffee solids in the concentrated coffee extract.
Both modified Mamo and Birch et al. are directed towards the same field of endeavor of methods of making coffee beverages from concentrated coffee extracts. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of modified Mamo and add dry coffee solids in the form of finely ground roast coffee particles to the concentrated coffee extract as taught by Birch et al. based upon the desired aroma of the final coffee product.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Mamo US 2014/0322397 in view of Sherwood et al. US 2011/0183052, Smits et al. US 2017/0295814 (cited on Information Disclosure Statement filed January 31, 2024), and Cevallos et al. US 6,447,830 as applied to claim 6 above in further view of Rios Perez et al. US 2019/0090504.
Regarding Claim 8, Mamo modified with Sherwood et al., Smits et al., and Cevallos et al. is silent regarding the additives being natural coffee flavor added to the concentrated coffee extract to adjust the sensory profile of the concentrated coffee extract.
Rios Perez et al. discloses coffee comprising oily natural and/or artificial flavors (‘504, Paragraph [0015]) wherein natural flavors and/or natural coffee aromas are added directly to coffee extracts (‘504, Paragraph [0032]).
Both modified Mamo and Rios Perez et al. are directed towards the same field of endeavor of methods of making coffee beverages using concentrated coffee extracts. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of modified Mamo and add natural coffee flavor to the concentrated coffee extract as taught by Rios Perez et al. based upon the desired coffee flavor aroma and coffee flavor concentration desired.
Claims 9, 12-13, 15, 18-19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Mamo US 2014/0322397 in view of Smits et al. US 2017/0295814 (cited on Information Disclosure Statement filed January 31, 2024) and Cevallos et al. US 6,447,830.
Regarding Claims 9 and 15, Mamo discloses a method of flash brewing brewed coffee (‘397, Paragraph [0032]) having any solubles concentration (‘397, Paragraph [0018]) comprising the steps of hot brewing ground coffee using any suitable hot brewing method using liquid water for extraction (‘397, Paragraph [0017]) and flash pasteurizing the hot brewed coffee beverage by heating (‘397, Paragraph [0032]) and adding additives (flavorants) to the coffee before, during, or after brewing (‘397, Paragraph [0025]).
Further regarding Claims 9 and 15, Mamo discloses the coffee beverage being made using any suitable hot brewing process (‘397, Paragraph [0017]). However, Mamo is silent regarding the method being applied to making a coffee concentrate, flash hot brewing the ground coffee for a range of 5 minutes to 45 minutes, mixing the hot coffee extract at a temperature greater than 145 degrees Fahrenheit with a concentrated coffee extract to form the flash brewed coffee concentrate having a concentration of coffee solids greater than a concentration of coffee solids in the hot coffee extract.
Smits et al. discloses a method of brewing a flash brewed coffee concentrate. The method comprises flash hot brewing ground coffee (‘814, Paragraph [0040]) to brew a hot coffee extract (secondary primary extract) and mixing the hot coffee extract (secondary primary extract) with a concentrated coffee extract (secondary extract) to form a flash brewed coffee concentrate (concentrated extract) (‘814, Paragraph [0047]) wherein extraction occurs for a cycle time of between 10 and 60 minutes (‘814, Paragraph [0040]). The disclosure of an extraction process cycle time taking up between 10 and 60 minutes (‘814, Paragraph [0040]) broadly reads on the claimed “flash brew” method and also overlaps the claimed flash hot brewing ground coffee for a range of 5 minutes to 45 minutes to brew a hot coffee extract. It is noted that the claims do not specify any particular temperature range at which the flash hot brewing step occurs. Smits et al. also discloses a step of subjecting the second primary extract and the secondary extract to evaporation to obtain a concentrated extract wherein evaporation is conducted separately for both extracts after which the concentrated extracts are combined (‘814, Paragraph [0047]). Smits et al. is directed to mixing different coffee extracts to obtain a more concentrated concentrate, which necessarily entails the final flash brewed coffee concentrate mixture of combined concentrated extracts having a concentration of coffee solids greater than a concentration of coffee solids in the singular hot coffee extract.
Mamo discloses the coffee beverage being made using any suitable hot brewing process (‘397, Paragraph [0017]). Both Mamo and Smits et al. are directed towards the same field of endeavor of methods of making coffee products using thermal processes. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the coffee making process of Mamo that can be made using any suitable hot brewing process and utilize the hot brewing methods of Smits et al. that teaches the claimed steps of flash hot brewing ground coffee to make the hot coffee extract and mix the hot coffee extract with a concentrated coffee extract to form a flash brewed coffee concentrate having a concentration of coffee solids greater than a concentration of coffee solids in the hot coffee extract as taught by Smits et al. based upon the desired coffee brewing process and concentration of brewed coffee concentrate desired to be made. Furthermore, it would have been obvious to one of ordinary skill in the art to modify the process of Mamo and subject the flash hot brewed ground coffee for the claimed time duration as taught by Smits et al. since where the claimed flash hot brewing ground coffee duration overlaps flash hot brewing ground coffee durations disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.). Furthermore, differences in the flash hot brewing ground coffee duration will not support the patentability of subject matter disclosed by the prior art unless there is evidence indicating such flash hot brewing ground coffee duration is critical. Where 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the flash hot brewing ground coffee duration based upon the particular temperature at which the flash hot brewing ground coffee step occurs as well as the desired concentration of the end product (‘814, Paragraph [0041]).
Further regarding Claims 9 and 15, Smits et al. discloses extraction of water soluble coffee components at a temperature of between 85°C and 95°C (‘814, Paragraph [0040]), which converts to about 185°F to about 203°F, which overlaps the hot coffee extract processing temperature at a temperature greater than 145 degrees Fahrenheit. Sherwood et al. discloses thermally processing the beverage in a continuous flow at a maximum temperature of about 160°F to about 200°F (‘052, Paragraph [0076]). The disclosure of a continuous flow of the beverage necessarily entails a mixing step and the continuous flow thermally processing temperature of about 160°F to about 200°F (‘052, Paragraph [0076]) also falls within the claimed step of mixing at a temperature greater than 145 degrees Fahrenheit. However, Mamo modified with Smits et al. is silent regarding explicitly teaching a step of mixing the hot coffee extract with the concentrated coffee extract at the claimed temperature of greater than 145 degrees Fahrenheit.
Cevallos et al. discloses a method of making a concentrated coffee extract intermediate with heat treatment at a temperature of between about 80°C and 100°C (‘830, Column 5, lines 57-64) wherein the concentrated coffee extract intermediate comprises a mixture of a hot coffee extract (base coffee concentrate) and a concentrated coffee extract (aromatized coffee concentrate) to form a mixture (whitened coffee concentrate) of a brewed coffee concentrate having a concentration of coffee solids greater than a concentration of coffee solids in the hot coffee extract (‘830, Column 6, lines 44-61). The mixture of hot coffee extract and concentrated coffee extract is mixed (subjected to colloidal milling then homogenized) at a temperature of 93°C (‘830, Column 7, lines 6-18), which converts to about 200°F, which falls within the claimed mixing temperature range of greater than 145 degrees Fahrenheit.
Modified Mamo and Cevallos et al. are directed towards the same field of endeavor of methods of thermally processing coffee products at elevated temperatures. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of modified Mamo and mix a hot coffee extract with a concentrated coffee extract at the claimed temperature range as taught by Cevallos et al. since where the claimed temperature of the step of mixing a hot coffee extract with a concentrated coffee extract overlaps mixing temperature steps disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.). Furthermore, differences in the step of mixing a hot coffee extract with a concentrated coffee extract will not support the patentability of subject matter disclosed by the prior art unless there is evidence indicating such mixing temperature is critical. Where 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the hot brewing that can use any suitable method disclosed by Mamo (‘397, Paragraph [0032]) and adjust the temperature of the step of mixing a hot coffee extract with a concentrated coffee extract or any of the process steps of modified Mamo to the claimed elevated temperature of greater than 145 degrees Fahrenheit in order to inactivate or remove microbes from the composition at elevated temperatures.
Further regarding Claims 9 and 15, Mamo discloses the additive (flavorant) being added before, during, or after brewing (‘397, Paragraph [0025]). Although Mamo does not explicitly state the step of adding the additives to the concentrated coffee extract after or while mixing the hot coffee extract with the concentrated coffee extract, the selection or any order of mixing ingredients is prima facie obvious in view of In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (MPEP § 2144.04.IV.C.). The additives would be mixed into the hot coffee extract and concentrated coffee extract mixture regardless of the order in the processing steps.
Regarding Claims 12-13 and 18-19, Mamo discloses the coffee being made using any suitable method (‘397, Paragraph [0032]). Smits et al. discloses a step of subjecting the second primary extract and the secondary extract to evaporation to obtain a concentrated extract wherein evaporation is conducted separately for both extracts after which the concentrated extracts are combined (‘814, Paragraph [0047]). Smits et al. is directed to mixing different coffee extracts to obtain a more concentrated concentrate, which necessarily entails the final flash brewed coffee concentrate mixture of combined concentrated extracts having a concentration of coffee solids greater than a concentration of coffee solids in the singular hot coffee extract. Although Smits et al. does not explicitly state that the concentration of coffee solids of hot coffee extract is less than 15 Brix or in a range of 1 Brix to 12 Brix wherein mixing the hot coffee extract with the concentrated coffee extract forms the flash brewed coffee concentrate with a concentration of coffee solids greater than 15 Brix, differences the concentration of the coffee solids within either the initial hot coffee extract or the mixture of hot coffee extract with the concentrated coffee extract that forms the flash brewed coffee concentrate will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentrations are critical. Where 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the concentration of the coffee solids within the concentrated coffee extract of modified Smits et al. based upon the desired strength of the final flash brewed coffee concentrate containing the mixture of hot coffee extract and concentrated coffee extract.
Regarding Claim 21, Mamo discloses the coffee having additives (flavorants) added thereto (‘397, Paragraph [0025]). Smits et al. discloses the coffee being a concentrated coffee extract (‘814, Paragraph [0002]) wherein the liquid coffee concentrate is suitable for providing an espresso type of coffee brew (‘814, Paragraph [0009]), which reads on the claimed brewed coffee concentrate requiring further dilution to be ready to drink. It is noted that the claim does not recite any particular dilution levels or added water levels that are added to the coffee concentrate.
Claims 10 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Mamo US 2014/0322397 in view of Smits et al. US 2017/0295814 (cited on Information Disclosure Statement filed January 31, 2024) and Cevallos et al. US 6,447,830 as applied to claim 9 or claim 15 above in further view of Birch et al. US 2020/0170277.
Regarding Claims 10 and 16, Mamo modified with Smits et al. and Cevallos et al. is silent regarding the additives being dry coffee solids added to the concentrated coffee extract to further increase the concentration of coffee solids in the concentrated coffee extract.
Birch et al. discloses a coffee concentrate made of extracts of coffee beans comprising water soluble coffee solids wherein it is known to add an amount of finely ground roast coffee particles into a soluble coffee extract to achieve a good aroma (‘277, Paragraph [0003]). The disclosure of finely ground roast coffee particles reads on the claimed added dry coffee solids that increases the concentration of coffee solids in the concentrated coffee extract.
Both modified Mamo and Birch et al. are directed towards the same field of endeavor of methods of making coffee beverages from concentrated coffee extracts. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of modified Mamo and add dry coffee solids in the form of finely ground roast coffee particles to the concentrated coffee extract as taught by Birch et al. based upon the desired aroma of the final coffee product.
Claims 11 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Mamo US 2014/0322397 in view of Smits et al. US 2017/0295814 (cited on Information Disclosure Statement filed January 31, 2024) and Cevallos et al. US 6,447,830 as applied to claim 9 or claim 15 above in further view of Rios Perez et al. US 2019/0090504.
Regarding Claims 11 and 17, Mamo modified with Smits et al. and Cevallos et al. is silent regarding the additives being natural coffee flavor added to the concentrated coffee extract to adjust the sensory profile of the concentrated coffee extract.
Rios Perez et al. discloses coffee comprising oily natural and/or artificial flavors (‘504, Paragraph [0015]) wherein natural flavors and/or natural coffee aromas are added directly to coffee extracts (‘504, Paragraph [0032]).
Both modified Mamo and Rios Perez et al. are directed towards the same field of endeavor of methods of making coffee beverages using concentrated coffee extracts. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of modified Mamo and add natural coffee flavor to the concentrated coffee extract as taught by Rios Perez et al. based upon the desired coffee flavor aroma and coffee flavor concentration desired.
Claims 14 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Mamo US 2014/0322397 in view of Smits et al. US 2017/0295814 (cited on Information Disclosure Statement filed January 31, 2024) and Cevallos et al. US 6,447,830.
Regarding Claims 14 and 20, Mamo discloses the packaged hot brewed coffee beverage being stored with or without refrigeration for an indefinite period at near ambient temperatures of about 77°F (‘397, Paragraph [0027]), which falls within the claimed storage temperature in a range of 75 degrees Fahrenheit to 85 degrees Fahrenheit. This storage temperature would necessarily occur after the packing/packaging step. Mamo also discloses adding additives (flavorants) to the coffee (‘397, Paragraph [0025]), which would also necessarily occur before the packing/packaging step.
Mamo discloses flash pasteurizing the coffee at a temperature of about 250°F and then packing (filling) the container with the coffee (‘397, Paragraph [0032]). However, Mamo modified with Smits et al. and Cevallos et al. does not explicitly state that the filing/packing step occurs as the concentrated coffee extract is hot packaged at a temperature of greater than 145 degrees Fahrenheit.
Sherwood et al. discloses a method of treating beverages to inactivate or remove microbes by thermal processing by exposure to elevated temperature and aseptic packaging (‘052, Paragraph [0070]) and hot filling the product by thermally processing the product with a maximum temperature of about 160°F to about 200°F and cooling the product slightly to about 160°F to about 185°F just prior to being filled into glass or plastic containers designed for hot fill (‘052, Paragraph [0076]) wherein the product is a coffee beverage concentrated syrup (‘052, Paragraph [0105]). The disclosure of hot filling the coffee beverage concentrated syrup into a container at about 160°F to about 185°F falls within the claimed hot packing temperature range of greater than 145 degrees Fahrenheit.
Both modified Mamo and Sherwood et al. are directed towards the same field of endeavor of methods of thermally processing concentrated coffee. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of modified Mamo and hot pack the concentrated coffee extract at the claimed temperature range of greater than 145 degrees Fahrenheit as taught by Sherwood et al. since where the claimed step of hot packing the concentrated coffee extract overlaps temperatures of hot packing concentrated coffee extracts disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.). Furthermore, differences in the temperature of hot packing the concentrated coffee extract will not support the patentability of subject matter disclosed by the prior art unless there is evidence indicating such temperature of hot packing the concentrated coffee extract is critical. Where 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the packing/filling temperature into a container of Mamo to heat treated elevated temperatures such that microbes in the drink are inactivated to product a final product having long storage shelf stability as suggested by Sherwood et al. (‘052, Paragraphs [0058] and [0076]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4 and 6-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-20 of U.S. Patent No. 11,533,930 (cited on Information Disclosure Statement filed January 31, 2024) in view of Smits et al. US 2017/0295814 (cited on Information Disclosure Statement filed January 31, 2024) in view of Cevallos et al. US 6,447,830. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Regarding Claim 1, the ‘930 patent discloses a method of brewing a flash brewed coffee concentrate, the method comprising flash hot brewing ground coffee to brew a hot coffee extract and mixing the hot coffee extract with a concentrated coffee extract to from a flash brewed coffee concentrate. The ‘930 patent is silent regarding the flash brewed coffee concentrate having a concentration of coffee solids greater than a concentration of coffee solids in the hot coffee extract and hot packing the concentrated coffee extract.
Smits et al. discloses a method of brewing a flash brewed coffee concentrate. The method comprises flash hot brewing ground coffee (‘814, Paragraph [0040]) to brew a hot coffee extract (secondary primary extract) and mixing the hot coffee extract (secondary primary extract) with a concentrated coffee extract (secondary extract) to form a flash brewed coffee concentrate (concentrated extract) (‘814, Paragraph [0047]). It is noted that the claims do not specify any particular duration for the claimed “flash” brewing. The disclosure of an extraction process cycle time taking up between 10 and 60 minutes (‘814, Paragraph [0040]) broadly reads on the claimed “flash brew” method. Smits et al. also discloses a step of subjecting the second primary extract and the secondary extract to evaporation to obtain a concentrated extract wherein evaporation is conducted separately for both extracts after which the concentrated extracts are combined (‘814, Paragraph [0047]). Smits et al. is directed to mixing different coffee extracts to obtain a more concentrated concentrate, which necessarily entails the final flash brewed coffee concentrate mixture of combined concentrated extracts having a concentration of coffee solids greater than a concentration of coffee solids in the singular hot coffee extract. Cevallos et al. discloses a method of hot packing a concentrated coffee extract intermediate (‘830, Column 5, lines 57-64) (‘830, Column 7, lines 6-18). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of the ‘930 patent and adjust the concentration of the flash brewed coffee concentrate to be greater than a concentration of coffee solids in the hot coffee extract intermediate based upon the desired strength of the coffee concentrate. Additionally, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of the ‘930 patent and hot pack the concentrate coffee extract intermediate as taught by Cevallos et al. in order to package the individual concentrated coffee extract intermediate for later use.
Claims 1-4 and 6-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-20 of U.S. Patent No. 11,856,964 (cited on Information Disclosure Statement filed January 31, 2024) in view of Smits et al. US 2017/0295814 (cited on Information Disclosure Statement filed January 31, 2024) in view of Cevallos et al. US 6,447,830. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Regarding Claim 1, the ‘964 patent discloses a method of brewing a flash brewed coffee concentrate, the method comprising flash hot brewing ground coffee to brew a hot coffee extract and mixing the hot coffee extract with a concentrated coffee extract to from a flash brewed coffee concentrate having a concentration of coffee solids greater than a concentration of coffee solids in the hot coffee extract. The ‘964 patent is silent regarding hot packing the concentrated coffee extract.
Smits et al. discloses a method of brewing a flash brewed coffee concentrate. The method comprises flash hot brewing ground coffee (‘814, Paragraph [0040]) to brew a hot coffee extract (secondary primary extract) and mixing the hot coffee extract (secondary primary extract) with a concentrated coffee extract (secondary extract) to form a flash brewed coffee concentrate (concentrated extract) (‘814, Paragraph [0047]). It is noted that the claims do not specify any particular duration for the claimed “flash” brewing. The disclosure of an extraction process cycle time taking up between 10 and 60 minutes (‘814, Paragraph [0040]) broadly reads on the claimed “flash brew” method. Smits et al. also discloses a step of subjecting the second primary extract and the secondary extract to evaporation to obtain a concentrated extract wherein evaporation is conducted separately for both extracts after which the concentrated extracts are combined (‘814, Paragraph [0047]). Smits et al. is directed to mixing different coffee extracts to obtain a more concentrated concentrate, which necessarily entails the final flash brewed coffee concentrate mixture of combined concentrated extracts having a concentration of coffee solids greater than a concentration of coffee solids in the singular hot coffee extract. Cevallos et al. discloses a method of hot packing a concentrated coffee extract intermediate (‘830, Column 5, lines 57-64) (‘830, Column 7, lines 6-18). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of the ‘964 patent and adjust the concentration of the flash brewed coffee concentrate to be greater than a concentration of coffee solids in the hot coffee extract intermediate based upon the desired strength of the coffee concentrate. Additionally, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of the ‘964 patent and hot pack the concentrate coffee extract intermediate as taught by Cevallos et al. in order to package the individual concentrated coffee extract intermediate for later use.
Response to Arguments
Examiner notes that most of the previous indefiniteness rejections under 35 USC 112(b) have been withdrawn in view of the amendments. The previous indefiniteness rejections under 35 USC 112(b) regarding the term “hot” in the context of “flash hot brewing ground coffee” have been maintained herein. The claims have been amended to clearly recite what time durations constitute a “flash” brew. However, it is still unclear what temperatures are required to read on the claimed “flash hot brewing” step.
The Double Patenting rejections have been updated to reflect the current amendments. The Double Patenting rejections have been maintained herein.
Examiner notes that the previous obviousness rejections under 35 USC 103(a) have been withdrawn in view of the amendments. Examiner also notes that new obviousness rejections under 35 USC 103(a) have been made in view of the amendments.
Applicant’s arguments with respect to the obviousness rejections of Claims 1-4 and 6-21 under 35 USC 103(a) have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Tonyes et al.US 2010/0316784 discloses a method of improving the stability of liquid coffee concentrates (‘784, Paragraph [0001]) wherein the concentrate is exposed to single or multistage heating configuration of exposing the concentrate to an aseptic heating coil at temperatures of about 293-295°F (‘784, Paragraph [0029]) and cooling the concentrate after heating to room temperature (‘784, Paragraph [0030]) and then aseptically packaging the product after cooling and sealing for storage to provide the stabilized liquid coffee concentrate (‘784, Paragraph [0031]) wherein the exposure time at elevated temperatures must be selected in a desired range to sufficient increase the reaction kinetics without destroying the functionality of the flavor and aroma additives (‘784, Paragraph [0032]).
Kelly US 2012/0104010 discloses a container made of plastic glass, or rubber wherein the container is filled with any suitable product including beverages wherein the product is filled into the container at any suitable temperature including a hot fill or a warm fill temperature wherein the product is hot filled into the container at a temperature of about 185 degrees Fahrenheit (‘010, Paragraph [0032]) wherein the container is filled simultaneously or successively and the product is any suitable product including caffeinated beverages (‘010, Paragraph [0066]).
Sizer et al. US 7,595,470 discloses an apparatus or system for processing a coffee beverage (‘470, Column 11, lines 43-53) wherein aseptic packaging of foods and other products requires that the food must be initially sterilized or otherwise treated then keeping the food sanitary throughout the packaging operation (‘470, Column 2, lines 33-51).
Scoville et al. US 4,798,730 discloses a method of solubilizing partially extracted roasted and ground coffee in a fixed bed reactor for a period of time such that the partially extracted roast and ground coffee residence time in the reactor is about 30 minutes to about 120 minutes and the extract residence time in the reactor is about 7 minutes to about 45 minutes, said extract residence time is all times significantly less than the coffee residence time to minimize degradation of soluble solids and the pressure maintained within the reactor such that the water within the reactor does not flash.
Jones et al. US 4,505,940 discloses a decaffeinated coffee extracted stripped or residual methylene chloride in a flash evaporator operated for 60 minutes with extract at 60°C under a vacuum which began at about 5” Hg and gradually increased to about 25” Hg wherein the coffee extract contains less than 10 ppm methylene chloride after the stripping step.
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 ERICSON M LACHICA whose telephone number is (571)270-0278. The examiner can normally be reached M-F, 8:30am-5pm, EST.
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/ERICSON M LACHICA/Examiner, Art Unit 1792