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 1-6 and 12-21 in the reply filed on 12/11/2025 is acknowledged.
Non-elected claims 7-11 were cancelled by amendment and new claims 22-24 were added.
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 17-21, and 23 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.
Claim 17 states that “an extraction time of the withdrawn medium is reduced between 25 and 70 percent, as measured by double shot standards”. It is not clear what reference value of time is relied upon in order to determine the reduced extraction time. Stated another way, it is not clear what the comparison is for the extraction time in order to determine whether the time has been reduced. While “double shot standards” is defined in the instant specification, there is no clear indication of what the reduction of claim 17 is relative to. Extraction devices would each have an extraction time measured by the “double shot standard”, but there is no indication as to what other extraction devices, the instant methodology is compared. Moreover, the double shot standard has intrinsic variability as explained in [0054] which indicates that without precise indication of the devices tested, there is no clear manner in which to determine the metes and bounds of the claim due to the variability of the testing and undefined nature of the comparison.
Claim 18 states “wherein a total volume of the plurality of extraction chambers is a same volume as a single extraction chamber for preparing the espresso with the amount of ground coffee”. This limitation is indefinite because there the volume of a single extraction chamber is undefined. See 2173.05(b)(II) which states in part, “A claim may be rendered indefinite when a limitation of the claim is defined by reference to an object and the relationship between the limitation and the object is not sufficiently defined.” Here, there is no clear relationship between the volume of the claimed plurality of extraction chambers and a single extraction chamber. There is no definition of the size of the single chamber, and sizes of extraction chambers vary widely. Thus, there is no clear way to determine the metes and bounds of the claim due to the variability of the relative single extraction chamber.
Claim 23 states “wherein the extraction material comprises an amount of ground coffee for preparing an espresso using an extraction device having a single extraction chamber, wherein the plurality of extraction chambers has a combined volume that is a same volume as said single extraction chamber.” For similar reasons given for claim 18, this limitation is indefinite due to the lack of a clear indication of the volume of a single extraction chamber and because the volume of single extraction chambers is variable.
Claims 19, 20, and 21 are included as dependent upon claim 18.
Note that claim 24 is not included in this rejection because the volume of each of the plurality of extraction chambers is defined.
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.
Claim(s) 1-6, and 12-24 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0125068 (Murphy) (cited on IDS filed 05/17/2024).
Regarding claims 1, 12 and 18, Murphy discloses a method of preparing an extract by loading an extraction material into an extraction cell (chamber), introducing a flow of extraction medium through the extraction cell and withdrawing the medium (extract) (abstract). Murphy discloses an internal chamber of the extraction cell can have a length and an average width along the length and where the ratio of the length to average diameter is between 0.75:1 and 2:1 (0.75-2.0) [0006]. This ratio falls within the claimed ratio of 0.15-3.0. Regarding the use of a plurality of the extraction cells, Murphy states that “It is also anticipate[d] that multiple extraction cells 221 can arranged in series or parallel to module capacity” [0075, 0098], thus while no illustration is provided with multiple extraction cells, the disclosure of Murphy clearly conveys this embodiment to one of ordinary skill, thus obviating the use of a plurality of extraction cells in series or parallel.
Regarding the volume of the extraction cells recited in claims 1, 22 and 24, Murphy discloses the interior 109 of the extraction cell 100 can also be characterized by a volume. The volume can range from 10 ml to 30 ml and in certain embodiments between 20 ml to 25 ml which can be used in combination with the interior aspect ratio AR described above [0030]. The range of 10-30 ml corresponds to 10,000-30,000 mm3 which overlaps with the claimed range of 200-20,000 mm3 (0.2-20 ml). In the case where the claimed ranges "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) MPEP 2144.05(I).
Regarding claims 2, 5, 16, and 21 Murphy discloses the process can include the use of an extraction medium (also referred to herein as solvent) not exceeding 100° C., and without using pressures exceeding dozens of atmospheres. For instance, in certain configurations described below, the extraction medium may be between 0° C. and 100° C. In certain embodiments, the pressure within the extraction chamber is between 0 and 16 bar(g). In certain configurations, the pressure is between 0.5-2.5 bar(g) In certain configurations, the temperature and pressure ranges mentioned above can be combined [0054]. The ranges overlap the claimed range of 85-97C and 1-12 bar, thus rendering the ranges prima facie obvious.
Regarding claims 3 and 13, Murphy discloses a width of the extraction cell may be 50-120mm (0.5-1.2 cm) and that the ratio of L/W may be 0.5:1 to 2:1 which indicates that the length may encompass a range of 0.25cm to 2.4 cm which overlaps the claimed range of 0.2-10 cm [0045].
Regarding claims 4 and 20, a plurality would include at least 2 extraction cells, thus rendering the range of 2-10 chambers obvious. Moreover, it would have been obvious to one of ordinary skill to provide a desirable number of extraction chambers to provide the desired amount of extract balanced with the optimal size of individual extraction cells.
Regarding claim 6, the extraction material is coffee (abstract).
Regarding claims 13-15, Murphy discloses that a plurality of cells may be arranged in parallel or in series. It would have been obvious to one of ordinary skill to introduce and withdraw extraction medium simultaneously through a parallel arrangement as this would be an obvious matter of design engineering choice. Moreover, one of ordinary skill would have only two options, simultaneous or sequential introduction and withdrawal, and one of ordinary skill would reasonably infer that simultaneous introduction would decrease the time necessary for introduction and withdrawal of the extraction medium.
Regarding claim 17, based upon the disclosure by Murphy that a plurality of extraction cells may be used in series or parallel and the disclosure of an overlapping range of volume of each extraction cell, the claimed reduction in extraction time of the withdrawn extraction medium is considered inherent based upon the use of a similar structure. See also the 112(b) rejection above.
Further regarding claim 18, Murphy discloses espresso [0055]. Regarding the comparison to a single extraction chamber, please see the 112(b) rejection above. Further, as the size of the extraction chambers disclosed by Murphy overlap with the range of claim 22 and render the size of the chambers obvious; thus, the limitation of comparison to a single extraction chamber is considered met.
Regarding claim 19, Murphy discloses that espresso traditionally has a TDS content of 50-70 g/L (5-7%) [101] and Examples 1-4 have TDS contents less than 10%.
Regarding claim 23, please see the 112(b) rejection above. Further, the size of the extraction chambers disclosed by Murphy overlap with the range of claim 22 and render the size of the chambers obvious; thus, the limitation of comparison to a single extraction chamber is considered met.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Houseman and Abbiati disclose multiple chamber use during extraction.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER C MCNEIL whose telephone number is (571)272-1540. The examiner can normally be reached M-F 9-5.
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JENNIFER C. MCNEIL
Primary Examiner
Art Unit 1793
/Jennifer McNeil/Primary Examiner, Art Unit 1793