DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of the Invention of Group II (claims 50-55) in the reply filed on 08/07/2025 is acknowledged.
Withdrawn claims 36-49 have been canceled in the Reply in the reply filed on 08/07/2025. Election was made without traverse in the reply filed on 08/07/2025.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 50-69 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for cacao and coffee cherry mucilage does not reasonably provide enablement for any fruit mucilage
There are about two thousand of fruits available throughout the world. The instant specification only refers to cacao and coffee cherry mucilage The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Case law holds that applicant's specification must be "commensurately enabling [regarding the scope of the claims]" Ex parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1989) otherwise undue experimentation would be involved in determining how to practice and use applicant's invention. Although the statute itself does not use the phrase "undue experimentation", it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation as stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and in In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
Specifically, in In re Wands the Court set forth a non-exhaustive list of factors to be considered in determining whether undue experimentation would be involved in making and/or using the claimed invention. These factors include, but are not limited to: (a) the breadth of the claims; (b) the nature of the invention; (c) the state of the prior art; (d) the level of one of ordinary skill; (e) the level of predictability in the art; (f) the amount of direction provided by the inventor; (g) the existence of working examples; and (h) the quantity of experimentation needed to make or use the invention based on the content of the disclosure. Applying these factors to claim 9:
(A) The breadth of the claims
The claim is broad in the scope in the sense that it encompasses any fruit mucilage.
(B) The nature of the invention
The invention relates to a food composition comprising coffee cherry mucilage.
(C) - (E) State of the prior art/The level of ordinary skill/The level of predictability
Food composition comprising fruit parts is an old art. However, the art is not without uncertainty. Production of food composition comprising coffee cherry mucilage lies somewhere between a predictable art and an unpredictable art. However, when the skilled artisan attempts to calculate all the compositions containing fruit mucilage, predictability is lost due to the complexity of art.
F. The amount of direction provided by the inventor
The entirety of the direction offered by the specification relates to cacao or coffee cherry mucilage. There is no direction provided for any other source of mucilage.
G. The existence of working examples
The specification provides no working examples.
H. The quantity of experimentation
A large amount of experimentation, on the order of a number of man-years would be necessary to practice the invention within the full scope of the claims.
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.
Claim(s) 50-55 and 57-69 is/are rejected under 35 U.S.C. 103 as being unpatentable over Belliveau et al (WO 2014143328 A1).
In regard to claims 50-51, Belliveau et al discloses a food product composition comprising coffee cherry mucilage and a hydrocolloid ([003], [005], [0014], [0047]).
In regard to the hydrocolloid, Belliveau et al discloses:
[0047] In some embodiments, gums may be added to provide a desired texture and/or consistency, to thicken the food product, and/or to stabilize the food product. Specific examples of gums may include guar gum, xanthan gum, gellan gum, carrageenan gum, gum Arabic, gum tragacanth, pectic acid, and/or the like. Gum Arabic is a natural food additive obtained from certain varieties of acacia. It is generally tasteless and odorless, and may be used in commercial food processing to thicken, emulsify, and/or stabilize foods. Guar gum is a gummy substance obtained from plants of the legume genera. Guar gum may also be used as a thickener and/or a stabilizer in commercial food processing. Xanthan gum is produced by fermentation of corn sugar, and may be used as a thickener, an emulsifier, and/or a stabilizer of foods.
In regard to the particular food composition, Belliveau et al discloses:
[0017] A "food product" is generally any edible item that is fit for consumption by humans and/or animals. The type of food product is not limited by this disclosure, and includes, for example, a baked good, a pre-fabricated good, a fried good, a chilled good, a nutritional supplement, a steamed good, a cracker, a brownie, a cake, a cake-like product, a pastry, a snack, an energy bar, a pasta, a batter coating, a batter coated item, a bread, a cookie, a noodle, a filled food product, a flatbread, a dumpling, a steamed bun, a breaded coating, a breaded item, a cereal, and/or the like.
In regard to the moisture content, Belliveau et al discloses about 50% fluid by weight ([0031]).
In regard to the solid content, Belliveau et al discloses about 50% solids by weight ([0050]).
Belliveau et al discloses additional processing steps including packaging ([0051]). Hence, Belliveau et al discloses sealed package.
Further in regard to the concentration recitations, it is noted that:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235(CCPA 1955) (MPEP 2144.05, II A).
Further, regarding the concentration ranges as examined above, it is noted that 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). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
In regard to claims 50 and 58, Belliveau et al is silent as to the pH of the food product. However, Belliveau et al discloses addition of various acidulants (tartaric acid, citric acid) to the composition ([0043]).The specific pH of the food product would depend on the concentration of acidulants and desired flavor profile by the consumer.
In regard to claims 50 and 57, Belliveau et al is silent as to the water activity of the composition. The specific water activity would depend on the product composition and structure.
In regard to claim 52, Belliveau et al discloses flavoring agent, sweetener ([0019], [0031], [0037]), cocoa ([0063, [0065]).
In regard to claim 53, one of ordinary skill in the art would have been motivated to add any flavor based on the personal preferences of a consumer.
In regard to claim 54, Belliveau et al discloses:
[0047] In some embodiments, gums may be added to provide a desired texture and/or consistency, to thicken the food product, and/or to stabilize the food product. Specific examples of gums may include guar gum, xanthan gum, gellan gum, carrageenan gum, gum Arabic, gum tragacanth, pectic acid, and/or the like. Gum Arabic is a natural food additive obtained from certain varieties of acacia. It is generally tasteless and odorless, and may be used in commercial food processing to thicken, emulsify, and/or stabilize foods. Guar gum is a gummy substance obtained from plants of the legume genera. Guar gum may also be used as a thickener and/or a stabilizer in commercial food processing. Xanthan gum is produced by fermentation of corn sugar, and may be used as a thickener, an emulsifier, and/or a stabilizer of foods.
One of ordinary skill in the art would have been motivated to vary the amount of hydrocolloid based on the desired texture and/or consistency of the food product.
In regard to claim 55, Belliveau et al does not require the presence of the artificial flavors.
In regard to claim 59, Belliveau et al discloses acid sodium, potassium salts of tartaric acid, calcium salts of tartaric acid, potassium salts of citric acid, calcium salts of citric acid, orthophosphoric acid, pyrophosphoric acid, calcium lactate, calcium sulfate, and/or the like ([0043]).
In regard to claim 60, one of ordinary skill in the art would have been motivated to vary the amount of salts based on the desired flavor profile of the food product.
In regard to claim 61, Belliveau et al discloses tartaric acid, citric acid ([0043]).
In regard to claim 62, Belliveau et al does not require the presence of the refined sugars.
In regard to claim 63, Belliveau et al does not require the added pectin.
In regard to claim 64, one of ordinary skill in the art would have ben motivated to employ mucilage in any form that is suitable for the desired food product.
Further in regard to the recitations of claims 65-69, it is noted that although the reference does not specifically disclose every possible quantification or characteristic of its product, these characteristics would have been expected to be as claimed absent any clear and convincing evidence and/or arguments to the contrary. The reference discloses the same starting materials as instantly (both broadly and more specifically) claimed, and thus one of ordinary skill in the art would recognize that the recitations of claims 65-69 among many other characteristics of the product obtained by referenced method, would have been an inherent result of the process disclosed therein. The Patent Office does not possess the facilities to make and test the referenced method and product obtain by such method, and as reasonable reading of the teachings of the reference has been applied to establish the case of obviousness, the burden thus shifts to applicant to demonstrate otherwise.
Claim(s) 56 is/are rejected under 35 U.S.C. 103 as being unpatentable over Belliveau et al (WO 2014143328 A1) in view of Belacazar (WO 2014083032 A1).
In regard to claim 56, Belliveau et al is silent as to the presence of pectin methyl esterase. Belacazar discloses that native pectin in the mucilage of coffee cherry becomes useful in the food applications when combined with pectin methyl esterase (EC 3.1.1.11). Therefore, one of ordinary skill in the art would have been motivated to combine mucilage of coffee cherry with pectin methyl esterase (EC 3.1.1.11) to obtain pectin composition that is useful in food applications.
Conclusion
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/VERA STULII/Primary Examiner, Art Unit 1791