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 Objections
Claims 11, 13, 51, and 56 are objected to because of the following informalities: Regarding Claims 11 and 51, the word “form” should be “from” in line 5 of the claims. Regarding Claim 13, the term “sensory modifier” seems to have been inadvertently cancelled from the claim and should be added back. Regarding Claim 56, the term “of” in line 5 of the claim seems to have been inadvertently cancelled from the claim and should be added back. 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 2, 3 and 31 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.
Regarding Claims 2 and 3, Applicant has recited functional limitations without sufficiently establishing what aspect of the claimed composition results in such functional limitations. The boundaries imposed by the functional limitations are not clearly defined by Applicant's claims. For example, it is unclear what is making the composition, when added to water or an aqueous solution, result in the claimed reduction in saltiness, whether it is a particular amount of either of the effervescent agent or the sensory modifier, particular amounts of one or more of the claimed caffeoylquinic acids, or a total amount of the solid effervescent composition as a whole added to water or an aqueous solution. It would appear to the Examiner that a reduction in saltiness observed would depend on the particular compositional makeup of the solid effervescent composition. Therefore, the metes and bounds of the claims are indefinite for the reasons set forth above.
Claim 31 recites the limitation "the non-dairy creamer" in line 1 of the claim. There is insufficient antecedent basis for this limitation in the claim as the limitation of the “non-dairy creamer” is only introduced in Claim 29. In addition, Claim 31 as amended recites where the non-dairy creamer can be a dry animal milk powder, and it is unclear how an animal milk powder can be a non-dairy creamer.
Claim Rejections - 35 USC § 102
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 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, 5, 9, 10, 11, 13, 15, 19, 24, 28, 29, 31, 40, 41, and 79 are rejected under 35 U.S.C. 102a1 as being anticipated by Chen (CN 102485012), made of record by Applicant, and as evidenced by Bravo et al. NPL (2012).
An English language machine translation of the CN document is used in the following rejection and has been made of record.
Regarding amended Claims 1 and 5, Chen teaches coffee effervescent tablets (Paragraph 21 of the machine translation), therefore teaching a solid effervescent composition, comprising an effervescent agent comprising an acid and a base, as Chen teaches the tablets are made with sodium bicarbonate and tartaric acid (Paragraph 24 of the machine translation and Example 1), and a sensory modifier comprising a dicaffeoylquinic acid and a monocaffeoylquinic acid, where the sensory modifier is met by the coffee component of Chen’s effervescent tablets, in light of the evidentiary reference of Bravo, who teaches that coffee naturally contains both dicaffeoylquinic acid and a monocaffeoylquinic acid (Table 1, describing content of caffeoylquinic acids in coffee, where 3-CQA, 4-CQA and 5-CQA are monocaffeoylquinic acids and 3,4-diCQA etc., are dicaffeoylquinic acids).
Regarding amended Claims 9-11 and 19, Chen teaches the composition in Example 1 comprising 100 parts by weight instant coffee, 20 parts by weight tartaric acid, 30 parts by weight sodium bicarbonate and 5 parts lactose (Paragraphs 17, 24, Example 1 of the machine translation). Therefore, effervescent agent comprising both the acid and base is 32% by weight of the composition, and the ratio of acid to base is 20:30 or 0.66:1, which is within the claimed ratio range. Chen teaches lactose in the composition, therefore teaching a sweetener.
Regarding amended Claim 13, attention is made to the claim objection set forth above regarding the missing terms in the claim. The Examiner is interpreting the claim to recite the sensory modifier is at least 1% of the composition, and Chen teaches the coffee component is 64% of the composition (Example 1, Paragraph 24).
Regarding amended Claim 15, as set forth above Chen as evidenced by Bravo teach coffee naturally contains both dicaffeoylquinic acid and a monocaffeoylquinic acid (Table 1, describing content of caffeoylquinic acids in coffee, where 3-CQA, 4-CQA and 5-CQA are monocaffeoylquinic acids and 3,4-diCQA etc., are dicaffeoylquinic acids). The evidentiary reference of Bravo teaches that dicaffeoylquinic acids and the monocaffeoylquinic acids are all chlorogenic acids (Page 12567, Column 2, Results and Discussion, first paragraph), therefore meeting the claimed limitation for “chlorogenic acid” as a monocaffeoylquinic acid.
Regarding amended Claims 24, 28, 29, Chen teaches another composition comprising the claimed components of the effervescent composition and a sensory modifier comprising instant coffee, succinic acid, sodium bicarbonate, sucrose and vegetable fat powder (Paragraph 26 and Example 2), where the vegetable fat powder meets the limitation for a dry powdered creamer, a non-dairy creamer, and also is present at 24% by weight of the composition (50 parts out of 205 parts by weight, Example 2).
Regarding amended Claim 31, Chen teaches another composition comprising the claimed components of the effervescent composition and a sensory modifier comprising instant coffee, sodium saccharin, sodium bicarbonate, citric acid, malic acid, lactose, milk powder (Example 3, Paragraph 28), therefore teaching a dry animal milk powder, also meeting the limitation of a dry powdered creamer.
Regarding amended Claims 40, 41, and 79, Chen teaches a beverage product comprising the composition of Claim 1 and a dry powdered beverage comprising the composition of Claim 1, as Chen teaches the components are in powdered form and a coffee beverage formed therefrom (Paragraphs 17-28).
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.
Claims 2, 3, 42, 43, 45, 50, 51, 55, 82, and 83 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (CN 102485012), made of record by Applicant.
Regarding amended Claims 2, 3, 42, and 43, attention is made to the 112b rejection set forth above and the functional language of Claims 2 and 3 without clear indication of what in the composition is causing the claimed reduction in saltiness. While Chen is silent as to the saltiness reduction effect, attention is made to the limitations in Claim 42 and the claimed reduction in saltiness when the composition is added to water or an aqueous solution, as Chen teaches the claimed solid effervescent composition comprising at least 20% of an effervescent agent comprising an acid and base, such as those claimed, along with at least 1% by weight of a sensory modifier as claimed comprising dicaffeoylquinic acids and monocaffeoylquinic acids, as set forth in the rejection of Claims 9 and 13. Therefore, since Chen teaches the composition of Claim 42, one of ordinary skill would have reasonably expected the composition to function as claimed and result in the claimed reduction in saltiness when added to water or an aqueous solution, absent teachings to the contrary.
The specific reduction in saltiness as recited in Claims 2, 3, 42 and 43 are not met by any reference here because Applicant has chosen to describe his product with physical characteristics that are beyond measurement by this Office and as a practical matter, the Patent Office is not equipped to manufacture products and then obtain prior art products and make physical comparisons therewith. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972) at 59 CCPA 1041. Since Chen teaches the claimed solid effervescent composition comprising the claimed components, it would be expected, absent any evidence to the contrary, that the composition would meet the claimed limitations.
Furthermore, it has been found that “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). MPEP 2112.V.
Regarding amended Claims 45, 50, 51, 55, Chen is taken as cited above in the rejection of Claims 5, 10, 11, 15, and teaches the claimed limitations.
Regarding amended Claims 82 and 83, Chen is taken as cited above and teaches a method preparing a beverage as Chen teaches preparing a solid effervescent composition and adding it directly to boiling or warm water to make a coffee beverage (Paragraphs 18-26), where the solid effervescent composition comprises an effervescent agent comprising an acid and base and a sensory modifier comprising the claimed dicaffeoylquinic acid and monocaffeoylquinic acids, as set forth above. While Chen is silent as to the saltiness reduction effect or the claimed method of preparing a beverage product with reduced saltiness, attention is made to the rejection of Claim 42 above as Chen teaches the claimed solid effervescent composition comprising at least 20% of an effervescent agent comprising an acid and base, such as those claimed, along with at least 1% by weight of a sensory modifier as claimed comprising dicaffeoylquinic acids and monocaffeoylquinic acids, as set forth in the rejection of Claims 9 and 13. Therefore, since Chen teaches the composition of Claim 42, one of ordinary skill would have reasonably expected the composition to function as claimed and result in the claimed reduction in saltiness when added to water or an aqueous solution, absent teachings to the contrary.
The specific reduction in saltiness as recited in Claim 82 are not met by any reference here because Applicant has chosen to describe his product with physical characteristics that are beyond measurement by this Office and as a practical matter, the Patent Office is not equipped to manufacture products and then obtain prior art products and make physical comparisons therewith. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972) at 59 CCPA 1041. Since Chen teaches the claimed solid effervescent composition comprising the claimed components, it would be expected, absent any evidence to the contrary, that the composition would meet the claimed limitations and function as claimed in a method of making a beverage.
Furthermore, it has been found that “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). MPEP 2112.V.
Regarding amended Claim 83, Chen teaches the beverage product additionally comprises a sweetener as Chen teaches the disclosed compositions have lactose or sucrose, etc. (Examples 1 and 2).
Claims 14, 16, 18, 56, are rejected under 35 U.S.C. 103 as being unpatentable over Chen (CN 102485012), made of record by Applicant, in view of Ozato (USPA 2018/0160696).
Regarding amended Claims 14, 16, 18, and 56, Chen is taken as cited above in the rejection of Claims 1 and 42.
Regarding amended Claim 14, Chen is taken as cited above in the rejection of Claim 1 and teaches the solid effervescent composition which is added to water to make a coffee drink, as set forth above. Chen teaches examples with lactose (Example 1). Chen teaches instant coffee as a component of the beverage, which is known by evidentiary reference to include the claimed sensory modifiers of dicaffeoylquinic acid and monocaffeoylquinic acids, as set forth above.
However, Chen does not specifically teach where the sensory modifier is 2-8% by weight of the composition.
Ozato teaches of enriching an instant concentrated coffee composition with high levels of chlorogenic acids in order to provide the coffee composition with excellent taste and flavor intrinsic to coffee while having satisfactory sourness, sweetness and richness, and reduced coarseness (Paragraphs 10 and 11) and teaches of controlling the mass ratio of total sugar and chlorogenic acids to promote the above taste and flavor desired (Paragraph 12). Ozato also teaches the concentrated coffee composition can be in the form of liquid, powder, granule, and tablets (Paragraph 15).
Ozato teaches that the term chlorogenic acids as component (A) in the coffee composition refers to both monocaffeoylquinic acids and dicaffeoylquinic acids (Paragraph 18) and is understood to function as a sensory modifier in light of the taste and flavor effects, and teaches that total sugar as component B of the coffee composition includes lactose (Paragraph 22). Ozato teaches of a preferable ratio of B:A total sugar: chlorogenic acids of 1.2 to 5 for the enhancement of richness (Paragraph 23). Chen teaches in Example 1 that the coffee composition includes 3% by weight lactose (5 parts /155 total parts). Therefore, taking the ratio taught by Ozato of total sugar: chlorogenic acids added is 1.2:1, this would result in a content of chlorogenic acids added of 2.6% by weight of the coffee composition, which is within the claimed range for the sensory modifier by weight of the composition. Therefore, in light of the teachings of Ozato, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have added 2.6% by weight of chlorogenic acids, which includes both monocaffeoylquinic acids and dicaffeoylquinic acids, to the coffee composition of Chen in order to enrich the content of chlorogenic acids in the coffee composition, thereby exploiting the art recognized taste, flavor and sensory benefit of richness to concentrated coffee compositions.
Regarding amended Claim 16, Chen as motivated by Ozato render obvious adding an amount of chlorogenic acids to a concentrated coffee composition, but do not specifically teach an amount of dicaffeoylquinic acid out of the total weight of sensory modifier. Ozato separates out a content of the dicaffeoylquinic acid component E by weight of the chlorogenic acid component A and teaches a ratio of dicaffeoylquinic acid to chlorogenic acids of 0.1 or more for an enhanced physiological effect to the resulting coffee composition (Paragraph 21). Therefore, while Ozato does not specifically teach that the dicaffeoylquinic acid content comprises at least 20% or more of the total weight of the sensory modifier, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have optimized the amount of dicaffeoylquinic acid out of the total content of dicaffeoylquinic acid and monocaffeoylquinic acid in order to promote a physiological effect on the resulting coffee composition. In addition, where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges in the amount of dicaffeoylquinic acid in the sensory modifier involves only routine skill in the art. MPEP 2144.05 II.
Regarding amended Claim 18, Chen as motivated by Ozato render obvious adding an amount of chlorogenic acids to a concentrated coffee composition, and as set forth above teach the enriched chlorogenic acid component as a sensory modifier and teach it is made up of both dicaffeoylquinic acid and monocaffeoylquinic acid. Therefore, Ozato teaches the sensory modifier comprises a monocaffeoylquinic acid and dicaffeoylquinic acid component that together make up more than 80% by weight of the sensory modifier.
Regarding amended Claim 56, Chen as motivated by Ozato render obvious adding an amount of chlorogenic acids to a concentrated coffee composition, and are taken as cited above in the rejection of Claims 16 and 18 above, for the rejection of Claim 56.
Claims 22 and 84 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (CN 102485012), made of record by Applicant, in view of Ozato (USPA 2018/0160696) and Gaspard (USPA 2019/0223483).
Regarding amended Claims 22 and 84, Chen is taken as cited above in the rejection of Claims 1 and 82. Ozato is taken as cited above for the obviousness of adding a sensory modifier including monocaffeoylquinic acid and dicaffeoylquinic acids to improve various taste and physiological sensations of coffee.
Regarding amended Claim 22, Chen in view of Ozato teaches the composition additionally comprises a sweetener and teaches lactose, or sucrose or sodium saccharin as sweeteners in the Examples disclosed (Chen, Examples 1-3), but does not specifically teach where the composition additionally comprises at least one of the claimed rebaudiosides.
Gaspard teaches that traditionally sugars such as sucrose and fructose have been used to provide a sweetened taste to foods and beverages but while these sugars can provide a taste preferred by consumers, they are caloric (Paragraph 3). Gaspard teaches of using steviol glycosides and a sensory modifier comprising caffeic esters of quinic acid to modulate the taste of the steviol glycosides, which are noncaloric but suffer from known sensory and temporal characteristics such as increased sweetness linger, and Gaspard teaches that the sensory modifier reduces sweetness linger and other undesirable characteristics of steviol glycosides (Paragraphs 5-9). Gaspard teaches the steviol glycoside and sensory modifiers can be used in various foods and beverages including coffee drinks (Paragraph 172). Gaspard teaches in one example a steviol glycoside is rebaudioside M and the sensory modifier compound is monocaffeoylquinic acid and dicaffeoylquinic acids (Paragraph 182). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention for the coffee composition of Chen in view of Ozato to have further comprised a sweetener such as a steviol glycoside or rebaudioside M as Gaspard teaches that the sensory modifier as motivated by Ozato has been found to improve some of the more undesirable taste and flavor sensations of steviol glycosides in foods and beverages. One of ordinary skill in the art would have been motivated to add steviol glycosides to a coffee composition already comprising the discussed sensory modifiers in order to provide consumers with a caloric free coffee composition without the undesirable taste and sweetness linger issues known to be associated with steviol glycosides.
Regarding Claim 84, Chen in view of Ozato and Gaspard are taken as cited above in the rejection of Claim 22 and in combination teach and motivate a beverage product as set forth in the rejection of Claim 82 comprising a sweetener, a sensory modifier and a creamer, as set forth in the rejection of Claims 22 and 24 above. Regarding the claimed amount of steviol glycoside and sensory modifier in the beverage product, Gaspard teaches that when the composition is a beverage, the total glycoside content in the beverage is about 400-600ppm (Paragraphs 175-177), which is within the claimed range. Gaspard also teaches that the sensory modifier is combined with the steviol glycoside in an amount that reduces the sweetness lingering of the steviol glycoside (Paragraph 14). Therefore, while Gaspard does not specifically teach the amount of sensory modifier used in a beverage product, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have optimized the amount of sensory modifier in the beverage product along with the steviol glycosides in order to provide consumers with a caloric free coffee composition without the undesirable taste and sweetness linger issues known to be associated with steviol glycosides. Given the teachings and guidelines of the prior art, such optimization would have been well within the skill of one of ordinary skill in the art. In addition, where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges in the amount of sensory modifier in the beverage product involves only routine skill in the art. MPEP 2144.05 II.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNA A WATTS whose telephone number is (571)270-7368. The examiner can normally be reached Monday-Friday. 9am-4:30pm.
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JENNA A. WATTS
Primary Examiner
Art Unit 1791
/JENNA A WATTS/Primary Examiner, Art Unit 1791 3/13/2026