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 .
Continued examination under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e) was filed after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.114 has been timely paid, the finality of the previous Office Action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on 03/31/2026 and 04/13/2026 has been entered.
Claim status
Claims 1-11 are previously presented are examined on the merits. Further, the allowance of claims 1-11 as issued 03/17/2026 is withdrawn and a non-final rejection is hereby issued.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-3, 5-7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Yasuo JP2017060455A (English translation relied upon for reference, hereinafter referred to as Yasuo) in view of Matson US Patent No. 4,816,407 (hereinafter referred to as Matson).
Regarding claims 1-3, 5-7 and 10, Yasuo teaches a method of preparing a wine-flavored coffee comprising infusing (e.g., soaking or dipping) coffee beans in wine for 24 hours followed by drying the infused coffee beans, roasting the dried infused coffee beans to medium-dark (e.g., medium roast) and grinding the infused coffee beans (Abstract; 0006; 0011; 0014; 0018).
Yasuo is silent regarding that the wine is reduced alcohol wine.
Matson teaches that there has been an increasing interest in alcoholic beverages with reduced alcohol content (column 1, line 28-29). Matson further teaches a method of reducing ethanol content of an aromatic alcoholic beverage such as wine to as low as 0.4-0.5% ABV by membrane extraction process, wherein the organic constituents of the alcoholic beverage which contribute to its aroma and flavor are retained thus the finished reduced alcohol product retains the flavor of the original alcoholic beverage (Fig. 1, column 4, line 9-26; column 17, line 51-55). An ABV of 0.4-0.5% necessarily meets the range of below 1 wt%, since ABW is always lower than ABV as a result of a lower density of ethanol as compared to wine or water.
Both Yasuo and Matson are directed to wines. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Yasuo by substituting the reduced alcohol wine obtained by the dealcoholization process as disclosed by Matson for the wine as disclosed by Yasuo in infusing the coffee beans with reasonable expectation of success, for the reason that where Yasuo teaches infusing coffee beans with wine to prepare a wine-flavored coffee, Matson has established reduced alcohol wine retains the flavor of the original alcoholic beverage.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Yasuo in view of Matson as applied to claim 1 above, and further evidenced by CFIA, Ethyl Carbamate in Alcoholic Beverages and Vinegars - April 1, 2018 to March 31, 2019 [Online], published 2020/09/09, [retrieved on 2026-04-07]. Retrieved from the Internet: <URL: https://inspection.canada.ca/en/food-safety-industry/food-chemistry-and-microbiology/food-safety-testing-reports-and-journal-articles/ethyl-carbamate-alcoholic-beverages-and-vinegar> (hereinafter referred to as CFIA).
Regarding claim 11, Yasuo in view of Matson does not explicitly teaches the level of ethyl carbamate is below 300 ppb (e.g., 0.3 mg/kg) in the aroma-infused roasted coffee beans, however, given that wine merely contains a trace amount of ethyl carbamate (e.g., 7-40 ppb, see CFIA Table 3) and that the final product of Yasuo in view of Matson is a wine-infused roasted coffee as opposed to wine per se, it logically follows that the wine-infused roasted coffee beans as disclosed prior art contains less than 300 ppb ethyl carbamate.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Yasuo in view of Matson as applied to claim 1 above, and further in view of Bassoli US Patent Application Publication No. 2019/0387764 A1 (cited in the IDS submitted on 09/08/2023, hereinafter referred to as Bassoli).
Regarding claim 4, Yasuo teaches soaking wine in 1-2 times the total weight of raw coffee beans (0010) thus being silent regarding the weight ratio of 99:1 to 4:1 coffee beans to beverage.
In the same field of endeavor, Bassoli teaches roasted aromatic alcoholic beverage-infused coffee beans (Fig. 2; 0006), where the aromatic alcoholic beverage used for infusing coffee beans is an high-alcohol spirit such as bourbon, whiskey, brandy, cognac, sherry, rum, gin, tequila and vodka that has 30%-70% ABV of ethanol. (0032; 0008, e.g., 30-70 degrees Gay-Lussa), and wherein green coffee beans are infused with the aromatic alcoholic beverage (Fig. 2). Further, Bassoli teaches that the strength of infusion can be altered by varying the ratio of beans to spirit . For instance, where a smaller proportion of beans are steeped within the flavor - infused spirit, infusion can be expected to take place more quickly. Conversely, where a large proportion of coffee beans are soaked in the spirit , infusion can be expected to proceed more slowly . In various implementations, the amount of spirit added to the coffee beans may range from about 1 % of the weight of coffee beans to about 10 % of the weight of coffee beans (0042). As such, the prior art has established that the ratio of coffee beans to the beverage is a result effective variable. Therefore, one of ordinary skill in the art would have been motivated to manipulate the ratio so as to ensure the coffee beans are sufficiently infused with flavor of the beverage in the time given. As such, the range of the ratio as recited in claim 4 is merely an obvious variant of the prior art.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Yasuo in view of Matson as applied to claim 1 above, and further in view of Andreae US Patent Application Publication No. 2017/0008694 A1 (hereafter referred to as Andreae).
Regarding claim 8, Yasuo teaches what has been recited above but is silent regarding putting the ground roasted aromatic alcoholic beverage-infused coffee beans in a container that is for the preparation of a beverage when inserted into a beverage preparation device.
Andreae in the same field of endeavor teaches sealing ground coffee in a capsule for the preparation of coffee beverage when inserted into a coffee device (0001; 0004; 0008).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Yasuo by sealing the ground coffee beans in a capsule for preparing a coffee beverage in a coffee machine.
Claims 1-3, 5-7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Yasuo JP2017060455A (English translation relied upon for reference, hereinafter referred to as Yasuo) in view of Nemeth US Patent No. 5,093,141 (hereinafter referred to as Nemeth).
Regarding claims 1-3, 5-7 and 9, Yasuo teaches a method of preparing a wine-flavored coffee comprising infusing (e.g., soaking or dipping) coffee beans in wine for 24 hours followed by drying the infused coffee beans, roasting the dried infused coffee beans to medium-dark (e.g., medium roast) and grinding the infused coffee beans (Abstract; 0006; 0011; 0014; 0018).
Yasuo is silent regarding that the wine is reduced alcohol wine.
Nemeth teaches that production of alcohol-free wines is considered as the main advance of healthy preservation and safety (column 1, line 19-21). Nemeth further teaches a method of reducing ethanol content of wine to below 1% ABV by an evaporation process (e.g., vacuum film distillation), wherein the original taste and flavor of the wine are preserved essentially without any change (Abstract; column 1, line 6-12; column 2, line 5-7; Example 1). An ABV of less 1% necessarily meets the range of below 1 wt%, since ABW is always lower than ABV as a result of a lower density of ethanol as compared to wine or water.
Both Yasuo and Nemeth are directed to wines. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Yasuo by substituting the reduced alcohol wine obtained by the dealcoholization process as disclosed by Nemeth for the wine as disclosed by Yasuo in infusing the coffee beans with reasonable expectation of success, for the reason that where Yasuo teaches infusing coffee beans with wine to prepare a wine-flavored coffee, Nemeth has established reduced alcohol wine preserves the original taste and flavor of the wine essentially without any change.
Conclusion
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/CHANGQING LI/Primary Examiner, Art Unit 1791
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