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 1-7, and 17-19 in the reply filed on 11/14/2025 is acknowledged.
Claims 8-16, 19 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/14/2025.
Claim Objections
Claims 7 and 19 are objected to because of the following informalities:
Claim 7 ends in a comma (,) instead of a period (.).
Claim 19 states the units of density as “g/l”. It appears this should be “g/L”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 3 states “wherein the high shear mixing of the coffee extract is performed in a single pass, or two or more passes”. Claim 1 states “in a single pass” which indicates that only a single pass is performed. Thus, claim 3 fails to incorporate all the limitations of the claim to which it refers. Claim 1 could be amended to state “at least one pass” or the like.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-7 and 17-19 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 1 recites a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “duration of from 30 minutes to 5 hours”, and the claim also recites “preferably 1 to 4 hours” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. The same issue is present in claims 2 and 4.
The term “low shear” in claims 1 and 7 is a relative term which renders the claim indefinite. The term “low shear” 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. Here, [0048] of the instant specification (reference to PGPUB 20240277002) states “It is considered that low levels of shear which are permissible are less than 50s-1. However, the paragraph also states “In contrast, levels of shear in typical processing apparatus, such as SSHE will be at least 200 s-1”. It is not clear what the upper threshold is for “low shear”. Clarity is requested. Additionally, dependent claim 5 limits the low shear to less than 50s-1. Depending upon how claim 1 is interpreted, it is not clear if claim 5 further limits the range of claim 1. For the purpose of examination, “low shear” is considered less than 200 s-1, as best understood.
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 1-7 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/186876 (Welsh) (cited on IDS filed 10/28/2024) as evidenced by Bohler, Mondomix VL and alternatively in view of Muller-Fischer, “Influence of process parameters on microstructures of food foam whipped in a rotor-stator device within a wide static pressure range”, Colloids and Surfaces, 2005 (cited on IDS filed 12/19/2023).
Regarding claim 1, Welsh discloses a method for the manufacture of a freeze-dried coffee powder. The method comprises the following steps:
providing a coffee extract having from 40wt% to 55wt% solids;
adding gas to the coffee extract in an amount of from 1 NL/kg to 5NL/kg of coffee extract, to provide a gas-containing coffee extract at above atmospheric pressure;
depressurizing the gas-containing coffee extract to form a foamed coffee extract;
cooling the foamed coffee extract to below -40°C without shear, or with low shear, to form a frozen coffee extract,
grinding the frozen coffee extract to a powder; and
drying the powder,
wherein the step (c) of cooling the foamed coffee extract to below -40°C comprises:
(i) cooling the foamed coffee extract to a first temperature;
(ii) cooling the foamed coffee extract from the first temperature to a second temperature lower than the first temperature; and
(iii) cooling the foamed coffee extract from the second temperature to below - 40°C,
wherein the first temperature is 1 °C above a freezing point of the foamed coffee extract and wherein the second temperature is 3°C below the freezing point,
wherein step (ii) has a duration of from 5 to 90 minutes.
This disclosure above steps (a), (c), (d), (e), and (i), (ii), (iii) of instant claim 1. The limitations of the time in step (ii) overlaps with the instant range (30 mins to 5 hours and 5 to 90 minutes), thus presenting a prima facie case for obviousness.
Step (b) is met in part as Welsh discloses gas addition in the same amount as claimed and obviates the use of a rotor/stator aerator and gas pressures during step (b) as discussed below.
Regarding the use of a rotor/stator aerator and pressure of less than 2 Bar during step (b) and until the frozen coffee extract is formed in step (c), Welsh discloses an alternative approach to the injection of gas under pressure discussed above. On page 7, Welsh discloses an alternative approach to the injection under pressure into already-pressurized extract is mixing the extract with added gas in a mixer. Suitable mixers include high-shear mixers such as a Mondo mixer. This addition can be performed at a lower pressure, with the gas- containing extract being subsequently pressurized, such as with a pump. Nonetheless, the mixer will be under some pressure to prevent gas being lost. According to a preferred embodiment, the extract is mixed with a gas, preferably of a type and amount as described above, in a mixer operating at a pressure of from 1 .25 to 5 Bar, preferably 1 .5 to 3 Bar. These ranges overlap the claimed range of less than 2 Bar, thus obviating the claimed range. This disclosure is considered to meet the use of a high-shear mixer such as a Mondo mixer, which is a rotor/stator aerator as evidenced by Bohler, Mondomix VL.
Claim 1 states “wherein the rotor/stator aerator is maintained at a pressure of less than 2 bar and is configured to subject the coffee extract to a shear of from 7,500 to 20,000 s1 in a single pass having a residency time of at least 1 second”. This is understood to limit the capabilities of the rotor/stator aerator inasmuch as it must be capable (i.e. configured to) perform shearing at the required range in a single pass with the claimed residency time. However, claim 1 does not positively require a step of subjecting the coffee extract to a shear of from 7,500 to 20,000 s1 in a single pass having a residency time of at least 1 second. Here, the Mondo mixer is disclosed by Welsh as being a “high Hear” mixer, thus is considered to have the capability of high shear such as the range claimed.
If the limitation were positively recited in the claim, the range of shear is considered an optimizable variable based upon the level of one of ordinary skill in the art to determine the optimal amount of shear needed to provide a homogeneous foam ready to be cooled and ground. Welsh clearly indicates that use of a high-shear mixer and that the high-shear allows for lower pressure (1.25-5 Bar) to be used which indicates that the applied shear is balanced against the pressure provided. Welsh discloses the desire to form small and homogeneous gas bubbles and that gas bubble structure is usually created through use of shear (pages 6, 7, 14). Muller-Fischer discloses that bubble size is affected by rotational speed (Figure 8 and accompanying discussion). Muller-Fischer indicates that higher rotational velocity, which is linked to shear (s-1) is linked to formation of smaller bubble sizes (Figure 7), and bubble distributions with smaller variance (increased homogeneity). Muller-Fisher also notes that too high a rotational speed can lead to a heating up of the foam, thus, one of ordinary skill would have found it obvious to optimize the size and homogeneity of the bubbles by using increased rotational speed, thus higher shear, to provide a foam with low variance in bubble size. Muller-Fischer discloses rotational speeds of 2000-4000 rpm whereas applicant discloses rotor speeds of 100-10,000 to also affect low bubble sizes. Thus, Muller-Fischer discloses a rotational speed commensurate with applicant’s disclosure.
Regarding the pressure of less than 2 bar until the frozen coffee extract is foamed, Welsh discloses that the pressure applied to the coffee extract is released in order to allow the gas to expand (page 7). Welsh discloses that the coffee extract is preferably at least 5 Bar prior to this depressurization. This is seen to be a preference only and absent a showing of unexpected results, one of ordinary skill would have found it obvious to adjust and optimize the pressurization of the coffee extract to promote foaming under shear stress. Welsh discloses that the coffee extract is preferably dropped to atmospheric pressure, which would impart a change from 5 Bar to 1 Bar as opposed to 2 Bar to 1 Bar as encompassed by the claim. Further, Welsh acknowledges that lower amounts of pressure can be used when in combination with a high shear mixer, thus one of ordinary skill would reasonably expect that the pressure drop could also be minimized due to the presence of shear.
Regarding claim 2, as stated above, Welsh contemplates use of much lower pressure when in combination with a high-shear mixer. This is reasonably expected to apply to the pressurization and pressure-drop discussed on page 7 of Welsh and is also considered optimizable in light of Welsh’s recognition that use of the high-shear mixer allows for less pressurization.
Regarding claims 3 and 4, absent a showing of unexpected results, it would have been obvious to one of ordinary skill to optimize the number of passes and the length of the passes in the mixer to provide the desired level of foam. Additionally passes would be well within the purview of one of ordinary skill and the need for more passes as well as balancing the number of passes with the amount of time for each pass can be readily determined during production by testing the foam.
Regarding claim 5, Welsh discloses cooling or shear with a range of less than 50s-1 (claim 4 of Welsh).
Regarding claim 6, Welsh discloses the gas may be nitrogen, air, argon, nitrous oxide and carbon dioxide, or a mixture of two or more thereof (claim 5 of Welsh).
Regarding claim 7, Welsh discloses in Example 5 cooling an extract with a freezing point of -6.5C down to 0C, which is 6.5C above freezing. Next, over a period of 90 minutes the foamed extract was slowly cooled to a temperature of -7.5C which is 1C below freezing. The period of time of approximately 90 minutes encompasses holding the temperature in a range of 6.5C above freezing to the point at which the temperature is 1C below freezing. The claim requires holding the temperature within a range of 1-15C above freezing point, but not holding at a precise temperature. Here, the span of 90 minutes will encompass the claimed temperature range for at least 30 minutes (or more) due to the slow cooling down to -7.5C.
Regarding claim 17, Welsh discloses that when the coffee extract has from 40 to 45wt% dissolved coffee solids, the freezing point is from -5 to -7°C; when the coffee extract has from 45 to 50wt% dissolved coffee solids, the freezing point is from -7 to -8°C; when the coffee extract has from 50 to 55wt% dissolved coffee solids, the freezing point is from -8 to -10°C (page 11).
Regarding claim 18, Examples 1, 2, 4 and 5 contain either 50wt% and 48wt% solids, which fall within the claimed range of 48-51wt%.
Regarding claim 19, the foamed coffee extract is at atmospheric pressure before cooling and has a density of 500-800 g/L (page 8).
Conclusion
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