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 .
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 1-8 in the reply filed on 12/19/2025 is acknowledged.
A divisional application 19/421138 was filed 12/16/2025 with claims 1-5 that appear to be identical to withdrawn claims 11-15 of the instant application. Cancellation of the withdrawn claims is requested.
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 1, 2, 4-7 and 16-19 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 refers to the coffee powder “wherein said pores having a sphericity below 0.7 and an individual equivalent diameter above 25 microns have a mean volume diameter D4,3 of from 50-1000 microns as measured by X-ray tomography”. The instant specification states in the paragraph bridging pages 6-7 that the “volume mean diameter” is sometime referred to as D[4,3] and is in reference to the open pore volume and states the open pore volume mean diameter of the coffee powder is between 4-15 micrometers. Then on page 9, the mean volume diameter of the closed pores is noted as Dc4,3 with values of 1-25 microns. Page 11 then discloses a mean volume diameter Di4,3 is the mean volume diameter of the ice that is added to the coffee extract before freezing and that the range is 50-1000 microns. Further, page 20 states that the ice has a mean volume diameter of 45-2000 microns, 50-1700, 50-1500 and 150-1000 microns. Still further, Example 1, page 22 states that the ice had a mean volume diameter D4,3 of 590 microns. Finally, page 31 states the coffee powder is formed by added ice having a mean volume diameter D4,3 of from 50-1000 microns as measured by X-ray tomography. The range, notation and measurement are consistent with claim 3.
However, claim 1 is unclear because the recitation of mean volume diameter D4,3 is in the context of limiting the structure of the coffee powder but from the specification it appears that D4,3 with the range of 50-1000 microns is in reference to the size of the ice particles that are added to the extract during formation of the coffee powder. In other words, the mean volume diameter is in reference to ice particles and not clearly in reference to a structural limitation of the coffee powder itself. Every notation in the specification of 1000 microns is only found to be in the context of the ice particles and not clearly descriptive of the structure of the coffee powder. Moreover, the wording of claim 1 is awkward in that it states that “said pores… have a mean volume diameter” which appears to have different meaning from “volume mean diameter” of claim 1. The notation D4,3 is unclear in this context as well since there are multiple uses of the notation in the instant specification as pointed out above and the claim is not clear in its usage. As best understood in the light of the specification, the limitation of claim 3 is taken as referring to the structure of the ice particles used during the formation of the coffee powder.
Further regarding newly added claims 16 and 17, the claims recite “the volume mean diameter D4,3 of the coffee particle’s pores is…”. It is unclear if this is in reference to all of the pores present in the particles or if this is limited to a population of pores having a sphericity below 0.7 and an individual equivalent diameter above 25 microns.
Further regarding newly added claim 18, the claim requires “the volume mean diameter of the open pores is greater than 8 micrometers”. Claim 1 refers to “an open pore volume mean diameter greater than 4 micrometers”. Again, claim 8, like claim 1, refers to “open pore” or “the open pores”. However, it is not clear if “open pores” is in reference to a measurement of all open pores or if a particular population is referenced. Two citations of “volume mean diameter” regarding “open pores” are cited in the claims and with different ranges. Claim 8 appears to further limit the first of these limitations of claim 1, yet the wording is different which leads to further confusion of these limitations.
Response to Arguments
Applicant’s amendments have overcome the art rejections under 103 over Boehm and Boehm II.
Applicant's arguments filed 06/09/2026 regarding the 112(b) of claim 3 have been fully considered but they are not persuasive. Claim 1 was amended to include the language of claim 3 and changed the phrase “mean volume diameter” in claim 3 to “volume mean diameter”.
Regarding the 112(b) applicant argues that while the volume mean diameter D4,3 may also correspond to the volume mean diameter of ice particles, the specification fully supports coffee particles- themselves- having pores with the claimed volume mean diameter D4,3 of from 50-1000 microns. Applicant provides the citation of the wording from the Applicant’s specification from pages 11-12. Regarding the meaning of mean volume diameter in claim 1 and volume mean diameter in claim 3, applicant adopted the same verbiage for both ranges noted in claim 1 as stated above.
Applicant’s arguments are not persuasive and do not clarify the limitations of claim 1 which now include the limitations of cancelled claim 3.
While it is acknowledged that applicant has support for the language of original claim 3, the question was also raised as to the meaning. Claim 1 now includes the limitations:
“the particles having an open pore volume mean diameter greater than 4 microns”, and
“wherein the particles comprise pores…have a volume mean diameter D4,3 of from 50 to 1000 microns”. Here, the second instance of “volume mean diameter” is also in reference to open pores as understood from pages 11-12 of the instant specification.
Both limitations recite “volume mean diameter” and the second limitation of claim 1 further adds D4,3. The instant specification appears to indicate that these two phrasings are to the same structural limitation. The instant specification on pages 6-7 states:
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Since the two limitations appear to have the same meaning, it is not clear if the two limitations are actually in reference to the same pore population or to different pore populations. Or are they in reference to the same population of pores? In other words, does the D4,3 volume mean diameter of 50-1000 microns further narrow the open ended “greater than 4 micrometers” volume mean diameter, or are these ranges directed to different populations?
The instant specification indicates an embodiment where the particles have a bimodal open pore diameter distribution where the open pore volume mean diameter of the mode comprising the smaller diameters is greater than 4 microns (page 7), but the instant claims do not clearly indicate that the two claimed ranges of volume mean diameter are directed to different populations of pores (i.e. bimodal).
Regarding the paragraph cited by applicant to support the claim limitations of original claim 3 (paragraph bridging pages 11-12); however, that paragraph does not include the limitation of a volume mean diameter of greater than 4 micrometers. Thus, the citation does not clarify the meaning of the two cited ranges for volume mean diameter. The citation spanning pages 11-12 of the instant specification is preceded by a discussion of different populations of pores being observed as indicated in Figures 4 and 5. The specification indicates that the size and shape of the voids left by added ice which appear to correspond to the pores cited in original claim 3 as having a mean volume diameter D4,3 of 50-1000 microns. The specification states that in Figures 4 and 5, the voids from ice sublimation are “b” and the voids from ice crystal addition are “c”. However, it appears that the added ice also sublimes.
Moreover, the instant specification and claims refer to another population of open pores with diameter openings of less than 2 microns (claim 5). It is not clear if the open pore volume mean diameter greater than 4 microns accounts for all populations of pores or if this limitation is directed to only “smaller” diameters as noted on page 7 of the instant specification. If it does refer to smaller pores, would this also include the pores having an opening of less than 2 microns? Still further, the open-ended range (greater than 4 microns) of the “open pore volume mean diameter” of claim 1 appears to be open to both large and small pores. Is the first citation of open pore volume mean diameter directed to a sum of all open pores or is it directed to pores “b” as shown in Figures 4 and 5? In sum, the meaning of “volume mean diameter” vs. “volume mean diameter D4,3” appear to be the same, but the claim includes two ranges. It is not clear if these limitations refer to the same pores, overlapping pores (i.e. a total and a sub-population), or two different pore populations (i.e. bimodal).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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 1723
/Jennifer McNeil/Primary Examiner, Art Unit 1723
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