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
Claims 11-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 12/19/2025.
Applicant’s election without traverse of Group I, claims 1-8 in the reply filed on 12/19/2025 is acknowledged.
Claim Objections
Claim 3 is objected to because of the following informalities: It is suggested to change “comprising” in line 2 to –comprises--. 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.
Claim 3 is 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 3 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 3 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 3 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.
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.
Claim(s) 1, 2, and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2009/059938 (Boehm) (cited on IDS filed 12/19/2023).
Regarding claims 1 and 8, Boehm discloses an instant beverage powder having a foaming porosity of at least 35%, and an open pore volume of less than 3mL/g, preferably between 0.4-3.0 mL/g (pages 5 and 9) which overlaps the claimed range and presents a prima facie case of overlap. The powder is preferably an instant coffee powder (page 11, last two lines) and has both open and closed pores (abstract). Regarding the open pore volume mean diameter greater than 4 microns, Boehm discloses that the open pores of the powder particles form the channels for liquid penetration into the powders and that the larger the volume and size of the open pores, the higher the liquid penetration and the better the dissolution, thus indicating that the size of the open pores and the volume thereof is a result effective variable where an increase in volume and size results in increased penetration and better dissolution. Boehm states that the volume of the interstices having an opening diameter between 1-500 microns is taken into account and is measured by mercury porosimetry (page 9). Based upon the disclosure of 1-500 microns openings and the disclosure that the volume of open pores is a result effective variable affecting liquid penetration and dissolution, it would have been obvious to one of ordinary skill to optimize the open pore volume mean diameter to provide the desired penetration and dissolution.
Regarding claim 2, the coffee powder may be freeze-dried or not freeze-dried (page 18).
Regarding claims 4 and 5, Boehm discloses that for the purpose of measuring the foaming porosity, only closed pores (2) as well as open pores (4) having an opening diameter of less than 2 micrometers are taken into account as these are considered to contribute to foaming. The foaming porosity is obtained by the ratio of the volume of pores contributing to foaming over the volume of the aggregate excluding the volume of open pores having an opening diameter above 2 micrometers. This can be measured by mercury porosimetry or X-ray tomography. The foaming porosity of the present powder is at least 35%, such as at least 40% or at least 50%. Preferably, the foaming porosity is between 35 and 85%. The foaming porosity is a measure of the porosity which contributes to foaming and characterizes the potential foaming ability of the powder. Here, Boehm discloses up to 85wt% foaming porosity which is measured by a combination of the closed porosity and the open pores with a diameter less than 2 microns. Thus, it would have been obvious to one of ordinary skill to provide values of closed porosity and open pores with openings less than 2 microns in amounts that will provide a foaming porosity up to 85%. The claimed value of closed porosity of 8% or greater and open porosity of more than 2 microns of greater than 17% is considered to be obvious based upon the upper limit of up to 85% disclosed by Boehm. A combination of closed and open porosity of diameters greater than 2 microns is known to contribute to the overall foaming potential (porosity) of the coffee powder as demonstrated by Boehm, thus any combination of the two types of pores that would provide 85% foaming porosity is considered obvious to one of ordinary skill.
Regarding claim 6, Boehm discloses a pore size distribution having D50 of less than 80 microns, where the distribution is based on the void space distribution which is understood to mean volume (page 13) obtained by X-ray tomography.
Regarding claim 7, the structure of claim 1 is met as explained above. Claim 7 is directed toward a limitation of how the powder will act when subjected to pressure and intrusion. Since Boehm is seen to disclose/obviate the structure of the coffee powder, the powder is reasonably expected to be capable of the same performance absent a showing otherwise.
Claim(s) 1, 2, and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2009/080596 (Boehm II) (cited on IDS filed 12/19/2023).
Regarding claims 1 and 8, Boehm discloses an instant beverage powder having a foaming porosity of at least 35%, and an open pore volume of less than 3mL/g, preferably between 0.1-3.0 mL/g (page 10) which overlaps the claimed range and presents a prima facie case of overlap. The powder is preferably an instant coffee powder (page 8) and has both open and closed pores (page 15). Regarding the open pore volume mean diameter greater than 4 microns, Boehm discloses that the open pores of the powder particles form the channels for liquid penetration into the powders and that the larger the volume and size of the open pores, the higher the liquid penetration and the better the dissolution, thus indicating that the size of the open pores and the volume thereof is a result effective variable where an increase in volume and size results in increased penetration and better dissolution (pages 16-17). Boehm states that the volume of the interstices having an opening diameter between 1-500 microns is taken into account and is measured by mercury porosimetry (page 9). Based upon the disclosure of 1-500 microns openings and the disclosure that the volume of open pores is a result effective variable affecting liquid penetration and dissolution, it would have been obvious to one of ordinary skill to optimize the open pore volume mean diameter to provide the desired penetration and dissolution.
Regarding claim 2, the coffee powder may be freeze-dried (page 13).
Regarding claims 4 and 5, Boehm discloses that for the purpose of measuring the foaming porosity, only closed pores (2) as well as open pores (4) having an opening diameter of less than 2 micrometers are taken into account as these are considered to contribute to foaming (page 15). The foaming porosity is obtained by the ratio of the volume of pores contributing to foaming over the volume of the aggregate excluding the volume of open pores having an opening diameter above 2 micrometers. This can be measured by mercury porosimetry or X-ray tomography. The foaming porosity of the present powder is at least 35%, such as at least 40% or at least 50%. Preferably, the foaming porosity is between 35 and 85% (page 16). The foaming porosity is a measure of the porosity which contributes to foaming and characterizes the potential foaming ability of the powder. Here, Boehm discloses up to 85wt% foaming porosity which is measured by a combination of the closed porosity and the open pores with a diameter less than 2 microns. Thus, it would have been obvious to one of ordinary skill to provide values of closed porosity and open pores with openings less than 2 microns in amounts that will provide a foaming porosity up to 85%. The claimed value of closed porosity of 8% or greater and open porosity of more than 2 microns of greater than 17% is considered to be obvious based upon the upper limit of up to 85% disclosed by Boehm. A combination of closed and open porosity of diameters greater than 2 microns is known to contribute to the overall foaming potential (porosity) of the coffee powder as demonstrated by Boehm, thus any combination of the two types of pores that would provide 85% foaming porosity is considered obvious to one of ordinary skill.
Regarding claim 6, Boehm discloses a pore size distribution having D50 of less than 40 microns, where the distribution is based on the void space distribution which is understood to mean volume (page 11) obtained by X-ray tomography.
Regarding claim 7, the structure of claim 1 is met as explained above. Claim 7 is directed toward a limitation of how the powder will act when subjected to pressure and intrusion. Since Boehm is seen to disclose/obviate the structure of the coffee powder, the powder is reasonably expected to be capable of the same performance absent a showing otherwise.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. WO 2010115697 is cumulative to the prior art cited above.
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