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 .
This office action is in response to the application filed on March 25, 2024. The earliest effective filing date of the application is March 23, 2023.
Election/Restrictions
Claims 17 – 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 February 25, 2026.
Applicant’s election without traverse of Group I, claims 1 – 16, in the reply filed on February 25, 2026 is acknowledged.
Status of Application
The Response to Restriction Requirement has been entered. The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1 – 20
Withdrawn claims: 17 – 20
Claims currently under examination: 1 – 16
Claim Objections
Claims 1 and 9 are objected to because of the following informalities:
Claim 1 recites “A process for creating a coffee beans, ground or whole bean, product […]” which should be rewritten as “A process for creating a ground coffee or whole coffee bean product […]” to put the claim into proper English.
Claims 1 and 9 recite “[…] which allows brewing of a brewed coffee beverage […]” which should be rewritten as “[…] which allows for the brewing of a brewed coffee beverage […]” to put the claim into proper English.
Appropriate correction is required.
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, 4, 5, 8, 9, 12, 13, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Gurol (U.S. Patent No. 6,045,843 A).
Regarding claim 1, Gurol teaches a process for producing acid reduced coffee beans comprising the steps of:
applying a solution of an alkaline agent and a coating agent in a solvent to whole bean coffee; and
evaporating the solvent to leave a coating of the coating agent and alkaline agent on the whole coffee beans (Claim 1).
Gurol teaches the whole bean coffee is roasted (col. 6, lines 5 – 7). Gurol teaches after drying the coating, leaving only the carrier and alkaline agent behind, the total bean weight increased by 1% (col. 15, lines 62 – 66); indicating the alkaline agent is provided in amount of less than 3 percent of the total weight of the roasted whole beans. Gurol teaches the alkaline agent is an alkaline earth metal carbonate, alkali metal hydroxide, or an alkaline earth metal hydroxide (col. 15, lines 34 – 36). Gurol teaches potassium bicarbonate is a known acidity reducing agent (col. 1, lines 48 – 55). Gurol teaches potassium bicarbonate has been used in beverages to reduce acidity due to malic acid (col. 3, lines 57 – 62). Gurol teaches one of the acidic constituents in coffee is malic acid (col. 3, lines 28 – 31).
While Gurol does not explicitly teach the alkaline agent is potassium bicarbonate, MPEP § 2144.06.II states an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). One of ordinary skill in the art would have substituted the alkaline earth metal carbonate, alkali metal hydroxide, or alkaline earth metal hydroxide in the alkaline agent with potassium bicarbonate before the effective filing date of the application because potassium bicarbonate, like the alkaline earth metal carbonate, alkali metal hydroxide, or alkaline earth metal hydroxide, is a known acidity reducing agent suitable for use in beverages, which is capable of reducing the acidity of acids known to be present in coffee.
While Gurol is silent regarding the explicit recitation of “providing” the roasted whole bean coffee and the solution of an alkaline agent and a coating agent in a solvent prior to their combination, it would have been obvious to one of ordinary skill in the art to have provided such components prior to their combination, because their provision prior to their combination would have been necessary to successfully combine them.
Finally, regarding the preamble of claim 1 “A process for creating a coffee beans, ground or whole bean, product which allows brewing of a brewed coffee beverage with decreased acidity and turbidity”, MPEP § 2111.02.II teaches, “[i]f the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” In the instant case, the noted preamble merely states the purpose or intended use of the claimed method. Therefore, the preamble does not limit the claim.
In summary, by following the modified method of Gurol, one of ordinary skill in the art would have arrived at a method comprising the steps of:
providing roasted whole bean coffee (i.e., providing a quantity of roasted coffee beans having a total bean weight);
providing a solution of an alkaline agent comprising potassium bicarbonate and a coating agent in a solvent wherein the potassium bicarbonate is less than or equal to 1% of the weight of the roasted whole bean coffee (i.e., providing potassium carbonate at an amount of up to 3 percent of the total bean weight of the roasted coffee beans weight); and
applying the solution of an alkaline agent and a coating agent in a solvent to the roasted whole bean coffee and evaporating the solvent to leave a coating of the coating agent and alkaline agent on the whole coffee beans (i.e., preparing a coffee and potassium bicarbonate mixture of the quantity of roasted coffee beans and the potassium bicarbonate).
Regarding claim 4, Gurol teaches tumbling the beans in the solution of an alkaline agent and a coating agent in a solvent (col. 16, lines 1 – 4).
Regarding claim 5, Gurol teaches applying (i.e., coating) a solution of an alkaline agent (i.e., potassium bicarbonate) and a coating agent (i.e., binder or excipient) in a solvent to whole bean coffee (Claim 1).
While Gurol is silent regarding the explicit recitation of “adding the potassium bicarbonate to a binder or excipient”, it would have been obvious to one of ordinary skill in the art to have added the potassium bicarbonate to the coating agent (i.e., binder or excipient) to form the solution of an alkaline agent (i.e., potassium bicarbonate) and a coating agent (i.e., binder or excipient) in a solvent.
Therefore, Gurol renders obvious the “preparing a coffee and potassium bicarbonate mixture” step including the steps:
adding the potassium bicarbonate to the coating agent to form the solution of potassium bicarbonate and a coating agent in a solvent (i.e., adding the potassium bicarbonate to a binder or excipient); and
applying a solution of an alkaline agent and a coating agent in a solvent to whole bean coffee (i.e., coating the quantity of roasted coffee beans with the potassium bicarbonate dissolved in the binder or excipient).
Regarding claim 8, Gurol teaches the coating is applied to the beans in an aqueous solution (col. 15, lines 6 – 8). Therefore, the binder or excipient is interpreted to include water, given the coating agent (i.e., the binder or excipient) is in an aqueous solution.
Regarding claim 9, Gurol teaches a method of forming acid-neutralizing composition comprising the steps of:
combining acid-reducing agents and instant coffee to produce an acid-neutralizing agent (Example 1).
Gurol teaches an exemplary acid-neutralizing composition comprising 66.82 wt% calcium carbonate and 0.35 wt% instant coffee (co. 18, lines 15 – 26). Gurol teaches the acid-reducing agent is an alkaline earth metal carbonate, alkali metal hydroxide, or an alkaline earth metal hydroxide (col. 5, lines 51 – 53). Gurol teaches potassium bicarbonate is a known acidity reducing agent (col. 1, lines 48 – 55). Gurol teaches potassium bicarbonate has been used in beverages to reduce acidity due to malic acid (col. 3, lines 57 – 62). Gurol teaches one of the acidic constituents in coffee is malic acid (col. 3, lines 28 – 31).
While Gurol does not explicitly teach a portion of the calcium carbonate is potassium bicarbonate, MPEP § 2144.06.II states an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). One of ordinary skill in the art would have substituted a portion of the calcium carbonate in the acid-neutralizing agent with potassium bicarbonate such that the potassium carbonate is in an amount of up to 10 percent of the instant coffee, before the effective filing date of the invention because potassium bicarbonate, like calcium carbonate, is a known acidity reducing agent suitable for use in beverages, which is capable of reducing the acidity of acids known to be present in coffee. Furthermore, MPEP § 2144.06.I states it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art. In this case, a combination of any proportion of calcium carbonate and potassium bicarbonate is suitable for the same purpose as calcium carbonate in the method of Gurol. Therefore, the acid-neutralizing agent comprising potassium bicarbonate in an amount of up to 10 percent of the instant coffee (i.e., soluble coffee granules) is rendered obvious by Gurol.
While Gurol is silent regarding the explicit recitation of “providing” the instant coffee (i.e., soluble coffee granules) and the potassium bicarbonate prior to their combination, it would have been obvious to one of ordinary skill in the art to have provided such components prior to their combination, because their provision prior to their combination would have been necessary to successfully combine them.
Finally, regarding the preamble of claim 9 “A process for creating a soluble instant coffee product which allows brewing of a brewed coffee beverage with decreased acidity and turbidity”, MPEP § 2111.02.II teaches, “[i]f the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” In the instant case, the noted preamble merely states the purpose or intended use of the claimed method. Therefore, the preamble does not limit the claim.
In summary, by following the modified method of Gurol, one of ordinary skill in the art would have arrived at a method comprising the steps of:
providing instant coffee (i.e., providing a quantity of soluble coffee granules having a total granular weight);
providing potassium bicarbonate at an amount of up to 10 percent of the weight of the instant coffee (i.e., providing potassium bicarbonate at an amount of up to 10 percent of the total granular weight of the soluble coffee granules); and
combining the instant coffee and potassium bicarbonate to produce an acid-neutralizing composition (i.e., preparing a soluble coffee and potassium bicarbonate mixture of the quantity of soluble coffee granules and the potassium bicarbonate).
Regarding claim 12, the modified method of Gurol teaches the acid-reducing agent (i.e., potassium bicarbonate) and instant coffee are mixed to prepare the acid-neutralizing agent (i.e., stirred – Example 1).
Regarding claims 13 and 16, Gurol teaches mixing water into the acid-reducing agent (i.e., potassium bicarbonate) prior to the addition of instant coffee (Example 1). The instant specification states “the potassium bicarbonate powder can also be dissolved in an excipient or a binder (e.g., but not limited to glycerol, propylene glycol, or water)” ([0041]). Therefore water is considered to be an excipient or binder. Therefore Gurol renders obvious the “preparing a coffee and potassium bicarbonate mixture” step including the steps:
mixing water into the acid-reducing agent (i.e., adding the potassium bicarbonate to a binder or excipient); and
adding instant coffee (i.e., coating the quantity of soluble coffee granules with the potassium bicarbonate dissolved in the binder or excipient).
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Gurol (U.S. Patent No. 6,045,843 A), as applied to claim 1 above, and further in view of Armand Products Company (Safety Data Sheet: Potassium Bicarbonate (Anhydrous All Grades). Armand Products Company. (2022). Retrieved from: https://www.armandproducts.com/products/media/potassium-bicarbonate-anhydrous-all-grades-sds/).
Regarding claims 2 and 3, Gurol teaches crushing antacids to form powders when the acid-reducing agent is provided in a tablet form (Example 7).
Gurol is silent regarding the granule size of the acid-reducing agents.
Armand Products Company teaches a potassium bicarbonate powder with a D95 of 200 mesh (0.075mm – p. 8, Particle Size Distribution).
Gurol and Armand Products Company are combinable because they are concerned with the same field of endeavor, namely, acid-reducing agents. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have crushed the potassium bicarbonate to a particle size of 200 mesh (0.075 mm), as taught by Armand Products Company in the method of Gurol because Armand Products Company provides that it was known for potassium bicarbonate of a 200 mesh particle size to be successfully used and published at the time of filing, which means it was within the general skill of a worker in the art to produce powdered potassium bicarbonate of a 200 mesh particle size, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP § 2144.07.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Gurol (U.S. Patent No. 6,045,843 A), as applied to claim 5 above, and further in view of Akiyama et al. (JP 2008212010 A – Clarivate Machine Translation).
Regarding claim 6, Gurol teaches the composition of this invention may also include an excipient (col. 9, lines 30 – 31). Gurol teaches the term "excipient" refers to an inert substance that forms a vehicle for the active ingredients of the composition (col. 9, lines 31 – 33). Gurol teaches suitable excipients include those that permit the effective and efficient delivery of the alkaline substances and other ingredients present in the composition of this invention, and include granulating and dispersing agents (col. 9, lines 33 – 37).
Gurol does not explicitly state the excipient is propylene glycol.
Akiyama teaches a method of adding or enhancing a mocha coffee-like flavor for a coffee blended food or drink comprising adding raspberry ketone (Claim 6). Akiyama teaches the mocha coffee-like flavor may be in the form of powder (p. 3, paragraph 7). Akiyama teaches the mocha coffee-like flavor comprises excipients such as glycerin and propylene glycol (p. 3, paragraph 7).
Gurol and Akiyama are combinable because they are concerned with the same field of endeavor, namely, powdered flavor enhancers for coffee. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have selected propylene glycol, as taught by Akiyama, in the method of Gurol because Akiyama provides that it was known for propylene glycol to be successfully used and published as a suitable excipient for powdered flavor enhancers for coffee at the time of filing, which means it was within the general skill of a worker in the art to select propylene glycol, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP § 2144.07.
Regarding claim 7, Gurol teaches the composition of this invention may also include an excipient (col. 9, lines 30 – 31). Gurol teaches the term "excipient" refers to an inert substance that forms a vehicle for the active ingredients of the composition (col. 9, lines 31 – 33). Gurol teaches suitable excipients include those that permit the effective and efficient delivery of the alkaline substances and other ingredients present in the composition of this invention, and include granulating and dispersing agents (col. 9, lines 33 – 37).
Gurol does not explicitly state the excipient is glycerin.
Akiyama teaches a method of adding or enhancing a mocha coffee-like flavor for a coffee blended food or drink comprising adding raspberry ketone (Claim 6). Akiyama teaches the mocha coffee-like flavor may be in the form of powder (p. 3, paragraph 7). Akiyama teaches the mocha coffee-like flavor comprises excipients such as glycerin and propylene glycol (p. 3, paragraph 7).
Gurol and Akiyama are combinable because they are concerned with the same field of endeavor, namely, powdered flavor enhancers for coffee. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have selected glycerin, as taught by Akiyama, in the method of Gurol because Akiyama provides that it was known for glycerin to be successfully used and published as a suitable excipient for powdered flavor enhancers for coffee at the time of filing, which means it was within the general skill of a worker in the art to select glycerin, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP § 2144.07.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Gurol (U.S. Patent No. 6,045,843 A), as applied to claim 9 above, and further in view of Armand Products Company (Safety Data Sheet: Potassium Bicarbonate (Anhydrous All Grades). Armand Products Company. (2022). Retrieved from: https://www.armandproducts.com/products/media/potassium-bicarbonate-anhydrous-all-grades-sds/).
Regarding claims 10 and 11, Gurol teaches crushing antacids to form powders when the acid-reducing agent is provided in a tablet form (Example 7).
Gurol is silent regarding the granule size of the acid-reducing agents.
Armand Products Company teaches a potassium bicarbonate powder with a D95 of 200 mesh (0.075mm – p. 8, Particle Size Distribution).
Gurol and Armand Products Company are combinable because they are concerned with the same field of endeavor, namely, acid-reducing agents. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have crushed the potassium bicarbonate to a particle size of 200 mesh (0.075 mm), as taught by Armand Products Company in the method of Gurol because Armand Products Company provides that it was known for potassium bicarbonate of a 200 mesh particle size to be successfully used and published at the time of filing, which means it was within the general skill of a worker in the art to produce powdered potassium bicarbonate of a 200 mesh particle size, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP § 2144.07.
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Gurol (U.S. Patent No. 6,045,843 A), as applied to claim 13 above, and further in view of Akiyama et al. (JP 2008212010 A – Clarivate Machine Translation).
Regarding claim 14, Gurol teaches the composition of this invention may also include an excipient (col. 9, lines 30 – 31). Gurol teaches the term "excipient" refers to an inert substance that forms a vehicle for the active ingredients of the composition (col. 9, lines 31 – 33). Gurol teaches suitable excipients include those that permit the effective and efficient delivery of the alkaline substances and other ingredients present in the composition of this invention, and include granulating and dispersing agents (col. 9, lines 33 – 37).
Gurol does not explicitly state the excipient is propylene glycol.
Akiyama teaches a method of adding or enhancing a mocha coffee-like flavor for a coffee blended food or drink comprising adding raspberry ketone (Claim 6). Akiyama teaches the mocha coffee-like flavor may be in the form of powder (p. 3, paragraph 7). Akiyama teaches the mocha coffee-like flavor comprises excipients such as glycerin and propylene glycol (p. 3, paragraph 7).
Gurol and Akiyama are combinable because they are concerned with the same field of endeavor, namely, powdered flavor enhancers for coffee. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have selected propylene glycol, as taught by Akiyama, in the method of Gurol because Akiyama provides that it was known for propylene glycol to be successfully used and published as a suitable excipient for powdered flavor enhancers for coffee at the time of filing, which means it was within the general skill of a worker in the art to select propylene glycol, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP § 2144.07.
Regarding claim 15, Gurol teaches the composition of this invention may also include an excipient (col. 9, lines 30 – 31). Gurol teaches the term "excipient" refers to an inert substance that forms a vehicle for the active ingredients of the composition (col. 9, lines 31 – 33). Gurol teaches suitable excipients include those that permit the effective and efficient delivery of the alkaline substances and other ingredients present in the composition of this invention, and include granulating and dispersing agents (col. 9, lines 33 – 37).
Gurol does not explicitly state the excipient is glycerin.
Akiyama teaches a method of adding or enhancing a mocha coffee-like flavor for a coffee blended food or drink comprising adding raspberry ketone (Claim 6). Akiyama teaches the mocha coffee-like flavor may be in the form of powder (p. 3, paragraph 7). Akiyama teaches the mocha coffee-like flavor comprises excipients such as glycerin and propylene glycol (p. 3, paragraph 7).
Gurol and Akiyama are combinable because they are concerned with the same field of endeavor, namely, powdered flavor enhancers for coffee. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have selected glycerin, as taught by Akiyama, in the method of Gurol because Akiyama provides that it was known for glycerin to be successfully used and published as a suitable excipient for powdered flavor enhancers for coffee at the time of filing, which means it was within the general skill of a worker in the art to select glycerin, because it would be obvious to one of skill in the art to do such a thing on the basis of its suitability for a similar intended use. See MPEP § 2144.07.
Conclusion
No claims are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's
disclosure:
Dharmawan et al. (Formulation of Decaffeinated Instant Coffee Effervescent Tablet. Pelita Perkebunan. Vol 32. Iss 3. Pp. 198 – 205. (2016)) discloses a method of making a decaffeinated instant coffee effervescent tablet comprising mixing instant coffee and sodium bicarbonate.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LARK JULIA MORENO whose telephone number is (571)272-2337. The examiner can normally be reached 6:30 - 4:30 M - F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/L.J.M./EXAMINER, ART UNIT 1793
/EMILY M LE/SUPERVISORY PATENT EXAMINER, ART UNIT 1793
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