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 .
Claim Rejections - 35 USC § 103
Claims 16-32, 34, and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Silver et al. (US 2008/0311245) in view of Kensch et al. (US 2008/0064064) and Bai et al. CN 103525792 Derwent Abstract.
Regarding Claims 16-19: Silver discloses a method of making soluble coffee extract [abstract]. Silver discloses providing and combining roasted and ground coffee with water and adding a hydrolase enzyme [abstract]. Silver discloses that the hydrolase enzyme can be a mannanase [0017]. Silver discloses exposing the mixture to a temperature of about 20°C to about 90°C and preferably about 50°C to about 60°C [abstract]. Silver discloses separating the soluble coffee extract as a permeate [abstract].
Silver does not explicitly disclose, wherein the mannanase has at least 90% sequence identity to SEQ ID NO: 3; at least 95% sequence identity (claim 17); at least 97% sequence identity (claim 18) is Seq ID No 3 (claim 19).
Kensch discloses mannans as a type of hemicellulose and discloses its presence in coffee beans [0003; 0004]. Kensch discloses that β-mannanase is a major endo-acting enzyme “involved in the degradation of hemicellulose” [0005]. Kensch discloses mannanase as useful in coffee extraction [0002; 0017; 0297]. Kensch also discloses wherein the mannanase can be an endo-beta 1,4 mannanase [0006].
Bai discloses Seq ID 1: which has 100% sequence identity to Seq Id 3 of the instant invention. Bai discloses the mannanase as useful in food production and that the enzyme is highly specific [abstract]. Bai discloses the enzyme as a high temperature enzyme [abstract].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the mannanase of Silver for endo-beta 1,4 mannanase as in Bai since Kensch discloses endo-beta 1,4 mannanase as useful in coffee extraction and Bai discloses the claimed endo-beta 1,4 mannanase as highly specific and would therefore further improve the coffee solid preparation.
Although, Silver and Bai do not explicitly disclose the term thermostable, it would have been obvious that the enzymes of Silver were thermostable since they have the ability to be used at high temperatures as disclosed in Bai.
Further, since Bai discloses Seq ID 1 which has 100% sequence identity to Seq ID 3, it would have been obvious that the enzyme would have been thermostable since “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding the temperature, one having ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Silver overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Regarding the time, one having ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Silver overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Regarding Claim 20: Silver as modified discloses as discussed above in claim 16. Silver does not disclose wherein the enzyme having mannanase activity has a melting temperature (Tm) determined by Differential Scanning Calorimetry (DSC) of at least 80°C.
Although, Silver does not explicitly disclose wherein the enzyme having mannanase activity has a melting temperature determined by DSC of at least 80°C, it would have been obvious that the enzymes of Silver would have had the melting temperature, since Bai discloses Seq ID 1 which has 100% sequence identity to Seq ID 3, is therefore the same enzyme and since “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding Claims 21-25: Silver as modified discloses as discussed above in claim 16. Silver discloses exposing the mixture to an incubation temperature of about 20°C to about 90°C [abstract].
Regarding the incubation temperature, one having ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Silver overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Regarding Claims 26-29: Silver as modified discloses as discussed above in claim 16. Silver discloses that the incubation is performed for about 1 to 24 hours [0033].
Regarding the incubation time, one having ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Silver overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Regarding Claim 30: Silver as modified discloses as discussed above in claim 16. Silver does not explicitly disclose wherein the coffee extract obtained in step (b) comprises at least 100% more dry matter than a coffee extract prepared by a similar method without the addition of GH5 endo-beta-1,4-mannanase which comprises an amino acid sequence with at least 90% sequence identity to Seq ID No 3.
Although, Silver does not explicitly disclose the at least 100% increase in dry matter, it would have been obvious that since Bai discloses Seq ID 1 which has 100% sequence identity to Seq ID 3, that the enzyme would have the same effect as recited and especially where “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding Claim 31: Silver as modified discloses as discussed above in claim 16 wherein the coffee beans are ground and roasted and incubated in water, and discloses the claimed mannanase and thermostability. Silver further discloses that cellulase and galactanase can be added and incubated with the water roasted and ground coffee beans and mannanase [0017; 0033].
Regarding Claim 32: Silver as modified discloses as discussed above in claim 16. Silver further discloses that the roast and ground coffee can be previously extracted [0019; 0021].
Regarding Claim 34: Silver discloses as discussed above in claim 32. Silver further discloses milling after extraction and before incubating with an enzyme [0026].
Regarding Claim 35: Silver discloses as discussed above in claim 32. Silver does not explicitly disclose wherein at least 8% by weight of the dry matter of the coffee beans obtained after the one or more first extractions is recovered in the coffee extract obtained in step (b). However, the method disclosed in Silver as modified is the same as instantly recited and would therefore produce the same coffee extract that has the claimed properties. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Silver et al. (US 2008/0311245) in view of Kensch et al. (US 2008/0064064) and Bai et al. CN 103525792 Derwent Abstract as applied to claim 32 above and in further view of Colton (US 4,983,408).
Regarding Claim 33: Silver as modified discloses as discussed above in claim 32.
Silver does not disclose steam explosion after the one of more first extraction and before step (a).
Colton discloses that the coffee extract is subjected to steam explosion after extraction and before enzymatic treatment [col. 3, lines 57-68]. Colton discloses that the steam explosion helps increase the yield of soluble solids and removes bitterness [col. 3, lines 1-5]. Colton discloses that the steam explosion increases “the ability of the hydrolyzing enzyme to effect solubilization” [col. 3, lines 1-38].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the method of Silver to include a step of steam explosion as in Colton in order to help remove bitterness and to increase the yield of soluble solids.
Claims 16-21, 26-31, 33, and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Colton (US 4,983,408) in view of Kensch et al. (US 2008/0064064) and Bai et al. CN 103525792 Derwent Abstract.
Regarding Claims 16-19, and 21: Colton discloses a method of making a coffee extract [abstract]. Colton discloses providing roast and ground coffee and extracting the ground roast coffee [col. 3, lines 57-61]. Colton discloses adding water and an enzyme to extracted coffee [col. 4, lines 1-4; col. 6, lines 5-10]. Colton discloses the hydrolysis taking place at temperatures of about 30 to 60°C [claim 8]. Colton discloses hemicellulases [col. 3, lines 44-47]
Colton does not explicitly disclose, wherein the mannanase has at least activity has at least 90% sequence identity to SEQ ID NO: 3; 95% sequence identity to SEQ ID NO: 3 (claim 17); at least 97% sequence identity (claim 18); is Seq ID 3 (claim 19).
Kensch discloses mannans as a type of hemicellulose [0003]. Kensch discloses that β-mannanase is a major endo-acting enzyme “involved in the degradation of hemicellulose” [0005]. Kensch discloses mannanase as useful in coffee extraction [0002; 0017]. Kensch also discloses wherein the mannanase can be an endo-beta 1,4 mannanase [0004].
Bai discloses Seq ID 1: which has 100% sequence identity to Seq Id 3 of the instant invention. Bai discloses the mannanase as useful in food production and that the enzyme is highly specific [abstract]. Bai discloses the enzyme as high temperature [abstract]. Bai discloses the enzyme as high temperature [abstract].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the hemicellulase of Colton for mannanase of Kensch since Kensch discloses that mannanase degrades hemicelluloses and is therefore a type of hemicellulose and is useful for the degradation of coffee substrates.
Further, it would have been obvious to one of ordinary skill in the art to further modify the mannanase of Colton for the highly specific endo -beta 1,4, mannanase of Bai in order to improve the coffee solid preparation.
Although, Colton and Bai do not explicitly disclose the term thermostable, it would have been obvious that the enzyme of modified Colton was thermostable since they have the ability to be used at high temperatures.
Further, since Bai discloses Seq ID I which has 100% sequence identity to Seq ID 3, it would have been obvious that the enzyme would have been thermostable since “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding the temperature, one having ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Silver overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Regarding Claim 20: Colton as modified discloses as discussed above in claim 16. Colton does not disclose wherein the enzyme having mannanase activity has a melting temperature (Tm) determined by Differential Scanning Calorimetry (DSC) of at least 80°C.
Although, Colton does not explicitly disclose wherein the enzyme having mannanase activity has a melting temperature determined by DSC of at least 80°C, it would have been obvious that the enzymes of Colton would have had the melting temperature, since Bai discloses Seq ID 1 which has 100% sequence identity to Seq ID 3, is therefore the same enzyme and since “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding Claims 26-29: Colton as modified discloses as discussed above in claim 16. Silver discloses that the incubation is performed for about 1 to 6 hours [claim 8].
One having ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Silver overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Regarding Claim 30: Colton as modified discloses as discussed above in claim 16. Colton does not explicitly disclose wherein the coffee extract obtained in step (b) comprises at least 100% more dry matter than a coffee extract prepared by a similar method without the addition of GH5 endo-beta-1,4-mannanase which comprises an amino acid sequence with at least 90% sequence identity to Seq ID No 3.
Regarding the dry matter content, the method disclosed in Colton as modified is the same as instantly recited and would therefore produce the same coffee extract that has the claimed properties. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Although, Colton does not explicitly disclose the at least 100% increase in dry matter, it would have been obvious that since Bai discloses Seq ID 1 which has 100% sequence identity to Seq ID 3, that the enzyme would have the same effect as recited and especially where “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding Claim 31: Colton discloses as discussed above in claim 16. Colton further discloses contacting the coffee with cellulase [col. 4, lines 1-4].
Regarding Claim 33: Colton discloses as discussed above in claim 32 and further discloses that the coffee extract is subjected to steam explosion after extraction and before enzymatic treatment [col. 3, lines 6-19, 62-68].
Regarding Claim 35: Colton discloses as discussed above in claim 32. Colton does not explicitly disclose wherein at least 8% by weight of the dry matter of the coffee beans obtained after the one or more first extractions is recovered in the coffee extract obtained in step (b). However, the method disclosed in Colton as modified is the same as instantly recited and would therefore produce the same coffee extract that has the claimed properties. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Pertinent Prior Art
5. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Dehnugara GB 2150933 discloses a pentosan degrading enzyme and discloses that the enzymes are effective at higher temperatures including 90°C [abstract] discloses treating coffee [pg. 3, lines 25-30].
Conclusion
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FELICIA C TURNER whose telephone number is (571)270-3733. The examiner can normally be reached Mon-Thu 8:00-4:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Felicia C Turner/Primary Examiner, Art Unit 1793
Prosecution Insights