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 .
Application Status
Claim 1-8 are under examination.
Claim 1-8 are rejected.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/15/2024, 05/21/2025 and 09/04/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 4, 6 and 8 are objected to because of the following informalities:
claim 4, line 2 recites “the content of 2-phenylethanol” should be “a content of the 2-phenylethanol”;
claim 4, line 5 recites “coffee beans” should be “the coffee beans” since antecedent basis have been established in claim 1;
claim 4, lines 8-9 recites “the content of 2-phenylethanol” should be “the content of the 2-phenylethanol” since antecedent basis have been established in claim 4, line 2;
claim 6, line 1 recites “production method” should be “the method” for consistent claim language set forth in claim 5;
claim 6, line 2-3 recites a list of yeast however, since the list of yeast are scientific names and should be italicized;
claim 8, line 2 recites “the content of 2-phenylethanol” should be “a content of the 2-phenylethanol”;
claim 8, line 5 recites “coffee beans” should be “the coffee beans” since antecedent basis have been established in claim 5; and
claim 8, lines 8-9 recites “the content of 2-phenylethanol” should be “the content of the 2-phenylethanol” since antecedent basis have been established in claim 8, line 2;
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 4 and 8 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 4 recites the limitation "the mixture" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation "the resulting diethyl ether layer" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation "the resulting liquid" in line 9. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "the mixture" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "the resulting diethyl ether layer" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "the resulting liquid" in line 9. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by F. Hadj Salem et al. (Applicant submitted IDS filed on 05/15/2024, Ref. 1, Food Chemistry, Vol. 322, 2020) as evidenced by Fitri et al. (Composition of amino acids and fatty acids on Luwak coffee processing, Ref. U).
Regarding claim 1, 2 and 3, F. Hadj Salem et al. (Salem) discloses green coffee beans with an amount of 2-phenylethanol in range amount 18.8 + 1.75 ug/g (Ref. 1, pg. 4, col. 2, under Mass transfer resistance study, second paragraph) which corresponds to 18.8 + 1.75 ppm, and in range with the cited range of claim 1 and claim 2. With respect to claim 3, Salem’s green coffee beans are unroasted coffee beans.
Regarding claim 4, it is noted the claims is a product and not a method, wherein the recitation of measuring the amount of the 2-phenylethanol in the coffee beans; hence it is considered a functional limitations of the claimed product, coffee beans with the 2-phenylethanol; hence it has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or substantially identical process, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitation that stem from the claimed structure (product). In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spade, 15 USPQ2d 655,1658 (Fed. Cir. 1990).
Regarding claim 5, 6 and 7, F. Hadj Salem et al. (Salem) discloses a method of processing plant materials including fresh coffee cherries, depulped coffee beans (Ref. 1, pg. 2, col. 2 under Materials and methods) with yeast strain, Saccharomyces cerevisiae LSCC1 (Ref. 1, pg. 3, col. 1, 4th full paragraph) and treating (fermenting) at 25°C for five time periods (Ref. 1, pg. 3, col. 1, 5th-7th paragraph) to provide a green coffee beans with an amount of 2-phenylethanol in range amount 18.8 + 1.75 ug/g (Ref. 1, pg. 4, col. 2, under Mass transfer resistance study, second paragraph) which corresponds to 18.8 + 1.75 ppm, and in range with the cited range of claim 5. With respect to the recitation of phenylalanine in an amount of 0.01 g or greater per 1 kg of the raw material beans; Salem’s depulped coffee beans (raw bean) contains innate amount of 0.20 + 0.007% of phenylalanine as evidenced by Fitri et al. (Ref. U, pg. 62, Table 1), which is in range with the cited range 0.01g or greater per 1 kg of raw material beans (0.001% or greater). With respect to claim 7, Salem discloses the time periods (Ref. 1, pg. 3, col. 1, 5th-7th paragraph) including 6 hours which is in range with the cited range.
Regarding claim 8, it is noted the claims are to a method of producing coffee beans, wherein the recitation of measuring the amount of the 2-phenylethanol in the coffee beans; hence it is considered a functional limitations of the claimed product, coffee beans with the 2-phenylethanol; hence it has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or substantially identical process, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitation that stem from the claimed structure (product). In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spade, 15 USPQ2d 655,1658 (Fed. Cir. 1990).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG THI YOO whose telephone number is (571)270-7093. The examiner can normally be reached M-F, 7AM to 3PM.
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/HONG T YOO/Primary Examiner, Art Unit 1792