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
Amended claim 1-8 and new claim 9-13 are under examination.
Claim 1-13 are rejected.
Withdrawn Rejections
The objections set forth in previous office action have been withdrawn in light of Applicants’ amendments.
The 112 second paragraph rejections over claim 4 and 8 as set forth in previous office action in light of Applicants’ amendments.
The 35 U.S.C. 102(a)(1) rejection over Claim(s) 1--8 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 U) has been withdrawn in light of Applicants’ amendment to recite new limitation in independent claim 1 and independent claim 5.
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) 1-4, 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suggi et al. (EP 1867235 A1).
Regarding claim 1-4, 9 and 10, Suggi et al. (Suggi) discloses roasted coffee beans comprising with phenylethanol, synonym 2-phenylethnanol in an amount of 37.8 ( + 1.6) mg/100g (pg. 4, Example 1, Table 1) which corresponds to a range of 362 ppm to 394 ppm; and in range with the new limitation of cited range of 24 ppm or greater of claim 1; in range with cited range of 24 ppm to 2000 ppm of claim 2; in range with cited range of 30 ppm or greater of new claim 9 and in range with the cited range of 30 ppm to 2000 ppm of new claim 10.
With respect to 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).
Claim Rejections - 35 USC § 103
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.
Claim(s) 5-8 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over 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 5, 6, 7, 11, 12 and 13, 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. 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 new limitation of the range of “24 ppm or greater” in claim 5; “24 ppm to 2000 ppm” in new claim 11; “30 ppm or greater” in new claim 12 and “30 ppm to 2000 ppm” in new claim 13; as Salem uses like materials, coffee beans with phenylalanine with overlapping ranges; with yeast strain, Saccharomyces cerevisiae in a like manner as claimed; it has been held where the claimed prior art products are identical or substantially identical in structure or produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness will be considered have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The prima facie case can be rebutted by evidence showing the prior art products do not necessary possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977).
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).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-8 and new claim 9-13 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument in claim 1-4, 9 and 10 of the product claims. In response to method of claim 5-8 and 11-13; the new 103 rejections over claim 5-8 and 11-13; Salem discloses the 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. 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 new limitation of the range of “24 ppm or greater” in claim 5; “24 ppm to 2000 ppm” in new claim 11; “30 ppm or greater” in new claim 12 and “30 ppm to 2000 ppm” in new claim 13; as Salem uses like materials, coffee beans with phenylalanine with overlapping ranges; with yeast strain, Saccharomyces cerevisiae in a like manner as claimed; it has been held where the claimed prior art products are identical or substantially identical in structure or produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness will be considered have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The prima facie case can be rebutted by evidence showing the prior art products do not necessary possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. BR 102017026311-A2 discloses a method of production of 2-phenlethnaol aroma, used as flavoring [005] in food application, through microbial cultivation derived from plant biomass [005] and yeast stains, including Saccharomyces cerevisiae [015].
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 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
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