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 April 11, 2024.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-13 and 16-19, in the reply filed on March 30, 2026 is acknowledged. The traversal is on the ground(s) that coffee oil in general is not the special technical feature of the groups, that the special technical feature also includes the claimed method steps, and that the Office fails to identify the additional alleged special technical features of the solvent defined by formula (I), the extraction conditions, controlled temperature conditions, and/or purification steps, thereby failing to not make a contribution over the prior art (Response, pp. 2-4). This is not found persuasive because the special technical feature is still merely coffee oil, not the method steps, and even if the method steps of Group I were taken as additional components to the special technical feature as argued by applicant, these steps would only include the specific solvent and extraction conditions, as the temperature conditions and purification steps are limitations of further dependent claims in Group I. If these features were to be incorporated, they are still taught by the cited prior art (Suntory: Examples), notwithstanding applicant’s arguments to the contrary; thus, the cited prior art would still not make a contribution over the prior art even if the special technical feature were to be coffee oil produced by the method of claim 9.
The requirement is still deemed proper and is therefore made FINAL.
Claims 14 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on March 30, 2026.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d) with a filing date of October 11, 2021. The certified copy of GB 2114488 has been filed in the present application, received on April 11, 2024.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
The present application is a 371 National Stage Application of PCT/EP2022/078285 which has a filing date of October 11, 2022.
Status of Application
Claims 1-19 were originally presented and subject to a restriction requirement. Claims 1-19 are pending; claims 14 and 15 are withdrawn. Claims 1-13 and 16-19 are presented for examination.
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.
Claims 1-13 and 16-19 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 1 recites the term “coffee-based feedstock” which renders the claim indefinite as it is unclear what constitutes a feedstock to be considered “coffee-based.” The instant specification states that coffee-based feedstock is used as an input material to extract coffee oil and gives preferred examples of the coffee-based feedstock, those being roast coffee beans, spent coffee grounds, and “any other commonly used varieties of coffee available to the public” (Specification: p. 7 first paragraph), but does not give a definition, or in the claims, of what a coffee-based feedstock actually is.
It is unclear if a coffee-based feedstock can only contain coffee materials or if other ingredients could also be included in the feedstock. In any case, it is unclear what “coffee” or a coffee material encompasses. Can the feedstock only be derived from coffee beans (in any form), or can the feedstock be derived from another part of the coffee plant, such as the fruit (coffee cherry) or leaves? The meaning of the term “coffee-based feedstock” is thus not clearly delineated due to these discrepancies. What makes a feedstock be considered “coffee-based”? Does a certain percent (e.g., 50 wt.%) of the components have to be derived by some form of coffee material? Do all of the components have to be derived by some form of coffee material? Does the feedstock have to be derived from only coffee beans or grounds? Does it have to be readily available to the public? Therefore, the claim does not clearly define the scope of the limitations and is thereby rendered indefinite.
Claims 3, 16, and 17 recite that “the method is conducted for at least 30 minutes/one hour/16 hours” which renders the claim indefinite as it’s unclear whether this time limitation is specifically regarding either the agitation step as claimed in claim 1 or the entire time to complete the process from start to finish (e.g., mixing feedstock and solvent to removing solvent to obtain coffee oil). Since the agitation step is the only step limited by time in claim 1, it’s assumed that these further dependent claims are intending to further limit the agitation time (by increasing the minimum time of agitation), however, the language of the claims seem to be limiting the time spent completing the entire process. If the latter is the case, it is unclear which steps other than the agitation step could be time limited in order to achieve the claimed process times. Would the separation and removing steps need to be conducted with a slow process? Neither the claims nor the instant specification provide any information to rectify this lack of clarity. Therefore, the claims are rendered indefinite. For the purposes of examination, the claims will be interpreted such that the agitation step is being time limited by these claims.
Claim 5 recites a “standard oxygen rich” atmosphere. It is unclear what would be considered to meet this limitation.
Claims 11 and 13 recite the limitation “the liquid phase” in lines 7 and 4, respectively, which renders the claims indefinite because it is unclear what liquid phase the claim is referring to. Although claim 1, upon which claims 11 and 13 depend from, does recite the term “a/the liquid phase,” it is assumed that this liquid phase is the obtained coffee oil in claim 1, as a liquid phase is separated out and then the solvent is removed, thereby obtaining the coffee oil. Claims 11 and 13 then further processes this coffee oil to purify it further, the claims referring to the coffee oil as coffee oil in the beginning steps, and not as a liquid phase containing the coffee oil until a few steps into the process. As such, it is unclear what the limitation “the liquid phase” in claims 11 and 13 are referring to since the liquid phase of claim 1 has already undergone a preceding processing step in claim 1 to transform (or at least alter) the liquid phase into the coffee oil. For the purposes of examination, the limitation “the liquid phase” will be interpreted as “a liquid phase,” indicating that this liquid phase is different from the one recited in claim 1.
Claim 13 recites the limitation "the obtained slurry" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the purification solvent" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 is rendered indefinite as the method steps cannot be clearly or accurately followed as a dependent claim and further limitation of claim 10. There is no basis for an obtained slurry or purification solvent in the claim or in the claims upon which claim 13 depends from and one of ordinary skill in the art would not be able to complete the claimed method steps as there seems to be missing information. The claim seems like it might’ve been intended to depend from claim 11, but if that were the case, further issues would arise as claim 13 does not offer any further limitations to claim 11 and instead seems to broaden the purification steps. It is unclear if claim 13 is intending to be a separate purification process from claim 11, or an additional purification process from claim 11 to purify the coffee oil even further. Therefore, the claim is rendered indefinite. For the purposes of examination, claim 13 will be examined as one and the same.
Claims 2, 4, 6-10, 12, 18, and 19 are rejected as being dependent on a rejected base claim.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-4 and 6-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nie et al. (CN 105925364; listed on IDS dated July 1, 2024), herein after referred to as Nie.
Examiner’s note: citations of Nie refer to the translated copy provided herewith, as the copy provided by applicant did not include translated claims.
Regarding claims 1, 3, and 6-9, Nie discloses a method of extracting coffee oil from coffee grounds (i.e., a coffee-based feedstock) (Abstract), the method comprising:
using an organic solvent to extract the coffee oil (i.e., an extraction solvent), wherein the solvent and coffee grounds (i.e., coffee-based feedstock) are mixed into a mixture and then subjected to ultrasonic wave treatment (i.e., mechanical agitation) for 30-40 minutes; and
subsequently filtering the ultrasonic treated mixture to obtain a filtrate (i.e., liquid phase) comprising the solvent and distilling the filtrate to remove the solvent from the filtrate to obtain the coffee oil,
wherein the solvent is ethyl acetate (i.e., the extraction solvent is an ester solvent represented by formula (I); and meets the limitations of claims 1 and 6-9) (Example 1 [0019]; claims 1 and 2)
Regarding claim 2, Nie discloses that the method is conducted at a temperature between 20-25°C (Example 2 [0021]).
Regarding claim 4, Nie is silent as to whether the method is or is not conducted at atmospheric pressure. However, where Nie does not specify any specific pressures, either above or below atmospheric pressure, in any of the method steps (with the exception of the filtration which is taught as “filter or vacuum filter;” the vacuum filtration being one possible option) (claim 1), it can be considered that the method is conducted at atmospheric pressure since Nie does not teach any special pressures that are required. Therefore, Nie’s method is considered to read on the claimed limitation.
Claims 1, 3, 6-9, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oliveira et al. (“Effects of Ecofriendly Bio-Based Solvents on Oil Extraction from Green Coffee Bean and Its Industrial Press Cake,” Brazilian Journal of Chemical Engineering, 2019, pp. 1739-1753, vol. 36 no. 4; listed on IDS dated July 1, 2024), herein after referred to as Oliveira.
Examiner’s note: citations of Oliveira refer to the copy provided by applicant with the submission of the IDS dated July 1, 2024.
Regarding claims 1, 3, and 6-9, Oliveira discloses a method of extracting coffee oil from green coffee beans (i.e., a coffee-based feedstock), the method comprising:
extracting the coffee oil using an extraction solvent, wherein a mixture of the green coffee beans (i.e., a coffee-based feedstock) and the extraction solvent is placed in a stirring Dubnoff Orbital water bath for four hours (i.e., kept under mechanical or magnetic agitation for at least 30 minutes); and
subsequently separating a supernatant phase, extract phase, and raffinate phase comprising the extraction solvent and removing the extraction solvent via drying to obtain the coffee oil (i.e., separating a liquid phase comprising the extraction solvent and removing the extraction solvent from the liquid phase),
wherein the extraction solvent is ethyl acetate (i.e., the extraction solvent is an ester solvent represented by formula (I); and meets the limitations of claims 1 and 6-9) (p. 1741 “Solvent extraction”; p. 1748 Table 6).
Regarding claim 16, Oliveira discloses that the method is conducted for four hours (p. 1741 “Solvent extraction”), which meets the claim limitation of at least one hour.
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.
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 2, 4, 10, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Nie et al. (CN 105925364; listed on IDS dated July 1, 2024), herein after referred to as Nie.
Examiner’s note: citations of Nie refer to the translated copy provided herewith, as the copy provided by applicant did not include translated claims.
Nie discloses the method of extracting coffee oil as set forth above with regard to claim 1.
Regarding claim 2, Nie teaches that the method is conducted at a temperature of 20-50°C (claim 1), which overlaps with the claimed range of 15-25°C. Where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05.I.
Regarding claim 4, Nie is silent as to whether the method is or is not conducted at atmospheric pressure. However, where Nie does not specify any specific pressures, either above or below atmospheric pressure, in any of the method steps (with the exception of the filtration which is taught as “filter or vacuum filter;” the vacuum filtration being one possible option) (claim 1), it would have been obvious to have conducted the method at atmospheric pressure.
Regarding claim 10, Nie teaches that the coffee-based feedstock is coffee grounds (claim 1), but does not explicitly teach that these are spent coffee grounds. However, Nie discusses spent coffee grounds that are generated during the processing of instant coffee and the various ways in which these coffee grounds are utilized in other industries and technologies. The purpose of Nie’s invention is to offer an additional method, ultrasonic waves, for extracting coffee oil from these coffee grounds [0004]. Therefore, it can be considered, and it would have been obvious to one of ordinary skill in the art, that spent coffee grounds are a suitable form of coffee grounds for use in the invention as the starting material/feedstock. Therefore, Nie is considered to read on the claimed limitation.
Regarding claims 16 and 17, Nie discloses that in the extraction method, the ultrasonic treatment (i.e., agitation) is conducted for 5-40 minutes (claim 1), which is shorter than the claimed ranges of at least one hour and at least 16 hours.
However, one of ordinary skill in the art would have recognized that the degree of extraction depends on the duration of the ultrasonic treatment. One of ordinary skill in the art, through no more than routine experimentation, would have been able to have arrived at the claimed times for treatment, depending on the extent of extraction of the coffee oil desired from the feedstock, thereby rendering the claim obvious. Moreover, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05.II.A.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Nie et al. (CN 105925364; listed on IDS dated July 1, 2024), as applied to claim 1 above, and further in view of Clinton et al. (US Patent 3,077,405), herein after referred to as Nie and Clinton.
Examiner’s note: citations of Nie refer to the translated copy provided herewith, as the copy provided by applicant did not include translated claims.
Nie discloses the method of extracting coffee oil as set forth above with regard to claim 1.
Nie is silent as to that the method is conducted in a standard oxygen rich or inert atmosphere.
Clinton, in the same field of invention, teaches a coffee oil that is prepared in an inert atmosphere and maintained and stored under mild to low temperature conditions (col. 2 lines 31-37). Clinton offers the motivation that utilizing a carbon dioxide atmosphere (i.e., inert atmosphere) aids in mitigating both the loss of desirable aromatic components and the development of aroma-staling precursors in the coffee oil (col. 5 lines 68-74). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the method of Nie by conducting the method in an inert atmosphere as taught by Clinton, thereby arriving at the claimed invention. One would have been motivated to make this modification for the benefit of maintaining the desirable aroma of the coffee oil.
Claims 11-13, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Nie et al. (CN 105925364; listed on IDS dated July 1, 2024), as applied to claim 1 above, and further in view of Bertholet et al. (US Patent 5,714,094) and De Echeverri et al. (EP 3643770), herein after referred to as Nie, Bertholet, and De Echeverri, respectively.
Examiner’s note: citations of Nie refer to the translated copy provided herewith, as the copy provided by applicant did not include translated claims.
Nie discloses the method of extracting coffee oil as set forth above with regard to claim 1.
Regarding claims 11 and 13, Nie is silent as to that the coffee oil further undergoes a purification process.
Bertholet, in the same field of invention, teaches a process of recovering an antioxidant composition from spent ground coffee oil (which is necessarily a purification process of the coffee oil since components present in the coffee oil are being removed) (Abstract), comprising:
dissolving coffee oil in heptane (i.e., a purification solvent) and then agitating the mixture for 30 minutes, thereby obtaining a slurry;
filtering the obtained slurry to obtain/separate a filtrate (i.e., liquid phase) containing the coffee oil; and
subjecting the filtrate to desolvation to remove the purification solvent from the liquid phase to isolate the purified coffee oil (Example 1 col. 5 lines 45-52).
The agitation time taught by Bertholet, 30 minutes, is shorter than the claimed time of at least three hours.
However, one of ordinary skill in the art would have recognized that the degree of extraction depends on the duration of the agitation and solvent treatment. One of ordinary skill in the art, through no more than routine experimentation, would have been able to have arrived at the claimed times for agitation and solvent treatment, depending on the extent of extraction desired, thereby rendering the claim obvious. Moreover, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05.II.A.
Bertholet offers the motivation that spent ground coffee oil is a cheap raw material to use to obtain desirable isolated antioxidant materials for incorporation into additional food products (col. 1 lines 35-57). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the method of Nie by adding the further purification step as taught by Bertolet, thereby arriving at the claimed invention. One would have been motivated to make this modification for the benefit of obtaining additional desirable materials from the obtained coffee oil in a relatively inexpensive manner.
Nie in view of Bertholet is silent as to that activated charcoal is added to the mixture of coffee oil and purification solvent.
De Echeverri, in the same field of invention, teaches a process for obtaining clarified coffee oil from spent coffee grounds (Abstract) that utilizes treatment with macromycetes instead of activated carbon (i.e., activated charcoal). De Echeverri offers the motivation that incorporating activated carbon into the process enables discoloration treatment [0037]. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the method of Nie and Bertholet by incorporating the activated carbon of De Echeverri in the purification steps, thereby arriving at the claimed invention. One would have been motivated to make this modification for the benefit of incorporating a discoloration treatment into the method for the coffee oil.
Regarding claim 12, modified Nie teaches that the purification solvent is heptane (Bertholet: Example 1 col. 5 line 45).
Regarding claim 18, modified Nie teaches that the removing of the solvent is performed under vacuum (in vacuo) (Nie: claim 6).
Regarding claim 19, modified Nie teaches that the filtering is performed at a maximum pressure of 1 bar (Bertholet: Example 1 col. 5 lines 47-48), which is a slight vacuum, which reads on the claimed limitation of the removing is performed in vacuo.
Conclusion
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/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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