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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4, 6-15 and 17, based on dependency from rejected Independent claims 1 and 12, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. With respect to Independent claims 1 and 12, the phrase “to provide a field strength of at least 0.2 KV/cm” is rejected due to the range being unbounded.
The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims. Although the specification and claims 5 and 16 teach an enabling upper limit of 5KV/cm, Independent claims 1 and 12 encompass a range with an unbounded upper limit, “at least” and therefore the specification does not reasonable provide enablement for the encompassed field strength being applied to the mixture so inconceivably high that it cannot reasonably be possible in the present invention. For example, through hyperbole, the present application does not provide full enablement for field strength of 10000KV/cm, 1,000,000KV/com or larger, even though these amounts are encompassed in the claimed range and thus “of at least 0.2 KV/cm” is not disclosed in the specification and thus the phrases of claims 1 and 12 lacks enablement.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all field strengths encompassed by the phrase of “at least .2KV/cm” within the scope of Independent claims 1 and 12 can be used as claimed and whether claims 1 and 12 meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims 1 and 12 it is believed that undue experimentation would be required because:
The breadth of the claims under the broadest reasonable interpretation encompasses field strength of 10000KV/cm, 1,000,000KV/com or larger, which are encompassed in the claimed range and thus “of at least 0.2 KV/cm”.
The nature of the invention as disclosed by the specification does not provide enough information for one of ordinary skill in the art to use a pulse source to apply a field strength of 10000KV/cm, 1,000,000KV/com or larger, even though these amounts are encompassed in the claimed range and thus “of at least 0.2 KV/cm”.
The state of the prior art, at the time of filing does not encompasses a pulse source to apply a field strength of which is infinite, even though this amount is encompassed in the claimed range and thus “of at least 0.2 KV/cm”.
The level of one of ordinary skill in the art would not recognize a pulse source to apply a field strength of 10000KV/cm, 1,000,000KV/com or larger, even though these amounts are encompassed in the claimed range and thus “of at least 0.2 KV/cm”.
The predictability in the art is lacking since the specification is silent to a disclosure of a pulse source to apply a field strength of 10000KV/cm, 1,000,000KV/com or larger, even though these amounts are encompassed in the claimed range and thus “of at least 0.2 KV/cm”.
The quantity of experimentation necessary is great since the claims read on an unbounded range “of at least .2KV/cm”, encompassing a pulse source to apply a field strength of 10000KV/cm, 1,000,000KV/com or larger.
There is no direction or guidance presented for a pulse source to apply a field strength of 10000KV/cm, 1,000,000KV/com or larger, even though these amounts are encompassed in the claimed range and thus “of at least 0.2 KV/cm”.
There is an absence of working examples concerning “a pulse source to apply a field strength of 10000KV/cm, 1,000,000KV/com or larger, even though these amounts are encompassed in the claimed range and thus “of at least 0.2 KV/cm”.
In light of the above factors, it is seen that undue experimentation would be required by one of ordinary skill in the art to practice the full scope of claims 1 and 12. Thus, claims 1 and 12 are not enabled by the disclosure.
Claims 6 and 17 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention due to the phrase “of at least” which is rejected due to the range being unbounded.
The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims. Although the specification teaches an enabling upper limit with respect to claims 6 and 17, claims 6 and 17 encompass a range with an unbounded upper limit, “at least” and therefore the specification does not reasonable provide enablement for the encompassed “at least” which is so inconceivably high that it cannot reasonably be possible in the present invention. For example, through hyperbole, the present application does not provide full enablement for 10000, 1,000,000 or larger, even though these amounts are encompassed in the claimed range and thus “of at least” is not disclosed in the specification and thus the phrase of claims 6 and 17 lacks enablement.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all embodiments are encompassed by the phrase “of at least” within the scope of claims 6 and 17 can be used as claimed and whether claims 6 and 17 meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims 6 and 17 it is believed that undue experimentation would be required because:
The breadth of the claims under the broadest reasonable interpretation encompasses 10000, 1,000,000 or larger, which are encompassed in the claimed range and thus “of at least”.
The nature of the invention as disclosed by the specification does not provide enough information for one of ordinary skill in the art to including 10000, 1,000,000 or larger, which are encompassed in the claimed range and thus “of at least”
The state of the prior art, at the time of filing does not encompass 10000, 1,000,000 or larger, which are encompassed in the claimed range and thus “of at least”.
The level of one of ordinary skill in the art would not recognize 10000, 1,000,000 or larger, which are encompassed in the claimed range and thus “of at least”.
The predictability in the art is lacking since the specification is silent to a disclosure of encompasses 10000, 1,000,000 or larger, which are encompassed in the claimed range and thus “of at least”.
The quantity of experimentation necessary is great since the claims read on an unbounded range “of at least”, encompassing 10000, 1,000,000 or larger, which are encompassed in the claimed range and thus “of at least”
There is no direction or guidance presented for 10000, 1,000,000 or larger, which are encompassed in the claimed range and thus “of at least”.
There is an absence of working examples concerning 10000, 1,000,000 or larger, which are encompassed in the claimed range and thus “of at least”.
In light of the above factors, it is seen that undue experimentation would be required by one of ordinary skill in the art to practice the full scope of claims 6 and 17. Thus, claims 6 and 17 are not enabled by the disclosure.
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 1-4, 6-15 and 17, based on dependency from rejected Independent claims 1 and 12, 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.
Independent claims 1 and 12 are rejected due to the phrase “provide a field strength of at least .2KV/cm” since the phrase encompasses an unbounded range with an unbounded upper limit, for example a field strength of 10000KV/cm, 1,000,000KV/com or larger. As such the phrase is 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 due to the unbounded upper limit of the phrase “at least .2KV/cm”.
Claims 6 and 17 are rejected due to the phrase “of at least” since the phrase encompasses an unbounded range with an unbounded upper limit, for example 10000, 1,000,000 or larger. As such the phrase is 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 due to the unbounded upper limit of the phrase “of at least”.
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 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 1-5, 7-8 and 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wen et al. (20130287908; ids 10/28/24).
Wen teaches with respect to Independent claim 1, a PEF brewing system comprising:
a chamber (par. 0034 ref. 7) for receiving a mixture of a liquid and a substance for extraction of flavor therefrom (par. 0050)
a liquid source (par. 0031 ref. 4; par. 0039 ref. 5) fluidly connected to the chamber to provide the liquid to the chamber (par. 0039);
a pulse source (par. 0050 ref. 8) comprising at least two electrodes (par. 0054 ref. 10), the pulse source in fluid and electrical contact with the mixture in the chamber (par. 0054 last 3 lines) to provide a field strength of at least 0.2 KV/cm to the mixture (par. 0054 1-10kv/cm)
a liquid pump fluidly connected to the chamber (par. 0040 ref. 6) and
a container (par. 0041 first container; alternatively par. 0058 glass) fluidly connected to the pulse source to receive the liquid from the pulse source (par. 0041; par. 0058).
With respect to Independent claim 12, a method of cold brewing a beverage, the method comprising:
providing a chamber retaining a substance for extraction of flavor therefrom (par. 0034 ref. 7)
adding a liquid to the substance in the chamber to form a mixture (par. 0039)
exposing the mixture in the chamber to a pulsed electric field at a field strength of at least 0.2 KV/cm (par. 0054 1-10kv/cm)
filtering the exposed mixture to extract brewed liquid (par. 0057) and collecting the brewed liquid in a container (par. 0041 first container; alternatively par. 0058 glass).
Claim 2, wherein the liquid source is a liquid reservoir (par. 0039 ref. 5).
Claim 3, wherein the liquid source is a piped (par. 0039), on-demand liquid source (par. 0051 given time).
Claim 4, the pulse source is within the chamber (par. 0054 last 3 lines).
Claim 5, wherein the pulse source is configured to provide a field strength of 0.2 KV/cm to 5 KV/cm to the mixture (par. 0054 1-10).
Claim 7, further comprising a filter fluidly connected to the chamber to receive and filter the liquid from the pulse source (par. 0057).
Claim 8, wherein the chamber, the liquid source, the pulse source, the liquid pump and the container are a single unit (par. 0049 closed circulation; fig. 1 container with respect to ref. 4).
Claim 13, wherein adding a liquid to the substance in the chamber comprises providing the liquid from a reservoir (par. 0039).
Claim 14, wherein the beverage is one of coffee, tea, espresso, and infused water (par. 0036).
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 6, 9-11, 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Wen et al. (20130287908; ids 10/28/24).
With respect to claim 6, though silent to the pulse source relative energy applied. Since Wen teaches a same pulse source, since Wen teaches a range of applications to achieve the purpose of extracting compounds from the substance (par. 0054). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a pulse source is configured to provide an energy of at least 5 J/ml to the mixture since the energy is dependent on a substance being treated as taught (par. 0051) and achieving an applied energy which achieves the art defined and applicants intended purpose of extraction of flavor by a same application of pulsed electric fields (par. 0054).
With respect to claim 9, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a base having the liquid source therein thus providing a support structure for the device of Wen and achieving a same chamber and the pulse source as a single unit as further taught by Wen (par. 0048).
With respect to claim 10, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a base having the liquid source, the chamber and the pulse source therein thus providing a support structure for the device of Wen and providing a housing for the combination of elements.
With respect to claim 11, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to teach the pulse source comprises a third electrode relative an undefined treatment chamber shape, size and volume with respect to the teaching of electrodes as taught (par. 0054) and the second electrode and a third electrode have a second polarity opposite the polarity of the first electrode thus providing application of the electric fields in different directions toward the ingredients so as to maximize the creation of pores in the membrane of the ingredients, and/or opening/enlarging the membrane pores of the ingredients (par. 0055) for a same purpose of extraction of compounds from ingredients (par. 0058).
With respect to claim 15, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute one substance type such as coffee grounds with respect to the coffee as taught by Wen (par. 0036) thus achieving a same extraction for producing a same coffee drink and/or since the coffee grounds would increase the surface area exposed thus further enhancing and reducing the time required for the desired extraction level (par. 0050).
With respect to claims 16 and 17, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to teach an exposure time of at least 30 seconds relative a same taught field strength (par. 0054) thus providing a given time duration until it is decided that most compounds have been extracted from the ingredients. It is noted that this time duration may be different depending on which ingredients are used, but it is not an object of the invention to elaborate further on said aspect as taught by Wen (par. 0051).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. 20210274967, 20210267410 and 20190274470 directed to cold brewed coffee apparatus and methods.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven Leff whose telephone number is (571) 272-6527. The examiner can normally be reached on Mon-Fri 8:30 - 5:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached at (571) 270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN N LEFF/Primary Examiner, Art Unit 1792
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