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 .
Response to Amendment
The amendment filed 9/29/25 has been entered. Applicant’s amendments to the claims overcomes the claim 55 objection identified in the last Office action, and Applicant’s arguments regarding the compound vanillin classification as volatile organic compound and non-volatile compound are persuasive, and overcome the 35 U.S.C. 112(b) rejection of record in the last Office action.
Moreover, Applicant arguments in regards to the prior art of record of Kawasaki and Grzeschik being silent regarding a method comprising forming an aqueous solution comprising water, one or more volatile organic compound (VOCs) that are water soluble and one or more non-volatile compound that are water soluble are persuasive, and overcome the prior art rejection of record in the last Office action, therefore, the finality of that action is withdrawn.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/9/25 was filed after the mailing date of the last Office Action on 6/27/25. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Status of Claims
Claims 36-65 are pending with claims 55-65 being examined on their merits. Claim 55 has been amended, and claims 36-54 are withdrawn as being directed to a non-elected invention.
Claim Objections
Claim 55 is objected to because of the following informalities:
Claim 55, lines 12-13, after “wherein the flavor mixture comprises at least 5 VOCs” reads "selected from the group consisting of selected", however, it seems that it should read “selected from the group consisting of”.
Appropriate correction is required.
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) 55, 61, 64 and 65 is/are rejected under 35 U.S.C. 103 as being unpatentable over George et al. [US 20110318459 A1], hereinafter George, evidenced by NIH [Ferulic Acid, 2004].
Regarding claim 55, George teach methods of making flavoring compositions [0002], comprising one or more volatile organic compounds (VOC) [0020-0063], and one or more non-volatile compounds [0011, 0017, 0090-0136, 0187], forming an aqueous solution comprising: water, one or more VOCs that are water-soluble, and one or more non-volatile compounds that are water-soluble [0017, 0067], forming an emulsion comprising: an oil, one or more VOCs that are fat-soluble, and one or more non-volatile compounds that are fat-soluble; and mixing the aqueous solution and the emulsion to form a flavor mixture [0144, 0184-0187], wherein the flavor mixture comprises at least 5 VOCs selected from the group consisting of 2,3-butanedione [0058], 2,3-diethyl-5-methylpyrazine [0075], dimethyl trisulfide [0081], furfural [0049], gamma decalactone [0075], beta-damascenone [George, 0059], and wherein the flavor mixture comprises at least 3 non-volatile compounds selected from the group consisting of citric acid [0106], lactic acid [0109], and succinic acid [0111]. The flavor compositions of the invention may be modified to provide for any improved flavor profiles that closely replicates the food products [0012], and one of ordinary skill in the art, armed with George’s disclosure can produce any number of suitable formulations with flavor and aromatic profiles similar to a formulation that is traditionally produced (equivalent to replicas) [0063].
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to use the claimed at least 5 VOCs selected from the group consisting of 2,3-butanedione, 2,3-diethyl-5-methylpyrazine, dimethyl trisulfide, furfural, beta-damascenone, and gamma decalactone from George’s list of VOCs, and at least 3 non-volatile compounds selected from the group consisting of citric acid, lactic acid, and succinic acid from George’s list of non-volatile compounds, as George teaches these compounds are known and useful VOCs and non-volatile compounds for use in flavoring compositions, since the claimed combination of VOCs and non-volatiles would have been used during the course of normal experimentation and optimization procedures due to factors such as the desired final taste characteristics in the method of George, and/or the particular application in which the flavoring composition is used (savory or sweet aromatic foods/beverages) or the desired flavor that a skilled artisan is trying to replicate [George, 0012, 0063].
Regarding the recitation of coffee replica in the preamble:
When reading the preamble in the context of the entire claim, the recitation “A method of preparing a coffee replica” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02. Furthermore, since the prior art raw materials are substantially the same in structure or are made by substantially the same method to that in the instant claim, it is the examiner’s position that the composition of George would inherently also be able to act as a coffee replica.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 61, George teach wherein the VOCs do not comprise at least one compound selected from the group consisting of 1-heptanol.
Regarding claim 64, George teach wherein the non-volatile compounds do not comprise at least one compound selected from the group consisting of galactose.
Regarding claim 65, George teach wherein the one or more non- volatile compounds comprise at least 5 compounds selected from the group consisting of 2,3,5-trimethylpyrazine [George, 0081], aspartic acid [George, 0197], citric acid [George, 0106], lactic acid [George, 0109], succinic acid [George, 0111], trans-ferulic acid (ferulic acid, see NIH, p.13, Tables 2.4.1, and 2.4.2 Synonyms) [George, 0131], vanillic acid [George, 0128], and vanillin [George, 0133].
Claim(s) 56-58, and 62-63, is/are rejected under 35 U.S.C. 103 as being unpatentable over George as applied to claim 55 above, and further in view of Kawasaki [JP 2006020526 A], evidenced by Shanmugam [Granulation techniques and technologies: recent progresses, 2015], NIH, PubChem and Human Metabolome Database (provided for compound nomenclature and synonyms on claim 63, see Office Action mailed on 10/30/24 for attached copies of reference).
Regarding claim 56, George teach the flavor mixture discussed above in claim 55 rejection, but is silent regarding the method further comprising processing the flavor mixture to commercial sterility.
Kawasaki teach a coffee flavor composition comprising individual components as active ingredients selected from a group that includes one or more volatile organic compounds (VOCs) and non-volatile compounds [claim 1 and 0001]. Kawasaki teach examples of methods for sterilizing coffee flavor compositions of the invention in which the coffee flavor is mixed with additional ingredients, heat-sterilized the resulting mix and bottled, (as disclosed by applicant on page 102, lines 28-30, and page 103, lines 1-5, and 9 “element (d) hot fill packaging”), and another method in which the coffee beverage is heat sterilized at pH of 3 to 5.5, [0080], (as disclosed by applicant on page 222, lines 11 and 16, “element (d) hot fill at pH of <4.6”). Examples 101-102 of Kawasaki teach the preparation of a straight coffee beverage and a milk-containing coffee beverage where both products are sterilized by fill and retort processing, [0128 and 0130], (as disclosed by applicant on page 103, lines 11-12, and 15 “element (c) fill and retort processing”).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the claimed processing the flavor mixture to commercial sterility into the invention of George in view of Kawasaki since both are directed to methods of making flavor mixtures from aromatic compositions comprising VOCs and non-volatile both as individual components. Doing so would provide a coffee flavored product having an excellent aroma, flavor, and fragrant coffee feel, as well as a coffee flavored product where deterioration of aroma components is reduced or suppressed during sterilization [Kawasaki, 0080, 0129, and 0131].
Regarding claims 57-58, George teach the flavoring replica composition of instant claim 55, but does not explicitly teach a coffee replica that is a coffee granule replica (claim 57), wherein the method further comprises agglomerating the flavor mixture (claim 58).
Kawasaki teach the flavor composition discussed above in claim 56, and further teach that the synthetic flavors mixture, or flavor compositions containing these can be further processed into powder (powdering), granules (granulation), and other known methods [0074]. The liquid coffee flavor composition can be dried by spray drying and other methods, [0103].
Regarding agglomerating the flavor mixture, the evidentiary reference of Shanmugam is relied upon to show that the spray-drying of Kawasaki would result in agglomeration (see Shanmugam, page 1, Abstract and Introduction, “granulation is a technique or process of particle enlargement by agglomeration, where currently available technologies for the process include spray drying”, and as disclosed on page 103, lines 18-22 of the instant Specification, “the coffee granule replica embodiment may further comprise agglomeration of particles, achieved through any suitable method such as spray drying”). As such the agglomeration of claim 58 is achieved by the spray drying of Kawasaki.
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the claimed coffee granule replica, agglomerating the flavor mixture and the agglomeration comprising spray drying into the invention of George in view of Kawasaki in order to provide compositions in various forms (i.e., liquids, powders, granules). Doing so would provide a coffee flavored product that can be used in powdered or granule form [Kawasaki, 0074, and 0103].
Regarding claims 62-63, George teach the flavoring replica composition of instant claim 55 may comprise about 9 of the at least 30 VOCs required by instant claim 63 such as:
furfural [George, 0049],
gamma-nonalactone [George, 0053],
delta-decalactone [George, 0054],
2,3-butanedione [George, 0058],
beta-damascenone [George, 0059],
2-isopropyl-3-methoxypyrazine [George, 0075],
2,3-diethyl-5-methylpyrazine [George, 0075],
2-isobutyl-3-methoxypyrazine (IBMP) [George, 0075],
gamma-decalactone [George, 0075],
George does not explicitly teach wherein the one or more VOCs comprise at least one compound selected from the group consisting of 2-pentanol, beta-ionone, ethyl benzoate, geranyl acetate, isoamyl alcohol, maltol, massoia lactone, and methyl anthranilate required by instant claim 62, or wherein the VOCs comprise at least 30 compounds selected from the group consisting of the compounds recited in claim 63.
Kawasaki teach the coffee flavor composition may include (β-ionone) beta-ionone [Kawasaki, 0061, line 652], may further include at least 30 VOCs such as:
2,3-butanedione [Kawasaki, 0020], (also taught by George, 0058)
2,3-diethyl-5-methylpyrazine [Kawasaki, 0027], (also taught by George, 0075)
2,3-hexanedione [Kawasaki, 0020],
2,3-pentadione [Kawasaki, 0020, lines 202-203],
2,5-dimethylphenol (2,5-xylenol see evidentiary reference of PubChem 2,5-dimethylphenol, synonyms, page 1) [Kawasaki, 0063],
2,6-dimethylpyrazine [Kawasaki, 0027],
2-acetyl-5-methylfuran [Kawasaki, 0062],
2-ethoxy-3-methylpyrazine [Kawasaki, 0067, p.27, line 1082],
2-ethyl-4-hydroxy-5 -methyl-3 (2H)-furanone [Kawasaki, 0021],
2-ethylpyrazine (ethylpyrazine, see evidentiary reference of PubChem 2-Ethylpyrazine, synonyms, page 1) [Kawasaki, 0027],
2-isobutyl-3-methoxypyrazine [Kawasaki, 0067, p.28], (also taught by George, 0182)
2-isopropyl-3-methoxypyrazine [Kawasaki, 0027], (also taught by George, 0182)
2-methoxy-4-methylphenol (Creosol, see evidentiary reference of PubChem 2-methoxy-4- methylphenol, synonyms, page 1) [Kawasaki, 0063, line 715],
2-methoxy-4-vinylphenol (4-vinylguaiacol, see evidentiary reference of PubChem 2-methoxy-4-vinylphenol, synonyms, page 1) [Kawasaki, 0022, line 223],
2-methylpyrazine (methylpyrazine, see evidentiary reference of PubChem 2-methylpyrazine, synonyms, page 1) [Kawasaki, 0027, line 256],
3-methylbutyric acid (3-methylbutanoic acid, see evidentiary reference of PubChem 3-methylbutyric acid, synonyms, page 1) [Kawasaki, 0023, line 230],
4-ethylguaiacol [Kawasaki, 0022, line 223],
5-methylfurfural [Kawasaki, 0021, line 210],
acetoin acetate [Kawasaki, 0065, line 760],
β-damascenone [Kawasaki, 0061, line 638], (also taught by George, 0059)
β-ionone [Kawasaki, 0061, line 652],
butyric acid [Kawasaki, 0064, line 729], (also taught by George, 0222)
coffee furanone (2-methyltetrahydrofuran-3-one, see evidentiary reference of PubChem 2-methyltetrahydrofuran-3-one, synonyms, page 1, 8) [Kawasaki, 0069, line 1224],
delta-decalactone [Kawasaki, 0066, line 922], (also taught by George, 0054)
(δ)delta-octalactone [Kawasaki, 0066, line 930],
diethyl succinate [Kawasaki, 0065, p.20],
difurfuryl ether [Kawasaki, 0067, p.27],
dimethyl trisulfide [Kawasaki, 0069, line 1248], (also taught by George, 0081)
ethyl 2-methylbutyrate [Kawasaki, 0065, p.20, line 6 from bottom up], and
ethyl benzoate [Kawasaki, 0065, p.21, line 7 from top to bottom].
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the claimed VOCs into the invention of George in view of Kawasaki, particularly since both George teach using some of the same VOCs out of the at least 30 VOCs also used by Kawasaki and required by instant claim 63. Doing so would provide a coffee replica product comprising aromatic VOCs that can be used as fragrance and flavor improver of the composition as desired [Kawasaki, 0061, line 688-689], as well as non-volatile compounds which would impart umami flavors [Kawasaki, 0084, line 1498] and/or bitterants [Kawasaki, 0087, line 1508].
Regarding the combination of equivalents known for the same purpose MPEP 2144.06 I states:
"It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious).
Claim(s) 59-60 is/are rejected under 35 U.S.C. 103 as being unpatentable over George as applied to claim 55 above, and further in view of Franklin et al. [US 6090431 A1], hereinafter Franklin.
Regarding claims 59-60, George teach the flavoring replica composition of instant claim 55, but does not explicitly teach a coffee replica that is a coffee bean replica or a coffee grounds replica comprising a solid substrate (claim 59), or applying the flavor mixture to a solid substrate to form a coated solid substrate (claim 60).
Franklin teach a pelletized food product in the form of coffee beans or having a bean-like shape [col.2, l.15-16], made from plant materials that are not coffee (equivalent to coffee replica) [col.2, l.9-11], and said coffee bean-like pelletized body (equivalent to coffee bean replica) may be subjected to a grinding process and ground into granules (equivalent to coffee ground replica) [col.2, l.38-40, and col.3, l.3-15]. The coffee bean replica and/or coffee ground replica comprises a solid substrate comprising individual pieces of edible plant materials [Abstract], and may further comprise a coating surrounding the solid substrate, and wherein the coating comprises applying the flavor mixture (scents or aromas), wherein the flavor mixture comprises a liquid additive spray-applied to the solid substrate to form a coated solid substrate [col.6, l.17-20].
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the claimed coffee replica that is a coffee bean replica or a coffee grounds replica comprising a solid substrate, and applying the flavor mixture to the solid substrate to form a coated solid substrate, into the invention of George in view of Franklin in order to provide a pelletized product with coffee bean shape. Doing so would provide a pelletized coffee replica product characterized by having a coffee bean shape or a coffee ground shape that may be marketed in a manner similar to coffee beans, thereby allowing consumers to use the same rituals with other food products as is now currently employed when making coffee directly from coffee beans, and where in some cases, the pellets may be marketed in pre-ground form [Franklin, col.3, l.10-15], and allow the consumers to enjoy the ritual of grinding “beans” for hot or cold brewing of beverages sourced from raw materials other than coffee [Franklin, col.1, l. 1-10 and 36-42].
Response to Arguments
Applicant’s arguments with respect to claim(s) 55-65 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Mayer et al. [Sensory study of the character impact aroma compounds of a coffee beverage, Eur. Food Res Technol. 2000, 211, 272-276], hereinafter Mayer.
Mayer disclose that by mixing at least 24 individual compounds that have been identified within the typical aroma of coffee, it is possible to produce compositions that can simulate coffee aroma (coffee replica), using these odorant compounds as pure samples available commercially or synthetized according to available literature [Kindel, 0008], and [Mayer, p.273, Chemicals, Table 1].
Patron et al. [US 20160376263 A1], hereinafter Patron.
Patron teach compounds and compositions for flavor modification, and combinations of said compositions with additional compositions, compounds and products such as foods, beverages, aromas/scents/odorants, and emulsions [Abstract], comprising one or more aromatic compounds (VOCs, i.e., 1-(2-furyl)-1,3-butanedione and diacetyl [0147]), and one or more non-volatile compounds (i.e., adipic acid and alginic acid [0147]), wherein said compositions may be provided in various forms to deliver the desired amount or functionality according to the particular application and/or embodiment in which said composition is used, and said forms include solid compositions, powder compositions, and also where the composition is attached to a solid substrate [0284].
Kindel et al. [US 20040202767 A1], hereinafter Kindel.
Kindel teach methods of making coffee aroma compositions comprising aroma compounds (VOCs, [0011-0036]) and non-volatile compounds [0084-0107] as individual components in separate formulations for imparting the aroma impression of coffee (coffee replica) [Abstract, and 0007]. The combination of VOC individual components is useful for imparting coffee flavor/aroma to foods and beverages [0070], and said VOCs or aroma substances may be combined as separate ingredients to prepare coffee flavored formulations in various forms [0072-0083].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUIS EUGENIO DIOU BERDECIA whose telephone number is (571)270-0963. The examiner can normally be reached Monday-Friday 7:30-4:30.
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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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/LUIS EUGENIO DIOU BERDECIA/Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792