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 § 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 (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 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 1-9 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kalenian (US 9,480,359 B1) in view of Katz et al. (US 4,088,794), De Aldecoa Bueno (US 10,306,904 B1), here on referred to as “Bueno”, and Kalenian (US 7,419,692 B1), hereon referred to as “Kalenian ‘692”.
It is noted that the limitation “extraction material” is interpreted to comprise at least some coffee material in order to obtain the “edible, coffee extract”.
Regarding claim 1, Kalenian teaches a method for extraction (abstract) comprising loading fresh extraction material such as coffee grounds into an extraction cell such as column 102A (column 8 lines 3-5), the cell having a bottom portion and top portion (figure 1), where the system can include a single extraction cell (column 8 lines 59-60), introducing an extraction medium through the bottom portion and removing the extract from an outlet disposed on the top portion (column 2 lines 55-62). Since the extraction material is “fresh”, it is construed to be material that has not been subjected to prior extractions. The column can be configured to have a ratio of 1 unit diameter (average width) to 2 units height (length) or more (column 5 lines 4-7), which translates to at least a 2:1 ratio of the length to the average width as claimed. The upper portion of the extraction cell comprises a valve 305 that comprises a mesh screen 308, where the screen is sized to filter liquid extract from solids in the system whilst in operation (figures 4 and 9-11; column 18 lines 50-58). The screen is construed to be a filter and is “fixed to cover the outlet of the top portion” when placed in the configuration of figure 9.
Regarding the limitation of “introducing a second aliquot of the extraction medium to push the edible, coffee extract through the top portion of the extraction cell after only a single pass through the extraction material”, Kalenian does not specifically recite this feature. However, Examiner notes that the claim as currently drafted does not indicate any particular barrier or distinguishing feature between the first and second aliquots; the second aliquot simply follows the first aliquot. Thus, the process can be interpreted to be a continuous upwardly flow of extraction medium, where the boundary between said aliquots is arbitrarily chosen.
Kalenian teaches introducing extraction medium into the extraction cell and through the extraction material, and removing extract from the top of the cell as stated above. The cell can be loaded with fresh grounds (column 8 lines 3-5), and then subjected to extraction with a fresh solvent (column 8 lines 29-37). Therefore, the extract is construed to be pushed through the top of the extraction cell after only a single pass through the material, where the material has not been subjected to prior extractions. The reference further teaches detecting parameters such as TDS and controlling the process based on the detected values (column 7 lines 35-40). A first volume of extraction medium that flows against the closed outlet valve in the top of the extraction cell, and when a desired pressure is achieved, the outlet valve is opened (column 20 lines 11-14).
The processes above can be construed to separate the first and second aliquots. For example, the extraction medium is passed through the extraction material until a TDS threshold is reached. The volume of water preceding said threshold can be assigned the “first aliquot”, and the subsequent volume can be the “second aliquot”. Alternatively, the volume of water introduced into the cell prior to opening the outlet valve can be the “first aliquot” and the subsequent volume the “second aliquot”.
Since there does not appear to be any feature that distinguishes the first aliquot from the second aliquot, and since the process of Kalenian uses detectable parameters to provide control of the extraction process, the reference is construed to teach “introducing a second aliquot…coffee extract through the top portion of the extraction cell after only a single pass through the extraction material” as claimed.
Kalenian does not teach a flow rate of the second aliquot of the extraction medium displaces about 90% of a volume of the first aliquot in less than a 5 minute period.
However, the reference recites speed of extraction i.e., the time that the grounds are exposed to the solvent, the temperature of solvent, etc., are important to optimize extraction, where the disclosed system provides “excellent control of all necessary parameters…to optimize extraction and thereby yield a very high quality coffee product” (column 20 lines 53-61). Further, the conditions are configured such that flow within the columns has “essentially uniform flow profile of the moving liquid across the entire cross-section of a column and long its entire length” for predictable increases in TDS as well as flow rates (column 7 lines 29-35; column 19 lines 65-67).
Katz et al. teaches a method for making coffee extract (abstract) comprising controlling the extraction liquid velocity past the extraction material in order to achieve plug flow, thereby more efficiently recovering soluble solids (column 4 lines 40-45 and 49-54). The velocity is maintained at a value of “at least about 0.5 ft/min (column 7 lines 12-14). The increased velocity caused “a more forward and more positive movement of coffee solids in the percolator set” and “more complete and efficient recovery of the fresh stage coffee solids at the reduced temperatures at which the fresh stage is extracted”, and minimized degradation (column 9 lines 30-41).
Bueno teaches a method for making cold brew coffee (abstract) comprising filling an extraction cell 32 with ground coffee, pumping water into the cell through inlet 34 at the bottom portion of the cell, and removing the extract from outlet 36 at the top of the cell (figure 2; column 5 lines 40-44, 53-55, and 60-66; column 6 lines 15-17). Further, the reference teaches a “finer grind helps to increase contact surface and improve extraction rates” (column 8 lines 4-5).
Kalenian ‘692 teaches a method for producing extracts from solid raw materials such as ground roasted coffee (abstract), where fineness of the grind can be subjected to routine experimentation and optimization to obtain an extract with desired characteristics (column 10 lines 37-41), the process pressure is controlled based on the fineness of the grind (column 10 lines 52-54), and the time of treatment can be as low as “several seconds” (column 10 lines 56-57).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Kalenian such that the flow rate of the second aliquot of the extraction medium displaces about 90% of a volume of the first aliquot in less than 5 minutes since the reference already contemplates controlling flow characteristics to achieve predictable increases in TDS as stated above, since it is recognized that over-extraction of coffee can yield undesirable characteristics such as bitterness and astringency, and therefore to minimize the duration that the extract is exposed to the coffee after optimal extraction is achieved, since the prior art recognizes maintaining a desired velocity of the extraction medium flow, since there is no evidence of record indicating criticality or unexpected results associated with the claimed feature, and since the claimed values would have been used during the course of routine experimentation and optimization procedures due to factors such as extraction characteristics (e.g., grind size, working pressure, solvent temperature, etc.), desired characteristics of the extract (e.g., flavor, aroma, TDS, etc.) and the dimensions of the extraction cell used.
Kalenian does not teach the extraction medium is introduced at a temperature less than about 30oC.
Bueno further teaches the water having a temperature of about 70oF/21oC (column 5 line 66), where the low temperature allows for extraction of flavor while leaving behind bitter compounds and fatty oils, thereby providing a product having less bitter and acidic flavor (column 1 lines 53-63).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Kalenian to use water at the claimed temperature in order to similarly produce a coffee having less bitter and acidic flavor, to provide consumers with a variety of options for coffees brewed by different methods, and since the claimed values would have been used during the course of normal experimentation and optimization procedures due to factors such as desired flavor and aroma.
Kalenian does not teach the extract has a TDS between about 40-140 g/L and yield between 8-16%.
Kalenian ‘692 further teaches it is known that raw material has not been subjected to prior extractions produces higher quality extract than extracts from materials that have been previously extracted (column 2 lines 14-20), and the extract can have varying concentrations and yields of dissolved coffee solids based on the desired strength, flavor and fragrance quality, as well as degree of extraction from different types of brewing processes (column 8 lines 10-26 and 43-55). For example, a concentration of 10 weight percent would comprises a TDS of approximately 100 g/L (10gcoffee / 100gwater+coffee * 1000gwater / 1Lwater).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Kalenian to extract the material such that the TDS and yield are in the claimed ranges since the reference already teaches wanting to control TDS and characteristics of the extract (column 12 lines 36-41), where the prior art acknowledges similar values for TDS, and therefore as a matter of manufacturing choice for the characteristics of the final product, since Kalenian as modified by Katz above teaches controlling flow rate to ensure complete and efficient extraction, since applicant has not shown evidence of criticality or unexpected results associated with the claimed feature, particularly it relates to the other claimed processing features, and since the claimed values would have been used during the course of normal experimentation and optimization procedures due to factors such as desired flavor, aroma, consistency, and type of beverage.
Regarding claim 2, Kalenian does not teach expelling gas from the extraction cell through the top portion.
Kalenian ‘692 teaches filling the extraction cell with the extraction medium includes venting or “burping” to displace air from the cell through valve 35 located at the top portion of the cell (figure 1; column 15 lines 4-9).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Kalenian to expel gas from the cell through the top portion since the process is recognized by the prior art to be performed during filling of extraction cells, and in order to displace any air/gas present within the cell during introduction of the extraction medium, thereby ensuring optimal brewing conditions such as pressure and ratio of extraction material to extraction medium.
Regarding claims 3-5, Kalenian teaches the first aliquot of extraction medium wets at least a portion of the extraction material, and the pressure of the solvent is applied against the closed outlet valve in the top of the extraction cell to move said solvent through the cell (column 20 lines 11-14). Kalenian further teaches the flow rate can be controlled (column 5 lines 8-11) and the extraction cell can be charged with a desired amount of extractable material to obtain a desired characteristic such as a certain Brix value (column 14 lines 5-9).
In view of the teachings stated above, it is reasonable to expect at least some of the extraction material to be urged against the top of the extraction cell. This process appears to be the same method described in Applicant’s specification for tamping (paragraph 33). Thus, the process of Kalenian is construed to also tamp the extraction material against the top portion of the cell at least once when the extraction medium is first introduced through the cell, where the tamping is performed by the upward flow of extraction medium.
Regarding claim 6, Kalenian teaches the upper portion of the extraction cell comprises a valve 305 that comprises a mesh screen 308, where the screen is sized to filter liquid extract from solids in the system whilst in operation (figures 4 and 9-11; column 18 lines 50-58). The screen size can be configured to be smaller than about 95-99% of coffee grounds particles (column 18 lines 28-31).
Kalenian does not teach the mean aperture diameter of the filter is between about 0.05 mm to about 0.35 mm.
Kalenian ‘692 teaches a similar filter comprising a porous screen having a slot size (mean aperture diameter) of 0.02 inch or about 0.5 mm to retain essentially all of the solid raw material (column 15 lines 51-57).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Kalenian to use a filter having a mean aperture diameter of the claimed range since the reference suggests the filter can be configured to remove a certain percentage of solids from the extract, where the claimed values would have been used during the course of routine experimentation and optimization procedures due to factors such as TDS, flavor, aroma, and mouthfeel/texture of the extract.
Regarding claim 7, Kalenian does not teach an outlet disposed at the top portion comprises an area that is about 10-100% of the cross-sectional area of the top portion of the cell. However, the reference teaches screen 308 located in the outlet valve 305 at the top of the cell (figures 6 and 9-10), where the screen is sized according to the valve.
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the outlet of Kalenian to be about 10-100% of the cross-sectional area of the top portion of the cell since there is no evidence of criticality or unexpected results associated with the claimed feature, and since the claimed values would have been used during the course of routine experimentation and optimization procedures due to factors such as maximum volumetric flow rate and pressure within the cell during removal of the extract.
Regarding claim 8, the combination of Kalenian with Katz as applied to claim 1 teaches plug-flow i.e., a “constant flow rate across a radial axis of the extraction cell”. The same combination is applied to claim 8 and would have been obvious for the same reason.
Regarding claim 9, Kalenian teaches ground roasted coffee (column 5 lines 25-26).
Regarding claim 11, Kalenian does not teach the extraction material is exposed to the extraction medium for a period of about 1 minute.
However, the reference teaches that the time that the grounds are exposed to solvent is important and can be optimized to obtain a desired quality of product (column 20 lines 53-61).
Kalenian ‘692 teaches the extraction time can be about 10-30 minutes (column 18 lines 26-30).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of Kalenian to expose the extraction material to the medium for 1 minute since the reference already recognizes optimizing contact time, since the prior art recognizes values within the claimed range for contact time, since there is no evidence of criticality or unexpected results associated with the duration, and since the claimed values would have been used during the course of routine experimentation and optimization procedures due to factors such as desired strength of the extract (e.g., flavor, aroma, mouthfeel/texture, TDS and yield).
Regarding claims 12-13, Kalenian teaches the extraction material in the extraction medium is maintained under a pressure within the extraction cell between 75-126 psi / 5.17-8.62 bar after the first aliquot is introduced (column 20 lines 4-10), and that the overall operating pressure can be 250 PSI or more (column 5 lines 15-18).
Regarding claim 14, the combination of Kalenian and Kalenian ‘692 applied to claim 2 teaches expelling gas such as air from the extraction cell through the top portion, where the air is expelled through valve 35.
The same combination is applied to claim 14 and would have been obvious for the same reasons.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9 and 11-20 (particularly claim 1) are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 (particularly claims 1, 4-6 and 11-13) of U.S. Patent No. 11,154,157 in view of De Aldecoa Bueno.
The ‘157 patent teaches the features of instant claims 1 and 15 except a filter fixed to cover the outlet of the top portion as stated by claim 1.
De Aldecoa Bueno teaches a method for making cold brew coffee (abstract) comprising filling an extraction cell 32 with ground coffee, pumping water into the cell through inlet 34 at the bottom portion of the cell, and removing the extract from outlet 36 at the top of the cell, the outlet covered by filter 44 (figure 2; column 5 lines 40-55, and 60-66; column 6 lines 15-17).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of the ‘157 patent to include a filter as claimed since the prior art recognizes the structure for an upwardly flowing extraction method, and to facilitate separation of the extract from the coffee grounds as is known in the art.
Claims 1-9 and 11-20 (particularly claim 1) are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 (particularly claims 1, 4, 6 and 8) of U.S. Patent No. 12,035,728 in view of De Aldecoa Bueno.
The ‘728 patent teaches the features of instant claims 1 and 15, except a filter fixed to cover the outlet of the top portion as stated by claim 1.
De Aldecoa Bueno teaches the feature as stated above. It would have been obvious to modify the ‘728 patent for the same reasons stated for the ‘157 patent above.
Claims 1-9 and 11-20 (particularly claim 1) are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 (particularly claims 1, 4, 6, 9 and 13) of U.S. Patent No. 12,048,310, in view of Katz and De Aldecoa Bueno.
The ‘310 patent teaches the features of instant claims 1 and 15, except the second aliquot displaces about 90% of a volume of the first aliquot in less than 5 minutes, and a filter fixed to cover the outlet of the top portion as stated by claim 1.
Katz teaches controlling flow rate and velocity across ground coffee in order to provide complete and efficient extraction.
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of the ‘310 patent such that the second aliquot displaces the claimed amount of the first aliquot in the claimed time period for the same reasons taught by Katz, and since the claimed values would have been used during the course of routine experimentation and optimization procedures due to factors such as extraction characteristics and the dimensions of the extraction cell used.
De Aldecoa Bueno teaches the feature as stated above. It would have been obvious to modify the ‘310 patent for the same reasons stated for the ‘157 patent above.
Response to Arguments
The prior art rejection of claims 15-20 under 35 USC 103 is withdrawn in view of the amendment to claim 15. However, the claims are still rejected on the ground of nonstatutory double patenting as stated above.
Applicant's arguments filed 12/22/2025 with respect to the rejection of claims 1-9 and 10-14 have been fully considered but they are not persuasive.
Applicant argues Kalenian does not teach a filter fixed to cover the outlet of the top portion since the filter is attached to a rotatable valve which rotates into an open position to discharge or reload solids.
This is not persuasive since the filter is “fixed” to the outlet by the points attached to the valve (figure 10). While the valve is disclosed to rotate open to allow for removal and reloading or solids, the filter is still configured to cover the outlet during extraction for separation of the extract from the solids (figure 9; column 18 lines 55-58).
Applicant’s argument against the dependent claims is not persuasive for the same reasons stated above.
Conclusion
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.
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/BRYAN KIM/Examiner, Art Unit 1792