Ex Parte Fountain et alDownload PDFPatent Trial and Appeal BoardMay 25, 201814288102 (P.T.A.B. May. 25, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/288,102 05/27/2014 109813 7590 05/29/2018 Fitch, Even, Tabin & Flannery, LLP 120 South LaSalle Street Suite 2100 Chicago, IL 60603-3406 FIRST NAMED INVENTOR Gerald Olean Fountain UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 9610-132994-US 8587 EXAMINER SMITH, PRESTON ART UNIT PAPER NUMBER 1792 MAIL DATE DELIVERY MODE 05/29/2018 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GERALD OLEAN FOUNTAIN, 1 Alan Gundle, and Won Cheal Kang Appeal2017-008982 Application 14/288, 102 Technology Center 1700 Before BEYERL YA. FRANKLIN, MARK NAGUMO, and AVEL YN M. ROSS, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Kraft ("Fountain") timely appeals under 35 U.S.C. § 134(a) from the Final Rejection2 of all pending claims 18-31, 54, and 55. We have jurisdiction. 35 U.S.C. § 6. We reverse for reasons well-stated by Fountain. 1 The applicant under 3 7 C.F .R. § 1.46, and hence the appellant under 35 U.S.C. § 134, is the real party in interest, identified as Kraft Foods R&D, Inc. ("Kraft"), a subsidiary of Mondelez International, Inc. (Appeal Brief, filed 13 December 2016 ("Br."), 3.) 2 Office Action mailed 30 June 2016 ("Final Rejection"; cited as "FR"). Appeal2017-008982 Application 14/288, 102 A. Introduction 3 OPINION The subject matter on appeal relates to soluble coffee products (i.e., instant coffee) incorporating roasted ground coffee and processes of making the instant coffee. (Spec. 1, 11. 1-5.) According to the '102 Specification, instant coffee products are desired that are "more reminiscent of roasted ground coffee products both in the appearance of the product prior to reconstitution and when consumed." (Id. at 11. 28-30.) The Specification reveals that "it is difficult to ... disperse the roasted ground coffee particles within the liquid coffee concentrate intermediate." (Id. at 2, 11. 6-8.) Clumping of the grounds is said to lead to non-hydrated regimes that never fully wet. (Id. at 11. 10-12.) It is further desired to make the instant coffee look more like ground coffee, especially to darken the instant soluble product. (Id. at 3, 11. 26-31.) These goals are said to be achieved, in one embodiment, by incorporating a milled and blended coffee intermediate comprising roasted ground coffee and soluble coffee into a concentrated coffee extract prior to foaming and pre-freezing the concentrated coffee extract, or prior to freezing that coffee intermediate. (Id. at 9, 11. 1-17.) In the words of the Specification, "[ w ]ithout wishing to be bound by theory, it is understood that 3 Application 14/288, 102, Coffee products and related processes, filed 27 May 2014 as a division of Application 13/810,612 (issued as U.S. Patent No. 9,357,791 B2 on June 7, 2016, which entered the national stage under 35 U.S.C. § 371 on 22 April 2013, of PCT/US2011/044127, filed 15 July 2011, claiming the benefit of an application filed in the U.K on 16 July 2010. We refer to the "'102 Specification," which we cite as "Spec." 2 Appeal2017-008982 Application 14/288, 102 the incorporation of the particles of soluble coffee into the milling chamber results in the soluble coffee absorbing some, and preferably most or all of the coffee oil released during comminution." (Id. at 12, 11. 24--28.) As a result, prior art problems such as difficulty in dispersing the grounds in the liquid coffee concentrate (id. at 2, 11. 4--8), and difficulties associated with coffee oil released upon grinding roasted ground coffee to colloidal particle sizes of less than about 30 to 40 microns (id. at 11. 13-28), are said to be avoided. Claim 18 is representative and reads: A process of forming a freeze-dried soluble coffee product, comprising the steps of: (i) forming a concentrated coffee extract; (ii) foaming and pre-freezing the concentrated coffee extract to form a foamed and pre-frozen coffee intermediate; (iii) freezing the foamed and pre-frozen coffee intermediate to form a frozen coffee intermediate; (iv) grinding and sieving the frozen coffee intermediate to form a ground coffee intermediate; and (v) drying the ground coffee intermediate to form the freeze-dried soluble coffee product; wherein prior to step (ii) and/or step (iii) a milled and blended coffee intermediate is incorporated; and wherein the milled and blended coffee intermediate comprises 10 to 80% by dry weight roasted ground coffee and 20 to 90% by dry weight soluble coffee. (Claims App., Br. 21; some indentation, paragraphing, and emphasis added.) Remaining independent claim 19 is drawn to a similar process that involves spray drying the foamed coffee intermediate to yield a spray-dried soluble coffee product. (Id. at 21-22.) 3 Appeal2017-008982 Application 14/288, 102 The Examiner maintains the following ground of rejection 4, 5: Claims 18-31, 54, and 55 stand rejected under 35 U.S.C. § 103(a) in view of the teachings of Bach. 6 B. Discussion The Board's findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Fountain urges the Examiner erred in finding that Bach discloses or suggests "the incorporation of an intermediate that includes both roasted ground coffee and soluble coffee as claimed." (App. Br. 15, 11. 25-26.) The Examiner responds that: Bach appears to teach adding soluble and roasted products back in and grinding the products together ( column 7, lines 6-75, also see columns 8-9, particularly column 9, lines 1-2, combining insoluble roast with soluble). Also in column 5, lines 45-60, Bach discusses grinding and extracting in multiple stages to obtain the ground product. A portion is recombined containing the processed coffee which is considered to be the intermediate (soluble and roast). (Ans. para. bridging 3--4.) The weight of the evidence supports Fountain. 4 Examiner's Answer mailed 5 April 2017 ("Ans."). 5 Because this application claims the benefit of an application filed before the 16 March 2013, effective date of the America Invents Act, we refer to the pre-AIA version of the statute. 6 Heinz Bach et al., Instant coffee product and a process for its manufacture, U.S. Patent No. 3,652,292 (1972). 4 Appeal2017-008982 Application 14/288, 102 As Fountain points out (Reply7 4), Bach teaches a process in which: [ s ]oluble coffee solids prepared by extraction are mixed in an aqueous medium with wet ground colloidal particles of roast or extracted roast coffee ... The colloidal particles are stabilized against flocculation ... and said particles are encased in the dried soluble coffee solids to form an instant coffee product having a fresh-brewed coffee aroma flavor and turbidity. The resultant coffee product may be admixed with additional soluble coffee powder. Drying is performed by conventional methods. (Bach, Abstract.) Bach also describes the process in the following words: The invention ... provides a process for the manufacture of a ready-to-infuse practically soluble coffee concentrate ... by extracting ground roast coffee and drying the extract, wherein roast coffee solids are ground to colloidal particle size ... , fresh roast coffee is then extracted with an aqueous solution or suspension of these colloids, the extract thereby produced ... is finally dried to give a dry product. (Bach, col. 4, 11. 67-75.) Thus, as Fountain states (Reply 6, 11. 13-19), although instances may be found in Bach (e.g., Bach col. 8, 1. 75, to col. 9, 1. 3) in which insoluble roast coffee is added to a roast coffee extract, the Examiner has not directed our attention to any disclosure or suggestion in Bach that the roasted ground coffee and the soluble coffee are milled and blended to form an intermediate. Nor, as Fountain analyzes in detail in the Reply, has the Examiner directed our attention to any disclosure or suggestion in Bach that such an intermediate be added to a concentrated coffee extract and subsequently be 7 Reply Brief filed 5 June 2017 ("Reply"). 5 Appeal2017-008982 Application 14/288, 102 foamed or subjected to the other steps of a process of making a soluble coffee product, i.e., an instant coffee. The Examiner makes no findings regarding the dependent claims or the additional references that cure these defects of Bach. We therefore reverse the appealed rejections. C. Order It is ORDERED that the rejection of claims 18-31, 54, and 55 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation