Tilo Hühn et al.

Patent Trials and Appeals Board

Sep 19, 2019

13141846 - (D) (P.T.A.B. Sep. 19, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/141,846 09/19/2011 Tilo Hühn 3075-089 7599
33432 7590 09/19/2019
KILYK & BOWERSOX, P.L.L.C.
400 HOLIDAY COURT
SUITE 102
WARRENTON, VA 20186
EXAMINER
YOO, HONG THI
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
09/19/2019 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 TILO HÜHN and ROLAND LAUX
____________________

Appeal 2018-006950
Application 13/141,846
Technology Center 1700
____________________

Before N. WHITNEY WILSON, CHRISTOPHER C. KENNEDY and
MERRELL C. CASHION, JR., Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
January 13, 2017 decision finally rejecting claims 2–6, 9–22, 24, 25, and 27
(“Final Act.”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
An oral hearing was held on September 12, 2019, a transcript of which will
be made part of the record.
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies ZUERCHER HOCHSCHULE FUER
ANGEWANDTE WISSENSCHAFTEN, as the real party in interest (Appeal
Br. 3).
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Application 13/141,846

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CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to a method for processing coffee beans
(Abstract). The claimed method involves a series of specific steps, including
a step in which a water/oil phase comprising particles, an oil phase, and a
water phase is produced (Appeal Br. 5). This water/oil phase is then
separated into three separate portions: (1) the particles, (2) an oil phase
comprising lipids with hydrophobic aroma components, and (3) a water
phase comprising water-soluble flavors, water soluble polyphenols and fats
or lipids adapted to be maintained in the water phase (id.). Details of the
claimed method are set forth in claim 2, which is reproduced below from the
Claims Appendix to the Appeal Brief (emphasis added):
2. A method of processing coffee beans comprising:
selecting and blending whole, unroasted coffee beans;
roasting the whole, unroasted coffee beans to obtain whole,
roasted coffee beans;
blending the whole, roasted coffee beans with water and under
heat;
subsequently, breaking or cracking the whole roasted coffee
beans to obtain broken or cracked coffee beans, or breaking or
cracking the whole roasted coffee beans and adding water to
form a suspension or mixture;
grinding or milling the broken or cracked coffee beans, the
suspension or mixture to obtain ground or milled coffee beans;
performing a first extraction on the ground or milled coffee
beans with heat and under pressure;
subsequently, performing a first vacuum de-aeration or
evaporation step on the coffee beans on which said first
extraction was performed;
subsequently, recovering aroma components contained in vapor
expelled in said first vacuum de-aeration or evaporation step;
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separating solid material from a water/oil phase in a first
decanting step, wherein the water/oil phase comprises:
particles, an oil phase, and a water phase;
separating the water/oil phase into the particles, the oil phase
comprising lipids with hydrophobic aroma components and the
water phase comprising water-soluble flavors, water soluble
polyphenols and fats or lipids adapted to be maintained in the
water phase, to obtain one or more coffee extraction products,
wherein at least one of the coffee extraction products comprises
the fats or lipids adapted to be maintained in the water phase;
subjecting at least the coffee extraction product comprising the
fats or lipids adapted to be maintained in the water phase to a
second evaporation in which excessive water is evaporated;
recovering flavor compounds evaporated in said second
evaporation together with the water; and
subsequently lyophilizing at least the coffee extraction product
comprising the fats or lipids adapted to be maintained in the
water phase to obtain, after adding the aroma components
recovered in the first vacuum de-aeration or evaporation step
and/or the flavor compounds recovered in the second
evaporation step, coffee products.

REJECTIONS
1. Claims 2–6, 9–16, 21, 22, 24, and 25 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Goto2 in view of Bach.3
2. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Goto in view of Bach and Hawes.4

2 Goto et al., US 2007/0231443 A1, published October 4, 2007.
3 Bach et al., US 3,652,292, issued March 28, 1972.
4 Hawes, et al., US 4,474,820, issued October 2, 1984.
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3. Claims 18 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Goto in view of Bach and Hisamori.5
4. Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Goto in view of Bach and Sakano.6
5. Claim 27 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Goto in view of Bach and Feldbrugge.7

DISCUSSION
We decide this appeal based on limitations in independent claim 2,
common to all of the appealed claims. Accordingly, we focus our analysis
on the rejection of claim 2 over Goto and Bach, and in particular, the
limitation separating the water/oil phase into the particles, the oil phase
comprising lipids with hydrophobic aroma components and the water phase
comprising water-soluble flavors, water soluble polyphenols and fats or
lipids adapted to be maintained in the water phase.
The Examiner finds that this limitation is suggested by Goto because
Goto discloses similar steps leading up to this step:
Modified Goto does not explicitly disclose[] the lipid water/oil
phase into the fine particles, the oil phase comprising lipids
with hydrophobic aroma components and the water phase
comprising water-soluble flavors and water-soluble
polyphenols, however modified Goto teaches similar materials,
roasted coffee beans and water in similar manner, roasting,
grinding, extracting, first decanting step and second separating
step as claimed; hence Goto is expected to contain similar

5 Hisamori, et al., JP 2003-204757, published July 22, 2003.
6 Sakano, et al., WO 95/11595, published May 4, 1995.
7 Feldbrugge et al., US 3,482,987, issued December 9, 1969.
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materials, discloses the lipid water/oil phase into the fine
particles, the oil phase comprising lipids with hydrophobic
aroma components and the water phase comprising water-
soluble flavors and water soluble polyphenols as cited.
(Final Act. 5, emphasis added).
However, as persuasively argued by Appellant (see, e.g. Appeal Br.
7–8, Reply Br. 2–6), the water phase produced by Goto’s process is
explicitly described as being free of oils (i.e. fats and lipids) which are
required to be in the water phase of the claimed process. In particular, Goto
describes the generation of a “coffee extract” (which corresponds to the
claimed water phase) through a centrifugation step (Goto ¶ 66) “having only
a little content of coffee oil,” (Goto ¶ 67), but then goes on to recite that the
extract is subjected to a fine filtration step in order to remove “coffee oil”
(corresponding to the claimed fats and lipids) which cannot be removed by
the centrifugation separation which created the extract (Goto ¶ 70).
Although the Examiner finds (Ans. 11) that the precise wording in
Paragraph 70 might suggest that removal of coffee oil from the coffee
extract is optional because Goto states that the fine filtration “is performed
in order to remove the fine powder or coffee oil” (Goto, ¶ 70, emphasis
added), we conclude that, when read in the context of Goto’s entire
disclosure, the use of the word “or” in that phrase is used to convey that the
fine filtration step removes whichever of fine powder or coffee oil remains
in the coffee extract after the centrifugation step. This interpretation is
consistent with Goto’s statement that the combination of the centrifugation
and fine filtration steps “remove[s] the oil component” from the coffee
extract (Goto ¶ 34).
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The Examiner also cites a passage in Goto — which states that “the
aroma-containing clarified and concentrated coffee extract obtained
according to the present invention contains almost no coffee oil component”
— in support of his finding that Goto teaches a coffee extract (corresponding
to the claimed water-phase) which contains some coffee oil component
(Ans. 11, citing Goto ¶ 95). However, as explained by Appellant (Reply Br.
3–6), the full context of Goto suggests to a person of skill in the art that Goto
seeks removal of all of the coffee oil from the coffee extract, but uses the
phrase “almost no coffee oil extract” as a concession that while complete
removal of the coffee oil is sought (see Goto ¶ 95 (“the coffee oil-containing
liquid is separated from the coffee extract in step (d)”); see also Goto ¶¶ 128
and 133 (examples in which “removal” of the coffee oil is described), it may
be impossible to fully verify this because of measuring limits or other
reasons.
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). In this instance, the preponderance of the evidence of
record does not support the Examiner’s finding that Goto teaches a step in
which a water extract containing fats or lipids adapted to be maintained in
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the water phase is created. Accordingly, we reverse the rejection of claim 2.
We also reverse the rejections of the remaining claims on appeal, each of
which depends from claim 2, for the same reason.

CONCLUSION
In summary:
Claims
Rejected
Basis  Affirmed Reversed
2–6, 9–16, 21, 22,
24, and 25
§ 103(a)
Goto and Bach 
2–6, 9–16, 21,
22, 24, and 25
17 § 103(a)
Goto, Bach, and
Hawes
17
18 and 20 § 103(a)
Goto, Bach, and
Hisamori
18 and 20
19 § 103(a)
Goto, Bach, and
Sakano
19
27 § 103(a)
Goto, Bach, and
Feldbrugge
27
Overall Outcome 2–6, 9–22, 24,
25, and 27

REVERSED