Ex Parte Nagao et al

Patent Trial and Appeal Board

Jul 24, 2017

12816610 (P.T.A.B. Jul. 24, 2017)

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.
12/816,610 06/16/2010 Koji NAGAO KIT.P405US.C1 3767
24972 7590 07/26/2017
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
YOO, HONG THI
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
07/26/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOJINAGAO, YOSHIAKI YOKOO, and KENZO TAKAHASHI
Appeal 2017-001590
Application 12/816,610
Technology Center 1700
Before CHUNK K. PAK, MARKNAGUMO, and JEFFREY R. SNAY,
Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 14, 18, and 19. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 We cite to the Specification (“Spec.”) filed June 16, 2010; Final Office
Action (“Final Act.”) dated August 10, 2015; Appellants’ Appeal Brief
(“App. Br.”) dated April 11, 2016, revised May 26, 2016; Examiner’s
Answer (“Ans.”) dated September 9, 2016; and Appellants’ Reply Brief
(“Reply Br.”) dated November 9, 2016.
2 Appellants identify Suntory Beverage & Food Limited as the real party in
interest. App. Br. 3.
Appeal 2017-001590
Application 12/816,610
BACKGROUND
The subject matter on appeal relates to steam-treatment of roasted
coffee beans. Spec. 11; claim 1. The disclosed steam-treatment reduces an
acidity component of the coffee beans. Id.^ 11. The steam-extracted acid
components are collected in a liquid condensate of the exhausted steam. Id.
1 57. Claim 14—the sole independent claim on appeal—is reproduced from
the revised Claims Appendix of the Appeal Brief as follows:
14. A method for making a coffee extract liquid, comprising:
a treating step of treating roasted coffee beans for a
purpose of reducing an acidity component thereof; and
a hot-water extracting step of obtaining the coffee extract
liquid by adding hot water having a temperature of from 90 to
100°C to the roasted coffee beans that have been treated in the
treating step;
wherein the treating step performs steam treatment of the
roasted coffee beans by causing the roasted coffee beans to
contact flowing steam, wherein in this steam treatment, the
roasted coffee beans are placed in an apparatus which has a
steam supply passage and a steam exhaust passage, and steam
having a temperature of from 180 to 230°C and a pressure of
1.0 to 3.0 Mpa is caused to flow continuously from the steam
supply passage, and exhausted steam is continuously exhausted
from the steam exhaust passage by continuously opening an
exhaust valve, under conditions whereby the exhausted steam
exiting the steam exhaust passage has an outlet pressure higher
than atmospheric pressure,
wherein the acidity component and unpleasant odor
component of the roasted coffee beans are collected within
condensed liquid of the exhausted steam; and
wherein the hot-water extracting step is performed under
atmospheric pressure.
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Appeal 2017-001590
Application 12/816,610
REJECTIONS
The Examiner maintains the following grounds of rejection:3
I. Claims 14 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over White,4 Nutting,5 and Applicants’ Admitted Prior Art
(“AAPA”).6
II. Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over White, Nutting, AAPA, and Kirkpatrick.7
DISCUSSION
Rejection I
With regard to Rejection I, Appellants argue only with respect to
claim 14. App. Br. 9—10. We therefore limit our consideration to Rejection
I as applied to that claim. Claim 18 stands or falls with claim 14.
Appellants do not dispute the Examiner’s findings that White
discloses continuous steam-treatment of roasted coffee beans and
condensation of exhausted steam to recover steam-extracted volatile acid
components.8 Compare Final Act. 3^4 with App. Br. 9, 10; Reply Br. 1—3.
3 Final Act. 2—8; Ans. 2—9.
4 US 3,615,665, issued October 26, 1971 (“White”).
5 US 3,361,572, issued January 2, 1968 (“Nutting”).
6 Spec. 14. See Final Act. 6.
7 EP 0 405 648 A2, published January 2, 1991 (“Kirkpatrick”).
8 Appellants assert, without explanation, that White fails to teach or suggest
causing coffee beans to contact flowing steam “but not the coffee extract.”
App. Br. 9. Appellants mistakenly included the quoted negative recitation in
their original Claims Appendix. Appellants corrected the error in their
Revised Claims Appendix, dated May 26, 2016, and do not pursue this
argument in their Reply Brief. To the extent that Appellants intended to
argue that White fails to teach brewing coffee from the steam-treated beans,
this argument is not persuasive. See White 4:24—28.
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Appeal 2017-001590
Application 12/816,610
White teaches that coffee brewed from the treated coffee beans is “richer”
and has “a more desirable flavor,” White 4:24—26, and that the condensate is
useful as an enhancer when added to the brewed coffee, id. 4:34-44.
Appellants argue that White fails to teach the recitation, “wherein the
acidity component and unpleasant odor component of the coffee roasted
beans are collected within condensed liquid of the exhausted steam.” App.
Br. 9. Particularly, Appellants contend that White’s condensate is a “liquid
coffee extract” that contains “desirable” volatiles, whereas the condensate
obtained by the claimed process “contains only undesirable volatiles.” App.
Br. 9-10. Thus, Appellants argue, “White . . . uses the condensed liquid
collected with the steam treatment while the latter [Appellants’ claimed
invention] does not.” Reply Br. 2. This argument is unpersuasive. First, we
observe that claim 14 lacks any recitation requiring that the condensate
contains only undesirable volatiles. White’s condensate includes “so called
undesirable volatiles” that are “collected together with normally desirable
volatiles to yield a valuable, flavor enhanced, condensate.” White 3:11—20
(“Unexpectedly, it has been found that the steam treatment under pressure
not only drives off what would be undesirable volatile constituents, if said
constituents were to remain in the coffee, but apparently chemically changes
the makeup of these undesirable volatiles such that all of the volatiles
collected in the condensate system have desirable coffee characteristics.
Thus, the so called undesirable volatiles are condensed and collected
together with normally desirable volatiles to yield a valuable, flavor
enhanced, condensate.”). Moreover, White discloses steam-treatment at
temperature and pressure conditions that Appellants’ Specification
characterizes as effective for extracting volatile acid components from
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Appeal 2017-001590
Application 12/816,610
coffee beans. Compare White 2:23—26, 38—40 (disclosing process
temperature and pressure within 115—177 °C and 0.07-0.7 MPa,
respectively) with Spec. H 51, 52 (disclosing process temperature and
pressure values from 100-230 °C and 0.1—3.0 MPa). The fact that White
characterizes the resulting condensate as useful fails to distinguish White’s
condensate from that produced by the claimed method.
Appellants also argue that the Examiner erred in combining only the
third extraction step in Nutting’s four-step extraction process with White’s
steam-treatment method. App. Br. 10. We do not read the Examiner’s
rejection as incorporating Nutting’s third extraction step into White’s
process. Rather, the Examiner finds that Nutting teaches use of high
temperature and pressure, within 160—204 °C and 0.5—1.55 MPa, for
extraction of roasted coffee to produce a coffee extract with “a desired
coffee value” in a “rapid” manner. Final Act. 5; Ans. 12. Consistent with
that finding, Nutting teaches that “additional coffee values are derived” by
extraction under the above-mentioned temperature and pressure conditions.
Nutting 4:17—20. Appellants do not point to persuasive evidence or
technical reasoning that countervails the Examiner’s finding that increasing
White’s temperature and pressure values to those taught by Nutting would
reasonably have been expected to extract “a desired coffee value” in a
“rapid” manner. See Final Act. 5.
Appellants additionally argue, in their Reply Brief, that the disclosed
process also improves an extraction ratio of soluble solid component in the
treated coffee beans. Reply Br. 2—3. This argument is neither raised in the
Appeal Brief nor responsive to any argument raised in the Answer, and is
not considered for purposes of this appeal. See 37 C.F.R. § 41.41(b)(2).
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Appeal 2017-001590
Application 12/816,610
For the foregoing reasons, Appellants do no identify reversible error.
We sustain Rejection I.
Rejection II
Appellants do not present any argument against Rejection II apart
from an implicit reliance on the arguments presented in connection with
Rejection I. Accordingly, Rejection II also is sustained.
DECISION
The Examiner’s decision rejecting claims 14, 18, and 19 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
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