COMMISSIONER'S DECISION
OBVIOUS COMBINATION: Of Known Process Steps
All of the process steps of the combination claimed were known
and, except for the final step of drying the coffee beverage, were
met by one of the citations; while the final step of drying coffee
beverage by various conventional means was well known as taught
by several other citations. While no one citation showed the process
as a whole, each of the steps contributes its own individual result
and combining the final step with the other steps has not produced
a result beyond what a competent person would naturally expect from
the teachings of the prior art as a whole.
FINAL ACTION: Affirmed.
**************************
This decision deals with a request for review by the Commissioner
of Patents of the Examiner's Final Action dated July 5, 1972 on
application 071,551. This application was filed in the name of
John G. Muller and refers to "Beverage Process".
In the prosecution terminated by the Final Action the examiner
refused to allow the application on three grounds:
A. The application lacks invention in view of prior art,
B. The divisional status of the application is refused
because the "subject matter" in the application was
not "specified" in the original application, and
C. Claims 5 to 7 inclusive relate to old products.
The cited prior art references are:
United States Patents:
2,292,447 Apr. 22, 1941 Cl. 99-199 J.C. Irwin
2,354,633 July 25, 1944 Cl. 99-205 F.W. Bedford
2,503,695 Apr. 11, 1950 Cl. 99-205 R.E. Webb
2,858,942 Nov. 4, 1958 Cl. 210-374 E.P. Wencelberger
2,967,778 Jan. 10, 1961 Cl. 99-205 S.P. Cole
Canadian Patents:
272,499 July 19, 1927 Cl. 161-8 A.B. Jones
333,780 July 4, 1933 Cl. 161-3 W.E. Guest
594,366 May 15, 1960 Cl. 161-9 J.P. Terrett
699,247 Dec. 1, 1964 Cl. 99-85 H. Svande
759,397 May 23, 1967 Cl. 99-22 J.W.Pike
832,391 Jan. 20, 1970 Cl. 99-22 J.G. Muller
In this action the examiner stated in part:
In regard to objection A
Applicant replies to the citation of the art in the last Office
action by pointing out that some of the art does not disclose
the drying of ice-washings and the remaining art does not dis-
close a freeze-concentration process. More specifically,
applicant points out that Irwin, Bedford, Webb, Wencelberger
and Cole do not mention drying of ice-washings to obtain the
coffee therein, and Canadian Patents 272,499; 333,780 and
594,366 do not speak of freeze-concentration when they dis-
close spray-drying of dilute solutions of coffee. In a sense
then, the specific lack in the first group is made up in the
second group.
Applicant, in montioning in his disclosure that ice-
washings can be recycled (to extractors or freeze-
concentrators) or returned to existing spray-dryers is
only reiterating that washings should not be discarded
and that existing spray-dryers are fully capable of drying
dilute coffee extracts. No unexpected result is achieved
by spray-drying of dilute coffee extract such as ice-washings.
The result is not unexpected but only what a person skilled
in the art would expect.
In regard to objection B
To understand what applicant means when he says the "subject
matter" has bean "specified", it is only necessary to compare
claims 1 and 2 of the claims cancelled on October 23, 1969
with claims 1 and 2 of this application as originally filed.
A comparison of the wording of the two pairs of claims shows
them to be very similar. Except for a slight variation in a
range, steps (a) to (c) read the same and claim 2 in both
cases is verbatim.
Step (d) in the original is quite different from step (d) in
the application. Step (d) in the original refers to a step
we now know as "freeze-drying". Step (d) herein relates to
any process of drying and includes "freeze-drying" without
specifically mentioning it.
In regard to objection C
Reason (C) for refusing claims 5 to 7 is that they relate
to old products.
The applicant, in the response dated July 5, 1973 to the Final
Action, stated in part:
In regard to objection A
In essence, the cited prior art falls into two categories.
One category, including references such as the U.S. Patents
to Irwin, Bedford, webb, Wencelberger and Cole, discloses
processes for freeze concentration of fruit and vegetable
extracts and coffee, including the recovery of juice or
extract from the separated ice. The second category in-
cludes the cited Canadian Patents to Jones, Guest and
Terrett, and shows that spray drying of comestible extracts
such as coffee is known. By combining the teachings of
these two categories of references, the Examiner seeks to
show that the applicant's claimed process is known from the
prior art. However it is respectfully pointed out that no
single cited patent discloses the process claimed by the
applicant namely the preparation of a coffee beverage
product inciuding:-
(a) Preparing an aqueous coffee extract "containing
about 10 - 30% by weight of dissolved coffee solids";
(b) Concentrating that extract by partial freezing
to form a mixture of ice and more concentrated extract
"containing about 32% by weight of dissolved coffee solids";
(c) Separating the more concentrated extract, and
(d) Recovering coffee beverage product from the ice
and "drying the product thus recovered".
The Examiner has demonstrated shat individual ones of the
above referred to steps are known from the prior art. How-
ever what he has failed to show is any reference disclosing
the overall process set forth in the applicant's claim 1.
It is only by postulating an improper combination or mosaic
of the prior art references that the applicant's invention
can be approached, and even at that the specific ranges of
concentration are not disclosed.
In regard to objection B
From this comparison the Examiner draws the conclusion that
the "subject matter" in this application has not been "specified"
in the original. However the comparison which the Examiner has
made does not involve the claims as at present on file in the
subject application. Present claim 1 contains substantially
the same content as paragraphs a, b and c, of the claim 1
recited at the top of page 5 of the final action. However
present claim 1 does not include paragraph d which recites
"subjecting said more concentrated extract to dehydration
to a moisture content of 1% to 5% by weight", but instead
recites "recovering coffee beverage product from said ice
and drying the product thus recovered".
Now considering the language of present claim 1 it is evident
that this has been specified in the parent application, since
present claim 1 corresponds to the subject matter of paragraphs
a, b, and c of claim 1, together with claim 2 of patent 832,391.
In regard to objection C
Claims 5 - 7 are process dependent product claims, and as
such cannot be held to be directed to old product if the
process claims from which they depend are patentable. The
applicant's position is that these process claims are
patentable, and therefore the product claims should be allowed.
The claims of this application relate to a process for the pre-
paration of a coffee beverage product which is soluble in water
Claims 1 to 7 read:
1. A process for the preparation of a coffee beverage
product which is soluble in water, said process comprising:
preparing an aqueous coffee extract containing about
10 to 30 per cent by weight of dissolved coffee solids:
subjecting said extract to concentration by partial
freezing to form a mixture of ice and a more concentrated
extract containing about 32% by weight of dissolved coffee
solids; and
separating said more concentrated extract from said ice;
and
recovering coffee beverage product from said ice and
drying the product thus recovered.
2. A process according to claim 1 in which said product
is recovered by washing said separated ice and drying said
washings.
3. A process according to claim 2 wherein said separated
ice is washed with water in a centrifuge.
4. A process according to claim 2 or claim 3 wherein the
washings are spray dried.
5. The coffee beverage product recovered from the ice in
the process according to claim 1.
6. The coffee beverage product recovered from the ice in
the process according to claim 2.
7. The coffee beverage product recovered from the ice in
the proctss according to claim 3.
the first issue to be decided is whether the claims 1 to 7
inclusive are allowable over the prior art cited, and as noted
claims 1 to 4 are directed to the process of preparing the coffee
beverage product whereas the remaining claims are product by
process dependent claims.
Basically, the instant process comprises the following steps:
a) prepasing an aqueous coffee extract
b) subjecting said extract to concentration by partial
freezing to form a mixture of ice and more concentrated
extract of dissolved coffee solids; and
c) separating said extract from said ice; and
d) recovering coffee beverage product from said ice and
drying the product recovered.
The cited reference to Cole discloses a process for the manufacture
of concentrated liquids and juices including coffee extracts. This
patent in column 1 at lines 19 to 24 and 51 to 56 reads:
The method and apparatus herein described may be used for
the production of concentrated juices of citrus fruits such
as orange, lemon, grapefruit, lime and the like, various
juices of deciduous fruits including but without limitations
apple, pear, peach, pineapple and the like, and to other
beverage liquids such as milk, coffee, etc.
...
George S. Sperti, in Patent No. 2,588,337, dated March 11,
1952, taught a process for concentrating juices in which
the juice was first subjected to freezing conditions in order
to form ice crystals therein, and the unfrozen liquid was
then separated as a concentrate from the ice crystals,
preferably by centrifuging.
It is clear from these excerpts that process steps (a), (b) and
(c) were obviously known as early as 1952.
The aqueous coffee extract mentioned by the applicant is also
included in the liquids or concentrated juices mentioned in
lines 21 and 24. The step of subjecting the extract to partial
freezing to form mixture of ice and concentrated extract is the
same step, mentioned in the reference to Cole, of subjecting the
liquid to freezing conditions in order to form ice crystals. The
step of separating the ice crystals from the unfrozen liquid by the
preferred step of centrifuging is the same as that included in step
(c) of the applicant's process. Obviously, if the ice crystals
and the unfrozen liquid or the concentrate are to be separated
they will each become separately available. This is the first
part of step (d) of the applicant's process.
The last part of step (d) namely, the step of drying the product
recovered is not specifically mentioned in the cited reference
to Cole, however, it is specifically mentioned in the cited
reference to Irwin, Jones, Guest and Terrett; for example,
the reference to Irwin reads in part:
Coffee which has been brewed according to the conventional
methods may be subjected to the drying process of this invention
and the dried material is highly resistant to caking, is immedi-
ately soluble in water, and has been found to retain the aroma
and taste of the original brand used in brewing the coffee. It
is preferred to concentrate the coffee by conventional methods
before subjecting it to the present drying process.
Moreover, the instant disclosure in paragraph 4 of page 1 describes
the drying of coffee products in the following terms:
The conventional method of complete dehydration of the coffee
product is by means of spraying the concentrated extract at
high temperature into a tower to flash off all remaining
water so that the final product is a soluble powder. Un-
fortunately, during this flash evaporation process which is
known as spray drying, much of the flavor components of the
coffee which are volatile flash off along with the water and
must somehow be replaced in the coffee powder. Even this
replacement of the coffee aroma elements into the coffee
powder produces a product which is not truly comparable
to freshly brewed coffee.
The reference to Bedford relates to a process for the recovery of
valuable constituents from ice when any liquids are concentrated
by freezing and more particularly when fruit and vegetable juices
are so concentrated. This process includes the steps of: partial
freezing, centrifuging, ice washing and the recycling of washings
to the partial freezing equipment.
It is noted that the restriction regarding the percentage content of
solids by weight included in the instant claims, is not specifically
recited in the references, however, the percentages of 10 to 30%
specified for the content of coffee solids in the initial aqueous
coffee extract is nevertheless within a range to be expected when-
ever a concentrate is prepared for any of the processes mentioned
in the references listed above. Furthermore, the particular
restriction of "about 32%" by weight of dissolved coffee solids
expected after the partial freezing is also within a range to be
expected whenever a concentrate is prepared.
Accordingly, it is clear that all steps per se of the instant process
are known. The applicant, however, has advanced the argument that
no single reference discloses the combination of process steps, and
that it is the total claimed process which must be examined to show
the advance in the art, to which the Board is in agreement. It is,
however, settled law that the process must be evaluated as to whether
it was an obvious thing or step for a person skilled in the art to
do in view of the "state of the art" as that established by the
examiner, and of what was previously known and derived from experience
in the art, as well as the contents of previous writings, textbooks
and other documents.
It is held that the basic idea of the invention, "the preparation
of powdered soluble food products" is taught in the prior art. It
follows that the specific issue is whether it would have been obvious
to respond to these teachings by carrying on with tests, experiments
etc. which are not themselves inventive, or to merely add a known
step, or change the order of the steps, without obtaining some un-
expected result. Specifically, the applicant dries the coffee
beverage product after having carried out a series of steps which
include the known steps of producing a concentrate, partial freezing,
separating the ice from the concentrated coffee beverage, and then
recovering coffee beverage product from the ice so separated by
means taught by the citations. The process includes a series of
known steps which contribute their known individual end results;
moreover, the applicant has not shown that the particular choice
of the order of the steps or the added step has produced any new
result beyond that naturally to be expected from the teachings of
the prior art. Furthermore, it is held that any variation in the
process is of a nature that could easily have been ascertained by
non-inventive trial by persons skilled in the art.
It is held therefore that claims 1 to 4 do not define patentable
subject matter over the cited references. It also follows that
the product claims 5 to 7, which are dependent on claims 1 to 3
do not define patantable subject matter. Moreover, it is held
that no patentable subject is present in the application.
The second ground of rejection "refusal of divisional status"
need not be considered in view of the fact that the grant of a
patent is refused on this application.
The Board is therefore satisfied that the subject matter of this
application does not wararant the grant of a patent monopoly, and
recommends that the decision of the examiner, to refuse the applic-
ation as lacking patentable subject matter, be affirmed.
J.F. Hughes,
Assistant Chairman,
Patent Appeal Board.
I concur with the findings of the Patent Appeal Board and refuse
to grant a patent on the subject matter of this application. The
applicant has six months in which to appeal this decision in
accordance with Section 44 of the Patent Act.
Decision accordingly,
A.M. Laidlaw,
Commissioner of Patents.
Dated at Ottawa, Ontario
this, 13th day of June, 1973.
Agent for Applicant
Smart & Biggar, Ottawa.