COMMISSIONER'S DECISION
OBVIOUS COMBINATION: Of Known Process Steps
The basic steps of the process combination were met
by the prior art, and it was obvious in view of prior knowledge
for persons experienced in the art to ascertain and adopt
without further invention the variations disclosed and claimed;
each of the steps contributed its own individual result, and
the order of the steps or the added step, has not produced a
result beyond that which a competent person would expect from
the teachings of the prior art.
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 064,978. This application was filed on October 15,
1969 in the name of Richard George Reimus et al and refers to
"Ice Washing". The Patent Appeal Board conducted a Hearing on
May 16, 1973, Mr. H. O'Gorman represented the applicant.
In the prosecution terminated by the Final Action the examiner
refused this application as lacking invention over the cited
prior art, namely:
United States Patents:
1,507,410 Sept. 2, 1924 W.M. Zorn
2,410,157 Oct. 29, 1946 Cl. 99-71 W.S. Fredrickson
2,967,778 Jan. 10, 1961 Cl. 99-205 P.S. Cole et al
Canadian Patents:
699,247 Dec. 1, 1964 Cl. 99-85 H. Svanoe
Publication:
Sivetz: Coffee Processing Technology Volumes 1 and 2. The AVI
Publishing Co. Inc. 1963.
References of Interest:
759,397 May 23, 1967 Cl. 99-22 Pike
832,391 Jan. 20, 1970 Cl. 99-22 Muller
In this action the examiner stated in part:
Zorn does not use the word "dewaxing" itself. However, the
patent teaches the filtration of hot extract to remove "suspended
matter" (page 1 line 73). He then goes on to say "------the
filtered liquid is next passed through a cooling coil or tank
end the temperature reduced as low as possible without
freezing. The liquid is then filtered main through a
second filter 5 while in this cold state to remove such
other matter as is reduced to suspension by cooling the
liquid------" (emphasis added) (page 1 lines 74 to 79).
This seemingly is a fairly complete definition of what
applicant means by the word "dewaxing".
Applicant further states, in connection with the Zorn
citation, that Zorn "does not disclose the crucial step
of holding said liquid extract at a chilled temperature
below 80øF. until precipitate forms". (Claim 1 lines
7-9).
In reply to this, attention is drawn to applicant's own
disclosure page 4 line 20 wherein applicant states:
"If desired, the chilled extract may be held at the
low temperature for from a few seconds to several or
many hours before the waxes, tars and gums are removed,
either by centrifugation or filtering".
Considering that Zorn does remove waxy material according to
his disclosure, considering also the temperatures Zorn speaks
of are "below 80.degree.F." and considering further that given the
processing equipment illustrated in Zorn, it would be impossible
or at least unreasonable to operate it outside the time range
specified by applicant of "from a few seconds to several or
many hours" applicant's statement that Zorn "does not dis-
close the crucial step of holding said liquid extract at a
chilled temperature below 80øF. until precipitate forms"
cannot be accepted. Moreover, applicant's argument that
"the use of the filter 5 as disclosed by Zorn is entirely
optional since he states on page 2, lines 7-11: "the hot
filtration and the intermediate cold filtration of the
infused liquid may be omitted from the process without
changing the result", is also not acceptable. In the first
place, whether it is optional or not would seem to be
beside the point. Secondly, it is not, in fact, optional
in the sense applicant would make it, namely that it could
be left out. it is optional only in the sense that the
removal of waxy materials can be done at one of different
stages. Thus, the material can be removed before, during
or after freeze-concentration according to Zorn. Zorn's
purpose is to remove it anytime so as to prevent its causing
spoilage. Applicant's purpose is to remove it before freeze-
concentration to improve the separation in the freeze-concentration
process.
...
Applicant points out regarding Fredrickson, that he "does
not disclose a freeze-concentration process". It is true
that the number of steps disclosed by applicant is greater
than the number of steps shown in Fredrickson. However,
the addition of conventional steps to a process need not
amount to invention and in this particular case does not.
Admittedly, Fredrickson does not show "treating the ice
to recover residual coffee therefrom" but the use of this
limitation as a means of overcoming art is not accepted,
for the reasons given above in connection with Zorn.
The applicant, in the response dated October 3, 1972 to the
Final Action, stated in part:
The applicant again emphasizes that Zorn does not dis-
close the final step in the applicant's process as claimed
in claim 1 namely "treating the ice to recover residual
coffee therefrom". In the second paragraph on page 3
of the final action it is suggested that this expression
is "rather vague, indefinite and avoidably ambiguous".
With due respect the expression is none of these things.
The expression may indeed be broadly worded, but this
in no sense renders it vague, indefinite or ambiguous.
On the contrary the expression is clear, definite and exact.
The fact that it does not restrict the claim to the precise
method disclosed for recovering residual coffee from the ice
is no objection against the use of the language selected by
the applicants. The expression is supported by the disclosure,
since the applicant has disclosed recovering residual coffee
from the ice by returning the washings to the freeze concentra-
tion step.
...
In summary it is the applicant's position in respect of the
Zorn reference that the Examiner has failed to demonstrate
that this reference makes a clear disclosure of the invention
set forth in applicant's claim 1. Zorn, it is submitted, does
not disclose the "holding" step in the dewaxing process of
the invention of claim 1, and clearly does not disclose the
final step of "treating the ice to recover residual coffee
solids therefrom". For these reasons it is submitted that
claim 1 must be considered as patentably distinguished over
the disclosure of this reference.
U.S. 2,410,157 Fredrickson is discussed in pages 2 - 3 of
the applicant's response of October 14th, 1971, and it is
believed that the statements made therein are sufficient
to establish that the applicant's claims are patentably
distinguished over the disclosure of this reference. It
is again emphasized that Fredrickson does not disclose a
freeze concentration process, and the numerous, already
detailed distinctions of claim 1 over this reference are
sufficient to establish the patentable nature of the
applicant's invention when compared with Fredrickson.
...
As has been previously pointed out, the Sivetz reference
makes no disclosure whatever of the precipitate forming
and precipitate separation steps of the present invention
in a freeze concentration process, nor does it disclose
treatment of the ice separated from the freeze concentration
process to recover residual coffee solids therefrom.
Accordingly it is submitted that this reference nowhere
approaches the claimed subject matter, but rather represents
the state of the art as it existed prior to the discovery
of the present invention.
This application relates to "Ice Washing" and more specifically
it relates to a process for the preparation of concentrated
comestible liquids and liquid extracts. Claim 1 reads:
A process for the concentration of a liquid aqueous
coffee extract which when chilled produces a precipitate
which is insoluble in said extract above the temperature
at which ice forms therein, comprising: chilling a
liquid extract containing ten to thirty percent by
weight dissolved solids to a temperature between 80.degree.
and 36øF to fore s precipitate therein; holding said
liquid extract at a chilled temperature below 80øF
until precipitate forms; separating said precipitate
and said extract; subsequently concentrating said extract
by subjecting said liquid extract to reduced temperature
to form a mixture of ice and concentrated liquid extract;
separating ice from said concentrated extract; and
treating the ice to recover residual coffee solids there-
from.
The basic reference to Zorn reads in part:
To remove the undesirable elements, it is necessary to
filter the infusion or to concentrate the solution and
then filter the same. It is preferable, however, to
filter the solution while it is hot and substantially
as it comes from the infusing machine, then to cool
the filtered liquid and to refilter the same to remove
such other materials as may be thrown into suspension
by the cooling of the liquid. This filter liquid is
then frozen into a mushy state so as to freeze the water
into the form of anew or ice crystals which are removed
from the frozen mass so as to leave the concentrated
coffee solution containing oils.
In order to demonstrate the alleged irrelevance of this patent
the applicant emphasizes the following differences:
a. dewaxing is not specifically taught by Zorn,
b. cold filtration is optional and it is not necessarily
carried out prior to freeze-concentration,
c. holding the chilled extract is not taught, and
d. Zorn does not teach the recovery of mother liquor
from the separated ice.
Although Zorn does not use the sage teams as those used in the
present specification to identify the same or similar materials,
their synonymity is obvious. An essential feature of Zorn's
process is the removal of "undesirable elements" from the
coffee extract obtained from the extractor, which is achieved
in three steps:
1. hot filtration to remove insoluble suspended solids,
2. cool the extract in a tank as illustrated in the
drawing, and
3. a filtration step to remove the precipitate which is
formed in the cold state of the clarified extract.
Since the applicant obtains the wax and tar precipitate by cooling
the coffee extract to the same temperature range as that taught by
Zorn, and succeeds in separating the precipitate in the same manner,
there is no reason to assume that the same treatment of the same
material would have different results in the removal of undesirable
elements such as "tars and waxes" which terms may be more precise
as to the nature of "undesirable elements", but they obviously
embrace the same substances.
To deny that Zorn in fact does not teach the holding of the chilled
extract before cold filtration is equivalent to denying that the
flow diagram is part of the specification of the Zorn patent and
that Zorn does not use a tank furnished with cooling coils to chill
the extract. It is impossible to cool the extract in this tank
without "holding" it for a practical "tempering period" as claimed
in claim 1. Since this tempering or holding period is not defined
specifically in the claim, reference is made to the instant dis-
closure for definition, wherein it is stated on page 5 that
"holding" is optional and that the range of tempering period is
"...from a few seconds to several or many hours...." Thus if Zorn
used the type of apparatus illustrated on his drawing - and it is
unreasonable to assume that this was not his intention - he must
have operated within the holding limits taught by the instant
disclosure and claimed in claim 1.
The reference to Cole teaches a freeze concentration process in
which the ice in the centrifuge is treated to recover concentrated
extract therefrom, while the reference to Fredrickson teaches
a step of removing natural waxes from the coffee extract prior
to its concentration.
The applicant has advanced the argument that Fredrickson does not
teach freeze-concentration, plus a number of minor differences,
however, it was never suggested that Fredrickson fully anticipates
the applicants' process. Nonetheless, the combination of the steps
of cooling, holding and separating tars and waxes from coffee extract
is taught by this reference. As a matter of fact the Fredrickson
reference goes beyond the scope of the present application in the
sense that not only does it mention waxes and other substances but
else identifies three separate types of waxy substances which precip-
itate at different rates. The heavier precipitates settle to the
bottom whereas the lighter ones have to be separated by other means.
the Sivetz reference also recognizes the undesirability of tars.
in coffee extracts, as discussed on page 148 of Volume 2, and.
that such tars will cling to any surface and are very difficult
to remove. This reference suggests the removal of tars by filtration
centrifuging, and sedimentation, and discusses completely the effect,
of not only the undesirable elements mentioned by the applicant, but
several ethers such as oils, carbon, colloids, and ashes. In addition,
the recovery of the concentrated extract from the ice cake in the
centrifuge is also discussed in volume 2 of the Sivetz reference
on pages 14 to 21.
The references to Svanoe, Pike and Mullet are all assigned to the
same applicant as the instant application, and were cited to show
that the combination of the steps of freeze-concentration, ice
washing and the recovery of mother liquor from the washings already
have been covered by patent protection.
The applicant has pointed out that the range of "80 to 36øF" in
the instant application is different from the range reduced to
"33 to 34øF" disclosed by Fredrickson. Of course the critical
temperature is 32.degree.F since the process must be carried out above
the freezing point of water. Further, page 4 of the instant
application reads: "Preferred temperatures for the chilling
operation are between shout 45 sad 32.degree.F because this temperature
range insures virtually complete removal of insolubles." It
follows that claiming a restriction "to 36.degree.F" is the same basic
step a taught by Fredrickson.
Accordingly, it is clear that all steps per se of the instant
process are known. The applicant however has advanced the
argument, specifically at the Hearing, 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, with which the Board is in agreament. It is, however,
settled law that the process must nevertheless be evaluated as to
whether the total process was an obvious thing or step for a person
skilled in the art to take 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 preparation of concentrated
soluble coffee" is taught by the prior art. It follows that the
specific issue is whether it would have been obvious to respond
to these teachings by carrying an 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 sons
unexpected result. Specifically, the applicant's claims are
directed to a coffee-extract concentration process including
dewaxing and the recovery of coffee solids adhering to the ice
crystals separated during freeze-concentration. The process
includes a series of known steps which contribute in an
known manner their known individual end results and the appli-
cant has not shown that the particular choice of the order of
the steps or the added step has produced a result beyond that which
a competent person would expect from the teachings of the prior art.
Furthermore, it is held that the variations in the process disclosed
and claimed from that shown by the prior art are of a nature that
competent persons would be expected to ascertain by trial and
experiment which does not involve further invention over the
teachings of the prior art.
The Board is therefore satisfied that the applicant has not made
an advance in the art which merits the distinction of the grant
of monopoly, and recommends that the decision of the examiner
refusing the application for want of 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
the grant of a patent with respect to the subject matter of this
application. The applicant has six months within which to appeal
thin decision in accordance with Section 44 of the Patent Act.
Decision accordingly,
A.M. Laidlaw,
Commissioner of Patents.
Dated at Ottawa, Ontario
this 3rd day of July, 1973.
Agent for Applicant
Smart & Biggar, Ottawa.