COMMISSIONER'S DECISION
OBVIOUS: In View of Teaching of Several Citations
The steps in the process for removing undesirable substances
found in the extract solution and known to cause clogging before
the freeze concentration step, or spoilage of the extract after
the freeze concentration step, was obvious to anyone skilled in
the art having the teaching of the several citations in which
such substances removed for other reasons.
FINAL ACTION: Affirmed.
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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 056,234. This application was filed in the names of
Richard G. Reimus and Anthony Saporito and refers to "Concentration
Apparatus". The Patent Appeal Board conducted a hearing on May 16,
1973,Mr.O'Gorman represented the applicant.
In the prosecution terminated by the Final Action the examiner
refused the claims C1 and C2 because they do not define subject
matter that is inventive over the following references.
United States Patents
1,507,410 Sept. 2, 1924 W. Zorn
2,410,157 Oct. 29, 1946 W.S. Frederickson
Publication:
Sivetz: Coffee Processing Technology Volumes 1 and 2. The
AVI Publishing Co. Inc. 1963.
In the Final 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). Zorn then goes on to
say "----the filtered liquid is next passed through a cooling
coil or tank 4 and the temperature reduced as low as possible
without freezing, The liquid is then filtered again 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".
There is little indication in the disclosure of the criticality
of the "holding period". First of all, it is presented as an
option by means of the expression "if desired". Secondly, the
range of time given by the expression "a few seconds to several
or many hours" covers almost every conceivable period that is
at all practical. It appears impossible for Zorn to avoid
operating within such a range and unreasonable to assume that
he could or would.
With respect to the temperature range,applicant also mentions
ranges of 80·F, to 32·F. and 45·to 32·F. on page 4 last para-
graph as well as the range of 80 to 36øF. which applicant now
declares critical.
With respect to the teaching of concentration ranges, it can be
admitted that the specific values given are not mentioned. How-
ever, the range "of from a few per cent to as high as 40 to 50
per cent" is so wide that it is difficult to see why Zorn would
not be operating within it. Furthermore, applicant's disclosure
seemingly gives little evidence to support applicant's contention
that either of the two types of ranges is in any way critical.
Applicant's argument that there is a critical difference between
the "preferably from four to five days" of Frederickson and
applicant's "if desired from a few seconds to several or many
hours" is not accepted.
However, this point is covered in volume 2 of Sivetz. Volume
2 pages 14 to 21 discusses the conditions of ice formation,
distribution of dissolved solids in the liquid and solid phases,
the effect of wax separation and finally shows ice removal by
centrifugation. Thus, Sivetz teaches wax precipitation and
freeze-concentration.
The applicant in the response to the Final Action, dated July 5, 1972,
stated in part:
In respect of the Zorn reference, the applicant emphasizes the
point that Zorn is not concerned with the problem overcome by
the present invention namely that of removing waxes and tars
etc., from the coffee extract to facilitate freeze concentration.
Indeed Zorn does not show any appreciation that this problem
exists. The principal object of the Zorn disclosure is to
eliminate from an infusion of coffee "the undesirable elements
which upon standing causes the chemical or other changes which
break down the flavor or otherwise cause the liquid to spoil"
(see page 1, lines 26 - 30). Thus while on page 1, lines 69 -
90; Zorn makes disclosure of filtration, cooling and further
filtration of a coffee extract prior to freeze concentration,
this is not done with a view to removing waxes and tars to
facilitate the freeze concentration operation, but is done
with a view to eliminating undesirable elements which would
cause spoilage of the coffee extract liquid.
It is pointed out that the applicants claims are further
distinguished over the disclosure of Zorn by requiring holding
of the extract at its cooled temperature to allow formation of
the precipitate prior to filtration. See for example claim C1
which recited "holding said extract at said temperature for
a tempering period sufficient to precipitate waxes, tars and
other coffee solubles from solution as sediment but less than
the period wherein the coffee extract is appreciable degraded".
Frederickson method of removing the undesirable substances
involves cooling of the extract to a temperature of from 33·-
34·F and allowing it to remain undisturbed for a quiescent
period "preferably from between four to five days". The
applicants take the position that such a lengthy quiescent
period as proposed by Frederickson would result in a degrada-
tion of the coffee extract, and this is clearly not within
the scope of the invention claimed in claim C1 which requires
that the tempering period should be "less than a period where-
in the coffee extract is appreciably degraded".
This application relates to a process for the treatment of liquid
extracts for the preparation of soluble coffee solids.
Claims C1 and C2 read:
A process for dewaxing fresh coffee extract of 20 - 40%
solids, which comprises cooling said extract to a temperature
between the ice point of said extract and 70øF; holding said
extract at said temperature for a tempering period sufficient
to precipitate waxes, tars and other coffee solubles from
solution as sediment but less than a period wherein the coffee
extract is appreciably degraded; physically separating said
precipitated material from said extract by a step chosen from
the group consisting of filtration and centrifugation; and
freeze concentrating the resulting extract.
In a process for the concentration of liquid coffee extract
which forms insoluble precipitate at above the temperature
at which ice forms therein and which contains therein about
20 to 40% dissolved solids comprising partial freezing of
said liquid extract to form ice and concentrated liquid
extract, the improvement which comprises precooling said
liquid extract to a temperature between about 30 to 70·F
to precipitate insoluble material therefrom, storing said
liquid extract in said temperature range until sufficient
precipitate occurs without substantial adverse flavor effect,
centrifugally removing said insoluble material from said
liquid extract, subsequently subjecting said liquid extract
to reduced temperature to form ice therein and separating
ice from said concentrated extract.
More specifically the process of claims C1 and C2 relates to the
concentration of coffee extracts for the preparation of soluble
coffee solids. The steps are as follows:
a) precooling a coffee extract which contains 20 to 40%
solids to a temperature in the range of 30ø to 70øF
to start the precipitation of insoluble materials,
b) storing the cooled extract for a sufficient period
of time to allow precipitation to occur. This period
of time must not, however, be long enough to allow
degrading of the flavor,
c) physically separating the precipitated insoluble
materials.
The purpose of carrying out the first three steps of the process, before
carrying out the last step of freeze concentration, is to remove from
the extract the tars and wars which plug the centrifuge basket utilized
in the freeze concentration step.
The question to be decided is whether the process of claims C1 and C2
can properly be reused on the grounds of obviousness in view of the
cited prior art.
The cited reference to Sivetz establishes that percentages of solids
in the range of 10% to as high as 30% and 40% are readily obtainable
by normal percolation in the preparation of coffee extracts for the
process of freeze concentration of coffee solubles. It is also noted
that this reference establishes that these higher concentrations are
obtained at the loss of coffee flavor. It is therefore known to utilize
coffee extracts with a solid content in the range of 20% to 40%, as
claimed by the applicant, for the preparation of soluble coffee solids.
The Frederickson reference recognizes the necessity of removing waxes
and other soluble substances from coffee extract to prevent spoilage.
The process utilized by this reference includes cooling the extract
to a temperature in the range of 33ø to 34øF and then allowing it to
remain undisturbed for a period of time; this period of time however,
is longer than the one specified in this application, and for slightly
different reasons. The disclosure of the Frederickson reference
actually goes beyond the scope of the present application in the
sense that not only does it mention waxes and other substances but
also identifies three separate types of waxy substances which
precipitate 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 centrifug-
ing, which is the step specifically claimed by the applicant in claim
C2 and one of the alternative steps in C1.
One of the objects of the process disclosed by the reference to Zorn
is to remove undesirable elements from coffee extracts. Filtration is
one of the steps utilized in this process. The applicant wishes to
remove the same undesirable elements from the coffee extract, but for
a different purpose, namely; to prevent clogging of the basket during
the freeze concentration of the extract. The freeze concentration step
carried out by the applicant is the same as carried out by Zorn.
The step of physcially separating the precipitated insoluble materials
from the coffee extract, which is carried out before the step of
freeze concentration, is either one of filtering or of centrifugally
removing, and as noted above these alternative steps are clearly
indicated by both the "Sivetz" and "Zorn" references.
Furthermore, taking into consideration the teaching of the two cited
patents, and the teaching of Sivetz which discusses thoroughly the
Coffee Processing Technology, it is held that the step claimed by
the applicant of removing undesirable elements, which are known to
produce clogging, from a solution prior to usage in a freeze concentra-
tion process is obvious to one skilled in the art. Likewise, it is
also held to be obvious to one skilled in the art to remove substances
from the extract which have formed during a holding period and are
liable to cause the extract to spoil. Moreover, the Sivetz ref-
erence discusses completely the effect, of not only the substances
mentioned by the applicant, but also many others such as oils,
carbon, colloids, and ashes.
The Board is therefore satisfied that the applicant has not made an
advance in the art and that the process of claims C1 and C2 does not
merit the distinction of the grant of a monopoly.
The Board recommends that the decision of the examiner, to refuse
claims C1 and C2 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 with respect to claims C1 and C2. 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 25 th day of May 1973.
Agent for Applicant
Smart & Biggar, Ottawa.