COMMISSIONER'S DECISION
ANTICIPATION: Lack OF Subject Matter Over the Prior
Art
The process, and the product defined by that process, hold
to be substantially identical to what was disclosed in one of
the citations. The percent by weight solids in the extract and
the added step of drying were also shown to be known, thus the
series of known steps had not combined to produce any result
beyond what would be expected from the prior art.
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 appli-
cation 070,884. This application was filed on December 24, 1969
in the name of Richard G. Reimus et al and refers to "Concentration
Process". 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 the application as lacking patentable subject matter in
view of the following cited references:
References Applied:
Canadian Patents
699,247 Dec. 1, 1964 Cl. 99-85 H. Svanoe
759,397 May 23, 1967 Cl. 99-22 J.W. Pike
832,391 Jan. 20, 1970 Cl. 99-22 J.G. Muller
United States Patent
2,967,778 Jan. 10, 1961 Cl. 99-205 P.S. Cole et al
The examiner also refused claim 1 as being vague and indefinite,
also the divisional status of the application was refused.
In this action the examiner stated in part:
The Cole Patent is an indication that it was common general
knowledge at least as early as January 10, 1961, to wash ice
to "recover" coffee, although this was not what Cole claimed
as his invention. According, to applicant's disclosure, coffee
can be "recovered" if ice is washed and the object of the application
is "to provide a process in which commestible liquid or liquid
extract is subjected to freeze-concentration and the ice produced
is washed". (Page 2, paragraph one.)
Similarly, when referring to Svanoe and the recovery of
coffee from the washing, applicant states that "although
Svanoe discloses washing of the separated ice, he does
not disclose 'recovering coffee from the washing' as
claimed in claim 1". Applicant is, perhaps, suggesting
that his "recovering" is different from Svanoe's "re-
processing" because it includes "drying". If this is
what applicant is suggesting, then such an interpretation is
not supported by the disclosure. Neither Svanoe nor appli-
cant include such "drying". (Besides application 071,551
is concerned with that.) Svanoe's "reprocessing" is
equivalent to applicant's "recovering". Svanoe is further
evidence that ice-washing is a matter of common general
knowledge.
...
The examiner is of the view that in an application reciting
a large number of old steps, the steps themselves cannot
be regarded as "subject matter" simply because no one of
these steps can be regarded the subject of the application.
The procedure of choosing different steps to make up new
processes long after the original application was filed
is an unacceptable procedure. Such processes do not
constitute "subject matter" of the application; they
constitute new subject matter that was not filed at the
time of the original application. Whereas a process
claimed in an application as originally filed has the date
of that application even when the steps of the process are
themselves old because the "subject matter" was filed with
the filing of the application, a different process, claimed
years later, made up of steps only individually disclosed
in the original, cannot be given the same date of the original.
This different process does not consist of "subject matter"
of the original application. Applicant's entitlement to the
date of the original viz his entitlement to divisional status
does not include a right to make up processes entirely
different from the one for which the application was filed,
from steps disclosed individually to be old in the application.
The applicant, in his response of October 3, 1972, stated in part:
It is the applicant's position that of the cited prior art, only
U.S. 2,967,778 Cole et al is properly citable against the subject
application, and that this reference does not provide an adequate
basis for rejection of the applicant's claims as unpatentable.
The Cole et al reference has already been discussed, and it is
believed distinguished over, in the response filed on December
15th, 1971. As has already been pointed out Cole et al does
not disclose a process involving the preparation of an aqueous
coffee extract in the claimed range of concentration of "about
10 - 30% by weight of dissolved solids". Nor does Cole et al
disclose concentration by partial freezing "by indirect heat
exchange in a scraped surface tubular crystallizer". In view
of the foregoing, it is believed that the present claims are
patentably distinguished over this reference.
...
What is described in the parent application is an overall
process for producing concentrated coffee extract by a
freeze concentration. The disclosed process includes a
number of steps some of which are old, some new. However
in the present application the applicant is not making up
new processes by choosing different steps from the complete
process disclosed in the parent application. Rather the
applicant is in the present application claiming basically
the same process as is claimed in the parent application
(i.c. a process for the preparation of a coffee extract
involving freeze concentration) but emphasizing different
aspects of the overall process as constituting a separate
invention to the process claimed in the parent application.
It is submitted that this is entirely legitimate and gives
rise to no statutory objection under either Section 36 or
Section 38 of the Patent Act.
This application refers to a concentration process and more
specifically a process for the preparation of concentrated
liquid extracts and particularly soluble coffee. Clams 1 to
4 read:
1. A process for the preparation of a concentrated coffee
beverage product, comprising
(a) preparing an aqueous coffee extract containing
about 10 to 30% by weight of dissolved solids;
(b) subjecting said extract to concentration by partial
freezing by indirect heat exchange in a scraped surface
tubular crystallizer to form ice, and a more concentrated
extract;
(c) separating said more concentrated extract from
said ice by centrifugation; in a basket type centrifuge;
(d) washing the separated ice with water or dilute
coffee extract in a centrifuge; and
(e) recovering coffee from the washings.
2. The process according to claim 1 in which the extract
is dried after separation of ice.
3. The process of claim 4 in which the extract is dried
under vacuum.
4. The product produced by the process of claim 1.
The cited reference to Cole discloses a process for producing
freeze-concentrated fruit juices "and other beverage liquids
such as milk, coffee etc." The washing of ice separated in
a centrifuge from concentrated extract is described on page 5
line 4 to page 6 line 24 of the Cole reference which teaches
the use of water to wash the ice cake in a rotating centrifuge
basket and the washings are then recycled to the freeze-concentra-
lion apparatus. Therefore, it is clear that the freeze-concentration
step in combination with the ice washing step is known in the art.
The Svanoe, Pike and Muller citations are all assigned, to the
same applicant as the instant application, and show that the
coobination of the steps of freeze-concentration, ice washing
and recovery of mother liquor from the washings are already pro-
tected by patents.
The applicant has advanced the argument that: "...nor does
Cole et al disclose concentration by partial freezing by in-
direct heat exchange in a scraped surface tubular crystallizer."
However, the disclosure on page 4 lines 24 to 27 of the reference
to Cole reads: "The superfreezers may take various forms, but
a typa of apparatus known as the "Votator" and exemplified
by the Girdles (sic) patent number 1,783,864 and others is
satisfactory." The term "Votator" has particular significance
in this quotation in view of the statement made on pale 7
lines 31 to 33 of the Cole disclosure that: "The final product
from blend tanks 43 and 44 is delivered through a conduit 54
and pump 55 to a scraped surface cooler or votator...." Further,
patent 1,783,864, referred to above, also teaches the use of an
indirect heat exchange type of tubular crystalizer with agitating
means.
Accordingly, it is clear that the use of a scraped surface
tubular crystallizes of the indirect heat exchange type for
partial freezing is in fact taught by the cited reference to
Cole, and cannot stand as a distinguishing feature of the alleged
invention of this application.
While the limit regarding the percentage of solids by weight
in the initial aqueous extract included in the instant Claims
is not specifically recited in the reference to Cole, however
the percentage of 10 to 30% specified is nevertheless within
tha range to be expected by a competent person whenever a
concentrate is prepared by any concentration process.
It is held that the basic idea of the invention disclosed in
this application of a process for the preparation of concentrated
liquid extracts comprising the steps of: partial freezing,
centrifuging, ice washing, recovery of the solids and the drying
of the extract, is taught by the cited references and clearly
lacks a patentable advance in the art over the references to
Cole. The reference to Cole teaches: partial freezing of
juices (or coffee), centrifuging, ice washing and recovering
the dissolved solids from the washings; which steps are sub-
stantially identical to those claimed by the applicant in
claim 1. Claims 2 and 3 make reference to a drying step. The
reference to Cole, however, refers to U.S. Patent 2,588,337
which in turn refers to "concentration by evaporation" on
page 1 line 60 of the Cole reference.
The process includes a series of known steps which contribute
their known individual end results and the applicant has not
shown that the particular choice of the order of the steps, or
that the added step has combined to produce any new result
beyond that naturally to be expected from the teachings of the
prior art. Furthermore, it is held that any variation, such
as the 10 to 30% of solids by weight, is of a nature that could
easily have been ascertained by non-inventive selection and trial
by competent persons in the art.
Accordingly, the Board is satisfied that claims 1 to 3 do not
define patentable subject matter over the prior art, it follows
that product claim 4 dependent on the process does not define
patentable subject matter. Moreover, since there is no further
subject matter in the application, it follows that the application
as a whole lacks patentable subject matter.
The ground of rejection that"claim 1 is indefinite" and the
ground of rejection with respect to "divisional status" need
not be considered in view of the fact that the application
is refused for want of patentable subject matter. The Board
therefore recommends that the decision of the examiner, to
refuse the application 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
the grant of a patent with respect to the subject matter of this
application. The applicant has six months within which to appeal
this decision in accordance with Section 44 of the Patent Act.
Decision accordingly,
A.M.Laidlaw,
Commissioner of Patents.
Dated in Ottawa, Ontario
this 3rd day of July, 1973.
Agent for Applicant
Smart & Biggar, Ottawa.