Application of Wertheim

Decision Date26 August 1976
Docket NumberPatent Appeal No. 75-536.
Citation541 F.2d 257
PartiesApplication of John H. WERTHEIM et al.
CourtU.S. Court of Customs and Patent Appeals (CCPA)

William H. Vogt, III, Watson, Leavenworth, Kelton & Taggart, New York City, attys. of record, for appellants; Paul E. O'Donnell, Jr., New York City, of counsel.

Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents; Gerald H. Bjorge, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.

RICH, Judge.

This appeal is from the decision of the Patent and Trademark Office (PTO) Board of Appeals affirming the final rejection of claims 1-43, all the claims in application serial No. 96,285, filed December 8, 1970, entitled "Drying Method."1 The appeal on claims 3, 5, 36, and 39 has been withdrawn, and as to these claims it is, therefore, dismissed. As to the remaining claims, we affirm in part and reverse in part.

The Invention

Appellants' invention centers around a process for making freeze-dried instant coffee. Claims 1, 6, 30, and 40 are illustrative:

1. An improved process for minimizing loss of volatiles during freeze-drying of coffee extract which comprises obtaining coffee extract, concentrating said extract to a higher solids level of at least 35%, foaming said concentrated extract to a substantial overrun by injection of a gas into said extract at at least atmospheric pressure to thereby avoid evaporative cooling due to evaporation of water in said extract during said foaming, freezing said foam to below its eutectic point at at least atmospheric pressure while avoiding evaporative cooling, and freeze-drying said extract at below the eutectic temperature of said extract.
6. Process for preparing a powdered coffee extract, which comprises adding sufficient inert gas to a concentrated aqueous extract of roast coffee containing about 25% to 60% by weight of soluble coffee solids to provide a foam having a density between about 0.4 and 0.8 gm/cc, freezing the foamed extract to a solid mass, grinding the frozen foam to a particle size of at least 0.25 mm and freeze drying the ground frozen foam.
30. An apparatus for carrying out the process defined in claim 6 comprising, in combination, means for foaming, a closed chamber capable of being maintained at a temperature which is substantially below the melting temperature of said frozen foam, and, disposed within said chamber, a movable endless belt, means for moving said belt at a low speed, a spreading device for distributing coffee extract foam on said belt and refrigerating means for cooling at least one surface of said belt with a liquid refrigerant.
40. A dry coffee powder comprising a freeze-dried particulated foamed extract of roast and ground coffee, the foam before freeze drying having a density between about 0.4 and 0.8 gm/cc.

The remaining claims are reproduced in the Appendix hereto. Appellants assert that their invention produces an instant coffee having a bulk density of 0.2-0.3 gm/cc, which corresponds to that of conventional spray-dried instant coffee.2 They allege they discovered that this desired bulk density results from controlling the solids content of the concentrated extract prior to foaming and the density of the foam generated therefrom within the ranges of their freeze-drying process claims.

Since the claims are somewhat elliptical in setting out the steps of appellants' process, we shall describe it further. An aqueous extract of coffee is prepared by percolating hot water through roasted and ground coffee beans. The extract is concentrated to have a solids content between 25% and 60% and is then charged with gas to produce a foam having a density between 0.4 and 0.8 gm/cc. The foam is frozen and ground into particles, preferably 0.25 to 2.0 mm in size, which are freeze-dried by conventional techniques.

Prosecution History and Rejections

The claims which remain on appeal fall into two broad groups: The "interference" claims 1, 2, 4, 37, and 38; and the "non-interference" claims, 6-35 and 40-43.

As originally filed, the application contained claims 1-5 copied from Pfluger et al. U. S. Patent No. 3,482,990 (Pfluger patent), issued December 9, 1969, on an application filed February 10, 1969. A letter under Rule 205(a), 37 CFR 1.205(a), requesting an interference with the Pfluger patent accompanied the application. By amendment, appellants transferred claims 6-35 from their 1966 application to the instant application. Claims 36-39, added by amendment, are modified versions of the previously copied claims and were presented for the purpose of providing a basis for phantom counts in an interference with the Pfluger patent under Rule 205(a) and Manual of Patent Examining Procedure § 1101.02. They depend from claim 2.

The patents relied on by the examiner are:

                  Pfluger et al.     3,482,990     Dec. 9, 1969
                  De George          3,253,420     May 31, 1966
                               (application filed Feb. 3, 1965)
                  Carpenter et al.   2,974,497     Mar. 14, 1961
                  British patent       948,517     Feb. 5, 1964
                

The Pfluger patent issued on a chain of four applications: serial No. 800,353, filed Feb. 10, 1969, which was a continuation of serial No. 520,347, filed Jan. 13, 1966 (Pfluger 1966), which was a continuation-in-part of serial No. 309,410, filed Sept. 17, 1963 (Pfluger 1963), which was a continuation-in-part of serial No. 98,007, filed Mar. 24, 1961. The Pfluger patent discloses a process for making freeze-dried instant coffee which has as its goal minimizing the loss from a foamed extract of volatile aromatics which contribute substantially to the natural flavor of coffee and other foods.

De George describes apparatus and methods for freezing liquid, unfoamed coffee extract prior to drying on continuous belts refrigerated by brine tanks contacting the bottom surfaces of the belts. The claims of De George are directed to processes for facilitating the removal of the frozen sheet of coffee extract from the belt before it is freeze dried.

The British patent discloses a rapid freeze-drying process in which the food product is frozen, milled into small particles which are spread from a hopper in single-particle layers onto plates, and freeze-dried in a vacuum chamber. More details of the disclosure are supplied infra.

Carpenter discloses the cooling of a refrigeration belt by spraying cold brine onto the underside of the belt.

The examiner made multiple rejections which were addressed by the board in eight categories, seven of which are before us for review. Category I covers the "interference" claims, which were rejected on the Pfluger patent, claims 1, 2, and 4 under 35 U.S.C. § 102 and claims 37 and 38 under § 103. The board agreed with the examiner's position that these claims were not entitled to the benefit of appellants' 1965 Swiss priority date because they were not supported by appellants' parent and Swiss applications. The limitations held to be unsupported were "at least 35% solids content" in claim 1, "between 35% and 60% soluble solids" in claims 2 and 4, and "pressure of less than 500 microns" and "final product temperature of less than 110°F." in claim 4. For that reason appellants were held to be junior to the Pfluger patent on the basis of Pfluger's 1966 filing date. In light of appellants' refusal to file a Rule 204(c)3 affidavit showing a date of invention prior to Pfluger's 1966 filing date, the examiner and the board held the Pfluger patent to be prior art under § 102(e) against claims 1, 2, 4, 37, and 38 and rejected the claims on that basis.4 The board refused to hold that the claims were supported in the parent and Swiss applications, "for interference purposes," under our decision in In re Waymouth, 486 F.2d 1058, 179 USPQ 627 (Cust. & Pat.App.1973), mod. on reh., 489 F.2d 1297, 180 USPQ 453 (CCPA 1974). The board stated that appellants' failure to file a Rule 204(c) affidavit precluded any attempt to get into an interference and that Waymouth, which concerned the right to make a claim for interference purposes in the application on appeal, was therefore inapplicable to this case.

Under Category II, the board affirmed the rejection of claims 6-10, 12-15, 17, and 26 under 35 U.S.C. § 132 for new matter. The board held that these claims, which were added to the instant application by amendment, were not supported in the original disclosure for lack of a description of the claimed size of the ground foam particles, i. e., "at least 0.25 mm."

The Category III rejection was reversed by the board.

In Category IV, claims 6-8, 11-20, and 40-43 were rejected under § 103 on the disclosure of Pfluger 19635 carried forward to the Pfluger patent, in accordance with In re Lund, supra. The board found that the foam density range of 0.4-0.8 gm/cc claimed by appellants (and the 0.6-0.8 gm/cc range in claims 19 and 20) was suggested by Pfluger 1963's disclosure of 0.1-0.5 gm/cc foam density and that Pfluger 1963 teaches the use of foaming gases and concentrating the coffee extract prior to foaming. The board found that the final product densities claimed would be inherent "in view of the same foam overrun density disclosed by Pfluger" and that Pfluger's example I, which discloses breaking the frozen foam strands into 3/4" lengths (i. e., "at least 0.25 mm") before drying, would suggest the size of the ground foam particles claimed by appellants.

Category V added De George to the § 103 rejection of claims 9, 10, 30, and 32-35. The board agreed with the examiner that the temperatures, foam thicknesses, and belt lengths and speeds covered by these claims are disclosed in De George, and that it would be obvious to use De George's moving belt apparatus in the Pfluger process.

In Category VI claims 21-23 and 26-29 were rejected under § 103 on Pfluger in view of the British patent, which was relied on for its teaching of the concentration of coffee extract by freezing to a solids content of 27 to 28%. Pfluger was applied...

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