DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's claim submission filed on September 15, 2025 and subsequent Request for Continued Examination filed on September 22, 2025 have been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on October 21, 2025 was filed after the mailing date of the Office Action mailed on July 16, 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 5-8, 10, 12-13, 17, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Andreae et al. US 2017/0008694 in view of Monforton et al. US 2019/0077571, Mintus et al. US 2015/0104546, Khan et al. US 2016/0024326, Labeque et al. US 2017/0298308, and Neuman et al. US 2015/0174867.
Regarding Claim 1, Andreae et al. discloses a capsule comprising a capsule body (housing 22) composed of at least one polysaccharide (starch) (‘694, Paragraphs [0007], [0009], and [0027]). The capsule body (housing 22) necessarily has an innermost and outermost surface. The capsule body is filled with a beverage powder of coffee (coffee) (‘694, Paragraph [0055]). The capsule body (housing 22) is completely encased over by at least one first coating layer (material layers 25, 26 made of PLA) (‘694, FIG. 5) (‘694, Paragraph [0064]).
Andreae et al. discloses the capsule body being made with a PVOH layer that acts as an oxygen barrier wherein the PVOH oxygen barrier layer is completely encased by at least one coating layer (PLA layers 25, 26) that serves as a moisture barrier (‘694, FIG. 5) (‘694, Paragraph [0064]). However, Andreae et al. is silent regarding the at least one coating layer that serves as a moisture barrier and is made of PLA that completely encases the capsule body over the capsule body and comprises at least one polyvinyl alcohol and/or a polyvinyl alcohol copolymer. Andreae et al. is also silent regarding the at least one first coating layer having a thickness of from 0.5 to 10 µm.
Monforton et al. discloses a beverage container (package containing a beverage) (‘571, Paragraph [0069]) comprising a container body (package 200) composed of at least one polysaccharide (starches) (‘571, Paragraph [0029]) containing dry food powders (‘571, Paragraph [0021]). The container body (package 200) is completely encased over the container body inner or outer surface by at least one first coating layer (first outer layer 20 and second outer layer 30) (‘571, FIG. 2) (‘571, Paragraph [0073]). Monforton et al. further discloses the at least one first coating layer (first outer layer 20 and second outer layer 30) comprising at least one polyvinyl alcohol (PVOH) in combination with polylactic acid (‘571, Paragraph [0053]).
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Both Andreae et al. and Monforton et al. are directed towards the same field of endeavor of beverage containers made of multilayered polymers having at least one first coating layer made with at least polylactic acid that serves as a moisture barrier. Andreae et al. discloses the at least one coating layer made of PLA that entirely encases the capsule body over the capsule body inner or outer surface to serve as a moisture barrier (‘694, FIG. 5) (‘694, Paragraph ([0064]). Monforton et al. discloses at least one coating layer (first outer layer 20 and second outer layer 30) comprising polylactic acid (PLA) in combination with at least one polyvinyl alcohol (‘571, Paragraph [0053]) wherein the at least one coating layer (first outer layer 20 and second outer layer 30) serves as one or both of the outer layers of a multilayer moisture barrier (‘571, Paragraph [0062]). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beverage container that uses only polylactic acid as the at least one coating layer that serves as a moisture barrier to be made out of polylactic acid in combination with polyvinyl alcohol as taught by Monforton et al. since the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Monforton et al. teaches that there was known utility in the beverage container art to use polyvinyl alcohol as a material in the construction of at least one coating layer that entirely encases a beverage container body over the container body inner or outer surface that has moisture barrier properties.
Further regarding Claim 1, Monforton et al. discloses the at least one first coating layer (first outer layer 20 and second outer layer 30) having any suitable thickness such as from about 0.0001” to about 0.001” each (‘571, Paragraph [0057]), which converts to about 2.54 µm to about 25.4 µm, which overlaps the claimed at least one coating layer thickness of from 0.5 to 10 µm. The first and outer layer is formed of polyvinyl alcohol and polylactic acid (‘571, Paragraph [0053]). Where the claimed thickness of the at least one polyvinyl alcohol containing coating layer ranges overlaps thicknesses of the at least one first coating layer ranges disclosed by the prior art, a prima facie case of obviousness exists in view of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05.I.).
Further regarding Claim 1, Andreae et al. discloses the capsule body being filled with coffee (‘694, Paragraphs [0055] and [0065]). However, Andreae et al. modified with Monforton et al. is silent regarding the coffee that fills the capsule body being a coffee that is a polysaccharide containing material and the coffee being in powder form.
Mintus et al. discloses a capsule comprising a capsule body filled with a polysaccharide containing material (coffee powder coated with polysaccharides of starch) wherein the coffee is a coffee powder (‘546, Paragraphs [0005], [0011], [0017], and [0019]).
Both modified Andreae et al. and Mintus et al. are directed towards the same field of endeavor of coffee capsules filled with coffee. Andreae et al. discloses a capsule comprising a housing filled with ground coffee (‘694, Paragraphs [0004], [0039], and [0055]). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the capsule containing coffee of Andreae et al. and incorporate into the capsule body coffee that is coated with a starch polysaccharide and the coffee being a coffee powder as taught by Mintus et al. since the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Mintus et al. teaches that there was known utility in the coffee capsule art to incorporate both a coffee powder and a starch based polysaccharide that coats coffee within the capsule body.
Further regarding Claim 1, Andreae et al. modified with Monforton et al. and Mintus et al. is silent regarding the at least one first coating layer of PVOH having a weight average molecular weight measured by gel permeation chromatography using a polystyrene standard of from 9000 to 120000 g/mol wherein the at least one polyvinyl alcohol or polyvinyl alcohol copolymer has a viscosity of 3 to 110 mPa*s in a 4% aqueous solution at 20°C.
Khan et al. discloses a food container comprising a barrier coating (‘326, Paragraphs [0036]-[0037]) made of polyvinyl alcohol and ethylene vinyl copolymers (‘326, Paragraph [0039]) having a weight average molecular weight (Mw) distribution as measured by gel permeation chromatography of < 16000 Da (‘326, Paragraph [0053]) which converts to < 16000 g/mol using the conversion that 1 Da is equal to 1 g/mol, which overlaps the claimed polyvinyl alcohol copolymer having a weight average molecular weight measured by gel permeation of from 9000 to 120000 g/mol. Khan et al. also discloses the at least one polyvinyl alcohol or polyvinyl alcohol copolymer having a viscosity of less than 4 mPa*s in a 4% aqueous solution at 20°C, (‘326, Paragraph [0053]), which overlaps the claimed at least one polyvinyl alcohol or polyvinyl alcohol copolymer having a viscosity of 3 to 110 mPa*s in a 4% aqueous solution at 20°C. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the weight average molecular weight of the at least one first coating layer of PVOH and to modify the viscosity of the at least one polyvinyl alcohol or polyvinyl alcohol copolymer to fall within the claimed weight average molecular weight and viscosity as taught by Khan et al. since where the claimed weight average molecular weight and viscosity of the at least one first coating layer of PVOH ranges overlaps weight average molecular weight and viscosity of the at least one first coating layer of PVOH disclosed by the prior art, a prima facie case of obviousness exists in view of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05.I.). Furthermore, Khan et al. teaches that low molecular weight polyvinyl alcohol and ethylene vinyl alcohol copolymer solutions in aqueous blends produce faster drying barrier coating formulations (‘326, Paragraph [0002]). Differences in the weight average molecular weight of the at least one first coating layer of PVOH will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such weight average molecular weight of the at least one first coating layer of PVOH is critical. One of ordinary skill in the art would also adjust the weight average molecular weight of the polyvinyl alcohol copolymer of modified Andreae et al. based upon the desired drying rates of the coating formulation as suggested to Khan et al.
Alternatively regarding Claim 1 with respect to the limitations regarding the weight average molecular weight of the at least one polyvinyl alcohol, Labeque et al. discloses a capsule (pouch) comprising a capsule body composed of at least one first coating layer (a water soluble film including a polyvinyl alcohol resin blend) (‘308, Paragraph [0001]) wherein it is known in the art that the viscosity of a water soluble polymer such as PVOH is correlated with the weight average molecular weight of the same polymer and often the viscosity is used as a proxy wherein the weight average molecular weight of the PVOH polymer can be in a range of about 30000 to about 175000 (‘308, Paragraph [0075]), which overlaps the claimed weight average molecular weight of from 9000 to 120000 g/mol. It is noted that Khan et al. discloses the weight average molecular weight is measured by gel permeation chromatography in an appropriate eluent (‘326, Paragraph [0053]). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the weight average molecular weight of the at least one first coating layer of PVOH to fall within the claimed weight average molecular weight as taught by Khan et al. and Labeque et al. since where the claimed weight average molecular weight of the at least one first coating layer of PVOH ranges overlaps weight average molecular weight of the at least one first coating layer of PVOH disclosed by the prior art, a prima facie case of obviousness exists in view of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05.I.).
Further regarding Claim 1, in the event that it can be argued that Khan et al. and Labeque et al. does not disclose the measurement standards at which the weight average molecular weight being measured by gel permeation chromatography using specifically a polystyrene standard and only discloses measurement using a generic eluent and does not necessarily teach the claimed weight average molecular weight using the claimed polystyrene standard, Labeque et al. also teaches it is known in the art that the viscosity of a water soluble polymer such as PVOH is correlated with the weight average molecular weight of the same polymer and often the viscosity is used as a proxy (‘308, Paragraph [0075]). Differences in the weight average molecular weight of the at least one first coating layer of PVOH will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such weight average molecular weight of the at least one first coating layer of PVOH is critical. One of ordinary skill in the art would adjust the weight average molecular weight of the at least one first coating layer of PVOH based upon the desired viscosity of PVOH used.
Additionally, Khan et al. teaches that low molecular weight polyvinyl alcohol and ethylene vinyl alcohol copolymer solutions in aqueous blends produce faster drying barrier coating formulations (‘326, Paragraph [0002]). Differences in the weight average molecular weight of the at least one first coating layer of PVOH will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such weight average molecular weight of the at least one first coating layer of PVOH is critical. One of ordinary skill in the art would adjust the weight average molecular weight of the polyvinyl alcohol copolymer based upon the desired drying rates of the coating formulation.
Further regarding Claim 1, Andreae et al. modified with Monforton et al., Mintus et al., Khan et al., and Lebeque et al. is silent regarding the at least one first coating layer comprising polyvinyl alcohol having a gas permeability of less than 3 cm3/m2/day/1.01325 MPa at a layer thickness of 1 µm.
Neuman et al. discloses a sheet used to make packaging articles useful to package solid and liquid food substances (‘867, Paragraph [0101]) wherein the sheet is a multilayered biodegradable sheet having a barrier layer that reduces gas permeation rate (‘867, Paragraph [0120]) wherein the biodegradable sheet includes a gas barrier material of polyvinyl alcohol (PVOH), which is a highly polar gas barrier material that exhibits weak interaction with low polarity gases of oxygen and carbon dioxide and which reduces the permeability of gases through the sheet and the PVOH is modified with any appropriate crosslinker to better compatibilize it with the other polymer layers (‘867, Paragraph [0136]).
Both modified Andreae et al. and Neuman et al. are directed towards the same field of endeavor of multilayered food packages comprising at least one barrier coating layer made of polyvinyl alcohol (‘694, Paragraph [0009]) (‘867, Paragraphs [0101] and [0136]). Applicant discloses the at least one first coating layer having a low gas permeability (Specification, Page 3, lines 25-27). Although Neuman et al. does not explicitly teach the exact low gas permeability as claimed, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the gas permeability of the at least one first barrier coating layer of PVOH of modified Andreae et al. to be reduced/low where gas permeability is undesirable as taught by Neuman et al. in order to prevent oxidation of the contents of the capsule. Furthermore, differences in the gas permeability of the at least one coating layer of PVOH will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such gas permeability of the at least one coating layer of PVOH is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the gas permeability of the at least one first barrier coating layer of modified Andreae et al. to be sufficiently low to prevent oxidation of the interior contents of the multilayered food package.
Further regarding Claim 1, the limitations “in a coffee machine by introducing water into the capsule” are seen to be recitations regarding the intended use of the “capsule.” In this regard, applicant’s attention is invited to MPEP § 2114.I. and MPEP § 2114.II. which states features of an apparatus may be recited either structurally or functionally in view of In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima facie case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possess the functionally defined limitations of the claimed apparatus in view of In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40,100 USPQ2d 1433, 1440 (Fed. Cir. 2011). The burden then shifts to applicant to establish that the prior art does not possess the characteristic relied on in view of In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432; In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 228 (CCPA 1971). Additionally, apparatus claims cover what a device is, not what a device does in view of Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claimed in view of Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Furthermore, if the prior art structure is capable of performing the intended use, then it meets the claim. Nevertheless, Andreae et al. discloses using the capsule in a capsule holder of a coffee machine wherein hot water is passed into the capsule holder and into the capsule (‘694, Paragraphs [0071]-[0072]).
Regarding Claim 5, Neuman et al. discloses a sheet used to make packaging articles useful to package solid and liquid food substances (‘867, Paragraph [0101]) wherein the sheet is a multilayered biodegradable sheet having a barrier layer that reduces gas permeation rate (‘867, Paragraph [0120]) wherein the biodegradable sheet includes a gas barrier material of polyvinyl alcohol (PVOH), which is a highly polar gas barrier material that exhibits weak interaction with low polarity gases of oxygen and carbon dioxide and which reduces the permeability of gases through the sheet and the PVOH is modified with any appropriate crosslinker to better compatibilize it with the other polymer layers (‘867, Paragraph [0136]).
Both modified Andreae et al. and Neuman et al. are directed towards the same field of endeavor of multilayered food packages comprising at least one barrier coating layer made of polyvinyl alcohol (‘694, Paragraph [0009]) (‘867, Paragraphs [0101] and [0136]). Applicant discloses the at least one first coating layer having a low gas permeability (Specification, Page 3, lines 25-27). Although Neuman et al. does not explicitly teach the exact low gas permeability as claimed, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the gas permeability of the at least one barrier coating layer of PVOH of modified Andreae et al. to be reduced/low where gas permeability is undesirable as taught by Neuman et al. in order to prevent oxidation of the contents of the capsule. Furthermore, differences in the gas permeability of the at least one coating layer of PVOH will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such gas permeability of the at least one coating layer of PVOH is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the gas permeability of the at least one first barrier coating layer of modified Andreae et al. to be sufficiently low to prevent oxidation of the interior contents of the multilayered food package.
Regarding Claim 6, Monforton et al. discloses the at least one coating layer (first outer layer 20 and second outer layer 30) comprising 2 layers wherein each comprises at least one polyvinyl alcohol (‘571, FIG. 2) (‘571, Paragraph [0073]). The disclosure of 2 layers of the at least one coating layer (first outer layer 20 and second outer layer 30) falls within the claimed at least one first coating layer comprising 1 to 5 layers.
Regarding Claim 7, Andreae et al. discloses the at least one first coating layer (material layers 25, 26) (‘694, FIG. 5) (‘694, Paragraph [0064]) being coated with at least one second coating layer (coating of additional material layer) wherein the at least one second coating layer (coating of additional material layer) comprises a polysaccharide (cellulose) (‘694, Paragraph [0007]).
Regarding Claim 8, Andreae et al. discloses the at least one second coating layer (additional moisture impermeable coating material layer) being a polysaccharide that is cellulose (‘694, Paragraph [0007]) wherein the barrier layer has a crosslinking agent (‘694, Paragraph [0012]).
Regarding Claim 10, Andreae et al. discloses the at least one second coating layer (additional moisture impermeable coating material layer) (‘694, Paragraph [0007]) comprising fibers (‘694, Paragraph [0008]).
Regarding Claim 12, Andreae et al. discloses the capsule body being composed of one or more layers of crosslinked polysaccharide (‘694, Paragraphs [0007], [0012], and [0027]).
Regarding Claim 13, Mintus et al. discloses the capsule body being filled with polysaccharide containing material in the form of a pellet (sugarcoated coffee powder or tablet) (‘546, Paragraphs [0038]-[0039]).
Regarding Claim 17, Andreae et al. discloses the fibers being cellulose fibers (‘694, Paragraphs [0027] and [0029]).
Regarding Claim 21, the limitations “wherein the pellet was obtained by pressing at a pressure of 0.01 to 1000 MPa” are product by process limitations. Even though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process in view of In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (MPEP § 2113.I.).
Claims 9, 16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Andreae et al. US 2017/0008694 in view of Monforton et al. US 2019/0077571, Mintus et al. US 2015/0104546, Khan et al. US 2016/0024326, Labeque et al. US 2017/0298308, and Neuman et al. US 2015/0174867 as applied to claim 8 or claim 12 above in further view of Massey et al. US 2013/0142915.
Regarding Claims 9 and 16, Andreae et al. discloses the at least one second coating layer (additional moisture impermeable coating material layer) being a polysaccharide (‘694, Paragraph [0007]). However, Andreae et al. modified with Monforton et al., Mintus et al., Khan et al., Lebeque et al., and Neuman et al. is silent regarding the polysaccharide of the at least one second coating layer being an alkaline earth metal alginate. Applicant discloses that calcium is a type of alkaline earth metal alginate (Specification, Page 5, lines 25-26).
Massey et al. discloses a capsule comprising a capsule body composed of at least one polysaccharide of a coating layer made with an alkaline earth metal alginate (calcium alginate) (‘915, Paragraph [0062]).
Both modified Andreae et al. and Massey et al. are directed towards the same field of endeavor of capsules comprising a capsule body composed of at least one polysaccharide and at least one first coating layer. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the capsule of modified Andreae et al. and incorporate an alkaline earth calcium alginate as the polysaccharide material of the at least one second coating layer as taught by Massey et al. since the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Massey et al. teaches that there was known utility in the coffee capsule art to incorporate an alkaline earth calcium alginate as the polysaccharide material that constitutes the barrier coating layer.
Regarding Claim 20, Andreae et al. discloses the at least one second coating layer (additional moisture impermeable coating material layer) being a polysaccharide (‘694, Paragraph [0007]) wherein the barrier layer has a crosslinking agent (‘694, Paragraph [0012]). However, Andreae et al. modified with Monforton et al., Mintus et al., Khan et al., Lebeque et al., and Neuman et al. is silent regarding the crosslinked polysaccharide of the capsule body being an alginate. Applicant discloses that calcium is a type of alkaline earth metal alginate (Specification, Page 5, lines 25-26).
Massey et al. discloses a capsule comprising a capsule body composed of at least one polysaccharide of a coating layer made with an alkaline earth metal alginate (calcium alginate) (‘915, Paragraph [0062]).
Both modified Andreae et al. and Massey et al. are directed towards the same field of endeavor of capsules comprising a capsule body composed of at least one polysaccharide and at least one first coating layer. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the capsule of modified Andreae et al. and incorporate an alginate as the crosslinked polysaccharide material of the capsule body as taught by Massey et al. since the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Massey et al. teaches that there was known utility in the coffee capsule art to incorporate an alginate as the polysaccharide material of the capsule body.
Claims 11 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Andreae et al. US 2017/0008694 in view of Monforton et al. US 2019/0077571, Mintus et al. US 2015/0104546, Khan et al. US 2016/0024326, Labeque et al. US 2017/0298308, and Neuman et al. US 2015/0174867 as applied to claim 1 above in further view of Halabisky US 2004/0213930.
Regarding Claim 11, Andreae et al. discloses the capsule body being made from polysaccharides (‘694, Paragraph [0027]). Andreae et al. modified with Monforton et al., Mintus et al., Khan et al., Lebeque et al., and Neuman et al. is silent regarding the capsule body being composed of one or more layers of uncrosslinked polysaccharide.
Halabisky discloses a container capable of holding hot coffee (‘930, Paragraph [0021]) made from polysaccharides (cellulose or paperboard) (‘930, Paragraph [0005]) comprising a layer of noncrosslinked fibers (‘930, Paragraph [0017]).
Both modified Andreae et al. and Halabisky are directed towards the same field of endeavor of coffee containers capable of holding hot coffee wherein the container body is made out of cellulose and/or paper polysaccharides. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the container of modified Andreae et al. and construct the capsule body out of one or more layers of uncrosslinked polysaccharides as taught by Halabisky since the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Halabisky teaches that there was known utility in the coffee container art to construct the container body out of one or more layers of uncrosslinked polysaccharides. Furthermore, noncrosslinked polysaccharides provide a smooth, denser, less porous surface (‘930, Paragraph [0017]).
Regarding Claims 18-19, Andreae et al. discloses the polysaccharide being cellulose and/or paper and/or cardboard (‘694, Paragraphs [0026]-[0027]). Halabisky discloses the polysaccharides being noncrosslinked (‘930, Paragraph [0017]) wherein the polysaccharides are cellulose or paperboard (‘930, Paragraph [0004]).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Andreae et al. US 2017/0008694 in view of Monforton et al. US 2019/0077571, Mintus et al. US 2015/0104546, Khan et al. US 2016/0024326, Labeque et al. US 2017/0298308, and Neuman et al. US 2015/0174867 as applied to claim 13 above in further view of Hudson et al. US 3,511,666.
Regarding Claim 21, the limitations “wherein the pellet was obtained by pressing at a pressure of 0.01 to 1000 MPa” are product by process limitations and are rejected using the rationale regarding product by process limitations enumerated above. However, in the event that it can be shown that the particular process results in a materially different pellet product, Hudson et al. discloses a coffee material formed as a pellet (‘666, Column 1, lines 14-16). Hudson et al. further discloses the pellet being obtained by pressing at a pressure of between 8000 to 16000 psi (‘666, Column 2, lines 36-50), which converts to about 55 MPa to about 110 MPa, which falls within the claimed pressing pressure of 0.01 to 1000 MPa.
Both modified Andreae et al. as well as Hudson et al. are directed towards the same field of endeavor of coffee powders/pellets. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process at which the coffee pellet was obtained to press at the claimed pressure as taught by Hudson et al. since where the claimed pressure at which the coffee pellet was pressed ranges encompasses pressures at which the coffee pellet was pressed ranges disclosed by the prior art, a prima facie case of obviousness exists in view of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05.I.). Furthermore, Hudson et al. teaches the pressure being controlled to yield a pellet of sufficient hardness to prevent breakage but not too great so as to cause pellet capping and that the actual pressure used varies with temperature and moisture of the coffee, the blend, the rate of speed of pelletizing, and the amount of degassing (‘666, Column 2, lines 36-50). Differences in the pressure at which the coffee pellet is pressed will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such pressure at which the coffee pellet is pressed is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable pressure ranges by routine experimentation in view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the pressure at which the coffee pellet is pressed based upon the temperature and moisture of the coffee, the blend, the rate of speed of pelletizing, and the amount of degassing.
Claims 1, 5-8, 10, 12-13, 17, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Andreae et al. US 2017/0008694 in view of Monforton et al. US 2019/0077571, Mintus et al. US 2015/0104546, Khan et al. US 2016/0024326, Labeque et al. US 2017/0298308, Neuman et al. US 2015/0174867 and Nickel EP 3 225 566 (cited on Information Disclosure Statement filed November 3, 2021).
It is noted that the Information Disclosure Statement filed November 3, 2021 filed by applicant indicates that Nickel EP 3 225 566 is equivalent to the USPGPUB of Nickel US 2019/0144199, which is also cited on the Information Disclosure Statement filed November 3, 2021. Nickel EP 3 225 566 has a publication date of October 4, 2017, which predates the foreign filing date of May 7, 2019 of the instant application. All citations in the Office Action are with respect to the English equivalent Nickel US 2019/0144199.
Regarding Claim 1, Andreae et al. modified with Monforton et al., Mintus et al., Lebeque et al., and Neuman et al. renders Claim 1 obvious as discussed in the rejections above. However, in the event that it can be argued that Andreae et al. modified with Monforton et al., Mintus et al., Khan et al., Lebeque et al., and Neuman et al. does not necessarily teach the capsule body being entirely encased by the at least one coating layer, Nickel discloses a capsule comprising a capsule body (capsule body 2) composed of at least one polysaccharide and filled with a polysaccharide containing material (‘199, Paragraph [0007]). Nickel further discloses the capsule body (capsule body 2) being entirely encased by at least one first coating layer (coating layer 3) (‘199, Paragraphs [0023] and [0053]).
Both modified Andreae et al. and Nickel are directed towards the same field of endeavor of coffee capsules comprising a capsule body (housing 22) composed of at least one polysaccharide (starch) (‘694, Paragraphs [0007], [0009], and [0027]) and filled with a polysaccharide containing material. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the at least one first coating layer of the capsule body of modified Andreae et al. and entirely encase the capsule body by the at least one first coating layer since Nickel teaches that is was known in the coffee capsule art to completely encase the capsule body on all sides by a coating layer (‘199, Paragraph [0054]). It is noted that Claim 1 does not specify whether or not the polysaccharide is crosslinked or uncrosslinked.
Regarding Claim 5, Neuman et al. discloses a sheet used to make packaging articles useful to package solid and liquid food substances (‘867, Paragraph [0101]) wherein the sheet is a multilayered biodegradable sheet having a barrier layer that reduces gas permeation rate (‘867, Paragraph [0120]) wherein the biodegradable sheet includes a gas barrier material of polyvinyl alcohol (PVOH), which is a highly polar gas barrier material that exhibits weak interaction with low polarity gases of oxygen and carbon dioxide and which reduces the permeability of gases through the sheet and the PVOH is modified with any appropriate crosslinker to better compatibilize it with the other polymer layers (‘867, Paragraph [0136]).
Both modified Andreae et al. and Neuman et al. are directed towards the same field of endeavor of multilayered food packages comprising at least one barrier coating layer made of polyvinyl alcohol (‘694, Paragraph [0009]) (‘867, Paragraphs [0101] and [0136]). Applicant discloses the at least one first coating layer having a low gas permeability (Specification, Page 3, lines 25-27). Although Neuman et al. does not explicitly teach the exact low gas permeability as claimed, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the gas permeability of the at least one barrier coating layer of PVOH of modified Andreae et al. to be reduced/low where gas permeability is undesirable as taught by Neuman et al. in order to prevent oxidation of the contents of the capsule. Furthermore, differences in the gas permeability of the at least one coating layer of PVOH will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such gas permeability of the at least one coating layer of PVOH is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the gas permeability of the at least one first barrier coating layer of modified Andreae et al. to be sufficiently low to prevent oxidation of the interior contents of the multilayered food package.
Regarding Claim 6, Monforton et al. discloses the at least one coating layer (first outer layer 20 and second outer layer 30) comprising 2 layers wherein each comprises at least one polyvinyl alcohol (‘571, FIG. 2) (‘571, Paragraph [0073]). The disclosure of 2 layers of the at least one coating layer (first outer layer 20 and second outer layer 30) falls within the claimed at least one first coating layer comprising 1 to 5 layers.
Regarding Claim 7, Andreae et al. discloses the at least one polyvinyl alcohol containing coating layer (PVOH layer 27) (‘694, FIG. 5) (‘694, Paragraph [0064]) being coated with at least one second layer (coating of additional material layer) wherein the at least one coating layer (coating of additional material layer) comprises a polysaccharide (cellulose) (‘694, Paragraph [0007]).
Regarding Claim 8, Andreae et al. discloses the at least one coating layer (additional moisture impermeable coating material layer) being a polysaccharide that is cellulose (‘694, Paragraph [0007]) wherein the barrier layer has a crosslinking agent (‘694, Paragraph [0012]).
Regarding Claim 10, Andreae et al. discloses the at least one polysaccharide containing coating layer (additional moisture impermeable coating material layer) (‘694, Paragraph [0007]) comprising fibers (‘694, Paragraph [0008]).
Regarding Claim 12, Andreae et al. discloses the capsule body being composed of one or more layers of crosslinked polysaccharide (‘694, Paragraphs [0007], [0012], and [0027]).
Regarding Claim 13, Mintus et al. discloses the capsule body being filled with polysaccharide containing material in the form of a pellet (sugarcoated coffee powder or tablet) (‘546, Paragraphs [0038]-[0039]).
Regarding Claim 17, Andreae et al. discloses the fibers being cellulose fibers (‘694, Paragraphs [0027] and [0029]).
Regarding Claim 21, the limitations “wherein the pellet was obtained by pressing at a pressure of 0.01 to 1000 MPa” are product by process limitations. Even though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process in view of In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (MPEP § 2113.I.).
Claims 9, 16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Andreae et al. US 2017/0008694 in view of Monforton et al. US 2019/0077571, Mintus et al. US 2015/0104546, Khan et al. US 2016/0024326, Labeque et al. US 2017/0298308, Neuman et al. US 2015/0174867, and Nickel EP 3 225 566 (cited on Information Disclosure Statement filed November 3, 2021) as applied to claim 1 above in further view of Massey et al. US 2013/0142915.
It is noted that the Information Disclosure Statement filed November 3, 2021 filed by applicant indicates that Nickel EP 3 225 566 is equivalent to the USPGPUB of Nickel US 2019/0144199, which is also cited on the Information Disclosure Statement filed November 3, 2021. Nickel EP 3 225 566 has a publication date of October 4, 2017, which predates the foreign filing date of May 7, 2019 of the instant application. All citations in the Office Action are with respect to the English equivalent Nickel US 2019/0144199.
Regarding Claims 9 and 16, Andreae et al. discloses the at least one second coating layer (additional moisture impermeable coating material layer) being a polysaccharide (‘694, Paragraph [0007]). However, Andreae et al. modified with Monforton et al., Mintus et al., Khan et al., Lebeque et al., Neuman et al. and Nickel is silent regarding the polysaccharide of the at least one second coating layer being an alkaline earth metal alginate. Applicant discloses that calcium is a type of alkaline earth metal alginate (Specification, Page 5, lines 25-26).
Massey et al. discloses a capsule comprising a capsule body composed of at least one polysaccharide of a coating layer made with an alkaline earth metal alginate (calcium alginate) (‘915, Paragraph [0062]).
Both modified Andreae et al. and Massey et al. are directed towards the same field of endeavor of capsules comprising a capsule body composed of at least one polysaccharide and at least one first coating layer. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the capsule of modified Andreae et al. and incorporate an alkaline earth calcium alginate as the polysaccharide material of the at least one second coating layer as taught by Massey et al. since the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Massey et al. teaches that there was known utility in the coffee capsule art to incorporate an alkaline earth calcium alginate as the polysaccharide material that constitutes the barrier coating layer.
Regarding Claim 20, Andreae et al. discloses the at least one second coating layer (additional moisture impermeable coating material layer) being a polysaccharide (‘694, Paragraph [0007]) wherein the barrier layer has a crosslinking agent (‘694, Paragraph [0012]). However, Andreae et al. modified with Monforton et al., Mintus et al., Khan et al., Lebeque et al., Neuman et al., and Nickel is silent regarding the crosslinked polysaccharide of the capsule body being an alginate. Applicant discloses that calcium is a type of alkaline earth metal alginate (Specification, Page 5, lines 25-26).
Massey et al. discloses a capsule comprising a capsule body composed of at least one polysaccharide of a coating layer made with an alkaline earth metal alginate (calcium alginate) (‘915, Paragraph [0062]).
Both modified Andreae et al. and Massey et al. are directed towards the same field of endeavor of capsules comprising a capsule body composed of at least one polysaccharide and at least one first coating layer. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the capsule of modified Andreae et al. and incorporate an alginate as the crosslinked polysaccharide material of the capsule body as taught by Massey et al. since the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Massey et al. teaches that there was known utility in the coffee capsule art to incorporate an alginate as the polysaccharide material of the capsule body.
Claims 11 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Andreae et al. US 2017/0008694 in view of Monforton et al. US 2019/0077571, Mintus et al. US 2015/0104546, Khan et al. US 2016/0024326, Labeque et al. US 2017/0298308, Neuman et al. US 2015/0174867, and Nickel EP 3 225 566 (cited on Information Disclosure Statement filed November 3, 2021) as applied to claim 1 above in further view of Halabisky US 2004/0213930.
It is noted that the Information Disclosure Statement filed November 3, 2021 filed by applicant indicates that Nickel EP 3 225 566 is equivalent to the USPGPUB of Nickel US 2019/0144199, which is also cited on the Information Disclosure Statement filed November 3, 2021. Nickel EP 3 225 566 has a publication date of October 4, 2017, which predates the foreign filing date of May 7, 2019 of the instant application. All citations in the Office Action are with respect to the English equivalent Nickel US 2019/0144199.
Regarding Claim 11, Andreae et al. discloses the capsule body being made from polysaccharides (‘694, Paragraph [0027]). Andreae et al. modified with Monforton et al., Mintus et al., Khan et al., Lebeque et al., Neuman et al., and Nickel is silent regarding the capsule body being composed of one or more layers of uncrosslinked polysaccharide.
Halabisky discloses a container capable of holding hot coffee (‘930, Paragraph [0021]) made from polysaccharides (cellulose or paperboard) (‘930, Paragraph [0005]) comprising a layer of noncrosslinked fibers (‘930, Paragraph [0017]).
Both modified Andreae et al. and Halabisky are directed towards the same field of endeavor of coffee containers capable of holding hot coffee wherein the container body is made out of cellulose and/or paper polysaccharides. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the container of modified Andreae et al. and construct the capsule body out of one or more layers of uncrosslinked polysaccharides as taught by Halabisky since the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Halabisky teaches that there was known utility in the coffee container art to construct the container body out of one or more layers of uncrosslinked polysaccharides. Furthermore, noncrosslinked polysaccharides provide a smooth, denser, less porous surface (‘930, Paragraph [0017]).
Regarding Claims 18-19, Andreae et al. discloses the polysaccharide being cellulose and/or paper and/or cardboard (‘694, Paragraphs [0026]-[0027]). Halabisky discloses the polysaccharides being noncrosslinked (‘930, Paragraph [0017]) wherein the polysaccharides are cellulose or paperboard (‘930, Paragraph [0004]).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Andreae et al. US 2017/0008694 in view of Monforton et al. US 2019/0077571, Mintus et al. US 2015/0104546, Khan et al. US 2016/0024326, Labeque et al. US 2017/0298308, Neuman et al. US 2015/0174867, and Nickel EP 3 225 566 (cited on Information Disclosure Statement filed November 3, 2021) as applied to claim 13 above in further view of Hudson et al. US 3,511,666.
It is noted that the Information Disclosure Statement filed November 3, 2021 filed by applicant indicates that Nickel EP 3 225 566 is equivalent to the USPGPUB of Nickel US 2019/0144199, which is also cited on the Information Disclosure Statement filed November 3, 2021. Nickel EP 3 225 566 has a publication date of October 4, 2017, which predates the foreign filing date of May 7, 2019 of the instant application. All citations in the Office Action are with respect to the English equivalent Nickel US 2019/0144199.
Regarding Claim 21, the limitations “wherein the pellet is obtained by pressing at a pressure of 0.01 to 1000 MPa” are product by process limitations and are rejected using the rationale regarding product by process limitations enumerated above. However, in the event that it can be shown that the particular process results in a materially different pellet product, Hudson et al. discloses a coffee material formed as a pellet (‘666, Column 1, lines 14-16). Hudson et al. further discloses the pellet being obtained by pressing at a pressure of between 8000 to 16000 psi (‘666, Column 2, lines 36-50), which converts to about 55 MPa to about 110 MPa, which falls within the claimed pressing pressure of 0.01 to 1000 MPa.
Both modified Andreae et al. as well as Hudson et al. are directed towards the same field of endeavor of coffee powders/pellets. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process at which the coffee pellet was obtained to press at the claimed pressure as taught by Hudson et al. since where the claimed pressure at which the coffee pellet was pressed ranges encompasses pressures at which the coffee pellet was pressed ranges disclosed by the prior art, a prima facie case of obviousness exists in view of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05.I.). Furthermore, Hudson et al. teaches the pressure being controlled to yield a pellet of sufficient hardness to prevent breakage but not too great so as to cause pellet capping and that the actual pressure used varies with temperature and moisture of the coffee, the blend, the rate of speed of pelletizing, and the amount of degassing (‘666, Column 2, lines 36-50). Differences in the pressure at which the coffee pellet is pressed will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such pressure at which the coffee pellet is pressed is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable pressure ranges by routine experimentation in view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the pressure at which the coffee pellet is pressed based upon the temperature and moisture of the coffee, the blend, the rate of speed of pelletizing, and the amount of degassing.
Response to Arguments
Applicant's arguments filed September 15, 2025 with respect to the obviousness rejections under 35 USC 103(a) have been fully considered but they are not persuasive.
Examiner notes that applicant’s comments on Page 6 of the Remarks merely summarizes applicant’s invention and does not constitute any actual arguments against the prior art combination.
Examiner notes that applicant’s comments on Page 7 and the top of Page 8 of the Remarks merely summarizes claim elements and the corresponding disclosure in applicant’s specification and does not constitute any actual arguments against the prior art combination.
Examiner notes that applicant’s comments on Page 8 and the top of Page 9 of the Remarks merely summarizes the prior art references relied upon in the rejection but does not make any actual arguments on the propriety combination of the prior art references.
Applicant argues on Pages 9-10 of the Remarks that the closest prior art cited is Andreae ‘694 which lacks the disclosure of a capsule body made of at least one polysaccharide entirely encased with a PVOH coating on at least one of the innermost or outermost surface, the at least one polyvinyl alcohol copolymer having a weight average molecular weight of from 9000 to 120000 g/mol, the coating layer having a thickness of 0.5 to 10 µm, the at least one polyvinyl alcohol copolymer having a viscosity of 3 to 110 mPas in a 4% aqueous solution at 20°C, and the coating layer having a gas permeability of less than 3 cm3/m2/day/1.01325 MPa.
Examiner notes that the rejections of Claim 1 is an obviousness based rejection under 35 USC 103(a) using the combination of the primary reference of Andreae et al. modified with the secondary references of Monforton et al., Mintus et al., Khan et al., Labeque et al., and Neuman et al. and/or Nickel. These arguments do not specifically and distinctly point out the supposed errors of the Office Action. Applicant makes a general comment that Andrea lacks the disclosure of several limitations. However, Andreae is not the only reference being relied upon in the obviousness rejection. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Therefore, this argument is not found persuasive.
Applicant argues on Page 10 of the Remarks that the analysis of Examiner is based on an ex post facto analysis. Applicant contends that Andreae discloses the PVOH barrier is sensitive to moisture and accordingly enclosed by a dimensionally stable protective support layer and allegedly teaches away from a PVOH layer as an innermost or outer most layer that is easy to process. Applicant continues that Monforton does not mention the purposes of a gas barrier at least and that a moisture barrier and a gas barrier require different, non-comparable properties and that Monforton does not provide an incentive to combine the disclosure with Andreae in order to provide an oxygen barrier.
Examiner argues Claim 1 does not recite the limitation “a gas barrier.” The only limitation that could potentially be construed as “a gas barrier” are the limitations “wherein the at least one first coating layer has a gas permeability of less than 3 cm3/m2/day/1.01325 MPa at a layer thickness of 1 µm.” These limitations with respect to the claimed gas permeability are rendered obvious by the secondary reference of Newman et al. that teaches the sheet is a multilayered biodegradable sheet having a barrier layer that reduces gas permeation rate (‘867, Paragraph [0120]) wherein the biodegradable sheet includes a gas barrier material of polyvinyl alcohol (PVOH), which is a highly polar gas barrier material that exhibits weak interaction with low polarity gases of oxygen and carbon dioxide and which reduces the permeability of gases through the sheet and the PVOH is modified with any appropriate crosslinker to better compatibilize it with the other polymer layers (‘867, Paragraph [0136]). Monforton is not being relied upon to teach the limitations of the unclaimed “gas barrier” or render obvious the limitations regarding the gas permeability of the coating layer associated with gas barrier properties. With respect to the reliance of Monforton that teaches using the PVOH layer as an innermost or outer most layer that is easy to process, it is first noted that Claim 1 does not recite “easy to process” or indicate or suggest processability of PVOH. Claim 1 merely recites “the capsule body being entirely encased by at least one first coating layer over at least one of the innermost or outermost surface, the at least one first coating layer comprising at least one of a polyvinyl alcohol or a polyvinyl alcohol copolymer.” Andreae et al. discloses the capsule body being made with a PVOH layer that acts as an oxygen barrier wherein the PVOH oxygen barrier layer is completely encased by at least one coating layer (PLA layers 25, 26) that serves as a moisture barrier (‘694, FIG. 5) (‘694, Paragraph [0064]). However, Andreae et al. is silent regarding the at least one coating layer that serves as a moisture barrier and is made of PLA that completely encases the capsule body over the capsule body and comprises at least one polyvinyl alcohol and/or a polyvinyl alcohol copolymer. Andreae et al. is also silent regarding the at least one first coating layer having a thickness of from 0.5 to 10 µm. Monforton et al. discloses a beverage container (package containing a beverage) (‘571, Paragraph [0069]) comprising a container body (package 200) composed of at least one polysaccharide (starches) (‘571, Paragraph [0029]) containing dry food powders (‘571, Paragraph [0021]). The container body (package 200) is completely encased over the container body inner or outer surface by at least one first coating layer (first outer layer 20 and second outer layer 30) (‘571, FIG. 2) (‘571, Paragraph [0073]). Monforton et al. further discloses the at least one first coating layer (first outer layer 20 and second outer layer 30) comprising at least one polyvinyl alcohol (PVOH) in combination with polylactic acid (‘571, Paragraph [0053]). Both Andreae et al. and Monforton et al. are directed towards the same field of endeavor of beverage containers made of multilayered polymers having at least one first coating layer made with at least polylactic acid that serves as a moisture barrier. Andreae et al. discloses the at least one coating layer made of PLA that entirely encases the capsule body over the capsule body inner or outer surface to serve as a moisture barrier (‘694, FIG. 5) (‘694, Paragraph ([0064]). Monforton et al. discloses at least one coating layer (first outer layer 20 and second outer layer 30) comprising polylactic acid (PLA) in combination with at least one polyvinyl alcohol (‘571, Paragraph [0053]) wherein the at least one coating layer (first outer layer 20 and second outer layer 30) serves as one or both of the outer layers of a multilayer moisture barrier (‘571, Paragraph [0062]). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beverage container that uses only polylactic acid as the at least one coating layer that serves as a moisture barrier to be made out of polylactic acid in combination with polyvinyl alcohol as taught by Monforton et al. since the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Monforton et al. teaches that there was known utility in the beverage container art to use polyvinyl alcohol as a material in the construction of at least one coating layer that entirely encases a beverage container body over the container body inner or outer surface that has moisture barrier properties. Therefore, this argument is not found persuasive.
Applicant argues on Page 10 of the Remarks that a use of a polyvinyl alcohol and/or al polyvinyl alcohol copolymer with the claimed molecular weight according the present invention is not obvious by a combination of the cited documents. Applicant contends that Labeque et al. teaches away from an impermeable barrier layer disclosing a pouch with a partial permeability and that the skilled person would not consider Labeque et al. with Andreae.
Examiner argues Claim 1 does not recite “partial permeability.“ The only limitation that could potentially be construed as “a partial permeability” are the limitations “wherein the at least one first coating layer has a gas permeability of less than 3 cm3/m2/day/1.01325 MPa at a layer thickness of 1 µm.” These limitations with respect to the claimed gas permeability are rendered obvious by the secondary reference of Newman et al. that teaches the sheet is a multilayered biodegradable sheet having a barrier layer that reduces gas permeation rate (‘867, Paragraph [0120]) wherein the biodegradable sheet includes a gas barrier material of polyvinyl alcohol (PVOH), which is a highly polar gas barrier material that exhibits weak interaction with low polarity gases of oxygen and carbon dioxide and which reduces the permeability of gases through the sheet and the PVOH is modified with any appropriate crosslinker to better compatibilize it with the other polymer layers (‘867, Paragraph [0136]). Labeque is not being relied upon to teach the limitations of the unclaimed “partial permeability” or render obvious the limitations regarding the gas permeability of the coating layer associated with permeability barrier properties. The secondary reference of Labeque is being relied upon to render obvious the limitations regarding the weight average molecular weight of from 9000 to 120000 g/mol of the at least one polyvinyl or polyvinyl alcohol copolymer. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Therefore, this argument is not found persuasive.
Applicant argues on Page 11 of the Remarks that there is no incentive for a combination of Khan and Neuman with Andreae and which combination is obvious in an ex post facto analysis. Applicant argues that the associated effect of drying speed is not relevant for Claim 1 which aims at improving the viscosity.
Examiner argues the secondary reference of Khan is being relied upon to render obvious the limitations regarding the at least one first coating layer of PVOH having a weight average molecular weight measured by gel permeation chromatography using a polystyrene standard of from 9000 to 120000 g/mol wherein the at least one polyvinyl alcohol or polyvinyl alcohol copolymer has a viscosity of 3 to 110 mPa*s in a 4% aqueous solution at 20°C. Khan et al. discloses a food container comprising a barrier coating (‘326, Paragraphs [0036]-[0037]) made of polyvinyl alcohol and ethylene vinyl copolymers (‘326, Paragraph [0039]) having a weight average molecular weight (Mw) distribution as measured by gel permeation chromatography of < 16000 Da (‘326, Paragraph [0053]) which converts to < 16000 g/mol using the conversion that 1 Da is equal to 1 g/mol, which overlaps the claimed polyvinyl alcohol copolymer having a weight average molecular weight measured by gel permeation of from 9000 to 120000 g/mol. Khan et al. also discloses the at least one polyvinyl alcohol or polyvinyl alcohol copolymer having a viscosity of less than 4 mPa*s in a 4% aqueous solution at 20°C, (‘326, Paragraph [0053]), which overlaps the claimed at least one polyvinyl alcohol or polyvinyl alcohol copolymer having a viscosity of 3 to 110 mPa*s in a 4% aqueous solution at 20°C. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the weight average molecular weight of the at least one first coating layer of PVOH and to modify the viscosity of the at least one polyvinyl alcohol or polyvinyl alcohol copolymer to fall within the claimed weight average molecular weight and viscosity as taught by Khan et al. since where the claimed weight average molecular weight and viscosity of the at least one first coating layer of PVOH ranges overlaps weight average molecular weight and viscosity of the at least one first coating layer of PVOH disclosed by the prior art, a prima facie case of obviousness exists in view of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05.I.). Furthermore, Khan et al. teaches that low molecular weight polyvinyl alcohol and ethylene vinyl alcohol copolymer solutions in aqueous blends produce faster drying barrier coating formulations (‘326, Paragraph [0002]). Differences in the weight average molecular weight of the at least one first coating layer of PVOH will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such weight average molecular weight of the at least one first coating layer of PVOH is critical. One of ordinary skill in the art would also adjust the weight average molecular weight of the polyvinyl alcohol copolymer of modified Andreae et al. based upon the desired drying rates of the coating formulation as suggested to Khan et al. With respect to applicant’s argument that the drying speed disclosed by Khan is not relevant to the claimed invention which aims to improve the viscosity, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). It is noted that Khan also teaches overlapping ranges with the claimed polyvinyl alcohol viscosity level in a 4% aqueous solution at 20°C. Therefore, this argument is not found persuasive.
Applicant argues on Page 11 of the Remarks that the sheet disclosed by Neuman is used for packaging solid and liquid food substances and is not intended and not suitable for the preparation of coffee under extraction conditions of about 100°C, 18 bar, 2 minutes according to the common knowledge of a skilled person.
Examiner first notes that Claim 1 recites “A capsule for preparing a beverage in a coffee machine by introducing water into the capsule.” Claim 1 does not specify any particular extraction conditions, extraction temperatures, extraction pressures, and/or extraction times. Furthermore, applicant does not disclose how the claimed capsule is used with a coffee machine. Talon US 2017/0231421 discloses a capsule for preparing a beverage in a coffee machine by introducing water into the capsule at chilled or ambient temperature (‘421, Paragraph [0019]). Mastropasqua et al. US 2017/0217669 discloses a capsule for preparing a beverage in a coffee machine by introducing water into the capsule at low pressure to obtain filtered coffee also known as American or drip brew coffee (‘669, Paragraph [0001]). Heydel et al. US 2016/0137401 also discloses a capsule for preparing a beverage in a coffee machine by introducing water into the capsule at low or atmospheric pressure (‘401, Paragraph [0006]). Doleac et al. US 2013/0115340 discloses a capsule for preparing a beverage in a coffee machine by introducing water into the capsule at high or low pressure extraction conditions and also used for high or low pressure use, which the skilled person is able to choose appropriately (‘340, Paragraph [0052]). Deuber US 2012/0090475 discloses a capsule for preparing a beverage in a coffee machine by introducing water into the capsule at considerable pressure of 5-20 bar or at lower pressure of 1-2 bar depending on the type of beverage made (‘475, Paragraph [0020]). These references indicates that capsules are not always extracted under extraction conditions of about 100°C, 18 bar, 2 minutes. Claim 1 does not require any particular extraction conditions of extraction temperatures and/or extraction pressures. These references indicate that beverage capsules can be used at low temperatures and low pressures. Applicant argues limitations that are not commensurate in scope with the claimed invention. Neuman et al. discloses a sheet used to make packaging articles useful to package solid and liquid food substances (‘867, Paragraph [0101]) wherein the sheet is a multilayered biodegradable sheet having a barrier layer that reduces gas permeation rate (‘867, Paragraph [0120]). Therefore, this argument is not found persuasive.
Applicant argues on Page 11 of the Remarks that Khan does not indicate that PVOH over the whole claimed range is suitable for the application according to the present invention.
Examiner notes that it is unclear what range applicant refers to. Claim 1 recites a range of weight average molecular weight, a range of viscosity, a range of thickness, and a range of gas permeability. Applicant does not specifically and distinctly point out the supposed errors of the Office Action. The secondary reference of Khan is being relied upon to render obvious the ranges of the claimed weight average molecular weight and the claimed viscosity ranges. Khan et al. discloses a food container comprising a barrier coating (‘326, Paragraphs [0036]-[0037]) made of polyvinyl alcohol and ethylene vinyl copolymers (‘326, Paragraph [0039]) having a weight average molecular weight (Mw) distribution as measured by gel permeation chromatography of < 16000 Da (‘326, Paragraph [0053]) which converts to < 16000 g/mol using the conversion that 1 Da is equal to 1 g/mol, which overlaps the claimed polyvinyl alcohol copolymer having a weight average molecular weight measured by gel permeation of from 9000 to 120000 g/mol. Khan et al. also discloses the at least one polyvinyl alcohol or polyvinyl alcohol copolymer having a viscosity of less than 4 mPa*s in a 4% aqueous solution at 20°C, (‘326, Paragraph [0053]), which overlaps the claimed at least one polyvinyl alcohol or polyvinyl alcohol copolymer having a viscosity of 3 to 110 mPa*s in a 4% aqueous solution at 20°C. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the weight average molecular weight of the at least one first coating layer of PVOH and to modify the viscosity of the at least one polyvinyl alcohol or polyvinyl alcohol copolymer to fall within the claimed weight average molecular weight and viscosity as taught by Khan et al. since where the claimed weight average molecular weight and viscosity of the at least one first coating layer of PVOH ranges overlaps weight average molecular weight and viscosity of the at least one first coating layer of PVOH disclosed by the prior art, a prima facie case of obviousness exists in view of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05.I.). Therefore, this argument is not found persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Keuleers et al. US 2018/0037857 discloses a water soluble film comprising a blend of at least two different polyvinyl alcohol homopolymers of different average molecular weights having an absolute average viscosity different from the first PVOH homopolymer and the second PVOH homopolymer measured as a 4% polymer solution in demineralized water in a range of 5 cP to about 15 cP (‘857, Paragraph [0034]).
Lee et al. US 2017/0355938 discloses the viscosity of a PVOH polymer is determined by measuring a freshly made solution using a Brookfield LV type viscometer wherein it is international practice to state the viscosity of 4% aqueous polyvinyl alcohol solutions at 20°C (‘938, Paragraph [0039]).
Gruenbacher US 5,633,026 discloses a tea filter pack which is relatively insensitive to operator placement within a filter holder of a coffee machine which can be used with a wide range of existing coffee filter holders without any need to modify them (‘026, Column 3, lines 66-67) (‘026, Column 4, lines 1-7).
Millikin et al. US 10,485,373 discloses a drip coffee machine having a portafilter including a basket wherein the cannabinoid delivery stem is retained in the basket wherein hot water is directed from the coffee machine during the brewing process to extract coffee flavor from ground coffee placed in the coffee machine as well known in the art which hot water passes through the compartment.
Boileau et al. US 2019/0133366 discloses a machine for the preparation of beverages as well as a method for the utilization of such a machine (‘366, Paragraph [0001]) wherein most beverage preparation machines operate to a system in which beverage ingredients are provided in rigid or semi-rigid capsules which capsule is inserted into the beverage preparation machine adapted to receive it and the beverage preparation machine comprises a means for heating a volume of water combining with the beverage ingredient to make a beverage wherein the beverage preparation machine generally contains a receptacle adapted to the form of the capsule in question and an injection unit comprising an injection needle positioned upon the beverage capsule wherein water is injected at an elevated pressure or simply channeled into the capsule at atmospheric pressure for drip coffee (‘366, Paragraphs [0003]-[0006]).
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/ERICSON M LACHICA/Examiner, Art Unit 1792