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 .
Response to Arguments
Applicant’s arguments filed 13 January 2026 with respect to the rejection of claim 10 under § 112(b), have been fully considered but they are not persuasive.
Regarding the rejection of claims 10–17 under § 112(b), Applicant argues that the solenoid valves of claims 10 and 16 are not inconsistent. Applicant’s argument seems to be that because electric stepper motors also use electromagnets (like the Office argued solenoid valves did), it also qualifies as a solenoid valve (p. 8). Applicant’s argument is unpersuasive. The electromagnetic of a solenoid valve closes or opens by using an electromagnet on a magnetically reactive plunger that acts against a spring, whereas an electric stepper motor valve just uses a stepper motor. The Office apologizes for not considering that stepper motors also have electromagnets, but maintains the rejection since there is a clear delineation between using an activatable electromagnet to perform the opening and closing of a valve, and using a stepper motor which likely happens to have an electromagnet. Furthermore, the definition of what a solenoid valve is readily available, and the Office cannot find a single reliable one that does not involve an electromagnet acting on a plunger that is counteracted upon by a spring or similar biasing element. Applicant may also resolve the issue by showing the Office such a definition.
Applicant’s arguments with respect to the prior art rejection under § 103 in view of Prefontaine have been fully considered but they are not persuasive. Nonetheless, the rejection is withdrawn for different reasons. See the Allowable Subject Matter section below.
Drawings
The drawings are objected to because fig. 1 is a photograph, but prior art including Prefontaine (US Pub. 2015/0110935, fig. 1) operate as proof that a photograph is not the only practical medium for illustrating the claimed invention, and therefore, a photograph is not justifiable and must be replaced by a line drawing. See 37 C.F.R. 1.84(b)(1).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
Comment: Applicant submitted amendments to the specification on 13 January 2026. These amendments have not been entered at least because the amendment to the abstract was not submitted “a separate sheet, apart from any other text.” As the Office understands the submitted text, it will treat it as filed here, but Applicant must submit a proper amendment sheet in response to this Office action that includes the previous acceptable amendments as well as those indicated as needed below.
The abstract of the disclosure is objected to because “The FRP started as” is ungrammatical, and based on the language in claim 1, should be replaced by “The FRP is stored as.” A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The amendment filed 13 January 2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The incorporation by reference of the Italian Application No. 102019000011538, is ineffective as it was added on the date of entry into the national phase, which is after the filing date of the instant application. The filing date of this national stage application is the filing date of associated PCT, in this case 10 July 2020. See MPEP 1893.03(b). Therefore, the specification amendment of 13 January 2026 to include the incorporation by reference is new matter, per MPEP 608.01(p).
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections — 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 10–17 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 10 provides for “a brewing liquid flow rate regulation solenoid valve” (l. 7). However, the Office notices that dependent claim 16 provides that the valve is “a motorized solenoid valve with an electric stepper motor.” Claim 16, by itself, is indefinite because a solenoid valve works by using an electromagnet to control the valve, and is not combinable with any stepper motor. Although proportional solenoid valves are known, given that there is no other type of valve details in the disclosure, the overall record suggests that the term “solenoid” is being used as a stand-in term for suggesting fluid control rather than signifying the use of an electromagnetically-actuated valve, raising concerns about the scope of the term in claim 10. If the Office’s suspicion is correct, Applicant should strike the term “solenoid” from the claims, as well as the specification where it discusses the invention. For examination purposes, the term will be understood only to connote fluid control.
Dependent claims 11–15 and 17 are rejected due to dependency upon a rejected claim.
Allowable Subject Matter
Claims 10–17 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 112(b) set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
In the recently filed Remarks, Applicant made numerous arguments against the § 103 rejection of claim 10 in view of Prefontaine. One of these arguments is in a footnote on pp. 10–11 which suggests that the first volume is more of a qualitative volume rather than a quantitative volume, but Applicant provided no support for this suggestion, which contradicts the plain reading of the term “first volume.” However, the Office reviewed Prefontaine and found that ¶ 120 explains that:
In some embodiments, an indication that the coffee grounds have become saturated includes at least a portion of the first volume of water delivered at the first brew flow rate begins to flow out of an espresso output, such as espresso output 540 of FIG. 5. In some embodiments, the espresso machine may include a mirror to observe when water begins to flow out of the espresso output. In some embodiments, the espresso output may be an aperture in the portafilter assembly. When it has been determined that the coffee grounds have been saturated, or to otherwise terminate the pre-brew phase, process 700 may flow to block 708.
Therefore, even though Applicant did not provide support for the suggestion that the first volume is qualitative, Prefontaine proves that it is. Prefontaine does not seem to disclose any other embodiment for this feature than this one.
This finding does not end the analysis, however, as even if Prefontaine suggests that its first volume is determined by this water delivery at the espresso output, it could still be the case that it would have been obvious to provide by a predetermined first volume by determining a flow rate and time. However, given that Prefontaine seems to suggest that the saturation of the coffee grounds would vary depending on, among other things, the coarseness of the grounds (see ¶ 117), working with predetermined volume would seem to go against the design and advantage in Prefontaine. Therefore, Prefontaine neither discloses nor renders obvious the claimed invention.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD F LANDRUM whose telephone number is (571)272-5567. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marivelisse Santiago-Cordero can be reached at 571-272-7839. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDWARD F LANDRUM/Supervisory Patent Examiner, Art Unit 3761