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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 submission filed on May 19, 2026 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on May 19, 2026 was filed after the mailing date of the Office Action mailed on February 19, 2026. 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 § 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16, 18, 20, 22, 33, and 35-37 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 16 recites the limitation “extracting” in line 2. Given that applicant argues on Pages 6-7 of the Remarks dated May 19, 2026 that there is allegedly a difference between the terms “extract” and “extractable,” it is unclear if “extracting” adheres to applicant’s definition of “coffee extract” or if “extracting” adheres to applicant’s definition of “extractable.”
Claim 16 recites the limitation “extracting the compostable capsule in hot water up to 100°C” in lines 2-3. The term “hot water” is a relative term which renders the claim indefinite. The term “hot water” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The claim recites an upper bound of 100°C to read on the claimed “hot” water. However, no lower bound for the claimed “hot” water is provided. For example, 0°C reads on the claimed “up to 100°C.” However, 0°C would not be considered “hot” to one having ordinary skill in the art. It is unclear what lower bound of “up to 100°C” reads on the claimed “hot” water.
Claim 16 recites the limitation “wherein the core material comprises extractable ground coffee powder” in lines 4-5. Given that applicant asserts on Page 8 of the Remarks filed June 11, 2025 that ground coffee powder belongs to the group of non-soluble coffee preparations and that applicant also discloses that a coffee extract can be derived from an instant coffee (Specification, Page 10, lines 5-12) and also asserts that “instant coffee” is a type of product dissolvable in water, it is unclear how the term “extractable ground coffee powder” is being used in the context of the claims. It is unclear if “extractable ground coffee powder” is a soluble product or if “extractable ground coffee powder” is an insoluble product. Given that applicant argues on Page 8 of the Remarks filed June 11, 2025 that instant coffee or soluble coffee can be dissolved in water whereas coffee powder is the product of grinding roasted coffee beans and is a solid and/or swellable material that is not soluble in water but extractable, it is unclear what solubility levels reads on the claimed “extractable ground coffee powder.” Furthermore, Fisk et al. US 2013/0156898 discloses a beverage cartridge comprising ingredients such as powdered roast and ground coffee wherein the ingredients are partially or wholly insoluble or partially or wholly soluble (‘898, Paragraph [0038]). Again, it is unclear what solubility levels are required of the claimed “extractable ground coffee powder” in view of the disclosure by Fisk et al. that roast and ground coffee can be partially or wholly insoluble or partially or wholly soluble.
Claim 33 recites the limitation “extracting” in line 2. Given that applicant argues on Pages 6-7 of the Remarks dated May 19, 2026 that there is allegedly a difference between the terms “extract” and “extractable,” it is unclear if “extracting” adheres to applicant’s definition of “coffee extract” or if “extracting” adheres to applicant’s definition of “extractable.”
Claim 33 recites the limitation “extracting the compostable capsule in hot water up to 100°C” in lines 2-3. The term “hot water” is a relative term which renders the claim indefinite. The term “hot water” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The claim recites an upper bound of 100°C to read on the claimed “hot” water. However, no lower bound for the claimed “hot” water is provided. For example, 0°C reads on the claimed “up to 100°C.” However, 0°C would not be considered “hot” to one having ordinary skill in the art. It is unclear what lower bound of “up to 100°C” reads on the claimed “hot” water.
Clarification is required.
Claims 18, 20, 22, and 35-37 are rejected as being dependent on a rejected base claim.
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 16, 18, 20, 33, and 35-36 are rejected under 35 U.S.C. 103 as being unpatentable over Belville et al. EP 0 229 920 in view of Spencer “Have Your Food and Eat the Wrapper Too” <https://web.archive.org/web/20190611164217/https://foodtank.com/news/2018/09/have-your-food-and-eat-the-wrapper-too/> (archived on June 11, 2019) (herein referred to as “Spencer”), Sengupta et al. US 2010/0303969, Siegel et al. US 2011/0081451, Cabrera et al. US 2005/0020744, Best et al. US 2005/0118311, Larsson et al. WO 2013/009253 (furnished in the Office Action mailed February 19, 2016), and Hansen et al. US 2015/0297023.
Regarding Claim 16, Belville et al. discloses a capsule (tablet) capable of preparing a beverage (‘920, Page 9, lines 8-13). The capsule (tablet) comprises a core material (roast and ground coffee) compressed under pressure (‘920, Page 12, lines 12-18) to form a compact (tablet) (‘920, Page 11, lines 2-13). Belville et al. further discloses the core material comprises extractable ground coffee powder (‘920, Page 1, lines 2-6). It is noted that applicant discloses an embodiment wherein the compacted ground coffee powder has a moisture content of 3.5% (Specification, Page 14, lines 30-32). Since Belville et al. teaches an embodiment of the ground coffee bulk material having a moisture content of 4% (‘920, Page 11, lines 2-6) and also broadly teaches the mass of roast and ground coffee being between about 3 to about 6% by weight (‘920, Page 5, lines 4-9) and since applicant also argues on Page 7 of the Remarks filed on June 11, 2025 that roasted coffee stored at a moisture content below 5% is shelf stable, the compacted ground coffee powder having a moisture content of between about 3 to about 6% broadly reads on the claimed extractable ground coffee powder. It is noted that the claim does not specify any particular moisture content of the ground coffee powder. Belville et al. also discloses the tablet being extractable (‘920, Page 4, lines 3-10). A cladding material (coating material) continuously encases the compact wherein the cladding material (coating material) is a polysaccharide (modified starches) (‘920, Page 7, lines 34-39) (‘920, Page 8, lines 1-6).
Belville et al. is silent regarding the capsule being compostable and the cladding material of modified starches that encases the compact to be a compostable non-crosslinked polysaccharide.
Spencer discloses a completely edible, biodegradable, and home compostable packaging (Item 4 on Page 3, Spencer) to limit wasteful packaging practices and instead create zero waste packaging (Item 12 on Page 5, Spencer). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the capsule/tablet of Belville et al. to be compostable and construct the components of the capsule/tablet out of compostable materials as taught by Spencer in order to create zero waste packaging (Item 12 on Page 5, Spencer). Furthermore, 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). Spencer teaches that there was known utility in the food and beverage art to construct food and beverage packaging entirely out of edible biodegradable materials for environmentally friendly purposes.
Further regarding Claim 16, Belville et al. modified with Spencer is silent regarding the cladding material of modified starches that encases the compact to be a non-crosslinked polysaccharide.
Sengupta et al. discloses an encapsulated ground coffee powder (‘969, Paragraph [0084]) comprising a cladding material (first coating material) comprising modified cationic polysaccharides or cationically modified starches wherein the cationic polysaccharide is chitosan (‘969, Paragraph [0026]).
Both modified Belville et al. and Sengupta at al. are directed towards the same field of endeavor of capsules in the form of coated ground coffee powders. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the capsule/tablet of modified Belville et al. and construct the cladding material/coating material out of chitosan as taught by Sengupta 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). Sengupta et al. teaches that there was known utility in the coffee capsule art to construct coffee capsules with a cladding/coating material made out of chitosan.
Further regarding Claim 16, Belville et al. discloses the capsule having a continuous layer of coating (‘920, Page 3, lines 13-18). However, Belville et al. modified with Spencer and Sengupta et al. is silent regarding the continuous coating layer to seamlessly encase the compact. Belville et al. modified with Spencer and Sengupta et al. is also silent regarding the polysaccharide of the cladding material being non-crosslinked.
Siegel et al. discloses a capsule having a seamless shell (‘451, Paragraph [0007]) wherein the capsule is used in making coffee beverages (‘451, Paragraphs [0149]-[0152]). Cabrera et al. discloses a food coating composition (‘744, Paragraph [0099]) comprising a first and second coat wherein the second coat is applied without a visible seam after drying (‘744, Paragraph [0003]).
Modified Belville et al., Siegel et al., and Cabrera et al. are all directed towards the same field of endeavor of food shells comprising a core. 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 Belville et al. and construct the cladding material encasing the core with no seam as taught by Siegel et al. and as taught by the disclosure of Cabrera et al. that applying a second coat results in no visible seam after drying since matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art in view of In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (MPEP § 2144.04.I.). Siegel et al. and Cabrera et al. both teach capsules made with a cladding material encasing the core wherein the cladding material has no seam.
Further regarding Claim 16, Belville et al. modified with Spencer, Sengupta et al., Siegel et al., and Cabrera et al. is silent regarding the polysaccharide of the cladding material being non-crosslinked.
Best et al. discloses a flavored coating used in fat mimicry using a hydrocolloid component used in any food product where fat mimicry is desired (‘311, Paragraph [0020]) wherein the coating includes a matrix of sugar crystals and sugar glass dispersed through the flavoring agent in an amount effective to provide the coating with sufficient structural integrity to prevent flowability of the coating at temperatures less than 40°C (‘311, Paragraph [0022]) wherein the flavored coating is applied to any suitable type of food that might need a coating (‘311, Paragraph [0032]) wherein a dry hydrocolloid component is dispersed through the flavoring agent and sugar matrix to provide a slippery mouthfeel that mimics fat and disperses when in contact with saliva to mimic the melting of cocoa butter during consumption (‘311, Paragraph [0007]) wherein the hydrocolloid component includes at least one of an isolated proteinaceous material, a galactomannan, or a granular starch wherein the hydrocolloid component includes whey protein isolate, gum acacia, guar gum, and at least one starch and the hydrocolloid component includes one or more non-crosslinkable hydrocolloid (‘311, Paragraph [0008]) to readily dissolve in typical mouth temperatures and provides a cream texture, silky feeling (‘311, Paragraph [0026]).
Both modified Belville et al. and Best et al. are directed towards the same field of endeavor of coated foodstuffs comprising a coating made of a polysaccharide. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the cladding coating material made of polysaccharide of modified Belville et al. and construct the polysaccharide cladding coating material out of one or more non-crosslinkable hydrocollids as taught by Best 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). Best et al. teaches that there was known utility in the food coating art to construct coatings out of non-crosslinked starch polysaccharides to provide a desired cream texture and silky feeling (‘311, Paragraph [0026]).
Further regarding Claim 16, Belville et al. discloses the cladding material comprising carbohydrates including maltodextrin and/or modified starch which disperse upon contact with hot water (‘920, Page 7, line 34-39) (‘920, Page 8, lines 1-6). However, Belville et al. modified with Spencer, Sengupta et al., Siegel et al., Cabrera et al., and Best et al. is silent regarding the polysaccharide of the cladding material/coating material to be carboxymethylcellulose (CMC), microfibrillated cellulose (MFC), sodium alginate, and/or pullulan.
Larsson et al. discloses a food capsule (tablet) comprising a core material and a cladding material (film barrier) encasing the core material (‘253, Page 12, lines 21-30) wherein the cladding material (film barrier) is a water soluble polysaccharide of modified starch, MFC, chitosan, sodium carboxymethylcellulose or sodium alginate or modified starch (‘253, Page 12, lines 4-17) or microfibrillated cellulose (‘253, Page 12, lines 31-33).
Both modified Belville et al. and Larsson et al. are directed towards the same field of endeavor of coated tablets. Both coated tablets of modified Belville et al. and Larsson et al. contain a cladding material/coating layer wherein the cladding material/coating layer is made of carbohydrates of sugars and/or modified starches. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the cladding material/coating layer of the coated tablet of modified Belville et al. and construct the cladding material/coating layer out of MFC, chitosan, carboxymethylcellulose, or sodium alginate as taught by Larsson 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). Larsson et al. teaches that it was known in the food and beverage art to make a cladding material of a coating layer of an coated tablet out of MFC, chitosan, carboxymethylcellulose, or sodium alginate as the carbohydrate source of the cladding material/coating layer.
Further regarding Claim 16, the limitations regarding the core material being a compacted core that is compressed under pressure 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 form 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) (MPEP § 2113.I.). Nevertheless, applicant discloses the term “compact” to refer to a core material which has been compressed under pressure (Specification, Page 3, lines 17-19). Belville et al. discloses the core material of roast and ground coffee being compacted under pressure (‘920, Page 5, lines 4-9) to make a compressed tablet (‘920, Page 6, lines 8-15).
Further regarding Claim 16, the limitations “for preparing a beverage in a beverage preparation machine by extracting the compostable capsule in hot water up to 100°C” are seen to be recitations regarding the intended use of the “compostable 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, Belville et al. discloses the coffee tablet being extracted with hot water (‘920, Page 4, lines 3-13). Additionally, Hansen et al. discloses a method of dispensing a beverage comprising inserting a beverage ingredient tablet into a beverage preparation machine and operating the beverage preparation machine to dispense a beverage by contacting the beverage ingredient tablet with an aqueous fluid (‘023, Paragraphs [0005]-[0009]) wherein the beverage ingredient tablet comprises one or more ingredients in varying proportions including roasted ground coffee, soluble coffee (‘023, Paragraph [0031]) wherein the beverage ingredient tablet is contacted with an aqueous fluid of hot water to dissolve the tablet (‘023, Paragraph [0041]) wherein the hot water is 93 degrees Celsius (‘023, Paragraphs [0070]-[0079]), which reads on the claimed extracting the capsule in hot water up to 100°C. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the method of using the capsule of modified Belville et al. and use the capsule in extraction conditions of 93 degrees Celsius (‘023, Paragraphs [0070]-[0079]), which reads on the claimed hot water up to 100°C, since Hansen et al. teaches that the claimed hot water temperatures were known and suitable extraction temperatures useful for making beverages.
Regarding Claim 33, Belville et al. discloses a capsule (tablet) capable of preparing a beverage (‘920, Page 9, lines 8-13). The capsule (tablet) comprises a core material (roast and ground coffee) compressed under pressure (‘920, Page 12, lines 12-18) to form a compact (tablet) (‘920, Page 11, lines 2-13). A cladding material (coating material) continuously encases the compact wherein the cladding material (coating material) is a polysaccharide (modified starches) (‘920, Page 7, lines 34-39) (‘920, Page 8, lines 1-6).
Belville et al. discloses the core beverage ingredient being ground coffee (‘920, Page 12, lines 12-18). However, Belville et al. is silent regarding the core beverage material being milk powder.
Nickel discloses a capsule comprising a core material (compacted pellet made from a powder of coffee or milk powder) wherein the core material (compacted pellet) is obtained by pressing the powder under pressure and the core material (compacted pellet) is sheathed with a cladding material (coating layers) (‘515, Paragraph [0021]) wherein the compacted pellet contains at least one polysaccharide (‘515, Paragraph [0024]).
Both Belville et al. and Nickel are directed towards the same field of endeavor of capsules for preparing a beverage wherein the capsule comprises a core made from beverage ingredients and a cladding material in the form of coating layers applied on the surface of the beverage ingredients. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the capsule of Belville et al. and use milk powder as the beverage ingredients as taught by Nickel instead of the ground coffee disclosed by Belville et al. based upon the particular beverage ingredients and beverage desired to be made.
Further regarding Claim 33, Belville et al. modified with Nickel is silent regarding the capsule being a compostable capsule, the cladding material seamlessly encasing the compact core, and the polysaccharide of the cladding material being compostable and non-crosslinked.
Spencer discloses a completely edible, biodegradable, and home compostable packaging (Item 4 on Page 3, Spencer) to limit wasteful packaging practices and instead create zero waste packaging (Item 12 on Page 5, Spencer). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the capsule/tablet of Belville et al. to be compostable and construct the components of the capsule/tablet out of compostable materials as taught by Spencer in order to create zero waste packaging (Item 12 on Page 5, Spencer). Furthermore, 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). Spencer teaches that there was known utility in the food and beverage art to construct food and beverage packaging entirely out of edible biodegradable materials for environmentally friendly purposes.
Further regarding Claim 16, Belville et al. modified with Spencer is silent regarding the cladding material of modified starches that encases the compact to be a non-crosslinked polysaccharide.
Sengupta et al. discloses an encapsulated ground coffee powder (‘969, Paragraph [0084]) comprising a cladding material (first coating material) comprising modified cationic polysaccharides or cationically modified starches wherein the cationic polysaccharide is chitosan (‘969, Paragraph [0026]).
Both modified Belville et al. and Sengupta at al. are directed towards the same field of endeavor of capsules in the form of coated ground coffee powders. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the capsule/tablet of modified Belville et al. and construct the cladding material/coating material out of chitosan as taught by Sengupta 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). Sengupta et al. teaches that there was known utility in the coffee capsule art to construct coffee capsules with a cladding/coating material made out of chitosan.
Further regarding Claim 33, Belville et al. discloses the cladding material being a continuous coating (‘920, Page 8, lines 13-20). However, Belville modified with Spencer and Sengupta et al. is silent regarding the cladding material seamlessly encasing the core and the polysaccharide of the cladding material being non-crosslinked.
Siegel et al. discloses a capsule having a seamless shell (‘451, Paragraph [0007]) wherein the capsule is used in making coffee beverages (‘451, Paragraphs [0149]-[0152]). Cabrera et al. discloses a food coating composition (‘744, Paragraph [0099]) comprising a first and second coat wherein the second coat is applied without a visible seam after drying (‘744, Paragraph [0003]).
Modified Belville et al., Siegel et al., and Cabrera et al. are all directed towards the same field of endeavor of food shells comprising a core. 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 Belville et al. and construct the cladding material encasing the core with no seam as taught by Siegel et al. and as taught by the disclosure of Cabrera et al. that applying a second coat results in no visible seam after drying since matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art in view of In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (MPEP § 2144.04.I.). Siegel et al. and Cabrera et al. both teach capsules made with a cladding material encasing the core wherein the cladding material has no seam.
Further regarding Claim 33, Belville et al. modified with Spencer, Sengupta et al.., Siegel et al., and Cabrera et al. is silent regarding the polysaccharide of the cladding material being non-crosslinked.
Best et al. discloses a flavored coating used in fat mimicry using a hydrocolloid component used in any food product where fat mimicry is desired (‘311, Paragraph [0020]) wherein the coating includes a matrix of sugar crystals and sugar glass dispersed through the flavoring agent in an amount effective to provide the coating with sufficient structural integrity to prevent flowability of the coating at temperatures less than 40°C (‘311, Paragraph [0022]) wherein the flavored coating is applied to any suitable type of food that might need a coating (‘311, Paragraph [0032]) wherein a dry hydrocolloid component is dispersed through the flavoring agent and sugar matrix to provide a slippery mouthfeel that mimics fat and disperses when in contact with saliva to mimic the melting of cocoa butter during consumption (‘311, Paragraph [0007]) wherein the hydrocolloid component includes at least one of an isolated proteinaceous material, a galactomannan, or a granular starch wherein the hydrocolloid component includes whey protein isolate, gum acacia, guar gum, and at least one starch and the hydrocolloid component includes one or more non-crosslinkable hydrocolloid (‘311, Paragraph [0008]) to readily dissolve in typical mouth temperatures and provides a cream texture, silky feeling (‘311, Paragraph [0026]).
Both modified Belville et al. and Best et al. are directed towards the same field of endeavor of coated foodstuffs comprising a coating made of a polysaccharide. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the cladding coating material made of polysaccharide of modified Belville et al. and construct the polysaccharide cladding coating material out of one or more non-crosslinkable hydrocollids as taught by Best 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). Best et al. teaches that there was known utility in the food coating art to construct coatings out of non-crosslinked starch polysaccharides to provide a desired cream texture and silky feeling (‘311, Paragraph [0026]).
Further regarding Claim 33, Belville et al. discloses the cladding material comprising carbohydrates including maltodextrin and/or modified starch which disperse upon contact with hot water (‘920, Page 7, line 34-39) (‘920, Page 8, lines 1-6). However, Belville et al. modified with Spencer, Sengupta et al., Siegel et al., Cabrera et al., and Best et al. is silent regarding the polysaccharide of the cladding material/coating material to be carboxymethylcellulose (CMC), microfibrillated cellulose (MFC), sodium alginate, pullulan, and/or chitosan.
Larsson et al. discloses a food capsule (tablet) comprising a core material and a cladding material (film barrier) encasing the core material (‘253, Page 12, lines 21-30) wherein the cladding material (film barrier) is a water soluble polysaccharide of modified starch, MFC, chitosan, sodium carboxymethylcellulose or sodium alginate or modified starch (‘253, Page 12, lines 4-17) or microfibrillated cellulose (‘253, Page 12, lines 31-33).
Both modified Belville et al. and Larsson et al. are directed towards the same field of endeavor of coated tablets. Both coated tablets of modified Belville et al. and Larsson et al. contain a cladding material/coating layer wherein the cladding material/coating layer is made of carbohydrates of sugars and/or modified starches. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the cladding material/coating layer of the coated tablet of modified Belville et al. and construct the cladding material/coating layer out of MFC, chitosan, carboxymethylcellulose, or sodium alginate as taught by Larsson 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). Larsson et al. teaches that it was known in the food and beverage art to make a cladding material of a coating layer of an coated tablet out of MFC, chitosan, carboxymethylcellulose, or sodium alginate as the carbohydrate source of the cladding material/coating layer.
Further regarding Claim 33, the limitations regarding the core of bulk material being a compacted core that is compressed under pressure 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 form 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) (MPEP § 2113.I.). Nevertheless, applicant discloses the term “compact” to refer to a core material which has been compressed under pressure (Specification, Page 3, lines 17-19). Belville et al. discloses the core material of roast and ground coffee being compacted under pressure (‘920, Page 5, lines 4-9) to make a compressed tablet (‘920, Page 6, lines 8-15).
Further regarding Claim 33, the limitations “for preparing a beverage in a beverage preparation machine by extracting the compostable capsule in hot water up to 100°C” are seen to be recitations regarding the intended use of the “compostable 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, Belville et al. discloses the coffee tablet being extracted with hot water (‘920, Page 4, lines 3-13). Additionally, Hansen et al. discloses a method of dispensing a beverage comprising inserting a beverage ingredient tablet into a beverage preparation machine and operating the beverage preparation machine to dispense a beverage by contacting the beverage ingredient tablet with an aqueous fluid (‘023, Paragraphs [0005]-[0009]) wherein the beverage ingredient tablet comprises one or more ingredients in varying proportions including roasted ground coffee, soluble coffee (‘023, Paragraph [0031]) wherein the beverage ingredient tablet is contacted with an aqueous fluid of hot water to dissolve the tablet (‘023, Paragraph [0041]) wherein the hot water is 93 degrees Celsius (‘023, Paragraphs [0070]-[0079]), which reads on the claimed extracting the capsule in hot water up to 100°C. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the method of using the capsule of modified Belville et al. and use the capsule in extraction conditions of 93 degrees Celsius (‘023, Paragraphs [0070]-[0079]), which reads on the claimed hot water up to 100°C, since Hansen et al. teaches that the claimed hot water temperatures were known and suitable extraction temperatures useful for making beverages.
Regarding Claims 18 and 35, Belville et al. discloses the cladding material (coating material) being composed of 1 layer (‘920, Page 8, lines 13-20). Best et al. discloses the coating material to be a non-crosslinkable hydrocolloid (‘311, Paragraph [0008]).
Further regarding Claims 18 and 35, the limitations “composed of the same or different compostable non-crosslinked polysaccharides” necessarily encompasses all compostable non-crosslinked polysaccharides. Since the prior art combination teaches the cladding material being composed of compostable non-crosslinked polysaccharides, the prior art combination necessarily has all the layers being composed of either the same or different compostable non-crosslinked polysaccharides.
Regarding Claims 20 and 36, Belville et al. discloses the capsule being spherical in shape (‘920, Page 4, lines 34-39). Andreae et al. discloses the capsule being a compostable capsule (capsule 1) (‘694, Paragraphs [0026] and [0055]-[0056]) which results in a significant environmental advantage by keeping the waste stream under control and to deal responsibly with residual waste and to lower environmental load associated with the capsule (‘694, Paragraph [0004]).
Claims 22 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Belville et al. EP 0 229 920 in view of Spencer “Have Your Food and Eat the Wrapper Too” <https://web.archive.org/web/20190611164217/https://foodtank.com/news/2018/09/have-your-food-and-eat-the-wrapper-too/> (archived on June 11, 2019) (herein referred to as “Spencer”), Sengupta et al. US 2010/0303969, Siegel et al. US 2011/0081451, Cabrera et al. US 2005/0020744, Best et al. US 2005/0118311, Larsson et al. WO 2013/009253 (furnished in the Office Action mailed February 19, 2016), and Hansen et al. US 2015/0297023 as applied to claim 16 or claim 33 above in further view of Empl US 2015/0314954.
Regarding Claims 22 and 37, Belville et al. modified with Spencer, Sengupta et al., Siegel et al., Cabrera et al., Best et al., Larsson et al., and Hansen et al. is silent regarding the cladding material encasing the core material having a line of weakness which facilitates opening of the compostable capsule.
Empl discloses a capsule comprising a capsule base having a plurality of lines of weakness arranged on the capsule base that allows for easier perforation of the capsule (‘954, Paragraph [0023]).
Both modified Belville et al. and Empl are directed towards the same field of endeavor of coffee capsules. 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 Belville et al. and incorporate a line of weakness onto the cladding material that surrounds the core material as taught by Empl in order to allow for easier opening and perforation of the capsule (‘954, Paragraph [0023]).
Response to Arguments
Examiner notes that the previous new matter rejections under 35 USC 112(a) have been withdrawn in view of the amendments.
Examiner notes that the previous indefiniteness rejections under 35 USC 112(b) to Claims 39, 42, and 44-45 have been withdrawn in view of the amendments.
Applicant’s arguments with respect to the previous obviousness rejections under 35 USC 103(a) of Claims 16 and 33 to Belville et al. in view of Andreae et al., Siegel et al., Cabrera et al., Best et al., and Ventouras have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The secondary references of Andreae et al. and Ventouras are no longer being applied in the current rejection.
Applicant's arguments filed May 19, 2026 have been fully considered but they are not persuasive.
Applicant argues on Pages 6-7 of the Remarks with respect to the previous indefiniteness rejections under 35 USC 112(b) of Claim 16 that there is a differentiation between “coffee extract” and “extractable coffee.” Applicant contends that “extractable” means “capable of being extracted” and “extract” is understood to mean “to treat with a solvent to remove a soluble substance.” Applicant contends that Attachment III to Cordoba et al. states that coffee extraction is carried out by different methods to produce the brew which process involves water absorption by the coffee grinds, mass transfer of soluble compounds from the ground coffee into the hot water, and separation of the resulting extract from coffee solids. Applicant continues that brewing ground coffee yields a coffee extract which extract is no longer extractable and that extract is dried and becomes dissolvable but not extractable and no soluble substances are removed during dissolution. Applicant asserts that the grounds themselves of extractable ground coffee are not dissolvable and that it is widely recognized that the maximum solubility of roasted coffee is approximately 30% of its total dry weight. Applicant points to Attachment IV to Moroney et al. that extractable mass of coffee grains in water at 90°C can range from 28% for very fine grinds to 32% for very coarse grinds. Applicant concludes that the term “extractable ground coffee powder” and its solubility level is clear.
Examiner argues the disclosure at the time of filing does not provide any explicit definition of the claimed terms “extracting” and/or “extractable.” Applicant points to embodiments of separate non patent literature documents of specific definitions of “extract” and “extractable.” Applicant points to a solubility for “very fine” grinds and “very coarse” grinds. However, the grind size is not claimed and the solubility levels are also not claimed. Given that applicant asserts on Page 8 of the Remarks filed June 11, 2025 that ground coffee powder belongs to the group of non-soluble coffee preparations and that applicant also discloses that a coffee extract can be derived from an instant coffee (Specification, Page 10, lines 5-12) and also asserts that “instant coffee” is a type of product dissolvable in water, it is unclear how the term “extractable ground coffee powder” is being used in the context of the claims. It is unclear if “extractable ground coffee powder” is a soluble product or if “extractable ground coffee powder” is an insoluble product. Given that applicant argues on Page 8 of the Remarks filed June 11, 2025 that instant coffee or soluble coffee can be dissolved in water whereas coffee powder is the product of grinding roasted coffee beans and is a solid and/or swellable material that is not soluble in water but extractable, it is unclear what solubility levels reads on the claimed “extractable ground coffee powder.” Furthermore, Fisk et al. US 2013/0156898 discloses a beverage cartridge comprising ingredients such as powdered roast and ground coffee wherein the ingredients are partially or wholly insoluble or partially or wholly soluble (‘898, Paragraph [0038]). Again, it is unclear what solubility levels are required of the claimed “extractable ground coffee powder” in view of the disclosure by Fisk et al. that roast and ground coffee can be partially or wholly insoluble or partially or wholly soluble. Therefore, these arguments are not found persuasive.
Applicant argues on Page 10 of the Remarks that the tablet disclosed by Belville is not an orally ingestible tablet and it is for use in conventional brewing devices. Applicant contends that while composed of edible substances this does not imply ingestions and the brewed coffee extracted from the tablet is consumer and the tablet must comprise edible substances to prevent the extraction of poisonous substances.
Examiner argues Claims 16 and 33 recites a capsule for preparing a beverage in a beverage preparation machine by extracting the capsule in hot water. Applicant admits that the tablet/capsule of Belville is used in conventional brewing devices, i.e. “a beverage preparation machine” as claimed. It is unclear what applicant argues that the tablet of Belville is not an orally ingestible tablet. None of the claims require the capsule to be directly orally ingestible. Again, applicant admits that the capsule/tablet of Belville is used in conventional brewing devices/a beverage preparation machine. Therefore, these arguments are not found persuasive. It is noted that the current rejection does not state the terms “orally ingestible.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Jang et al. US 2018/0228177 discloses a coffee extract obtained by adding hot water to coffee bean powder (‘177, Paragraph [0006]).
Birch et al. US 2018/0206514 discloses a soluble coffee product comprising roast and ground coffee particles added to a coffee extract (‘514, Paragraph [0004]).
Kalenian US 9,480,359 discloses an extract from coffee is a type of extractable material.
Dixey US 2015/0342213 discloses coffee extract contains extractable components (‘213, Paragraph [0042]).
Rodriguez Rodriguez et al. US 2015/0230493 discloses a capsule that is extractable to deliver a long coffee extract (‘493, Paragraph [0040]).
Warlick US 2009/0041864 discloses coffee beans contain extractable material (‘864, Paragraph [0001]).
Griffiths et al. US 2007/0048429 discloses the term “plant extract” refers to solids extractable in boiling water from beverage plant material such as coffee beans (‘429, Paragraph [0013]).
Naberio US 2018/0317539 discloses an edible coating for coffee (‘539, Paragraph [0001]) wherein the edible coating is used for preserving an organoleptic property of a food product including a polysaccharide of sodium alginate (‘539, Paragraph [0006]).
Massey et al. US 2013/0142915 discloses the use of a calcium alginate coating to allow a moisture sensitive discrete edible component to remain stable in an aqueous environment (‘915, Paragraph [0076]) wherein the coating is used for coffee grounds (‘915, Paragraph [0047]).
Wyss et al. US 2010/0209582 discloses a beverage powder comprising particles of soluble coffee particles coated by a coating agent which reduces the water solubility of the soluble coffee particles (‘582, Paragraph [0047]) wherein the coated coffee powder with reduced solubility is obtained by coating the coffee powder with CMCs (‘582, Claim 12).
Dalziel et al. US 2005/0255202 discloses food particle encapsulated with an encapsulating material (‘202, Paragraph [0002]) wherein any food particle can be encapsulated including coffee grounds (‘202, Paragraph [0055]) wherein the liquid coating material is made of carbohydrates including alginates (‘202, Paragraph [0077]).
Shibuya et al. US 2004/0082537 discloses a powder product comprising HCBM used as a sugar coating agent for tablets in combination with pullulan binders (‘537, Paragraph [0048]).
Nakamura et al. US 2004/0052910 discloses a coated tablet comprising a pullulan coating (‘910, Paragraph [0165]) wherein pullulan is known as a coating agent with satisfactory gas barrier properties having complex production steps and is very high in cost (‘910, Paragraph [0013]) and non water soluble coating agents such as chitosan are known and utilized as coating agents for food products wherein chitosan is used as a coating agent under acidic conditions but acid residue remains in the coated film (‘910, Paragraph [0016]).
Gurol US 6,495,180 discloses coated coffee beans coated with CMC and other materials known in the pharmaceutical industry for enteric tablet coating to form a shell around the coffee beans to extend the shelf life and reduce aromatic esters from dissipating (‘180, Column 17, lines 24-45).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICSON M LACHICA whose telephone number is (571)270-0278. The examiner can normally be reached M-F, 8:30am-5pm, EST.
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/ERICSON M LACHICA/Examiner, Art Unit 1792
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