DETAILED ACTION
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 (i.e., changing from AIA to pre-AIA ) 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 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 31 August 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 2, 4 – 10, and 16 – 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 now recites “the delivery wall comprising in a layered manner in order from an outside surface to an inside surface facing the chamber” a filter layer . . . a retention layer . . . a moisture and/or oxygen barrier layer . . . and a first adhesive layer.
A careful review of applicant’s specification discloses that any oxygen/moisture barrier would be placed between the retention layer and the filter layer and not on the chamber side of the retention layer.
On page 4, line 27 – 28, of the specification it is disclosed that “the delivery wall of the invention comprises in a layered manner a retention layer and a filter layer”. On page 7, line 22 – 27, of the specification it is disclosed “that the retention layer may comprise an additional layer or coating that with respect to the retention layer may be provided thereon either opposite to the chamber or to the filter layer”. Which is to say that an additional layer or coating of the retention layer is to be between the retention layer and the filter layer. On page 10, line 25 – 27, of the specification it is disclosed that “the adhesive layer between the two layers may form an oxygen/moisture barrier and/or sealant”. Which again says that an additional layer or coating of the retention layer is to be between the retention layer and the filter layer. The Office is unable to find support in applicant’s disclosure for the delivery wall to be layered to comprise a filter layer followed by a retention layer followed by a moisture and/or oxygen barrier layer. Therefore the new limitation of “the delivery wall comprising in a layered manner in order from an outside surface to an inside surface facing the chamber” a filter layer . . . a retention layer . . . a moisture and/or oxygen barrier layer” is seen to raise an issue of new matter and as such must be deleted.
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 1, 2, 4, 5, 7 – 10, and 16 – 20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, lines 11 and 12, there is no antecedent basis for the term “the retention layer”.
Regarding claim 1, line 13, it is unclear if the “a retention layer” is the same as “the retention layer” recited in lines 11 and 12 or some other retention layer entirely.
Claims 2, 4 – 10, and 16 – 20 are rejected by virtue of their dependence on a rejected base claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 4, 5, 7 – 10, 16, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zweed et al. WO 2017/063680 incorporating by reference Zweed et al. WO 2015/082982 (PCT/IB2014/063282).
Regarding claims 1 and 16, Zweed ‘680 discloses a capsule (20) capable of preparing a beverage in a beverage production machine, which the capsule comprises a capsule body (27) with a sidewall (29) defining a chamber capable of containing a substance (coffee) capable of the preparation of the beverage. There is an injection wall (inlet side 28) for injecting a fluid in the chamber for preparing the beverage upon interaction of the fluid with the substance and a delivery wall (film 21) is connected to the capsule body to close the chamber (page 28, ln 9 – 12 and page 30, ln 24 – 29).
The delivery wall comprises, in a layered manner, a filter layer (21f filter paper) capable of filtering out particles from the prepared beverage dispensed via the delivery wall which filter layer is provided opposite to the chamber wall with respect to a retention layer (cellulose 21d facing the substance enclosed in the capsule) which retention layer is capable of being opened upon interaction with opening elements as under the effect of rising pressure of the fluid being injected into the capsule a beverage will be delivered, a moisture/oxygen barrier layer (21b) having a barrier function against liquid and/or gaseous substances entering and/or leaving the chamber (page 28, ln 9 – page 30, ln 2 and fig. 7). Further Zweed discloses the delivery wall is glued to the capsule flange which is to say there would necessarily have to be a first adhesive layer covering, at least partially, the delivery wall on a side of the delivery wall that is oriented towards the chamber for joining the delivery wall to the capsule body (page 30, ln 34 – page 31, ln 3). Zweed further discloses the carrier layer (equivalent to 21d), the layer that faces towards the substance enclosed in the capsule, i.e., the retention layer, would be only cellulose or PLA, i.e., more than 50% of a compostable material, which has a defined closed fibre structure (page 12, ln 20 – 28). There is a moisture/oxygen barrier layer (21b) having a barrier function against liquid and/or gaseous substances entering and/or leaving the chamber, and a first adhesive layer covers, at least partially, the delivery wall on the side of the delivery wall that is oriented towards the chamber for joining the delivery wall to the capsule body (page 27, ln 6 – 19), wherein each of the filter layer and the retention layer is made of biodegradable material (page 11, ln 30 – page 12, ln 4).
Zweed also discloses the oxygen barrier layer is moisture sensitive (page 8, ln 25) and should therefore be surrounded on both sides by a moisture barrier (page 8, ln 27 – 30). Since the retention layer (21d) is the layer provided closer to and facing the interior of the capsule with respect to the filter layer and the oxygen barrier layer (21b) is the layer next to the retention layer (fig. 7) it is seen that retention layer is configured such that it provides a bidirectional barrier against liquid from entering the chamber functions specifically as a moisture barrier).
Zweed ‘982, which has been incorporated by reference (page 14, ln 25, page 20, ln 21) and Zweed ‘680 (page 30, ln 33), further discloses the capsule body would include an oxygen barrier layer (17) on an inside surface of the sidewall, which oxygen barrier would be capable of providing a bidirectional barrier against oxygen (‘982 page 19, ln 9 – 16 and fig. 3).
Regarding claim 2, Zweed ‘680 discloses the filter layer would comprise cellophane, cellulose acetate, fibres of viscose, lignin and/or soy (page 3, ln 25 – 27).
Zweed further discloses the layer that faces toward the substance enclosed in the capsule, that is the retention layer, would be made of cellulose (page 12, ln 20 – 28). Since Zweed ‘680 discloses the retention layer would be cellulose and the filter layer would be of a different material Zweed is disclosing the filter layer and the retention layer are made of different biodegradable structures.
Regarding claim 4, Zweed ‘680 discloses that typical known capsules are subjected to warm water at fairly high pressures (6 – 20 bar) and that such pressures are required to be built up in these capsule to cause the foil, i.e., retention layer, to be deformed in such a way that the retention layer would be perforated in order allow a formed beverage to leave the capsule (page 1, ln 10 – 24). Since Zweed ‘680 is disclosing a similar capsule, it is seen as inherent that Zweed ‘680 is disclosing the retention layer would be capable of being resilient against a built up pressure in the chamber of between 1 and 20 bar (6 – 20 bar).
Regarding claim 5, Zweed ‘680 discloses the filter layer would comprise compostable material (page 3, ln 25 – 27).
Regarding claim 7, Zweed ‘680 discloses the retention layer (21d) and the filter layer (21f) are at least partially joined to each other on opposite sides thereof (page 29 ln 24 – 32 and fig. 7).
Regarding claim 8, Zweed ‘680 discloses the delivery wall (21) would be connected to the capsule body (the film 21 is glued or welded to flange 30) (page 30, in 4 – page 31 ln 2).
Regarding claims 9 and 10, Zweed ‘680 discloses the capsule body would comprise a protective layer (PLA and PVOH) which are protective layers and the capsule body would comprise a laminated structure (page 13, ln 16 – 32)
With respect to the remaining recitations beginning “providing a bidirectional barrier against moisture and/or oxygen and/or for providing a sealing interface between the capsule body and the injection wall” these are seen to be recitations regarding the intended use of the protective layer.
In this regard applicant’s attention is invited to MPEP 2114 which states that “an apparatus must be distinguished from the prior art in terms of structure rather than function”. That is to say, apparatus claims cover what a device is, not what a device does. If the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and then further limitations merely state, for example, the purpose or intended use of the invention, rather than any distinct structural definition of any of the claimed invention’s structural limitations, then any limitations regarding the intended use of the device are of no significance to claim construction. 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 claim which Zweed ‘680 certainly does. Further, if the prior art structure is capable of performing the intended use, then it meets the claim.
It is The Office’s position that the further limitations do not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. “providing a bidirectional barrier against moisture and/or oxygen and/or for providing a sealing interface between the capsule body and the injection wall”, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art, that is Zweed ‘680 and further that the prior art structure, which is identical in view of the prior art to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claims 19 and 20, Zweed discloses the retention layer and filter layer would be joined on opposite side through adhesive bonding (page 29, ln 14 – page 15, ln 4). Further Zweed discloses the delivery wall comprises a second adhesive layer between the retention layer and the filter layer (page 23, ln 1 – 21 and fig. 7).
Claim Rejections - 35 USC § 103
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, 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 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 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Zweed et al. WO 2017/063680 incorporating by reference Zweed et al. WO 2015/082982 (PCT/IB2014/063282) in view of Meyer US 2021/0300002.
Regarding claims 17 and 18, generally, differences in proportion, in this case grammage, will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such grammage 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. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of grammage ranges is the optimum combination thereof. It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions (MPEP § 2144.05 II.A.).
Nevertheless, Zweed discloses that the grammage (density) of the carrier layers is an important consideration with respect to the carrier layers regarding sufficient firmness and that if the grammage is too heavy the ability of the delivery wall to properly function, that is to tear, would be compromised and the outflow of beverage from the capsule would then be hindered (page 9, ln 24 – 28). Further, as set forth above in the rejection of claim 1 it is also seen that Zweed also discloses that the retention layer would also be a carrier layer. This is to say that Zweed is disclosing the particular grammage that one would choose for any carrier layer, which would include the retention layer, would be a result effective variable which the ordinarily skilled artisan would routinely and conventionally optimize. Further still, Zweed discloses that an optimum grammage would be between 30 and 100 g/m2 (30 g/m2) (page 9, ln 24 – 25).
Meyer also discloses that regarding cellulose-rich materials, which would include a retention layer, that in order to retain a beverage material within a capsule it is important to choose the proper grammage in to prevent blockage of the machine during brewing operation (paragraph [0041]) and that an optimum grammage would be between 30 and 100 g/m2 (30 g/m2) (paragraph [0042]). Therefore, given the prior art taken as a whole and in order to prevent blockage of the machine during brewing operation it would have been an obvious matter of choice and/or design for the ordinarily skilled artisan to have used a retention layer with a grammage of between 30 and 100 g/m2.
Response to Arguments
Applicant's arguments filed 31 August 2026 have been fully and carefully considered but they are not found persuasive.
Applicant urges that Zweed fails to disclose a delivery wall comprising in a layered manner in order from an outside surface of the capsule body to an inside surface: a filter layer, a retention layer being adapted to be opened upon interaction with opening elements under the effect of rising pressure of the fluid being injected into the capsule, a moisture and/or oxygen barrier layer, and a first adhesive layer covering, at least partially, the delivery wall on a side of the delivery wall that is oriented towards the chamber for joining the delivery wall to the capsule body. It is further urged that the inner layer of Zweed is a weakened layer and any cellulose layer is a “shielding layer”. These urgings are not deemed persuasive.
As set forth above in the rejections and seen in figure 7 Zweed discloses a delivery wall that comprises in the following order a filter layer (21f), a retention layer (21d) that can be either cellulose or PLA, which retention layer would certainly be capable of being opened to dispense a beverage when interacting with opening elements, a moisture/oxygen barrier layer (21b), and since Zweed further discloses the delivery wall would be glued to the capsule body there would necessarily have to be a first layer of an adhesive thereon. In urging Zweed to be disclosing a weakened layer applicant is urging limitations not found in the claims. Further, the purpose of the claimed “retention layer” is to retain any beverage ingredient within the when a beverage is being prepared. As recited the claims require the retention layer to be capable of being opened, that is to allow the flow of any beverage during preparation. There is no recitation that said retention layer would be ruptured or otherwise torn under pressure therefore the cellulose/PLA layer (21d) of Zweed is seen to retain the beverage ingredients within the capsule and open, that is, allow delivery of a beverage under pressure the therefore correspond to the retention layer as claimed.
Applicant urges that Zweed fails to disclose or suggest a delivery wall comprising, from an outer surface to an inner surface, a filter layer, a retention layer, an oxygen barrier layer, and a first adhesive, as required under independent Claim 1 as amended. This urging is not found persuasive.
As set forth in the rejections and comments above Zweed discloses the order of layering of the delivery wall as claimed. Further, the comprising language of the claims would allow further layers as well.
Applicant urges that Zweed teaches pre-weakening to make tearing easier and that the presently claimed delivery wall includes a pressure-resistant layer arrangement that delays deformation and improves opening at higher pressure. The claimed retention layer is not opened as a result of pre-weakened patterns therein. These urgings are not deemed persuasive and here applicant is urging limitations not found in the claims.
Applicant urges that in the specification (page 5, lines 19-30), the presently claimed ordering of the filter and retention layers provides a more consistent and reproducible pressure profile, better crema formation, improved extraction, and reduced particles in the beverage. The external filter layer dampens deformation of the retention layer, causing the delivery wall to interact with the opening elements at a higher pressure, resulting in more effective piercing and more evenly distributed openings. This urging is not deemed persuasive.
It is noted that lines 19 – 30 of page 5 of applicant’s specification does not discuss any layering of the delivery wall as claimed. Further in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the as set forth above in the rejections Zweed teaches the ordering of the filter and retention layers as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAIM A SMITH whose telephone number is (571)270-7369. The examiner can normally be reached Monday-Thursday 09:00-18:00.
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/C.S./
Chaim SmithExaminer, Art Unit 1791 04 September 2026
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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