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 .
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 – 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 (11) capable of preparing a beverage in a beverage production machine, which the capsule comprises a capsule body (12) with a sidewall (12b) defining a chamber capable of containing a substance (coffee) capable of the preparation of the beverage. There is an injection wall (12a) for injecting a fluid in the chamber for preparing the beverage upon interaction of the fluid with the substance and a delivery wall (film 13) is connected to the capsule body to close the chamber (page 26, ln 11 – 25). The delivery wall comprises, in a layered manner, a retention layer (weakened inner layer 13a facing the substance enclosed in the capsule) (fig. 5) capable of being opened upon interaction with opening elements under the effect of rising pressure of the fluid being injected into the capsule. Zweed further discloses the carrier layer, the layer that faces towards the substance enclosed in the capsule, i.e., the retention layer, would be only cellulose, i.e., more than 50% of a compostable material, which has a defined closed fibre structure (page 12, ln 20 – 28), and a filter layer (13f filter paper) capable of filtering out particles from the prepared beverage dispensed via the delivery wall. The filter layer is provided opposite to the chamber with respect to the retention layer (outer layer 13f), there is a moisture/oxygen barrier layer (13b) having a barrier function against liquid and/or gaseous substances entering and/or leaving the chamber, and a first adhesive layer (13c) 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 ‘982, which has been incorporated by reference on p 14, ln 25 p 20, ln 21 and p 30 ln 33 of Zweed ‘680, 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 3, Zweed ‘680 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 is the layer directly facing the of the capsule (13a) and the oxygen barrier layer (13b) is the layer next to the retention layer (fig. 5) 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).
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 cellophane, cellulose acetate, fibres of viscose, lignin and/or soy (page 3, ln 25 – 27).
Regarding claim 7, Zweed ‘680 discloses the retention layer and the filter layer are at least partially joined to each other on opposite sides thereof (page 24 ln 26 – 11 and fig. 5).
Regarding claim 8, Zweed ‘680 discloses the delivery wall would be connected to the capsule body (the film closes off the housing 12) (page 27, in 6).
Regarding claim 9, Zweed ‘680 discloses the capsule body would comprise a protective layer a protective layer (PLA and PVOH) which are protective layers (page 26, ln 17 – 19).
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 claim 10, Zweed ‘680 discloses the capsule body and the injection wall would comprise a laminated structure (laminate of two material layers) (page 26, ln 17 – 20).
Regarding claims 19 and 20, Zweed discloses the retention layer and filter layer would be joined on opposite side through adhesive bonding (page 14, ln 28 – 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).
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 grammage would be between 30 and 100 g/m2.
Response to Arguments
Applicant's arguments filed 27 January 2026 have been fully and carefully considered but they are not found persuasive.
Applicant urges that Zweed does not disclose the retention layer would be made of a material that is compostable and with a defined closed fibre structure urging that by teaching a weakened inner layer Zweed is not providing a closed fibre structure. These urgings are not deemed persuasive.
Zweed discloses the retention layer would be made of a cellulose fibre the structure of which fibre is a closed fibre in that there would be no through-holes in the structure of the structure of the retention layer Zweed discloses that the retention layer would not be completely pierced but that it is commonly preferred that the openings, i.e., perforations, do not form through-holes in the weakened layer (page 5, ln 8 – 10 and fig. 1) therefore Zweed is disclosing the use of a closed structure.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at (571) 270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.S./
Chaim SmithExaminer, Art Unit 1791 25 April 2026
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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