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 Amendment
The amendment filed on or after October 9, 2025 has been entered. Claims 1-11 have been canceled by the applicant. Claims 12-15 are new and pending in the application. In response to the applicant’s arguments and amendments, a more detailed action and references are provided.
Response to Arguments
The arguments filed October 9, 2025 have been fully considered, but they are not fully persuasive. Regarding the applicant’s arguments that:
The applicant’s cancellation of claims 1-11 overcomes the original 112f interpretation: With this, the examiner agrees. The original 112f interpretation is withdrawn. However, the new claims present additional 112f interpretations addressed below.
The applicant’s cancelation of Claims 1-11 and addition of new claims 12-15 overcome the original grounds of rejection presented by the examiner: The examiner partially agrees with this assertion. The examiner agrees that the original grounds of rejection (regarding claims 1-11) should be withdrawn on the basis that the applicant has canceled the claims addressed in the examiner’s pervious action. New grounds of rejection are presented to address the limitations of the new claims.
Greenwald does not teach or suggest the ability to make American and espresso coffee: The examiner respectfully disagrees with this assertion. As set forth in the previous office action, Greenwald teaches “first operating mode for espresso coffee (“espresso [coffee]” Col 10 Line 59) according to which said infusion valve is always open during the entire opening time of the dispensing valve (one operating mode “keep[s] the hot water solenoid [valve] open” Col 11 Line 21 ), for dispensing espresso coffee through the first filter holder ( the controller of Greenwald controls the valves so that they remain open throughout beverage production which would serve the function of dispensing espresso coffee through the first filter holder when modified by Mercier and Hufnagl) ; a second operating mode for American coffee (“Commercial coffee” Col 9 Line 20),” which reads on the limitation of the original claim.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
“Control unit for programming and controlling the operation of the coffee machine” (Claim 12) The control unit is described the specs [0065] as “comprises a memory and programming unit” but these elements do not necessarily add to the structural limitations of the invention. As a result, any structural limitation with the capacity to perform the functions described and act as a controller will be understood to read on the limitation of the claim.
“Programming unit… is used to set a number of pulses of said pulse train, a duration of each pulse and a frequency of the pulse train (Claim 14). The programming unit is described by the specifications [0065] as a part of the control unit, but no structural imitations are given. For the sake of examination, any element with capacity to program or input commands to the controlling unit will be understood to read on the limitations of the claim.
Claim Objections
Claim 12 is objected to because of the following informalities: The claim language features the following assumed typos “woater” and “precolate” both in the second to last line of the claim. For the sake of prosecution, the above will be understood as “water” and “percolate” respectively. Appropriate correction is required.
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.
Claim 14 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. In particular, claim 14 presents the claim limitations “programming unit” which was not expanded upon in the specification in order to enable one skilled in the art to which it pertains.
Claim 14 is 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. In particular, claim 14 presents the claim limitations “programming unit” which is interpreted under 112(f) and has no corresponding structure in the specification.
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.
Claim 12-15 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.
Claim 12 recites “the dispensing mouth”. As it stands, there is insufficient antecedent basis for this limitation in the claim. However, the limitations “a delivery mouth” and a “the dispensing mouth” appear to refer to the same structure. As a result, for the purpose of examination, the limitation has been interpreted as and may be corrected to “the delivery mouth”.
Additionally, claim 12 presents the following limitations “a first filter holder tightly coupled to the delivery mouth of said at least one dispensing unit” and “said second filter holder is tightly coupled to the dispensing mouth of said at least one dispensing unit” which muddy the scope of the claim. It is unclear whether it is the applicant’s intention, based on provided drawings and specifications, to have both holders coupled to the same mouth or separate mouths. Correction is recommended to either “said second filter holder is configured to be coupled to the delivery mouth” or “said second filter holder is couple to a second delivery mouth of said at least one dispensing unit” based on applicant’s intent.
The remaining rejected claims are rejected for their dependence on an indefinite claim.
Regarding Claim 14: Claim limitation “programming unit” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
Claims 12 -15 are rejected under 35 U.S.C. 103 as being unpatentable over Wei (US Pub No. 2004/0244599 A1) in view of Greenwald (US 7,654,191 B2):
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Regarding Claim 12: Wei teaches a coffee machine (“multi-function coffee machine” Abstract) comprising: a water system (the water system of the invention comprises “a water reservoir, a water pump, an electric heater, a water distributor assembly” [0006] which regulates the water temperature and pressure [0041]) adapted to circulate pressurized hot water (further shown in figure 3a); at least one dispensing unit (figure 4A labeled “Dispensing Unit”) having a delivery mouth (annotated figure 4A above “delivery mouth”), said at least one dispensing unit adapted to be supplied with the pressurized hot water (via inlet, see Fig 4a); a first filter holder (“small pod seat” [0048] Figure 5 Element 5) tightly coupled to the delivery mouth of said at least one dispensing unit (configuration shown in figure 5), said first filter holder housing a first filter (“espresso coffee capsule” Figure 5 Element 3) adapted to prepare espresso coffee, the first filter forming a circular tub with a bottom wall, the bottom wall being perforated with small holes (The capsule 3 in figure 5 is shown with dots which represent perforations, which are required to release liquid to interface with filter 6 underneath the capsule); a dispensing valve (“guided control valve” [0037] shown in Figure 4A) cooperative with said at least one dispensing unit and adapted to enable or disable a delivery of the pressurized hot water to said at least one dispensing unit; an infusion valve (“T-Connecting Valve” [0037] shown in Figure 4A) disposed upstream of said dispensing valve (Figure 4A further shows that the infusion valve is upstream of the dispensing valve), said infusion valve being an on-off valve (“Then, channel A is opened by the guided control valve and channel B is closed.”[0041] and [0049]); … and a second filter holder (“big pod seat” [0050] Figure 6 Element 15) that houses a second filter (“Second Filter” labeled in Figure 6 comprising Element 17 and the “upper collar” as annotated) , the second filter adapted to contain coffee powder (“drip coffee powder” [0055]) for preparation of American coffee, the second filter having a basket with an upper collar (See annotated Figure 6 which shows and “upper collar” attached to the basket of the drip coffee attachment), the upper collar having a cylindrical shape, a bottom of the upper collar being joined with a conical hopper perforated with a plurality of small holes (See annotated Figure 6 which shows a “hopper” with a plurality of small holes through which the drip coffee is filtered), wherein said second filter holder is tightly coupled to the dispensing mouth of said at least one dispensing unit so as to define a chamber (Figure 7b Element 41 shows a chamber containing “drip coffee powder) between the second filter and said at least one dispensing unit (configuration shown in 7b), the chamber containing the coffee powder wherein said infusion valve …[operates]… in accordance of one of a first operating mode and a second operating mode (“two different…working modes” [0037] and [0041]), the first operating mode being for making the espresso coffee (“espresso coffee” [0037]) in which the first filter holder is coupled to the at least one dispensing unit (Figure 5) wherein the second operating mode is for making the American coffee (“drip coffee” mode [0037]), the second filter holder being coupled to said at least one dispensing unit (Figure 6)
in the first operating mode, said infusion valve being open (valve remains “opened” [0041]) during an entire operating time of the dispensing valve in the first operating mode so as to dispense the espresso coffee (“for dispensing espresso coffee” [0041]) through said first filter holder (“small pod seat” [0048] Figure 5 Element 5)
Wei does not explicitly teach that a the invention has an electronic control unit adapted to control an operation of the coffee machine or that in the second operating mode, said infusion valve being intermittently opened and closed such that at every opening time interval of said infusion valve a volume of water poured into the second filter is less than a volume of air contained in the chamber between the second filter and said at least one dispensing unit, wherein during every closing time interval of said infusion valve the amount of water dispensed during the preceding opening time interval is sufficient to percolate completely through the second filter.
However, Greenwald does teach a beverage making machine (“Beverage dispenser” Abstract) controlled by a control unit (microprocessor controller” Col 6 Line 51) according to two alternative operating modes (the invention operates according to different mode[s] of operations” Col 10 Lines 4-40) wherein the second operating mode for American coffee (“Commercial coffee” Col 9 Line 20), according to which said infusion valve is intermittently opened and closed (“invention may inject water… in short pulses…repeating until the brewing is completed” Col 10 Line 9-12), in such a way that, at every opening time interval of the infusion valve, the volume of water poured into said second filter is lower than the volume of air contained in the chamber between the second filter and the dispensing unit (the controller controls “ the volume of flow” Col 4 Lines 62-64 released during every opening interval and it would be obvious to specify that the volume of water is less than the volume of air present in the second filter to prevent overflow/backflow as required to provide the “many very short brewing periods” as disclosed at col 4 lines 7-13) ; and every closing time interval of the infusion valve is sufficient for the amount of water dispensed during a preceding opening time interval of the infusion valve to percolate completely through the second filter (col 10 lines 7-13, “8 seconds...many very short brewing periods”).
Therefore, it would also be obvious to one of ordinary skill in the art at the time of invention, to modify the invention of Wei with the many very short brewing periods” for American coffee only and an electronic controller disclosed by Greenwald in order to “optimize extraction time” (Col 10 Lines 42-43) of the ground “coffee beans” (Col 10 Line 37) for drip-coffee as well as “allow the optimization of the brewing parameters…to achieve a high quality coffee and a high efficiency extraction” (Col 10 Lines 24-29).
Regarding Claim 13: Wei as modified by Greenwald further teaches that the control unit (microprocessor controller” Col 6 Line 51 Greenwald) has a switch (“dispense lever” Col 6 Line 49 Greenwald) controlling said infusion valve (“T-Connecting Valve” [0037] shown in Figure 4A Wei) with a pulse train, the pulse train having a number of pulses (“short pulses” of variable time, amount and frequency Col 10 Lines 1-19, col 3 lines 53-56 “Preferably, the control of the valves is by pulse-width modulation, in which the valves are turned fully on and fully off, and the flow is controlled by varying the ratio of "on" and "off" times ("duty cycle")” Greenwald).
Regarding Claim 14: Wei as modified by Greenwald further teaches that the control unit (microprocessor controller” Col 6 Line 51 Greenwald) comprises a memory (Greenwald col 6 lines 50-53: a programmable microprocessor controller inherently has a memory, i.e. to store the program) and programming unit (Greenwald col 6 lines 50-53 “touch screen 31”) that is used to set a number of pulses and a frequency of the pulse train (“short pulses” of variable time, amount and frequency Col 10 Lines 1-19 Greenwald).
Regarding Claim 15: Wei further teaches that the second filter holder (“big pod seat” [0050] Figure 6 Element 15 Wei) comprises an annular body (shown in Figure 6 Wei) that defines a circular seat, the basket being housed in the seat (shown in Figure 6 Wei).
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 SOLAN OLIVA whose telephone number is (571-)272-2518. The examiner can normally be reached Monday-Thursday 7:00-3:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Topaz Elliot can be reached at (571) 270-5851. The fax phone number for the organization where this application or proceeding is assigned is 571-270-5569.
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/SOLAN OLIVA/Examiner, Art Unit 3761
/TOPAZ L. ELLIOTT/Primary Examiner, Art Unit 3761