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 .
Claim Objections
Claim 17 is objected to because of the following informalities:
Claim 17 recites the limitation “the food substance” in line 1. It appears the claim should recite “the at least one food substance” in order to maintain consistency with “at least one food substance” recited in Claim 7, line 9.
Appropriate correction is required.
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 7-15 and 17 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 7 recites the limitation “water” in line 11. Water is a type of liquid product. It is unclear if “water” refers to “a liquid product” recited in Claim 7, line 11 or if “water” refers to a different liquid product than the recited “a liquid product.”
Clarification is required.
Claims 8-15 and 17 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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Lim US 2014/0196835 (cited on Information Disclosure Statement filed October 7, 2022) in view of Andreae et al. US 2017/0158422 and Parker et al. US 2020/0063373.
Regarding Claim 7, Lim discloses a molded product consisting essentially of a coffee based granular material consisting of spent coffee grounds (coffee grounds collected which are usually discarded) (‘835, Paragraph [0001]) and at least one binding agent (‘835, Paragraph [0015]) of a methylcellulose derivative (hydroxypropyl methycellulose or carboxymethyl cellulose sodium) (‘835, Paragraph [0016]). The binding agent of methylcellulose derivative (hydroxypropyl methylcellulose or carboxymethyl cellulose sodium) is added in a range of 0.01 to 0.5 g per 1 g of the coffee based granular material (coffee grounds collected which are usually discarded) (‘835, Paragraphs [0001] and [0016]), which can alternatively be expressed as a weight ratio between the coffee based granular material of spent coffee grounds (coffee grounds collected which are usually discarded) and the binding agent methylcellulose derivative (hydroxypropyl methylcellulose or carboxymethyl cellulose sodium) of between 2:1 and 100:1, which overlaps the claimed weight ratio of between the coffee based granular material of spent coffee grounds and the binding agent is between 1:1 and 4:1.
Lim discloses the binder being hydroxypropyl methylcellulose or carboxymethyl cellulose sodium (‘835, Paragraph [0016]). However, Lim is silent regarding the binder being methylcellulose rather than the hydroxypropyl methylcellulose disclosed by Lim. Additionally, Lim is silent regarding the molded product containing the coffee based granular material consisting of spent coffee grounds and the at least one binding agent being a capsule comprising a first body portion containing a dose of at least one food substance and the coffee based granular material consisting of spent coffee grounds and the at least one binding agent being made of a first compostable material. Where the claimed ratio of coffee based granular material to binder ranges overlaps ratio of coffee based granular material to binder ranges disclosed by the prior art, a prima facie case of obviousness exists in view of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05.I.). Furthermore, differences in the ratio of coffee based granular material to binder ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ratio of coffee based granular material to binder ranges 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 in view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.).
Andreae et al. discloses molded product that is a molded capsule (‘422, Paragraph [0028]) made of a biodegradable and compostable material (‘422, Paragraph [0009]) comprising a first body portion (housing 12) (‘422, Paragraph [0042]) and further comprising at least one binding agent of methylcellulose derivatives (carboxymethylcellulose) (‘422, Paragraph [0016]) wherein the biodegradable and compostable material is a vegetable fruit, and garden waste after which the capsule is biodegraded on the molecular level by microorganisms (‘422, Paragraph [0009]) wherein the molded capsule contains a dose of at least one food substance (coffee) (‘422, Paragraph [0042]).
Both Lim and Andreae et al. are directed towards the same field of endeavor of recycled molded products. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the generic molded product that is made of spent coffee grounds mixed with at least one hydroxypropyl methylcellulose of Lim and make the molded product to be a molded capsule made of a biodegradable and compostable material wherein the molded capsule contains a dose of at least one food substance of coffee grounds as taught by Andreae et al. based upon the particular molded article desired to be made.
Further regarding Claim 7, Lim modified with Andreae et al. discloses the binder to be hydroxymethyl cellulose or carboxymethyl cellulose sodium (‘835, Paragraph [0016]). Andreae et al. discloses the housing being made of carboxymethylcellulose (‘422, Paragraph [0016]). However, Lim modified with Andreae et al. is silent regarding the binder to be methylcellulose.
Parker et al. discloses a molded coffee cup article (‘373, Paragraph [0721]) made of wet laid paperboard for containing at least one food substance (coffee and milk powders) (‘373, Paragraph [0645]) wherein the article comprises methyl cellulose binder to adhere wet laid fibers together (‘373, Paragraph [0525]).
Both modified Lim and Parker et al. are directed towards the same field of endeavor of molded articles comprising a binder based on a cellulose derivative. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the molded article of modified Lim that uses hydroxypropyl cellulose or carboxymethylcellulose as the binder and instead use methyl cellulose binder to adhere the fibers together as taught by Parker et al. since the simple substitution of one known element (hydroxypropyl cellulose or carboxymethylcellulose binder of Lim) for another (methylcellulose binder of Parker et al.) to obtain predictable results (to serve as a binder in a molded article) is prima facie obvious (MPEP § 2143.I.(B)). Furthermore, the selection of a known material (methylcellulose) based on its suitability for its intended use (as a material to make a molded article) 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). Parker et al. teaches that there was known utility in the molded article art to use methyl cellulose as a binder in making molded articles.
Further regarding Claim 7, the limitations “the first body portion maintains its structural characteristics when the capsule is used in a machine for dispensing a liquid product by introduction of water and/or steam at a temperature between 50°C and 100°C and a pressure between 1 bar and 30 bar” are limitations with respect to the first body portion of the capsule which first body portion is made of a first compostable material of a coffee based granular material and methylcellulose. Andreae et al. discloses the capsule being capable of being used at a hot water temperature of about 95°C (‘422, Paragraph [0045] or higher temperatures of between 90°C and 100°C under the effect of pressure build up in the capsule to make the beverage (‘422, Paragraph [0008]), which explicitly teaches the use of the capsule under the claimed water introduction temperature of between 50°C and 100°C. The capsule also withstands relatively high temperatures up to the boiling point of water (‘422, Paragraph [0023]), which boiling point of water is known in the art to be 100°C at standard temperature and pressure. Beverage capsules are also known to be capable of operating under a fairly high pressure of 6-20 bar (‘422, Paragraph [0002]), which falls within the broad pressure at which the first body portion maintains its structural characteristics when used at a pressure of between 1 bar and 30 bar. Furthermore, the combination of Lim modified with Andreae et al. and Parker et al. teaches a compostable capsule having a first body portion being made of the same materials as claimed as a coffee based granular material and methylcellulose. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established in view of In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP § 2112.01.I.). Additionally, products of identical chemical composition can not have mutually exclusive properties in view of In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (MPEP § 2112.01.II.). Since the prior art combination of Lim modified with Andrae et al. and Parker et al. teaches a compostable capsule having a first body portion made of the same materials as claimed, one of ordinary skill in the art would expect the prior art combination of Lim modified with Andreae et al. and Parker et al. to have the same properties as claimed, i.e. the first body portion maintains its structural characteristics when the capsule is used in a machine for dispensing a liquid product by introduction of water and/or steam at a temperature between 50°C and 100°C and a pressure between 1 bar and 30 bar.
Claims 8-9 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Lim US 2014/0196835 (cited on Information Disclosure Statement filed October 7, 2022) in view of Andreae et al. US 2017/0158422 and Parker et al. US 2020/0063373 as applied to claim 7 above in further view of Cabilli et al. US 2017/0081112.
Regarding Claim 8, Andreae et al. discloses the capsule comprising a second body portion (film 13) and the capsule comprising an inside and an outside wherein the capsule contains in the inside the dose of at least one food substance (coffee grounds) for preparation of a liquid product (‘422, FIG. 3) (‘422, Paragraph [0055]). Each of the first body portion (housing 12) and the second body portion (film 13) comprises an outer surface and an inner surface (‘422, Paragraphs [0041]-[0043]). The first body portion (housing 12) and the second body portion (film 13) comprises the compostable material (‘422, Paragraphs [0041]-[0043]) and the first body portion (housing 12) and the second body portion (film 13) being joined with respective outer surfaces facing the outside of the capsule and the respective inner surfaces facing each other and the inside of the capsule (at laterally protruding engaging edge 12c) (‘422, FIG. 2) (‘422, Paragraph [0042]).
Lim modified with Andreae et al. and Parker et al. is silent regarding at least one of the first and the second body portion comprising a concave inner surface.
Cabilli et al. discloses a compostable capsule (capsule 1) (‘112, Paragraphs [0020] and [0027]) capable of containing a dose (dose 2) of at least one food substance (ground coffee) (‘112, Paragraph [0018]). Cabilli et al. further discloses the capsule being molded (‘112, Paragraph [0020]) and having a first body portion (body 3) and a second body portion (foil 5) wherein the first body portion (body 3) comprises a concave inner surface (at bottom 6) (‘112, FIGS. 2 and 15) (‘112, Paragraph [0022]).
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Both modified Lim and Cabilli et al. are directed towards the same field of endeavor of molded articles. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the shape of the mold used to make the molded article of modified Lim and make the first body portion to have a concave inner surface as taught by Cabilli et al. since the configuration of the claimed molded coffee capsule article is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed molded coffee capsule article was significant in view of In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (MPEP § 2144.04.IV.B.). Cabilli et al. teaches that there was known utility in the molded coffee capsule art to construct coffee capsules with a concave inner surface of the first body portion.
Regarding Claim 9, Cabilli et al. discloses the first body portion (body 3) extending on a sidewall (peripheral circumferential wall 4) and on a first end wall (bottom 6) and the second body portion (top face 5) extending only on a second end wall (‘112, FIGS. 2 and 15) (‘112, Paragraph [0019]).
Regarding Claim 14, Andreae et al. discloses the second body portion (compostable film 13) comprising a second compostable material of polyvinyl alcohol (PVOH) (‘422, Paragraphs [0042]-[0043]). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the second body portion to be made of a compostable paper material as taught by Andreae 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). Andreae et al. teaches that there was known utility in the molded coffee capsule article art to construct the first body portion and/or second body portion out of compostable paper.
Claims 10 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Lim US 2014/0196835 (cited on Information Disclosure Statement filed October 7, 2022) in view of Andreae et al. US 2017/0158422, Parker et al. US 2020/0063373, and Cabilli et al. US 2017/0081112 as applied to claim 8 above in further view of Fond et al. US 6,068,871.
Regarding Claim 10, Lim modified with Andreae et al., Parker et al., and Cabilli et al. is silent regarding the first body portion and the second body portion having a lenticular shape.
Fond et al. discloses a beverage preparation from a substance compacted into a cake (‘871, Column 4, lines 42-46) and contained in a lenticular shaped sachet (‘871, Column 3, lines 5-20) made using a mold (‘871, Column 3, lines 48-60).
Both modified Lim and Fond et al. are directed towards the same field of endeavor of molded articles. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the shape of the mold used to make the molded coffee capsule article of modified Lim and make the first body portion and the second body portion to have a lenticular shape as taught by Fond et al. since the configuration of the claimed molded coffee capsule article is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed molded coffee capsule article was significant in view of In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (MPEP § 2144.04.IV.B.). Fond et al. teaches that there was known utility in the molded coffee capsule article art to construct coffee capsules with a first body portion and a second body portion having a lenticular shape.
Regarding Claim 15, Fond et al. discloses a beverage preparation from a substance compacted into a cake (‘871, Column 4, lines 42-46).
Both modified Lim and Fond et al. are directed towards the same field of endeavor of molded coffee capsule articles. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the dose of coffee disposed in the coffee capsule of modified Lim and make the dose of coffee to be compacted as taught by Fond et al. since the configuration of the claimed dose of coffee in the coffee capsule is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed capsule was significant in view of In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (MPEP § 2144.04.IV.B.). Fond et al. teaches that there was known utility in the molded coffee capsule article art to construct coffee capsules with a dose of coffee that is compacted.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Lim US 2014/0196835 (cited on Information Disclosure Statement filed October 7, 2022) in view of Andreae et al. US 2017/0158422, Parker et al. US 2020/0063373, and Cabilli et al. US 2017/0081112 as applied to claim 8 above in further view of Appleford et al. US 2020/0231370.
Regarding Claim 11, Lim modified with Andreae et al., Parker et al., and Cabilli et al. is silent regarding the first body portion being connected to the second body portion by contact adhesion wherein the capsule is free of synthetic adhesive substances.
Appleford et al. discloses a plant fiber capsule adapted to house ground coffee (‘370, Paragraph [0002]) comprising a first body portion and a second body portion (sealing closure) wherein the first body portion is connected to the second body portion (sealing closure) by contact adhesion (starch based contact adhesive) wherein the capsule is free of synthetic adhesive substances (a biopolymer film allowing the closure or cap to be bonded by use of a heat seal) (‘370, Paragraph [0109]).
Both modified Lim and Appleford et al. are directed towards the same field of endeavor of plant fiber capsules. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the molded coffee capsule article of modified Lim and connect the first body portion to the second body portion by contact adhesion wherein the capsule is free of synthetic adhesive substances, i.e. uses biopolymers, as taught by Appleford 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). Appleford et al. teaches that there was known utility in the molded coffee capsule article art to connect the first body portion to the second body portion by contact adhesion wherein the capsule is free of synthetic adhesive substances.
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Lim US 2014/0196835 (cited on Information Disclosure Statement filed October 7, 2022) in view of Andreae et al. US 2017/0158422, Parker et al. US 2020/0063373, and Cabilli et al. US 2017/0081112 as applied to claim 8 above in further view of Kamerbeek et al. US 2012/0225168.
Regarding Claims 12-13, Lim modified with Andreae et al., Parker et al., and Cabilli et al. is silent regarding at least one of the first body portion and the second body portion having a structure comprising at least one hole through which the liquid product can flow from the capsule or at least one of the sidewall, the first end wall, and the second end wall having a structure comprising at least one hole through which the liquid product can flow from the capsule.
Kamerbeek et al. discloses a capsule (capsule 2) comprising a biodegradable material capable of containing a dose of at least one food substance (coffee) (‘168, Paragraphs [0020] and [0047]). The capsule comprises a first body portion and a second body portion. The first body portion develops on a side wall (circumferential wall16) and on a first end wall (bottom 18) and the second body portion develops only on a second end wall (lid 14) (‘168, Paragraph [0041]).. Kamerbeek et al. further discloses the first end wall (bottom 18) of the first body portion and the second end wall of the second body portion (lid 14) having a structure comprising at least one hole ( at least one entrance opening 25, exit openings 27) through which the liquid product can flow from the capsule (‘168, FIG. 1) (‘168, Paragraphs [0041]-[0042] and [0051]).
Both modified Lim. and Kamerbeek et al. are directed towards the same field of endeavor of molded coffee capsule articles. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the molded coffee capsule article of modified Lim and incorporate a structure comprising at least one hole through which the liquid product can flow from the capsule onto at least one of the first end wall of the first body portion and the second end wall of the second body portion as taught by Kamerbeek et al. since the configuration of the claimed molded coffee capsule article is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed molded coffee capsule article was significant in view of In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (MPEP § 2144.04.IV.B.). Kamerbeek et al. teaches that there was known utility in the molded coffee capsule article art to construct coffee capsules with at least one hole through which the liquid product can flow from the capsule onto at least one of the first end wall of the first body portion and the second end wall of the second body portion.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Lim US 2014/0196835 (cited on Information Disclosure Statement filed October 7, 2022) in view of Andreae et al. US 2017/0158422 and Parker et al. US 2020/0063373 as applied to claim 7 above in further view of Marcinkowski US 2017/0355515.
Regarding Claim 17, Andreae et al. discloses the at least one food substance being ground coffee (ground coffee 26) (‘422, Paragraphs [0004] and [0055]) and the liquid product being coffee (beverage comprising extracted and/or dissolved ground coffee) (‘422, Paragraph [0028]).
Lim modified with Andreae et al. and Parker et al. is silent regarding the at least one food substance of ground coffee being roasted.
Marcinkowski discloses a compostable capsule (cartridge 10) (‘515, Paragraph [0017]) comprising at least one food substance of roast and ground coffee (‘515, Paragraph [0030]).
Both modified Lim and Marcinkowski are directed towards the same field of endeavor of compostable beverage capsules used to make a liquid beverage product out of at least one food substance of ground coffee. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the compostable capsule of modified Lim and dispose roasted coffee grounds into the capsule as taught by Marcinkowski 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). Marcinkowski teaches that there was known utility in the beverage capsule art to introduce at least one food substance of roasted coffee grounds in making a coffee beverage.
Response to Arguments
Examiner notes that new Claim Objections and new indefiniteness rejections under 35 USC 112(b) have been made in view of the amendments.
Applicant's arguments filed September 11, 2025 with respect to the previous obviousness rejections under 35 USC 103(a) have been fully considered but they are not persuasive.
Applicant argues on Page 7 of the Remarks that the Office Action fails to provide a reason why the skilled person would not use one of the over 20 binders disclosed in Lim at Paragraph [0016]) and also fails to provide a reason why the skilled person considering Parker would choose methylcellulose out of the list of over 40 binders disclosed in Paragraph [0525] considering that Parker does not disclose an actual composition comprising methylcellulose. Applicant continues that methylcellulose when used instead of hydroxyproypyl cellulose and carboxymethylcellulose provides a capsule showing higher rigidity and tensile strength with a lower elongation at break which behavior allegedly has critical implications for molded capsules intended to withstand thermal shocks or high pressure brewing in coffee machines. Applicant also argues that Parker relates to molded wet laid paperboard cups and does not teach or suggest the use of methylcellulose in contact with roasted and ground coffee materials nor in a context where the binder must maintain mechanical integrity and disintegration control under coffee brewing conditions.
Examiner argues Lim discloses the coffee grounds being mixed with hydroxypropyl methyl cellulose or a list of other binding agent materials (‘835, Paragraph [0016]) as specific examples of what the binding agent materials could be. Lim also discloses that the described examples are not limited by any of the details of the foregoing description unless otherwise specified but should be construed broadly within its spirit and scope (‘835, Paragraph [0018]). Lim does not explicitly limit the binding agent materials that are mixed with the coffee grounds to be limited to those disclosed in Paragraph [0016]) of Lim. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments in view of In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971) (MPEP § 2123.II.). Parker et al. discloses a molded coffee cup article (‘373, Paragraph [0721]) made of wet laid paperboard for containing at least one food substance (coffee and milk powders) (‘373, Paragraph [0645]) wherein the article comprises methyl cellulose binder to adhere wet laid fibers together (‘373, Paragraph [0525]). Both modified Lim and Parker et al. are directed towards the same field of endeavor of molded articles comprising a binder based on a cellulose derivative. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the molded article of modified Lim that uses hydroxypropyl cellulose or carboxymethylcellulose as the binder and instead use methyl cellulose binder to adhere the fibers together as taught by Parker et al. since the simple substitution of one known element (hydroxypropyl cellulose or carboxymethylcellulose binder of Lim) for another (methylcellulose binder of Parker et al.) to obtain predictable results (to serve as a binder in a molded article) is prima facie obvious (MPEP § 2143.I.(B)). Furthermore, the selection of a known material (methylcellulose) based on its suitability for its intended use (as a material to make a molded article) 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). Parker et al. teaches that there was known utility in the molded article art to use methyl cellulose as a binder in making molded articles. With respect to applicant’s arguments that Parker relates to molded wet laid paperboard cups and does not teach or suggest the use of methylcellulose in contact with roasted and ground coffee materials nor in a context where the binder must maintain mechanical integrity and disintegration control under coffee brewing conditions, the primary reference of Lim already teaches coffee ground materials mixed with binding agents comprising a methylcellulose derivative (‘835, Paragraph [0016]). Parker et al. is being relied upon to substitute the methylcellulose derivative that serves as the binding agent disclosed in Lim to be methylcellulose to be used in a molded coffee cup (‘373, Paragraph [0721]) which is capable of operating in hot conditions (‘373, Paragraph [0560]). In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Therefore, these arguments are not found persuasive.
Applicant argues on Pages 8-9 of the Remarks that the higher performance of methylcellulose in molded coffee articles was not predictable from the behavior of other cellulose derivatives. Applicant alleges that experimental trails and formulation adjustments were necessary to achieve the desired mechanical strength, disintegration profile, and shelf stability. Applicant contends that the preferred binding agent of the application is methylcellulose and is allegedly shown by the experimental tests provided in the disclosure at Pages 18-23 and that the use of methylcellulose in the claimed capsule results in unexpected technical effects including improved structural integrity by enhancing cohesion during extraction in the molded matrix. And that the capsule made of compostable material consisting of coffee based granular material and methylcellulose has been shown to maintain characteristics of stiffness such as to enable optimal dispensing without releasing any powder or residue in the liquid product prepared and/or in the machine for the preparation of the liquid product wherein the capsules made of compostable material described maintain their shape, elasticity, and sealing when used in machines by introduction of water and/or steam at a temperature between 50°C and 100°C and a pressure between 1 bar and 30 bar. Applicant also alleges the specific weight ratio between the two components of 1:1 and 4:1 allows achieving a compostable material free of plasticizing agents such as polyol compounds and being suitable to be molded as shown in the first and fifth set of experiments.
Examiner argues the first set of experiments described by applicant optionally includes glycerol. Claim 7 does not recite glycerol. Additionally, Claim 7 does not require the capsule to be free of polyols. Applicant first set of experiments is not commensurate in scope with the claimed invention. Additionally, applicant’s first set of experiments provides data of a coffee to methylcellulose ratio of 4:1, 9:1, and 7:3. Applicant’s third set of experiments provides data of a coffee to methylcellulose ratio of 80:20, 80:20, and 50:50, i.e. 4:1, 4:1, and 1:1. Claim 7 recites a coffee based granular material to methylcellulose weight ratio of 1:1 and 4:1. Applicant provides no data below the claimed weight ratio range. To establish unexpected results over a claimed range, applicants should compare a sufficient number of testes both inside and outside the claimed range to show the criticality of the claimed range in view of In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) (MPEP § 716.02(d).II.). Applicant has not shown any data showing how the weight ratio of coffee to methylcellulose behaves below the claimed weight ratio range. Regarding applicant’s fifth set of experiments, applicant contends that the materials 20:80 and 50:50 have a “good” surface adhesion in molding and does not cause tearing which 50:50 materials are suitable for the production of thin sheets. It is noted that 20:80 ratio falls outside of the claimed weight ratio. Additionally, it is unclear what constitutes a “good” surface tension. Additionally, applicant makes no comment on the surface adhesion and/or tearing during molding of the 30:70 ratio. Applicant also provides no objective data supporting the allegation that with the increase in the amount of methylcellulose of materials 30:70 the material can undergo phenomena of shrinkage during drying which generates stresses and induces failure of the material. Arguments presented by the applicant cannot take the place of evidence in the record in view of In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984) (MPEP § 716.01(c).II.). With respect to applicant’s comments that materials comprising coffee and methylcellulose with a weight ratio of 80:20 but also of 50:50 can be easily extracted from the mold cavities and have few or no surface defects, it is first noted that applicant makes no comment regarding extraction of 30:70 from the mold cavity or the surface defects of 30:70. Applicant also provides no data supporting any of these allegations. Therefore, applicant has not provided objective data that is commensurate in scope with the claimed invention showing the alleged unexpected results and/or criticality of the claimed weight ratio of the coffee based granular material and the methylcellulose.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hayes US 2006/0009609 discloses a coated coffee cup (‘609, Paragraph [0126]) comprising a blendable natural polymeric materials of methylcellulose mixed with high boiling plasticizers (‘609, Paragraph [0063]) wherein the cup is intended for hot drinks (‘609, Paragraph [0151]) and made using any known methods including injection molding (‘609, Paragraph [0154]) or extrusion (‘609, Paragraph [0176]).
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.
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/ERICSON M LACHICA/Examiner, Art Unit 1792