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 .
Status of Application
Claims 1-19 are pending and presented for examination.
Response to Arguments
Applicant's arguments filed 2/4/2026 have been fully considered but they are not persuasive. The Applicant argues that none of the cited documents disclose an intermediate space between the wall of the container and the powder compact. However, the Examiner disagrees and maintains that the combination of references make obvious a container including an intermediate space between the wall of the container and the powder compact. Note that both Edwards and Yugo teach a container which is a mesh, wherein the size of the container is larger than the object to be placed inside, thereby providing an intermediate space which is then filled with the coating liquid (see Edwards at Figure 6 and Yugo at abstract and Figure 2). Therefore, the Examiner maintains that the combination of references teaches an intermediate space that is filled with coating liquid.
Applicant argues that the prior art does not provide a shape-defining container. However, this argument is moot as the claims do not require a shape-defining container. Additionally, Applicant argues that Edwards teaches away from the present invention. However, while Edwards teaches fluid flowing freely, Edwards does not discourage the modification as suggested by the Examiner. Therefore, Edwards does not teach away from the claimed modification. Note that the disclosure of desirable alternatives does not necessarily negate a suggestion for modifying the prior art to arrive at the claimed invention. In In re Fulton, 391 F.3d 1195, 73 USPQ2d 1141 (Fed. Cir. 2004), the claims of a utility patent application were directed to a shoe sole with increased traction having hexagonal projections in a "facing orientation." 391 F.3d at 1196-97, 73 USPQ2d at 1142. The Board combined a design patent having hexagonal projections in a facing orientation with a utility patent having other limitations of the independent claim. 391 F.3d at 1199, 73 USPQ2d at 1144. Applicant argued that the combination was improper because (1) the prior art did not suggest having the hexagonal projections in a facing (as opposed to a "pointing") orientation was the "most desirable" configuration for the projections, and (2) the prior art "taught away" by showing desirability of the "pointing orientation." 391 F.3d at 1200-01, 73 USPQ2d at 1145-46. The court stated that "the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." Id. In affirming the Board’s obviousness rejection, the court held that the prior art as a whole suggested the desirability of the combination of shoe sole limitations claimed, thus providing a motivation to combine, which need not be supported by a finding that the prior art suggested that the combination claimed by the applicant was the preferred, or most desirable combination over the other alternatives. Id. See also In re Urbanski, 809 F.3d 1237, 1244, 117 USPQ2d 1499, 1504 (Fed. Cir. 2016). Therefore, the rejections of record are maintained as presented below.
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.
1. Claims 1-19 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 1 recites the limitation "the material". There is insufficient antecedent basis for this limitation in the claim. There is no initial recitation of a material and it is unclear as to what material is being referred to with “the material”. Therefore, claim 1 is indefinite. Claims 2-19 depend from claim 1 and are indefinite for the same reasons. For examination purposes, the claim has been interpreted as “the holes being regularly arranged and each having at least substantially the same shape and size”
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.
2. Claim(s) 1-3 and 11-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nickel (U.S. PGPUB No. 2018/0206515) in view of Edwards et al. (U.S. PGPUB No. 2019/0223466) and Yugo et al. (WO 2000064233, of reference is made to the English translation provided by Applicant).
Regarding claims 1-3 and 11-19, Nickel teaches a method for coating a powder compact (abstract) comprising: providing a powder compact of coffee (abstract), which can be spherical (0022) and made by pressing with a pressure of 0.01-1000 MPa (0021); introducing a coating liquid containing a coating material on to the powder compact (0025); immersing the powder compact and coating material into a hardener liquid containing a hardener compound (0027 and 0030); and removing the coated powder compact from the hardener liquid to provide the coated powder compact (0028). Nickel teaches the coating liquid being an aqueous 0.5-5% sodium alginate solution (0033-0034) and the hardener liquid being an aqueous 1-7% calcium chloride solution (0035) which crosslinks the coating material via ionic and/or coordinative bonds (0011). Nickel fails to teach conducting the process by the additional steps comprising: providing a container having a wall comprising a plurality of holes being regularly arranged and having substantially the same shape and size, such as a metal mesh, with an inlet opening and the container forming a cavity where the powder compact is smaller than the volume of the cavity forming an intermediate space; providing the powder compact in the container, introducing the coating liquid through the inlet to fill the intermediate space; immersing the container in the hardener liquid and then removing the coated powder compact from the container, and wherein the holes are sized such that the less viscous hardener liquid enters the container through the wall, while the coating liquid does not exit through the wall.
First, Edwards teaches a process for forming an encapsulated edible substance (abstract), wherein the edible substance is contained within a crosslinked matrix (abstract). Edwards teaches the edible substance may be a powdered food product or a coffee product (0015-0016) and that the crosslinked matrix may be a sodium alginate crosslinked with calcium chloride (0238-0239). Edwards teaches the process comprising: providing a perforated cage/container comprising walls will holes for the edible substance, (0181) wherein the perforated container may be a metal (0181) mesh cage which by definition has holes which are regularly arranged and substantially the same shape and size (0181) in the shape of a sphere (0181) to accommodate the edible substance to be coated (0181) having inlets for liquid to flow into and out of the container (0181); placing the edible substance which has a smaller volume than the container creating an intermediate space in the perforated container (0180); introducing the coating liquid, such as sodium alginate, into the cavity of the container for filling the intermediate space through the inlets (0175 and 0184); immersing the sodium alginate coated edible substance and container into a hardener liquid (0175 and 0198), such as calcium chloride; and then removing the container from the hardener liquid and removing the coated edible substance from the container to provide the final product (0199). Edwards further teaches the containers may be connected in a rack with other similarly sized containers so that multiple edible products can be coated at once (0201 and Figure 7). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nickel’s process by providing Nickel’s powder in a perforated mesh container having holes regularly arranged and substantially the same size and shape containing an inlet and introducing Nickel’s alginate solution to the powder while in the perforated container through the inlet to fill the intermediate space with the coating liquid, followed by immersing the container in the calcium chloride solution and then removing the crosslinked coated powder from the container and hardening liquid as disclosed by Edwards. One would have been motivated to make this modification as it would allow for a streamlined process in which multiple coffee powders can be coated at once using plural containers as disclosed by Edwards.
Second, Nickel in view of Edwards fail to teach the holes of the container sized such that the less viscous hardener liquid enters the container through the wall while the coating liquid does not exit through the wall. However, Yugo teaches a method of coating (abstract) wherein an article to be coated is placed inside a mold (top of page 6) with a coating agent liquid inside the mold (top of page 6) and then dipping the mold in a hardener liquid, such that the hardener liquid enters the mold and cures the coating agent (top of page 6). Yugo further teaches the mold comprises walls with holes (pages 6 and 7), wherein the holes are sized such that the coating agent liquid does not exit the mold (bottom of page 6) while the hardener liquid can enter the mold through the walls (middle of page 6). Finally, Yugo teaches that the walls of the mold may be comprised of a mesh which by definition has holes that are regularly arranged and have substantially the same shape and size (middle of page 7). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nickel in view of Edwards’ process by having Nickel in view of Edwards’ mesh/perforated walls having holes sized such that the coating agent liquid does not exit the walls while the hardener liquid can enter the container through the mesh walls as disclosed by Yugo. One would have been motivated to make this modification as Yugo teaches that applying the hardener in this manner allows for uniform hardening of the coating agent (abstract).
3. Claim(s) 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nickel in view of Edwards and Yugo as applied to claim 1 above, and further in view of Sun et al. (CN 208239648, reference is made to the provided English machine translation).
Regarding claims 4 and 5, Nickel in view of Edwards and Yugo teach that the cage/container may be made out of steel and may be perforated but fail to explicitly teach that the cage is a stainless steel wire mesh having a mesh size of 0.01-0.3 mm and a wire thickness of 0.01-0.3 mm. However, Sun teaches that it is conventional to utilize stainless steel wire mesh as a container for dip coating a substrate (bottom of page 3, Figure 1, and claims 1-2). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nickel in view of Edwards and Yugo’s process by substituting a stainless steel wire mesh cage in place of the generic steel perforated cage. One would have been motivated to make this modification as one having ordinary skill in the art could have made this modification with a reasonable expectation of success (particularly given that Sun teaches use of the metal mesh as a container for a coating application), and the predictable result of providing a coated powder compact.
Nickel in view of Edwards and Yugo and further in view of Sun fail to explicitly teach the mesh size and wire thickness. However, the mesh size and wire thickness are result-effective variables that would necessarily need to be adjusted based on the size of the article to be coated as well as the coating materials used to allow for the selective permeability. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
4. Claim(s) 6-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nickel in view of Edwards and Yugo as applied to claim 1 above, and further in view of Schroeder (U.S. PGPUB No. 2018/0289033).
I. Regarding claims 6, 9 and 10, Nickel in view of Edwards and Yugo teach all the limitations of claim 1, but fail to teach a tube connected to the inlet opening of the container/cage, wherein the inlet opening has a circular cross-sectional shape, and the container/cage comprising two half-calottes of the same dimension connected by a hinge and enclosing a spherical cavity, wherein one of the half-calottes having the inlet opening at its pole. However, Schroeder teaches a mold for forming edible products (abstract) comprising two half-calottes of the same dimension connected by a hinge and enclosing a spherical cavity, wherein one of the half calottes has an inlet opening at its pole with a circular cross-sectional shape and a round tube that extends from the inlet opening (see Figures 4 and 11). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nickel in view of Edwards and Yugo’s process by providing the metal mesh container as two half-calottes connected by a hinge and including a circular cross-sectional inlet opening and tube extending from the opening as disclosed by Schroeder. One would have been motivated to make this modification as one could have substituted the shape and features of Schroeder’s mold element for Nickel in view of Edwards and Yugo’s cage with a reasonable expectation of success (note that Schroeder’s device is intended for a similar production of an edible component for mass production), and the predictable result of providing a container for holding the powder compact while forming a crosslinked coating on the exterior of the powder compact.
Furthermore, with respect to claim 10, Nickel in view of Edwards and Yugo and further in view of Schroeder fail to teach the diameter of the inlet opening. However, adjusting the diameter of the inlet opening is simply a change in the size of the apparatus. Furthermore, changes in size/proportion have been held as prima facie obvious. (See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package “of appreciable size and weight requiring handling by a lift truck” were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) (“mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled.” 531 F.2d at 1053, 189 USPQ at 148.). In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.).
II. Regarding claims 7 and 8, Nickel in view of Edwards and Yugo and further in view of Schroeder teach all the limitations of claim 6, but fail to teach the diameter of the tube or the length of the tube. However, adjusting the length and diameter of the tubing is simply a change in the size of the apparatus. Furthermore, changes in size/proportion have been held as prima facie obvious. (See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package “of appreciable size and weight requiring handling by a lift truck” were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) (“mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled.” 531 F.2d at 1053, 189 USPQ at 148.). In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.). Therefore, Nickel in view of Edwards and Yugo and further in view of Schroeder make obvious claims 7 and 8.
Conclusion
Claims 1-19 are pending.
Claims 1-19 are rejected.
THIS ACTION IS MADE FINAL. 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 ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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, Dah-Wei Yuan can be reached at 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT S WALTERS JR/
March 13, 2026Primary Examiner, Art Unit 1717