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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/4/2022 has been considered by the examiner.
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.
Claim 6 is 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 6 recites, “wherein a material composition of the foam material corresponds to a material composition of the base element and/or of the cover element.” It is unclear what “corresponds to” means in this context. That is, does “corresponds to” mean (A) ‘is the same as,’ or (B) ‘is related to,’ and if so, what is the relation, or (C) does the limitation of claim 6 mean that the material composition of the foam material and the material composition of the base element and/or of the cover element are such that the portion capsule will result in extracting a liquid from the extraction material? For examination purposes, claim 6 will be interpreted as described in (C).
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, and 5-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mahlich (US 2012/0070543).
Regarding claim 1, Mahlich discloses a portion capsule (“portion capsule “ [Abstract]) comprising a base element (Fig. 1, “capsule body 2” [0059]) having a capsule base (Fig. 1, “closed capsule base 3” [0059]) and a circumferential side wall (Fig. 1, side wall of “capsule body 2” [0059]), a cover element (Fig. 1, “cover film or foil 6” [0059]) attached to the base element (Fig. 1; “closed capsule base 3 and having a collar edge 5 which is arranged on the filling side 4 of said capsule body and to which a cover film or foil 6 is welded or adhesively bonded” [0059]) and together with the base element forming an interior space (Fig. 1, “cavity 100” [0059]) having an extraction material region filled with an extraction material (Fig. 1, “beverage substance 101” [0059]), and a filter element (Fig. 1, “filter element 7” [0059]) disposed in the interior space (Fig. 1) and separating the extraction material region from the capsule base (Fig. 1) or from a capsule cover formed by the cover element, wherein the filter element is formed of an open pore foam material (“provision is made for the filter element to comprise an open-pore sponge and/or an open-pore foam” [0019]).
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Fig. 1 of Mahlich
Regarding claim 2, Mahlich discloses wherein the base element (Fig. 1, “capsule body 2”) forms a circumferential flange (Fig. 1, “collar edge 5” [0059]) and the cover element is attached to the base element along the circumferential flange (“collar edge 5 which is arranged on the filling side 4 of said capsule body and to which a cover film or foil 6 is welded or adhesively bonded” [0059]).
Regarding claim 5, Mahlich discloses wherein the base element and/or the cover element is made of a biodegradable plastic (“The capsule body is preferably in the form of a truncated cone or cylinder and is, for example, produced from plastic, a natural material and/or a biologically degradable material comprising a thermoformed plastic film or using a plastic injection molding process” [0020]).
Regarding claim 6, Mahlich discloses wherein a material composition of the foam material corresponds to a material composition of the base element and/or of the cover element (“The capsule body is preferably in the form of a truncated cone or cylinder and is, for example, produced from plastic, a natural material and/or a biologically degradable material comprising a thermoformed plastic film or using a plastic injection molding process” [0020]; “The filter element with a felt structure is preferably produced from PET [polyethylene terephthalate]” [0074]; the material composition of the foam material of the filter corresponds to the material composition of the base element, as interpreted in the 112(b) rejection above).
Regarding claim 7, Mahlich discloses wherein the filter element directly contacts the capsule base or the cover element (“filter element 7 is situated either loosely on the inner side 3a of the capsule base 3 or is firmly, that is to say preferably cohesively, connected to the inner side 3a of the capsule body base 3. In the second variant, the filter element 7 is attached in a cohesive manner to the capsule base 3, in particular only in an edge region 3' of the capsule base 3” [0059]).
Regarding claim 8, claim 8 recites “[t]he portion capsule according to claim 1, wherein the filter element is produced by cutting into slices a strand made of the foam material, wherein the filter element is one of said slices.” Accordingly, claim 8 is a product-by-process claim. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113. In this case, the product of claim 8 is the same as the product of Mahlich as described in the rejection of claim 1. Therefore, Mahlich anticipates claim 8.
Regarding claim 9, Mahlich discloses a method for producing a portion capsule according to claim 8 (please see the rejection of claims 1 and 8 regarding Mahlich’s disclosure of the portion capsule), wherein a filter element is produced by cutting into slices a strand made of a foam material (“he filter element is cut out of a fabric web and inserted into the capsule. The cut-out filter element is preferably transported at least a certain distance by the blade, in particular a concave blade, which cuts it out” [0038]; “the filter element is cut out of a strip and, preferably by the blade, inserted into the capsule and there fitted to the base, preferably sealed to said base, and then the powder or the tea is filled onto the filter element and the capsule is then sealed off by a cover film or foil” [claim 26]), wherein one of the slices is placed in the base element as the filter element (“filter element 7 comprising a non-woven filter or a sponge or foam filter is arranged on the inner side 3a of closed capsule body base 3, that is to say within the cavity 100” [0059]) or is attached to the cover element, the base element is filled with the extraction material (described below), and the cover element is then attached to the base element (“cavity 100, which is preferably sealed off in an air- and aroma-tight manner, is formed between the capsule base 3 and the cover film or foil 6, said cavity being filled with a pulverulent or granular beverage substance 101” [0059]).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Mahlich (US 2012/0070543) in view of Kaiserman (US 2019/0308804).
Regarding claim 3, Mahlich discloses wherein the foam material is an open pore material (“provision is made for the filter element to comprise an open-pore sponge and/or an open-pore foam” [0019]).
Mahlich does not expressly disclose wherein the foam material is a polypropylene (PP) plastic.
Kaiserman is directed to a beverage cartridge which includes a filter [Abstract]). Kaiserman discloses wherein the foam material is a polypropylene (PP) plastic (“the filter 304 may be made of a filter material including synthetic materials such as polyethylene, polypropylene or other materials such as cellulosic materials, natural or synthetic materials, permeable or impermeable plastic material, a sponge like material, foam, ceramic, zeolites, cellulose, natural and/or synthetic fabrics, etc., and/or combinations and layers of such materials” [0037]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the foam material is a polypropylene (PP) plastic. This is the use of a known filter material, applied to a known portion capsule, to achieve predictable results. Furthermore, the courts have held it to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. MPEP 2144.07.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Mahlich (US 2012/0070543) in view of Cai (US 2002/0078831).
Regarding claim 4, Mahlich does not expressly disclose wherein the foam material is biodegradable.
Cai is directed to a cartridge and method for making fluid comestibles [Title]. Cai discloses a filter material that is biodegradable (“The cartridge inlet, chamber and filter can be made of the same material such as polyester, polypropylene or nylon to facilitate recyclability or reuse of the material, and can be made of degradable materials such as biodegradable poly(lactic acid), thereby reducing the burden to environment” [0051]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the foam material is biodegradable. This “reduc[es] the burden to environment” [0051]).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Mahlich (US 2012/0070543) in view of Huang (US 2010/0286294)
Regarding claim 10, Mahlich does not expressly disclose wherein the strand is produced by means of foam extrusion.
Huang is directed to an “environment-friendly type polypropylene foam plastic” [Abstract]. Huang discloses producing a foam by extrusion (“Use sheet extruder to produce foam plastic sheets” [0021]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the strand is produced by means of foam extrusion. This is a known technique for producing a foam, applied to a known device, to achieve predictable results.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Mahlich (US 2012/0070543) in view of Cai (US 2002/0078831).
Regarding claim 11, Mahlich does not expressly disclose wherein a same material is used as the strand material as is used for the base element and/or the cover element.
Cai discloses wherein a same material is used as the strand material as is used for the base element and/or the cover element (“The cartridge inlet, chamber and filter can be made of the same material such as polyester, polypropylene or nylon to facilitate recyclability or reuse of the material, and can be made of degradable materials such as biodegradable poly(lactic acid), thereby reducing the burden to environment” [0051]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein a same material is used as the strand material as is used for the base element and/or the cover element. This “reduc[es] the burden to environment” [0051]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH KERR whose telephone number is (571)272-3073. The examiner can normally be reached M - F, 8:30 AM - 4:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Crabb can be reached at 571-270-5095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH M KERR/Primary Examiner, Art Unit 3761
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