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 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 (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 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.
Claim(s) 16- 22, 24-27, and 30- 32 is/are rejected under 35 U.S.C. 103 as being obvious over Kuhl (U.S. Patent Application Publication 2019/0016528) in view of Schmidt (U.S. Patent Application Publication 2017/ 0342261) as evidenced by NPL Calix CNA24 data Sheet and NPL Google search Results, see attached.
Regarding claim 16, Kuhl discloses a closed capsule (figs. 5,6) intended for being extracted under pressure (intended use that does not affect structure), containing a substance in the form of a powder (Kuhl, ¶0003, powdery) for the preparation of a drink (¶0004, makes beverages), said capsule including a container (1) with a bottom (6) and a side wall (5) having a circular rim (collar 7), and a seal (10) welded to the periphery of the rim of the container (Kuhl, abstract, by [] welding), characterized in that the bottom, the side wall and the circular rim are formed by injection molding (¶0013, injection-molded).
But Kuhl does not explicitly disclose a closed capsule wherein at least one formulation comprises: (i) at least one polymer chosen from polyhydroxybutyrates, and (ii) at least one ingredient chosen from silicates, vitamin E, , or mixtures thereof,
wherein the capsule has a permeability to oxygen of less than 3.0 * 10-3 cm3/capsule/24hrs at 0.21 atm at 23° and 50%RH.
However, Kuhl does teach polyhydroxybutyrates may be components in a biodegradable capsule (¶0019). And further, Kuhl does teach that silicates may be used in the formulation of closed capsules (¶0007, as a coating). However, Schmidt teaches wherein at least one formulation comprises: (i) at least one polymer chosen from polyhydroxybutyrates, and (ii) at least one ingredient chosen from silicates, vitamin E, or mixtures thereof (Schmidt, ¶0029, “fillers of the invention are selected from …silicates,… polyhydroxybutyrate”).
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention, to modify Kuhl with Schmidt, put in the capsule some of the ordinary biodegradable materials in order to use a conventional method in a conventional way (putting these materials in capsules), even if a more expensive, in order to achieve the expected result of a biodegradable capsule, yet one with initial integrity and malleability to form a capsule (see MPEP 2143A).
And while Kuhl teaches all the limitations above, it still does not teach wherein the capsule has a permeability to oxygen of less than 3.0 * 10-3 cm3/capsule/24hrs at 0.21 atm at 23° and 50%RH. Just looking at Kuhl in view of Schmidt, as taught, it would be obvious to make the capsule highly impermeable to Oxygen so as to increase its shelf-life, for instance, and this may be done, for instance, with adjusting further ingredients or the thickness of the walls. The claimed result is not directly related to the structure of the capsule, and is only substantive to the effect that such a result would impact the structure. This claimed standard, though, is a well-known industry standard that allows for longer shelf life of a capsule by preventing gas and oxygen from entering and contaminating the product inside the capsule (See, NPL- Calix, CNA24 data sheet; and NPL Google search Results). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention, to modify the teachings of Kuhl, in order to achieve and meet an industry standard, in order to achieve long shelf life for the capsules by preventing gas and oxygen from entering and contaminating the product inside the capsule.
Regarding claim 17, Kuhl in view of Schmidt teaches all the limitations of claim 16, but does not further teach, in this combination, a capsule wherein the formulation comprises from 50 to 99.9% by weight, preferentially from 75 to 99.5% by weight, advantageously from 90 to 99% by weight, of polymer(s) chosen from polyhydroxybutyrates, such as polyhydroxybutyrate/ hydroxyvalerate, and mixtures thereof, with respect to the total weight of the formulation. However, such percentages of this polymer is conventional, as taught by Schmidt, when making these types of capsules (Schmidt, ¶0084, 74-99%). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention, to modify Kuhl in view of Schmidt with a further teaching of Schmidt, to have the composition comprise a conventional percentage of the claimed material, in order to make the device in a conventional way, using materials already taught by Kuhl, and to be a certain percentage of the composition, in order to achieve the expected result of a good workable biodegradable capsule.
Regarding claim 18, Kuhl in view of Schmidt teaches all the limitations of claim 16, as above, but does not further teach a capsule wherein the formulation comprises from 0.1 to 50% by weight, preferentially from 0.5 to 25% by weight, advantageously from 1 to 10% by weight, of ingredient(s) chosen from silicates, vitamin E, plasticized proteins of either plant or animal origin, or mixtures thereof, with respect to the total weight of the formulation. Schmidt teaches the polymer composition of a molded capsule comprising silicates as extenders within the claimed range (Schmidt, ¶0071, up to 90% by weight, preferably not more than 30%). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify Kuhl in view of Schmidt with further teachings of Schmidt, to have to have the claimed range of one of the recited compounds within the claimed range, in order to add extenders to the polymer composition, to better the desired properties in a conventional way with the expected result of having a robust formulation. (See MPEP 2143A).
Regarding claim 19, Kuhl in view of Schmidt teaches all the limitations of claim 16, as above, but does not further teach a capsule wherein the formulation further comprises (iii) at least one polyvinyl alcohol However, Kuhl does teach polyvinyl alcohol among the biopolymers that are acceptable to include in the composition (¶19) Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention, to modify Kuhl, and to include polyvinyl alcohol in order to create a water soluble, biodegradable container in a conventional way using conventional materials with the expected result of having a biodegradable container than allows access to its contents in a conventional way. (See §112 rejection above)
Regarding claim 20, Kuhl in view of Schmidt teaches all the limitations of claim 16, as above, but does not further teach a capsule wherein the BET specific surface area of the silicates ranges from 1 to 250 m2/g and/or the median diameter of the silicates ranges from 0.5 to 20 µm and/or the dimensional shape factor of the silicates is greater than or equal to 1:2. However, “the silicates” in the claim seems to be referring to the silicates indicated in the composition in claim 16. However, it is not required that this composition comprise of silicates. Thus, given the rejection above, had Kuhl taught silicates, then the limitation in this claim would be required to be met, but since it is only one of the four possible requirements of claim 16, and Kuhl does not teach silicates nor need to, this claim is also met.
Regarding claim 21, Kuhl in view of Schmidt teaches all the limitations of claim 16, as above, but does not further teach a capsule wherein the silicates are chosen from aluminum silicates, aluminum and magnesium silicates. However, “the silicates” in the claim seems to be referring to the silicates indicated in the composition in claim 16. However, it is not required that this composition comprise of silicates. Thus, given the rejection above, had Kuhl taught silicates, then the limitation in this claim would be required to be met, but since it is only one of the four possible requirements of claim 16, and Kuhl does not teach silicates nor need to, this claim is also met.
Regarding claim 22, Kuhl in view of Schmidt teaches all the limitations of claim 16, as above, but does not further teach a capsule wherein the formulation further comprises one or a plurality of additives chosen from mineral fillers different from silicates, peroxide products, vitamins different from vitamin E, waxes of either animal or plant origin. However, Kuhl does teach “natural waxes” among the possible component of such a formulation (Kuhl, ¶19) Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention, to modify Kuhl, and to include polyvinyl alcohol in order to create a water soluble, biodegradable container in a conventional way using conventional materials with the expected result of having a biodegradable container than allows access to its contents in a conventional way.
Regarding claim 24, Kuhl in view of Schmidt teaches all the limitations of claim 16, as above, and further teaches a capsule as per the standard EN 13432 (Kuhl, ¶¶0029, 0030, “in accordance with EN 13432”, claims 23,25).
Regarding claim 25, Kuhl in view of Schmidt teaches all the limitations of claim 16, as above, but does not further teach a capsule containing at least 60% by weight of biosourced material. However, this is a product by process, meaning that the materials of the product must be gathered or sourced in a certain way. But these types of limitations are only given weight to the extent that they affect the structure of the product. Since the source of the materials is not pertinent to the structure, these limitations are not given patentable weight with regard to this apparatus.
Regarding claim 26, Kuhl in view of Schmidt teaches all the limitations of claim 16, as above, and further teaches a capsule wherein the bottom, the side wall and the circular rim are formed by injection molding in a single layer of said formulation in a mold (¶0021, single layer molding; Abstract, “single-component”).
Regarding claim 27, Kuhl in view of Schmidt teaches all the limitations of claim 16, as above, and further teaches a capsule wherein the seal consists of a monolayer or multilayer film made (Kuhl, 5, fig. 1) of one or a plurality of materials chosen from biodegradable materials (Kuhl, claim 25, “seal is biodegradable”), where such layers of materials can be separated by a layer of adhesive.
Regarding claim 30, Kuhl in view of Schmidt teaches a manufacturing method for a capsule according to claim 16, comprising the steps of: a) preparing a formulation by mixing the ingredients (Kuhl, polymer blend, ¶0047), b) injection molding of the formulation obtained in step a) in a mold so as to form a layer of the container (Kuhl, claim 22, “the food container is injection-molded in a single layer from a polymer blend”),
c) filling the container with the substance in powder form (Kuhl, ¶0027, “container is filled with food”, ¶0044, powdery),
d) closing the container using the seal for forming the capsule (¶0027, “…is closed with a food container cover film”).
Regarding claim 31, Kuhl in view of Schmidt teaches all the limitations of claim 27, as above, and further teaches a capsule wherein said biodegradable materials are chosen from paper (Kuhl, ¶0025, paper), nonwoven fabrics, cellulose (¶0018), SiOx layers (¶0006), polylactic acid polymers, polyhydroxyalkanoates, hybrid layers of organic polymer and inorganic fibers, layers coated with polyvinyl alcohol or ethylene-vinyl alcohol copolymer, and metallized layers.
Regarding claim 32, Kuhl in view of Schmidt teaches a manufacturing method for the capsule according to claim 16, comprising the steps of:a) preparing a formulation by mixing the ingredients (¶0016),b) injection molding of the formulation obtained in step a) in a mold so as to form a layer of the container, wherein one or a plurality of layers of the container being injection molded utilize a formulation different from the formulation in step a) (¶¶0022,0023, adding a second layer to achieve fuller oxygen impermeability),c) filling the container with the substance in powder form (¶0027, “the food container is filled with food”),d) closing the container using the seal for forming the capsule (¶0027, is closed with a food container cover film).
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being obvious over Kuhl (U.S. Patent Application Publication 2019/0016528) in view of Schmidt (U.S. Patent Application Publication 2017/ 0342261) as evidenced by NPL Calix CNA24 data Sheet and NPL Google search Results (see attached) in view of Lehenmeier (U.S. Patent Application 2017/ 0260387).
Regarding claim 23, Kuhl teaches all the limitations of claim 22, as above, but does not further teach a capsule wherein said additive or additives represent from 0.05 to 20% by weight, preferentially from 0.1 to 15% by weight. Lehenmeier, in his teaching for injection molded articles, teaches wherein said additive or additives represent from 0.05 to 20% by weight, preferentially from 0.1 to 15% by weight, advantageously from 1 to 10% by weight, of the total weight of the formulation (¶0080, “0 to 2%”, and he teaches that different “waxes” may be among the conventional additives). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention, to modify Kuhl with the teaching of Lehenmeier, to add the claimed percentage of additives to the formulation, in order to any desirable characteristics to the formulation, such as stabilizers or fillers, in order to achieve in a conventional way the expected result of a good injectable material.
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being obvious over Kuhl (U.S. Patent Application Publication 2019/0016528) in view of Schmidt (U.S. Patent Application Publication 2017/ 0342261) as evidenced by NPL Calix CNA24 data Sheet and NPL Google search Results (see attached) in view of Smith (U.S. Patent Application Publication 2015/ 0159322).
Regarding claim 28, Kuhl teaches all the limitations of claim 27, as above, and further teaches a capsule wherein the seal is made of a multilayer consisting of: i) a paper or filter paper film (figs. 5,6, cellulose is paper 11, ¶0046), ii) a barrier layer (13), But Kuhl does not teach iii) a nonwoven fabric layer, said nonwoven fabric layer being inside the capsule. However, Kuhl does teach a polyvinyl alcohol layer (PVOH) (12) and it is noted that this PVOH may be in the form of a “nonwoven fabric layer” such as in Smith (Smith, ¶0008). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention, to have the PVOH layer be a “nonwoven fabric layer”, to provide a film in a conventional way, with the expected result of having a flexible covering to protect the capsule against moisture damage (¶0045).
And while Kuhl does not teach that this layer should be inside the capsule, he does teach that, “the PVOH layer should be arranged on the inner side…facing the base body of the container” (¶0044). Thus, it would be obvious to one having ordinary skill in the art before the effective filing date of the invention, to modify Kuhl, to have this layer within the capsule, in order to ensure that no liquid comes in contact with the powder before activation of the machine and use of the capsule.
Claim(s) 29 is/are rejected under 35 U.S.C. 103 as being obvious over (U.S. Patent Application Publication 2019/0016528) in view of Schmidt (U.S. Patent Application Publication 2017/ 0342261 herein after “Schmidt ‘261”) as evidenced by NPL Calix CNA24 data Sheet and NPL Google search Results (see attached) in view of Smith (U.S. Patent Application Publication 2015/ 0159322) and further in view of Schmidt (U.S. Patent Application Publication 2017/ 0037241; herein after “Schmidt ‘241”)
Regarding claim 29, Kuhl in view of Schmidt and further in view of l in view of Smith teaches all the limitations of claim 28, as above, but does not further explicitly teach a capsule wherein the barrier layer consists of one or a plurality of layers chosen from:
- a hybrid barrier layer of organic polymer and inorganic compounds, and/or
- an SiOx barrier layer, and/or
- a cellulose barrier layer.
However, Kuhl does teach that the barrier layer (13) may consist of “plastic, lacquer or wax” (Kuhl, ¶0041). And Kuhl teaches that the barrier layer (13) may even have an accompanying layer 14, and the “layer thickness for establishing a required oxygen impermeability can vary and/or can be adapted to the type of film and/or to the number of layers” (Kuhl, ¶0042). Kuhl here teaches that this barrier layer may be adapted. And Schmidt teaches that such coatings and barriers for use in capsules may be made of organic polymers (both in Schmidt ‘241, Abstract, ¶0042, “polymer composition of the invention can also comprise other components alongside the main components PLLA [organic polymer], PDLA [organic polymer], polyester [organic polymer], and organic or inorganic filler”; and in Schmidt ‘261 ¶90, creating a “barrier to gases” with these materials; These “Schmidt” applications having the same assignee and overlapping inventors). Thus, it would be obvious to one having ordinary skill in the art before the effective filing date of the invention to modify Kuhl in view of Smith with the teachings of Schmidt ‘261 and Schmidt ‘241, to incorporate conventional barrier materials into capsules, in order to make the layer out of these component, or even all of these components (hybrid), in order to ensure the necessary water and/or water vapor resistance.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Specifically, Kuhl in view of Schmidt teaches the limitations of claim 1, and it would be obvious to modify the composition (whether in thickness or otherwise) to achieve high impermeability to Oxygen, as claimed, in order to achieve long shelf life.
Applicant’s affidavit, filed 12 December 2025, is not persuasive. Applicant performs some tests using the formulation of Schmidt. However, the claim 1 does not limit products within the, nor does it limit the thickness of the walls, which would affect permeability. And clearly, high impermeability to oxygen is desirable, as noted above, thus, these test are not exhaustive and inconclusive. The rejections are maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see previously filed and any attached form PTO-892.
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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/LAWRENCE H SAMUELS/Examiner, Art Unit 3761
/IBRAHIME A ABRAHAM/Supervisory Patent Examiner, Art Unit 3761