DETAILED ACTION
This is the first office action regarding application number 18/006757, filed on 01/25/2023, which is a 371 of PCT/IB2021/056794, filed on 07/27/2021, which claims benefit of IT102020000018118, filed on 07/27/2020.
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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Italian Republic on 07/27/2020. It is noted, however, that applicant has not filed a certified copy of the English translation of IT102020000018118 application.
Election/Restrictions
The examiner notes that there is a typo on page 4, Election/restriction requirement mailed on 11/13/2025. The corrected groups of inventions are:
Group I, claim 1-14, 19-20, drawn to a capsule.
Group II, claim 15-16, drawn to a method for making a capsule.
Group III, claim 17-18, drawn to a mold for making a capsule.
Applicant’s election without traverse of Group I, claims 1-14, 19, 20 in the reply filed on 01/09/2026 is acknowledged.
Claims 15-18 are withdrawn from further consideration pursuant to 37 CFR 1.142 as being drawn to a nonelected Group II and III, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/09/2026.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84 because reference character “1021” has been used to designate first portion, second portion, and central portion. Corrected drawing sheets in compliance with 37 CFR 1.121 are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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 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 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 –
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.
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, 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, 4, 7, 8, 10, 11, 13, 14, 20 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Smeulders, US 20190126530 (hereafter Smeulders).
Regarding claim 1,
A capsule , intended for the preparation of a beverage in a device for making beverages, (Abstract teaches “coffee capsule”)
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Fig. 9 in Smeulders
the capsule comprising a body which includes a bottom wall ; ( Fig. 9)
a side wall extending around a longitudinal axis between a first annular edge , connected to the bottom wall, and a second annular edge , ( Fig. 9)
wherein the side wall and the bottom wall delimit an internal space within the body of the capsule ; ( Fig. 9)
and an annular flange , extending from the second annular edge of the side wall , away from the longitudinal axis , ( Fig. 9)
wherein the bottom wall includes an annular supporting portion , connected to the side wall , and a central portion surrounded by the annular supporting portion , ( Fig. 9)
wherein the annular supporting portion projects from the central portion , away from the second annular edge , ( Fig. 9)
and wherein the central portion includes a first zone , having a first thickness , and a second zone , having a second thickness , (Paragraphs [221-222] teaches 1st zone with a first thickness and 2nd zone with a second thickness.)
wherein the second thickness is smaller than the first thickness (Fig. 9 teaches thickness 93 in 2nd zone is smaller than first thickness 91 in 1st zone)
and the second zone is oriented perpendicularly to the longitudinal axis . (Fig. 9)
Regarding claim 2,
The capsule according to claim 1, wherein the second zone has an annular shape and surrounds the first zone . (Fig. 7 and Fig. 9)
Regarding claim 4,
The capsule according to claim 1, wherein the bottom wall includes a connecting portion which interconnects the central portion to the annular supporting portion , the connecting portion being obliquely inclined relative to the longitudinal axis . (Fig. 9)
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Zoomed in Fig. 9 in Smeulders
Regarding claim 7,
The capsule according to claim 1, wherein the ratio between the width of the second zone , in a direction perpendicular to the longitudinal axis , and the radius of the first annular edge is between 0.2 and 0.5. (From Fig. 9, the width of second zone is about 6 mm and radius is about 16mm, thus ratio of second zone compared to radius is 0.375. Thus, the range 0.375 in Smeulders anticipates the claimed range between 0.2 and 0.5. MPEP 2131.03-I sets forth “"If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023).”)
Regarding claim 8,
The capsule according to claim 1, wherein the ratio between the second thickness and the first thickness is between 0.35 and 0.55. (From Fig. 9, second thickness is about 0.3mm, and the value of first thickness is from 0.3 to 1mm. Thus, the ratio of thicknesses varies from 0.3 to 1. Here, the range 0.3 to 1 in Smeulders anticipates the claimed range between 0.35 to 0.55. MPEP 2131.03-I sets forth “"If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023).”)
Regarding claim 10,
The capsule according to claim 1, wherein the side wall has a first portion , which is proximal to the flange , and a second portion , which is distal from the flange and connected to the first portion and to the bottom wall , wherein the second portion is frustoconical in shape. (Fig. 9)
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Fig. 9 in Smeulders
Regarding claim 11,
The capsule according to claim 10, wherein the first portion has an inside wall, which faces towards the internal space and is cylindrical in shape, and an outside wall, which is opposite to the inside wall, is frustoconical in shape and whose direction of taper is opposite to that of the second portion. (Fig. 9 in Smeulders)
Regarding claim 13,
The capsule according to claim 1, wherein the annular supporting portion is located at a perimeter of the bottom wall and projects longitudinally away from the second annular edge , with respect to the central portion , so that the capsule can be laid on a supporting surface with an outer surface of the annular supporting portion being the sole surface in contact with the supporting surface. (Fig. 9 and Fig. 7 in Smeulders)
Regarding claim 14,
The capsule according to claim 1, wherein the second zone, with respect to the longitudinal axis , has a radial extension and an axial extension, the radial extension being greater than the axial extension. (The claim is interpreted as L2 is radial extension, and S2 is axial extension in Fig. 2 of the original disclosure.
Fig. 9 in Smeulders teaches that length of part 92 is longer than its width.)
Regarding claim 20,
The capsule according to claim 1, wherein the second zone has a width, measured in a direction perpendicular to the longitudinal axis, between 4 mm and 8 mm. (From Fig. 9 the width of second zone is about 6mm. Here, the range 6mm in Smeulders anticipates the claimed range of between 4 and 8 mm. MPEP 2131.03-I sets forth “"If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023).”)
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 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, 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102 for any potential 35 U.S.C. 102 prior art against the later invention.
Claim 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smeulders as applied to claim 2 above, and further in view of Schaeffer et al., US 5948455 (hereafter Schaeffer).
The capsule according to claim 2, wherein the central portion of the bottom wall includes a third zone which surrounds the second zone and has a third thickness , larger than the second thickness , (Primary combination of references is silent about this.
Schaeffer teaches a capsule with bottom wall 2 wherein bottom wall 2 has a varying thickness as taught in Fig. 1. Column 2, lines 33-36 teaches “To facilitate opening of the cartridge, thinner areas may be provided which have thicknesses which can vary along said areas, for example, a residual thickness of 40 microns which varies up to 60 microns may be provided.”)
wherein the second zone is recessed relative to the first zone and relative to the third zone on the inside face of the central portion. (Fig. 1 in Schaeffer.)
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Fig. 1 in Schaeffer
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to vary the thickness of the second zone as taught in Schaeffer in the capsule taught in Smeulders. One of ordinary skill in the art would have been motivated to do so in because “To facilitate opening of the cartridge, thinner areas may be provided which have thicknesses which can vary along said areas, for example, a residual thickness of 40 microns which varies up to 60 microns may be provided. Opening will take place firstly over the 40-micron area and will continue along the extent of the distance of the sheared area toward the greater thickness. This also allows automatic regulation of the extraction pressure” as taught in column 2, lines 33-40 in Schaeffer.
Claim 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smeulders as applied to claim 1 above, and further in view of Schaeffer et al., US 5948455 (hereafter Schaeffer).
The capsule according to claim 1, wherein the central portion has an inside face, facing towards the internal space , and an outside face, opposite to the inside face, (Fig. 9 in Smeulders)
Primary combination of references is silent about wherein the second zone is recessed relative to the first zone on the inside face of the central portion.
Schaeffer teaches wherein the second zone is recessed relative to the first zone on the inside face of the central portion . (Fig. 1 in Schaeffer)
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to vary the thickness of the second zone as taught in Schaeffer in the capsule taught in Smeulders. One of ordinary skill in the art would have been motivated to do so because “To facilitate opening of the cartridge, thinner areas may be provided which have thicknesses which can vary along said areas, for example, a residual thickness of 40 microns which varies up to 60 microns may be provided. Opening will take place firstly over the 40-micron area and will continue along the extent of the distance of the sheared area toward the greater thickness. This also allows automatic regulation of the extraction pressure” as taught in column 2, lines 33-40 in Schaeffer.
Claims 6, 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smeulders as applied to claim 1 above, and further in view of Macchi et al., US 7490542 (hereafter Macchi).
Regarding claim 6,
The capsule according to claim 1, wherein the annular supporting portion has a supporting thickness that is greater than the first thickness. (Primary combination of references is silent about this.
Macchi teaches “The bottom wall 20 further has a thicker peripheral part 23, so as to form a thicker annular portion in contact with the sidewall 21 and projecting upward from the inner surface of the bottom wall 20” in column 3, lines 60-65. Fig. 1 teaches that annular part 23 is thicker than the central portion of bottom wall 20.)
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to design the supporting thickness greater than the first thickness as taught in Macchi in the capsule taught in Smeulders. One of ordinary skill in the art would have been motivated to do so because “the bottom wall of the cartridge has breakable portions which yield when the inside of the cartridge reaches a pre-set pressure, so as to create an aperture for the extraction of the beverage, which can flow into a cup beneath” as taught in column 2, lines 50-55 in Macchi.
Regarding claim 12,
Primary combination of references is silent about this limitation.
The capsule according to claim 1, further comprising: a lid , joined to the annular flange to delimit, with the body , an internal space inside the capsule ; (Fig. 4 in Macchi)
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Fig. 4 in Macchi
a filter element , positioned in the internal space, wherein the filter element divides the internal space into a containing space and a collecting space ,(Fig. 4)
wherein the containing space is partly delimited by the lid and the collecting space is partly delimited by the bottom wall ; (Fig. 4)
and a substance contained in the containing space and used for making the beverage. (Column 2, lines 45-50 teaches “The coffee or the soluble product is placed above the filter and then the container is closed by means of a lid with micro-perforations to allow the hot water under pressure to pass through.”)
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to add the lid, and filter as taught in Macchi in the capsule taught in Smeulders. One of ordinary skill in the art would have been motivated to do so “to provide a cartridge for coffee or for soluble products that can be used in an extremely simple and cheap drinks extraction machine” as taught in column 2, lines 25-30 in Macchi.
Claim 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smeulders as applied to claim 1 above, and further in view of Yoakim et al., US 20110041702 (hereafter Yoakim).
The capsule according to claim 1, wherein the second annular edge has a radius that is greater than or equal to 20 mm (From Fig. 9, the second annular edge has a radius of about 20mm.
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to design the radius of second annular edge to 20 mm as taught in Smeulders. One of ordinary skill in the art would have been motivated to do so because it is a design choice to make the capsule compatible with available coffee machines in the market. Additionally, MPEP 2144.05-I sets forth “A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%).”
and wherein the capsule has a height that is greater than or equal to 35 mm along the longitudinal axis. (Primary combination of references is silent about this.
Yoakim teaches “The body of the capsule has preferably a height comprised between 27 and 30 mm.” Here claimed range of equal to 35 mm is close to the range 30mm taught in Yoakim.)
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to design the height of the capsule in Smeulders equal to 35 mm as taught in Yoakim. One of ordinary skill in the art would have been motivated to do so because it is a design choice to make the capsule compatible with available coffee machines in the market. MPEP 2144.05-I sets forth “A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%).”)
Claim 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smeulders.
The capsule according to claim 1, wherein first annular edge is greater than or equal to 40 mm in diameter. (From Fig. 9 in Smuelders, the first annular edge has a diameter of about 30mm.)
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to design the diameter of first annular edge to 40 mm as taught in Smeulders. One of ordinary skill in the art would have been motivated to do so because it is a design choice to make the capsule compatible with available coffee machines in the market. Additionally, MPEP 2144.05-I sets forth “A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%).”
Conclusion
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/FAHMIDA FERDOUSI/ Examiner, Art Unit 3761