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
Claims 11-12 are objected to because of the following informalities:
Claim 11 recites the limitation “the sealing film” in line 2. It appears the claim should recite “the at least one sealing film” in order to maintain consistency with “at least one sealing film” recited in Claim 1, line 4.
Claim 12 recites the limitation “the sealing film” in line 2. It appears the claim should recite “the at least one sealing film” in order to maintain consistency with “at least one sealing film” recited in Claim 1, line 4.
Appropriate correction is required.
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.
Claims 1, 4, 8, 11, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Orler US 2018/0044084 in view of Chen et al. US 2019/0062998.
Regarding Claim 1, Orler discloses an assembly comprising a capsule (cartridge 112) comprising a body (cartridge body 200) having a lateral wall (side 208) bordered by a bottom (bottom 212) and a rim (rim 218) surrounding an opening of the body (cartridge body 200) (‘084, Paragraphs [0036]-[0037]). The assembly further comprises at least one sealing film (cover 204) covering the opening (‘084, FIG. 2) (‘084, Paragraph [0038]). The at least one sealing film (cover 204) comprises a layer based on cellulose (‘084, Paragraph [0054]).
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Orler is silent regarding the cellulose material of the at least one sealing film (cover 204) to be a layer of microfibrillated cellulose MFC.
Chen et al. discloses an assembly comprising a capsule (coffee capsule) provided to receive a substance for the preparation of a beverage (coffee). The capsule comprises a body (capsule main body CMB) having a lateral wall bordered by a bottom and a rim surrounding an opening of the body (capsule main body CMB). The assembly comprises at least one sealing film (capsule lid CL) covering the opening (‘998, Paragraph [0006]). The sealing film (capsule lid CL) comprises a layer based on microfibrillated cellulose MFC (‘998, Paragraph [0033]).
Both Orler and Chen et al. are directed towards the same field of endeavor of beverage capsule comprising a body and a sealing film both made of cellulose materials. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the sealing film of the capsule of Orler to be made out of a layer based on microfibrillated cellulose MFC as taught by Chen 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). Chen et al. teaches that there was known utility in the beverage capsule art to construct the at least one sealing film out of a layer of microfibrillated cellulose MFC.
Regarding Claim 4, Orler discloses a layer being treated with a liner to improve its moisture resistance (‘084, Paragraph [0071]). Applicant discloses a moisture barrier coating to improve a layer resistance to moisture (Specification, Page 5, lines 24-26). Chen et al. also discloses treating the microfibrillated cellulose (MFC) layer to have high gas barrier properties (‘998, Paragraph [0033]) by having broad fiber diameter distribution to enhance the barrier properties (‘998, Paragraph [0058]).
Regarding Claim 8, Orler discloses the body of the capsule to be compostable (‘084, Paragraph [0069]) and the at least one sealing film (cover 204) to be biodegradable and compostable (‘084, Paragraph [0060]). Chen et al. discloses the body of the capsule being biodegradable (‘998, Paragraph [0098]).
Regarding Claim 11, Orler discloses at least a portion of the sealing film defining an upper film lid (cover 204) provided to be associated with the rim (rim 206) in order to cover the opening (‘084, FIG. 2) (‘084, Paragraph [0038]).
Regarding Claim 14, Chen et al. discloses the body of the capsule being formed by molding (‘998, Paragraph [0096]) a plastic material (‘998, Paragraph [0033]).
Further regarding Claim 14, the limitations “the at least one sealing film being associated with said body during said moulding using an IML process” are product by process limitations. Even 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 view of In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP § 2113.I.).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Orler US 2018/0044084 in view of Chen et al. US 2019/0062998 as applied to claim 1 above in further view of Bosetti et al. US 2020/0087056 and Calsina Gomis US 2020/0010265.
Regarding Claim 2, Orler modified with Chen et al. is silent regarding the oxygen transmission rate of the microfibrillated layer being at most 5 cm3/m2day atm according to the ASTM D3985 standard.
Bosetti et al. discloses a beverage cartridge comprising a multilayer lid film (multilayer membrane) (‘056, Paragraphs [0001]-[0002]) wherein the multilayer lid film comprises a second barrier paper layer wherein the compostable multilayer membrane has an OTR value of less than 0.5 cc/m2/day/atm (‘056, Claim 15), which falls within the claimed oxygen transmission rate of the MFC layer of at most 5 cm3/m2day atm. Although Bosetti et al. does not explicitly state the testing conditions at which the oxygen transmission rate to be according to the ASTM D3985 standard to form the sealing layer, the particular standard is the testing conditions used to ascertain the oxygen transmission rate. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the oxygen transmission rate of the MFC layer of modified Orler to fall within the claimed oxygen transmission rate as taught by Bosetti et al. since where the claimed oxygen transmission rate ranges overlaps oxygen transmission rate 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.).
Further regarding Claim 2, in the event that it can be argued that the different testing conditions to ascertain the oxygen transmission rate of Bosetti et al. does not necessarily result in the oxygen transmission rate of the MFC layer when measured using the claimed ASTM D3985 standard, Calsina Gomis discloses a beverage capsule (‘265, Paragraph [0001]) comprising a body (main body 2) and a lid film (cover 4) having barrier properties for preventing primary product degradation wherein the barrier materials has an oxygen transmission rate (OTR) of less than or equal to 0.1 cm3/container/day in which the beverage product is preserved better for a longer time inside the chamber wherein the barrier materials are made of cellulose (‘265, Paragraph [0060]).
Both modified Orler and Calsina Gomis are directed towards the same field of endeavor of beverage capsules comprising cellulose. It would have been obvious to one of ordinary skill in the art at the time of the invention to adjust the oxygen transmission rate of the MFC layer of modified Orler to the claimed oxygen transmission range since differences in the oxygen transmission rate of the MFC layer will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such oxygen transmission rate of the MFC layer 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.). One of ordinary skill in the art at the time of the invention to modify the oxygen transmission rates of the MFC layer of modified Orler based upon the desired degree of preservation of the contents of the beverage capsule as taught by Calsina Gomis.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Orler US 2018/0044084 in view of Chen et al. US 2019/0062998 as applied to claim 1 above in further view of van Beek US 2017/0152102.
Regarding Claim 3, Orler modified with Chen et al. is silent regarding the microfibrillated layer having a water vapor transmission rate of less than 5 g/m2 24 hour measured according to the ASTM E96 standard.
Van Beek discloses a coffee cartridge (‘102, Paragraph [0012]) comprising a at least one sealing film (multilayer sealing film 7) (‘102, Paragraph [0103]) wherein the mechanical properties of the at least one sealing film (multilayer sealing film 7) is such that upon a critical pressure of beverage the film will rupture so the beverage can exit the cartridge and films with the desired combination of mechanical properties and oxygen permeability are known to a skilled person (‘102, Paragraph [0123]) wherein the water vapor transmission rate (WVTR) of the cartridge is at most 0.1 g/m2day as determined in accordance with ASTM FI249 at 38°C and 100% relative humidity (‘102, Paragraph [0124]), which falls within the claimed microfibrillated layer water vapor transmission rate of less than 5 g/m2 24 hour.
It would have been obvious to one of ordinary skill in the art at the time of the invention to adjust the water vapor transmission rate of the microfibrillated layer of modified Orler to the claimed water vapor transmission range since where the claimed water vapor transmission rate ranges overlaps water vapor transmission rate 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.).
Further regarding Claim 3, in the event that it can be argued that the different testing conditions to ascertain the water vapor transmission rate of van Beek does not necessarily result in the water vapor transmission rate of the microfibrillated layer when measured using the claimed ASTM E96 standard, differences in the water vapor transmission rate of the microfibrillated layer will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such water vapor transmission rate of the microfibrillated layer 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.). One of ordinary skill in the art at the time of the invention to modify the water vapor transmission rates of the microfibrillated layer of modified Orler based upon the desired degree of oxygen barrier of the beverage capsule.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Orler US 2018/0044084 in view of Chen et al. US 2019/0062998 as applied to claim 1 above in further view of Miozzo et al. US 2020/0216256.
Regarding Claim 5, Orler modified with Chen et al. is silent regarding the area density of the microfibrillated layer being between 40 and 90 g/m2.
Miozzo et al. discloses a coffee capsule comprising a compostable film lid (lid 20) (‘256, Paragraphs [0042] and [0054]) wherein the compostable film lid (lid 20) is made from biodegradable cellulose fibers (‘256, Paragraph [0029]) formed from vegetable parchment (‘256, Paragraph [0079]) wherein the vegetable parchment layer has a grammage between 30 and 120 g/m2 (‘256, Paragraph [0081]), which overlaps the claimed area density of the microfibrillated layer of between 40 and 90 g/m2.
Both modified Orler and Miozzo et al. are directed towards the same field of endeavor of beverage capsules comprising a film lid made of cellulose. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the capsule of modified Orler and construct the area density of the microfibrillated to have the claimed grammage as taught by Miozzo et al. since where the claimed grammage of the cellulosic layer overlaps grammage of the cellulosic layer 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 area density grammage of the MFC layer will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such area density grammage of the microfibrillated layer 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.).
Regarding Claim 6, Orler modified with Chen et al. is silent regarding the thickness of the microfibrillated layer being between 30 and 70 µm.
Miozzo et al. discloses a coffee capsule comprising a compostable film lid (lid 20) (‘256, Paragraphs [0042] and [0054]) wherein the compostable film lid (lid 20) is made from biodegradable cellulose fibers (‘256, Paragraph [0029]) formed from vegetable parchment (‘256, Paragraph [0079]) wherein the vegetable parchment layer has a thickness of between 60 to 150 micrometers (‘256, Paragraph [0040]), which overlaps the claimed microfibrillated layer thickness of between 30 and 70 µm.
Both modified Orler and Miozzo et al. are directed towards the same field of endeavor of beverage capsules comprising a film lid made of paper/cellulose. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the capsule of modified Orler and construct the microfibrillated layer to have the claimed thickness as taught by Miozzo et al. since where the claimed microfibrillated layer thickness overlaps MFC layer thickness 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 thickness of the microfibrillated layer will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such thickness of the microfibrillated layer 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.).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Orler US 2018/0044084 in view of Chen et al. US 2019/0062998 as applied to claim 1 above in further view of Gres et al. US 2022/0258959.
Regarding Claim 7, Orler modified with Chen et al. is silent regarding the at least one sealing film being a sealing layer.
Gres et al. discloses a beverage capsule (pod) (‘959, Paragraph [0001]) comprising a lid film (closing lid) made of a multilayer material comprising at least a paper layer and a plastic laminate sealing layer (‘959, Paragraph [0017]) and a microfibrillated cellulose film (‘959, Paragraph [0072]) wherein the paper and plastic laminate enable to have the desired properties with respect to perforability (‘959, Paragraphs [0019] and [0067]).
Both modified Orler and Gres et al. are directed towards the same field of endeavor of beverage capsules comprising a body and a lid made of microfibrillated cellulose. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the upper film lid of modified Orler to be a sealing layer on the rim as taught by Gres 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). Gres et al. teaches that there was known utility in the beverage capsule art to make film lids with a sealing layer on the rim. Furthermore, the paper and plastic laminate enables the film lid to have the desired properties with respect to perforability as taught by Gres et al. (‘959, Paragraphs [0019] and [0067]).
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Orler US 2018/0044084 in view of Chen et al. US 2019/0062998 as applied to claim 1 above in further view of Meyer US 2021/0300002 and Toft et al. US 2018/0311940.
Regarding Claim 9, Chen et al. discloses the sealing film having at least one second layer other than the microfibrillated cellulose layer, the second layer made of fibrous material which is associated on the microfibrillated layer (‘998, Paragraph [0070]) wherein each of the microfibrillated cellulose layer and the second layer have an area density wherein the area density of the second layer of polymeric film is less than the area density of the MFC paper layer (‘998, Paragraph [0095]).
Orler modified with Chen et al. is silent regarding the oxygen transmission rate of the MFC paper layer to be lower than the oxygen transmission rate of the second layer.
Meyer discloses a beverage capsule (‘002, Paragraph [0020]) comprising a multilayer film consisting of one or two plies of filter paper and one ply of polymer film laminated to one another (‘002, Paragraph [0021]) wherein the laminate comprises a cellulose acetate film having a thickness of 10 to 50 µm to assure an excellent oxygen barrier of up to 1 cm3/m2x24 hours and a water vapor barrier of up to 20 g/m2x24 hours (‘002, Paragraph [0040]). Toft et al. discloses a laminated beverage packaging container (packaging container 30a produced from packaging laminate 10a-10d) (‘940, Paragraph [0203]) comprising a spacer layer comprising a combination of different cellulose or paper types (‘940, Paragraph [0092]) and a paper facing layer in the outside material to be laminated to a fluting material layer (‘940, Paragraph [0098]) wherein the paper facing layer on the outside is separated from the spacer layer (‘940, Paragraph [0100]) wherein the paper facing layer on the outside of the packaging laminate is different from a compact surface barrier paper as the one laminated on the inside of the bulk layer wherein the paper facing layer contributes further to the oxygen barrier of the final packaging laminate (‘940, Paragraph [0164]) wherein the OTR of high density papers having a PVOH coating increases the oxygen transmission (‘940, Paragraph [0233]). The disclosure of the laminate containing different paper layers reads on the claimed oxygen transmission layer of the second layer of cellulose being different than the oxygen transmission rate of another cellulose layer.
Modified Orler, Meyer, and Toft et al. are all directed towards the same field of endeavor of beverage containers comprising a layer of paper/cellulose. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the oxygen transmission rate of the MFC paper layer of modified Orler to be lower than the oxygen transmission rate of the second layer of polymer film as taught by the combination of Meyer and Toft et al. in order to provide a good oxygen barrier to the film for sealing a beverage capsule (‘002, Paragraph [0015]). Furthermore, claims to a laminate film for a beverage capsule which read on the prior art except with regard to the position of the paper/cellulose layer relative to the polymer layer is held unpatentable because shifting the position of the paper/cellulose layer relative to the polymer layer would not have modified the operation of device that provides a laminated film having good barrier properties in view of In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (MPEP § 2144.04.VI.C.).
Regarding Claim 10, Chen et al. discloses the at least one second layer being based on a filter type paper (‘998, Paragraph [0084]).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Orler US 2018/0044084 in view of Chen et al. US 2019/0062998 as applied to claim 1 above in further view of Bartoli et al. US 2016/0362247.
Regarding Claim 12, Orler modified with Chen et al. is silent regarding the bottom having an opening and the assembly and at least a portion of the sealing film defining a lower film lid provided to cover the opening of the bottom.
Bartoli et al. discloses a capsule (capsule 1) comprising a body (container 2) having a lateral wall (sidewall 4) bordered by a bottom (base wall 3) and a rim (edge 7) surrounding an opening (opening 29) of the body (container 2) and at least one sealing film (cover element 8) covering the opening (opening 29) (‘247, Paragraphs [0024]-[0026]), an upper film lid (cover element 8) provided to be associated with the rim (edge 7) to cover the opening, and a lower film lid (cover element 25) provided to be cover the opening (hole of base wall 3) of the bottom (base wall 3) (‘247, FIG. 3) (‘247, Paragraph [0036]).
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Both modified Orler and Bartoli et al. are directed towards the same field of endeavor of beverage capsules comprising a body having a lateral wall bordered by a bottom and a rim surrounding by an opening wherein the assembly comprises at least one sealing film covering the opening. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the capsule of modified Orler and incorporate a lower film lid to cover the opening of the bottom as taught by Bartoli et al. since if it were desirable to obtain access to the bottom of the capsule, it would be obvious to make the bottom to have an opening with a removable lower lid film for that purposes in view of In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) (MPEP § 2144.04.V.C.).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Orler US 2018/0044084 in view of Chen et al. US 2019/0062998 as applied to claim 1 above in further view of Talon et al. US 2016/0137402.
Regarding Claim 13, Orler modified with Chen et al. is silent regarding a label provided to be associated with the body of the capsule in order to cover the lateral wall wherein the label is formed of the at least one sealing film.
Talon et al. discloses a beverage capsule comprising an in mold label to provide the capsule with specific barrier properties by using a film label with moisture and oxygen barrier properties (‘402, Paragraph [0068]).
Both modified Orler and Talon et al. are directed towards the same field of endeavor of beverage capsules. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beverage capsule of modified Orler and provide a label to be associated with the body of the capsule that covers the lateral wall wherein the label is formed of the at least one sealing film as taught by Talon et al. in order to impart moisture and oxygen barrier properties to the beverage capsule.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Orler US 2018/0044084 in view of Chen et al. US 2019/0062998 as applied to claim 1 above in further view of Fabozzi et al. US 2014/0190863.
Regarding Claim 14, Orler modified with Chen et al. renders obvious the limitations “the at least one sealing film being associated with said body during said moulding using an IML process” as discussed above. However, in the event that it can be shown that the claimed IML process necessarily results in a different capsule product, Fabozzi et al. discloses a capsule produced using an in mould labeling IML process (‘863, Paragraph [0001]). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the capsule production process of modified Orler and construct the capsule with an IML process to associate the sealing film with the body during molding since Fabozzi et al. teaches that it was known and conventional in the beverage capsule art to construct beverage capsules with an IML process.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-8, 12, and 14-15 of copending Application No. 18/039,458. Claim 1 of the copending ‘458 application reads on the limitations of Claim 1 of the copending ‘423 application.
Claims 1-8, 12, and 14-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-15 of copending Application No. 18/039,468. Claims 1 and 13 of the copending ‘468 application reads on Claim 1 of the copending ‘423 application.
Response to Arguments
Examiner notes that the previous Claim Objections have been withdrawn in view of the amendments.
Examiner notes that new Claim Objections have been made in view of the amendments.
Examiner notes that the previous indefiniteness rejections under 35 USC 112(b) has been withdrawn in view of the amendments.
Examiner notes that the Terminal Disclaimer filed December 18, 2025 has been rejected in the correspondence mailed on January 11, 2026 since the Terminal Disclaimer filed December 18, 2025 along with the pending reference numbers listed in the text have the incorrect filing dates. The Double Patenting rejections have been maintained and updated with the current claim amendments. Examiner notes that the Double Patenting rejections can be overcome with a proper Terminal Disclaimer submission.
Applicant's arguments filed December 18, 2025 with respect to the 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 Chen fails to disclose a film of microfibrillated cellulose and that Example 5, Figure 6 is the only embodiment of Chen disclosing a capsule wherein microfibrillated cellulose is used for the molding of the body. Applicant continues that Chen’s disclosure of a capsule body formed of microfibrillated cellulose is not suitable to be used to modify the cover film of the Orler reference.
Examiner argues Chen discloses a method for manufacturing a consumer product of a coffee capsule comprising a capsule main body and/or a capsule lid wherein the consumer product is made with a pulp molding machine by dip coating the article with a layer of pulp fiber (‘998, Paragraph [0012]) wherein the pulp fibers are microfibrillated cellulose (MFC) (‘998, Paragraph [0033]). Chen teaches using microfibrillated cellulose as a material for the coffee capsule comprising the capsule main body and/or capsule lid. Therefore, this argument is not found persuasive.
Examiner notes that applicant’s comments on Pages 7-9 of the Remarks with respect to Claims 2-3, 5-7, 9-10, and 12-14 does not specifically and distinctly point out the supposed errors of the Office Action.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICSON M LACHICA whose telephone number is (571)270-0278. The examiner can normally be reached M-F, 8:30am-5pm, EST.
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/ERICSON M LACHICA/Examiner, Art Unit 1792