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 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, and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Mandralis et al. US 2006/0219098 in view of Chen et al. US 2019/0062998.
Regarding Claim 1, Mandralis et al. discloses an assembly comprising a capsule provided to receive a substance (ground coffee food substance 5) for preparing a beverage (‘098, Paragraphs [0045] and [0066]). The capsule comprises a body (cup 2) having a sidewall bordered by a bottom (peripheral welding edge 31) and a rim (internal shoulder 21) surrounding an opening of the body (‘098, Paragraph [0071]) wherein the capsule comprises an upper film lid (membrane 4) associated with the rim (internal shoulder 21) in order to cover the opening to form a loading compartment of the substance (food substance 5) in the capsule wherein the opening is equipped with means for perforating (puncturing element 8) the upper film lid (membrane 4) under the effect of an increase of pressure in the loading compartment to allow the flow of the beverage through the opening (‘098, FIGS. 2-3) (‘098, Paragraphs [0066]-[0067]) wherein the upper film lid comprises a paper filter layer (‘098, Paragraph [0087]).
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Mandralis et al. is silent regarding the upper film lid made of paper to include a microfibrillated cellulose layer.
Chen et al. discloses a coffee capsule food package comprising a body (capsule main body CMB) and a film lid (capsule lid CL) comprising a base layer comprising microfibrillated cellulose (MFC) (‘998, Paragraphs [0006] and [0033]) wherein the material is used for air and moisture impermeable coffee capsules (‘998, Paragraph [0025]).
Both Mandralis et al. and Chen et al. are directed towards the same field of endeavor of beverage capsules comprising at least one 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 film lid of the capsule of Mandralis et al. that is made with a generic paper and construct the film lid out of a layer of microfibrillated cellulose 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 make film lids out of microfibrillated cellulose. Additionally, the microfibrillated cellulose (MFC) is known to have excellent mechanical properties in its paper form and has high gas barrier properties (‘998, Paragraph [0033]).
Further regarding Claim 1, the limitations “to receive a substance for preparing a beverage” and “for perforating the upper film lid under the effect of an increase of pressure in the loading compartment in order to allow the flow of the beverage through said opening” are seen to be recitations regarding the intended use of the “assembly.” In this regard, applicant’s attention is invited to MPEP § 2114.I. and MPEP § 2114.II. which states features of an apparatus may be recited either structurally or functionally in view of In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima facie case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possess the functionally defined limitations of the claimed apparatus in view of In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40,100 USPQ2d 1433, 1440 (Fed. Cir. 2011). The burden then shifts to applicant to establish that the prior art does not possess the characteristic relied on in view of In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432; In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 228 (CCPA 1971). Additionally, apparatus claims cover what a device is, not what a device does in view of Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claimed in view of Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Furthermore, if the prior art structure is capable of performing the intended use, then it meets the claim. Nevertheless, Mandralis et al. discloses the capsule containing a substance of ground coffee for preparing a coffee beverage and the means for perforating the upper film lid being under the effect of an increase of pressure in the compartment to allow the flow of the beverage through the opening (‘098, Paragraph [0080]).
Regarding Claim 4, 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, Chen et al. discloses the body of the capsule being biodegradable (‘998, Paragraphs [0032] and [0054]).
Regarding Claim 9, Mandralis et al. discloses the rim (internal shoulder 21) forming an annular wall on which the periphery of the upper film lid (membrane 4) is associated (‘098, FIG. 2) (‘098, Paragraph [0066]) wherein the perforation means (puncturing element 8) is associated with the annular wall of the rim (internal shoulder 21) by being separated from the compartment via the upper film lid (membrane 4) (‘098, FIG. 2) (‘098, Paragraph [0068]).
Regarding Claim 10, Mandralis et al. discloses the bottom (peripheral welding edge 31) having an opening and the assembly comprising a lower film lid (puncturable lid 3) covering the opening of the bottom (‘098, FIG. 2) (‘098, Paragraphs [0066] and [0088]).
Regarding Claim 11, Mandralis et al. discloses the bottom having a collar (peripheral welding edge 31) on which the lower film lid (puncturable lid 3) is associated (‘098, FIG. 2) (‘098, Paragraph [0066]).
Regarding Claim 12, Mandralis et al. discloses the lower film lid (puncturable lid 3) including a layer based on cellulose (‘098, FIG. 2) (‘098, Paragraphs [0058] and [0066]). Chen et al. discloses a coffee capsule food package comprising a body (capsule main body CMB) and a film lid (capsule lid CL) comprising a base layer comprising microfibrillated cellulose (MFC) (‘998, Paragraphs [0006] and [0033]) wherein the material is used for air and moisture impermeable coffee capsules (‘998, Paragraph [0025]). Both Mandralis et al. and Chen et al. are directed towards the same field of endeavor of beverage capsules comprising at least one 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 film lid of the capsule of Mandralis et al. that is made with a generic paper and construct the film lid out of a layer of microfibrillated cellulose 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 make film lids out of microfibrillated cellulose. Additionally, the microfibrillated cellulose (MFC) is known to have excellent mechanical properties in its paper form and has high gas barrier properties (‘998, Paragraph [0033]).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Mandralis et al. US 2006/0219098 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, Mandralis et al. 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 microfibrillated layer of modified Mandralis et al. 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 Mandralis et al. 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 microfibrillated layer of modified Mandralis et al. 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 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 oxygen transmission rates of the microfibrillated layer of modified Mandralis et al. 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 Mandralis et al. US 2006/0219098 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, Mandralis et al. 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 Mandralis et al. 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 Mandralis et al. 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 Mandralis et al. US 2006/0219098 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, Mandralis et al. 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 Mandralis et al. 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 Mandralis et al. 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 microfibrillated 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, Mandralis et al. 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 Mandralis et al. 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 Mandralis et al. 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 Mandralis et al. US 2006/0219098 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, Mandralis et al. modified with Chen et al. is silent regarding a sealing layer on the rim in addition to the microfibrillated cellulose layer of the upper film lid.
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 Mandralis et al. 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 Mandralis et al. to include 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 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Mandralis et al. US 2006/0219098 in view of Chen et al. US 2019/0062998 as applied to claim 1 above in further view of Meyer US 2021/0300002.
Regarding Claim 14, Chen et al. discloses the upper lid film having at least one second layer (polymeric film) made of fibrous material which is associated on the microfibrillated layer (‘998, Paragraph [0070]) wherein the layers each have an area density wherein the area density of the second layer of polymeric film is less than the area density of the microfibrillated paper layer (‘998, Paragraph [0095]).
Mandralis et al. modified with Chen et al. is silent regarding the oxygen transmission rate of the microfibrillated paper layer to be lower than the oxygen transmission rate of the second layer of polymer film.
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]) and that compostable papers used as a sealing film do not have good barrier action against oxygen (‘002, Paragraph [0014]) and the gas impermeable film provides sufficient oxygen barrier action (‘002, Paragraph [0031]), which indicates that the oxygen transmission rate of the microfibrillated paper layer is lower than the oxygen transmission rate of the second layer of polymer film.
Both modified Mandralis et al. and Meyer are directed towards the same field of endeavor of beverage capsules comprising a layer of paper/cellulose and a polymer film. 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 microfibrillated paper layer of modified Mandralis et al. to be lower than the oxygen transmission rate of the second layer of polymer film as taught by Meyer 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 15, Chen et al. discloses the second layer being made of paper (‘998, Paragraph [0084]).
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 1-8, 12, and 14-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-12 of copending Application No. 18/039,423 in view of Mandralis et al. US 2006/0219098. Claims 1 and 11 of the copending ‘423 discloses an assembly comprising a capsule comprising a body having a sidewall bordered by a bottom and a rim surrounding an opening of the body, the assembly comprising an upper film lid associated with the rim to cover the opening by forming in the body a loading compartment of the substance in the capsule, the upper film lid including layer based on microfibrillated cellulose MFC. Claims 1 and 11 of the copending ‘423 application is silent regarding the opening being equipped with means for perforating the upper film lid under the effect of an increase of pressure in the compartment. Mandralis et al. discloses an assembly comprising a capsule provided to receive a substance (ground coffee food substance 5) for preparing a beverage (‘098, Paragraphs [0045] and [0066]). The capsule comprises a body (cup 2) having a sidewall bordered by a bottom (peripheral welding edge 31) and a rim (internal shoulder 21) surrounding an opening of the body (‘098, Paragraph [0071]) wherein the capsule comprises an upper film lid (membrane 4) associated with the rim (internal shoulder 21) in order to cover the opening to form a loading compartment of the substance (food substance 5) in the capsule wherein the opening is equipped with means for perforating (puncturing element 8) the upper film lid (membrane 4) under the effect of an increase of pressure in the compartment to allow the flow of the beverage through the opening (‘098, FIGS. 2-3) (‘098, Paragraphs [0066]-[0067]) wherein the upper film lid comprises a paper filter layer (‘098, Paragraph [0087]). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the capsule of Claims 1 and 11 of copending ‘423 application and incorporate a perforating means for the opening for perforating the upper film lid under the effect of an increase of pressure in the compartment since Mandarlis et al. teaches that it was known and conventional in the beverage capsule art to incorporate a perforating means to allow the flow of the beverage through the opening.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Examiner notes that the previous Drawing Objections have been withdrawn in view of the amendments. Claim 13 has been canceled herein. Therefore, the Drawing Objections are moot
Examiner notes that the previous Claim Objections have been withdrawn in view of the amendments.
Examiner notes that the previous indefiniteness rejections under 35 USC 112(b) have been withdrawn in view of the amendments.
Examiner notes that the previous Double Patenting rejections over copending application 18/039,468 has been withdraw in view of the Terminal Disclaimer filed on December 18, 2025 and approved on January 12, 2026.
Examiner notes that the Double Patenting rejections over copending application 18/039,423 have been maintained herein. No Terminal Disclaimer has been filed with respect to the copending ‘423 application.
Applicant's arguments filed December 18, 2025 with respect to the obviousness rejections under 35 USC 112(b) have been fully considered but they are not persuasive.
Applicant argues on Pages 7-8 of the Remarks with respect to Claim 1 that Mandralis does not disclose an upper film lid made of paper including a microfibrillated cellulose layer. Applicant contends that the puncturable lid described in Paragraph [0066] of Mandralis is an aluminum foil layer relating to Examples 1-5 whereas it is only in a completely separate Example 6 of Paragraph [0087] which discloses using a paper filer supported by a porous plate. Applicant continues that Paragraph [0088] of Mandralis discloses the paper filter being permeable and having no barrier function unlike aluminum foil or microfibrillated cellulose. Applicant contends that there is no suggestion or motivation to a person of ordinary skill in the art to use the film of Chen in the system disclosed by Mandralis. Applicant argues that neither Mandralis nor Chen disclose or suggest “an assembly comprising an upper film lid associated with the rim in order to cover the opening by forming in the body a loading compartment of the substance in the capsule, the opening being equipped with means for perforating the upper film lid under the effect of an increase of pressure in the loading compartment in order to allow the flow of the beverage through said opening, the upper film lid including a microfibrillated cellulose layer” as claimed.
Examiner argues the rejection is based on the combination of Mandralis et al. modified with Chen. The secondary reference of Chen is being relied upon to teach the limitations regarding the upper fil lid including a microfibrillated cellulose layer (‘998, Paragraphs [0006] and [0033]). The primary reference Mandralis et al. teaches the closed chamber of the capsule being made of an aluminum/plastic paper composite (‘098, Paragraph [0058]). In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Therefore, this argument is not found persuasive.
Examiner notes that applicant’s comments on Pages 8-10 of the Remarks with respect to Claims 2-3, 5-7, and 14-15 do 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