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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 7, 2026 has been entered.
Response to Amendment
Those rejections not repeated in this Office Action have been withdrawn. Claims 1-4, 7-11, 13-19 are currently pending and rejected.
Claim Objections
Claim 2 is objected to because of the following informalities:
Claim 2 recites, “P(3HB-co-3HV)” on line 2 and on line 3. One of these recitations should be deleted since it appears that the limitation is duplicative. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4, 7-11, 13-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 7, line 7 and claim 10, line 8, recite the limitation, “comprising an upper surface opposite to the chamber with respect to the top opening” This limitation is not clear as to what it means for the upper surface to be “opposite to the chamber with respect to the top opening” and the specification does not provide further guidance in this regard. As shown in figure 1, the upper surface 241 would appear to be within the bounds of the top opening and the chamber. This rejection can be overcome by amending the limitation to delete, “opposite to the chamber with respect to the top opening.”
Claims 2-4, 8, 9, 11, 13-19 are rejected based on their dependence to a rejected claim.
Claim 15 recites, “the part” of the upper surface. This limitation lacks proper antecedent basis.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claims 1, 2, 7-11 and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Mandralis (US 20070272084) in view of Alfred (WO 03059778) and in further view of Cabilli (US 20190225412), Tedford (US 20120097602) and Mohanty (US 20230192983) and in further view of Nissenbaum (US 20160257098).
Han (CN 105695521) has also been relied on as evidence.
Regarding claim 1, Mandralis teaches a capsule (figure 3, item 6) for use in a beverage preparation machine (figure 5), said capsule containing a soluble and/or extractable beverage ingredient (paragraph 58) and said capsule comprising:
a capsule body (figure 3, item 60) comprising:
a side wall (see figure 3) defining a chamber (see figure 5, above item 65) and extending axially between a top opening and a bottom outlet (see figure 3, item 60 and figure 5, where the side wall extends between a top opening covered by film 64 and a bottom outlet at 61),
a circumferential annular flange (figure 3, item 62) projecting radially outward from the top opening, the circumferential annular flange comprising an upper surface opposite to the chamber with respect to the top opening and an opposed lower surface (see figure 3 and 5, where it would have been obvious that the radially outward projecting flange has an upper surface opposite to the chamber and an opposed lower surface), and
a top membrane attached to at least a part of the upper surface of the circumferential annular flange (see figure 5, item 64; paragraph 110), the top membrane closing the top opening, and presenting a portion of the top membrane adapted to be punctured for liquid injection into the capsule (see figure 5 where the top membrane clearly is adapted to be punctured),
a bottom membrane (Figure 5, item 65) provided inside the chamber so as to delimit an ingredient chamber between the top membrane and the bottom membrane, the ingredient chamber containing a beverage ingredient (paragraph 58),
an opening device provided inside the chamber for opening the capsule by relative engagement of the opening device with the bottom membrane under an effect of a rise in pressure of an injected liquid in the ingredient chamber (see figure 5, item 66; see paragraph 110). Further regarding the bottom membrane and the opening device, Mandralis incorporates by reference WIPO patent publication WO03059778 to Alfred (see Mandralis paragraph 110). This reference further discloses that Mandralis’ bottom membrane and opening device work together as a result of a rise in pressure within the capsule to rupture the bottom membrane (see Alfred, page 15, lines 20-33).
Claim 1 differs from Mandralis in specifically reciting that the top membrane is biodegradable and the top membrane comprises a bottom layer comprising at least one PHA blended with one or more biopolymers, an inner layer comprising PBS and at least one top layer.
Cabilli teaches a puncturable top membrane (see figure 1, 4 and 5, item 16 and paragraph 67-68) that is biodegradable because the layers 160, 162 and 1423a can all be biodegradable materials such as PHA, PBS and PVOH (see paragraph 60-65, 116 and 119-124). Cabilli teaches the top membrane comprises at least one layer 160 which is a bottom layer; at least one layer 1423a which is an inner layer and at least one layer 162 which is a top layer (see paragraph 116). Cabilli encompasses that the bottom layer can comprise at least one PHA blended with one or more biopolymers and that an inner layer can comprise PBS because there can be more than one layer 160, 162 (see paragraph 60-65, 116 and 119-124 – “PHA, PHB, PHV, and PHH” “PBS”). Cabilli encompasses that the bottom layer 160 can comprise a combination biopolymers including PLA (See paragraph 101 where 1420 can be a PLA layer and is analogous to layer 160) and that the first compostable material can also include PHA’s (paragraph 64).
It would have been obvious to one having ordinary skill in the art that Cabilli is teaching that such closure membranes for the top of a capsule are advantageous for reducing the environmental burden when disposing of such capsules.
To therefore modify Mandralis who is not limiting as to the particular structure of the top membrane and to include a top membrane comprising a top layer, inner layer and a bottom layer, as taught by Cabilli and where the seal layer can comprise PLA and PHAs as suggested by Cabilli would have been obvious to one having ordinary skill in the art, for the purpose of reducing the environmental waste when disposing of the capsule.
If it could have been construed that Cabilli did not provide sufficient specificity regarding the bottom layer comprising at least one PHA blended with one or more biopolymers, then it is noted that Tedford teaches and suggests a seal layer as part of a lid structure (see figure 6, item 608) and which seal layer can be a combination of PLA with at least one polyhydroxyalkanoate (see paragraph 91 and also see paragraph 93: “a lower seal coating layer 608…of… PLA…Such lower polyester seal layers…may comprise other biodegradable polyesters besides PLA, such as other… PHA’s). Tedford therefore teaches a known and desirable biodegradable sealing layer as part of a top membrane of a beverage producing capsule.
Since Cabilli already teaches and suggests using PLA in combination with additional biopolymers as part of the layer that is sealed to the capsule it would have been obvious to one having ordinary skill in the art to modify the combination and use a seal layer comprising PLA and PHA’s as taught by Tedford based on a conventional biodegradable sealing layer used for sealing a lid to a capsule body while also reducing the environmental impact of the sealing membrane.
Claim 1 differs from the above combination in specifically reciting that the top membrane comprises an inner layer comprising PBS.
However, Mohanty teaches an oxygen barrier layer that has superior barrier properties (See paragraph 7) while also providing improved melt processing and preventing migration of oxidation products (paragraph 4 and 10). Mohanty teaches that the layer that can comprise PBS (paragraph 16, 17) and can also provide a biodegradable oxygen barrier that has improved moisture barrier properties (see paragraph 13, 68) while also being cost effective (paragraph 69). Mohanty also teaches use in bags, capsules and other containers for oxygen sensitive products such as food (see paragraph 68) and where the inner layer can also be a film (paragraph 23, 32) and can be used as part of a covering film (paragraph 34).
To therefore modify the combination and to include an inner layer comprising PBS as taught by Mohanty as a biodegradable gas barrier layer would have been obvious to one having ordinary skill in the art, because PBS inner layers as taught by Mohanty can also provide improved oxygen barrier properties while also providing high water barrier properties and can be cost effective while still being biodegradable.
Claim 1 differs from the above combination in specifically reciting, “wherein at least the portion of the top membrane adapted to be punctured for liquid injection presents a tensile strength higher than 1 MPa and an elongation at break superior to 100%.
Claim 14 differs from the combination in specifically reciting that the top membrane has a Young’s modulus inferior to 150 GPa.
Nissenbaum teaches biodegradable sheets that can comprise multiple layers (see paragraph 17), such as with at least three layers (see paragraph 20). The three layers include what can be construed as a top layer (paragraph 20, “First layer”), an inner layer comprising PBS (Paragraph 20, “second layer”) and a third layer comprising PHA (see paragraph 20, “third layer”)(see also paragraph 24). Nissenbaum teaches a Young’s modulus of 200-800 MPa (paragraph 177) which falls within the range of “inferior to 150 GPa.” Nissenbaum further teaches an elongation at break of greater than 100%, such as 280% (see paragraph 176) and a tensile strength of 30-50MPa for example (see below paragraph 267, “Tensile strength & Break”; see paragraph 175, 15-25 MPa). Nissenbaum further teaches such multilayer structures as heat sealable while improving water vapor and oxygen transmission (See paragraph 11) for packaging foods (paragraph 163). Nissenbaum teaches the desirability of such multilayered structures to have a Young’s modulus, elongation at break and tensile strength for achieving the desired performance criteria while also still being able to biodegrade (see paragraph 173). Nissenbaum teaches biodegradable, polyhydroxyalkanoate films and therefore is similar to Cabilli.
To therefore modify the combination and to tailor the multilayer lidding film to have a tensile strength that is greater than 1 MPa and an elongation that is greater than 100%, and Young’s Modulus of less than 150 GPa would have been obvious to one having ordinary skill in the art, for achieving the requisite strength, elasticity and flexibility to the biodegradable top membrane.
Regarding claim 2, in view of Tedford the combination teaches that the PLA sealant layer can also comprise a PHA such as polyhydroxybutyrate valerate (PHBV) (see Tedford paragraph 93) which is also known as P(3HB-co-3HV) and is also a PHB copolymer. This is also evidenced by Mohanty at paragraph 15 and Nissenbaum at the abstract. Han further evidences that PHBV is a PHB copolymer and can also be referred to as P(3HB-co-3HV) (see paragraph 42 of the machine translation).
Regarding claim 7, the combination as applied to claim 1 has been incorporated herein to teach the structure of the capsule and the top membrane. Regarding the limitation to claim 7 of “wherein the bottom layer is different from the inner layer of at least one polybutylene succinate, it is noted that the claim does not distinguish how the inner layer and the bottom layer are different from each other. For instance, the claim does not specify if this is based on composition, thickness or some other property. Nonetheless, in view of Mohanty and Tedford, the combination teaches a sealing layer comprising PHA and a biopolymer such as PLA while the inner barrier layer can comprise PBS as taught by Mohanty and therefore the combination teaches the bottom layer is “different” from the inner layer.
Regarding claim 8, it is noted that the limitation of “a step of co-extruding the polyhydroxyalkanoate (PHA) blended with one or more biopolymers layer and the layer of at least one polybutylene succinate (PBS) and comprising a step of laminating a print layer and/or a step of laminating a water vapor transmission barrier” is seen to be a product by process limitation, such that, “[e]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. (see MPEP 2113).
In this regard, Cabilli teaches a multilayer film (see figure 5) that also comprises a water vapor transmission barrier layer (see paragraph 76, 78 and 80-87) and the combination further teaches two layers comprising one layer having a PHA blended with one or more polymers and another layer of polybutylene succinate. Cabilli also teaches that there can be more than one barrier layer to oxygen and water vapor (see paragraph 116) and therefore also teaches an additional water vapor transmission barrier layer. The combination in view of Tedford and Mohanty further teaches the claimed structure of the bottom and inner layer.
Regarding claim 9, while Mandralis does not specifically discuss the capsule body also being made of biodegradable materials, Cabilli teaches that the capsule body can also be made from biodegradable materials such as PHA (see paragraph 60). Therefore it would have been obvious to one having ordinary skill in the art to have modified Mandralis, to also have provided biodegradable materials for the capsule body for the similar purpose of reducing environmental waste when disposing of the capsule.
Regarding claim 10, the combination as applied to claim 1 above has been incorporated herein to teach the structure of the claimed capsule.
Claim 10 further recites a system that includes the capsule and a beverage preparation machine comprising a liquid injection hollow needle to inject an extraction liquid under pressure inside or into the chamber.
In this regard Mandralis further teaches a beverage preparation machine (figure 1) that comprises a liquid injection hollow needle (figure 5, item 750) that can inject an extraction liquid under pressure into the chamber (paragraph 3: “pressurized fluid inserted into the capsule” and paragraph 114).
Regarding claim 11, Mandralis discloses the beverage preparation machine comprises a removable capsule holder for receiving and holding the capsule in the beverage preparation machine (see figure 3, item 4) and a capsule holder receiving area for inserting the removable capsule holder (see the abstract which discloses that the capsule holder is removable; see figure 8, item 553 and paragraph 119).
Mandralis also discloses that the liquid injection hollow needle is relatively movable to the inserted capsule holder and the removable capsule holder is relatively movable to the liquid injection hollow needle (see figure 4 and 5, item 7, 74; paragraph 112) so that the liquid injection hollow needle can puncture the top membrane of the capsule (see figure 3-6, where the needle 70 is movable relative to the capsule holder).
Regarding claim 13, in view of Cabilli and Mohanty, the combination is suggesting that the inner layer that is a PBS oxygen barrier layer and water barrier layer, which can be used in place of Cabilli’s inner layer 1423a such that the inner layer is disposed directly on top of the bottom layer, as taught by the combination.
Regarding claim 15, Mandralis teaches a lid sealed to a circumferential annular flange (see figure 3, item 63 and paragraph 109; figure 5, item 64 and paragraph 110). Cabilli is similar in this regard (see figure 4, item 16 and 144). Therefore the combination teaches that the bottom layer of the top membrane is attached to the part of the upper surface of the circumferential annular flange.
Regarding claim 16, the combination as applied to claim 1 teaches the top membrane comprises three layers.
Claim 3 is rejected under 35 U.S.C 103 as being unpatentable over the combination, as applied to claim 1, which relies on Mandralis (US 20070272084) as the primary reference, and in further view of Liu (CN 109968755) or Miozzo (US 20200216256)
Regarding claim 3, the combination as applied to claim 1 teaches that the sealant (bottom layer) can comprise a polyhydroxyalkanoate.
Claim 3 differs in specifically reciting that “the sealant layer comprises at least 30 % in weight polyhydroxyalkanoate (PHA).”
Liu teaches biodegradable heat sealing layers as part of a multilayer biodegradable film, which sealing layer can comprise polylactic acid and a PHA such as PHBV (i.e. P(3HB-co-3HV) (see paragraph 24). Liu further teaches that PHBV can be used at for example 65% (see paragraph 31) in combination with additional biopolymers such as cellulose acetate (see paragraph 24 and 31).
Miozzo also teaches sealant layers for a sealing lid (see figure 1, item 3) and which layer can comprise at least 40% of heat sealable, biodegradable fibers such as PHAs (see paragraph 28-29). Miozzo teaches in one embodiment where the layer 3 can comprise at least 50% PLA fibers (see paragraph 56) and while also comprising additional biodegradable polymers (see paragraph 64) which biodegradable polymers include PHAs (see paragraphs 60-61)
Since Cabilli already teaches that the sealing layer can comprise a combination of biodegradable materials including cellulose derivatives and PHAs, it would have been obvious to one having ordinary skill in the art to have accordingly have modified the amount of PHA present in a sealant layer of the top membrane to be 65% in weight PHA, as taught by Liu or at least 50% PHA as taught by Miozzo, for the purpose of achieving the desired structural and biodegradable properties of the sealing top membrane.
Claim 4 is rejected under 35 U.S.C 103 as being unpatentable over the combination, as applied to claim 1, which relies on Mandralis (US 20070272084) as the primary reference, and in further view of Alberts (NL 2021592 B1) and De Fiore (US 20180305116).
Regarding claim 4, in view of Cabilli, the combination encompasses the claimed top membrane thickness of “about 120 to 150 microns.” (see Cabilli paragraph 105). As such a prima facie case of obviousness exists (see MPEP 2144.05(I)).
Nonetheless, if it could have been construed that Cabilli did not provide sufficient specificity regarding the thickness of the top membrane, then it is noted that Alberts teaches beverage capsules that are puncturable at a top covering membrane (see the abstract) and which membrane can be biodegradable (see at least, page 7, lines 1-9) and can have a thickness of 100 or 150 microns (see page 7, lines 10-15). It is noted that Di Fiore further teaches biodegradable top covering membranes (see paragraph 20) which can have a thickness of 140 microns (see paragraph 28).
To therefore modify the combination and use a known thickness for a biodegradable cover membrane, such as 100 microns (which can be construed as “about 120 microns” or 150 microns, would have been obvious to one having oirndary skill in the art as an obvious matter of engineering and/or design, based on conventional thicknesses for biodegradable top membranes used for beverage producing capsules.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over the combination as applied to claim 1 above which relies on Mandralis (US 20070272084) as the primary reference, and in further view of Sandherr (WO 2021224348 already of record) and Bartoli (WO 2021186336).
Regarding claim 17, the claim differs in specifically reciting that the at least one top layer comprises a water vapor transmission barrier layer.
Sandherr teaches sealing films for a beverage producing capsule (see figure 3) where the outer most layer (i.e. top most) can comprise a barrier layer (see paragraph 62, lines 377-379; paragraph 112) and which third layer barrier layer can be a barrier to oxygen and/or water vapor (see paragraph 51).
Bartoli also teaches lidding films that can comprise a top most layer of a moisture barrier as (figure 1, item 301) in addition to an internal layer that can be a gas and moisture barrier (figure 1, item 302) (see page 17, lines 2-4). Bartoli also teaches that layer 301 and layer 302 can comprise biodegradable material s (see page 10, lines 21-29).
To therefore modify the combination and to further include an additional top layer that comprises a water vapor transmission barrier would have been obvious to one having ordinary skill in the art as a duplication of a layer for providing additional added water vapor protection to the contents of Mandralis’ cartridge.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over the combination as applied to claim 1 above which relies on Mandralis (US 20070272084) as the primary reference, and in further view of Bartoli (WO 2021186336).
Regarding claim 18 the claim differs from the combination as applied to claim 1 in specifically reciting an additional layer comprising at least one PHA between the bottom layer and the top layer.
Bartoli also teaches lidding films that can comprise a top most layer of a moisture barrier as (figure 1, item 301) in addition to an internal layer that can be a gas and moisture barrier (figure 1, item 302) (see page 17, lines 2-4). Bartoli also teaches that layer 301 and layer 302 can both comprise a PHA material such as PHBV (see page 10, lines 21-29), and where layer 302 is between the top and bottom layer of the sealing membrane (see figure 2).
Since neither Mandralis or Cabilli are limiting regarding the particular number of layers positioned between the top and bottom layer of the top membrane, to modify the combination and to include another layer comprising at least one PHA as taught by Bartoli, would have been obvious to one having ordinary skill in the art, for the purpose of achieving the desired barrier properties to the top membrane.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over the combination as applied to claim 1 above which relies on Mandralis (US 20070272084) as the primary reference, and in further view of Vidal (US 20200140187).
Claim 19 differs from the combination as applied to claim 1 in specifically reciting, “wherein the top membrane is able to withstand a pressure of at least 7 bar for at least 5 seconds.”
Vidal teaches biodegradable top membranes (see figure 3 and paragraph 87) that comprise at least three layers (see figures 2-3) and which lid can desirably withstand pressures of 15bar and do not tear due to the effect of water pressure increasing in the capsule (see paragraph 30). Vidal teaches that this is important because such resistance to tearing will prevent an increase in size of any perforations so as to prevent powder to escape, while also retaining froth characteristics of the coffee (paragraph 30).
To therefore modify the combination and to ensure that the top membrane is able to withstand a pressure of at least 7 bar for at least 5 seconds would have been obvious to one having ordinary skill in the art to prevent further resistance to tearing during use, which can allow the beverage ingredient to escape while also being detrimental to desired froth characteristics of the beverage.
Response to Arguments
On page 9 of the response, Applicant urges that the combination does not teach or suggest a bottom layer comprising at least one PHA blended with one or more biopolymers, an inner layer comprising PBS and at least one top layer and nothing in Cabilli, Hackfort, Alfred and/or Kuiper would have motivated the ordinarily skilled artisan to modify the teachings of Mandralis and/or Cabilli to arrive at the present claims.
These arguments are not persuasive in view of the new grounds of rejection as presented in this Office Action.
The remainder of Applicant’s remarks on page 10 reiterate those presented above, and are not seen to be sufficient for the reasons discussed above.
The remainder of Applicant’s arguments on pages 11-12 reiterate those presented above, and are not seen to be persuasive for the reasons discussed above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Neuman (US 20130087560) teaches multilayer films (see paragraph 59) where a PHA layer can be sandwiched between an inner and outer layer (see paragraph 65 and layer 2 which is 100% PHA). Neuman teaches that such layers can provide flexibility or rigidity to the film (see paragraph 3-4) for providing the requisite strength, flexibility (see paragraph 7).
Kuiper (US 20230166895) teaches providing a sealing film for a coffee cartridge (see figure 8 and paragraph 153) and where the cover (610,612) is provided with sufficient strength to prevent undesired breaking in storage, transport and in the machine to guarantee sufficient seal integrity (see paragraph 153).
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/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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