DETAILED ACTION
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 23 June 2026 has been entered.
Information Disclosure Statement
The information disclosure statement filed 24 March 2026 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein and struck through has not been considered.
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, 3, and 16 - 21 are rejected under 35 U.S.C. 103 as being unpatentable over Singer US 2020/0317437 incorporating by reference Singer US 2019/0282022 in view of Belloli US 2011/0027426 as further evidenced by de Graaff et al. US 2016/0264347.
Regarding claims 1 and 3, Singer discloses a capsule (package holder 700) (paragraph [0063]) capable of preparing a food or beverage product in a food or beverage preparation machine. The capsule comprises a dose of a food or beverage ingredient (food and dietary supplements) (paragraph [0044]) (coffee grounds, powdered milk) (paragraph [0057]) and a container (300) enclosing the dose, in a single lump (solid form of any suitable size) (paragraph [0051]) where the container is composed of at least one dissolvable material (paragraph [0052]) consisting of at least one edible material (edible paper), the at least one dissolvable material consisting of pullulan (paragraph [0047]). The container comprises at least one part defining a cavity capable of receiving the dose and at least one part capable of closing the cavity. The at least one part defining the cavity and the at least one part capable of closing the cavity have respective flanges (306) sealed together such that the container may be configured as a closed package (paragraph [0052] and fig. 3B).
As set forth above Singer discloses the dose would be provided in a single lump. It is The Office’s position that in disclosing that the dose would be in a “solid form of any suitable size” Singer is teaching the dose would be a single lump. In the event that claim 1 can be construed as differing from Singer in the dose is provided in a single lump, Belloli discloses a capsule capable of preparing a food or beverage product in a food or beverage production machine which capsule comprises a dose of beverage ingredient (coffee) (paragraph [0012]) and a container (pack 030) enclosing the dose which dose is provided in a single lump (tablet 010) ( paragraph [0112] and fig. 11 and 12). Belloli is providing the dose of beverage ingredient as a single lump for the art recognized function of making it easy to dispose of the beverage ingredient after use (paragraph [0113]) which is believed to be applicant’s reason for doing so as well. To therefore modify Singer and provide the dose of beverage ingredient as a single lump to simplify disposal of the extracted beverage ingredient as taught by Belloli would have been an obvious matter of choice and/or design to the ordinarily skilled artisan. de Graaff provides further evidence that it was known to provide a dose of a food or beverage ingredient in a single lump (tablet) (paragraph [02057]).
With respect to the remaining recitations beginning “the container has an openable part cooperating with the food or beverage preparation machine so as to open the container sufficiently for the dose to be separable from the container before the food or beverage product is extracted in the food or beverage preparation machine, wherein the openable part is a partly annular region located at a junction of the flanges of the at least one part defining the cavity and the at least one part configured to close the cavity, and wherein the openable part comprises a slot after the container is opened” these are seen to be recitations regarding the intended use of the capsule.
In this regard applicant’s attention is invited to MPEP 2114 which states that “an apparatus must be distinguished from the prior art in terms of structure rather than function”. That is to say, apparatus claims cover what a device is, not what a device does. If the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and then further limitations merely state, for example, the purpose or intended use of the invention, rather than any distinct structural definition of any of the claimed invention’s structural limitations, then any limitations regarding the intended use of the device are of no significance to claim construction. 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 claim which Singer in view of Belloli as further evidenced by de Graaff obviously does. Further, if the prior art structure is capable of performing the intended use, then it meets the claim.
It is The Office’s position that the further limitations do not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. “the container has an openable part cooperating with the food or beverage preparation machine so as to open the container sufficiently for the dose to be separable from the container before the food or beverage product is extracted in the food or beverage preparation machine, wherein the openable part is a partly annular region located at a junction of the flanges of the at least one part defining the cavity and the at least one part configured to close the cavity, and wherein the openable part comprises a slot after the container is opened”, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art, that is Singer in view of Belloli as further evidenced by de Graaff and further that the prior art structure, which is identical and/or obvious in view of the prior art to that set forth in the present claims is capable of performing the recited purpose or intended use. Singer further discloses the dose of food or beverage ingredient would be in solid form of any suitable size (paragraph [0051]).
Regarding claims 16 and 17, Singer incorporating by reference Singer ‘022 discloses the at least one dissolvable material would be sodium alginate, i.e., a seaweed (‘022, paragraph [0129]).
Regarding claims 18 and 19, Singer in view of Belloli as further evidenced by de Graaff discloses the at least one dissolvable material would be pullulan which is a polysaccharide (paragraph [0047]).
Regarding claims 20 and 21, Singer in view of Belloli as further evidenced by de Graaff discloses the respective flanges form a fin seal (306) which is to say that the respective flanges are sealed together in a liquid tight manner and have an annular protruding shape extending around the cavity (paragraph [0052]).
Response to Arguments
Applicant's arguments filed 02 June 2026 have been carefully and fully considered but they are not found persuasive.
Applicant urges that the capsule of Singer would merely dissolve when dropped into a beverage and therefore there is no need for an openable part of the papers and no slot formed after the container would be opened. These urgings are not deemed persuasive.
As recited in claim 1, applicant’s container is also dissolvable and would also dissolve when dropped into a beverage. Regarding applicant’s urging that there would be no slot formed after the container is opened this is a recitation regarding the intended use of the container, that is, said slot would only occur after the container has been used as intended. In response to applicant's urging that there would be no slot formed after the container is opened, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this instance the container would be capable of being opened as intended and would be capable of comprising a slot thereafter.
Applicant also urges that Singer fails to disclose or suggest that the papers 310, 320 cooperates with the food or beverage preparation machine so as to open the container for the dose to be separable from the container before the food or beverage product is extracted, as required under the claims. This urging is not found persuasive.
It must be remembered that the claims are directed to the structure of a capsule and not the manner in which the capsule would cooperate with a food or beverage preparation machine.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAIM A SMITH whose telephone number is (571)270-7369. The examiner can normally be reached Monday-Thursday 09:00-18:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at (571) 270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.S./
Chaim SmithExaminer, Art Unit 1791 30 July 2026
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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