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 .
Specification
The use of the terms LISTERINE POCKETPAKS®, CAPSUGEL PLANTCAPS®, NATUREFLEX™, CAPSUGEL LICAPS®, OOHO! ®, which are trade names or marks used in commerce, has been noted in this application. The terms should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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, 3, and 16 – 21 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.
Claim 1 recites "the container is composed of at least one dissolvable material consisting of at least one edible material, the at least one dissolvable material selected from the group consisting of . . ."
It is not understood what the applicant is attempting to claim. The transitional phrase “consisting of” excludes any element, step, or ingredient not specified in the claim while at the same time the “at least one of” language is inclusive or open-ended and does not exclude additional, unrecited elements making the claim indefinite.
Regarding claim 1, line 10, there is no antecedent basis for the term “the parts”.
Claims 3 and 16 – 21 are rejected by virtue of their dependence on a rejected base claim.
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 for receiving the dose and at least one part configured to close the cavity, which parts 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” 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”, 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 with respect to the claims have been fully and carefully considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In an effort to further prosecution the following remarks are made. Applicant urges that the container has an openable part cooperating with the food or beverage preparation machine. This urging is not deemed persuasive.
The claims are directed to the structure of a capsule and not a beverage preparation machine that would cooperate therewith. Therefore as set forth above in the rejections above the dose being separable from the container is an intended use and must be capable of the intended use, which Singer in view of Belloli as further evidenced by de Graaff is capable of.
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 CHAIM A SMITH whose telephone number is (571)270-7369. The examiner can normally be reached Monday-Thursday 09:00-18:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to please telephone the Examiner.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/C.S./
Chaim SmithExaminer, Art Unit 1791 01 March 2026
/VIREN A THAKUR/Primary Examiner, Art Unit 1792