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 .
Information Disclosure Statement
The information disclosure statement filed 18 April 2023 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.
Claims 1 – 9, 12, and 15 – 17 are rejected under 35 U.S.C. 103 as being unpatentable over Suggi Liverani et al. US 2010/0313766 in view of Gemmiti et al. US 20210253335.
First it is noted that the claims are directed to a container capable of enclosing a dose of a food or beverage ingredient and not a beverage preparation machine or a method of using the container during a food or beverage preparation process.
Regarding claims 1 and 6, Suggi Liverani discloses a container (1a) capable of enclosing a dose (P) of a food or beverage ingredient (ground coffee). The container (1a) has a first region (8) capable of cooperating with a liquid injection device that would be part of a food or beverage preparation machine that would have a plurality of injectors distributed over an injection area. The container has a second region (9) capable of being punctured by a puncturing device that would be part of the food or beverage preparation machine that would have a plurality of puncturing elements distributed over a puncturing area, the container (1a) is composed of at least one dissolvable material (soluble in hot water) (paragraph [0081]) which dissolvable material is coated with a barrier layer (film 11) (paragraph [0078] – [0081] and not shown). It is also noted that the film of Suggi Liverani is disclosed as having to be removed prior to a food or beverage being produced which is to say that said film would also need to be disposed of.
Claim 1 now further recites “wherein the container is coated with a film made of a material having moisture barrier properties, the film being secured to the container by lamination before shaping the container”.
Gemmiti discloses a container (220) capable of enclosing a dose of a food or beverage ingredient (224). The container has a first region capable of cooperating with a liquid injection device (240). Gemmiti further discloses the container is made of at least one dissolvable material that is a film coating made of a material having moisture barrier properties which film is secured, i.e., laminated, to the container and which dissolves in use thus avoiding the need to remove and dispose of a separate film as may be the case with Suggi Liverani (paragraph [0046] – [0050]). Gemmiti is coating/laminating the container with a film made of a material having moisture barrier properties secured to the container for the art recognized function of providing an improvement and alternative to containers by reducing the amount, complexity, and end-of -life impacts of containers for enclosing a dose of a food or beverage ingredient, i.e., single use beverage pods (paragraph [0006]) which is applicant’s reason for doing so as well. To therefore modify the container of Suggi Liverani and substitute the laminated film coating as taught by Gemmiti to provide improvements to the container would have been an obvious matter of design and/or choice to the ordinarily skilled artisan.
Further regarding claim 1, the limitation “the film being secured to the container by lamination before shaping the container” is a method limitation and does not determine the patentability of the product, unless the process produces unexpected results. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. MPEP 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Suggi Liverani in view of Gemmiti discloses the film would be secured to the container by lamination (‘335, paragraph [0050]).
Regarding claim 2, with respect to the recitations beginning “when the container is arranged in an extraction cell of the food or beverage preparation machine during a food or beverage preparation process” these are seen to be recitations regarding the intended use of the container.
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 Suggi Liverani in view of Gemmiti certainly 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. “when the container is arranged in an extraction cell of the food or beverage preparation machine during a food or beverage preparation process”, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art, that is Suggi Liverani in view of Gemmiti 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.
Nevertheless Suggi Liverani in view of Gemmiti discloses that when the container would be arranged in an extraction cell of a food or beverage preparation machine during a food or beverage preparation process a liquid injected by a liquid injection device may enter the container (1a) via the first region (8), any liquid that may enter into the container (1a) may necessarily interact with the dose (P) of the food or beverage ingredient, a food or beverage product that may result from said interacting may exit the container via the second region (9), and the container may start dissolving or may at least partially dissolve (‘766, paragraph [0075]).
Regarding claim 3, Suggi Liverani in view of Gemmiti discloses the at least one dissolvable material has oxygen barrier properties (impermeable) (‘766, paragraph [0016]) (‘335, paragraph [0048]).
Regarding claim 4, Suggi Liverani in view of Gemmiti discloses the at least one dissolvable material consists essentially in at least one edible material (an edible film) (paragraph [0016]) (food safe) (‘335, paragraph [0051]).
Regarding claim 5, Suggi Liverani in view of Gemmiti discloses the at least one dissolvable material would be a seaweed extract (alginates) (‘766, paragraph [0059] and table 1).
Regarding claim 7, Suggi Liverani in view of Gemmiti has disclosed the container for enclosing a dose of a food or beverage ingredient as claimed. Once it was known to provide a container having a first region and a second region where the container is composed of at least one dissolvable material it is not seen that patentability would be predicated on the specific thickness of the container. The mere scaling up, here the thickness of the container, of a prior art container capable of being scaled up, if such were the case, would not establish patentability in a claim to an old container so scaled. Where the only difference between the prior art and the claims was a recitation of relative dimensions, i.e., the thickness, of the claimed container and a container having the claimed relative dimensions would not perform differently than the prior art container, the claimed container is not seen to be patentably distinct from the prior art container MPEP § 2144.041 IV.A.).
Regarding claim 8, Suggi Liverani discloses the container would comprises at least one part (5) defining a cavity for housing the dose (P) and at least one part (4) configured to close said cavity, said parts (4, 5) each having respective flanges (4a, 5a) sealed together such that the container (1) may be configured as a closed package (paragraph [0054] and fig. 1 and 2).
Regarding claim 9, Suggi Liverani discloses the material the container (1) would be made from is soft, which is to say that the flanges (4a and 5a) would be flexible (paragraph [0016]).
Regarding claim 12, Suggi Liverani discloses the first region (5, 9) has a substantially flat surface and the second region (4, 9) has a substantially flat surface (fig. 1, 2, and 6).
Regarding claims 15 and 16, Suggi Liverani in view of Gemmiti discloses the dissolvable material would include an additive, alginates, (‘766 paragraph [0059]) which is applicants disclosed preferred dissolvable material therefore it would be expected that the at least one dissolvable material would dissolve in water in less than 10 minutes at ambient temperature under atmospheric pressure as well as increase the moisture barrier properties of the dissolvable material.
Regarding claim 17, Suggi Liverani in view of Gemmiti disclose the first region and the second region would be free from holes prior to use in a food or beverage preparation machine(‘776 fig. 5 and 6). Should applicant deign to say that Suggi Liverani discloses the container would comprise holes, the fact that Suggi Liverani in view of Gemmiti disclose that the container is coated with a film that would not dissolve prior to use in said machine means the first region and the second region would be free from holes prior to use in said machine. Further, Suggi Liverani clearly shows in figures 1 – 6, 16, and 17 the container capable of enclosing a dose of a food or beverage ingredient would have no holes prior to use in a food or beverage preparation machine making it obvious to the ordinarily skilled artisan to have made the first region and the second region free from holes prior to use.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Suggi Liverani et al. US 2010/0313766 in view of Gemmiti et al. US 20210253335 in view of Goros US 2,968,560.
Suggi Liverani in view of Gemmiti discloses the dose of a food or beverage ingredient contained in the container would comprise a cappuccino (‘766, paragraph [0009]) which is known to be a combination of both coffee and milk. Claim 11 differs from Suggi Liverani in view of Gemmiti in the container comprising at least one paper layer.
Goros discloses a container (infuser 10) capable of enclosing a dose of a food or beverage ingredient (ground coffee and powdered cream) (col. 1, ln 55 – col. 2, ln 15). Goros further discloses that when the container contains both ground coffee and powered cream and would be used to make a beverage the cream component would coat the ground coffee and prevent or inhibit proper extraction to produce a satisfactory beverage (col. 1, ln 29 – 35). In order to solve this problem and produce a satisfactory beverage comprising both coffee and cream Goros discloses that it is necessary to provide at least one paper layer (20) (cellulose base . . . rayon paper) in the container to provide separation between the dose of food or beverage ingredients (col. 2, ln 16 – 36). To therefore provide at least one paper layer in the container of Suggi Liverani in view of Gemmiti in order for the cappuccino beverage to be properly extracted as taught by Goros would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
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.
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.
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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 07 May 2026
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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