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 .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 16 – 18 and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ferrier et al. US 2013/0122153.
Regarding claim 16, Ferrier discloses a capsule (coffee pod) capable of preparing a beverage which capsule comprises a core material (ground coffee) capable of beverage preparation comprising a compacted core material (coffee), a shell is enclosing the core material, and the capsule has in a breaking strength test a maximum percentage expansion in a direction transverse to a pressing direction of at least 15% (30%) (paragraph [0016] – [0019]).
Regarding claim 17, Ferrier discloses the capsule absorbs a maximum force in the breaking strength test of at least 25N (800 N/m perpendicular to the direction of the machine) (paragraph [0071]).
Regarding claim 18, Ferrier discloses that when the capsule is made, that is unused in a dry state, the capsule would absorb a maximum force in a breaking strength test of at least 10 N (1,800 N and 800 N) (paragraph [0071]).
Regarding claim 23, Ferrier discloses the thickness of the shell would be between 0.01 mm and 3.5 mm (500 µm) (paragraph [0019]).
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.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Ferrier et al. US 2013/0122153.
Regarding claim 25, Ferrier discloses the shell would be made of a biodegradable material (paragraph [0032]) and the core material capable of preparing a beverage would be ground coffee (paragraph [0014]) which is to say that it would be obvious that the complete capsule would be home compostable according to at least one of the NF T 51-800 certification program and the AS 5810 certification program.
Claims 19 – 22, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Ferrier et al. US 2013/0122153 in view of Kuhl et al. US 2019/0031873.
Regarding claims 19 and 24, claim 19 differs from Ferrier in the shell of the capsule being made from a hygroscopic material. Claim 24 differs from Ferrier in the shell having a surface adjusted oxygen transmission rate of less than 50 cm3 per m2 per day per 0.21 bar.
Kuhl discloses that it is particularly advantageous to make the shell of capsules capable of preparing a beverage from compostable materials (paragraph [0021]) to reduce consumer waste (reduction of trash mountains) (paragraph [0023]) and that it would be particularly preferred to make the shell from a blend of polyvinyl alcohol and/or polyvinyl alcohol, which is known to be hygroscopic (water soluble) (paragraph [0018]), in amount of 85% in combination other compostable materials (paragraph [0021]) which would prevent the shell from dissolving at the time of use. Kuhl also discloses that in order to further increase the shelf life of a contained beverage material the shell should have an oxygen transmission rate (low gas permeability) of less than 50 cm3 per m2 per day (1x10-4 cm3 per m2 per day) per 0.21 bar (paragraph [0032]).
Kuhl is providing a shell of a capsule capable of preparing a beverage that is hygroscopic (polyvinyl alcohol/polyvinyl alcohol copolymer) with an oxygen transmission rate of less than 50 cm3 per m2 per day per 0.21 bar for the art recognized function of improving compostability of the shell while at the same time increasing the shelf life of the capsule and beverage material contained therein (paragraph [0023]) all of which are applicant’s reasons for doing so as well. To therefore modify Ferrier and make the shell from a hygroscopic, i.e., water absorbing material, with an oxygen transmission rate of ess than 50 cm3 per m2 per day per 0.21 bar as taught by Kuhl would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
Further regarding claims 19 and 20, since Ferrier in view of Kuhl has taught the shell of said capsule would be made from 85% of a very hygroscopic material as set forth in the rejection of claim 19, it would be expected that the weight of the shell would increase by at least 50% when immersed in a water bath at 100º C without pressure during 10 s.
Regarding claims 21 and 22, since Ferrier in view of Kuhl has taught the shell of said capsule would be made from 85% of a very hygroscopic material as set forth in the rejection of claim 19, and since the core material would absorb any liquid, such as water, that the capsule would be immersed in it would be expected that the weight of the capsule would increase by at least 150% when immersed in a water bath at 100º C without pressure during 10 s.
Response to Arguments
Applicant's arguments filed 23 January 2026 have been fully and carefully considered but they are not found persuasive.
Applicant urges that the compacted material and material of the shell of Ferrier are produced independently, i.e., the shell is manufactured separately and then filled with the core material. This urging is not deemed persuasive.
The claims are directed to an article, i.e., a capsule capable for preparing a beverage and not the steps of a method of making the capsule. The method by which the capsule would be made does not determine the patentability of the capsule and 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 Ferrier discloses the shell enclosing the core material would comprise polyethylene and/or polypropylene which is also the same material applicant’s core comprises.
Further still regarding applicant’s urging that the compacted material and the material of the shell of Ferrier are produced independently and that the shell is built from two half shells, it is noted that applicant discloses that the shell of the claimed capsule would also be manufactured separately and then filled with the core material and then sealed.
Regarding claim 16, applicant urges that Ferrier does not disclose a maximum percentage of expansion of the capsule in a breaking strength test as is recited in applicant’s specification and further urges that Ferrier measures the breaking strength of the shell alone and independently from the compacted material. These urgings are not found persuasive.
Claim 16 does not recite any particular break strength test or how it would be conducted only that there is a “maximum percentage expansion in a direction transverse (i.e., parallel) to a pressing direction of at least 15%”. Nor does the claim recite that the breaking strength test would be required to be performed only on the capsule after assembly would be completed. While the claims are interpreted in light of the specification limitations recited in the specification are not read into the claims (MPEP § 2111). Ferrier also discloses the capsule would have a breaking strength with a maximum percentage expansion in a direction transverse (perpendicular to the direction of the machine) to a pressing direction of 80% (paragraph [0071]).
Further, Ferrier discloses the shell enclosing the core material would comprise polyethylene and/or polypropylene (paragraph [0038]) which is the same material applicant employes therefore it would be expected that the capsule of Ferrier would exhibit the same properties and have a maximum percentage expansion in a direction transverse to a pressing direction of at least 15% as claimed.
Applicant urges that a person skilled in the art would not combine the teaching of Kuhl with Ferrier because the shell of Kuhl has an oxygen transmission rate of 0.1 to 1x10-4/cm3/m2/day. This urging is not deemed persuasive.
Here applicant merely states the resulting combination would not be operable but provided no further details as to why this would be. Further, Kuhl was brought to disclose that it was common and conventional in the art to provide a capsule shell that would be both hygroscopic and have a reduced OTR to improve compostability as well as to increase the shelf life of the capsule and beverage material.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/C.S./
Chaim SmithExaminer, Art Unit 1791 23 April 2026
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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