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 Objections
Claims 12, 13, and 19 are objected to because of the following informalities:
Claims 12 has been presented with the status identifier (Currently Amended) when in fact no amendment has been made.
Claim 13 has been presented with the status identifier (Previously Presented) which in fact the claims contain text that has been struck through signifying an amendment.
The status identifiers for claims 12 and 13 should be corrected to indicate the correct status of the claims. In the interest of furthering prosecution a notice of non-compliant amendment has not been issued at this time.
Claim 19 recites “wherein the periphery edge uniformly peripherally extends”. It would appear the claim should recite ‘wherein the periphery edge uniformly extends’.
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, 2, 5 – 8, 11 – 13, 19, 22, and 29 – 32 are rejected under 35 U.S.C. 103 as being unpatentable over Van der Veen et al. US 2012/0070544 in view of Diolaiti US 2010/0159086 in view of Koch EP 8 844 195.
First, it is again noted that the claims are directed to a beverage pad and not a beverage machine.
Regarding claim 1, Van der Veen discloses a beverage pad capable of being used in a beverage preparation machine and capable of preparing a beverage by supplying the pad, if in the machine, with a pressurized aqueous fluid of between 1 – 20 bar and comprising an amount of extractable product (ground coffee) enclosed between two sheets (first and second covering) of filtering material sealed to each other at a periphery edge of the pad (paragraph [0019] – [0022]). There is a first sheet (33) of the two sheets having a bottom portion, side portion and a first edge portion, a second sheet (32) of the two sheets comprising a central portion and a second edge portion, the first edge portion of the first sheet and the second edge portion of the second sheet are sealed to each other forming the periphery edge of the pad, and the side portion, bottom portion and central portion define a space holding the extractable and/or soluble beverage preparation product (paragraph [0080] and fig. 3). Van der Veen further discloses the pad would comprise between 6.5 to 7.5 grams of ground coffee (paragraph [0090]).
Claim 1 differs from Van der Veen in the extractable beverage preparation product being in the form of a compacted puck.
Diolaiti discloses an extractable beverage preparation product (product for infusion such as coffee) that is in the form of a compacted puck (compact tablet 010) (paragraph [0016] and [0026]) which compacted puck has a uniform thickness with the bottom portion and central portion being substantially flat and parallel to each other on opposite sides of the compacted puck with the side portion extending at least almost perpendicular from the bottom portion around the compacted puck to the edge portions (fig. 3) and that contacting the compacted puck with a filter paper further facilitates the infusion process (paragraph [0088]). Diolaiti further discloses that the particular advantage in providing the beverage preparation product in the form of a compacted puck is that a product in a predetermined dose is provided that results in a constant result with regards to the drink obtained (paragraph [0019]). Diolaiti is providing the extractable beverage preparation product in the form of a compacted puck for the art recognized purpose of providing a predetermined dose of said preparation product to product more consistent results with respect to a prepared beverage. To therefore modify Van der Veen and provide the extractable beverage preparation product in the form of a compacted puck as taught by Diolaiti would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
Van der Veen in view of Diolaiti further disclose the puck consists of a compacted layer of ground coffee (‘086, paragraph [0016]), the compacted puck is shaped as a circular disc (‘086, fig. 2), and the ground coffee would have a moisture content of 3 to 5% (3%) (‘086, paragraph [0078]).
With respect to the specific uniform thickness of between 6 – 7.5 mm and a diameter of between 50 – 60 mm, once it was known to provide a compacted puck that has a uniform thickness it is not seen that patentability would be predicated on the particular thickness of said puck. Limitations relating to the thickness of the compacted puck would not be sufficient to patentably distinguish over the prior art compacted puck. The mere scaling up of a prior art compacted puck capable of being scaled up, if such were the case, would not establish patentability in a claim to an old, compacted puck so scaled. Where the only difference between the prior art compacted puck and the claimed compacted puck is a recitation of relative dimensions of the claimed compacted puck and a compacted puck having the claimed relative dimensions would not perform differently than the prior art compacted puck, the claimed compacted puck is not patentably distinct from the prior art compacted puck (MPEP § 2144.04 IV.A.).
Claim 1 differs from Van der Veen in view of Diolaiti in the layer comprises ground coffee with a median grind size between 250 - 500 µm, an amount of fines that is particles with a grind size of less than 100 µm, ranging from a minimum of 10% to a maximum of at most 20% by volume of the total amount of grinds, and a bulk density of between 350-450 g/L.
Koch discloses a beverage pad (two identical flexible sheets) (page 4, lines 1 – 4) capable of being used in a beverage preparation machine capable of preparing a beverage by supplying the pod with a pressurized aqueous fluid. An amount of extractable product is enclosed between the two sheets (coffee) which extractable product is compacted (compression under a pressure of roughly several hundred kg/cm2) (page 3, ln 14 – 20) which sheets would obviously be of a filtering material sealed to each other at a periphery edge of the pad. Koch further discloses that to ensure a good extraction with increased speed the extractable product, i.e., the compacted product, would comprise a compacted ground coffee with a median grind size (D(4, 3)) of between 250 µm – 500 µm (650 and 300 microns) and an amount of fines with a grind size of less than 100 µm (90 microns) in the amount of 15% (page 2, ln 19 – 23). Koch is providing a compacted ground coffee with a median grind size of between 250 µm – 500 µm and an amount of fines with a grind size of less than 100 µm for the art recognized function of ensuring a good extraction rate at increased speed under pressure. To therefore modify Van der Veen in view of Diolaiti and provide a compacted coffee in the grind size and fines amount as taught by Koch would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
Regarding claim 2, Van der Veen in view of Diolaiti in view of Koch discloses the sheets and the compacted puck are configured and arranged to at least substantially maintain a shape of the compacted puck with uniform thickness. The compacted puck is tightly enclosed by the first sheet and second sheet with a volume of the puck being at least substantially identical to a volume of the space defined by the sheets (‘544, fig. 3).
With respect to the remaining recitations beginning “maintain a shape of the compacted puck with uniform thickness in use of the beverage pad in the beverage preparation machine when exposed to the aqueous fluid under pressure” these are seen to be recitations regarding the intended use of the beverage pad.
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 Van der Veen in view of Diolaiti 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. “maintain a shape of the compacted puck with uniform thickness in use of the beverage pad in the beverage preparation machine when exposed to the aqueous fluid under pressure”, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art, that is Van der Veen in view of Diolaiti 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.
Regarding claim 5, Van der Veen in view of Diolaiti in view of Koch disclosed the first sheet and the second sheet are a flexible sheet of filtering material (filter paper) (‘544, paragraph [0080]) (‘086, paragraph [0065]).
Regarding claims 6 and 29 – 32 Van der Veen in view of Diolaiti in view of Koch discloses that the first sheet and second sheet would be made from a fibrous, that is fibre based, non-woven material including lyocell, straw, nettle, flax, sisal (‘544, paragraph [0073]), cellulose (‘544, paragraph [0030]), and filter paper (‘086, paragraph [0065]) all of which are compostable and flexible (paragraph [0028]). Further, since water flows into said beverage pad and a brewed beverage flows out of said pad the fibrous first sheet and the fibrous second sheet said sheets are seen to be a filtering paper.
Regarding claim 7, Van der Veen in view of Diolaiti in view of Koch discloses the bottom portion of the first sheet (33) is the liquid discharge of the pad (‘544, paragraph [0080]).
Regarding claim 8, Van der Veen discloses the bottom portion (33) is directedly sealed to the top portion which is to say that the bottom portion encompasses the side portion, and the first edge portion (‘544, paragraph [0080] and fig. 3). Stated somewhat differently Van der Veen is disclosing the bottom portion, side portion, and the first edge portion of the first sheet are integrally formed and made from one piece.
Regarding claim 11, Van der Veen in view of Diolaiti in view of Koch disclose the first sheet (second covering) has a grammage of between 30 – 40 grams per square metre (30 g/m2) (‘544, paragraph [0023]).
Regarding claim 12, Van der Veen in view of Diolaiti in view of Koch disclose the central portion of the second sheet (first covering 32) is a liquid inlet side of the pad (‘544, paragraph [0080]).
Regarding claim 13, Van der Veen in view of Diolaiti in view of Koch disclose the second sheet (first covering) has a grammage of between 15 – 20 gsm (18 g/m2) (‘544, paragraph [0023]).
Regarding claim 19, Van der Veen disclose the compacted puck is shaped as a circular disc (‘086, fig. 2). Further regarding claim 19, once it was known to provide a compacted puck that is a circular disc it is not seen that patentability would be predicated on the particular diameter of said disc. Limitations relating to the diameter of the compacted puck would not be sufficient to patentably distinguish over the prior art compacted puck. The mere scaling up or down of the diameter of a prior art compacted puck capable of being so scaled, if such were the case, would not establish patentability in a claim to an old compacted puck so scaled. Where the only difference between the prior art compacted puck and the claimed compacted puck is a recitation of relative dimensions, in this case a diameter, of the claimed compacted puck and a compacted puck having the claimed relative diameter would not perform differently than the prior art compacted puck, the claimed compacted puck is not patentably distinct from the prior art compacted puck (MPEP § 2144.04 IV.A.).
Regarding claim 22, Van der Veen in view of Diolaiti in view of Koch disclose an assembly of a beverage pad (74) and a pad holder (receptacle 71) capable of accommodating the beverage pad capable of being used in a beverage preparation machine. In order for the pad to be properly accommodated in said holder it is obvious that the pad holder would comprise a ridged, form-retaining body with a support surface supporting the beverage pad with a liquid discharge channel (75) which extends through the body from the support surface to a liquid outlet opening (‘544, paragraph [0093] – [0094] and fig. 7).
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 any event, in the interest of furthering prosecution the following comments are made.
Applicant appears to urge that Van der Veen does not teach the beverage pad would have a uniform thickness and that the pad of Van der Veen would have a pouch like configuration. This urging is not found persuasive.
As clearly seen in figures 2 and 4 of Van der Veen it appears that the pad would have a uniform thickness. Diolaiti also discloses a pad of uniform thickness as seen in figures 2 and 3. It must be remembered that the rejections have been made over Van der Veen in view of Diolaiti, and not either reference alone.
Applicant urges that Diolaiti does not disclose enclosing the compact tablet in a dual sheet beverage pad. This urging is not deemed persuasive.
Diolaiti was not brought to teach said tablet as enclosed in a dual sheet beverage pad as that limitation has been taught by Van der Veen. Again it must be remembered that the rejections have been made over Van der Veen in view of Diolaiti, and not either reference alone.
Regarding applicant’s urging regarding the pouch like pad of Van der Veen and/or Diolaiti and any internal geometry with respect to “bypass” here applicant is urging limitations not found in the claims.
Regarding applicant’s urging of unexpected results, the prior art of record, that is Van der Veen in view of Diolaiti, in view of the prior art now made of record, that is Koch, disclose the beverage pad as claimed therefore the same results as disclosed would be expected. Diolaiti in particular discloses that providing a compacted puck as claimed, that is as a compacted puck having a uniform thickness, resulted in a significantly improved and constant level of results regarding the drink obtained. Applicant urges that a beverage produced by the modification of Van der Veen in view of Diolaiti would exhibit white or diluted crema indicative of full or partial bypass. Here it is noted that applicant has provided no test results or objective evidence to demonstrate that this would have been the case.
Further it appears that applicant is urging each of the references separately for what each does not teach when the rejections have been made over a combination of references. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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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/C.S./
Chaim SmithExaminer, Art Unit 1791 29 March 2026
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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