DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA . 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 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.
Drawing Objections
The drawings are objected to because the images are small, thereby rendering viewing of sufficient details within the drawings difficult; also, the line and/or text quality in each figure is poor, especially when printed. The examiner suggests placing each figure on a separate drawing sheet to allow for enlargement and enhancement with appropriate line and text quality.
The drawings are objected to because element 24 (fig. 9) is not mentioned in the specification.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office Action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office Action. The objection to the drawings will not be held in abeyance.
Specification Objections
The specification is objected to because of the following informalities: in re ¶ 60, “loading hopper (18)” should be –conveyor (18)– in accordance with fig. 4. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. § 112(f):
(f) Element in Claim for a Combination – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. § 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. § 112(f):
(A) the claim limitation uses the term “means” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for entirely performing the claimed function;
(B) the term “means” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or the generic placeholder is not modified by sufficient structure for entirely performing the claimed function.
Use of the word “means” in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. § 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. § 112(f) is rebutted when the claim limitation recites sufficient structure to entirely perform the recited function.
Absence of the word “means” in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. § 112(f). The rebuttable presumption that the claim limitation is not to be interpreted under 35 U.S.C. § 112(f) is rebutted when the claim limitation recites a function without reciting sufficient structure to entirely perform the recited function, and when there is no evidence from the prior art that the claim limitation is a term of art known to be used to represent sufficiently definite structure.
Claim limitations in this application that use the word “means” are being interpreted under 35 U.S.C. § 112(f). Conversely, claim limitations in this application that do not use the word “means” are not being interpreted under 35 U.S.C. § 112(f).
Claim Rejections - 35 U.S.C. § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. § 112(a):
(a) IN GENERAL — The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-18 are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement; any claims not directly addressed are only rejected under 35 U.S.C. § 112(a) for being dependent on a rejected base claim. The claim(s) contain(s) subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor had possession of the claimed invention.
In re claim 1: the claim recites “said first and second collection containers are different from each other and are connected to the containment compartment which can be emptied into the normal containers used for sorting waste”. There is no disclosure within the specification of emptying any of the first and second collection containers and the containment compartment into any container used for sorting waste.
In re claim 3: the claim recites “allowing an adjustment of the final separation level between compostable organic residue and recyclable casings.” There is no disclosure within the specification of adjusting anything that has to do with separation.
In re claims 8 and 14: the claim recites “the work cycle is managed manually by the user or automatically under the control of an electronic board, which, by means of convenient sensors positioned in strategic places, keeps the apparatus safe and verifies the presence of capsules and/or pods to be processed for activating the device when necessary.” There is no disclosure within the specification of a work cycle or anything that can be considered one.
In re claims 9 and 15: the claim recites “a general ON/OFF switch” and “a processing cycle start switch”. The specification and drawings are completely devoid of such features.
In re claims 10 and 16: the claim recites “warning lights to signal the ON state of the invention, the presence of capsules/pods to be processed, the end of processing, etc.” The specification and drawings are completely devoid of any lights.
Claim Rejections - 35 U.S.C. § 112(b)
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.
Claims 1-18 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Any claims not directly addressed are only rejected under 35 U.S.C. § 112(b) for being dependent on a rejected base claim.
The claims are replete with indefinite language and objectionable issues, and the following list of issues is not conclusive. The applicant is required to review each claim for compliance with 35 U.S.C. § 112 and make corrections where necessary.
In re claim 1: there is no antecedent basis in the claim for the following:
“the recyclable casing”, “the capsules and/or pods”, “the compostable organic material”, “the resulting products”, “the operation”, “the organic contents”, “the compostable organic contents”, “the normal containers”, “the upper part”, “the top”, “the processed capsules”, “the remains”, “the organic materials”, “the inner walls”, “the inner bottom”, “the top of the containment compartment”, “each seat”, “said impeller shaft”, “the blade shaft”, “the entry”, and “said second container”.
The relationship of the “load-bearing structure” and “means for loading” (ln. 5) with the other features of the claim is unclear. How do the load-bearing structure and means for loading cooperate with or connect to the other features of the claim?
It is unclear if the “first” and “second collection container” are elements of the previously-recited “means for storing and collecting the resulting products” or are additional elements.
It is unclear what structure “which” in lines 14, 15 is referring to.
It is unclear if “the organic materials” is referring to the compostable organic material and if multiple types of organic material are required.
It is unclear if the “second collection container” in line 25 is intended to be the same as the previously-recited second collection container, or additional to it.
It is unclear if the “organic material” in line 29 is different from the “compostable organic material”.
The scope of “substantially consists of” in line 33 is unclear.
It is unclear if the “wheel” in line 33 is intended to be additional to the previously-recited “selector wheel”.
The limitation “special shaped “flights”” in lines 33-34 renders the claim indefinite because “special” is a relative and/or subjective term and metes and bounds for the term have not been set forth.
The intended difference between ““flights”” in line 34 and the previously-recited “flights” is unclear.
It is unclear if “said mechanical means for moving and tearing” in line 36 are the same as the previously-recited mechanical means, since it was not previously stated that the mechanical means provide a moving and tearing function.
It is unclear if “said second container” is intended to be the same as the previously-recited “second collection container”.
Appropriate correction for the above list of issues is required. Again, this list is not conclusive but merely exemplifies the types of § 112 issues presented within each of claims 1-18. The following is a representation of how claim 1 is being interpreted for the purposes of applying prior art:
1. A mechanical system for separating [[the]] recyclable casings of [[the]] used capsules and/or pods a compostable organic material contained in said casings, the mechanical system comprising an apparatus including, in combination:
a load-bearing structure,
means for loading the capsules and/or pods
a motorized separation unit comprising a containment compartment containing a perforated basket, at least said containment compartment being housed by said load-bearing structure,
means for storing and collecting [[the]] resulting products,
an electronic
a motorized selector unit connected to the means for loading and provided with a selector wheel having partitions forming seats for the capsules and/or pods
mechanical means arranged inside said perforated basket for processing the capsules and/or pods, said mechanical means are adapted to break the casings material from the casings, collecting the material and the s, respectively, of said means for storing and collecting, said first and second collection containers are different from each other and are connected to the containment compartment
a feeding opening for feeding said an upper part of the containment compartment for feeding the capsules and/or pods from [[the]] a top of said containment compartment directly into the perforated basket;
means for conveying the ones of said capsules and/or pods, from the containment compartment to said first collection container;
means for conveying processed casings of [[the]] processed capsules and/or pods, which have been separated from the organic material[[s]], from the containment compartment to [[a]] said second collection container;
said mechanical system being provided with manually-operated or motor-driven mechanical rotary cleaning means, adapted to scrape, from [[the]] outer walls and from [[the]] an outer bottom of the perforated basket, as well as to scrape from [[the]] inner walls and from [[the]] an inner bottom of the containment compartment, any incrustations of the organic material from within the capsules and/or pods, to avoid obstructions[[,]] which would block said apparatus;
and wherein:
said motorized selector unit is placed at the top of the containment compartment containing the perforated basket and said partitions of said wheel are configured to take a single one of the capsules and/or pods for each seat and direct the single one
said mechanical means for processing the capsules and/or pods includes an impeller comprising a shaft and blades, which are operable by
said and/or pods into the perforated basket;
at least one outlet opening arranged in the upper part of said containment compartment connected to said second collection container for collecting and storing the processed casings conveyed by said for conveying the processed casings.
Pertinent Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
Ceccarelli et al. (WO 2016/120668), Ceccarelli (WO 2018/207159), Pereira De Campos et al. (WO 2019/220163), Grillo et al. (IT 2020-00011188 A1), and Pes et al. (IT 2020-00027681 A1), all teach various aspects of at least claim 1 (see at least the figures).
Allowable Subject Matter
Claims 1-18 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. § 112 set forth in this Office Action.
The following is a statement of reasons for the indication of allowable subject matter.
Ceccarelli (WO 2016/120667) is the prior art closest to the subject matter of claim 1 and discloses:
a mechanical system for separating recyclable casings of used capsules and/or pods from a compostable organic material contained in said casings, the mechanical system comprising an apparatus including, in combination:
a load-bearing structure (“fixing bracket V”, fig. 3),
means (“chute H”) for loading the capsules and/or pods,
a motorized separation unit comprising a containment compartment (the structure to which “bag S1” is attached) containing a perforated basket (“container B”), at least said containment compartment being housed by said load-bearing structure V (see fig. 3),
means (“bag S1” and “bag S2”, fig. 3) for storing and collecting resulting products,
an electronic control part for managing operation of the apparatus (pg. 13, ln. 26 – pg. 9, ln. 2);
mechanical means (“bladed impeller 4”) arranged inside said perforated basket B for processing the capsules and/or pods, said mechanical means 4 are adapted to break the casings to separate the organic material from the casings (see fig. 3), collecting the organic material and the casings in first and second collection containers, respectively, of said means for storing and collecting, said first and second collection containers S1, S2 are different from each other and are connected to the containment compartment (S1 and S2 are at least different in size and are at least indirectly connected to the containment compartment);
a feeding opening (top opening in chute H) for feeding said capsules and/or pods, placed in an upper part of the containment compartment for feeding the capsules and/or pods from a top of said containment compartment directly into the perforated basket (see fig. 3);
means for conveying the organic material, which has been separated from processed ones of said capsules and/or pods, from the containment compartment to said first collection container (pg. 4, ln. 14-16);
means (“auger 3”) for conveying processed casings of processed capsules and/or pods, which have been separated from the organic material, from the containment compartment to said second collection container S2 (see fig. 3);
and wherein:
said mechanical means 4 for processing the capsules and/or pods includes an impeller (“bladed impeller” 4) comprising a shaft and blades (see fig. 3), which are operable by an electric motor (“electric motor E”) capable of being started automatically or manually (it is inherently one or the other of these options);
said shaft is provided with at least one fin (fig. 3, the blade of the impeller that extends upward diagonally from the shaft) which is integral with the shaft and configured to guide entry of the capsules and/or pods into the perforated basket B (see fig. 3);
at least one outlet opening (the opening that communicates with the bottom of the auger 3) arranged in the upper part of said containment compartment connected to said second collection container S2 for collecting and storing the processed casings conveyed by said means 3 for conveying the processed casings (see fig. 3).
Ceccarelli does not disclose a motorized selector unit connected to the means for loading and provided with a selector wheel having partitions forming seats for the capsules and/or pods; wherein said motorized selector unit is placed at the top of the containment compartment containing the perforated basket and said partitions of said wheel are configured to take a single one of the capsules and/or pods for each seat and direct the single one towards said feeding opening; and said mechanical system being provided with manually-operated or motor-driven mechanical rotary cleaning means, adapted to scrape, from outer walls and from an outer bottom of the perforated basket, as well as to scrape from inner walls and from an inner bottom of the containment compartment, any incrustations of the organic material from within the capsules and/or pods, to avoid obstructions which would block said apparatus.
None of the other cited prior art references make up for the shortfalls of Ceccarelli. Indeed, the prior art fails to anticipate or render obvious a mechanical system for separating recyclable casings of used capsules and/or pods having all of the features presented in claim 1, whether the references are taken alone or in any proper combination. Further, it would not be obvious to modify Ceccarelli to meet the claimed invention without the benefit of knowledge gleaned from the applicant’s disclosure.
Examiner’s Amendment
On 8 January 2026, the examiner emailed a proposal for an examiner’s amendment (see appendix), to Andrew Patch, that would put the application in condition for allowance. The examiner was notified by Kari Footland via telephone on 22 January 2026 that they had received no response from the applicant.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jared O. Brown whose telephone number is 303-297-4445. The examiner can normally be reached on Monday - Friday: 8:00 - 5:00 (Mountain Time).
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/JARED O BROWN/Primary Examiner, Art Unit 3725