DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The amendment filed February 17, 2026, has been entered. Claims 1-20 remain pending. Claims 1-12 and 18-20 remain withdrawn from further consideration as being drawn to a nonelected invention. Claims 13-17 are examined in this action.
The previous 112(b) rejection of claims 13-17 has been withdrawn in view of the amendment to claim 13.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Edwards et al. (US 2016/0023826) in view of Edwards et al. (9,795,990; cited on IDS filed 7/25/2023).
Regarding claims 13 and 17, Edwards ‘826 teaches a method for manufacturing an edible transport system (i.e., enclosed edible hydration pod) by
Providing a liquid [0100-0101];
Providing a casing. Edwards ‘826 teaches the casing may comprise a combination of polymers, where polymers taught include e.g., gelatin and a microcrystalline cellulose (i.e., a polymer derived from cellulose) [0061].
Forming a cavity using the casing. At [0060-0061], Edwards ‘826 teaches forming the membranes.
Edwards ‘826 is silent as to filling the cavity with the liquid and encapsulating the liquid within the casing.
Edwards ‘990 also teaches a method for manufacturing an edible transport system (i.e., enclosed edible hydration pod) (col. 1 lines 37-49). Edwards ‘990 teaches forming a cavity using a casing, followed by filling the casing with liquid, and encapsulating the liquid within the casing (col. 3 lines 43-53).
Both Edwards ‘826 and Edwards ‘990 teach the formation of the edible pods by manufacturing before the pod is shipped (‘826 at [0043]; ‘990 at Fig. 3, col. 1 lines 37-49).
Therefore, since both Edwards ‘826 and Edwards ‘990 are concerned with enclosing liquids in edible polymer shells for consumption at a later time, it would have been obvious to have filled the cavity of Edwards ‘826 with a liquid as taught by Edwards ‘990 in order to provide a pod filled with a liquid. This would have required no more than routine experimentation, and would have been expected to provide the predictable result of a method of encapsulating a liquid in a casing comprising gelatin and a cellulose derivative as claimed.
Regarding the casing including at least one (claim 13) or multiple (claim 17) weak points, Edwards ‘826 teaches that the external surface area, thickness and thinness can be modulated [0113]. They do not teach the casing (i.e., external surface) includes at least one weak point corresponding to a bite force needed for piercing the casing. However, where Edwards ‘826 does teach modulating the thickness/thinness of the external surface, it would have been obvious to have provided the casing with a weak point (i.e., thinner area) as claimed in order to correspond to a bite force as claimed. This would have required no more than routine experimentation, as Edwards ‘826 allows for variations in the thickness of the outer surface, and further would have been expected to provide the predictable result of a weak point in the capsule.
Regarding claim 14, Edwards ‘826 teaches that the encased material can be frozen [0115]. Edwards ‘826 also teaches that a frozen object can be shaped and then a membrane formed thereon [0131]. Therefore, while Edwards ‘826 does not specifically teach freezing the liquid followed by sealing the casing around the frozen liquid, any order of steps is considered prima facie obvious in the absence of new or unexpected results. MPEP § 2144.04(IV)C. Given that the methods of both Edwards ‘826 and the claimed invention provide a liquid encased in a casing comprising gelatin and cellulose as set forth above with regard to claim 13, the timing of the freezing of the liquid and the sealing of the casing around the frozen liquid is not considered to provide a patentable distinction over the prior art.
Regarding claim 15, Edwards ‘826 teaches the addition of flavoring to both the liquid [0101] and to the casing [0071]. Also, at [0109] Edwards ‘826 speaks to the importance of flavor to almost any food product. Therefore, it would have been obvious to have added flavoring to the liquid and the casing as flavors are an important part of foodstuffs.
Regarding claim 16, Edwards ‘826 teaches that their transport systems (i.e., edible hydration pods) can be enclosed in various shells for packaging, transportation or storage [0122]. Where the transport systems “can be” enclosed, this is not required. Therefore, it would have been obvious to have shipped the transport systems of Edwards ‘826 without individual packaging as Edwards ‘826 does not require their transport systems to be individually packaged.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 13 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 11,707,074. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and the patented claims recite a method of manufacturing an enclosed edible hydration pod.
Instant claims
Patented claims
13. A method of manufacturing an enclosed edible hydration pod, comprising:
9. A method of manufacturing an enclosed edible hydration pod for a non-human animal, comprising:
providing a liquid;
providing a liquid;
providing a casing that includes a gelatin in the range of 35% to 55% and a polymer derived from cellulose;
providing a casing for a particular non-human animal that includes a gelatin in the range of 35% to 55% and a polymer derived from cellulose;
strengthening the casing for transportation of the dibble hydration pod;
forming a caving using the casing; wherein the casing includes at least one week point corresponding to a bite force needed for piercing the casing;
forming a caving using the casing;
filling the cavity with the liquid;
filling the cavity with the liquid;
encapsulating the liquid within the casing, wherein the forming the cavity, the filling the cavity, and the encapsulating the liquid are performed by a manufacturer before the enclosed edible hydration pod is shipped.
forming the enclosed edible hydration pod by encapsulating the liquid within the casing, wherein the casing is digestible by the particular non-human animate, and the forming the cavity, the filling the cavity and the forming the enclosed edible hydration pod are performed by a manufacturer before the enclosed edible hydration pod is shipped.
Patented claim 10, which depends from patented claim 9 (shown above) recites the casing includes at least one weak point.
Instant claim 17 recites that the casing includes multiple weak points corresponding to a bite force needed to pierce the casing.
Where patented claim 10 recites “at least one” weak point, this renders obvious the “multiple weak points” recited in instant claim 17.
Although the claims are not identical, given the strong overlap between the patented claims and the present claims, it would have been obvious to, as well as within the skill level of, one of ordinary skill in the art to use the method which is both disclosed in the patented claims and encompassed within the scope of the present claims and thereby arrive at the present invention.
Response to Arguments
Applicant's arguments filed February 17, 2026, have been fully considered but they are not persuasive.
Applicant argues that the use of “modulate” in [0113] of Edwards ‘826 does not appear to suggest a variation with any intentional design and not specifically directed to a weak point that corresponds to a bite force. Thus, applicant asserts, no teaching or suggestion of the claimed “at least one weak point corresponding to a bite force needed for piercing the casing” exists in the combination of applied prior art (Remarks, p. 7).
This argument is not persuasive. As stated in the rejection above, Edwards ‘826 at [0113] teaches that the “thickness or thinness of the exterior surface material… can be modulated.” Therefore to have done just that, i.e., modulated (changed) the thickness or thinness of the exterior surface material, is not considered to represent an unobvious contribution over the prior art.
Further, where the weak point corresponds to “a bite force,” there is no limit on what that bite force is. Any difference in the thickness/thinness of the exterior surface material would provide a weak point that corresponds to “a” bite force needed to pierce the casing.
Therefore, the rejection of claims 13-17 is maintained as set forth above.
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 NIKKI H. DEES whose telephone number is (571)270-3435. The examiner can normally be reached 10:00 am-5:00 pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tricia Mallari can be reached at 571-272-4729. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Nikki H. Dees
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791