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 .
Response to Amendment
In view of the amendment to the claims, the rejection of claims 2-7 and 9 under 35 U.S.C. 112b have been withdrawn.
Those rejections not repeated in this Office Action have been withdrawn.
Claims 1, 6-11 are pending. Claim 10 is withdrawn from consideration. Claims 1, 6-9 and 11 are rejected.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites the limitation, “power” on line 5. It appears that this limitation should recite, “powder.”
Claim 1 recites, “each arranged in stripes that abut one another.” In light of the specification and drawings, it is clear that this limitation is referring to “the coffee powder composition, milk powder composition and sugar composition.” However, for matters of form, the limitation should be amended to recite, “the coffee powder composition, the milk powder composition and the sugar composition are arranged in stripes that abut one another.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 6-9 and 11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites, “each arranged in stripes that abut one another.” It is not clear from the disclosure and specification whether this limitation is intending to mean that each of the coffee powder, milk powder and sugar need to be abutting with both of other two of coffee powder, milk powder and sugar, or whether the claim is intending to mean that the coffee powder, milk powder and sugar each abut at minimum only need to be arranged as abutting stripes. This limitation is further unclear in light of claim 11 reciting that the coffee powder composition, the milk powder composition and the sugar composition are present as repeating stripes.
Claims 6-9 and 11 are rejected based on their dependence to a rejected claim.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 6 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Celeste (US 20110177141) in view of Heonis (US 3869555) and Lehrer (US 5958478) and in further view of Fowler (US 4921713) and Catani (US 20070275146).
Regarding claim 1, Celeste discloses a prepared single-use hot beverage cup comprising, a hot beverage cup substrate having a base and sidewall around a container interior (see figure 10; paragraph 59: ”hot beverage cup”) and where said sidewall is coated with a beverage concentrate (see figure 10; paragraph 23) and the concentrate is therefore operative to produce a beverage when hot water is provided in the container interior. Applicant’s specification defines “hot water” has having a temperature greater than 98.6°F and less than 212°F.
Celeste teaches beverages such as coffee beverages (see paragraph 59). Celeste also teaches that the beverage concentrate can be applied as a slurry which then forms a powder (see paragraph 49-50) and is thus suggesting a beverage concentrate powder coating the sidewall. Celeste is also teaching that the instant coffee concentrate can further include additional agents in liquid or solid form, including milk and sugar (see paragraph 27, “liquid or solid form”; see paragraph 28, “sucrose” “milk”; paragraph 59, “sugar”). Therefore, Celeste is suggesting that the beverage concentrate can comprise a coffee composition, a milk composition and a sugar composition, which is a powdered coating on the sidewall.
The above three components as part of Celeste’s beverage composition would also have abutted one another, especially since at paragraph 23, Celeste teaches that there need not be any spacing between the clusters such that the beverage concentrate can be contiguous coating if desired as well as patterned.
If it could have been construed that the claim also requires that the coffee powder, milk powder and sugar are separate from one another and are arranged in stripes that abut one another, then it is noted that Celeste teaches that the coating can be applied in any type of a pattern, including logos (see paragraph 37) and where there can be multiple separate additive materials and flavors applied as part of the coating (see paragraph 38 which discloses different release characteristics for different outer phases; see paragraph 41-43) and therefore suggests various configurations for the beverage concentrate. At paragraph 59, Celeste also teaches that the coatings can contain only a flavoring such as a milk, or sugar or both. Therefore, as a whole the reference is suggesting separate coatings of each of the flavoring components of a beverage. In light of the rejection under 35 U.S.C. 112b, it is noted that the claim 1 limitation of, “each arranged in stripes that abut one another” has been construed to mean that the coffee powder, milk powder and sugar can be in stripes and that stripes are in an abutting relationship where the coffee powder abuts at least one of the milk and sugar, the milk powder abuts at least one of the coffee powder and the sugar, and the sugar abuts at least one of the milk powder and the coffee powder.
Claim 1 differs in specifically reciting that the coffee powder composition, the milk powder composition and the sugar composition are arranged in stripes that abut one another.
Heonis also teaches a flavoring materials such as coffee, sugar and milk (see figure 1-3) that are abutting to one another.
Lehrer also teaches separately providing ingredients of a beverage concentrates such as powdered cream (i.e. milk) together with sugar and coffee (see column 5, lines 15-20), and which ingredients could be adjacent to each other (See figure 3 and column 2, lines 60-65; column 4, lines 29-39).
Fowler also teaches an internal coating to a drinking article (see figure 7) which coating can be applied in multiple layers (see figure 7, item 64,66,68,70 and figure 8, item 84 and column 3, lines 45-58) that are abutting one another. Fowler can be construed as teaching stripes.
Catani also teaches flavoring ingredients positioned abutting one another as layers (see paragraph 40-43) and where the coating can comprise different flavors, aromas or both (see paragraph 46). Catani’s layers can also be construed as stripes (see paragraphs 40-43; see for example the layers as disclosed in paragraph 41 and paragraph 43 disclosing patterns such as stripes).
To therefore modify Celeste and to include a coffee powder composition, a milk powder composition and a sugar composition as part of a beverage concentrate, would have been obvious to one having ordinary skill in the art, for providing the desired flavor to the beverage, as well as for foregoing the need to add additional ingredients to the prepared beverage.
Since Celeste is not limiting as to the particular arrangement of the beverage concentrate, and even teaches applying the beverage concentrate in various shapes with various flavors, to modify Celeste and to position the coffee powder composition, milk powder composition and sugar composition as stripes that abut one another, in view of the teachings of Lehrer, Heonis, Fowler and Catani, would have been obvious to one having ordinary skill in the art as a matter of engineering and/or design based on conventional arrangements for providing flavoring ingredients that are dissolvable within a liquid to produce a flavored beverage.
Claim 6 differs from Celeste in specifically reciting, “wherein the beverage concentrate is present on the inner surface of the sidewall in horizontal stripes when the base is in a horizontal position.”
Celeste teaches that the coating can be applied in any type of a pattern, including logos (see paragraph 37) and where there can be multiple additive materials and flavors applied as part of the coating as well (see paragraph 38, 43) and therefore suggests various configurations for the beverage concentrate.
Fowler also teaches an internal coating to a drinking article (see figure 7) which coating can be applied in multiple horizontal layers (see figure 7, item 64,66,68,70 and figure 8, item 84 and column 3, lines 45-58).
Heonis also teaches a horizontal configuration of abutting flavoring materials such as coffee, sugar and milk (see figure 1-3; when the article has been positioned vertically with the stick 11 extending up and down).
Catani also teaches the coating in the form of stripes (see paragraph 43).
Since Celeste is not limiting as to the particular arrangement of the beverage concentrate, and even teaches applying the beverage concentrate in various shapes, to modify Celeste and to use horizontal stripes would have been obvious to one having ordinary skill in the art, as a matter of engineering and/or design based on conventional arrangements for providing flavoring to a liquid.
Regarding claim 11, Celeste teaches that the coating can be applied in any type of a pattern, including logos (see paragraph 37) and where there can be multiple additive materials and flavors applied as part of the coating as well (see paragraph 38, 43) and therefore suggests various configurations for the beverage concentrate. While Celeste is not specific as to the coffee powder composition, the milk powder composition and the sugar composition present as repeating stripes, since Celeste already teaches that the particular design of the coating is not limiting and as the prior art also teaches stripes as a known arrangement for coatings used to make beverages, to modify the combination and to repeat the stripes would have been obvious to one having ordinary skill in the art, as an obvious repetition of the particular design for known purposes such as for increasing the flavor provided by the beverage concentrate. (see MPEP 2144.04(VI)(B))
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over the combination, as applied to claim 1, which relies on Celeste (US 20110177141) as the primary reference, and in further view of McCormick (US 20120273507) and Thornton (US 3278014).
Claim 7 differs from Celeste in specifically reciting, “wherein the beverage concentrate is present on the inner surface of the sidewall in vertical stripes when the base is in a horizontal position.”
Celeste teaches that the coating can be applied in any type of a pattern, including logos (see paragraph 37) and where there can be multiple additive materials and flavors applied as part of the coating as well (see paragraph 38, 43) and therefore suggests various configurations for the beverage concentrate.
McCormick teaches a beverage cup (see at least figure 4 and paragraph 5 and 14), which can have a vertically arranged additive stripes applied to the sidewall and which can dissolve into a beverage in the cup (see figure 4 and paragraph 14). McCormick also teaches that there can be multiple recesses in the cup, to which the additive can be applied (see paragraph 58) and is therefore suggesting vertical stripes of an additive that can dissolve into a liquid.
Thornton also teaches a vertical arrangement of various beverage ingredients as part of a beverage cup (see figure 3, item 22). Thornton is teaching and suggesting that sidewalls of the cup can contain flavoring materials including, coffee, sugar and coffee lightener to allow for these flavoring ingredients to be mixed for producing a flavored beverage (see column 1, lines 12-19).
Catani also teaches the coating in the form of stripes (see paragraph 43).
Since Celeste is not limiting regarding the particular configuration of the beverage concentrate coating on the inner sidewall of the cup, to therefore modify Celeste to use another configuration, such as a vertical configuration would have been obvious to one having ordinary skill in the art, as an obvious rearrangement based on conventional expedients for how beverage concentrate coatings can be applied to the interior of a cup.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over the combination, as applied to claim 1, which relies on Celeste (US 20110177141) as the primary reference, and in further view of Loughary (US 3202275).
Regarding claim 8, in view of figure 10 and paragraph 23, Celeste is suggesting that the beverage concentrate extends to a rim of the sidewall. Celeste also teaches on at least paragraph 59 that the coating can be affixed to one or more interior surfaces and therefore is teaching and suggesting that he concentrate extends from the base to a rim of the sidewall.
If it could have been construed that Celeste was not clear in this regard, then it is noted that Loughary teaches that the beverage concentrate coating can extend to the base of the drinking cup (see figure 1, item 15).
To therefore modify Celeste if necessary, and to extend the coating to the base of the cup would have been obvious to one having ordinary skill in the art, based on conventional expedients for application of beverage producing coatings, where such coverage would also have been advantageous for factors such as the strength and flavor of the beverage.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over the combination, as applied to claim 1, which relies on Celeste (US 20110177141) as the primary reference, and in further view of Loughary (US 3202275) and McCormick (US 20120273507).
Celeste also teaches that the pattern thickness can be increased or decreased to adjust the additive volume and potency (see paragraph 23).
Celeste is not specific as to the concentrate increasing in thickness, depth or concentration from a base to the rim of the sidewall.
Loughary teaches that the thickness of the concentrate can change (see figure 1).
McCormick teaches a beverage cup (see at least figure 4 and paragraph 5 and 14), which can have an additive coated on the sidewall, which can increase in thickness from the base toward the rim for providing uniformity of the effect since the diameter of the top of the cup is greater than that of the bottom, such that more of the additive would be required to maintain the same concentration of the additive at the top of the cup compared to the bottom (see paragraph 54).
To therefore modify Celeste such there is an increase in the depth or concentration from the base to the rim of the sidewall, would have been obvious to one having ordinary skill in the art, for the purpose of achieving the desired additive volume and potency as desired. That is, the prior art is already teaching that there can be changes to the configuration of the coating application such that the specific location of the increase in thickness, depth or concentration is seen to have been an obvious rearrangement of the particular location of the increase, which would have been an obvious matter of engineering and/or design for providing uniformity of effect based on the amount of liquid poured into the cup.
Response to Arguments
Applicant’s arguments on pages 4-10 and 12-13 have been considered but are moot in view of the new grounds of rejection as presented in this Office Action, necessitated by the amendment to the claims.
It is noted that the rejections relying on Catani as the primary reference have been withdrawn as being duplicative in nature to the rejections relying on Celeste as the primary reference.
On pages 11-12 of the response, Applicant urges that Celeste and Kim do not teach a coffee powder composition, milk powder composition and sugar composition arranged in abutting stripes and McCormick does not cure these deficiencies.
These arguments are not sufficient in view of the rejections as presented in this Office Action. It is additionally noted however, that McCormick has not been relied on to teach the specific composition, but rather, has been relied on to teach that it has been known in the art of providing additives coated onto a sidewall of a beverage container, to position said additives in a vertical arrangement.
On pages 13-14 of the response, Applicant urges that Fowler’s straw is not coated. Applicant urges that Fowler teaches that sidewall coatings were found to be ineffective in delivering consistent flavor.
This argument is not seen to be sufficient to overcome the rejection because the claims are directed to the product and not the method of making the product. In this regard, the limitation of “an inner surface coated with a beverage concentrate” structurally implies in a product claim that the beverage concentrate is secured or attached to the substrate sidewall. As such, Fowler’s structure teaches flavoring materials that are arranged as discrete, abutting, stripes and which are “coated” on the straw sidewall. This appears to also be similar to applicant’s figures which show discrete, abutting stirpes affixed to the substrate sidewall (see figure 1). Furthermore, the reference has also only been relied on to teach dissolvable flavoring materials that are powdered (column 3, lines 30-44) and which flavoring materials can be arranged as abutting each other and arranged in stripes (see figure 7). Since the purpose of Fowler’s flavoring materials are similar to that of Catani, as well as the claimed product - which is to dissolve the flavoring upon contact with a liquid to produce a beverage, it would have been obvious to one having ordinary skill in the art to have modified Catani and to have provided abutting powder flavoring compositions as stripes, based on known and conventional expedients by which differing flavoring materials have been arranged for producing a flavored beverage.
On pages 14-15 of the response, Applicant urges that Heonis does not teach the flavoring masses coated onto the stick and further does not teach the coffee powder, milk powder and sugar as claimed as coating a cup interior and in abutting stripes. On page 17 of the response, Applicant urges that Lehrer does not teach a coffee powder, milk powder and sugar composition coated on a cup interior and arranged in abutting stripes.
These arguments are not sufficient to overcome the rejection. In this instance, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). As such, Heonis has not been relied on to specifically teach the flavoring components coated onto the interior of a cup, but rather, has been relied on as further evidence that it has been conventional to provide multiple beverage flavoring components, such as a milk powder and/or sugar powder and a coffee powder as separate, abutting ingredients, that can be construed stripes. Since Celeste already teaches that multiple flavoring ingredients can be provided in an abutting manner (i.e. not spaced but instead being contiguous) it would have been obvious to one having ordinary skill in the art to have modified Celeste to have provided separate abutting stripes of coffee powder, milk powder and sugar because the prior art teaches that providing these components as separate has been known in the art as a conventional arrangement used for producing flavored beverages. Regarding Lehrer, similar to above, the reference has only been relied on as evidence that it has been conventional to provide milk powder, coffee powder and sugar as separate components. Obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
JPH10-181780 discloses liquid dissolvable, powdered flavoring ingredients (paragraph 10) printed on a container interior (see paragraph 9) and which flavoring ingredients can be applied to the container interior in an abutting relationship (see figure 1, item 5 and paragraph 11 of the machine translation).
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.
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/VIREN A THAKUR/Primary Examiner, Art Unit 1792