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 .
Election/Restrictions
Applicant’s response filed 22 April 2026 to the restriction requirement mailed 25 February 2026 has been received. Applicant has elected Group II claims 9 – 12 with traverse and added new claims 16 – 18.
Applicant urges that the groups overlap and share elements with claims from the other groups. This urging is not convincing. It is first noted in this regard that no specifics have been presented; only generalizations. More importantly, the basis for the traversal is not the ground for determining the appropriateness for restriction. The restriction requirement details why the various inventions are properly restrictable under 35 U.S.C. 121. It is also noted in this regard that one would expect some elements/features/limitations to be common to two or more groups of claims in the same application, unless there are two or more totally disparate inventions disclosed, such as a car and a method of cooking food. Thus, if an application claimed a package comprising a tray, a lid and a food therein, and also claimed a method of sterilizing food in the same tray and lid using, say, radiation, the two inventions would be properly restrictable, since the food in the same tray could be used in a different method such as a cooking method, a warming method or just a storage method.
Information Disclosure Statement
The information disclosure statement filed 28 August 2025 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein and struck through has not been considered.
Claim Objections
Claims 9, 10, and 16 objected to because of the following informalities:
Claim 9, line 6, recites “consisting of tea, dried fruit, herbs, spices milk, sugar, and essential oils”. It appears the claim should recite ‘consisting of tea, dried fruit, herbs, spices, milk, sugar, and essential oils’.
Claim 10 recites “the infusion is performed by”. It would appear the claim should recite ‘the infusing is performed by’.
Claim 16 recites “the water extracts of tea herbs, and/or spices”. It would appear the claim should recite ‘the water extracts of tea, herbs, and/or spices’.
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 9 – 12 and 16 – 18 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.
Regarding claim 9, line 1, there is no antecedent basis for the term “the capsule product”.
Regarding claim 9, lines 4 and 5, there is no antecedent basis for the term “the tea leaves”.
Regarding claims 10 and 11, claim 9 from which claim 10 depends recites the transitional phrase “one or more infusion ingredients selected from the group consisting of tea, dried fruit, herbs, spices, milk, sugar, and essential oils” which transitional phrase excludes any ingredient not specified in the claims (MPEP § 2111.03 II.), therefore “applying a fruit juice” which juice is not necessarily a water extract is excluded from the claims.
Regarding claim 10, since claim 9 from which claim 10 depends recites infusion ingredients selected from the group consisting of tea, dried fruit, herbs, spices, milk, sugar, and essential oils it is unclear if the claim is attempting to further limit the infusion ingredients to tea, herbs and/or spices.
Regarding claim 11, there is no antecedent basis for the term “the tea leaves”.
Regarding claim 11, there is no antecedent basis for the term “the leaves”.
Regarding claim 16, there is no antecedent basis for the term “the water extracts of tea herbs, and/or spices”.
Regarding claim 18, there is no antecedent basis for the term “the tea leaves”.
Claims 10, 12 and 17 are rejected by virtue of their dependence on a rejected base 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 9 – 12 and 16 – 18 are rejected under 35 U.S.C. 103 as being unpatentable over Jianxin CN 103583741 as further evidenced by David et al. WO 2004/008869.
Regarding claim 9, it is noted that the claim is directed to a method of making a capsule product capable of making a tea beverage and not a capsule beverage maker. Jianxin discloses a method of making a capsule product capable of making a tea beverage (paragraph [0001]) in a capsule beverage maker which comprises providing a capsule including a capsule housing (plastic capsule) (paragraph [0015]), providing a plurality of tea leaves (paragraph [0009]), which tea leaves have a size of 850 microns or less (mesh 20 – 40) (paragraph [0017]), infusing the tea leaves with tea (tea juice) to form infused tea leaves (paragraph [0013]) such that a ratio of the one or more infusion ingredients to tea leaves in the infused tea leaves is from 3:1 – 1:1 w/w (paragraph [0019]), and packaging the infused tea leaves within the capsule housing (paragraph [0015]). David provides further evidence that mesh sized 20 – 40 equates to particle sizes of between 850µm – 420µm (table, page 11).
Regarding the specific ratio of the one or more infusion ingredients to tea leaves being 40:60 to 5:95 (w/w) once it was known to infuse tea leaves with one or more infusion ingredients the specific ratios one would choose would not be sufficient to patentably distinguish over the prior art as the mere scaling up or down of the ratios of a prior art tea with infusion ingredients capable of being scaled up or down, if such were the case, would not establish patentability in a claim to an old tea leaves infused with one or more infusion ingredients so scaled. Where the only difference between the prior art and the claims was a recitation of relative ratios of the tea leaves and infusions ingredients and tea leaves/infusion ingredients having the claimed relative ratios would not perform differently than the prior art tea leaves so infused, the claimed tea leaves infused with infusion ingredients is not seen to be patentably distinct from the prior art device (MPEP § 2144.04 IV.A.). Further it is noted that the specific ratios would also be an obvious matter of personal taste.
Applicant’s attention is further invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in the fact situation of the instant case, and wherein the Court stated on page 234 as follows:
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected, and useful function. In re Benjamin D. White, 17 C.C.P.A (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
Regarding claim 10, Jianxin discloses the tea juice was extracted by squeezing the tea leaves (paragraph [0012]) which is to say the extract would contain water, i.e., the tea juice would be a water containing extract applied to the tea leaves followed by drying (paragraph [0013]).
Regarding claim 11, Jianxin discloses the applying is performed by coating the water extract on the tea leaves.
Regarding claim 12, Jianxin discloses that the tea leaves would be mixed evenly once prepared (paragraph [0083]) making it obvious to the ordinarily skilled artisan to mix the infused tea leaves into a homogeneous mixture to ensure each capsule product would have a consistent flavour.
Regarding claim 16, Jianxin discloses the tea would be infused with tea juice that was extracted from tea leaves which is to say the tea juice would comprise water and thus be considered a water extract of Camellia sinensis (paragraph [0010] – [0012]).
Regarding claim 17, because claims 9 and 10 are in the form of a Markush group, and Jianxin teaches the tea leaves would be infused with tea, it is not required that Jianxin meet the further limitation of the non-selected groups via subsequent dependent claims.
Regarding claim 18, Jianxin as further evidenced by David discloses the tea leaves would be selected from tea that has a particle size of between 20 – 40 mesh is between 850µm – 420µm (‘869, table on page 11). David further discloses that “pekoe dust”, i.e., tea dust of BOP would encompass particle sizes of less than 850µm (‘869, table on page 12).
Conclusion
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 12 May 2026
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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