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 .
Terminal Disclaimer
The terminal disclaimer filed on March 6, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US. Pat. No. 11,957,159 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-6, 8-10 and 12-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Magniet et al (US. Pat. App. Pub. 2013/0236609).
Regarding independent claim 1, Magniet et al discloses a capsule, containing nutritional ingredients, designed to be utilized in a beverage production machine, which then adds liquid to said capsule ingredients such that a nutritional beverage product is thereby formed. The capsule (1) is in the form of a single-cavity cup-shaped (read: hemisphere) base body (2) having a bottom (7) with a rounded contour at its base and an inlet face (C)(read: open top) (see para. [0064], Fig. 1a-1c, 2a-2c) (corresponding to the claimed "[a] capsule comprising: a) a body, in the shape of a hemisphere, and having an open top and a bottom creating a single cavity").
The inlet face (C) can be closed by a liquid impermeable foil member (5), which can be sealed to an upper flange-like rim (6) of the inlet face (C) (see para. [0064]) (corresponding to the claimed "b) a circular disc coupled to the open top of the body of the capsule").
Magniet et al further discloses that the bottom (7) of the cup-shaped body (2) of its capsule comprises at least one outlet (8) (read: neck) intended for the release of the liquid nutritional product from the capsule (1). As evident from Figs. 2a-2c, the outlet (8) extends from the center of the bottom (7) in a direction that is "away from" the inlet face (C)(see para. [0065] and Figs. 2a-2c) (corresponding to the claimed "the bottom having a neck extending from a center of the bottom, away from the open top, forming a free end").
The Examiner notes that Magniet et al does not specifically disclose that its capsule is "configured to hold a smokeable material"; however, it is well understood in U.S. Patent practice that an "intended use" limitation does not distinguish a claimed article/apparatus from a prior art article that satisfies all the structural limitations of the claimed article/apparatus. MPEP 211.04. Hence, the "single cavity configured to hold smokeable material therein" recitation does not impose any limit on the interpretation of the claim, particularly since the fact that it is designed to hold nutritional ingredients means that it is also capable of holding smokeable material, and also (particularly) since "smokeable material", itself, is not positively recited in independent claim 1. So, since the Magniet et al reference meets all the structural limitations of the claimed "capsule" it, thereby, necessarily meets the intended use limitations as well.
Regarding claim 3, Magniet et al discloses that "nutritional ingredients" are contained in its capsule (1), yet it doesn't give a lot of specifics as to what those ingredients are, in particular. It is mentioned that the addition of a liquid, such as water, milk, soup or the like to said ingredients is required to render the final product. An example of such product is a dairy-based product, like infant formula (see paras. [0003],[0012]). The afore-mentioned product is "organic", in nature - given its carbon-based cellular structure - and would be considered "smokeable", or capable of being "smoked". As such, the disclosed "nutritional ingredients" contained in the Magniet et al capsule would meet the claimed recitation (corresponding to the claimed "wherein smokeable material is contained within the body").
Regarding claim 4, as stated above, Magniet et al discloses that the inlet face (C) can be closed by a liquid impermeable foil member (5); however, it does not specifically state that this foil member is made of "aluminum". But, it does state that its lower foil member (separating the outlet (80) from the cup-shaped base body (2)) can be made of aluminum (see para. [0068]). Hence, it would have been obvious to one of ordinary skill in the art to have constructed the (top) foil member (5) of the same material as the lower foil member merely for consistency's sake (corresponding to the "wherein the circular disc is made from aluminum foil hermetically sealed to the open top of the body").
Regarding claim 5, Magniet et al further discloses that the bottom edge of its cup-shaped body (2) can be sealed “read: closed) by a lower foil member (not shown) which would ultimately be perforated upon use to dispense liquid being supplied therein (see para. [0065] and Figs. 2a-2c) (corresponding to the claimed "wherein the neck is closed at its free end").
Regarding independent claim 6, Magniet et al discloses a capsule, containing nutritional ingredients, designed to be utilized in a beverage production machine, which then adds liquid to said capsule ingredients such that a nutritional beverage product is thereby formed. The capsule (1) is in the form of a cup-shaped (read: hemisphere) base body (2) having a bottom (7) with a rounded contour at its base and an inlet face (C)(read: open top) (see para. [0064], Fig. 1a-1c, 2a-2c) (corresponding to the claimed "[a] capsule comprising: a) a bowl in the shape of a hemisphere, and having an open top and a rounded bottom creating a single cavity").
The inlet face (C) can be closed by a liquid impermeable foil member (5), which can be sealed to an upper flange-like rim (6) of the inlet face (C) (see para. [0064]) (corresponding to the claimed "a circular disc coupled to the open top of the body of the capsule").
Magniet et al further discloses that the bottom (7) of the cup-shaped body (2) of its capsule comprises at least one outlet (8) (read: neck) intended for the release of the liquid nutritional product from the capsule (1). As evident from Figs. 2a-2c, the outlet (8) extends from the center of the bottom (7) in a direction that is "away from" the inlet face (C). Magniet et al further discloses that the bottom edge of its cup-shaped body (2) can be sealed “read: closed) by a lower foil member (not shown) which would ultimately be perforated upon use to dispense liquid being supplied therein (see para. [0065] and Figs. 2a-2c) (corresponding to the claimed "the rounded bottom having a neck forming a free end, wherein the neck is closed at its free end").
The Examiner notes that Magniet et al does not specifically disclose that its capsule is “configured to hold a smokeable material”; “configured to dispense the smokeable material from the cavity”; and “configured to dispense the smokeable material through the neck and into a rolling medium”; however, it is well understood in U.S. Patent practice that an "intended use" limitation does not distinguish a claimed article/apparatus from a prior art article that satisfies all the structural limitations of the claimed article/apparatus. MPEP 211.04. Hence, the above-referenced recitation does not impose any limit on the interpretation of the claim, particularly since the fact that it is designed to hold nutritional ingredients means that it is also capable of holding smokeable material, and also (particularly) since "smokeable material", itself, is not positively recited in independent claim 1. So, because the Magniet et al reference meets all the structural limitations of the claimed "capsule" it, thereby, necessarily meets the intended use limitations as well.
Regarding claim 8, Magniet et al discloses that "nutritional ingredients" are contained in its capsule (1), yet it doesn't give a lot of specifics as to what those ingredients are, in particular. It is mentioned that the addition of a liquid, such as water, milk, soup or the like to said ingredients is required to render the final product. An example of such product is a dairy-based product, like infant formula (see paras. [0003],[0012]). The afore-mentioned product is "organic", in nature - given its carbon-based cellular structure - and would be considered "smokeable", or capable of being "smoked". As such, the disclosed "nutritional ingredients" contained in the Magniet et al capsule would meet the claimed recitation (corresponding to the claimed "wherein smokeable material is contained within the body").
Regarding claim 9, as stated above, Magniet et al discloses that the inlet face (C) can be closed by a liquid impermeable foil member (5); however, it does not specifically state that this foil member is made of "aluminum". But, it does state that its lower foil member (separating the outlet (80) from the cup-shaped base body (2)) can be made of aluminum (see para. [0068]). Hence, it would have been obvious to one of ordinary skill in the art to have constructed the (top) foil member (5) of the same material as the lower foil member merely for consistency's sake (corresponding to the claimed "wherein the circular disc is made from aluminum foil hermetically sealed to the open top of the body").
Regarding independent claim 10, Magniet et al discloses a capsule, containing nutritional ingredients, designed to be utilized in a beverage production machine, which then adds liquid to said capsule ingredients such that a nutritional beverage product is thereby formed. The capsule (1) is in the form of a cup-shaped (read: hemisphere) base body (2) having a bottom (7) with a rounded contour at its base and an inlet face (C)(read: open top) (see para. [0064], Fig. 1a-1c, 2a-2c) (corresponding to the claimed "[a] capsule comprising: a) a body, in the shape of a hemisphere, and having an open top and a rounded bottom creating a single cavity").
The inlet face (C) can be closed by a liquid impermeable foil member (5), which can be sealed (read: hermetically) to an upper flange-like rim (6) of the inlet face (C) (see para. [0064]) (corresponding to the claimed "a circular disc hermetically sealed to the open top of the body of the capsule").
Magniet et al further discloses that the bottom (7) of the cup-shaped body (2) of its capsule comprises at least one outlet (8) (read: neck) intended for the release of the liquid nutritional product from the capsule (1). As evident from Figs. 2a-2c, the outlet (8) extends from the center of the bottom (7) in a direction that is "away from" the inlet face (C). Magniet et al further discloses that the bottom edge of its cup-shaped body (2) can be sealed “read: closed) by a lower foil member (not shown) which would ultimately be perforated upon use to dispense liquid being supplied therein (see para. [0065] and Figs. 2a-2c) (corresponding to the claimed "the rounded bottom having a neck extending from a center of the rounded bottom, away from the open top and configured to dispense smokeable material from the cavity, the neck forming a free end, wherein the neck is closed at its free end").
The Examiner notes that Magniet et al does not specifically disclose that its capsule is “configured to dispense the smokeable material from the cavity” (or “configured to dispense the smokeable material through the neck and into a rolling medium” as recited in claim 15); however, it is well understood in U.S. Patent practice that an "intended use" limitation does not distinguish a claimed article/apparatus from a prior art article that satisfies all the structural limitations of the claimed article/apparatus. MPEP 211.04. Hence, the above-referenced recitation does not impose any limit on the interpretation of the claim, particularly since the fact that it is designed to hold nutritional ingredients means that it is also capable of holding smokeable material, and also (particularly) since "smokeable material", itself, is not positively recited in independent claim 1. So, because the Magniet et al reference meets all the structural limitations of the claimed "capsule" it, thereby, necessarily meets the intended use limitations as well.
Regarding claim 12, Magniet et al discloses that "nutritional ingredients" are contained in its capsule (1), yet it doesn't give a lot of specifics as to what those ingredients are, in particular. It is mentioned that the addition of a liquid, such as water, milk, soup or the like to said ingredients is required to render the final product. An example of such product is a dairy-based product, like infant formula (see paras. [0003],[0012]). The afore-mentioned product is "organic", in nature - given its carbon-based cellular structure - and would be considered "smokeable", or capable of being "smoked". As such, the disclosed "nutritional ingredients" contained in the Magniet et al capsule would meet the claimed recitation (corresponding to the claimed "wherein smokeable material is contained within the body").
Regarding claim 13, as stated above, Magniet et al discloses that the inlet face (C) can be closed by a liquid impermeable foil member (5); however, it does not specifically state that this foil member is made of "aluminum". But, it does state that its lower foil member (separating the outlet (80) from the cup-shaped base body (2)) can be made of aluminum (see para. [0068]). Hence, it would have been obvious to one of ordinary skill in the art to have constructed the (top) foil member (5) of the same material as the lower foil member merely for consistency's sake (corresponding to the claimed "wherein the circular disc is made from aluminum foil").
Regarding claim 14, it is clear from the Figures of Magniet et al that a diameter of the inlet face (C) (read: open top) is greater than a diameter of the outlet (8) (read: closed neck) (corresponding to the claimed “wherein the first diameter of the open top being greater than the second diameter of the closed neck”).
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 2, 7 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Magniet et al (US. Pat. App. Pub. 2013/0236609) in view of Delorme (US. Pat. App. Pub. 2011/0259205).
Regarding claims 2, 7 and 11, Magniet et al is silent regarding whether the material of construction of its capsule (1) is biodegradable. However, the Delorme reference discloses that while most conventionally-used beverage pods (read: capsules) are constructed of "petroleum based plastic", its beverage pod is constructed of biodegradable materials (see para. [0003]). Hence, it would have been obvious to one of ordinary skill in the art to have constructed the capsule (1) of Magniet et al of such materials in an effort to reduce plastic waste in the world (corresponding to the claimed "wherein the body is made from biodegradable material").
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot in view of the new grounds for rejection, presented above, which were necessitated because of the amendments made to the claims, filed on March 6, 2026.
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 DIONNE WALLS MAYES whose telephone number is (571)272-5836. The examiner can normally be reached Mondays and Thursdays, 8:00AM - 4:00PM (EST).
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/DIONNE W. MAYES/ Primary Examiner, Art Unit 1747
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