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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 25, 2026 has been entered.
Response to Amendment
Those objections and rejections not repeated in this Office Action have been withdrawn.
Claims 1, 5-7 are currently pending and rejected.
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.
Claim 7 is 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 7 recites, “wherein the ratio between the thickness of said at least one layer of the first compostable material and the thickness of said at least one layer of the second compostable material is 4:1.” The limitation is not clear as to whether this is a ratio of the thickness of said at least one layer of the first compostable material to the thickness of said at least one layer of the second compostable material, or vice versa. In light of Applicant’s disclosure on page 10, lines 14-25, it would appear that the first compostable material layer can have a thickness that is 80% of the total thickness of the end wall and the second compostable layer can have a thickness that is 20% of the end wall, such that the claim appears to recite the ratio of the thickness of the first compostable layer to the second compostable layer is 4:1. Therefore, this rejection can be overcome by amending the claim to recite, “wherein the ratio of the thickness of said at least one layer of the first compostable material to the thickness of said at least one layer of the second compostable material is 4:1.”
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Cabilli (US 20190225412) in view of Tedford (US 20120097602) and Sandherr (WO 2021224348) and in further view of Heydel (WO 2022022899).
Regarding claim 1, Cabilli teaches a cartridge with a filling of at least one substance for preparing a liquid product (see figure 1 and at least the abstract), said cartridge including a side wall (see figure 2, item 140), a first end wall through which said liquid product is capable of flowing from the cartridge (see figure 2, item 142 and paragraph 53) and a second end wall (see figure 2, item 16) of the cartridge at the opposite side with respect to said first end wall, wherein said side wall, said first end wall and said second end wall comprise compostable material (see paragraphs 40-43), wherein at least one of said first end wall and said second end wall has a layered structure comprising at least one layer of a first compostable material (figure 3, item 1420) and at least one layer of a second compostable material (see figure 3, item 1422).
Regarding the limitation of, wherein the at least one layer of the first compostable material consists of a mixture of PBAT and/or PBS in combination with PLA and wherein the at least one layer of the second compostable material consists of PLA Cabilli teaches that layer 1422 (i.e. the at least one layer of the second compostable material) can consist of PLA (see paragraph 65) and that layer 1420 (i.e. the at least one layer of the first compostable material) can comprise a mixture that includes PBS, PLA and PBAT (see paragraph 64 “may also comprises mixtures of the aforesaid compounds”).
Claim 1 differs from Cabilli in specifically reciting that the at least one layer of the first compostable material consists of a mixture of PBAT and/or PBS in combination with PLA and that the at least one layer of the first compostable material is coated with the at least one layer of the second compostable material without a layer between the at least one layer of the first compostable material and the at least one layer of the second compostable material.
It is initially noted that Cabilli teaches that there can be multiple layers 1422 and 1420 (see the abstract, “at least one layer of a first compostable material” and “at least one layer of a second compostable material.”; paragraph 62). At paragraph 75, Cabilli also teaches that the barrier to oxygen and humidity can be applied to “at least one” of the first end wall 142 and the second end wall 16, and therefore teaches and suggests that one of the walls need not comprise the specific barrier to oxygen and humidity (1423).
If it could have been construed that Cabilli did not provide sufficient specificity with respect to the particular compostable material for the at least one layer of the first compostable material and the at least one layer of the second compostable material, then it is noted that Tedford (US 20120097602) also teaches that a sealing end wall can comprise a lower layer that can be a layer of only PLA (see figure 6, item 608 and paragraph 93, “Natureworks 4060D which is a PLA layer) and a layer directly adjacent thereto which can comprise biodegradable materials such as a combination of PLA and PBS (see paragraph 33 which discloses biodegradable polymers can be combinations including PLA with PBS; see paragraph 70, heat resistant biodegradable polyesters PLA and PBS; see paragraph 91 where layer 604 can be a biodegradable polymer). Tedford teaches that the layer 608 which can be PLA is advantageous for adhesion purposes to a surface of the side wall which can also be PLA (See figure 3 item 312 and paragraph 87, 2nd to last sentence). Tedford thus encompasses that the interface between a sealing end wall and the cartridge can both be a PLA layer.
Additionally, Sandherr further evidences what Tedford suggests - which is to have an innermost layer of PLA as a sealing layer, and which layer would have been in contact with the beverage producing ingredients. Specifically Sandherr teaches a cartridge comprising at least one substance for preparing a liquid, where an inner most layer of the multilayer end wall can be a coating of PLA (see paragraph 63 of the machine translation) which is immediately adjacent to a layer that can include PLA, PBS (paragraph 64 and 66) for the purpose of making it easier to weld the inner face of the inner layer to close the capsule (see paragraph 64).
Cabilli already teaches that the side wall can comprise PLA, for example (see paragraph 60) and already encompasses that an inner most layer of the end wall can consist of PLA.
To therefore modify Cabilli such that the innermost layer of the first end wall consists of PLA would have been obvious to one having ordinary skill in the art for making it easier to weld the inner face of the inner layer to close the capsule, as taught by Tedford and Sandherr.
Further regarding the first compostable material layer consisting of a mixture of PBAT and/or PBS in combination with PLA, Heydel (WO 2022022899) teaches a beverage producing cartridge which can comprise an end wall that includes polymer sheets that consist of PLA, PBS and PBAT (see page 4, line 29 to page 5, line 4; page 14, line 19 to 15, “Polymer barrier layer”: “Coextrusion of PLA or PBS or PBAT (or mix of them) with a BVOH sheet in the middle”) for achieving the desired mechanical properties to the laminate (see page 4, lines 19-24).
To therefore modify Cabilli and to use a first layer consisting of a mixture of PLA, PBS and PBAT and which comprises an innermost coating of PLA would have been obvious to one having ordinary skill in the art for the purpose of achieving the desired mechanical properties to the end wall while also making it easier to seal the end wall to Cabilli’s side wall.
Regarding the limitation of, “wherein the at least one layer of the second compostable material is arranged internally of the cartridge with respect to said at least one layer of the first compostable material and the at least one layer of the second compostable material arranged internally of the cartridge is in contact with the substance for preparing the liquid product,” in view of Tedford and Heydel the combination suggests that the second compostable material is positioned internally with respect to the first compostable material, and is in contact with the substance for preparing the liquid product.
Therefore, the combination teaches and suggests that the at least one second layer of the compostable material is arranged internally and in contact with the substance for preparing the liquid product.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over the combination, as applied to claim 1 above, which relies on Cabilli (US 20190225412) as the primary reference, and in further view of Hackfort (US 20180345637).
Regarding claim 5, the claim differs from the combination applied to claim 1 in specifically reciting, wherein the thickness of said at least one layer of the first compostable material is comprised between 50% and 80% of the thickness of each one of said first end wall and said second end wall.
Regarding claim 6, the claim differs from the combination applied to claim 1 in specifically reciting, wherein the thickness of said at least one layer of a second compostable material is comprised between 20% and 50% of the thickness of each one of said first end wall and said second end wall.
It is initially noted that Tedford teaches that the upper or outermost layer of the end wall can have a thickness of 0.5-70mil (see paragraph 93 and item 604) while the sealing layer 608 can have a thickness of a least about 1 mil (see paragraph 93). Therefore, Tedford encompasses that the thickness of the at least one layer of the first compostable material can be between 50-80% of the thickness of the respective end wall.
It is also noted that Cabilli teaches that the end walls 16 and 142 can have a thickness of 20 microns (see paragraph 111). Since Tedford suggests that the layer that can be a mixture of PLA and PBS can have a thickness of 0.5mil (or 12.7microns), the combination is suggesting the at least one layer of the first compostable material would have been 63.5% of the thickness of each of Cabilli’s first and second end wall.
Tedford also teaches that the coating layer of the at least one layer of the second compostable material can have a thickness of for example 1 mil (or 25.4 microns). Since Cabilli teaches that the first and second end walls can have a thickness of 60 microns (see paragraph 111), the combination suggests that the at least one layer of the second compostable material has a thickness that would have been 42.3% of the thickness of the first and second end wall.
Further regarding claims 5 and 6, Hackfort teaches an outer layer B and an inner layer C, both of which can comprise a compostable material such as PBS, PBAT, PLA or mixtures thereof (see paragraph 19, 31). Hackfort teaches that the layer B, which can comprise PBAT and PLA and layer C, which can be PLA, can be between 20-60% of the thickness of the film (see paragraph 84). Hackfort is therefore teaching that the PLA/PBS/PBAT blend as taught by Tedford and Heydel can be 60% of Cabilli’s first end wall thickness. Hackfort is also teaching that Cabilli’s PLA layer, for example, can be 20% of the thickness of Cabilli’s second end wall. Hackfort is teaching that the thickness of these layers can affect factors such as compostability (see paragraph 16 and the table below paragraph 148), as well as for providing the desired mechanical strength (see paragraph 85).
To therefore modify the combination such that Cabilli’s first compostable material layer is between 50-80% of the thickness of Cabilli’s first and second end wall and to modify Cabilli’s second compostable material layer, which is in contact with the beverage preparing substance, to be between 20-50% of the thickness of Cabilli’s first and second end wall, would have been obvious to one having ordinary skill in the art for the purpose of achieving the desired strength and compostability to the Cabilli’s end walls.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over the combination as applied to claim 1 above, which relies on Cabilli (US 20190225412) as the primary reference, and in further view Cham (US 20220032586) and Gres (US 20220258959).
Claim 7 differs from the combination as applied to claim 1 in specifically reciting that the ratio between the thickness of said at least one layer of the first compostable material and the thickness of said at least one layer of the second compostable material is 4:1.
Tedford encompasses the claimed ratio of 4:1 (see paragraph 93 where layer 604 can be 0.23-70mil thick and layer 608 an be at least about 1 mil).
Additionally, Cham teaches a biodegradable, compostable core layer that can be a combination of PLA, PBS and PBAT (paragraph 29, figure 2, item 28) having a thickness of 0.2 to 2.0mil (see paragraph 44) and a sealant layer which can be a PLA sealant layer (see figure 2, item 30; paragraph 28 and 62) having a thickness of 0.2-2mil (paragraph 61 and 81) and therefore also encompasses the ratio of 4:1.
To therefore modify Cabilli and the combination, and to use a ratio of a first compostable layer to the second compostable layer with a ratio of 4:1 would have been obvious to one having ordinary skill in the art, for achieving the requisite mechanical properties without being too thick or heavy.
Gres (US 20220258959) teaches a plastic laminated layer and sealing layer that can be a PLA coating (see the table below paragraph 73). At paragraph 71, Gres teaches that the plastic laminate can have a thickness such as 20-60 microns and can comprise a compstable polymer (see also paragraph 52). At paragraph 72 and the table below paragraph 73, Gres is suggesting that a PLA coating is applied to the plastic laminate and which coating can be 10 microns as evidenced by paragraph 72. Therefore, Gres is teaching that the ratio of the thickness of the at least one layer of the first compostable material to the PLA coating can be 2:1 to 6:1), for achieving the desired performance (see paragraph 71) as well as compostability (see paragraph 13).
To therefore modify the combination such that the ratio of the thickness between the at least one layer of a first compostable material and the thickness of the at least one layer of the second compostable material is 4:1 would have been obvious to one having ordinary skill in the art for the purpose of achieving the desired performance to the two layers while also achieving the desired compostability.
Response to Arguments
On page 6 of the response, Applicant urges that Cabilli does not disclose or suggest a layer of a second compostable material consisting of PLA arranged internally of a cartridge and in contact with a substance for preparing a liquid that is filled in the cartridge, especially because paragraph 65 recites at least seven material classes encompassing innumerable individual materials from which the second compostable material can be selected.
This argument is not persuasive because Cabilli encompasses that this layer can consist of PLA, but if it could have been construed that Cabilli did not have sufficient specificity in this regard, then Tedford further teaches and suggests using a layer that consists of PLA as the innermost layer for providing the requisite bonding to the capsule (see paragraph 93, “coating layer of at least about 1 mil of a PLA), and therefore provides motivation and specificity for using PLA as the innermost (second compostable) layer. Cabilli also suggests a layer that can be only PLA (see paragraph 90). Sandherr further teaches and suggests coating layers that can consist of PLA for providing a sealing layer.
On pages 7-8 of the response, Applicant urges a person of ordinary skill in the art would not have selected a mixture of PBAT and/or PBS in combination with PLA from the innumerable other materials and combinations disclosed at paragraph 64 of Cabilli.
This argument is not sufficient in view of the rejection as presented in this Office Action, which provides further specificity to teach and suggest using of a combination of specifically PLA with PBAT and/or PBS.
Applicant’s arguments on pages 8-10 with respect to the combination of Cabilli in view of Heydel and Goormachtigh have been considered but are moot in view of the new grounds of rejection necessitated by the amendment, and which do not rely on Goormachtigh and do not rely on the previously applied Heydel reference.
On pages 11-13 of the response, Applicant urges that the examples on page 15 of the Specification as filed show that the exclusion of a layer of PLA as the contact layer with the substance within the cartridge results in a greater migration of volatile cyclic ethers compared to when a PLA layer is the food contact layer. It is also urged that none of the prior art recognize or suggest that an internally arranged PLA layer could provide a barrier to migration of volatile organic compounds, especially because PLA is mechanically weak and would not have been expected to provide barrier to the diffusion of volatile cyclic ethers.
It is noted however, that the combination as applied in this Office Action, specifically teaches a coating consisting of PLA as the innermost layer of an end wall. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant’s arguments on pages 13-14 regarding the Misawa reference have been considered but are moot in view of the rejections as presented in this Office Action, which do not rely on Misawa.
On page 15 of the response, Applicant urges that Hackfort does not provide any guidance to select a particular material such as PLA from Hackfort’s list of materials for the second compostable material and a combination such as PBAT and PLA for the first compostable material as required by claim 1.
These arguments are not sufficient to overcome the combination as applied in this Office Action. It is further noted that Hackfort has only been relied on to teach that it has been recognized in the art to provide thicknesses of a first compostable material that can be 50-80% of the thickness of Cabilli’s first and second end walls and that a second compostable material that can be a sealant layer can also have a thickness that is between 20-50% of the thickness of Cabilli’s first and second end walls.
On page 16 of the response, Applicant’s remarks with respect to Cham failing to teach and suggest the specifically claimed first and second compostable material layers has been considered but is not sufficient to overcome the rejection as presented in this Office Action.
Further on page 16-17 of the response, Applicant urges that Cham’s core layer cannot be in contact with a filled substance. Applicant further urges that Cham’s disclosure of a sealant layer that can include PHA does not provide any guidance as ot specifically using a layer consisting of PLA as the sealant layer.
This argument is moot in view of the rejection as presented in this Office Action which provides a specific teaching and suggestion to use PLA as the innermost layer, such that Cham has not been relied on to specifically teach PLA and the PLA/PBAT/PBS first compostable layer but rather to generically teach known thicknesses for a compostable sealant layer which can comprise PLA as well as a directly adjacent compostable layer comprising a blend of compostable polymers. Additionally, it is noted that at paragraph 28, Cham teaches that the inner product-side layer can be a combination of a core layer and a barrier layer but can also include a sealant layer (30). Cham teaches that compostable sealant layers can desirably have a thickness of 0.2-2mil and where the layer directly adjacent to the sealant layer can be a compostable layer that can include PLA, PBAT and PBS also having a thickness of 0.2-2mil, such that Cham is teaching and suggesting a ratio of the first compostable layer to the second compostable layer that encompasses the claimed ratio.
On page 18 of the response, Applicant urges that Gres does not suggest that the protective layer can be a mixture of PBAT and/or PBS in combination with PLA.
These arguments are not sufficient in view of the new grounds of rejection as presented in this Office Action.
Conclusion
Brivois (LU 92989) teaches and suggests that having an inner most end wall comprising a layer of PLA is useful because this makes it easier to seal against a PLA surface of the capsule walls (see page 3 of the machine translation 9-14).
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/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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