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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 claim submission filed on July 1, 2026 and subsequent Request for Continued Examination filed on July 8, 2026 have been entered.
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 6-7 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 pre-AIA the applicant regards as the invention.
Claim 6 recites the limitation “a planar side of the flange like rim” in line 2. It is unclear if this refers to “the flange like rim having a planar side” recited in Claim 1, lines 5-6 or to an entirely different planar side. For purposes of examination Examiner interprets the claims to refer to the same planar side.
Claim 7 recites the limitation “wherein the height is preferably at least 1 mm” in line 3. The phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Clarification is required.
Claim Rejections - 35 USC § 102
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 6-7, and 12-17 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Abegglen et al. US 2012/0301581.
Regarding Claim 1, Abegglen et al. discloses a capsule (capsule 1A) containing a beverage substance. The capsule (capsule 1A) comprises a body (body 2) defining an enclosure wherein the body (body 2) comprises a bottom end and an open end (top end closed by membrane 4), a flange like rim (rim 3) extending outwardly from the body (body 2) at the open end (top end closed by membrane 4) wherein the flange like rim (rim 3) has a planar side extending to a periphery thereof, an upper wall (membrane 4) attached to the planar side (top surface of inner annular flange portion 7) of the flange like rim (rim 3) to cover an opening of the body (body 2) at the open end wherein the upper wall (membrane 4) has a diameter that is greater than a diameter of the opening of the body (body 2) (‘581, FIG. 1) (‘581, Paragraph [0082]), and an annular ring (pressure setting ring 8) (‘581, Paragraph [0101]) that is separately provided on the planar side of the flange like rim (rim 3) prior to using the capsule (capsule 1A) in a beverage production device (‘581, FIG. 1) (‘581, Paragraph [0119]) wherein the annular ring (pressure setting ring 8) is made at least partly of a biodegradable material (biodegradable plastics) (‘581, Paragraphs [0037] and [0091]) and has an inner diameter and an outer diameter radially outward of the inner diameter wherein the inner diameter of the annular ring (pressure setting ring 8) is greater than or equal to a diameter of the upper wall (membrane 4) (‘581, FIGS. 1-2) (‘581, Paragraph [0082]).
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Further regarding Claim 1, the limitations “configured for containing an amount of the beverage substance” and “prior to using the capsule in a beverage production device” are seen to be recitations regarding the intended use of the “capsule.” In this regard, applicant’s attention is invited to MPEP § 2114.I. and MPEP § 2114.II. which states features of an apparatus may be recited either structurally or functionally in view of In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima facie case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possess the functionally defined limitations of the claimed apparatus in view of In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40,100 USPQ2d 1433, 1440 (Fed. Cir. 2011). The burden then shifts to applicant to establish that the prior art does not possess the characteristic relied on in view of In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432; In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 228 (CCPA 1971). Additionally, apparatus claims cover what a device is, not what a device does in view of Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claimed in view of Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Furthermore, if the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding Claim 2, Abegglen et al. discloses the capsule being complementary to a capsule holder of the beverage production device wherein the capsule is configured for extraction of the beverage substance using centrifugal forces (‘581, Paragraphs [0043] and [0063]).
Further regarding Claim 2, the limitations “wherein the capsule is complementary to a capsule holder of the beverage production device and wherein the capsule is configured for extraction of the beverage substance using centrifugal forces” are intended use limitations and as such are rejected for the same reasons regarding intended use enumerated in the rejections of Claim 1 provided above.
Regarding Claim 3, Abegglen et al. discloses the annular ring (pressure setting ring 8) being attached to the flange like rim (rim 3) (‘581, FIGS. 1-2) (‘581, Paragraph [0101]).
Regarding Claims 3-4, Abegglen et al. discloses the annular ring (pressure setting ring 8) being attached to the upper wall by sealing (‘581, Paragraph [0119]).
Regarding Claim 6, Abegglen et al. discloses the upper wall (membrane 4) being attached to a planar side of the flange like rim (rim 3) wherein the annular ring (pressure setting ring 8) is arranged on and attached to the planar side (at inner annular flange portion 7 of rim 3) (‘581, FIGS. 1-2) (‘581, Paragraph [0082]).
Regarding Claim 7, Abegglen et al. discloses the annular ring (pressure setting ring 8) protruding, with a height, from the flange like rim (rim 3) in a direction away from the bottom end (‘581, FIGS. 1-2) (‘581, Paragraph [0039]).
Further regarding Claim 7, Abegglen et al. discloses the height (distance above the plane of the flange portion) being between 0.8 and 2.5 mm (‘581, Paragraph [0039]), which overlaps the claimed height of at least 1 mm. Since the lower end of the height disclosed by Abegglen et al. is very close to the claimed height of at least 1 mm and the height of between 0.8 and 2.5 mm disclosed by Abegglen et al. mostly overlaps the claimed height of at least 1 mm, the disclosed height of Abegglen et al. teaches the claimed height of at least 1 mm with sufficient specificity and anticipates the claimed range (MPEP § 2131.03.II.).
Regarding Claim 12, Abegglen et al. discloses the biodegradable material of the annular ring (pressure setting ring 8) being bioplastic (‘581, Paragraphs [0037] and [0091]).
Regarding Claim 13, Abegglen et al. discloses the biodegradable material of the annular ring (pressure setting ring 8 made of rubber) being different from a material of the body (bioplastics) (‘581, Paragraphs [0091] and [0102]).
Regarding Claim 14, Abegglen et al. discloses the flange like rim (rim 3) being integral with the body (body 2) (‘581, Paragraph [0118]) and the bottom end and the open end being spaced apart in an axial direction wherein the flange like rim (rim 3) and the upper wall (membrane 4) extend transversely to the axial direction (‘581, FIGS. 1-2).
Regarding Claim 15, Abegglen et al. discloses the body (body 2) being at least partly made of a biodegradable material (‘581, Paragraph [0091]).
Regarding Claims 16-17, Abegglen et al. discloses the body (body 2) having a convex portion for enclosing the beverage substance wherein the convex portion extends from the bottom end to the open end of the body (body 2) (‘581, FIGS. 1-2) (‘581, Paragraph [0087]).
Claim Rejections - 35 USC § 103
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 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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Abegglen et al. US 2012/0301581 as applied to claim 1 in view of Biesheuvel et al. US 2016/0068336 and Trombetta et al. US 2014/0345471.
Regarding Claim 2, Abegglen et al. anticipates the limitations of Claim 1 as enumerated in the rejection under 35 USC 102 above. However, in the event that it can be argued that the capsule of Abegglen et al. is not necessarily complementary to a capsule holder of the beverage production device, Biesheuvel et al. discloses a capsule (capsule 2) having a shape complementary to a capsule holder (receptacle 6) of a beverage production device (‘336, FIG. 1) (‘336, Paragraph [0107]). Trombetta et al. discloses a capsule (capsules 12) housed in a capsule holder (capsule containment portion 24) of a beverage production device that can accommodate capsules (capsules 12) of different shapes or diameters (‘471, FIGS. 5-6) (‘471, Paragraph [0043]).
Abegglen et al., Biesheuvel et al., and Trombetta et al. are all directed towards the same field of endeavor of beverage capsules used in a beverage production device for making beverages. The claim does not specify any particular dimensions, e.g. diameter of the capsule and/or capsule holder of the beverage production device which can vary in view of Trombetta et al. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the capsule/beverage production device combination of Abegglen et al. such that the capsule is complementary to a capsule holder of the beverage production device as taught by Bieshevuel et al. in order to provide a good sealing engagement between the capsule and the capsule holder in which the capsule is inserted.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Abegglen et al. US 2012/0301581 as applied to claim 3 in view of Yoakim et al. US 2007/0202237.
Regarding Claim 5, Abegglen et al. is silent regarding the annular ring being attached by an adhesive bond.
Yoakim et al. discloses a capsule (capsule 1) comprising a body defining an enclosure, a flange like rim extending outwardly from the body, an upper wall attached to the flange like rim, and an annular ring disposed on the flange like rim (‘237, FIG. 3) wherein the annular ring is attached by sealing/welding/adhesive (‘237, Paragraph [0067]).
Both Abegglen et al. and Yoakim et al. are directed towards the same field of endeavor of beverage capsules. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the capsule of Abegglen et al. and attach the annular ring to the flange like rim by sealing or welding an and adhesive bond since Yoakim et al. teaches that sealing or welding and adhesive bonds were known attachment means for attaching the annular ring to the flange like rim of a beverage capsule.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Abegglen et al. US 2012/0301581 as applied to claim 1 in view of Cabilli et al. US 2018/0229923.
Regarding Claim 10, Abegglen et al. is silent regarding the outer diameter of the annular ring being flush with an outer edge of the flange like rim.
Cabilli et al. discloses a capsule (cartridge 10) containing a beverage substance (dose 12 of ground coffee) (‘923, Paragraph [p0029]) wherein the capsule (cartridge 10) comprises a body (body 14) defining an enclosure configured for containing an amount of the beverage substance (dose 12 of ground coffee) (‘923, Paragraphs [0028]-[0029]). The body (body 14) comprises a bottom end (bottom wall 142) and a top end, a flange like rim (mouth part 144) extending outwardly from the body (body 14), an upper wall (cover 16) attached to the flange like rim (mouth part 144) to cover an opening of the body (body 14) at an open end, and an annular ring (lock ring 150) that is separately provided on the flange like rim (mouth part 144) (“923, FIGS. 7-8) (‘923, Paragraphs [0057]-[0062]). The annular ring (lock ring 150) is made at least partly of a compostable material (‘923, Paragraphs [0067], [0080], and [0096]). Cabilli et al. further discloses the outer diameter of the annular ring (lock ring 150) being flush with an outer edge of the flange like rim (‘923, FIGS. 7-8).
Both Abegglen et al. and Cabilli et al. are directed towards the same field of endeavor of beverage capsules. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beverage capsule of Abegglen et al. and construct the outer diameter of the annular ring being flush with an outer edge of the flange like rim as taught by Cabilli et al. since the configuration of the claimed annular ring is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed annular ring was significant in view of In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (MPEP § 2144.04.IV.B.). Cabilli et al. teaches that there was known utility in the beverage capsule art to construct the outer diameter of the annular ring to be flush with an outer edge of the flange like rim.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Abegglen et al. US 2012/0301581 as applied to claim 1 in view of Andreae et al. US 2017/0008694.
Regarding Claim 11, Abegglen et al. is silent regarding the annular ring having a Young’s modulus of at least 1000 MPa.
Andreae et al. discloses a capsule (capsule 41) comprising a body (housing 42) defining an enclosure wherein the body comprises a bottom end and an open end, a flange like rim (engagement edge 44) extending outwardly from the body, an upper wall (film/foil 8) attached to the flange like rim (engagement edge 44) to cover an opening of the body at its open end (‘694, Paragraph [0057]), and an annular ring (50) that is separately provided and clampable between the flange like rim (engagement edge 44) and a beverage production device (‘694, Paragraphs [0068]-[0069]) wherein the annular ring (sealing ring 50) is made of a compostable material (‘694, Paragraph [0036]).
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Andreae et al. also discloses the annular ring (sealing element) being made with PLA enriched with one or more additives to regulate the modulus of elasticity (‘694, Paragraph [0035]) and the annular ring (sealing element) having improved strength and flexibility for improving the sealing capacity (‘694, Paragraph [0019]). Although Abegglen et al. modified with Andreae et al. does not explicitly state the particular Young’s modulus of the annular ring to be at least 1000 MPa, Andreae et al. teaches enriching the annular ring sealing element with one or more additives to regulate the modulus of elasticity, which is a generic term for Young’s modulus. It would have been obvious to one of ordinary skill in the art to modify the properties of the annular ring sealing element of Abegglen et al. by adding additives to adjust the modulus of elasticity/Young’s modulus of the sealing element as taught by Andreae et al. since differences in the modulus of elasticity/Young’s modulus of the annular ring sealing element will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such modulus of elasticity/Young’s modulus of the sealing element is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the modulus of elasticity/Young’s modulus of the annular ring sealing element of Abegglen et al. by adding additives to the annular ring sealing element based upon the desired flexibility, strength, and sealing capacity of the annular ring sealing element as taught by Andreae et al.
Response to Arguments
Examiner notes that the previous Drawing Objections of Claim 8 are moot since Claim 8 has been canceled herein. The Drawing Objections of Claim 8 have been withdrawn.
Applicant’s arguments with respect to the previous Drawing Objections of Claim 17 have been fully considered and are persuasive. Applicant argues on Page 6 of the Remarks that FIGS. 1 and 5 of the instant application unambiguously illustrates the convex portion of the body for enclosing the beverage substance extending from the bottom end to the open end as recited in Claim 17. This argument is found persuasive. Therefore, the previous Drawing Objection of Claim 17 has been withdrawn.
Examiner notes that the previous indefiniteness rejections under 35 USC 112(b) have been withdrawn in view of the amendments.
Examiner notes that new indefiniteness rejections under 35 USC 103(a) have been made in view of the amendments.
Applicant’s arguments with respect to the previous indefiniteness rejection of Claim 1 under 35 USC 102 to Cabilli have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The current rejection relies upon Abegglen et al., which was necessitated by amendment.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICSON M LACHICA whose telephone number is (571)270-0278. The examiner can normally be reached M-F, 8:30am-5pm, EST.
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/ERICSON M LACHICA/Examiner, Art Unit 1792
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