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
Applicant's preliminary amendment filed on 11/11/2023 has been entered.
Claims 1-21 have been amended.
Claims 1-21 are still pending in this application, with claims 1 and 17 being independent.
Claim Interpretation
Claim 16:
the limitation “connecting means” is being interpreted as conventional structure known in the art, and equivalents thereof [e.g., bayonet style connectors, screws; p. 9: “As is known, the filter-holder can be constrained, preferably removably, to the delivery assembly, for example by connecting means of the bayonet type or by means of flaps intended to cooperate with respective guides placed on the delivery assembly, or vice versa.”; p. 14: “In a possible embodiment, the delivery unit 10, the intermediate disc 2 and the piercing element 3 are connected to each other by means of mechanical connecting means, preferably by means of a screw 6.”].
Claim Objections
The claims are objected to because of the following informalities:
inconsistent use of reference characters, e.g., regarding references to a delivery unit/delivery unit (10), a piercing element/piercing element (3).
missing degree symbol after “110” in claim 17
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.
Claims 1-21 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claim 1:
The limitation “said capsule (4)” in lines 3 and 7 lack sufficient antecedent basis. In view of line 2 reciting “capsule preparations (4)”, line 2 will be interpreted as reciting “a capsule ”
The recitation of “said delivery unit” in line 4, and “said delivery unit (10)” in line 9 lack sufficient antecedent basis. In view of line 4 reciting “a delivery unit for delivering pressurized hot water (10)”, line 4 will be interpreted as reciting “a delivery unit (10) for delivering pressurized hot water (10)…”
The recitation of “plurality of blades (32, 32’)” renders the claims indefinite because it is unclear if the claim requires a plurality of blades, two blades, or at least two blades, e.g., it is unclear if two proximal blades (32) are required, two distal blades (32’) are required, 1 of each, etc. [see claim 6.] The claims will be interpreted as reciting “plurality of blades ”
The limitation “said through openings (21)” lacks sufficient antecedent basis and will be interpreted as reciting “[[said]]the plurality of through openings (21)”
Claim 2: The limitation “said through openings (21)” lacks sufficient antecedent basis and will be interpreted as reciting “[[said]]the plurality of through openings (21)”
The limitation “said holes (31)” lacks sufficient antecedent basis, and it is unclear if the recitations of “a same radial distance (d’)” and “a center (C) of the piercing element (3)” are intended to be distinct from the recitations of “(d’)” and “(C)” in claim 1. Claim 2 will be interpreted as requiring that each of the plurality of holes is placed at the distance (d’) with respect to the center, i.e.,
“wherein [[said]the plurality of holes (31) are placed at [[a same]]the radial distance (d’) with respect to [[a]]the center (C) of the piercing element (3)”
Claim 3:
The limitations “said holes (31)”, “said base body (34)”, and “said holes (31)” lack sufficient antecedent basis, it is unclear if the recitations of “a circumference of radius (d’)” and “a center (C) if the piercing element (3)” are intended to be distinct from the recitations of “(d’)” and “(C)” in claim 1, and “substantially” is a relative term. Claim 3 will be interpreted as requiring that each of the plurality of holes is placed at the distance (d’) with respect to the center, i.e.,
“wherein [[said]the plurality of holes (31) are arranged on [[said]]the planar base body (34) of the piercing element (3) along [[a circumference of radius]]the radial distance (d’) with respect to [[a]]the center (C) [[if]]of the piercing element the plurality of through openings (21) of said intermediate disc (2) are arranged”
Claim 4:
The limitations “said blades (32, 32’)” and “said base body (34)” lack sufficient antecedent basis. Claim 4 will be interpreted as reciting
“wherein [[said]]the plurality of blades the planar base body (34) to project towards said infusion chamber (100)”
Claim 5:
The recitation of “blade opening (33, 33’)” renders the claims indefinite because it is unclear if the claim requires a plurality of openings, two openings, or at least two openings. The claims will be interpreted as reciting “blade opening ”
The limitations “the base body (34)” lack sufficient antecedent basis. Claim 5 will be interpreted as reciting
“wherein at least one blade of [[said]]the plurality of blades the plurality of through openings (21) of the intermediate disc (2)”
Claim 6:
The recitation of “a center (C)” renders the claim indefinite because it is unclear if this is to be distinct from the recitation of “(C)” in claim 1. In view of presented claim language and figures, claim 6 will be interpreted as reciting
“wherein said piercing element (3) comprises a plurality of proximal blades (32) placed at a first radial distance (r) with respect to [[a]]the center (C) of said piercing element (3), and a plurality of distal blades (32’) placed at a second radial distance (R) greater than said first radial distance (r) with respect to the center (C) of said piercing element (3)”
Claim 7:
The limitation “said through openings (21)” lacks sufficient antecedent basis and will be interpreted as reciting “[[said]]the plurality of through openings (21)”
Claim 9:
The limitation “said through openings (21)” lacks sufficient antecedent basis and will be interpreted as reciting “[[said]]the plurality of through openings (21)”
The limitation “said holes (31)” lacks sufficient antecedent basis and will be interpreted as reciting “[[said]]the plurality of holes (31)”
Claim 12:
The limitation “said blades (32, 32’)” lacks sufficient antecedent basis and will be interpreted as reciting “[[said]]the plurality of blades ”
Claim 13:
The limitation “said blades (32, 32’)” lacks sufficient antecedent basis and will be interpreted as reciting “[[said]]the plurality of blades ”
The limitation “base body (34)” lacks sufficient antecedent basis and will be interpreted as reciting “planar base body (34)”
Claim 14:
The limitations “said openings (33, 33’)” and “base body (34)” lack sufficient antecedent basis, and the recitation of “substantially” renders the claim indefinite because it is unclear how the much a shape can deviate from linear yet still fall within the scope of the claim. Claim 14 will be interpreted as depending from claim 5 (which recites “a blade opening (33, 33’)”), i.e.,
“wherein [[said]]the plurality of openings planar base body (34) of said piercing element (3) and a second end (33b) is placed on a body of one of the plurality of blades ”
Claim 15:
The limitations “said openings (33, 33’)”, “said first and said second ends (33a, 33b)”, and “base body (34)” lack sufficient antecedent basis, it is unclear if “a respective blade (32, 32’)” is intended to be distinct from the “plurality of blades (32, 32’)” in claim 1. Claim 15 will be interpreted as reciting
“wherein each of [[said]]the plurality of openings each of the plurality of [[blade]]blades the first end and the second end thus forming an angle between 70° and 110°, with respect to the planar base body (34) of said piercing element (3)”
Claim 17:
The recitation of “plurality of blades (32, 32’)” renders the claims indefinite because it is unclear if the claim requires a plurality of blades, two blades, or at least two blades, e.g., it is unclear if two proximal blades (32) are required, two distal blades (32’) are required, 1 of each, etc. [see claim 6.] The claims will be interpreted as reciting “plurality of blades ”, and the limitations “said base body (34)”, and “said blades (32, 32’)” lack sufficient antecedent basis. Claim 17 will be interpreted as reciting:
“A piercing element (3) comprising: a planar base body (34); and a plurality of blades the planar base body (34), and wherein [[said]]the plurality of blades of the plurality of blades surface of said planar base body (34) along a direction of longitudinal extension which has an angle between 70° and 110 with respect to the planar base body (34) of said piercing element”
Claim 18:
The recitation of “at least one blade (32, 32’)” and “a direction of longitudinal extension” renders the claim indefinite because it is unclear if this is intended to distinct from the “plurality of blades (32, 32’)” and the “direction of longitudinal extension” in claim 17, and the recitation of “opening (33, 33’)” renders the claims indefinite because it is unclear if the claim requires a plurality of openings, two openings, or at least two openings. Claim 18 will be interpreted as reciting
“wherein at least one blade the plurality of blades has an opening the direction of longitudinal extension of the at least one blade ”
Claim 19:
The recitation of “a piercing element (3)” and “a direction of longitudinal extent” render the claim indefinite because it is unclear if this is intended to be distinct from the “piercing element (3)” and the “direction of longitudinal extension” recited in claim 17, the limitations “base body (34)”, “said blades (32, 32’)”, “base surface (34)” lack sufficient antecedent basis. Claim 19 will be interpreted as:
“A method of making [[a]]the piercing element (3) according to claim 17, wherein said piercing element (3) is made from a sheet, of material, the method comprising: a cutting step (a), wherein the sheet is shaped to make the planar base body (34) of said piercing element, and wherein the planar base body (34) is cut according to a predetermined pattern to shape, on a plane (P) of said planar base body (34 ), the plurality of blades the plurality of blades the base surface the direction of longitudinal [[extent]]extension ”
Claim 20:
The limitation and “base body (34)” lacks sufficient antecedent basis. Claim 20 will be interpreted as
“wherein, in said cutting step (a), the planar base body (34) is pierced by cutting according to a predetermined pattern for making a plurality of holes (31)”
Claim 21:
The recitation of “openings (33, 33’)” renders the claims indefinite because it is unclear if the claim requires a plurality of openings, two openings, or at least two openings, the recitation of “base (32a, 32a’)” renders the claims indefinite because it is unclear if the claim requires a base, two bases, or at least two bases, limitations “said blades (32, 32’)”, “said base body (34)”, and “blade (32, 32’)” lack sufficient antecedent basis, and “substantially” is a relative term. Claim 21 be interpreted as
“wherein, in said cutting step (a), openings the plurality of blades planar base body (34) as substantially linear engravings extending between two ends (33a, 33b), where a first end (33a) of said two ends is placed at a base the plurality of blades plurality of blades (”
Claims 2-16 and 17-21 are rejected due to dependence on a rejected claim.
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.
(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 1-18 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Fond (US 5327815 A patented 7/12/1994).
Regarding claim 1,
Fond teaches:
A delivery assembly (1) for a machine for preparing beverages [a conventional espresso machine; col. 1: “This invention relates to devices for the extraction of cartridges containing a substance for the preparation of a beverage which are designed to be fitted to the extraction head of a conventional espresso machine.”] by using capsule preparations (4) [e.g., cartridge 17 in fig. 1], which comprises comprising:
an infusion chamber (100) configured for housing said capsule (4) [see fig. 1, showing an infusion chamber defined at least by the capsule];
a delivery unit for delivering pressurized hot water (10), said delivery unit comprising a channel (11) for supplying said pressurized hot water towards said infusion chamber (100) [see fig. 1, showing a passage 5 for supplying pressurized hot water to the capsule during the brewing process];
a piercing element (3) for piercing said capsule (4), said piercing element comprising a planar base body (34) and a plurality of blades (32, 32’) [see fig. 1, showing water distributing grill 18 with a planar base body, and a plurality of blade shaped projecting elements 19; col. 4: “In operation, the cartridge (17) is placed in the cartridge holder (14) which is engaged on the tightening ramps (12). The projecting elements (19) pierce the top of the cartridge.”]; and
an intermediate disc (2) in fluidic sealing connection with said delivery unit (10) and interposed between said delivery unit (10) and said piercing element (3) [fig. 1: water distributing grill 26; col. 4: “When the machine is brought into operation, the water arrives through the passage (5) and is uniformly distributed over the grill (26) through which it then passes to enter the cartridge through the openings formed by the projecting elements (19).”; see also fig. 3, and col. 5 lines 7-31 describing a similar embodiment satisfying different design applications], said intermediate disc comprising a plurality of through openings (21) in fluidic connection with said channel (11) of said delivery unit (10) [see figs. 1-3, showing a plurality of through openings/holes in fluidic connection with passage 5],
wherein said piercing element (3) comprises
a plurality of holes (31) in fluidic connection with said through openings (21) of said intermediate disc (2) and placed at least at a radial distance (d’) with respect to a center (C) of said piercing element (3) to allow a passage of water towards said infusion chamber (100) [see fig. 1, showing a plurality of holes/openings, including at least some holes at a radial distance d’ with respect to a center C of the assembly, going through the grill 18, in fluidic connection with passage 5, via water distributing grill 26].
Regarding claim 2, Fond teaches the delivery assembly according to claim 1.
Fond further teaches:
wherein said holes (31) are placed at a same radial distance (d’) with respect to a center (C) of the piercing element (3) [see figs. 1-3, showing wherein at least some holes are arranged at a same radial distance d’ with respect to a center, e.g., the innermost holes in the grills 18/48 in figs. 1 and 3, or in the orifices formed in the needle 48 in fig. 2 (col. 2, lines 1-6: “This needle pierces the top of the cartridge and the water arrives through orifices formed in the needle to enter the cartridge (30) to be extracted. The mode of operation of the device is otherwise the same as that of the device shown in FIG. 1.”)].
Regarding claim 3, Fond teaches the delivery assembly according to claim 1.
Fond further teaches:
wherein said holes (31) are arranged on said base body (34) of the piercing element (3) along a circumference of radius (d’) with respect to a center (C) if the piercing element substantially equal to a radial distance (d) at which said through openings (21) of said intermediate disc (2) are arranged [see figs. 1-3, showing wherein at least some holes are arranged at a same radial distance d’ with respect to a center, e.g., the innermost holes in the grills 18/48 in figs. 1 and 3, or in the orifices formed in the needle 48 in fig. 2 (col. 2, lines 1-6: “This needle pierces the top of the cartridge and the water arrives through orifices formed in the needle to enter the cartridge (30) to be extracted. The mode of operation of the device is otherwise the same as that of the device shown in FIG. 1.”), wherein these holes overlap with at least some of the through openings in the corresponding water distribution grill 26/48].
Examiner further notes that it can be argued that, in view of the conventional desire to control the water distribution in a coffee brewing process (i.e., to control a quality of the finished product according to a user’s preference, e.g., to maintain uniformity, or to control a level of extraction) it would have also been an obvious matter of design choice, to a person having ordinary skill in the art, to select a particular arrangement of holes/through openings, needles/blades, for fluidic connection/opening of capsules, relative to a water supply/capsule, according to the requirements of a given application, e.g., according to differently shaped/sized capsules, or user even preference.
Regarding claim 4, Fond teaches the delivery assembly according to claim 1.
Fond further teaches:
wherein said blades (32, 32’) are made in one piece with said piercing element (3) and extend from said base body (34) to project towards said infusion chamber (100) [see figs. 1-3 showing the blades of the piercing element projecting towards the infusion chamber].
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the delivery assembly according to an obvious engineering choice, such that said blades (32, 32’) are made in one piece with said piercing element (3), since it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. See MPEP 2144.04(V)(B). In this case, it is known in the prior art to form puncturing devices by cutting and folding sheet metal, as evidenced by Deuber (US 20120090473 A1) [para. 0020: “A puncturing device is provided according to a second aspect of the invention, it being possible for said puncturing device to be in the form of a discharge device--for example according to the first aspect of the invention--or in the form of an injector device for introducing the extraction liquid. The puncturing device comprises a supporting surface for bearing against a surface region of a capsule and at least one perforation element which projects out of this supporting surface, with the at least one perforation element comprising a metal sheet which protrudes from the supporting surface, for example in an approximately perpendicular manner. The metal sheet is bent, kinked (for example folded) or composed of a plurality of sheet metal pieces which are positioned at an angle relative to one another.”]
Regarding claim 5, Fond teaches the delivery assembly according to claim 1.
Fond further teaches:
wherein at least one blade of said plurality of blades (32, 32’) has a blade opening (33, 33’) extending from the base body (34) of said piercing element (3) along a direction of longitudinal extension of the at least one blade (32, 32’) [i.e., Fond teaches a needle 37 as the blade, wherein the needle at least has one opening going therethrough, from a base end to a tip end], and wherein said blade opening (33, 33’) is placed in fluidic connection with said through openings (21) of the intermediate disc (2) [see figs. 1-3, showing the piercing element in fluidic connection with the intermediate disc].
Regarding claim 6, Fond teaches the delivery assembly (1) according to claim 1.
Fond further teaches:
wherein said piercing element (3) comprises proximal blades (32) placed at a first radial distance (r) with respect to a center (C) of said piercing element (3), and a plurality of distal blades (32’) placed at a second radial distance (R) greater than said first radial distance (r) with respect to the center (C) of said piercing element (3) [see figs. 1 and 3 showing an inner set of blades at a first radial distance, and an outer set of blades at a second radial distance greater than the first radial distance].
Regarding claim 7, Fond teaches the delivery assembly (1) according to claim 1.
Fond further teaches:
wherein said through openings (21) are placed at least at a radial distance (d) with respect to a center (C1) of said intermediate disc (2) [see figs. 1-3, showing at least some openings in the intermediate disc at a radial distance d] and put said channel (11) of said delivery unit (10) in fluidic communication with a circular channel (22) of said intermediate disc (2) [see fig. 1, showing a chamber 8 as a circular channel in fluidic connection with the capsule and passage 5].
Regarding claim 8, Fond teaches the delivery assembly (1) according to claim 7.
Fond further teaches:
wherein said circular channel (22) of said intermediate disc (2) is shaped as a groove extending along a circular crown about the center (C1) of said intermediate disc (2), on a surface of said intermediate disc (2) facing the infusion chamber (100) [see fig. 1, showing a cap of the hollow screw 7 as the circular crown about the center; col. 2: “The first solution comprises providing a primary water injection system in the form of a water distributing grill held by any known means, such as a screw, and a secondary water injector in the form of a water distributing grill with projecting elements coaxial with the screw or a single opening with projecting elements arranged on radial or transverse pins.”].
Regarding claim 9, Fond teaches the delivery assembly (1) according to claim 1.
Fond further teaches:
wherein said piercing element (3) is connected with said intermediate disc (2) such as said through openings (21) of said intermediate disc (2) are overlapping said holes (31) of said piercing element (3) [see figs. 1 and 3, showing openings in the intermediate disc overlapping holes in the piercing element].
Regarding claim 10, Fond teaches the delivery assembly (1) according to claim 1.
Fond further teaches:
wherein said delivery unit (10), said intermediate disc (2) and said piercing element (3) are connected to each other by a mechanical connector [i.e., conventional means known in the art, e.g., fixing means 9, lug 20, locking screw 22; col. 1, line 42 – col. 2, line 7].
Regarding claim 11, Fond teaches the delivery assembly (1) according to claim 1.
Fond further teaches:
wherein said piercing element (3) is made from a sheet or foil of material.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the delivery assembly according to an obvious engineering choice, such that said piercing element (3) is made from a sheet or foil of material, since it has been held that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113(I). In this case, it is known in the prior art to form puncturing devices from a sheet material, as evidenced by Deuber (US 20120090473 A1) [para. 0020: “A puncturing device is provided according to a second aspect of the invention, it being possible for said puncturing device to be in the form of a discharge device--for example according to the first aspect of the invention--or in the form of an injector device for introducing the extraction liquid. The puncturing device comprises a supporting surface for bearing against a surface region of a capsule and at least one perforation element which projects out of this supporting surface, with the at least one perforation element comprising a metal sheet which protrudes from the supporting surface, for example in an approximately perpendicular manner. The metal sheet is bent, kinked (for example folded) or composed of a plurality of sheet metal pieces which are positioned at an angle relative to one another.”]
Regarding claim 12, Fond teaches the delivery assembly (1) according to claim 1.
Fond further teaches:
wherein said blades (32, 32’) are triangular-shaped [see fig. 1, showing triangular shaped blades].
Regarding claim 13, Fond teaches the delivery assembly (1) according to claim 1.
Fond further teaches:
wherein said blades (32, 32’) extend from the base body (34) of said piercing element (3) towards an inside of said infusion chamber (100) along a direction of longitudinal extension which has an angle between 70° and 110° with respect to the base body (34) of said piercing element (3) [see fig. 1, showing the blades extending from the base of the piercing element, through a top wall of the capsule, towards the inside, the blades oriented parallel to a central axis of the assembly].
Regarding claim 14, Fond teaches the delivery assembly (1) according to claim 1.
Fond further teaches:
wherein said openings (33, 33’) have a substantially linear shape extending between two ends (33a, 33b), and wherein a first end (33a) of said substantially linear shape is placed at the base body (34) of said piercing element (3) and a second end (33b) is placed on a body of one of the plurality of blades (32, 32’) [i.e., the linear shape of the hollow bore or “lumen” of the needle 37 in fig. 2 as the blade, extending from a base to a tip].
Regarding claim 15, Fond teaches the delivery assembly (1) according to claim 14.
Fond further teaches:
wherein each of said openings (33, 33’) extends along a respective blade (32, 32’) between said first and said second ends (33a, 33b) thus forming an angle between 70° and 110°, with respect to the base body (34) of said piercing element (3) [see fig. 2, showing the needle 37, wherein the hollow bore of the needle forms a 90 degree angle with the base body].
Regarding claim 16, Fond teaches the delivery assembly (1) according to claim 1.
Fond further teaches:
wherein said infusion chamber is a filter-holder provided with a handle, said filter-holder being removably constrainable to said delivery unit (10) by connecting means [i.e., the assembly includes a conventional portafilter as cartridge holder 14 with a handle 21; fig. 1].
Regarding claim 17,
Fond teaches:
A piercing element (3) comprising: a planar base body (34); and a plurality of blades (32, 32’) [see fig. 1, showing water distributing grill 18 with a planar base body, and a plurality of blade shaped projecting elements 19; col. 4: “In operation, the cartridge (17) is placed in the cartridge holder (14) which is engaged on the tightening ramps (12). The projecting elements (19) pierce the top of the cartridge.”], wherein a plurality of holes (31) is defined on said base body (34) [see fig. 1, showing a plurality of holes/openings, including at least some holes at a radial distance d’ with respect to a center C of the assembly, going through the grill 18, in fluidic connection with passage 5, via water distributing grill 26], and
wherein said blades (32, 32’) are made in one piece with said piercing element (3) and each blade (32, 32') is made from a portion of said piercing element (3), folded up for extending from a base surface of said planar base body (34) along a direction of longitudinal extension which has an angle between 70° and 110 with respect to the base body (34) of said piercing element [see fig. 1, showing the blades extending from the base of the piercing element, through a top wall of the capsule, towards the inside, the blades oriented parallel to a central axis of the assembly].
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the delivery assembly according to an obvious engineering choice, such that said blades (32, 32’) are made in one piece with said piercing element (3) and each blade (32, 32') is made from a portion of said piercing element (3), folded up for extending from a base surface of said planar base body (34) along a direction of longitudinal extension, since it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. See MPEP 2144.04(V)(B). In this case, it is known in the prior art to form puncturing devices by cutting and folding sheet metal, as evidenced by Deuber (US 20120090473 A1) [para. 0020: “A puncturing device is provided according to a second aspect of the invention, it being possible for said puncturing device to be in the form of a discharge device--for example according to the first aspect of the invention--or in the form of an injector device for introducing the extraction liquid. The puncturing device comprises a supporting surface for bearing against a surface region of a capsule and at least one perforation element which projects out of this supporting surface, with the at least one perforation element comprising a metal sheet which protrudes from the supporting surface, for example in an approximately perpendicular manner. The metal sheet is bent, kinked (for example folded) or composed of a plurality of sheet metal pieces which are positioned at an angle relative to one another.”]
Regarding claim 18, Fond teaches the piercing element (3) according to claim 17.
Fond further teaches:
wherein at least one blade (32, 32’) of said plurality of blades has an opening (33, 33’) extending from the planar base body (34) of said piercing element (3) along a direction of longitudinal extension of the at least one blade (32, 32’) [i.e., Fond teaches a needle 37 as the blade, wherein the needle at least has one opening going therethrough, from a base end to a tip end].
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 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Fond (US 5327815 A patented 7/12/1994) in view of Deuber (US 20120090473 A1).
Regarding claim 19, Fond teaches the piercing element (3) according to claim 17.
Although it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art, see MPEP 2144.04(V)(B), Fond does not explicitly disclose: A method of making a piercing element (3) according to claim 17, wherein said piercing element (3) is made from a sheet, of material, the method comprising:
a cutting step (a), wherein the sheet is shaped to make the base body (34) of said piercing element, and wherein the base body (34) is cut according to a predetermined pattern to shape, on a plane (P) of said base body (34 ), the plurality of blades (32, 32’); and
a folding step (b), wherein said blades (32, 32') are folded up for extending from said base surface (34) along a direction of longitudinal extent which has an angle between 70° and 110° with respect to said base body (34).
Deuber, in the same field of endeavor, teaches it is known to cut and fold sheet metal to form piercing elements [para. 0020: “A puncturing device is provided according to a second aspect of the invention, it being possible for said puncturing device to be in the form of a discharge device--for example according to the first aspect of the invention--or in the form of an injector device for introducing the extraction liquid. The puncturing device comprises a supporting surface for bearing against a surface region of a capsule and at least one perforation element which projects out of this supporting surface, with the at least one perforation element comprising a metal sheet which protrudes from the supporting surface, for example in an approximately perpendicular manner. The metal sheet is bent, kinked (for example folded) or composed of a plurality of sheet metal pieces which are positioned at an angle relative to one another.”].
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the piercing element of Fond wherein A method of making a piercing element (3) according to claim 17, wherein said piercing element (3) is made from a sheet, of material, the method comprising: a cutting step (a), wherein the sheet is shaped to make the base body (34) of said piercing element, and wherein the base body (34) is cut according to a predetermined pattern to shape, on a plane (P) of said base body (34 ), the plurality of blades (32, 32’); and a folding step (b), wherein said blades (32, 32') are folded up for extending from said base surface (34) along a direction of longitudinal extent which has an angle between 70° and 110° with respect to said base body (34), since Deuber shows these as conventional steps in forming a piercing element from a sheet of material.
Regarding claim 20, Fond in view of Deuber discloses the method according to claim 19.
Fond as modified by Deuber further discloses:
wherein, in said cutting step (a), the base body (34) is pierced by cutting according to a predetermined pattern for making a plurality of holes (31) [i.e., Deuber discloses that the sheet may be laser cut (engraved) so as to form any hole pattern or arrangement selected/necessitated by the given application; Deuber para. 0027: “According to one embodiment, the perforation element comprises an integral metal sheet which can be produced, for example, by stamping or laser-cutting and subsequent shaping, and is folded along a folding line and has two flat parts which form an angle relative to one another. The width of the two parts runs in the direction of the folding line, so that a tip is formed. If the perforation element is symmetrical in relation to a plane, the metal sheet can be in the form of a pentagon or hexagon with mirror-image symmetry before folding.”].
Regarding claim 21, Fond in view of Deuber discloses the method according to claim 19.
Fond as modified by Deuber further discloses:
wherein, in said cutting step (a), openings (33, 33’) are made by cutting along the direction of longitudinal extension of said blades (32, 32’), in the plane (P) of said base body (34) as substantially linear engravings extending between two ends (33a, 33b), where a first end (33a) of said two ends is placed at a base (32a, 32a’) of said blades (32, 32’), and a second end (33b) is placed on a body of the blade (32, 32’) [i.e., Deuber discloses that the sheet may be laser cut (engraved) so as to form any hole pattern or arrangement selected/necessitated by the given application; Deuber para. 0027: “According to one embodiment, the perforation element comprises an integral metal sheet which can be produced, for example, by stamping or laser-cutting and subsequent shaping, and is folded along a folding line and has two flat parts which form an angle relative to one another. The width of the two parts runs in the direction of the folding line, so that a tip is formed. If the perforation element is symmetrical in relation to a plane, the metal sheet can be in the form of a pentagon or hexagon with mirror-image symmetry before folding.”].
Examiner notes that it has been held by the courts that a change in shape or configuration, without any criticality in operation of the device, is nothing more than one of numerous shapes that one of ordinary skill in the art will find obvious to provide based on the suitability for the intended final application. See In re Dailey, 149 USPQ 47 (CCPA 1976). It appears that the disclosed openings of the blades would perform equally well at allowing water therethrough with the openings shaped according to the prior art.
Furthermore, it is known in the prior art to form slots in the blades of piercing elements, as evidenced by Aardenburg (US 20120073418 A1) [see fig. 5, showing linear slots 8 formed on penetrators 3; para. 0057].
Furthermore, with regards to advantage(s) flowing from the use of conventional sheet metal manufacturing processes when forming piercing elements for capsules in espresso machines, any 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).
Conclusion
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/THEODORE J EVANGELISTA/Examiner, Art Unit 3761 /EDWARD F LANDRUM/Supervisory Patent Examiner, Art Unit 3761
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