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 .
Drawings
The drawings were received on May 4, 2026. These drawings are acceptable.
Claim Objections
Claims 1 and 17 are objected to because of the following informalities:
Claim 1 recites the limitation “A capsule for a beverage comprising” in line 1. It appears the claim should recite “A capsule for a beverage, the capsule comprising” in order to directly refer to the structure that the transitional phrase “comprising” modifies.
Claim 17 recites the limitation “A capsule for a beverage comprising” in line 1. It appears the claim should recite “A capsule for a beverage, the capsule comprising” in order to directly refer to the structure that the transitional phrase “comprising” modifies.
Claim 17 recites the limitation “the substance” in line 6 as well as in line 12. It appears the claim should recite “the mineralization substance” in order to maintain consistency with “a mineralization substance” recited in Claim 17, line 4.
Claim 17 recites the limitation “said originally cooled and carbon dioxide” in line 8. It appears the claim should recite ‘said originally cooled solid carbon dioxide” in order to maintain consistency with “originally cooled solid carbon dioxide” recited in Claim 17, lines 4-5.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3-4 and 17 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 3 recites the limitation “wherein said insulation is sufficient to determine a maintenance of said pressure” in lines 1-2. It is unclear what is meant by “said insulation is sufficient to determine a maintenance of said pressure.”
Claim 4 recites the limitation “the lateral wall, the head portion and the bottom portion are realized as a single piece” in lines 11-12. It is unclear what is meant by the term “realized in the context of the claims. For purposes of examination Examiner interprets the term “realized in” to mean “made from.”
Claim 17 recites the limitation “a mineralization substance comprising originally cooled solid carbon dioxide” in lines 4-5. It is unclear what is meant by the phrase “originally cooled.”
Claim 17 recites the limitation “of which the substance represents a determined part in weight” in lines 6-7. It is unclear what is meant by this limitation.
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 1-5, 7, 9, and 17 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Novak et al. US 2011/0226343.
Regarding Claim 1, Novak et al. discloses a beverage capsule (cartridge 4) comprising a lateral wall, a head portion (top of cartridge 4 to which lid 45 is attached), and a bottom portion (container bottom 44) wherein the head portion (top of cartridge 4 to which lid 45 is attached) and the bottom portion (container bottom 44) are joined to the lateral wall. The lateral wall, the head portion (top of cartridge 4 to which lid 45 is attached), and the bottom portion (container bottom 44) define an inner cavity in use insulated from the outer environment and containing a substance (beverage medium 42) at least partially fluid (concentrated syrups) and/or powdery (powdered beverage concentrate) “destined” to produce the beverage in the form of admixed liquid of which the substance (beverage medium 42) represents a determined part in weight (‘343, Paragraph [0057]). The beverage capsule (cartridge 4) is capable of withstanding within the inner cavity a predetermined pressure produced by a substance contained within the beverage capsule. It is noted that the claimed pressure is not specified. Novak et al. further discloses the head portion (top of cartridge 4 to which lid 45 is attached) and the bottom portion (container bottom 44) comprising an opening portion capable of being perforated by a perforator (piercing elements 34, 35) of a capsules opening device (cartridge chamber 3) determining an opening of the inner cavity to cause an outflow of the substance (‘343, FIGS. 5 and 11) (‘343, Paragraphs [0045] and [0060]).
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Further regarding Claim 1, the limitations “wherein said capsule is configured to withstand within said inner cavity a pressure produced by said substance” and “wherein at least one among said head portion and/or said bottom portion and/or said lateral wall comprises an opening portion configured to be perforated by a perforator of a capsules opening device determining an opening of the inner cavity destined to cause an outflow of the substance, said outflow being at least partially produced by the pressure within said inner cavity” 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. Nevertheless, Novak et al. explicitly discloses the beverage capsule (cartridge 4) being capable of withstanding within the inner cavity a pressure produced by the substance (‘343, Paragraph [0045]). Novak et al. also discloses the head portion (top of cartridge 4 to which lid 45 is attached) and the bottom portion (container bottom 44) comprising an opening portion capable of being perforated by a perforator (piercing elements 34, 35) of a capsules opening device (cartridge chamber 3) to make an opening of the inner cavity for causing an outflow of the substance (‘343, Paragraphs [0045], [0060], and [0066]) wherein the outflow is at least partially produced by the pressure within the inner cavity (‘343, FIG. 5) (‘343, Paragraph [0045]).
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Regarding Claim 2, Novak et al. discloses the head portion (top of cartridge 4 to which lid 45 is attached) defining an opening (portion of top of cartridge 4 sealed by lid 45) (‘343, FIG. 11).
Further regarding Claim 2, the limitations “configured to allow an introduction of said substance within said inner cavity and being configured to be closed by means of at least a welding and/or folding and/or crimping and/or gluing operation destined to seal the opening for allowing an insulation of the inner cavity from the outer environment” are intended use limitations and as such are rejected for the same reasons regarding intended use enumerated in the rejections of Claim 1 above. Nevertheless, Novak et al. teaches the opening being closed by the lid by welding (thermal seal with a foil lid) (‘343, Paragraph [0075]).
Regarding Claim 3, Novak et al. teaches thermally sealing the cartridge with a foil lid (‘343, Paragraph [0075]), which would necessarily insulate the contents disposed within the interior cavity of the beverage capsule from the external environment. The limitations “said insulation is sufficient to determine a maintenance of said pressure for at least 1 week, or 3 weeks, or 1 month or 3 months, or 5 months or 9 months or 1 year or 1 year and a half or 2 years or 3 years” does not specify any particular amount of insulation or pressure level. Any amount of insulation from the external environment at any pressure reads on this limitation.
Regarding Claim 4, Novak et al. discloses the lateral wall, the head portion (top of cartridge 4 to which lid 45 is attached), and the bottom portion (container bottom 44) being made of metallic material (‘343, Paragraph [0069]) wherein the lateral wall comprises a first portion (portion of sidewall adjacent to lid 45) and a second portion (portion of sidewall adjacent to container bottom 44) wherein the first portion (portion of sidewall adjacent to lid 45) is directly joined to the head portion (top of cartridge 4 to which lid 45 is attached) and the second portion (portion of sidewall adjacent to container bottom 44) of the lateral wall is directly joined to the bottom portion (container bottom 44). The lateral wall, the head portion, and the bottom portion are made from a single sheet of metallic material (‘343, Paragraph [0069]).
Further regarding Claim 4, the limitations “optionally said lateral wall, said head portion, and said bottom portion being made of metallic material, optionally integrally on metallic material, optionally wherein said metallic material comprises aluminum or its ally and/or steel” and “optionally by means of folding and/or deformation” are optional limitations that are not required to be taught by the prior art.
Further regarding Claim 4, the limitations “or the lateral wall is joined by means of a welding and/or folding and/or crimping and/or gluing process to the head portion and/or to the bottom portion” are optional limitations by virtue of the phrase “or” since Novak et al. teaches the limitations regarding the beverage cartridge components being made from a single sheet of metallic material (‘343, Paragraph [0069]).
Regarding Claim 5, Novak et al. discloses the bottom portion (container bottom 44) having a substantially planar wall and the beverage capsule comprising a longitudinal axis passing through the inner cavity which longitudinal axis is substantially orthogonal with respect to at least part of the bottom portion (container bottom 44) wherein the capsule mainly extends itself along the longitudinal axis (‘343, FIG. 11).
Further regarding Claim 5, the limitations “or wherein the bottom portion presents at least a perimeter ring substantially developing on a plane and/or defining a transversal section higher with respect to a transversal section defined by the lateral wall and/or protruding outwards with respect to said lateral wall” and “bottom portion and/or being the axis around which said lateral wall develops” are optional limitations that are not required to be taught by the prior art.
Regarding Claim 7, Novak et al. discloses the capsule containing the substance (flowable particles of zeolite) wherein the substance (flowable particles of zeolite) is a substance capable of generating pressure (zeolite particles releases carbon dioxide gas) when contained in the inner cavity (‘343, Paragraph [0043]).
Further regarding Claim 7, the limitations “said substance being configured to generate said pressure by state transformation” are intended use limitations and as such are rejected for the same reasons regarding intended use enumerated in the rejections of Claim 1 above. Nevertheless, Novak et al. discloses the substance (flowable particles of zeolite) are capable of generating the pressure by state transformation (zeolite particles release carbon dioxide gas) (‘343, Paragraph [0043]).
Further regarding Claim 7, the limitations “optionally wherein said pressure is a pressure lower than 0.5 bar” are optional limitations that are not required to be taught by the prior art. Nevertheless, Novak et al. teaches the substance (flowable particles of zeolite) being capable of generating pressure by state transformation (zeolite particles release carbon dioxide gas) (‘343, Paragraph [0043]).
Regarding Claim 9, Novak et al. discloses an identification device comprising a radiofrequency identification circuit (RFID) fixed to the beverage capsule (‘343, Paragraph [0064]).
Regarding Claim 17, Novak et al. discloses a beverage capsule (cartridge 4) comprising a lateral wall, a head portion (top of cartridge 4 to which lid 45 is attached), and a bottom portion (container bottom 44) wherein the head portion (top of cartridge 4 to which lid 45 is attached) and the bottom portion (container bottom 44) are joined to the lateral wall. The head portion (top of cartridge 4 to which lid 45 is attached) and the bottom portion (container bottom 44) define an inner cavity insulated from the outer environment and containing a mineralization substance (bicarbonate) comprising “originally cooled” solid carbon dioxide (solid block of zeolite comprising carbon dioxide) (‘343, Paragraph [0043]) and at least partially fluid and/or powdery, “destined” to produce the beverage in the form of admixed liquid for human consumption of which the substance represents a determined part in weight (‘343, Paragraph [0057]). The beverage capsule (cartridge 4) is capable of withstanding within the inner cavity a pressure produced by a substance contained within the beverage capsule. It is noted that the claimed pressure is not specified. Novak et al. further discloses the head portion (top of cartridge 4 to which lid 45 is attached) and the bottom portion (container bottom 44) comprising an opening portion capable of being perforated by a perforator (piercing elements 34, 35) of a capsules opening device (cartridge chamber 3) determining an opening of the inner cavity to cause an outflow of the substance (‘343, FIGS. 5 and 11) (‘343, Paragraphs [0045] and [0060]).
Further regarding Claim 17, the limitations “destined to produce said beverage in the form of admixed liquid for human consumption of which the substance represents a determined part in weight,” “wherein said capsule is configured to withstand a pressure produced by said originally cooled and carbon dioxide in said inner cavity due to a state transformation of said originally cooled carbon dioxide to gas,” and “configured to be perforated by a perforator of a capsules opening device determining an opening of the inner cavity destined to cause an outflow of the substance, said outflow being at least partially produced by the pressure within said inner cavity” 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. Nevertheless, Novak et al. explicitly discloses the beverage capsule (cartridge 4) being capable of withstanding within the inner cavity a pressure produced by the substance (‘343, Paragraph [0045]). Novak et al. also discloses the head portion (top of cartridge 4 to which lid 45 is attached) and the bottom portion (container bottom 44) comprising an opening portion capable of being perforated by a perforator (piercing elements 34, 35) of a capsules opening device (cartridge chamber 3) to make an opening of the inner cavity for causing an outflow of the substance (‘343, Paragraphs [0045], [0060], and [0066]) wherein the outflow is at least partially produced by the pressure within the inner cavity (‘343, FIG. 5) (‘343, Paragraph [0045]).
Claim 8 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Novak et al. US 2011/0226343 as applied to claim 7 above as evidenced by Liu et al. US 2019/0133153.
It is noted that normally, only one reference should be used in making a rejection under 35 USC 102. However, a 35 USC 102 rejection over multiple references is held to be proper when the extra reference is cited to show that a characteristic not disclosed in the reference is inherent (MPEP § 2131.01.). To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference and that it would be so recognized by persons of ordinary skill in view of Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749-50 (Fed. Cir. 1991) (MPEP § 2131.01.III.).
Regarding Claim 8, Novak et al. discloses the substance comprising an at least partially powdery substance (flowable particles of zeolite) wherein the substance comprises a cooling material of solid carbon dioxide (carbon dioxide source 41) that causes a gas formation (‘343, Paragraphs [0043]-[0044]).
Further regarding Claim 8, the limitations “optionally a mineralization mix configured to cause a water mineralization wherein said mineralization mix comprises at least one among magnesium carbonate or bicarbonate and/or calcium carbonate or bicarbonate and/or comprises at least one among magnesium, potassium, calcium, fluorine, iron, sodium, sulphur, silicon minerals” and “optionally dry ice or solid carbon dioxide, destined to cause a gas formation, optionally carbon dioxide gas, by state transformation and/or comprises a gas optionally a carbon dioxide gas, said gas optionally deriving from a state transformation of a cooled and/or cooling and/or originally cooled material, optionally deriving from a state transformation of dry ice or solid carbon dioxide” are optional limitations that are not required to be taught by the prior art. Nevertheless, Liu et al. provides evidence that it was known in the art that zeolite is a porous aluminosilicate material made from aluminum, oxygen, and silicon combined with metals including sodium, potassium, and magnesium (‘153, Paragraph [0050]).
Response to Arguments
Examiner notes that the previous Drawing Objections have been withdrawn in view of the amendments to the Drawings filed May 4, 2026. The amendments to the Drawings filed May 4, 2026 have been entered herein.
Examiner notes that most of the previous indefiniteness rejections under 35 USC 112(b) have been withdrawn in view of the amendments. Any indefiniteness rejections under 35 USC 112(b) that have not been overcome have been repeated herein.
Applicant's arguments filed May 4, 2026 have been fully considered but they are not persuasive.
Applicant argues on Page 9 of the Remarks with respect to the anticipation rejections under 35 USC 102 that Claim 1 has been amended to recite the substance positively and the substance is no longer recited as a feature of the capsule is configured to contain in use but is positively recited as being present within the inner cavity and the intended use framework does not relieve the prior art of the requirement to disclose positively recited structural elements.
Examiner notes that applicant’s comments that Claim 1 has been amended to recite the substance positively and the substance is no longer recited as a feature of the capsule is configured to contain in use but is positively recited as being present within the inner cavity. The rejection has been amended to reflect this fact. Novak et al. discloses the capsule containing a substance (beverage medium 42) at least partially fluid (concentrated syrups) and/or powdery (powdered beverage concentrate) “destined” to produce the beverage in the form of admixed liquid of which the substance (beverage medium 42) represents a determined part in weight (‘343, Paragraph [0057]).
Applicant argues on Pages 9-10 of the Remarks that Novak et al. does not disclose a capsule whose inner cavity contains a substance that produces pressure within that inner cavity. Applicant contends that the substance contained within the cartridge of Novak is either flowable particles of a charged zeolite in cartridge 4a or a beverage medium such as a liquid syrup or a powdered concentrate in cartridge 4b. Applicant continues that the zeolite produces no pressure within the inner cavity while the inner cavity remains insulated from the outer environment as required by Claim 1 and that pressure within the cartridge 4a of Novak is generated only after the cartridge is pierced and external activating fluid is introduced only after the inner cavity is no longer insulated from the outer environment. Applicant contends that Claim 1 requires the substance producing the pressure within the inner cavity that is itself insulated from the outer environment and that Novak does not disclose the beverage medium producing any pressure within the cartridge in which it is contained in the beverage medium configuration of cartridge 4b. Applicant continues that FIG. 5 of Novak shows that flow out of cartridge 4b is driven by external air or liquid that is introduced through the piercing elements 34, 35 and the beverage medium of cartridge 4b is not a substance that produces a pressure within the inner cavity as required by Claim 1.
Examiner argues the limitations “wherein said capsule is configured to withstand within said inner cavity a pressure produced by said substance.” The capsule of the prior art only need be capable of performing these intended use limitations. Nevertheless, applicant admits that there is a substance of beverage medium such as a liquid syrup or a powdered concentrate in cartridge 4b. Since beverage medium 42 is disposed within cartridge 4b, the cartridge is capable of withstanding within the inner cavity a pressure produced by the substance of beverage medium 42, i.e. the cartridge does not break by the presence of beverage medium 42 and since the cartridge is sealed (‘343, Paragraph [0060]). Furthermore, the zeolites disposed in the cartridge emits a gas (‘343, Paragraph [0078]), which indicates that the zeolite produces pressure. Furthermore, zeolite necessarily has a weight and therefore applies a pressure in the cartridge since pressure is defined as the force such as weight distributed over a surface area. The claim does not specify any particular pressure and any pressure applied within the cartridge reads on these limitations. Therefore, this argument is not found persuasive.
Applicant argues on Page 10 of the Remarks that Claim 1 recites that the outflow of contents from cartridge 4 is at least partially produced by an external air or liquid flow injected into the cartridge through a piercing element and that the motive pressure for outflow in Novak is not a pressure that pre-exists within the inner cavity and is a pressure imposed from the outside and only after the cavity has been pierced.
Examiner argues the limitations “an opening portion configured to be perforated by a perforator of a capsules opening device determining an opening of the inner cavity destined to cause an outflow of the substance, said outflow being at least partially produced by the pressure within said inner cavity” are intended use limitations. The capsule of the prior art only need be capable of performing these intended use limitations. Nevertheless, Novak et al. discloses the head portion (top of cartridge 4 to which lid 45 is attached) and the bottom portion (container bottom 44) comprising an opening portion capable of being perforated by a perforator (piercing elements 34, 35) of a capsules opening device (cartridge chamber 3) to make an opening of the inner cavity for causing an outflow of the substance (‘343, Paragraphs [0045], [0060], and [0066]) wherein the outflow is at least partially produced by the pressure within the inner cavity (‘343, FIG. 5) (‘343, Paragraph [0045]). It is noted that the claim recites “said outflow being at least partially produced by the pressure within said inner cavity.” The claim recites the phrase “at least partially.” Any amount of pressure produced within the inner cavity reads on this limitation. Since beverage medium 42 is disposed within cartridge 4b, the cartridge is capable of withstanding within the inner cavity a pressure produced by the substance of beverage medium 42, i.e. the cartridge does not break by the presence of beverage medium 42 and since the cartridge is sealed (‘343, Paragraph [0060]). Furthermore, the zeolites disposed in the cartridge emits a gas (‘343, Paragraph [0078]), which indicates that the zeolite produces pressure. Furthermore, zeolite necessarily has a weight and therefore applies a pressure in the cartridge since pressure is defined as the force such as weight distributed over a surface area. The claim does not specify any particular pressure and any pressure applied within the cartridge reads on these limitations. Therefore, this argument is not found persuasive.
Applicant argues on Page 10 of the Remarks with respect to Claims 2-3 that cartridge 4 of Novak with lid 45 does not, when sealed, contain a substance that produces a pressure within the cavity.
Examiner again argues that the limitations “wherein said capsule is configured to withstand within said inner cavity a pressure produced by said substance.” The capsule of the prior art only need be capable of performing these intended use limitations. Nevertheless, applicant admits that there is a substance of beverage medium such as a liquid syrup or a powdered concentrate in cartridge 4b. Since beverage medium 42 is disposed within cartridge 4b, the cartridge is capable of withstanding within the inner cavity a pressure produced by the substance of beverage medium 42, i.e. the cartridge does not break by the presence of beverage medium 42 and since the cartridge is sealed (‘343, Paragraph [0060]). Furthermore, the zeolites disposed in the cartridge emits a gas (‘343, Paragraph [0078]), which indicates that the zeolite produces pressure. Furthermore, zeolite necessarily has a weight and therefore applies a pressure in the cartridge since pressure is defined as the force such as weight distributed over a surface area. The claim does not specify any particular pressure and any pressure applied within the cartridge reads on these limitations. Therefore, this argument is not found persuasive.
Examiner notes that applicant’s comments on Page 11 of the Remarks with respect to Claims 4-5 and applicant’s comments on Page 13 of the Remarks with respect to Claim 9 does not specifically and distinctly point out the supposed errors of the Office Action.
Applicant argues on Page 11 of the Remarks with respect to Claim 7 that Paragraph [0043] of Novak teaches that the zeolite is a charged adsorbent or molecular sieve…that has adsorbed some amount of carbon dioxide gas” and that the release of adsorbed carbon dioxide from the zeolite is triggered by the introduction of external water, is desorption, and not a state transformation of the substance. Applicant contends that zeolite remains a solid throughout the process and that the carbon dioxide previously adsorbed on the zeolite transitions form the adsorbed state to free gas, i.e. a sorption phenomenon and not a phase change of the substance and is triggered by an external activating fluid introduced through a perforator. Applicant continues that Claim 7 requires that the substance generate the pressure when contained in the inner cavity, i.e. while the cavity is enclosed and contains the substance. Applicant asserts that the zeolite of Novak produces no pressure within the cavity while the cavity remains insulated from the outer environment.
Examiner argues the limitations “a substance configured to generate said pressure when contained in said inner cavity, said substance being configured to generate said pressure by state transformation” are intended use limitations. The capsule of the prior art only need be capable of performing these intended use limitations. Nevertheless, Novak et al. discloses the substance (flowable particles of zeolite) are capable of generating the pressure by state transformation (zeolite particles release carbon dioxide gas) (‘343, Paragraph [0043]). It is noted that Claim 7 does not recite a phase change, as argued by applicant. Applicant argues limitations that are not commensurate in scope with the claimed invention. The claim recites “state transformation.” Therefore, this argument is not found persuasive.
Applicant argues on Pages 11-13 of the Remarks with respect to Claim 8 that Novak does not disclose solid carbon dioxide as the substance and that Paragraph [0043] of Novak identifies a carbon dioxide source 41 as a charged adsorbent or molecular sieve, e.g. a zeolite material that has adsorbed some amount of carbon dioxide gas. Applicant contends that a charged zeolite (a porous aluminuosilicate solid that has adsorbed gaseous CO2 is not solid carbon dioxide, i.e. solidified CO2 in the form of dry ice and that Novak does not disclose dry ice or solid carbon dioxide as the substance contained in the cartridge. Applicant continues that Claim 8 requires that the substance either (a) a cooled, cooling, or originally cooled material destined to cause gas formation by state transformation, or (b) a gas which gas may optionally derive from the state transformation of a cooled, cooling, or originally cooled material and that room temperature zeolite is neither. Applicant continues that Paragraph [0050] of Liu qualifies its descriptions that in certain embodiments both for the structural composition of zeolites and for the inclusion of the recited metals and Liu does not state that all zeolites contain those metals. Applicant continues Paragraph [0043] of Novak identifies multiple, chemically distinct candidate zeolites as well as non-zeolite alternatives. Applicant also admits that the limitations of Claim 8 recited to the contents of a mineralization mix are recited as optional and that Novak does not teach a cooled, cooling, or originally cooled substance or a gas optionally deriving from the state transformation of such as substance.
Examiner argues the limitations “optionally a mineralization mix configured to cause a water mineralization wherein said mineralization mix comprises at least one among magnesium carbonate or bicarbonate and/or calcium carbonate or bicarbonate and/or comprises at least one among magnesium, potassium, calcium, fluorine, iron, sodium, sulphur, silicon minerals” and “optionally dry ice or solid carbon dioxide, destined to cause a gas formation, optionally carbon dioxide gas, by state transformation and/or comprises a gas optionally a carbon dioxide gas, said gas optionally deriving from a state transformation of a cooled and/or cooling and/or originally cooled material, optionally deriving from a state transformation of dry ice or solid carbon dioxide” are optional limitations that are not required to be taught by the prior art. These limitations are not required to be taught by the prior art. Novak et al. discloses a cooled carbon dioxide (‘343, Paragraphs [0042]-[0043] and [0058]). Furthermore, Novak et al. teaches the zeolite containing sodium (‘343, Paragraph [0070]). Therefore, these arguments are not found persuasive.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached at 571-270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERICSON M LACHICA/Examiner, Art Unit 1792
