DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 6, 2026 has 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 1-2 and 4-11 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 1 recites the limitation “a sensor” in line 13. It is unclear if “a sensor” is a structure associated with the capsule or if “a sensor” is a structure associated with something other than the capsule.
Claim 2 recites the limitation “a sensor” in line 13. It is unclear if “a sensor” is a structure associated with the capsule or if “a sensor” is a structure associated with something other than the capsule.
Clarification is required.
Claims 4-11 are rejected as being dependent on a rejected base claim.
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.
Claims 1, 4-5, 8-9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Halliday et al. GB 2 569 624 (cited on Information Disclosure Statement filed December 22, 2023) in view of Edens et al. US 2017/0357937, Kruger US 2013/0129872, Vidal et al. US 2020/0140187, Arredondo et al. US 2002/0031970, and Zhao et al. US 2018/0119361.
Regarding Claim 1, Halliday et al. discloses a capsule (beverage cartridge 1) for preparing a beverage product. The capsule (beverage cartridge 1) comprises a body defining a cavity and a membrane (frangible film or foil material comprising a barcode surface 6 and port surface 4 covering a side of the cartridge) (‘624, Page 4, lines 9-10) having an outer region facing away from the cavity wherein the membrane (frangible film or foil material comprising barcode surface 6 and port surface 4) comprises a code region (barcode surface 6) located at the outer region, the code region (barcode surface 6) including a code (barcode 5) carrying capsule information which code (barcode 5) is optically detectable (‘624, FIG. 1) (‘624, Page 5, lines 6-30). It is noted that the claim does not specify any particular boundaries of the code region other than the code region is disposed at the outer region of the membrane, which is shown in the embodiments depicted in FIGS. 1 and 3. Any portion of the membrane containing a code would read on the code region and portions of the membrane that do not contain the code would not constitute the code region. Although Halliday et al. does not explicitly state the code extending over between 90% and 100% of the code region, Edens et al. discloses a label comprising at least one barcode wherein the size of the at least one barcode is adjusted, i.e. made larger or smaller, so that the barcodes span the entire length of one or more sides (‘937, FIG. 1) (‘937, Paragraph [0013]). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the capsule of Halliday et al. and adjust the size of the barcode relative to the code region as taught by Edens et al. since claims directed to a code size relative to a code region is held unpatentable over prior art codes because limitations relating to the code size relative to the code region is not sufficient to patentably distinguish over the prior art in view of In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (MPEP § 2144.04.IV.A.). Edens et al. teaches that there was known utility in the barcode art to adjust the size of the barcode.
Further regarding Claim 1, Halliday et al. discloses the outer region (circumference of frangible film or foil material comprises barcode surface 6 and port surface 4) comprises an absorption region having a moisture absorption ability, i.e. the barcode is disposed on a barcode surface distinct from the adjacent port surface and a different material is used for the barcode surface having appropriate properties for printing and reading of a barcode while reducing the probability of obstruction (‘624, Page 4, lines 14-17) wherein there is a difference in material or surface properties between the barcode surface and the port surface wherein one surface comprises an absorbent material and one surface comprises an impermeable material (‘624, Page 4, lines 1-7). However, Halliday et al. also discloses an embodiment wherein one of surfaces 4, 6 comprises an absorbent material and the other surface 4, 6 comprises an impermeable material (‘624, Page 6, lines 8-14), which teaches an embodiment wherein the code region (barcode region 6) is an absorption region having a moisture absorption ability. Additionally, Kruger discloses a beverage capsule (capsule 1) comprising a body (base element 2) defining a cavity and a membrane configured to be fastened to the body (base element 2) so as to close the cavity (‘872, Paragraph [0061]) wherein the membrane comprises a code region including a code (barcode) carrying capsule information wherein the code (barcode) is optically detectable (‘872, FIG. 14) (‘872, Paragraph [0054]). Kruger further discloses the code being disposed on a layer or partial layer of the membrane comprising paper or print materials (‘872, Paragraphs [0011]-[0012]).
Both Halliday et al. and Kruger are directed towards the same field of endeavor of beverage capsules. Both beverage capsules of Halliday et al. and Kruger have a code disposed on a membrane that closes the beverage capsules. Halliday et al. discloses one of the barcode surface or the port surface 4 being made of an absorbent material and the other surface being made of an impermeable material and that the different in material or surface properties assists with controlling the movement of leaked fluid and draws it away from the barcode (‘624, Page 6, lines 8-14). 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 Halliday et al. and construct the code region to be the absorption region wherein the code is made with paper materials (which paper materials are known in the art to be absorbent materials) as taught by Kruger since the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Kruger teaches that there was known utility in the beverage capsule art to construct a membrane closing off the body of the beverage capsule out of paper materials which membrane contains the code, which paper materials are known in the art to be a type of water absorbent material.
Further regarding Claim 1, Halliday et al. discloses the outer region (circumference of frangible film or foil material comprising barcode surface 6 and port surface 4) comprises an absorption region having a moisture absorption ability, i.e. one of surfaces 4,6 comprises an absorbent material and the other surface 4, 6 comprises an impermeable material which difference in materials assists with controlling the movement of leaked fluid and draws it away from the barcode (‘624, Page 6, lines 8-14). It is noted that the claims do not specify the entirety of the outer region of the membrane solely contains the code region. Any portion of the outer region of the membrane, including the outer circumference portion of the membrane that does not include the code region, reads on the claimed outer region, i.e. the circumferential portion of the membrane that does not contain the code region 6. However, Halliday et al. modified with Kruger is silent regarding the absorption region being able to absorb water in an amount of at least 0.1 mg/cm2.
Vidal et al. discloses a membrane (lid) comprising an oxygen barrier layer for sealing a beverage capsule (coffee capsule) (‘187, Paragraph [0001]) wherein the membrane (lid) is made from at least 50% by weight of biodegradable fibers derived from cotton cellulose fibers or wood fibers (‘187, Paragraphs [0033]-[0034]). Arredondo et al. discloses that cellulose fabrics made of cotton are naturally hydrophilic (‘970, Paragraph [0007]). Therefore, the cotton fibers form which the membrane/lid of Vidal et al. are made are hydrophilic fibers as evidenced by Arredondo et al. Additionally, Arredondo et al. discloses a method for improving the water absorbency of treated fabric containing natural fibers (‘970, Paragraph [0009]) by treating the fabric containing natural fibers with a composition comprising formaldehyde and a catalyst capable of crosslinking formaldehyde with a natural fiber to induce a chemical modification of the natural fibers (‘970, Paragraph [0021]).
Both Halliday et al. and Vidal et al. are directed towards the same field of endeavor of beverage capsules closed off by a hydrophilic membrane. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the membrane/lid of the beverage capsule of Halliday et al. and adjust the moisture absorption ability of the portion of the outer region of the membrane that is the outer circumferential area of the capsule at barcode surface 6 by treating the fabric containing natural fibers with a composition comprising formaldehyde and a catalyst capable of crosslinking formaldehyde with a natural fiber as taught by Arredondo et al. since differences in the water absorption ability of any portion of the outer region of the membrane will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such water absorption ability of any portion of the outer region of the membrane 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.). Furthermore, Zhao et al. discloses a food container (food service tray) made of a molded pulp packaging material made from recycled paperboard (‘361, Paragraph [0064]) and a blend of fibrous fruit or vegetable pomace combined with fibrous paper based material to achieve stronger fiber bonding and less water holding capacity of a slurry (‘361, Paragraph [0058]) such that the composite molded pulp products achieve a lignocellulosic composition or fiber morphology that is compatible with the fibrous paper based material such that the resulting composite molded product has desired water absorption, flexural strength, or flexural strain properties (‘361, Paragraph [0036]) compared to a similar molded product made from 100% fibrous paper based material (‘361, Paragraph [0044]). One of ordinary skill in the art would adjust the water absorption ability of any portion of the outer region of the membrane of modified Halliday et al. based upon the desired water absorption capabilities as taught by Zhao et al.
Further regarding Claim 1, the limitations “for preparing a beverage product” “configured to contain a comestible product,” “configured to be fastened to the body so as to close the cavity,” and “such that the code region is configured to directly absorb water present at a surface of a sensor arranged to sense the code” 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, Halliday et al. discloses the capsule being used to prepare a beverage product (‘624, Page 5, lines 19-23), the capsule having a comestible (beverage ingredient) contained therein (‘624, Page 5, lines 12-17) and the membrane (frangible film or foil material covering a side of the cartridge) fasted to the body to close the cavity (‘624, FIG. 1) (‘624, Page 4, lines 9-10). Additionally, Halliday et al. discloses a surface comprising an absorbent material (‘624, Page 4, lines 4-7). Arredondo et al. discloses cellulose fabrics with good water absorbency (‘970, Paragraph [0002]).
Regarding Claim 4, Halliday et al. discloses the outer region (circumference of frangible film or foil material comprising barcode surface 6 and port surface 4) comprises an absorption region having a moisture absorption ability, i.e. the outer circumference of frangible film or foil material comprises barcode surface 6 (‘624, FIG. 1) made of a hydrophilic absorbent material since the port surface 6 comprises an impermeable hydrophobic material (‘624, Page 6, lines 8-14). It is noted that the claims do not specify that the entirety of the outer region of the membrane solely contains the code region. Any portion of the outer region of the membrane, including the outer circumference portion of the membrane that does not include the code region, reads on the claimed outer region, e.g. the circumferential portion of the membrane that does not contain the code region surface 6. However, Halliday et al. modified with Kruger, Vidal et al., Arredondo et al., and Zhao et al. is silent regarding the moisture absorption ability of the absorption region being such that the absorption region is able to absorb water in an amount of at least 0.05 mL equivalent to 0.05 mg or water in less than 1.5 s. Vidal et al. discloses a membrane (lid) comprising an oxygen barrier layer for sealing a beverage capsule (coffee capsule (‘187, Paragraph [0001]) wherein the membrane (lid) is made from at least 50% by weight of biodegradable fibers derived from cotton cellulose fibers or wood fibers (‘187, Paragraphs [0033]-[0034]). Arredondo et al. discloses that cellulose fabrics made of cotton are naturally hydrophilic (‘970, Paragraph [0007]). Therefore, the cotton fibers form which the membrane/lid of Vidal et al. are made are hydrophilic fibers as evidenced by Arredondo et al. Additionally, Arredondo et al. discloses a method for improving the water absorbency of treated fabric containing natural fibers (‘970, Paragraph [0009]) by treating the fabric containing natural fibers with a composition comprising formaldehyde and a catalyst capable of crosslinking formaldehyde with a natural fiber to induce a chemical modification of the natural fibers (‘970, Paragraph [0021]). Both Halliday et al. and Vidal et al. are directed towards the same field of endeavor of beverage capsules closed off by a hydrophilic membrane. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the membrane/lid of the beverage capsule of Halliday et al. and adjust the moisture absorption ability of the portion of the outer region of the membrane that is the outer circumferential area of the capsule at barcode surface 6 by treating the fabric containing natural fibers with a composition comprising formaldehyde and a catalyst capable of crosslinking formaldehyde with a natural fiber as taught by Arredondo et al. since differences in the water absorption ability of any portion of the outer region of the membrane will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such water absorption ability of any portion of the outer region of the membrane 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.). Zhao et al. discloses a food container (food service tray) made of a molded pulp packaging material made from recycled paperboard (‘361, Paragraph [0064]) and a blend of fibrous fruit or vegetable pomace combined with fibrous paper based material to achieve stronger fiber bonding and less water holding capacity of a slurry (‘361, Paragraph [0058]) such that the composite molded pulp products achieve a lignocellulosic composition or fiber morphology that is compatible with the fibrous paper based material such that the resulting composite molded product has desired water absorption, flexural strength, or flexural strain properties (‘361, Paragraph [0036]) compared to a similar molded product made from 100% fibrous paper based material (‘361, Paragraph [0044]). One of ordinary skill in the art would adjust the water absorption ability of any portion of the outer region of the membrane of modified Halliday et al. based upon the desired water absorption capabilities as taught by Zhao et al.
Regarding Claim 5, Halliday et al. discloses the code region extending over less than 100% of the outer region (‘624, FIG. 1).
Regarding Claim 8, Halliday et al. discloses with respect to the absorption region (barcode surface 6 made of hydrophilic material), at least part of the rest of the outer region (at port surface 4 made of hydrophobic material) is impervious to water (‘624, FIG. 1) (‘624, Page 6, lines 8-14).
Regarding Claim 9, Halliday et al. discloses the code being applied on a sheet element (metallic foil material), the sheet element (metallic foil material) forming the code region (‘624, Page 5, lines 32-35).
Regarding Claim 11, Halliday et al. discloses the capsule information comprising information about the comestible product and beverage preparation parameters (brewing/dispensing parameters) (‘624, Page 1, lines 17-27) (‘624, Page 5, lines 19-23).
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Halliday et al. GB 2 569 624 (cited on Information Disclosure Statement filed December 22, 2023) in view of Edens et al. US 2017/0357937, Kruger US 2013/0129872, Vidal et al. US 2020/0140187, Arredondo et al. US 2002/0031970, and Zhao et al. US 2018/0119361 as applied to claim 1 above in further view of Trombetta US 2014/0287099.
Regarding Claim 6, Halliday et al. modified with Edens et al., Kruger, Vidal et al., Arredondo et al., and Zhao et al. is silent regarding the membrane comprising at least two layers wherein the code region is part of the outermost layer of the at least two layers and at least part of the outer layer of the membrane is impervious to water.
Trombetta discloses a beverage capsule (capsule 10) comprising a membrane (cover 18) (‘099, FIGS. 2A-2C and 5) (‘099, Paragraph [0058]) wherein the membrane (cover 18) comprises at least two layers wherein a code region (indicia 40d) is part of one layer (M1) (‘099, Paragraph [0056]) and at least part of the other layers (barrier layer B1) of the membrane (cover 18) is impervious to water (‘099, Paragraph [0058]).
Both modified Halliday et al. and Trombetta are directed towards the same field of endeavor of beverage capsules. Both beverage capsules of modified Halliday et al. and Trombetta et al. contain a membrane having a code disposed thereon. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the membrane of modified Halliday et al. to have at least two layers wherein the code region and the absorption region are part of one layer and at least part of the outer layers of the membrane is impervious to water as taught by Trombetta since the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Trombetta teaches that there was known utility in the beverage capsule art to construct a membrane/lid out of a multilayered laminate having a layer one which a code is disposed and another layer that acts as a barrier layer that is impervious to water. Although Trombetta does not disclose the particular orientation of the order of the layers wherein the code region and the absorption region are part of the outermost layer of the at least two layers, the mere reversal of the layer in which the code region and the absorption region are disposed is held to be an obvious modification in view of In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955) (MPEP § 2144.04.VI.A.). The code of the membrane would be capable of being read regardless of the particular layer in which the code is disposed as long as the code reader is capable of reading the code.
Regarding Claim 7, Trombetta discloses a beverage capsule comprising a code (indicia code 40d) etched or embossed to a surface of the capsule by laser (‘099, Paragraph [0056]).
Both modified Halliday et al. and Trombetta are directed towards the same field of endeavor of beverage capsules. Both beverage capsules of modified Halliday et al. and Trombetta et al. contain a membrane having a code disposed thereon. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the membrane of modified Halliday et al. to have the moisture absorption ability of the absorption region that is the barcode region to be provided by laser etching a portion of the outer region as taught by Trombetta since Trombetta teaches that there was known utility in the beverage capsule art to make the barcode region to be provided by laser etching.
Further regarding Claim 7, the limitations “wherein the moisture absorption ability of the absorption region is provided by laser etching a portion of the outer region” are product by process limitations. Even 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 view of In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP § 2113.I.).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Halliday et al. GB 2 569 624 (cited on Information Disclosure Statement filed December 22, 2023) in view of Edens et al. US 2017/0357937, Kruger US 2013/0129872, Vidal et al. US 2020/0140187, Arredondo et al. US 2002/0031970, and Zhao et al. US 2018/0119361 as applied to claim 1 above in further view of Alderson et al. US 2016/0016705.
Regarding Claim 10, Halliday et al. modified with Edens et al., Kruger, Vidal et al., Arredondo et al., and Zhao et al. is silent regarding the code including a coating.
Alderson et al. discloses a beverage capsule comprising a body defining a cavity and a membrane (lid 20) configured to be fastened to the body wherein the membrane (lid 20) comprises a code region (one functional area 70) located at an outer region wherein the code region (one functional area 70) includes a code (barcode 71) carrying capsule information and the code (barcode 71) is optically detectable wherein the code (barcode 71) includes a coating (clear lacquer coating) (‘705, FIG. 1) (‘705, Paragraph [0084]).
Both modified Halliday et al. and Alderson et al. are directed towards the same field of endeavor of beverage capsules. Both capsules of modified Halliday et al. and Alderson et al. also contains a membrane comprising a code. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the code disposed on the membrane of modified Halliday et al. and include a coating with the code as taught by Alderson et al. in order to protect the code from the external environment.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Halliday et al. GB 2 569 624 (cited on Information Disclosure Statement filed December 22, 2023) in view of Edens et al. US 2017/0357937.
Regarding Claim 2, Halliday et al. discloses a capsule (beverage cartridge 1) for preparing a beverage product. The capsule (beverage cartridge 1) comprises a body defining a cavity and a membrane (frangible film or foil material comprising a barcode surface 6 and port surface 4 covering a side of the cartridge) (‘624, Page 4, lines 9-10) having an outer region facing away from the cavity wherein the membrane (frangible film or foil material comprising barcode surface 6 and port surface 4) comprises a code region (barcode surface 6) located at the outer region, the code region (barcode surface 6) including a code (barcode 5) carrying capsule information which code (barcode 5) is optically detectable (‘624, FIG. 1) (‘624, Page 5, lines 6-30). It is noted that the claim does not specify any particular boundaries of the code region other than the code region is disposed at the outer region of the membrane, which is shown in the embodiments depicted in FIGS. 1 and 3. The outer region comprises an absorption region (barcode surface 6) having a moisture absorption ability (one of surfaces 4, 6 comprises an absorbent material) higher than the moisture absorption ability of at least part of the rest of the outer region (circumferential portion of frangible film or film material containing barcode surface 6 that is made of hydrophobic material) (the other of surface 4, 6 comprises an impermeable material) (‘624, FIG. 1) (‘624, Page 6, lines 8-14). The disclosure of the outer region/outer circumference of the frangible film or foil comprising barcode surface 6 being made of a hydrophilic material and the port surface 4 necessarily reads on the moisture absorption ability of the absorption region (barcode surface 6) being higher than the moisture absorption ability of at least part of the rest of the outer region (port surface 4).
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Further regarding Claim 2, it is noted that the claim does not specify any particular boundaries of the code region other than the code region is disposed at the outer region of the membrane, which is shown in the embodiments depicted in FIGS. 1 and 3. Any portion of the membrane containing a code would read on the code region and portions of the membrane that do not contain the code would not constitute the code region. Although Halliday et al. does not explicitly state the code extending over between 90% and 100% of the code region, Edens et al. discloses a label comprising at least one barcode wherein the size of the at least one barcode is adjusted, i.e. made larger or smaller, so that the barcodes span the entire length of one or more sides (‘937, FIG. 1) (‘937, Paragraph [0013]). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the capsule of Halliday et al. and adjust the size of the barcode relative to the code region as taught by Edens et al. since claims directed to a code size relative to a code region is held unpatentable over prior art codes because limitations relating to the code size relative to the code region is not sufficient to patentably distinguish over the prior art in view of In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (MPEP § 2144.04.IV.A.). Edens et al. teaches that there was known utility in the barcode art to adjust the size of the barcode.
Further regarding Claim 2, the limitations “for preparing a beverage product” “configured to contain a comestible product,” “configured to be fastened to the body so as to close the cavity,” and “such that the code region is configured to directly absorb water present at a surface of a sensor arranged to sense the code” 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, Halliday et al. discloses the capsule being used to prepare a beverage product (‘624, Page 5, lines 19-23), the capsule having a comestible (beverage ingredient) contained therein (‘624, Page 5, lines 12-17) and the membrane (frangible film or foil material covering a side of the cartridge) fasted to the body to close the cavity (‘624, FIG. 1) (‘624, Page 4, lines 9-10). Additionally, Halliday et al. discloses a surface comprising an absorbent material (‘624, Page 4, lines 4-7).
Response to Arguments
Examiner notes that the previous Claim Objections have been withdrawn in view of the amendments.
Examiner notes that new indefiniteness rejections under 35 USC 112(b) have been made in view of the amendments.
Applicant’s arguments with respect to the previous anticipation and/or obviousness rejections under 35 USC 102 and 35 USC 103, respectively of Claims 1-2 have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The secondary reference of Edens et al. is being relied upon to render obvious the new limitations regarding the code extending over between 90% and 100% of the code region. It is noted that that the claim does not specify any particular boundaries of the code region other than the code region is disposed at the outer region of the membrane, which is shown in the embodiments depicted in FIGS. 1 and 3. Any portion of the membrane containing a code would read on the code region and portions of the membrane that do not contain the code would not constitute the code region.
Applicant's arguments filed July 6, 2026 with respect to the obviousness rejections under 35 USC 103(a) pertaining to the limitations regarding the code region being configured to directly absorb water present at a sensor arranged to sense the code have been fully considered but they are not persuasive.
Applicant argues on Page 8 of the Remarks that Halliday does not teach that the code region is configured to directly absorb water present at a surface of the sensor arranged to sense the code. Applicant contends that Halliday does not teach that the code region directly absorbs water even though Halliday discloses that either surface 4 or 6 can include an absorbent material and the other surface can include an impermeable material. Applicant asserts that a person of ordinary skill in the art would understand the phrase “equally having a similar effect” to refer to the effect of drawing leaked fluid away from the barcode and that one of the surfaces 4,6 would be made of an absorbent material and configured to draw fluid away from the barcode which applicant alleges opposes the limitations “such that the code region is configured to directly absorb water present at a surface of a sensor arranged to sense the code.” Applicant continues that Halliday teaches that fluid is drawn away from the barcode and not that the code region directly absorbs water.
Examiner first notes that the limitations “such that the code region is configured to directly absorb water present at a surface of a sensor arranged to sense the code” are rejected as being indefinite under 35 USC 112(b) as per the indefiniteness rejections above. It is unclear if “a sensor” is a structure associated with the capsule or if “a sensor” is a structure associated with something other than the capsule. Furthermore, these limitations are intended use limitations and need only be capable of performing these intended use limitations. Insofar as the claims can be understood in light of the specification, applicant provides an example of the sensor being a structure associated with a beverage preparation machine which sensor is arranged to optically sense the code (Specification, Page 8, lines 23-29). The sensor is never disclosed in applicant’s disclosure to be a structure of the actual capsule itself. Halliday et al. discloses a surface comprising an absorbent material (‘624, Page 4, lines 4-7). The absorbent material would be capable of absorbing water present at a surface of a sensor of a beverage preparation machine. Therefore, this argument is not found persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Barton et al. US 2017/0083857 discloses a GPS barcode embedded using a water like, flexible, printable battery label on a package that can be adjusted to fit any sized packages (‘857, Paragraph [0010]).
Sato et al. US 2012/0040113 discloses a food package comprising a barcode printed on a base material layer (‘113, Paragraph [0081]) wherein the design and size of the barcode print is adjusted as appropriate in accordance with the customer’s request wherein the barcode is a one dimensional or two dimensional barcode or a matrix type or composite type QR code (‘113, Paragraph [0061]).
Lubow et al. US 2006/0118631 discloses a packaged comprising bar code information on product labels (‘631, Paragraph [0036]) wherein a printer receives bar code image from a computer in the form of a dot pattern and further adjustments to the printer software image is made including the orientation, the distance between the dots, and the distance between columns wherein the printer has an adjustment for the tolerance of the variations in speed and variations in print grain, e.g. the size of the dot due to ink spread (‘631, Paragraph [0049]).
Kosho et al. US 2008/0255931 discloses a QR code wherein by changing the cell size of a QR code and the width dimensions of bars and margins in a barcode, e.g. the thickness of finest lines as a standard, recognizability is investigated by a cellular phone equipped with information code reading function (‘931, Paragraph [0088]).
Abe et al. US 2005/0168778 discloses a Universal Product Code (UPC) used for packaging food (‘778, Paragraph [0952]) wherein the layout size and the layout angle of the bar code is designated by using the magnification, the height, or the angle wherein when the layout size of the bar code is designated as the magnification, the height value is changed in consonance with a value obtained by multiplying the default value by the designated magnification value (‘778, Paragraph [0956]).
Collins et al. US 5,583,978 discloses the ability to vary fonts has many advantages including letting a user vary the size of the letters to pack text more densely when necessary and to allow text to be more easily read wherein font descriptions are used to generate font images of virtually any desired size.
Brogger et al. US 11,589,703 discloses a control system used to detect and decode pod information wherein bar code information is captured using image capture sensors wherein spectral signature components are encoded into at least one optical brightener compound and/or IR absorbing compound on a pod
Castellani et al. US 2014/0224130 discloses a capsule comprising a membrane comprising a code region (flap 14) including a code (recognition element 15) carrying capsule information wherein the code (recognition element 15) is optically detectable wherein the code region (flap 14) is configured to be sensed by a sensor (optical sensor 205 of a video camera) arranged to send the code (recognition element 15) (‘130, FIG. 3) (‘130, Paragraph [0065]).
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
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