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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3, 5, 9-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, claim 1 has been amended to recite “wherein the optically detectable feature is integrally formed in the flange” in line 10. It is noted that paragraph [0035] recites the one capsule feature can be configured integrally on the capsule body or the base, the lid and/or the flange and therefore only provides support for the generic teaching of “wherein the optically detectable feature is integrally formed on the flange”. Also while the specification discloses that the identifier can be cutouts, holes, protrusions and depressions (see PGPUB specification paragraphs [0040], [0093]-[0094], [0101], [0102]), which can be considered specific embodiments of “wherein the optically detectable feature is integrally formed in the flange,” the specification does not disclose generically that “wherein the optically detectable feature is integrally formed in the flange”. The limitation that “wherein the optically detectable feature is integrally formed in the flange” is broader than the specific embodiments of providing cutouts and holes, and protrusions and depressions in the flange for providing the identifier (See MPEP 2163.05.I.B which recites "A patentee will not be deemed to have invented species sufficient to constitute the genus by virtue of having disclosed a single species when … the evidence indicates ordinary artisans could not predict the operability in the invention of any species other than the one disclosed."). The full scope of the “wherein the optically detectable feature is integrally formed in the flange” is not clearly supported by the specification and therefore is considered to raise an issue of new matter.
Claims 3, 5, 9-14 are rejected by virtue of their dependence on a rejected base claim.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1, 3, 5, 9 and 11-14 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, claim 1 recites “the optically detectable feature is detectable through the flange by the detector of the beverage machine”. It is unclear what is meant by “detectable through the flange”. For example, it is unclear if this means that the optically detectable feature is located on one side of the flange and the detector is located on an opposite side of the flange having the optically detectable feature and the optically detectable feature is capable of being detected by the detector located on the opposite side through the flange, or if this is not what is meant and therefore is not required.
Regarding claim 3, claim 3 recites “wherein the optically detectable feature is formed by regions of the flange having dissimilar transparencies, the regions being configured to be dissimilarly translucent such that the optically detectable feature is a machine-readable code derived from the dissimilar transparencies that is detectable through the flange by the detector of the beverage preparation machine”. It is noted that claim 1 requires the optically detectable feature is integrally formed in or on the flange and that the optically detectable feature is detectable through the flange. It is unclear if claim 3 is further limiting the optically detectable feature that is integrally formed in the flange to be formed by regions of the flange having dissimilar transparencies, or further limiting the optically detectable feature that is integrally formed on the flange to be formed by regions of the flange having dissimilar transparencies, or further limiting the optically detectable feature to further include regions of the flange having dissimilar transparencies in addition to the optically detectable feature which is integrally formed in or on the flange.
Regarding claim 5, claim 5 recites “that the optically detectable feature is imprinted directly on a side of the flange that faces the capsule lid”. It is unclear if claim 5 is further limiting the optically detectable feature that is integrally formed on the flange to be imprinted directly on a side of the flange because the claim does not specifically specify this. It is noted that the claim has been interpreted as further limiting the optically detectable feature that is integrally formed on the flange to be imprinted directly on a side of the flange.
Regarding claim 11, claim 11 recites “that the optically detectable feature is printed directly on a side of the flange that faces the capsule lid”. It is unclear if claim 11 is further limiting the optically detectable feature that is integrally formed on the flange to be printed directly on a side of the flange because the claim does not specifically specify this. It is noted that the claim has been interpreted as further limiting the optically detectable feature that is integrally formed on the flange to be printed directly on a side of the flange.
Regarding claim 12, claim 12 is unclear for the same reasons given above as for claim 5.
Regarding claim 13, claim 13 is unclear for the same reasons given above as for claim 11.
Regarding claim 14, claim 14 recites “wherein the optically detectable feature comprises cutouts in the flange”. It is noted that claim 1 requires the optically detectable feature is integrally formed in or on the flange and that the optically detectable feature is detectable through the flange. It is unclear if claim 14 is further limiting the optically detectable feature which is integrally formed in the flange to be cutouts in the flange, or the optically detectable feature which is integrally formed on the flange to be cutouts in the flange or further limiting the optically detectable feature to comprise cutouts in the flange in addition to the optically detectable feature which is integrally formed in or on the flange.
Claim 9 is rejected by virtue of its dependence on a rejected base 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)(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, 9, 11-14 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Yoakim US 2024/0300731.
Regarding claim 1, Yoakim discloses a single serve capsule (Fig. 8) for preparing a beverage with aid of a beverage preparation machine (4) having a base element with a cavity for receiving a beverage raw material ([0006], [0068]), and a capsule lid (closing member 56) which closes the cavity ([0103]); the base element comprising a capsule base, a flange (60) encircling the capsule base and a capsule wall which extends from the capsule base to the flange (the flange portion 60 is arranged integrally with the storage portion 58) (Fig. 8, [0103]); the capsule lid (56) being fastened to the flange ([0134]); the single serve capsule having an optically detectable feature (code 44) which is optically detectable by a detector of the beverage preparation machine ([0060]), wherein the flange (flange 60) is at least in part optically transparent ([0135], [0136]). The optically detectable feature is integrally formed on the flange ([0121]-[0122]).The optically detectable feature is detectable through the flange by the detector of the beverage preparation machine ([0016], [0135], [1036]).
Regarding claim 5, Yoakim discloses that the optically detectable feature (code 44) is imprinted (printed or embossed) directly on a side of the optically transparent flange facing the capsule lid (Fig. 11, [0121], [0122]).
Regarding claim 9, Yoakim discloses that the optically detectable feature is a machine-readable code ([0060], [0090]).
Regarding claim 11, Yoakim discloses that the optically detectable feature (code 44) is printed directly on a side of the optically transparent flange facing the capsule lid (Fig. 11, [0121]- [0122]).
Regarding claim 12, Yoakim discloses that the optically detectable feature (code 44) is imprinted (printed or embossed) directly on the flange (Fig. 11, [0121]- [0122]).
Regarding claim 13, Yoakim discloses that the optically detectable feature (code 44) is printed directly on the flange (Fig. 11, [0121]- [0122]).
Regarding claim 14, Yoakim discloses forming the code directly on the flange ([0121]-[0122]) by printing elements 80 on the flange, Yoakim then recites that the elements are alternatively formed by engraving ([0122]), Yoakim discloses that the optically detectable feature can be formed by engraving the flange, and since engraving is cutting a design into a surface, Yoakim is seen to teach that the optically detectable feature comprises cutouts in the flange ([0122]).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating
obviousness or nonobviousness.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Yoakim US 2024/0300731 in view of Faiz US 2006/213994.
It is noted that as discussed above claim 3 raises 112b issues. Claim 3 has been interpreted as further limiting the optically detectable feature that is integrally formed on the flange to be formed by regions of the flange having dissimilar transparencies
Regarding claim 3, claim 3 differs from Yoakim in the recitation that the optically detectable feature is formed by regions of the flange having dissimilar transparencies, the regions being configured to be dissimilarly translucent such that the optically detectable feature is a machine-readable code derived from the dissimilar transparencies that is detectable through the flange by the detector of the beverage preparation machine. It is noted that Yoakim discloses that the elements of the code can be formed by suitable means ([0122]).
Faiz discloses providing a barcode having opaque (56) and translucent areas (55) on a transparent slide ([0003], [0008], [0020], [0026], [0005], Fig. 4). Therefore Faiz
Teaches forming a barcode by regions having dissimilar transparencies, the regions being configured to be dissimilarly translucent such that the barcode is a machine-readable code derived from the dissimilar transparencies. Faiz discloses that the barcode is detectable through the transparent slide ([0005], [0021], Fig. 4). It would have been obvious to one of ordinary skill in the art to modify Yoakim such that the optically detectable feature is formed by regions of the flange having dissimilar transparencies, the regions being configured to be dissimilarly translucent such that the optically detectable feature is a machine-readable code derived from the dissimilar transparencies that is detectable through the flange by the detector of the beverage preparation machine as suggested by Faiz, thereby substituting one known type of barcode for another known type of barcode to obtain the predictable result of providing a barcode readable through the transparent flange. It has been held that “Simple substitution of one known element for another to obtain predictable results” supports a conclusion of obviousness (MPEP 2143.I.B).
Response to Arguments
Applicant's arguments filed 03/30/2026 have been fully considered but they are not persuasive.
On Pg. 5 of the remarks Applicant argues that Yoakim teaches a separate code carrying member.
After further review of the Yoakim reference, paragraph [0122] discloses that the elements 80 are printed and the substrate may be the container outer surface including one of the closing member, flange or storage portion or a separate substrate. Therefore while Yoakim discusses preferring the use of a separate substrate, this does not teach away from forming the code directly on the flange “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments” (MPEP 2123.I,II).
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.
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/A.A/
Ashley AxtellExaminer, Art Unit 1792
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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