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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: reference characters “18” and “24” as presented in figure 1 cannot be found in the specification..
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 17 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claim is a use claim which does not purport to claim a process, machine, manufacture or composition of matter and therefore fails to comply with 35 U.S.C. 101. (“one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. 101”). See MPEP 2173.05(q) which also states, “…the Board held the following claim to be an improper definition of a process: “The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction.” In view of this, claim 17 is not seen to fall within one of the four categories of patent eligible subject matter. However, this rejection can be overcome by amending the claim to recite, for example, “A method of preparing a beverage using the single serve capsule as claimed in claim 12, the method comprising inserting the single serve capsule as claimed in claim 12 into a beverage preparation machine; after the inserting, introducing a liquid into the single serve capsule to interact with a beverage raw material within the single serve capsule to produce the beverage, and then discharging the beverage from the single serve capsule.”
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 16 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 16 recites the limitation, “relief-type” machine readable code. It is not clear as to what can be construed as a relief “type” of machine readable code, thus making the scope of the limitation unclear. The addition of the word “type” to an otherwise definite expression extends the scope of the expression so as to render it indefinite (see MPEP 2173.05(b)(III)(E)). For example, Applicant’s specification on page 21, lines 14-16 discloses that the optically detectable feature comprises a relief but not a relief “type” code. Page 3, lines 8-9, 26 and 27 do not provide further guidance on the bounds of “a relief-type machine-readable code” Figure 8 is disclosed on page 22 as showing a series of protrusions and depressions as the optically identifiable features (see the last paragraph) and while this could be construed as machine readable code comprising a relief, this does not provide clarity as to what can be construed as a “relief-type” machine readable code.
Claim 17 recites, “Use of the single serve capsule as claimed in claim 12, for preparing the beverage with the aid of the beverage preparation machine.” As per MPEP 2173.05q, attempts to claim a process without setting forth any steps involved in the process raises an issue of indefiniteness, because the claim does not recite any active, positive steps delimiting how the use of the single serve capsule is actually practiced. That is, the claim merely recites using a capsule for preparing a beverage with the aid of a machine but there is no specificity as to how the capsule or the machine are being used and there are no positively recited method steps to specify what the claim is attempting to cover. Therefore, the claim is indefinite.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 12-14, 16 and 17 are rejected under 35 U.S.C. 102a2 as being anticipated by Yoakim (US 20240300731).
Regarding the claim limitation “clearances” Applicant’s specification discloses that the clearances can be cutouts (see page 21, lines 1-2 as filed) and further discloses that a plurality of clearances and elevations are configured in the form of grooves and protrusions (see page 21, lines 17-20) and therefore, clearances have been construed to mean either cutouts, or grooves and protrusions.
Regarding claim 12, Yoakim teaches a single serve capsule for preparing a beverage (see the abstract) with aid of a beverage preparation machine (see paragraph 72, “extraction unit”), the single serve capsule including a base element (see the bottom horizontal wall of the capsule of figure 8), which base element has a cavity for receiving a beverage raw material (figure 8, item 6 and 58; paragraph 103) and a capsule lid which closes the cavity (see figure 8, item 56 and paragraph 102-103: “closing member…comprises a flexible membrane”); the base element comprising a capsule base (see figure 8), an encircling flange (figure 6, item 60; see paragraph 102: “flange portion”) and a capsule wall (see figure 8, item 58) which extends from the capsule base to the encircling flange; the capsule lid fastened to the flange (figure 11, item 56 that is sealed to the flange 60), the single serve capsule including an optically detectable feature that is optically detectable by a detector of the beverage preparation machine (see figure 11, item 44 and 84; see paragraph 60 and 130 which disclose that the code is optically readable); wherein the encircling flange has clearances which represent the optically detectable feature (see figure 11, item 84, 86 and paragraph 130). The clearances “represent” the optically detectable features since the code can be visible through the clearances. As shown in figure 12, the clearances 84 extend parallel to a rotational symmetry axis of the capsule through the flange, because the clearances extend circumferentially and because Yoakim teaches that the capsule rotates on a rotational axis of symmetry (see figure 10, item “L” and paragraph 21, 124).
Yoakim also discloses at paragraphs 132 and 133 that the webs adjacent to the clearances can also be part of the optically detectable feature and therefore, Yoakim discloses a combination grooves and protrusions (i.e. clearances) that can represent the optically detectable feature. It is also noted that Yoakim discloses that the code carrying member 44 can be an insert (paragraph 11), such that the insert can be construed as part of the clearances and therefore the clearances represent an optically detectable feature.
Regarding claim 13, as shown in figure 12, Yoakim discloses that the positions of the flange that does not have the clearances 84) have webs (figure 12, item 92; see paragraph 131-132 “connecting members”) which can be construed as webs that extend in a radial direction (i.e. radially outward).
Regarding claim 14, Yoakim discloses that the clearances are covered by the capsule lid (see figure 11, item 56 and 84). That is, the clearances are covered from above by the capsule lid and the claims do not provide further specificity as to how the clearances are covered or the particulars of the structure that defines the clearances.
Regarding claim 16, Yoakim discloses that the capsule lid, conjointly with the clearances forms a bit code (see figure 11, item 44 which shows the lid and figure 11, item 84 which shows clearances which together form code)(see paragraph 125 which discloses “bit code”).
Yoakim also discloses that the web regions 92 can also be part of the optically detectable feature (see paragraphs 132-133) and therefore can be construed as disclosing that the capsule lid conjointly with the clearances forms a “relief-type machine-readable code”, because the clearances together with the connecting members would have created a relief-type structure that is readable.
Regarding claim 17, the claim is indefinite as presented above under 35 U.S.C. 112b. However, in an effort to expedite prosecution, the claim has been construed to be directed to a method of using the capsule of claim 12 to prepare a beverage by inserting the capsule into a beverage preparation machine and then at minimum producing a beverage from the contents of the capsule. In this regard, Yoakim teaches a beverage preparation machine into which the capsule is placed to produce a beverage therefrom (see figure 5, item 34 and 37 and paragraph 73-75).
Claims 12-13 and 17 are rejected under 35 U.S.C. 102a1 as being anticipated by Jarisch (US 20130064937).
Regarding the claim limitation “clearances” Applicant’s specification discloses that the clearances can be cutouts (see page 21, lines 1-2 as filed) and further discloses that a plurality of clearances and elevations are configured in the form of grooves and protrusions (see page 21, lines 17-20) and therefore, clearances have been construed to mean either cutouts, or grooves and protrusions.
Regarding claims 12 and 13, Jarisch teaches a single serve capsule for preparing a beverage with aid of a beverage preparation machine (see paragraph 4, “capsule” and figure 1 which shows the machine), the capsule including a base element with a cavity for (i.e. capable of) receiving a beverage raw material (see figure 4, item 69) and a capsule lid which closes the cavity (figure 4, item 60; paragraph 36); the base element inherently comprises a capsule base and as shown in figure 4 and 5, Jarisch discloses an encircling flange (see paragraph 36 and figure 4, “flange like rim 73”) with the capsule lid fastened to the flange (see paragraph 36, capsule lid is connected to the body by being sealed on the flange like rim).
Jarisch also discloses an optically detectable feature capable of being detected by a detector of a beverage preparation machine (see figure 5 and paragraph 17-19 which discloses that the optical code on the flange can be in an embossed pattern; see paragraph 22 and 24). By disclosing that the code, such as that shown in figure 5 can be embossed and as Jarisch is also disclosing in figures 5 and 7 that the code has a relief structure, Jarisch is disclosing “clearances” such as the gaps between the raised portions on the flange, which therefore teaches that the encircling flange has clearances which represent the optically detectable feature. As shown in figure 7, there is some degree of extension of the clearances in a direction parallel to a rotational symmetry axis of the capsule through the flange. Further regarding claim 13, as the spaces between the raised portions in figure 7 can be construed as clearances, then the raised portions themselves can be construed as webs of the encircling flange, which are between the clearances and clearly extend to some degree in a radial direction (i.e. outwardly from the center of the capsule).
Regarding claim 17, the claim is indefinite in view of the rejection under 35 U.S.C. 112b. Nonetheless, Jarisch discloses using the capsule with a beverage preparation machine (see figure 1 and paragraphs 34-35 which show a machine with which the capsule can be used).
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 15 is rejected under 35 U.S.C. 103 as being unpatentable over Yoakim (US 20240300731).
Regarding claim 15, Yoakim teaches that the capsule lid on a side facing the encircling flange can have a variety of colors presented thereon (see paragraph 121 and figure 11). Therefore, Yoakim teaches that on a side facing the encircling flange, the capsule lid has a color.
Claim 15 differs from Yoakim in specifically reciting, “wherein the capsule lid on a side thereof facing the encircling flange has a different color than the encircling flange on a side thereof facing away from the capsule lid.”
However, Yoakim also teaches that the flange portion facing away from the capsule lid can also have connecting members (92) that also comprise code, such as dark or light coloring (see paragraph 132-133).
Yoakim also teaches at paragraph 121 that dark code coloring can be black, dark blue, purple, dark green and that light code coloring can be white, light blue, yellow, light green, for example for the purpose of providing sufficient contrast for image capture.
Yoakim teaches that the encircling flange on a side facing away from the lid can be coded with dark or light colors (paragraph 133). Therefore, Yoakim is teaching that the side of the lid facing the flange can have a color that can differ from a side of the flange facing away from the capsule lid, for providing sufficient contrast for image capture (see paragraph 121).
Therefore, it would have been obvious to one having ordinary skill in the art to have provided a different color to the lid facing the flange as to the flange facing away from the lid, for the purpose of providing the requisite contrast when producing the optically readable code, so as to ensure image capture.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Johnki (DE 202010009287) teaches a capsule (figure 1 and 2), sealed with a lid (figure 1, item 3 and paragraph 63 of the machine translation) and which capsule also has clearances that are optically readable (see figure 2, item 7 and paragraph 64 of the translation, which discloses that the clearances (i.e. holes) can be optically read (see paragraph 18 and 54 which discloses that an optical scanner can be used to read the hole codes). At paragraph 18 and 55, Bernd teaches color codes, barcodes and hole codes as advantageous for being read by an optical reader for determining the contents of the capsule. Bernd further teaches that the clearances are covered by the capsule lid because in figure 1 and paragraph 63, Bernd discloses that the lid is welded to the capsule in the area of the rim.
US 20240336426 discloses a capsule flange, with a capsule lid that can encircle the flange (see figure 11, item 56) and where there are cut-outs as an optically readable feature (Figure 12, item 80 and paragraphs 118 and 129)
WO 2007087890 discloses a capsule for producing a beverage (figure 1, item 12) which is sealed with a lid (figure 1, item 16) and which has a flange with clearances and a relief structure (see figure 2) as optically readable code.
US 20160242594 discloses that it has been conventional to use a transparent cover foil to protect an optically readable feature (paragraph 41).
US 20140224130 discloses optically readable features such as clearances and protrusions (see figure 7f and 7g and paragraph 74)
US 20150297021 discloses grooves and protuberances as an optically readable feature on a flange of a capsule (see figure 2, item 8 and 9 and paragraph 75).
US 20020048621 discloses grooves (see figure 2g, item 37) as well as cutouts (figure 2f, item 36 and 2h, item 38) as optically readable features (see paragraph 14-16).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIREN THAKUR whose telephone number is (571)272-6694. The examiner can normally be reached M-F: 10:30-7:00pm.
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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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/VIREN A THAKUR/Primary Examiner, Art Unit 1792