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 .
Notice of Amendment
In view of the response filed September 9, 2026, amended claim 1 is acknowledged. The following reiterated grounds of rejection are set forth:
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.
GROUND 1: Claims 7, 17 and 20 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 7, 17 and 20 contain the trademark/trade name K-cup capsule, a Dolce Gusto capsule, and a Nespresso capsule. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a single-serve capsule and, accordingly, the identification/description is indefinite.
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)(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.
GROUND 2: Claim(s) 1-7, 9-10, 12-13, 16-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application No. 2016/0145038 to Apone et al.
In regard to claims 1, 13, 16 and 18, Apone et al. disclose a coffee brewing apparatus 100, and method of producing coffee, comprising: a housing; a grinding system associated with the housing (See Fig. 1 and paras 0017-0018), the grinding system having a grinding mechanism 214 for grinding coffee beans to transform the coffee beans into coffee grounds (See Fig. 2a and paras 0020-0034); and a brewing system 250 associated with the housing, and separate from the grinding sytem, the brewing system including a brewing chamber for receiving a cartridge 210, and a flow pathway for delivering heated water to the cartridge (See Fig. 2b and paras 0042-0043, 0046-0055).
In regard to claims 2, Apone et al. disclose a coffee brewing apparatus, wherein: the grinding system and the brewing system are located on a front side of the housing and are positioned adjacent to one another (See Figs. 1 and 2a-b).
In regard to claim 3, Apone et al. disclose a coffee brewing apparatus, wherein:
the grinding system includes an outlet for discharging the coffee grounds (See para 0026); and wherein the coffee brewing apparatus further includes a cartridge holder beneath the outlet of the grinding system for holding the cartridge beneath the outlet, for collection of the coffee grounds discharged by the outlet in the cartridge (See Fig. 2b and para 0042).
In regard to claim 4, Apone et al. disclose a coffee brewing apparatus, wherein: the cartridge is a reusable beverage pod (See para 0020).
In regard to claim 5, Apone et al. disclose a coffee brewing apparatus, wherein: the reusable beverage pod is selectively configurable in both a high-pressure brewing mode or a low-pressure brewing mode (See paras 0034-0035).
In regard to claims 6 and 19, Apone et al. disclose a coffee brewing apparatus, wherein: the brewing system is configured to alternately receive a plurality of cartridge holders which are each configured to receive one of a plurality of single serve capsules each having a different style or configuration (See paras 0020 and 0042).
In regard to claim 9, Apone et al. disclose a coffee brewing apparatus, wherein:
the grinding mechanism is one of a conical burr grinder, flat burr grinder, and blade
grinder (See para 0028).
In regard to claim 10, Apone et al. disclose a coffee brewing apparatus, wherein: the brewing system includes a brew head having an upper portion and a lower portion, the lower portion containing the brewing chamber, the upper portion being moveable relative to the lower portion between an open position and a closed position; and wherein the brewing system further includes a locking mechanism for maintaining a seal between a sealing element surrounding a water outlet in the brew head and the cartridge (See Fig.s 2b and paras 0042-0044).
In regard to claim 12, Apone et al. disclose a coffee brewing apparatus, wherein: the coffee brewing apparatus is operable in both a high-pressure brewing mode to produce an espresso style coffee beverage, and a low-pressure brewing mode to produce a drip style coffee beverage (See paras 0034 and 0060).
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 (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 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.
GROUND 3: Claim(s) 8 and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application No. 2016/0145038 to Apone et al. in view of U.S. Patent Application No. 2016/0176625 to Brockman et al.
In regard to claims 8 and 14-15, Apone et al. disclose a coffee brewing apparatus and method of producing coffee (see rejections above) but are silent with respect to the grinding system includes a hopper for receiving the whole coffee beans, the grinding mechanism, and an adjustment mechanism for selecting a coarseness of the coffee grounds produced by the grinding mechanism. Brockman et al. teach of an analogous a coffee brewing apparatus, and method of producing coffee, comprising an adjustment mechanism for selecting a coarseness of the coffee grounds produced by the grinding mechanism (see Para 0034). Specifically, a grinder included in the cartridge 200 can produce coffee grounds in a range of sizes from 400 microns to 800 microns. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the apparatus of Apone et al. to include an adjustable grinder to allow multiple different coffee beverages to be brewed as taught by Brockman et al. Claim 15 contains nearly identical limitations to claim 5, which is rejected above under GROUND 1.
GROUND 4: Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application No. 2016/0145038 to Apone et al. in view of EP 4032445 to Kirschner et al.
In regard to claim 11, Apone et al. disclose a coffee brewing apparatus and method of producing coffee (see rejections above) but are silent with respect to a drip tray slidably received by the housing and movable between a raised position and a
lowered position. Kirschner et al. teach of an analogous a coffee brewing apparatus, comprising a drip tray slidably received by the housing and movable between a raised position and a lowered position (See paras 3-4). Specifically, the closing element 5 is pivotally mounted for rotation it about a horizontal axis 25 in the drip tray 1 above the opening 19, such that the closing element closes the opening of the drainage device when the covering element is not properly installed in the drip tray, and the closing element is engaged with the covering element to hold open the opening of the drainage device when the covering element is properly installed in the drip tray (see paras. 0010 and 0028). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the apparatus of Apone et al. to include a drip tray slidably received by the housing and movable between a raised position and a lowered position to provide a drainage device equipped to prevent the machine from clogging with waste particulates as taught by Kirschner et al.
Response to Arguments
Applicant’s arguments filed September 9, 2026, have been fully considered and will be addresse3d as follows in view of the previously presented claim interpretation and rejections GROUND 1-4:
GROUND 1 (112b rejection):
Applicant states that the trademarks used in claims 7, 17 and 20 are being used to identify the goods and not the source of the goods. Stating that the trademark terms are expressly used as adjectives to modify the generic and well-defined claim element “capsule” and thus complies with the requirements under 35 U.S.C. 112(b). Examiner disagrees. In the present case, the trademark/trade name is used to identify/describe a single-serve capsule and, accordingly, the identification/description is indefinite. The trademark/trade names K-cup capsule, a Dolce Gusto capsule, and a Nespresso capsule are explicitly used as “limitations to identify or describe a particular material or product”. In other words, the size and shape of the “capsule” is being defined and described by use of specific trademark/trade names. Per MPEP 608.01(v):
The relationship between a mark or trade name and the product, service, or organization it identifies is sometimes indefinite, uncertain, and arbitrary. For example, the formula or characteristics of a product may change from time to time and yet it may continue to be sold under the same mark or trade name. In patent specifications, the details of the product, service, or organization identified by a mark or trade name should be set forth in positive, exact, intelligible language, so that there will be no uncertainty as to what is meant. Arbitrary marks or trade names which are liable to mean different things at the pleasure of the owner do not constitute such language. Ex Parte Kattwinkle, 12 USPQ 11 (Bd. App. 1931).
(emphasis added)
In view of the specification lacking further description and disclosure with regard to the size and shape of each “capsule”, and in particular what trademark/trade names K-cup capsule, a Dolce Gusto capsule, and a Nespresso capsule are known to mean in the art, the rejection of claims 7, 17 and 20 is maintained.
GROUND 2 (102 rejection in view of Apone et al.):
In response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e. a first housing containing the grinding system and a first housing containing the brewing system, where the first and second housings are distinct from one another) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Applicant states that because Apone et al. disclose a pod 210 that incorporates grinding elements 212, 214, 256 therein, the brewing system is not separate from the grinding system as claimed. Examiner disagrees. The current claim language merely requires both the brewing and grinding systems to be “associated with the housing” and a brewing system “separate from the grinding system”. Claim 1 does not require both the brewing system and grinding system to be contained within their own housing as argued by the Applicant. In other words, the grinding elements 212, 214, 256 of Apone et al. cannot be used to brew coffee, and thus cannot be considered to be part of the brewing system. Likewise, the brewing system 250 which dispenses hot water over ground beans to produce coffee, cannot be used to grind coffee. As broadly as claimed, Apone et al. meet the newly amended claims and the rejection is maintained.
Regarding claim 13, Applicant states that Apone et al. fail to disclose “moving the cartridge from a position beneath the grinding mechanism to a brewing chamber with a brew head located adjacent to the grinding mechanism. Examiner disagrees. Apone et al. disclose a brewing unit that can include a pod engagement device 256 that engages with the pod 210, interlocks with the movable grinding element 214 of the pod 210 and transmits energy to the movable grinding element to cause the grinding element to move (see Fig. 2B and paras. 0046-0047). After grinding the beans, the ground coffee can pass through the openings in the stationary grinding element 212 and collect in the second chamber 211b of the pod 210 (See para 0047). Movement of the cartridge with coffee grounds from a position beneath the grinding mechanism to a brewing chamber within a brew head located adjacent to the grinding mechanism is interpreted as the biasing member 257 providing a biasing force (e.g., downward force) on the pod engagement drive 256 after the grinding operation (see para. 0055). Likewise, regarding claim 18, Applicant states that Apone et al. fail to disclose “wherein the cartridge is located beneath the grinding mechanism”. Examiner disagrees. Apone et al. disclose a grinding system located on a front the housing (an internal section of the body portion 211 includes a movable grinding element 214 (see para. 0031) and a cartridge holder located beneath the grinding mechanism for holding the cartridge beneath the grinding mechanism, that is, the nest 251 provides support for the pod 210 (see para. 0040). Again, Applicant is advised to positively define first and second housings to accommodate the grinding and brewing systems, respectively, and wherein the first and second housings are distinctly located with respect to one another as part of the brewing apparatus. As broadly as claimed, Apone et al. meet the limitations of claims 13 and 18 and the rejections are maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 MATTHEW J KASZTEJNA whose telephone number is (571)272-6086. The examiner can normally be reached M-F, 7AM--3PM.
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/MATTHEW J KASZTEJNA/Primary Examiner, Art Unit 3993
