DETAILED ACTION
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 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 § 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.
Claims 1 – 3, 5 – 8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Gerbaulet et al. US 2019/0225411 in view of O’Brien et al. US 2014/0120218 in view of Schifferle US 2005/0150390 in view of Jahromi et al. US 2013/0129992.
Regarding claims 1 and 5, Gerbaulet discloses a single use container (container 2) (fig. 2) which comprises a multi-layer sheet (fig. 3) that has a rim with a flat top surface (flange 4), and a bottom surface; wherein the multi-layer sheet comprises, from outside to inside, a first lubricant layer, a printing ink layer (12) (paragraph [0051] and [0058]), an aluminum layer (9), and a coating (inner film 10) (paragraph [0050]) and wherein the single-use container has a depth to diameter ratio of at least .5:1 (0.5), with depth measured from the flat top surface of the rim to the bottom surface along a central axis of the single-use container, and diameter measured across an exterior of the rim (paragraph [0049]).
Regarding the multilayer film being a “coextrusion coating”, the limitation “coextrusion” is a method limitation and does not determine the patentability of the product, unless the process produces unexpected results. The method of forming the product is not germane to the issue of patentability of the product itself, unless applicant presents evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Gerbaulet discloses the multi-layer sheet as claimed.
Claim 1 differs from Gerbaulet in there being a stacking lip positioned below the rim and a stacking shoulder on the bottom surface of the stacking lip.
O’Brien discloses a single use container (10) comprising a rim with a flat top surface (protruding lip 18), a stacking lip is positioned below the rim, a stacking shoulder is positioned below the stacking lip and above the inward tapering sidewall, an inward tapering sidewall with a draft angle (approach angle) of 2º to 10º positioned below the stacking lip (‘218, paragraph [0025], table) and a bottom surface (base 12) (‘218, paragraph [0016] and fig. 1).
Regarding the stacking lip having a height of 5.7 mm and a stacking shoulder of the bottom surface of the stacking lip having a diameter of 43.68 mm, once it was known to provide a stacking lip and a stacking shoulder of the bottom surface of the stacking lip it is not seen that patentability would be predicated on the particular diameter of said lip and said shoulder. Limitations relating to the height of the stacking lip or the diameter of the stacking shoulder are not sufficient to patentably distinguish over the prior art. The mere scaling up of a prior art stacking lip and stacking shoulder capable of being scaled up, if such were the case, would not establish patentability in a claim to an old stacking lip and stacking shoulder so scaled. Where the only difference between the prior art stacking lip and stacking shoulder and the claims is a recitation of relative dimensions of the claimed stacking lip and stacking shoulder of the bottom surface of the stacking lip and a single-use container having a stacking lip and stacking shoulder with claimed relative dimensions would not perform differently than the prior art stacking lip and stacking shoulder, the claimed said lip and said shoulder are not patentably distinct from the prior art continuous bottom cutout (MPEP § 2144.04 IV.A.).
Nevertheless regarding the stacking shoulder, O’Brien further discloses the inner edge of a stacking shoulder of the bottom surface of the stacking lip would have a diameter of 43.68 mm (43.7mm) and the bottom surface would have an outer diameter of about 32 mm (radius R1 11.0 mm – 55.0 mm) (‘218, paragraph [0025]).
To therefore modify Gerbaulet and provide a stacking lip and stacking shoulder as taught by O’Brien to prevent the single use containers from completely nesting together when stacked would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
Claim 1 differs from Gerbaulet in view of O’Brien in a bottom surface comprising a single continuous bottom cutout, wherein the bottom cutout comprises a concave region at a center of the bottom surface, wherein the single continuous bottom cutout has a diameter of 27 mm and radially extends proximate to an outer periphery of the bottom surface.
Schifferle discloses a single use container which comprises a rim with a flat top surface (6), a stacking lip (5) positioned below the rim and a bottom surface comprising a single continuous bottom cutout, wherein the bottom cutout comprises a concave region at a center of the bottom surface and radially extends proximate to an outer periphery of the bottom surface (fig. 1 and 2). Schifferle is providing a single use container with a bottom cutout with a concave region at a center of the bottom surface for the art recognized function of ensuring that neither at the beginning nor during the brewing operation a hydraulic pressure buildup would take place thereby reliably avoiding the formation of froth in a finished coffee beverage (paragraph [0010]) which is believed to be applicant’s reason for doing so as well. To therefore modify Gerbaulet in view of O’Brien and provide the single use container with a bottom cutout as taught by Schifferle to reliably avoid the formation of froth in a finished coffee beverage would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
Regarding the single continuous bottom cutout having a diameter of 27 mm and a height of 0.5 mm, once it was known to provide a continuous bottom cutout it is not seen that patentability would be predicated on the particular diameter and/or height of said cutout. Limitations relating to the diameter and/or height of the cutout are not sufficient to patentably distinguish over the prior art. The mere scaling up of a prior art cutout capable of being scaled up, if such were the case, would not establish patentability in a claim to an old cutout so scaled. Where the only difference between the prior art cutout and the claims is a recitation of relative dimensions of the claimed cutout and a single-use container having a cutout with claimed relative dimensions would not perform differently than the prior art cutout, the claimed cutout is not patentably distinct from the prior art continuous bottom cutout (MPEP § 2144.04 IV.A.).
Claim 1 further differs from Gerbaulet in view of O’Brien in view of Schifferle in the printing ink layer has a polyvinyl butyral base.
Jahromi discloses it was common and well established in the art when dealing with surfaces that would be subjected to high heat, as would a single use container, to use polyvinyl butyral based inks because of their effective adhesion and heat stability (paragraph [0092]) making it obvious an obvious matter of choice and/or design to the ordinarily skilled artisan to have used an ink with a polyvinyl butyral base to apply the printing ink layer.
To therefore modify Gerbaulet in view of O’Brien in view of Schifferle and use an ink with a polyvinyl butyral base to provide an ink that has both an effective adhesion and heat stability as taught by Jahromi would have been an obvious an obvious matter of choice and/or design to the ordinarily skilled artisan.
Regarding claims 2 and 3, Gerbaulet in view of O’Brien in view of Schifferle in view of Jahromi discloses the coating comprises a tie layer (film 14) and a heat seal layer (polypropylene) (‘411, paragraph [0051]).
Regarding the multilayer film being a “coextrusion coating”, the limitation “coextrusion” is a method limitation and does not determine the patentability of the product, unless the process produces unexpected results. The method of forming the product is not germane to the issue of patentability of the product itself, unless applicant presents evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art (MPEP § 2113).
Regarding claim 6, regarding the particular diameter of the single use container, limitations relating to the size of the single use container would not be sufficient to patentably distinguish over the prior art. The mere scaling up of a prior art single use container capable of being scaled up, if such were the case, would not establish patentability in a claim to an old single use container so scaled. Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed single use container and a single use container having the claimed relative dimensions would not perform differently than the prior art single use container, the claimed single use container is not patentably distinct from the prior art single use container (MPEP § 2144.04 IV.A.). Nevertheless, Gerbaulet in view of O’Brien in view of Schifferle in view of Jahromi discloses the single use container would have a diameter of at least 52mm (radius 10mm – 50mm) (‘218, paragraph [0025] table). It is also noted that the particular diameter would also be an obvious matter of choice and/or design based on the particular use the container would be designed for.
Regarding claim 7, Gerbaulet disclosed the single use container would have a lid (foil member 5) affixed to the flat top surface of the rim (‘411, paragraph [0047] and fig. 1). Regarding the particular volume the single use container would enclose, limitations relating to the size, in this case volume, of the single use container would not be sufficient to patentably distinguish over the prior art. The mere scaling up of the volume of a prior art single use container capable of being scaled up, if such were the case, would not establish patentability in a claim to an old single use container so scaled. Where the only difference between the prior art and the claims is a recitation of relative dimensions, i.e., the volume of the claimed single use container and a single use container having the claimed relative volume would not perform differently than the prior art single use container, the claimed single use container is not patentably distinct from the prior art single use container (MPEP § 2144.04 IV.A.).
Regarding claim 8, Gerbaulet in view of O’Brien in view of Schifferle in view of Jahromi discloses the aluminium layer would have a thickness of between 82.8 µm and 97.2 µm (90.0 µm) (‘411, paragraph [0060]).
Regarding claim 10, Gerbaulet in view of O’Brien in view of Schifferle in view of Jahromi discloses the single use container is lubricated and formed by deep drawing (‘411, paragraph [0058] – [0059]). Since deep drawing is a sheet metal forming process in which a lubricated flat blank is constrained by a blank holder while the central portion of the sheet is pushed into a die opening with a punch to draw the metal into a desired shape it is seen as obvious that both the outer surface as well as the interior surface of the multi-layer sheet would comprise a lubricant for the purpose of the allowing the single use container to be properly released from the die and punch.
Regarding the multilayer film being a “coextrusion coating”, the limitation “coextrusion” is a method limitation and does not determine the patentability of the product, unless the process produces unexpected results. The method of forming the product is not germane to the issue of patentability of the product itself, unless applicant presents evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Gerbaulet et al. US 2019/0225411 in view of O’Brien et al. US 2014/0120218 in view of Schifferle US 2005/0150390 in view of Jahromi et al. US 2013/0129992 in view of Fields et al. US 2021/0129571.
Regarding claim 4, Gerbaulet in view of O’Brien in view of Schifferle in view of Jahromi disclose the single-use container would have a first lubricant layer in order to facilitate the forming of said container (paragraph [0058] – [0059]).
Claim 4 differs from Gerbaulet in view of O’Brien in view of Schifferle in view of Jahromi in the multi-layer sheet further comprises, between the first lubricant layer and the aluminum layer, a varnish layer, and a primer layer.
Fields discloses a single use container (aluminium beverage can) (‘571, paragraph [0028]) which would have been formed from a sheet. Fields further discloses that it was well established and conventional in the art to apply a primer (treatment304), printing ink (ink 306), and a varnish layer (308) (‘571, paragraph [0029] and fig. 3) to the sheet/container (aluminium) (‘571, paragraph [0025]) and that this is the typical manufacturing process employed (‘571, paragraph [0006]). Fields also discloses that the varnish layer is designed to protect the printed ink layer on the single use container (can) from abrasion and to enhance the appeal of said container (‘571, paragraph [0031]). Once it was known to apply a printing ink to the outer surface of a single use container and further protect said ink from damage by a varnish layer it would have been an obvious matter of choice and/or design to have substituted the known process of applying and protecting the printing ink of Gerbaulet in view of O’Brien in view of Schifferle in view of Jahromi between the first lubricant layer and the aluminium layer with the known process of applying and protecting the printing ink as taught Fields. An express suggestion to substitute one equivalent process for another known process is not necessary to render such substitution obvious (MPEP § 2144.06 II.).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Gerbaulet et al. US 2019/0225411 in view of O’Brien et al. US 2014/0120218 in view of Schifferle US 2005/0150390 in view of Jahromi et al. US 20130129992 in view of Frank et al. US 2022/0348401.
Claim 9 differs from Gerbaulet in view of O’Brien, in view of Schifferle in view of Jahromi in the aluminium layer comprising 95.5%-98.2% aluminum, ≤ 0.25% copper, ≤ 0.70% iron, 0.80%-1.3% magnesium, 1.0%-1.5% manganese, ≤ 0.3% silicon, and ≤ 0.25% zinc.
First it is noted that copper, iron, silicon, and zinc are required to be present in amounts equal to or less than those recited in the claim which is to say that copper, iron, silicon, and zinc need not be present at all.
Frank discloses that aluminium is widely used to manufacture beverage capsules and it is well known to do so. Frank further discloses that the utilization of recycled aluminum only requires 5% of the energy that would be required to produce primary aluminium, that such alloys would contain magnesium and manganese (paragraph [0003]), and that through the use of such alloys improvements can be made allowing the use of much more recycled aluminium thereby enabling a new balance of formability and strength properties through the use of much more recycled aluminium (paragraph [0006]). The alloy would comprise between 0.80% - 1.3% magnesium (1.3%) (‘401, paragraph [0037]) and between 1.0% - 1.5% manganese (1.5%) (‘401, paragraph [0036]). Since no other impurities, that is copper, iron, silicon, or zinc need be present the aluminium content would comprise between 95.5% - 98.2% (97.2%). Frank is using aluminium alloys to allow the use of much more recycled aluminium thereby enabling a new balance of formability and strength properties through the use of much more recycled aluminium which is believed to be applicant’s reason for doing so as well. To therefore modify Gerbaulet in view of O’Brien, in view of Schifferle in view of Jahromi and use aluminium alloys containing magnesium and manganese in the single use container to improve the strength properties and provide a new balance of formability as taught by Frank would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
Response to Arguments
Applicant's arguments filed 06 April 2026 have been fully and carefully considered but they are not found persuasive.
Applicant urges that Gerbaulet fails to disclose the specific structural and dimensional configuration of a stacking lip having a height of 5.7 mm, a stacking shoulder positioned below the stacking lip and above the inward tapering sidewall, wherein an inner edge of the stacking shoulder has a diameter of 43.68 mm, a bottom surface comprising a single continuous bottom cutout having a diameter of about 27 mm and a concave region having a height of 0.5 mm, or the claimed depth-to-diameter ratio in combination with the foregoing structural features. These urgings are not deemed persuasive.
Gerbaulet was brought to teach that it was well known and conventional in the art to provide single use containers that comprise a multilayer sheet that comprises that has a rim with a flat top surface, and a bottom surface wherein the multi-layer sheet comprises, from outside to inside, a first lubricant layer, an ink layer, an aluminum layer, and a coating and wherein the single-use container has a depth to diameter ratio of at least .5:1 (0.5), with a depth measured from the flat top surface of the rim to the bottom surface along a central axis of the single-use container, and a diameter measured across an exterior of the rim aluminium and not to teach the further dimensions of the single use container. Had Gerbaulet disclosed all the limitations as recited in the claims a rejection under 35 U.S.C. 103 would not have been necessary as a rejection under 35 U.S.C. 102 would have ensued instead.
Applicant urges that O’Brien does not disclose or suggest the specific dimensional and structural configuration recited in amended claim 1. Applicant acknowledges that O'Brien generally discloses a container having a protruding lip and a tapered sidewall but urges that O’Brien does not teach a stacking lip having a height of 5.7 mm in combination with a stacking shoulder having an inner edge diameter of 43.68 mm positioned below the stacking lip and above the inward tapering sidewall, or that O'Brien does not disclose or suggest the claimed bottom surface geometry, including a single continuous bottom cutout having a diameter of about 27 mm and a concave height of 0.5 mm, and that the claimed 27 mm diameter and 0.5 mm concave height were selected to balance structural reinforcement and pressure management during brewing. These urgings are not found persuasive.
O’Brien was brought to teach that it was known to provide a single use container having a rim with a flat top surface, a stacking lip positioned below the rim, an inward tapering sidewall with a draft angle of 2º to 10º positioned below the stacking lip and a bottom surface. O’Brien further discloses it was known to provide a stacking shoulder having a diameter of 43.68 mm (43.7 mm) as well as other dimensions that fall within the claimed ranges. 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. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of dimensional ranges the optimum combination of dimensions lie. Further O’Brien was not brought to teach the single use container to have a bottom cutout. Again as with Gerbaulet, had O’Brien disclosed all the limitations as recited in the claims a rejection under 35 U.S.C. 103 would not have been necessary as a rejection under 35 U.S.C. 102 would have ensued instead.
Applicant urges that Schifferle does not recognize the bottom cutout height or diameter as variables that affect the structural rigidity of a deep-drawn aluminum laminate container, that Schifferle does not disclose the claimed dimensional relationship between the cutout geometry, stacking lip height, stacking shoulder diameter, draft angle range, and depth-to-diameter ratio, and that Schifferle does not disclose the specific structural arrangement in combination with the claimed stacking geometry and laminate construction. These urgings are not deemed persuasive.
Schifferle was brought to disclose that it was conventional and well established in the art to provide single use containers with a bottom cutout having a height. With respect to said cutout regarded as variables that affect structural rigidity of a deep-drawn aluminum laminate container here applicant is urging limitations not found in the claims. Regarding the stacking lip height, stacking shoulder diameter, draft angle range, depth-to-diameter ratio, and laminate construction those limitations have been taught and made obvious by the teachings of Gerbaulet in view of O’Brien. It must be remembered that the rejections have been made over the references in combination and that is with Gerbaulet and O’Brien, had Schifferle disclosed all the limitations as recited in the claims a rejection under 35 U.S.C. 103 would not have been necessary as a rejection under 35 U.S.C. 102 would have ensued instead.
Applicant urges that Jahromi merely discloses the use of a polyvinyl butyral base ink but does not disclose a deep-drawn multi-layer aluminum beverage capsule having the claimed stacking lip height, stacking shoulder diameter, bottom cutout geometry, and depth- to-diameter ratio or recognize that the selection of polyvinyl butyral based inks cooperates structurally with the laminate stack and forming process to enable the claimed geometry without delamination or print degradation. These urgings are not found persuasive.
Jahromi was not brought to teach a deep-drawn multi-layer aluminum beverage capsule having the claimed stacking lip height, stacking shoulder diameter, bottom cutout geometry, and depth- to-diameter ratio as those limitations have been taught and made obvious by Gerbaulet, O’Brien, and Schifferle. Further, Jahromi discloses that polyvinyl butyral based inks cooperate structurally with a laminate stack and forming process to enable the claimed geometry without delamination or print degradation because these inks have effective adhesion and heat stability (paragraph [0092]).
Applicant further urges with respect to the prior art that the rejections address each of the limitations as claimed separately and do not suggest the coordinated dimensional configuration of limitations as recited in claim 1. This urging is not deemed persuasive. Again, the rejections have been made over a combination of references under 35 U.S.C. 103 and not under 35 U.S.C. 102. Applicant has urged against each of the references individually for what each reference does not teach when the rejections have been made over the combination of references as a whole. In response to applicant's urging against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The declaration under rule 132 of Mr. Richard Estabrook filed 06 April 2026 has been fully and carefully considered but is not found persuasive.
The claimed ranges overlap or lie inside the ranges disclosed by the prior art, that is Gerbaulet, O’Brien, Schifferle, and Jahromi therefore a prima facie case of obviousness exists. By stating overlapping ranges the prior art references as a whole in combination directly teaches the claimed dimensions within applicant’s claimed ranges. Therefore the overlapping dimensions of the prior art and the claimed ranges is sufficient to support an obviousness rejection. Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Also a group of ranges can be disclosed in multiple prior art references instead of in a single prior art reference as is the case here. Further, no empirical data has been presented to show unexpected results. 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. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of dimensional ranges the optimum combination of dimensions lie to achieve predictable results.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAIM A SMITH whose telephone number is (571)270-7369. The examiner can normally be reached Monday-Thursday 09:00-18:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at (571) 270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.S./
Chaim SmithExaminer, Art Unit 1791 26 June 2026
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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