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 Objections
Claims 28 and 35 are objected to because of the following informalities: The claims contain typographical errors in spelling “increases” and “releasing”, respectively.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. The following terms are present within the claims:
“holding means”
“control means”
“by means of a spring”
The corresponding structure for performing the term “holding means” is found at, for example, paras 0006-0007 and 0012-0024 and for the term “control means” is found at, for example, paras 0012.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
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 16-42 are rejected under both 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, and 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, because the specification lacks a proper description of any corresponding structure as a result of the 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, analysis above.
As previously explained, the following claim limitations reciting “holding means”, “control means” and “by means of a spring” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
The written description does not disclose the corresponding structure or material for performing the entire claimed function nor does it clearly link the structure or material to the function. Specifically, the “holding means” is labeled and disclosed as being reference number 38, which appears to be illustrated in Figure 5 as two separate arm members for holding the capsule 60. However, the specification consistently refers to functions accomplished by the “holding means” and fails to to distinguish or illustrate any structural details thereof. The “control means” is labeled and disclosed as being reference number 44 seen in Figure 1, but fails to distinguish or illustrate any structural details thereof as it is unclear what 44 comprises in the Figure.
For these reasons, the limitation lacks proper written description and are indefinite, and as a result, claim 16-42 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, and 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See MPEP §§ 2181, subsection IV, and 2185.
To address the section 112 rejections based on the 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, interpretation, Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If Applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure or material perform the claimed function, Applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
GROUND 2: Claims 16-42 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.
Claims 16, 25, 33 and 41-42 recites “at least one holding means”, claim 19 recites a “control means” and claim 24 recites “by means of a spring element”. Again, the specification fails to disclose or illustrate any structural details of the holding and/or control means. As such, these limitations lack proper written description under section 112, first paragraph, (for AIA , section 112(a)). As a result, claims 6 contain 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.
Claims 17-24, 26-32 and 34-40 are rejected as being necessarily dependent upon claims 16, 25 and 33, respectively.
GROUND 3: Claims 16-42 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, 25 and 33 recite, in part, “wherein the at least one holding means releases the capsule” which leads to confusion over the holding means as disclosed and illustrated, in particular, what components of the brewing unit comprises the “holding means”. It is best understood that holding means 38, as illustrated and disclosed, comprise two arm-like members which are biased against each other via a spring, and as such are configured to hold and position a capsule therebetween. Thus, the holding means may be moved relative to one another. However, the holding means do not appear to be capable of moving apart (i.e. releasing the capsule) without the aid of additional components of the brewing unit to overcome the biasing ofrece of the spring. Para 0101 clearly states:
“…the holding means 38 are moved apart relative to each other against the spring force of the spring element 41 so that the capsule 60 is dropped. This movement of the holding means 38 apart is effected by a control means 44 (see FIG. 1), which pushes itself wedge-shaped between the holding means 38 and thus increases their distance.”
In view of the disclosure, the current claim lanague leads to confusion since the “holding means” can not “release the capsule” without actuation of the control means 44, an additional component not positively recited within the claims. Appropriate clarification and correction is required.
Claims 17-24, 26-32 and 34-40 are rejected as being necessarily dependent upon claims 16, 25 and 33, respectively.
Claim 18 recites, “wherein the capsule, before being released by the at least one holding means, has no mechanical contact with one or more of the first and the second brewing chamber halves in the intermediate position” which leads to confusion of the number of brewing chamber halves, as having “more than one” does not provide an upper limit and contradict the use of the term “halves”. Appropriate clarification and correction is required.
Claim 19 recites, “wherein the brewing unit comprises a control means which, upon closing of the brewing chamber, cooperates with the at least one holding means in such a way that the capsule is released” which leads to confusion as to what is meant by “in such a way”. The phrase "in such a way" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Appropriate clarification and correction is required.
Claim 22 recites the limitation "the capsule without a flange" in line 2 of the claim. There is insufficient antecedent basis for this limitation in the claim. Appropriate clarification and correction is required.
Claim 23 recites, in part, “wherein the first and second holding means laterally enclose the capsule in the intermediate position along an area around the capsule” which leads to confusion as to whether the entire capsule is surrounded by the holding means or only a portion thereof. The word “enclose” by definition means, “to close in on all sides (see https://www.dictionary.com/browse/enclose), however the claim appears to limit this definition by stating “along an area around the capsule”. Appropriate clarification and correction is required.
Claim 25 recites, in part, “A method for inserting the capsule into the brewing unit according to claim 16, the method comprising:” which appears to be an attempt to combine method steps into the apparatus recited in claim 16. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite (See MEP 2173.05(p). Appropriate clarification and correction is required.
Claims 26-32 are rejected as being necessarily dependent upon claim 25.
Claim 33 recites:
“A method for inserting a capsule into a brewing unit of a beverage preparation machine, the method comprising:
holding and positioning the capsule, via at least one holding means, in an intermediate position between a first brewing chamber half and a second brewing chamber half;
moving the brewing chamber halves together;
releasing the capsule, via the at least one holding means;
gripping the capsule, via one or more of the first and second brewing chamber halves;
aligning the capsule, via one or more of the first and second brewing chamber halves;
moving the brewing chamber halves together to form a closed brewing chamber; and spacing apart the brewing chamber halves before releasing the capsule such that the brewing chamber halves no longer grip the capsule.”
As such the claim recite two redundant steps of “moving the brewing chamber halves together” which leads to confusion. Additionally, it is unclear how the brewing chamber halves are “spaced apart” “before releasing” the capsule as claimed, seeing that if the brewing chamber halves are spaced apart they will no longer grip the capsule. In other words, the functional act of spacing apart the brewing chamber halves, and releasing the capsule, happens simultaneously, not one before the other as claimed. Appropriate clarification and correction is required.
Claims 34-40 are rejected as being necessarily dependent upon claim 33.
Claim 36 recites “when moving the brewing chamber halves together” which is unclear which step is being referred to with respect to claim 34, the first or second moving of the brewing chamber halves. Appropriate clarification and correction is required.
Claim 42 recites the limitation "the capsule " in line 2 of the claim. There is insufficient antecedent basis for this limitation in the claim.
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 4: Claim(s) 16-42 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 9,144,341 to Gugerli.
In regard to claims 16, 25, 33 and 41-42, Gugerli discloses a brewing unit for a beverage preparation machine comprising: a brewing chamber that includes a first brewing chamber half 4 and a second brewing chamber half 5; wherein the first brewing chamber half and the second brewing chamber half are arranged to be movable relative to one another from a closed position for forming a closed brewing chamber into an open position to allow a capsule to be inserted into the brewing chamber (See Figs. 4 and 8); wherein the brewing unit has at least one holding means 7, 8, wherein the at least one holding means holds the capsule in an intermediate position between the first and second brewing chamber halves when the capsule is inserted and the first and second brewing chamber halves are in the open position (See Figs. 4-8); wherein the at least one holding means releases the capsule when the brewing chamber is closed; and wherein, before the release of the capsule by the at least one holding means (See Fig. 8), the first and second brewing chamber halves are spaced apart in such a way that the brewing chamber halves cannot grip a capsule (See Fig. 4).
In regard to claims 17, 26 and 34, Gugerli discloses a brewing unit for a beverage preparation machine, wherein the brewing unit has first and second holding means 7, 8 (see Figs. 2-3).
In regard to claims 18, 27 and 35, Gugerli discloses a brewing unit for a beverage preparation machine, wherein the capsule, before being released by the at least one holding means, has no mechanical contact with one or more of the first and the second brewing chamber halves in the intermediate position (See Fig. 4).
In regard to claim 19, Gugerli discloses a brewing unit for a beverage preparation machine, wherein the brewing unit comprises a control means which, upon closing of the brewing chamber, cooperates with the at least one holding means in such a way that the capsule is released (see Figs. 4 and 8).
In regard to claims 20, 28, 30-32, 36 and 38-40, Gugerli discloses a brewing unit for a beverage preparation machine, wherein the at least one holding means is mounted pivotably about an axis or displaceably in an axial direction (See Fig.s 4 and 8).
In regard to claim 21, Gugerli discloses a brewing unit for a beverage preparation machine, wherein the at least one holding means is spoon-shaped (see Fig. 8). Spoon-shaped broadly meaning the interior of the holding member has a rounded edge.
In regard to claim 22, Gugerli discloses a brewing unit for a beverage preparation machine, wherein the at least one holding means is designed to receive the capsule without a flange. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
In regard to claim 23, Gugerli discloses a brewing unit for a beverage preparation machine, wherein the first and second holding means laterally enclose the capsule in the intermediate position along an area around the capsule, wherein a smallest distance between the first and second holding means corresponds to a maximum of 90% of a diameter of the capsule in an area of embracing the capsule (See Figs. 4-8).
In regard to claims 24, 29 and 37, Gugerli discloses a brewing unit for a beverage preparation machine, wherein the first and second holding means are biased against each other on an axis by means of a spring element 13 (See Figs. 4-8).
Conclusion
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
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