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 § 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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1, 4-6, 8-12, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Andreae et al. US 2017/0008694 in view of Anghileri US 2017/0050799, Carlyle et al. US 2020/0102677, Asayama et al. US 2002/0012759, Kruger et al. US 2013/0243910, Empl et al. US 2015/0298898, and Kick et al. US 2022/0212861.
Regarding Claim 1, Andreae et al. discloses a capsule (capsule 11) comprising a capsule body (housing 12) with a sidewall (frustoconical peripheral wall 13) (‘694, Paragraph [0059]) and a bottom wall defining a chamber, the chamber having an opening (opening closed by 18) opposite to the bottom wall with respect to the chamber wherein the sidewall and the bottom wall are made from a compostable multilayered sheet material having a moisture and oxygen barrier function (‘694, Paragraph [0007]). The compostable multilayered sheet material comprises a primary sheet layer (protective layer 19) made of a formable cellulose based material and one or more secondary layers (PLA layer 15, PVOH layer 17) comprising at least a moisture barrier layer (PLA layer 15) to provide the moisture barrier function (‘694, FIG. 4) (‘694, Paragraphs [0061]-[0062]). The primary sheet layer is made of a paper based material (‘694, Paragraph [0026]).
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Andreae et al. is silent regarding the primary sheet layer has a grammage between 100 g/m2 to 400 g/m2 and an elongation at its breaking point of at least 2%.
Anghileri discloses capsule (container 2) comprising a paper or paperboard paper material exhibiting a grammage comprising between 30 and 450 g/m2 (‘799, Paragraph [0158]), which encompasses the claimed paper based material layer having a grammage of between 100 g/m2 to 400 g/m2.
Both Andreae et al. and Anghileri are directed towards the same field of endeavor of beverage capsules used in a beverage preparation machine for preparing beverages. Both beverage capsules of Andreae et al. and Anghileri are made of paper based materials. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the paper based layer of the beverage capsule of Andreae et al. to have the claimed grammage as taught by Anghileri since where the claimed paper layer grammage falls within paper layer grammages disclosed by the prior art, a prima facie case of obviousness exists in view of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05.I.). Furthermore, Carlyle et al. discloses a cellulose fiber fabric used to make coffee filters and coffee bags and cartridge filters (‘677, Paragraph [0047]) wherein the cellulose fiber fabric has its physical properties adjusted such as grammage (‘677, Paragraph [0130]). Differences in the grammage of the layers of the beverage capsule will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such grammage of the layers of the beverage capsule is critical. 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 in view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.I.). Carlyle et al. teaches that there was known utility in the beverage container art to adjust the grammage properties of coffee containers.
Further regarding Claim 1, Andreae et al. modified with Anghileri and Carlyle et al. is silent regarding the primary sheet being configured such that it has an elongation at its breaking point of at least 2%.
Asayama et al. discloses a molding base paper used as a material for various packing vessels for foods (‘759, Paragraph [0001]) which molding base paper is a multilayer paper in a multilayer structure comprising more than two layers (‘759, Paragraph [0078]) wherein the molding base paper has a basis weight in the range of 100 to 500 g/m2 (‘759, Paragraph [0079]) wherein the molding base paper has an elongation at break of at least 2.0% (‘759, Paragraph [0062]), which overlaps the claimed primary sheet layer made of a paper based material having an elongation at break of at least 2.0%. Asayama et al. also discloses the multilayer paper has a low density layer used as an intermediate layer and high density layers used as outer layers sandwiching the intermediate layer to create a resultant base paper that is bulky and has a high stiffness which high density layer is made of kraft pulp to make the resultant base paper having well balanced strength, elongation, stiffness, and compressibility (‘759, Paragraph [0082]).
Both modified Andreae et al. and Asayama et al. are directed towards the same field of endeavor of beverage capsules used in a beverage preparation machine. Both beverage capsules of modified Andreae et al. and Asayama et al. are made of a paper based material. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beverage capsule of modified Andreae et al. and construct the paper based layer to have the claimed elongation at breaking point as taught by Asayama et al. since where the claimed elongation at break of the paper layer falls within elongation at break of the paper layer disclosed by the prior art, a prima facie case of obviousness exists in view of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05.I.). Furthermore, differences in the elongation at break of the paper layers of the beverage capsule will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such elongation at break of the paper layers of the beverage capsule is critical. 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 in view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.I.). One of ordinary skill in the art would adjust the elongation at break of the paper layers of modified Andreae et al. based upon the desired strength, elongation, stiffness, and compressibility as taught by Asayama et al. (‘759, Paragraph [0082]).
Further regarding Claim 1, Andreae et al. modified with Anghileri, Carlyle et al., and Asayama et al. is silent regarding the primary sheet or the one or more secondary layers comprising at least one base layer configured to provide a reduced pore size, air permeability, and surface roughness in comparison to another layer of the compostable multilayered material on which the at least one base layer is applied.
Kruger et al. discloses a capsule comprising a bottom wall made of a multilayered laminated material having a first layer (first felt layer 202) and a second layer (second felt layer 203) with two different pore sizes relative to the other layer (‘910, FIG. 3B) (‘910, Paragraphs [0011] and [0030]).
Both Andreae et al. and Kruger et al. are directed towards the same field of endeavor of beverage capsules used in a beverage preparation machine for preparing beverages. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beverage capsule of Andreae et al. and construct at least one base layer having a different pore size relative to another layer of the sheet material on which the base layer is applied as taught by Kruger et al. in order to achieve effective filtering on the side facing the beverage substance (‘910, Paragraph [0009]).
Further regarding Claim 1, Andreae et al. modified with Anghileri, Carlyle et al., Asayama et al., and Kruger et al. is silent regarding the primary sheet layer or the one or more secondary layers comprising at least one base layer which is configured to provide a reduced air permeability and surface roughness in comparison to another layer of the compostable multilayered sheet material on which the base layer is applied.
Empl et al. discloses a capsule comprising textile fabrics having differing air permeabilities wherein the change in air permeabilities results in different sensory properties (‘898, Paragraph [0191]).
Both modified Andreae et al. and Empl et al. are directed towards the same field of endeavor of beverage capsules used in a beverage preparation machine for preparing beverages. Kruger et al. teaches the capsule having multiple layers wherein each individual layer has different properties relative to an adjacent layer. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beverage capsule of modified Andreae et al. and construct at least one base layer having a different air permeability in comparison to another layer of the sheet material on which the base layer is applied since Empl et al. teaches that the air permeability influences the sensory properties of the beverage that is formed (‘898, Paragraph [0191]).
Further regarding Claim 1, Andreae et al. modified with Anghileri, Carlyle et al., Asayama et al., Kruger et al. and Empl et al. is silent regarding the primary sheet layer or the one or more secondary layers comprising at least one base layer which is configured to provide a reduced surface roughness in comparison to another layer of the sheet material on which the base layer is applied.
Kick et al. discloses a capsule (‘861, Paragraph [0008]) comprising a cover having different surface roughnesses (‘861, Paragraph [0011]).
Both modified Andreae et al. and Kick et al. are directed towards the same field of endeavor of beverage capsules used in a beverage preparation machine for preparing beverages. Kruger et al. teaches the capsule having multiple layers wherein each individual layer has different properties relative to an adjacent layer. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beverage capsule of modified Andreae et al. and construct at least one base layer having a different surface roughness in comparison to another layer of the sheet material on which the base layer is applied since Kick et al. teaches that there was known utility in the beverage capsule art to adjust the surface roughnesses of various portions of the beverage capsule.
Further regarding Claim 1, the limitations “for preparing a beverage in a beverage preparation machine” and “for containing a substance for the preparation of the beverage” are seen to be recitations regarding the intended use of the “capsule.” In this regard, applicant’s attention is invited to MPEP § 2114.I. and MPEP § 2114.II. which states features of an apparatus may be recited either structurally or functionally in view of In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima facie case of anticipate on or obviousness, the examiner should explain that the prior art structure inherently possess the functionally defined limitations of the claimed apparatus in view of In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40,100 USPQ2d 1433, 1440 (Fed. Cir. 2011). The burden then shifts to applicant to establish that the prior art does not possess the characteristic relied on in view of In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432; In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 228 (CCPA 1971). Additionally, apparatus claims cover what a device is, not what a device does in view of Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claimed in view of Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Furthermore, if the prior art structure is capable of performing the intended use, then it meets the claim. Nevertheless, Andreae et al. discloses the capsule being used to prepare a beverage in a beverage preparing machine (‘694, Paragraphs [0001] and [0071]) and the chamber containing a substance (coffee) for preparing a beverage (‘694, Paragraph [0055]).
Regarding Claim 4, Andreae et al. discloses the primary sheet layer (protective layer 19) comprising the oxygen barrier function (‘694, Paragraph [0062]).
Regarding Claim 5, Andreae et al. discloses the secondary layers comprising an oxygen barrier layer (PVOH layer 17) for providing the oxygen barrier function which is provided on an opposite side to the primary sheet layer (protective layer 19) with respect to the moisture barrier layer (PLA layer 15) (‘694, FIG. 4) (‘694, Paragraphs [0060]-[]0061]).
Regarding Claim 6, Andreae et al. discloses the secondary layers comprises an adhesive to weld together the material layers of the laminate (‘694, Paragraphs [0018] and [0023]). Applicant discloses the masking layer may be a sealant (Specification, Page 7, lines 15-21). Therefore, the adhesive that welds together the material layers of the laminate reads on the claimed masking layer in view of applicant’s disclosure.
Regarding Claim 8, Andreae et al. discloses the at least one base layer being provided by the formable cellulose based material of the primary sheet layer (protective layer 19) (‘694, FIG. 4) (‘694, Paragraph [0062]).
Regarding Claim 9, Andreae et al. discloses an outside surface of the capsule body being defined by the one or more secondary layers (carrier layer) (‘422, Paragraphs [0011] and [0056]).
Regarding Claim 10, Andreae et al. discloses the bottom wall (end side 12a) being separate from the sidewall (frustoconical peripheral sidewall 12b) wherein the capsule body (housing 12) comprises a rim portion (engaging edge 12c) at the opening that protrudes laterally away from the opening (‘422, FIG. 2) (‘422,Paragraph [0042]).
Regarding Claim 11, Andreae et al. discloses the bottom wall (end side 12a) comprising an attachment portion (portion of end side 12a that connects to frustoconical peripheral sidewall 12c) for attaching the bottom wall (end side 12a) to the sidewall (frustoconical peripheral sidewall 12b) (‘422, FIG. 2).
Regarding Claim 12, Andreae et al. discloses the bottom wall (end side 12a) being flush with a longitudinal end section of the sidewall (frustoconical peripheral sidewall 12b) opposite to the opening with respect to the chamber (‘422, FIG. 2).
Regarding Claims 16-17, Anghileri discloses capsule (container 2) comprising a paper or paperboard paper material exhibiting a grammage comprising between 30 and 450 g/m2 (‘799, Paragraph [0158]), which encompasses the claimed paper based material layer having a grammage of between 100 g/m2 to 244 g/m2 or between 100 g/m2 to 130 g/m2. Both Andreae et al. and Anghileri are directed towards the same field of endeavor of beverage capsules used in a beverage preparation machine for preparing beverages. Both beverage capsules of Andreae et al. and Anghileri are made of paper based materials. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the paper based layer of the beverage capsule of Andreae et al. to have the claimed grammage as taught by Anghileri since where the claimed paper layer grammage falls within paper layer grammages disclosed by the prior art, a prima facie case of obviousness exists in view of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05.I.). Furthermore, Carlyle et al. discloses a cellulose fiber fabric used to make coffee filters and coffee bags and cartridge filters (‘677, Paragraph [0047]) wherein the cellulose fiber fabric has its physical properties adjusted such as grammage (‘677, Paragraph [0130]). Differences in the grammage of the layers of the beverage capsule will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such grammage of the layers of the beverage capsule is critical. 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 in view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.I.). Carlyle et al. teaches that there was known utility in the beverage container art to adjust the grammage properties of coffee containers.
Regarding Claims 18-19, Asayama et al. discloses a molding base paper used as a material for various packing vessels for foods (‘759, Paragraph [0001]) which molding base paper is a multilayer paper in a multilayer structure comprising more than two layers (‘759, Paragraph [0078]) wherein the molding base paper has a basis weight in the range of 100 to 500 g/m2 (‘759, Paragraph [0079]) wherein the molding base paper has an elongation at break of at least 2.0% (‘759, Paragraph [0062]), which encompasses the claimed primary sheet layer made of a paper based material having an elongation at break of between 2% and 20% or between 5% and 10%. Asayama et al. also discloses the multilayer paper has a low density layer used as an intermediate layer and high density layers used as outer layers sandwiching the intermediate layer to create a resultant base paper that is bulky and has a high stiffness which high density layer is made of kraft pulp to make the resultant base paper having well balanced strength, elongation, stiffness, and compressibility (‘759, Paragraph [0082]). Both modified Andreae et al. and Asayama et al. are directed towards the same field of endeavor of beverage capsules used in a beverage preparation machine. Both beverage capsules of modified Andreae et al. and Asayama et al. are made of a paper based material. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beverage capsule of modified Andreae et al. and construct the paper based layer to have the claimed elongation at breaking point as taught by Asayama et al. since where the claimed elongation at break of the paper layer falls within elongation at break of the paper layer disclosed by the prior art, a prima facie case of obviousness exists in view of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05.I.). Furthermore, differences in the elongation at break of the paper layers of the beverage capsule will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such elongation at break of the paper layers of the beverage capsule is critical. 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 in view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.I.). One of ordinary skill in the art would adjust the elongation at break of the paper layers of modified Andreae et al. based upon the desired strength, elongation, stiffness, and compressibility as taught by Asayama et al. (‘759, Paragraph [0082]).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Andreae et al. US 2017/0008694 in view of Anghileri US 2017/0050799, Carlyle et al. US 2020/0102677, Asayama et al. US 2002/0012759, Kruger et al. US 2013/0243910, Empl et al. US 2015/0298898, and Kick et al. US 2022/0212861 as applied to claim 1 above in further view of Chen et al. US 2019/0062998.
Regarding Claim 3, Andreae et al. discloses the capsule body comprising a cellulose (‘694, Paragraph [0062]) and a moisture oxygen barrier layer (‘694, Paragraph [0013]). However, Andreae et al. modified with Anghileri, Carlyle et al., Asayama et al., Kruger et al., Empl et al., and Kick et al. is silent regarding the moisture barrier layer comprising nanocellulose.
Chen et al. discloses a capsule (coffee capsule) comprising a capsule body (capsule main body CMB) made of molded pulp (‘998, Paragraphs [0006] and [0096]) comprising microcellulose or nanocellulose having moisture barrier properties (reduced oxygen permeability and resistance to water) (‘998, Paragraph [0057]).
Both modified Andreae et al. and Chen et al. are directed towards the same field of endeavor of beverage capsules used in a beverage preparation machine for preparing beverages. Both beverage capsules of modified Andreae et al. and Chen et al. are made out of cellulose based materials. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beverage capsule of modified Andreae et al. and construct the moisture barrier layer out of nanocelluose and/or microcelluose as taught by Chen et al. since the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Chen et al. teaches that there was known utility in the beverage capsule art to construct the capsule body out of the claimed nanocellulose and/or microcellulose materials which provides moisture barrier properties of reduced oxygen permeability and resistance to water (‘998, Paragraph [0057]).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Andreae et al. US 2017/0008694 in view of Anghileri US 2017/0050799, Carlyle et al. US 2020/0102677, Asayama et al. US 2002/0012759, Kruger et al. US 2013/0243910, Empl et al. US 2015/0298898, and Kick et al. US 2022/0212861 as applied to claim 1 above in further view of Trombetta et al. US 2013/0209618.
Regarding Claim 13, Andreae et al. modified with Anghileri, Carlyle et al., Asayama et al., Kruger et al., Empl et al., and Kick et al. is silent regarding attaching a separate strip to one of the ends sections of the sidewall.
Trombetta et al. discloses a capsule (container 100) comprising a capsule body (body 102) with a sidewall (sidewall 110) and a bottom wall (end wall 112) defining a chamber (interior space 114), the chamber (interior space 114) having an opening (opening 116) opposite to the bottom wall (end wall 112) with respect to the chamber (interior space 114) (‘618, FIGS. 11-12) (‘618, Paragraphs [0060]-[0061]) wherein the sidewall (sidewall 110) and the bottom wall (112) is made from a multilayered sheet (multilayer material 20) material having a moisture and oxygen barrier (barrier layer 22) function (‘618, FIGS. 2) (‘618, Paragraphs [0040]-[0041]). Trombetta et al. further discloses the sidewall (sidewall 110) being formed by securing opposite end sections of the multilayered sheet material to each other by overlapping the ends sections and attaching a separate strip (gasket strips 52, 54) to one of the end sections (‘618, FIG. 9) (‘618, Paragraphs [0058]-[0059]).
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Both modified Andreae et al. and Trombetta et al. are directed towards the same field of endeavor of beverage capsules used in a beverage preparation machine for preparing beverages. Both beverage capsules of modified Andreae et al. and Trombetta et al. are made of multilayered laminated materials. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beverage capsule of modified Andreae et al. and construct the sidewall of the beverage capsule by attaching a separate strip to one of the end sections of the sheet material to each other which end sections are overlapped and attached via a separate strip since Trombetta et al. teaches that the claimed attachment of a separate strip was a known and conventional way to construct the sidewall of a beverage capsule. Furthermore, the configuration of the claimed means of constructing the sidewall of a beverage capsule is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed means of constructing the sidewall of a beverage capsule was significant in view of In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (MPEP § 2144.04.IV.B.).
Further regarding Claim 13, the limitations “folding the separate strip over a front face of the one end section or abutting the end sections on their respective front faces on a same side with respect to the chamber so as to extend each separate on each of the end sections over the abutting front faces” are product by process limitations. Even though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process in view of In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP § 2113.I.). The prior art combination of Andreae et al. modified with Trombetta et al. teaches attaching a separate strip to overlapping end sections of the sheet material to form the sidewall. The prior art combination of Andreae et al. modified with Trombetta et al. is materially indistinguishable from the claimed process of making the sidewall of the beverage capsule since the prior art combination of Andreae et al. modified with Trombetta et al. already teaches a separate strip used to attach overlapping ends sections of the sheet material to form the sidewall.
Response to Arguments
Examiner notes that the previous Claim Objections have been withdrawn in view of the amendments.
Examiner notes that the previous indefiniteness rejections under 35 USC 112(b) have been withdrawn in view of the amendments.
Examiner notes that the previous anticipation rejections under 35 USC 102 have been withdrawn in view of the amendments.
Examiner notes that Andreae et al. US 2017/0158422 is not being relied upon in any of the current rejections.
Applicant's arguments filed July 8, 2026 with respect to the obviousness rejections under 35 USC 103(a) have been fully considered but they are not persuasive. Applicant has amended independent Claim 1 to incorporate the limitations of previous Claims 2 and 7. The obviousness rejections to modified Andreae et al. US 2017/0008694 have been amended to incorporate the secondary references of previous Claims 2 and 7 as necessitated by amendment.
Applicant argues on Page 7 of the Remarks that Andreae et al. ‘694 fails to disclose or suggest the primary sheet layer having a grammage between 100 g/m2 to 400 g/m2 wherein an elongation of the primary sheet layer at a breaking point of the primary sheet layer is at least 2%. Applicant contends that the Office fails to provide any reason that would have motivated the skilled artisan to modify the primary reference Andreae et al. ‘694 with the secondary reference Anghileri to modify the grammage properties of the primary sheet layer. Applicant continues that Anghileri is relied upon for the disclosure of a paper or paperboard paper material exhibiting a grammage comprising between 30 and 450 g/m2. Carlyle is relied upon for the disclosure of a cellulose fiber fabric used to make coffee filters, coffee bags, and cartridge filters and adjusting the physical properties of the filter material such as grammage. Applicant asserts that any inquiry into unexpected results is only relevant after the Patent Office has established a prima facie obvious rejection and that the Patent Office allegedly did not carry its initial burden. Applicant contends on Page 8 of the Remarks that Carlyle et al. teaches that there was known utility in the beverage container art to adjust the grammage properties of coffee containers is a broad characterization and that Carlyle is directed to manufacturing nonwoven cellulose fiber fabric 102 with a relatively low basis weight of down to 10 g/m2 or lower to obtain filaments of fibers 108 with a very small diameter, e.g. 3 to 5 µm or less. Applicant continues that the nonwoven cellulose fiber fabric used as coffee filters or coffee bags is a filter material that is not a coffee container equivalent to Andreae et al. ‘694 or Anghileri’s coffee capsules designed to exhibit tightness against hot fluids pressurized up to 20 bar. Applicant continues that if the high pressure pods of Andreae et al. ‘694 or Anghileri were modified by the teachings of Carlyle forming a comparatively weaker filter fabric the pods of Andreae et al. ‘694 or Angileri would no longer be capable of withstanding the higher pressures within the coffee brewing machine. Applicant concluded that one of ordinary skill in the art would not incorporate the teachings of Carlyle’s comparatively weaker filter paper into either Andreae et al. ‘694 or Angileri’s high pressure pods because doing so would improperly change and allegedly destroy the basic principle of purpose of their pods to be used in a high pressure coffee machine.
Examiner argues that Claim 1 does not specify any particular pressure conditions in which the capsule operates. Claim 1 only recites “for preparing a beverage in a beverage preparation machine.” Applicant argues limitations that are not commensurate in scope with the claimed invention since Claim 1 does not specify any particular limitations regarding the pressure conditions of the capsule. Additionally, the pressure conditions (which again are not recited) are intended use limitations that does not impart additional structure to the claimed capsule product. The prior art need only be capable of performing intended use limitations of operating at certain pressures (which pressures again are not recited). Additionally, the primary reference Andreae et al. ‘694 discloses known prior art capsules are capable of passing heated water at a relatively high pressure, e.g. 6-20 bar into the capsule holder (‘694, Paragraph [0002]). However, Andreae et al. ‘694 does not explicitly disclose that the capsule of Andreae et al. is to be used exclusively in high pressure environments. Andreae et al. broadly teaches passing hot water through the capsule (‘694, Paragraph [0072]) and does not require the capsule to only operate under high pressure conditions. Applicant points to the high pressure environment embodiment disclosed by the secondary reference of Anghileri. However, the rejection is based upon the combination of the primary reference of Andreae et al. ‘694 modified with several secondary references. The secondary reference of Anghileri is being relied upon to render obvious the limitations regarding a capsule having a layer made of a paper based material having the claimed grammage range. The secondary reference of Carlyle is being relied upon to teach adjusting the grammage properties of coffee containers. The secondary reference of Carlyle is not being relied upon to modify the secondary reference of Anghileri. Rather, the secondary reference of Carlyle is alternatively being relied upon to modify the primary reference of Andreae et al. ‘694 to render obvious the limitations regarding the claimed grammage range. In response to applicant's arguments 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). Furthermore, Anghileri already teaches overlapping ranges of the claimed grammage ranges of a paper based layer. Additionally with respect to the unclaimed pressure conditions, Penner et al. teaches that it was known in the beverage capsule art that beverage capsules made of paper based materials are capable of operating at lower pressures (‘221, Paragraph [0002]). Therefore, these arguments are not found persuasive.
Applicant argues on Pages 8-9 of the Remarks that Asayama is being relied upon for its disclosure of a multilayer paper for holding food comprising more than two layers with a basis weight in the range of 100 to 500 g/m2 and an elongation break point of at least 2.0%. Applicant alleges that the reliance on Asayama is improper. Applicant asserts that Andreae et al. and Asayama et al. are not both directed towards the same field of endeavor o beverage capsules used in a beverage preparation machine. Applicant asserts that even if the molded base paper of Asayama is used as a material for packing foods or liquids, Asayama fails to disclose or contemplate that such base material is suitable for use in a high pressure environment such as the high pressure coffee machines of Andreae et al. ‘694 and Anghileri and that there is no teaching in either Andreae ‘694, Anghileri, or Carlyle to look to any molded base paper used in the food packing industry and equip the same as a primary sheet layer of a capsule for use in high pressure coffee machines.
Examiner again argues that Claim 1 does not specify any particular pressure conditions in which the capsule operates. Claim 1 only recites “for preparing a beverage in a beverage preparation machine.” Applicant argues limitations that are not commensurate in scope with the claimed invention since Claim 1 does not specify any particular limitations regarding the pressure conditions of the capsule. Additionally, the pressure conditions (which again are not recited) are intended use limitations that does not impart additional structure to the claimed capsule product. The prior art need only be capable of performing intended use limitations of operating at certain pressures (which pressures again are not recited). Additionally, the primary reference Andreae et al. ‘694 discloses known prior art capsules are capable of passing heated water at a relatively high pressure, e.g. 6-20 bar into the capsule holder (‘694, Paragraph [0002]). However, Andreae et al. ‘694 does not explicitly disclose that the capsule of Andreae et al. is to be used exclusively in high pressure environments. Andreae et al. broadly teaches passing hot water through the capsule (‘694, Paragraph [0072]) and does not require the capsule to only operate under high pressure conditions. Additionally, the primary reference Andreae et al. teaches the beverage container being used in hot water temperature conditions (‘694, Paragraph [0072]). The secondary reference of Asayama et al. teaches a use of the paper based food container used for soups and various other purposes (‘759, Paragraph [0022]). Soups are known in the art to be conventionally used as a hot edible liquid. The secondary reference of Asayama et al. that teaches a molded paper based food container storing soups, which are known in the art to be capable of being hot, would be capable of withstanding the hot temperature conditions disclosed by the primary reference of Andreae et al. Therefore, these arguments are not found persuasive.
Applicant argues on Pages 9-11 of the Remarks that the secondary references of Kruger, Empl, and Kick fails to suggest or disclose the limitations regarding the primary sheet layer or the one or more secondary layers comprising at least one base layer which is configured to provide a reduced pore size, air permeability, and surface roughness in comparison to another layer of the compostable multilayered sheet material on which the at least one base layer is applied. Applicant asserts that the reliance on Kruger is allegedly improper because the benefits alleged would not improve the pod of Andreae et al. ‘694 since the pod of Andreae ‘694 does not filter the coffee and rather implements a film/foil 18 that is impermeable to water and oxygen. Applicant continues that the PLA layer 15 and the film/foil 18 together encloses the PVOH layer 17 completely wherein the PLA layer 15 and the film/foil 18 acts mainly as a moisture barrier whereas the PVOH layer 17 acts as an oxygen barrier and that the film/foil 18 bulges before being perforated by a perforation plate which forms part of the capsule holder in which the resulting coffee is passed out of the capsule and collected in a cup. Applicant contends that the pod of Andreae et al. does not filter the coffee and that even if the first felt layer and second felt layer provides the benefit of effectively filtering one of ordinary skill in the art would not incorporate these teachings into the pod of Andreae et al. ‘694 which does not filter the coffee since doing so would amount of extra work and a greater expense for no apparent reason and points to Example 3 in MPEP 2143(A) with respect to In re Omeprazole. Applicant continues that no evidence or reasoning has been provided by the Office that the skilled artisan would have had any expectation that the features disclosed by Kruger would have conferred any particular desirable property for the pod of Andreae et al. ‘694, which is not designed to filter coffee.
Examiner argues the secondary reference of Kruger is being relied upon to teach the limitations regarding a multilayered sheet material having one layer having a reduced pore size relative to another layer having an advantage of effectively filtering on the side facing the beverage substance. The primary reference of Andreae et al. does not explicitly preclude the presence of a filtering element. Claim 1 of the instant invention recites the transitional phrase “comprising,” which is inclusive or open ended and does not exclude additional, unrecited elements or methods steps in view of Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) (MPEP § 2111.03.I.). The claims do not preclude the presence of any filtering element. The multilayered sheet material having one layer having a reduced pore size relative to another layer disclosed by the secondary reference of Kruger for purposes of effective filtering are not precluded by the claims. Therefore, this argument is not found persuasive.
Applicant asserts on Pages 11-12 of the Remarks that Empl is being relied upon to teach textile fabrics having differing air permeabilities wherein the change in air permeabilities results in different sensory properties. Applicant argues that Empl’s textile fabric is not part of a sidewall or a bottom wall of a capsule body but rather the textile fabric is simply placed into the capsule base body. Applicant contends that it is not identified which layer of modified Andreae et al. ‘694 will be supplemented with or replaced by the textile fabrics of Empl.
Examiner argues the primary reference of Andreae et al. teaches the capsule being made of paper and/or cardboard and synthetic biodegradable polymers (‘694, Paragraph [0026]). The secondary reference of Empl teaches textile fabrics having a flat paper thin form for generating sufficient pressure to extract cream forming substances (‘898, Paragraph [0096]) wherein the textile fabrics have different air permeabilities which change in air permeabilities results in different sensory properties (‘898, Paragraph [0191]). The primary reference of Andreae et al. already teaches the capsule being made of paper. Therefore, the paper textile fabric of Empl used in making coffee capsules have textile fabrics with differing air permeabilities would be suitable for the paper based capsule of Andreae et al. Therefore, this argument is not found persuasive.
Applicant asserts on Pages 12-14 of the Remarks that Kick is being relied upon to teach the limitations regarding providing a reduced surface roughness in comparison to another layer of the sheet material on which the base layer is applied. Applicant contends it is unable to ascertain how the alleged teachings of Kick are to be incorporated and that one should not use hindsight reconstruction to pick and choose among isolated disclosures in the prior art to deprecate the claimed invention. Applicant asserts that the obviousness rejection is based on a piecemeal analysis of the references of Kruger, Empl, and Kick and also the claims.
Examiner maintains that Kick et al. discloses a capsule (‘861, Paragraph [0008]) comprising a cover having different surface roughnesses (‘861, Paragraph [0011]). Both modified Andreae et al. and Kick et al. are directed towards the same field of endeavor of beverage capsules used in a beverage preparation machine for preparing beverages. Kruger et al. teaches the capsule having multiple layers wherein each individual layer has different properties relative to an adjacent layer. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beverage capsule of modified Andreae et al. and construct at least one base layer having a different surface roughness in comparison to another layer of the sheet material on which the base layer is applied since Kick et al. teaches that there was known utility in the beverage capsule art to adjust the surface roughnesses of various portions of the beverage capsule. In response to applicant's arguments 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). Therefore, these arguments are not found persuasive.
Examiner notes that applicant’s comments on Pages 14-15 of the Remarks with respect to Claims 3 and 13 does not specifically and distinctly point out the supposed errors of the Office Action.
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 ERICSON M LACHICA whose telephone number is (571)270-0278. The examiner can normally be reached M-F, 8:30am-5pm, EST.
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/ERICSON M LACHICA/Examiner, Art Unit 1792
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