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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, “the flange portion includes a treatment region . . . that has a reduced thickness by at least 30% compared to a portion that is not treated” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 2, 4 – 9, and 11 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.
Regarding claims 1, 9 and 11, it is unclear if it is the flange portion or the treatment region that that would have a reduced thickness. For the purposes of examination the treatment region of the wood pulp-based has been interpreted as having a reduced thickness as compared to a portion of the wood pulp-based material that has not been treated.
Regarding claims 1, 9, and 11, without knowing the thickness of an untreated portion of the wood pulp-based material it is unknown a how a thickness reduction of 30% could possibly be determined.
Regarding claim 7, if it is the entirety of the flange that would comprise the treatment region it is unknown a how a thickness reduction of 30%, much less any thickness could possibly be determined since there would be no untreated portion with which to make a comparison.
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, 2, 4 – 5 and 7 – 9 are rejected under 35 U.S.C. 103 as being unpatentable over Wolf-Rooney WO 2018/002223 (FI 3400184 is the English translation thereof) in view of Kumamoto et al. EP 1 126 083 in view of Mondillon et al. US 2018/0178972.
Regarding claims 1 and 2, Wolf-Rooney discloses a container capable of use with a machine capable of preparing a beverage and/or foodstuff or a precursor thereof which container comprises a storage portion (lower part 11) capable of containing a precursor material (coffee) (page 2, ln 25), a closing member (lid 12) to close the storage portion, a flange portion (19) (page 6, ln 6 – 7) connecting the storage portion and the closing member (page 5, ln 20 – 24), and at least part of the flange portion is formed of a wood pulp-based material (page 3, ln 1 – 5). Wolf-Rooney also discloses the container, which would include the flange, would be fibre molded (page 5, ln 7 – 12). Further Wolf-Rooney discloses the flange portion would comprise a treatment region and that an O-ring “type” seal would be provided thereon on the underside, that is the lower surface of the flange (page 5, line 2 – 8) which O-ring “type” seal would necessarily be thicker than the surrounding surface of the flange, which is to say that the flange surrounding surface would obviously have a reduced thickness which reduced thickness is seen to comprise a treatment region.
Claim 1 differs from Wolf-Rooney in the wood pulp-based material includes a treatment region that comprises a glassified wood pulp-based material.
Claim 2 differs from Wolf-Rooney in glassification of the treatment region includes at least one material property compared to a portion of the wood pulp-based material that is not treated consisting of reduced water absorbency, increased stiffness, and/or and increased brittleness.
First it is noted that applicant defines the term “glassified” as being “characterized by one or more of the following material properties: a glass transition temperature above ambient temperature; a harder material; a more brittle material; a material with low energy adsorption before fracture; a thinner section material; a material with reduced fiber interstices; reduced water adsorption; increased stiffness”. (specification page 2, paragraph 4).
Kumamoto discloses that it was conventional and well established in the art to employ wood-pulp to form, that is mold, fibre, i.e., would pulp-based containers capable of storing a beverage which containers comprise an opening, a body, a bottom (paragraph [0006]) and would be formed, i.e., molded from 100% pulp (paragraph [0034]). Kumamoto also discloses that the desired properties of containers formed from wood-pulp would be reduced water absorbency (inhibits liquid penetration), increased stiffness (suitable rigidity) (paragraph [0041]), and increased brittleness (surface tension) (paragraph [0043] – [0044]). Kumamoto further discloses the thickness of the body would vary depending on the specific application(decided according to use), i.e., the intended use of the container (paragraph [0107] and [0137]), which is to say that Kumamoto is disclosing the region of the container subjected to glassification, i.e., the treatment as claimed and thickness is seen to be a result effective variable which the ordinarily skilled artisan would conventionally and routinely optimize absent compelling evidence to the contrary (MPEP § 2144.05 II).
Mondillon discloses that it was conventional and well established in the art to employ plant based materials to form containers capable of preparing a beverage and/or a foodstuff or a precursor thereof by molding (paragraph [0101]) which containers comprise an opening, a body, a bottom (paragraph [0009] – [0010] and Fig. 1 and 2). Mondillon also discloses that the desired properties of containers formed from plant based materials would include increased brittleness (breakable, rupturable, or punchable) (paragraph [0085]), and reduced thickness (smaller dimensions of the edges, 61 – 64) (paragraph [0087] – [0088] and fig. 10 – 12) which are applicant’s disclosed properties identifying the container plant based material was subjected to glassification. Mondillon is employing plant based material to form a container capable of storing a beverage and/or foodstuff or a precursor thereof for the art recognized function of creating a biodegradable/compostable container having increased brittleness and reduced thickness to more easily punch, i.e., pierce the container and provide increased stiffness (strengthening rib) in areas that would not be pierced (paragraph [0061]) all of which are applicant’s reasons for doing so as well. To therefore modify Wolf-Rooney given the prior art taken as a whole, that is, taking into account the teachings of Kumamoto with respect to providing a wood pulp-based container with properties based on the particular application and Mondillon’s teachings of providing a biodegradable/compostable container having increased brittleness and reduced thickness to more easily pierce the container and provide increased stiffness in areas that would not be pierced would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
Claim 1 now further recites the flange portion has a reduced thickness by at least 305 compared to a portion that is not treated. Wolf-Rooney in view of Kumamoto in view of Mondillon disclose a treatment region (sections 66, 67, and 68) would have a reduced thickness (localized reduction in the thickness of the body 2) (‘972, paragraph [0088]). Once it was known to provide a treatment region that has a reduced thickness compared to portions of said container that would not be treated it is not seen that patentability would be predicated on the amount by which the thickness would be reduced or at which region of said container the reduction would occur. Limitations relating to the thickness of the treatment region would not be sufficient to patentably distinguish over the prior art. The mere scaling up or down of a prior art treatment region capable of being so scaled, if such were the case, would not establish patentability in a claim to an old treatment region so scaled. Where the only difference between the prior art and the claimed container is a recitation of relative dimensions, i.e., a reduced thickness, of the claimed container and a container having the claimed reduced thickness would not perform differently than the prior art container, the claimed container is not seen to be patentably distinct from the prior art device. Nevertheless, Wolf-Rooney in view of Kumamoto in view of Mondillon disclose that it appears a treatment region of the container would have a reduced thickness by at least 30% compared to a portion that is not treated (area 660 has a thickness of zero or almost zero) (‘972, paragraph [0092] and fig. 11 – 14).
Further regarding the flange portion being formed by “fibre molding”, the limitation 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. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Wolf-Rooney, Kumamoto, and Mondillon disclose the container would be fibre molded.
Regarding claims 4, 5, and 7, Wolf-Rooney in view of Kumamoto in view of Mondillon disclose the flange would comprise an area of reduced thickness, a raised seal, i.e., a raised uncompressed area of reduced thickness arranged on a lower surface of the flange portion which is to say the treatment region is would be seen to constitute the lower surface of the flange portion not containing the raise seal area (provided on the underside of the flange) (‘184, page 5, line 2 – 8) (upper surface 82 free from protuberances 83) (‘972, paragraph [0100] and fig. 1, 6, and 9). Further regarding claims 5 and 7, since the treatment region is arranged as a seal around the flange it is obvious that in order to provide an effective seal the seal as well as the treatment region would necessarily be arranged as an annular ring central about an axis of rotation of the container which is to say that the entire flange portion would comprise the treatment region.
Regarding claim 8, Wolf-Rooney in view of Kumamoto in view of Mondillon are seen to disclose the treatment region comprises a portion of the storage portion that connects the flange portion is not treated (internal reinforcement 25) (‘972, paragraph [0066] and fig. 5). Regarding the portion of the storage portion that is not treated extending up to 5% of a total depth of the storage portion, once it was known to that a portion of the storage of the container that connects the flange that would have a depth it is not seen that patentability would be predicated on the particular depth of the storage potion that would not be treated absent strong and compelling evidence to the contrary. Limitations relating to the depth of the storage would not be sufficient to patentably distinguish over a prior art container. The mere scaling up or down of a prior art container depth capable of being scaled up or down, if such were the case, would not establish patentability in a claim to an old container depth so scaled. Where the only difference between the prior art container and the claims is a recitation of relative dimensions, in this case the depth, of the claimed container and a container having the claimed relative depth would not perform differently than the prior art container, the claimed container is not patentably distinct from the prior art container (MPEP § 2144.04 IV.A.).
Claim 9 is rejected over Wolf-Rooney in view of Kumamoto in view of Mondillon for the same reasons given above in the rejection of claim 1. Further regarding claim 9, Wolf-Rooney in view of Kumamoto in view of Mondillon disclose there would be a machine capable of preparing a beverage and/or a foodstuff or a precursor thereof which machine would provide heated water which heated water would be pressed under pressure into said container which container would be perforated, i.e., penetrated when inserted into the machine (‘184, page 5, ln 29 – 34). Since the machine to prepare a beverage and/or a foodstuff or a precursor thereof has a penetrator and provides water heated and under pressure to produce said beverage it is obvious that there would be a processing unit and electrical circuitry to control said processing unit.
Claims 6 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Wolf-Rooney WO 2018/002223 (FI 3400184 is the English translation thereof) in view of Kumamoto et al. EP 1 126 083 in view of Mondillon et al. US 2018/0178972 in view of Krϋger US 2024/0315482.
Regarding claim 6, as set forth Wolf-Rooney in view of Kumamoto in view of Mondillon discloses a container capable of use with a machine capable of preparing a beverage and/or a foodstuff or a precursor thereof which container comprises a treatment region on the flange of said container.
Claim 6 differs from Wolf-Rooney in view of Kumamoto in view of Mondillon in a machine-readable code is arranged on the treatment region.
Krϋger discloses a container capable of use with a machine capable of preparing a beverage and/or a foodstuff or a precursor thereof which container has a machine readable code on the flange of said container (bar code 6) (paragraph [0066] and fig. 2a, 2c). Krϋger is providing a machine readable code on the flange of said container for the art recognized function of controlling the preparation of a beverage based on the parameters set forth therein such as liquid volume and/or temperature (paragraph [0010] and 0012]) which is applicant’s reason for providing a machine readable code on the flange of the capsule, i.e., the treatment region, as well. To therefore modify Wolf-Rooney in view of Kumamoto in view of Mondillon and provide a machine readable code on the flange, i.e., the treatment region of the container as taught by Krϋger would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
Regarding claim 11, as set forth in the rejection of claim 1 Wolf-Rooney in view of Kumamoto in view of Mondillon discloses all the limitations of a container capable of use with a machine capable of preparing a beverage and/or a foodstuff or a precursor thereof which container comprises a treatment region on the flange of said container and in the rejection of claim 9 that there would be a machine provided which machine would allow for the preparation of a beverage which is to say the use of the machine to prepare a beverage from said container.
Claim 11 differs from Wolf-Rooney in view of Kumamoto in view of Mondillon in a machine-readable code is arranged on the treatment region of said container and reading said code to prepare a beverage, and/or a foodstuff or a precursor therefor therefrom.
Krϋger discloses a container capable of use with a machine capable of preparing a beverage and/or a foodstuff or a precursor thereof which container has a machine readable code on the flange of said container (bar code 6) (paragraph [0066] and fig. 2a, 2c). Krϋger is providing a machine readable code on the flange of said container for the art recognized function of controlling the preparation of a beverage based on the parameters set forth therein such as liquid volume and/or temperature (paragraph [0010] and 0012]) which is applicant’s reason for providing a machine readable code on the flange of the capsule, i.e., the treatment region, as well. To therefore modify Wolf-Rooney in view of Kumamoto in view of Mondillon and provide a machine readable code on the flange, i.e., the treatment region of the container as taught by Krϋger would have been an obvious matter of choice and/or design to the ordinarily skilled artisan. Once it was known to provide the container of Wolf-Rooney in view of Kumamoto in view of Mondillon with a code arranged on a flange portion of the container and that a machine capable of reading said code to produce a beverage from said container would be present it is seen that the method of preparing a beverage as claimed would have been obvious.
Response to Arguments
Applicant's arguments filed 02 June 2026 have been fully and carefully considered but they are not found persuasive.
Applicant urges that Wolf-Rooney does not teach or suggest that the flange portion includes a treatment region that has a reduced thickness by at least 30% compared to a portion that is not treated. Here it is noted that as set forth above The Office has determined the treatment region of the flange portion having a reduced thickness by at least 30% constitutes an issue of new matter.
Applicant urges that the O-ring of Wolf-Rooney would not be a part of the flange portion but is a separate piece added on to the flange portion. This urging is not deemed persuasive.
Wolf-Rooney describes the O-ring seal as of the O-Ring “type”. This in no way shape or form means the O-ring taught by Wolf-Rooney is a separate seal that is not part of the flange or the adjacent area thereof. The Office cannot find where Wolf-Rooney would suggest the O-ring would be a separate piece added to the flange portion and not molded in place. In fact Wolf-Rooney discloses that this “seal” is in particular provided on, that is to say, that said seal is a part of the underside of the flange area. As said ring is to provide a seal it would be obvious that this portion of the flange would not be treated as claimed in order to be able to act as said seal which is to say that the portion of the flange portion that would be treated would comprise a reduced thickness when compared thereto.
Applicant urges that Mondillon does not teach that the reduced thickness results in increased strength, that the strengthening ribs of Mondillon have a greater thickness (paragraph [0098]), and that the thickness of the capsule increases near the ribs (paragraph [0067]). Thus, Mondillon would not provide a rationale for modifying Wolf-Rooney in the way suggested by the Examiner. These urgings are not found persuasive.
Applicant points to the ribbed area of the capsule of Mondillon as shown in figure 10 when the rejections have been made based on the portion of the container of Mondillon above the ribs where no ribs are to be seen. The features to which the rejection above refers are clearly those as shown in figures 11 and 12 of Mondillon as is clearly evident in the rejection above.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to please telephone the Examiner.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/C.S./
Chaim SmithExaminer, Art Unit 1791 11 August 2026
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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