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.
The factual inquiries 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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Reitze et al. EP 3 517 458 (all citations refer the provided translation) in view of Kumamoto et al. EP 1 126 083 in view of Mondillon et al. US 2018/0178972.
Regarding claims 1 and 2, Reitze discloses a container (4/5) capable of being used with a machine that is capable of preparing a beverage and/or foodstuff or a precursor thereof, the container including a storage portion capable of containing a precursor material (starting material) (paragraph [0014]) and a closing member (11) to close the storage portion (paragraph [0043] and [0050] and fig. 1 and 2), at least part of the storage portion is formed of a wood pulp based material (lignocellulose) (paragraph [0057]) wherein the wood pulp based material includes a perforation region (flow section 18) which is treated (reduced thickness 19) (in particular smaller than 1 mm) which will facilitate comparatively easier perforation by a penetrator of the machine than a portion that is not treated (paragraph [0054] – [0055]).
With respect to the remaining recitations beginning “to facilitate comparatively easier perforation by a penetrator of the machine than a portion that it not treated” these are seen to be recitations regarding the intended use of the container.
In this regard applicant’s attention is invited to MPEP 2114 which states that “an apparatus must be distinguished from the prior art in terms of structure rather than function”. That is to say, apparatus claims cover what a device is, not what a device does. If the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and then further limitations merely state, for example, the purpose or intended use of the invention, rather than any distinct structural definition of any of the claimed invention’s structural limitations, then any limitations regarding the intended use of the device are of no significance to claim construction. 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 claim which Reitze certainly does. Further, if the prior art structure is capable of performing the intended use, then it meets the claim.
It is The Office’s position that the further limitations do not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. “to facilitate comparatively easier perforation by a penetrator of the machine than a portion that it not treated”, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art, that is Reitze and further that the prior art structure, which is identical and/or obvious in view of the prior art to that set forth in the present claims is capable of performing the recited purpose or intended use.
Claim 1 differs from Reitze in the wood pulp-based material includes a treatment region that comprises a glassified wood pulp-based material.
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 30, paragraph 4).
Kumamoto discloses that it was conventional and well established in the art to employ wood-pulp to form containers capable of storing a beverage which containers comprise an opening, a body, a bottom (paragraph [0006]) and would be formed 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]), increased brittleness (surface tension) (paragraph [0043] – [0044]), and reduced thickness (reduced void) (paragraph [0041]) (represented by the width x . . . having no thick walled portion . . .which suffices to secure the mechanical strength) (paragraph [0059] – [0060] and fig. 6). 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 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 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 Reitze 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.
Further, The limitation “treated via elevated temperature and pressure to glassify the perforation region” 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 Reitze in view of Kumamoto in view of Mondillon discloses material properties as claimed.
Regarding claims 3 and 4, Reitze in view of Kumamoto in view of Mondillon discloses the perforation region (14, 18, 19) is arranged at a base of a cavity of the storage portion and arranged as an annular ring central about an axis of rotation of the container (‘458, paragraph [0054] and fig. 2).
Regarding claim 5, Reitze in view of Kumamoto in view of Mondillon discloses the annular ring is arranged as segments (18, 19) which are bounded by bridges that are not treated (areas between 18, 19 as clearly seen in figure 2) (‘458, paragraph [0054).
Regarding claim 6, first it is noted that claim 6 is directed only to the container and not elements forming the penetrator. Also, as set forth above in the rejection of claim 1, Reitze in view of Kumamoto in view of Mondillon discloses all the limitations of the container capable of being used with a machine as claimed and while claim 6 differs from Reitze in view of Kumamoto in view of Mondillon in reciting the bridges of the container being arranged to have a different angular pitch compared (to) an angular pitch of elements forming a penetrator of a machine no penetrator has been positively claimed to be present and therefore any degree of difference, no matter how slight, in the angular pitch would have been obvious.
Regarding claim 7, with respect to the recitations beginning “wherein the perforation region is configured to be perforated by penetrator elements with a total area of 6 – 15 mm2” these are seen to be recitations regarding the intended use of the perforation region.
In this regard applicant’s attention is invited to MPEP 2114 which states that “an apparatus must be distinguished from the prior art in terms of structure rather than function”. That is to say, apparatus claims cover what a device is, not what a device does. If the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and then further limitations merely state, for example, the purpose or intended use of the invention, rather than any distinct structural definition of any of the claimed invention’s structural limitations, then any limitations regarding the intended use of the device are of no significance to claim construction. 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 claim which Reitze in view of Kumamoto in view of Mondillon obviously does. Further, if the prior art structure is capable of performing the intended use, then it meets the claim.
It is The Office’s position that the further limitations do not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. “the perforation region is configured to be perforated by penetrator elements with a total area of 6 – 15 mm2”, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art, that Reitze in view of Kumamoto in view of Mondillon and further that the prior art structure, which is identical and/or obvious in view of the prior art to that set forth in the present claims is capable of performing the recited purpose or intended use.
Claims 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Reitze et al. EP 3 517 458 in view of Kumamoto et al. EP 1 126 083 in view of Mondillon et al. US 2018/0178972 in view of Kollep US 2003/0116029.
Regarding claim 8, as set forth above in the rejection of claim 1 Reitze discloses all the limitations of the container for use with a machine as claimed.
Claim 8 differs from Reitze in view of Kumamoto in view of Mondillon in a machine that includes a processing unit for processing the precursor material of the container and the processing unit comprising a penetrator and electrical circuitry to control the processing unit.
In order for a beverage and/or a foodstuff or a precursor thereof to be prepared from the container of Reitze in view of Kumamoto in view of Mondillon a machine would necessarily need to be provided. Kollep discloses a machine capable of preparing a beverage and/or a foodstuff from a container. Kollep discloses the machine would have a penetrator (piercing member) with which to penetrate a capsule after which a conditioned fluid, i.e., hot water, would be supplied to the precursor material in the container via the perforation to prepare the beverage and that the penetrator would penetrate the container making it obvious that the machine would have a processing unit for processing the precursor material of the container which processing unit would obviously have electrical circuitry to control said unit, i.e., to provide the conditioned fluid. Kollep is providing the machine with a penetrator and processing unit for the art recognized function of easily providing a slit in the base of said container to allow hot water to then flow in the container and extract any material stored in the container which is applicant’s reason for doing so as well. To therefore modify Reitze in view of Kumamoto in view of Mondillon and provide a machine including a processing unit to prepare a beverage with the container of Reitze in view of Kumamoto in view of Mondillon as taught by Kollep would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
Further regarding claim 8, the limitation “treated via elevated temperature and pressure to glassify the perforation region” is a method limitation and does not determine the patentability of the product, unless the process produces unexpected results and is rejected as such for the same reasons given above in the rejections of claim 1 and 2.
Regarding claim 10, once it was known to provide the system of Reitze in view of Kumamoto in view of Mondillon in view of Kollep, that is the container of claim 1 and machine as set forth in the rejection of claim 8, the method of preparing a beverage and/or foodstuff or a precursor thereon from the precursor material of the container would obviously comprise perforating with a penetrator of the beverage preparation machine the perforation region of the container which is treated to facilitate comparatively easier perforation by the penetrator of the machine and supplying conditioned fluid to the precursor material of the container vis the perforation.
Response to Arguments
Applicant’s arguments with respect to the claims have been fully and carefully considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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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