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 .
Election/Restrictions
Applicant’s election of Group I: Claims 1-12 in the reply filed on February 19, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 13 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
An action on the merits of elected Claims 1-12 is provided below.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on March 28, 2024, July 8, 2025, and September 30, 2025 were filed. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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 4-5 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 pre-AIA the applicant regards as the invention.
Claim 4 recites the limitation “proximal region” in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation “a base” in line 1. It is unclear if this refers to “a base” recited in Claim 1, line 3 or to an entirely different base.
Clarification is required.
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 1-2, 7-10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Giuliano US 2021/0078794.
Regarding Claim 1, Giuliano discloses a container (pod 100) including a storage portion comprising a cavity with a base (bottom of lowest most water permeable filtering element 102), a closing member (upper most water permeable filtering element 102), and at least a base region of the storage portion formed of a wood pulp based material (‘794, Paragraph [0040]) wherein the storage portion includes stiffener portions (plurality of arch ribs 142) (‘794, FIG. 11) (‘794, Paragraphs [0073] and [0077]).
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Further regarding Claim 1, the limitations “for use with a machine for preparing a beverage and/or foodstuff or a precursor thereof,” “for containing the precursor material,” “to close the storage portion” and “which are arranged to stiffen the base to resist displacement when the base is perforated by a penetrator of the machine” are seen to be recitations regarding the intended use of the “container.” 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 anticipation 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, Giuliano explicitly discloses the container (pod) being used in a machine for preparing (brewing) a beverage and the cavity with a base for containing a precursor material (coffee) (‘794, Paragraph [0001]) and the closing member (upper most water permeable filtering element 102) closing the storage portion (‘794, FIG. 11). Although Giuliano does not explicitly disclose the storage portion resisting displacement when the base the perforated by a penetrator of the machine, these limitations recite properties of the container when used in the machine. Giuliano discloses the storage portion including stiffener portions (plurality of arch ribs 142) (‘794, FIG. 11) and at least the base region of the storage portion being formed of a wood pulp based material (‘794, Paragraph [0040]). Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established in view of In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP § 2112.01.I.). Products of identical chemical composition can not have mutually exclusive properties in view of In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (MPEP § 2112.01.II.). Since Giuliano teaches the container comprising a storage portion including stiffener portions and at least a base region of the storage portion being formed of wood pulp based material as claimed, one of ordinary skill in the art would expect the beverage container of Giuliano to behave in the same manner as claimed, i.e. the stiffener portions being arranged to stiffen the base to resist displacement when the base is perforated by a penetrator of the machine.
Regarding Claim 2, Giuliano discloses the storage portion including a sidewall and the base region comprising the base and a proximal region of the sidewall (‘794, FIG. 11) and the stiffener portions (plurality of arch ribs 142) being arranged to extend over both the base and the proximal region of the sidewall (‘794, FIGS. 10-11).
Regarding Claims 7-8, Giuliano is silent regarding the stiffener portions being arranged to extend in a depth direction along the sidewall from a junction with the base to a distance of less than 40% of a total depth D between the storage portion and the base or the stiffener portions being arranged to extend along the base from a periphery to a radii of greater than 30% of the total diameter of the base. However, limitations relating to the size of the stiffener portions capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled in view of In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) (MPEP § 2144.04.IV.A.).
Regarding Claim 9, Giuliano discloses the stiffener portions (plurality of arch ribs 142) being arranged to extend along the base from a periphery to contiguous a perforation region (‘794, FIG. 11). It is noted that the claim does not specify any particular boundaries of the claimed perforation region. Any portion of the container of Giuliano is capable of being perforated.
Further regarding Claim 9, the limitations “that is perforated by the penetrator of the machine” are intended use limitations and as such are rejected for the same reasons regarding intended use enumerated in the rejections of Claim 1 above.
Regarding Claim 10, the limitations “wherein the stiffener portions are arranged to prevent a perforation region of the base displacing by more than 0.5-2 mm in a depth direction when the perforation region is subject to a compressive force in the depth direction of 1-50 N which is applied by the penetrator” are intended use limitations and as such are rejected for the same reasons regarding intended use enumerated in the rejections of Claim 1 above. These limitations also recite properties of the claimed container when used in the claimed manner. Giuliano discloses the storage portion including stiffener portions (plurality of arch ribs 142) (‘794, FIG. 11) and at least the base region of the storage portion being formed of a wood pulp based material (‘794, Paragraph [0040]). Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established in view of In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP § 2112.01.I.). Products of identical chemical composition can not have mutually exclusive properties in view of In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (MPEP § 2112.01.II.). Since Giuliano teaches the container comprising a storage portion including stiffener portions and at least a base region of the storage portion being formed of wood pulp based material as claimed, one of ordinary skill in the art would expect the beverage container of Giuliano to behave in the same manner as claimed, i.e. the stiffener portions are arranged to prevent a perforation region of the base displacing by more than 0.5-2 mm in a depth direction when the perforation region is subject to a compressive force in the depth direction of 1-50 N which is applied by the penetrator.
Regarding Claim 12, Giuliano discloses the stiffener portions (plurality of arch ribs 142) comprising discrete units that are circumferentially disposed about a circumference of the container (‘794, FIG. 11).
Claims 1-10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Doglioni Majer US 2015/0183575 in view of Heydel et al. US 2024/0228158.
Regarding Claim 1, Doglioni Majer discloses a container (capsule 1) comprising a storage portion (body 5) comprising a cavity with a base (inlet wall 3), a sidewall (lateral wall 2), and a closing member (outlet wall 4) (‘575, Paragraph [0049]) wherein at least a base region of the storage portion (body 5) is formed of bioplastics (‘575, Paragraph [0017]) wherein the storage portion (body 5) includes stiffener portions (at least one recessed portion 9) which are arranged to stiffen the base (inlet wall 3) to resist displacement when the base (inlet wall 3) is perforated by a penetrator of a machine (‘575, FIGS. 1-2) (‘575, Paragraph [0098]).
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Doglioni Majer discloses at least a base region of the storage portion, i.e. the capsule, being made of bioplastics derived from renewable sources (‘575, Paragraph [0017]). However, Doglioni Majer is silent regarding the bioplastic material to be a wood pulp based material.
Heydel et al. discloses a container comprising a storage portion (body) made completely out of a biodegradable and/or compostable material of bioplastic and plant fibers derived from wood or cellulose pulp (‘158, Paragraph [0035]).
Both Doglioni Majer and Heydel et al. are directed towards the same field of endeavor of biodegradable beverage containers used with a machine for preparing a beverage. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the biodegradable capsule container of Doglioni Majer and construct the biodegradable capsule container out of a wood pulp based material as taught by Heydel 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.). Heydel et al. teaches that there was known utility in the beverage container/capsule art to construct a beverage container/capsule out of biodegradable materials including wood pulp based materials.
Further regarding Claim 1, the limitations “for use with a machine for preparing a beverage and/or foodstuff or a precursor thereof,” “for containing a precursor material,” “to close the storage portion,” and “which are arranged to stiffen the base to resist displacement when the base is perforated by a penetrator of the machine” are seen to be recitations regarding the intended use of the “container.” 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 anticipation 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, Doglioni Majer explicitly teaches the beverage container being used with a machine (brewing machine) for preparing a coffee beverage wherein the storage portion contains a beverage precursor of coffee (‘575, Paragraph [0045]), the closing member (outlet wall 4) closing the storage portion (body 5) (‘575, Paragraph [0051]), and the stiffener portions (plurality of recessed portions 9) stiffening the base to resist displacement when the base is perforated by a penetrator (piercing means) of the machine (brewing device) (‘575, Paragraphs [0097]-[0098]).
Further regarding Claim 1, the limitations “stiffener portions which are arranged to stiffen the base to resist displacement when the base is perforated by a penetrator of the machine” recite properties of the container when used in the machine. Doglioni Majer modified with Heydel et al. discloses the limitations of Claim 1 as enumerated above. Doglioni Majer teaches the stiffener portions of the plurality of recessed portions 9) (‘575, FIG. 1) (‘575, Paragraph [0089]). Heydel et al. discloses at least a base region of the storage portion being formed of a wood pulp based material (‘158, Paragraph [0035]). Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established in view of In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP § 2112.01.I.). Products of identical chemical composition can not have mutually exclusive properties in view of In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (MPEP § 2112.01.II.). Since the combination of Doglioni Majer modified with Heydel et al. teaches the container comprising a storage portion including stiffener portions and at least a base region of the storage portion being formed of wood pulp based material as claimed, one of ordinary skill in the art would expect the beverage container of Doglioni Majer modified with Heydel et al. to behave in the same manner as claimed, i.e. the stiffener portions are arranged to stiffen the base to resist displacement when the base is perforated by a penetrator of the machine.
Regarding Claim 2, Doglioni Majer discloses the storage portion including a sidewall (lateral wall 2) and the base region comprising the base (inlet wall 3) and a proximal region of the sidewall (lateral wall 2) (‘575, FIG. 1) (‘575, Paragraph [0089]) wherein the stiffener portions (plurality of recesses 9) are arranged to extend over both the base (inlet wall 3) and the proximal region of the sidewall (lateral wall 2) (‘575, Paragraphs [0092]-[0093]).
Regarding Claim 3, Doglioni Majer discloses the stiffener portions (plurality of recesses 9) protruding into an interior of the storage portion (body 5) and not outwardly from an exterior, i.e. the stiffener portion are recesses (‘575, FIG. 1) (‘575, Paragraph [0089]).
Regarding Claim 4, Doglioni Majer discloses the stiffener portions (plurality of recesses 9) being arranged as channels that bridge the base (inlet wall 3) and the proximal region of the sidewall (lateral wall 2) (‘575, FIG. 1).
Regarding Claim 5, Doglioni Majer discloses a base of the channels being linear (recessed portion 9 is shaped as a removal of a parallepiped) (‘575, FIG. 1) (‘575, Paragraph [0092]).
Regarding Claims 6-8, Doglioni Majer modified with Heydel et al. is silent regarding the stiffener portions having a maximum depth of less than 10 mm and greater than 2mm, the stiffener portions being arranged to extend in a depth direction along the sidewall from a junction with the base to a distance of less than 40% of a total depth D between the storage portion and the base, and the stiffener portions being arranged to extend along the base from a periphery to a radii of greater than 30% of the total diameter of the base. However, limitations relating to the size of the stiffener portions capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled in view of In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) (MPEP § 2144.04.IV.A.). Furthermore, the configuration of the claimed stiffener portions 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 container was significant in view of In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (MPEP § 2144.04.IV.B.). It is noted that the claims do not specify any particular sizes or dimensions of the overall container. One of ordinary skill in the art would adjust the stiffener portion (at least one recessed portion 9) that provides rigidity to the capsule (‘575, Paragraph [0089]) based upon the overall height of the container. The degree of rigidity provided to the capsule by the recessed portion 9 would depend on the overall height of the container.
Regarding Claim 9, Doglioni Majer discloses the stiffener portions (plurality of recesses 9) being arranged to extend along the base (inlet wall 3) from a periphery to continuous a perforation region (perforating wall 13) that is perforated by the penetrator (piercing means 21) of the machine (brewing device 20) (‘575, FIG. 1) (‘575, Paragraphs [0054]).
Regarding Claim 10, the limitations “wherein the stiffener portions are arranged to prevent a perforation region of the base displacing by more than 0.5-2 mm in a depth direction when the perforation region is subject to a compressive force in the depth direction of 1-50 N which is applied by the penetrator” are intended use limitations and as such are rejected for the same reasons regarding intended use enumerated in the rejections of Claim 1 above. These limitations also recite properties of the claimed container when used in the claimed manner. Doglioni Majer teaches the stiffener portions of the plurality of recessed portions 9) (‘575, FIG. 1) (‘575, Paragraph [0089]). Heydel et al. discloses at least a base region of the storage portion being formed of a wood pulp based material (‘158, Paragraph [0035]). Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established in view of In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP § 2112.01.I.). Products of identical chemical composition can not have mutually exclusive properties in view of In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (MPEP § 2112.01.II.). Since the combination of Doglioni Majer modified with Heydel et al. teaches the container comprising a storage portion including stiffener portions and at least a base region of the storage portion being formed of wood pulp based material as claimed, one of ordinary skill in the art would expect the beverage container of Doglioni Majer modified with Heydel et al. to behave in the same manner as claimed, i.e. the stiffener portions are arranged to prevent a perforation region of the base displacing by more than 0.5-2 mm in a depth direction when the perforation region is subject to a compressive force in the depth direction of 1-50 N which is applied by the penetrator.
Regarding Claim 12, Doglioni Majer discloses the stiffener portions (plurality of recesses portions 9) comprising discrete units that are circumferentially disposed about a circumference of the container (‘575, FIG. 1).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Doglioni Majer US 2015/0183575 in view of Heydel et al. US 2024/0228158 as applied to claim 1 above in further view of Eickhoff et al. US 2022/0127068.
Regarding Claim 11, Heydel et al. discloses the wood pulp based material comprising wood pulp (‘158, Paragraph [0035]). However, Doglioni Majer modified with Heydel et al. is silent regarding the wood pulp based material having a thickness of 0.25 mm to 0.75 mm.
Eickhoff et al. discloses a container comprising a storage portion (cup 5) comprising a cavity with a base (floor 12), a closing member, and a base region of the storage portion (product storage region 16) (‘068, Paragraph [0019]) wherein the storage portion (product storage region 16) includes stiffener portions (outer gussets 128) arranged to stiffen the base (floor 12) to resist displacement when the base (floor 12) is perforated by a penetrator of a machine (at puncture area 124) wherein the container (cup 5) has a thickness or a variety of thicknesses optimized for easy puncturability of the base (floor 12 and/or perforation region (puncture area 124) (‘068, FIGS. 2-4) (‘068, Paragraph [0030]) wherein the container (cup 5) has a thickness in the range of about 0.020” to about 0.200” (‘068, Paragraph [0037]) wherein the stiffener portions (outer gussets 128) provide additional structural rigidity (‘068, Paragraph [0023]). The disclosure of the container having a thickness in the range of about 0.020” to about 0.200” converts to a container thickness of a range of about 0.5 mm to about 5 mm, which overlaps the claimed base region of the storage portion formed of wood pulp based material having a thickness of 0.25 mm to 0.75 mm.
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Both modified Doglioni Majer and Eickhoff et al. are directed towards the same field of endeavor of beverage containers used in a machine for preparing a beverage. Both beverage containers of modified Doglioni Majer and Eickhoff et al. have a storage portion including stiffener portions to stiffen the base to resist displacement when the base is perforated by a penetrator of a machine. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the base region of the storage portion formed of a wood pulp based material to have the claimed thickness as taught by Eickhoff et al. since where the claimed thickness ranges overlaps thickness ranges 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.). Eickhoff et al. teaches there was known utility in the beverage container art to construct a beverage container with the claimed thickness. Furthermore, differences in the thickness of the beverage container will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such thickness 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.II.A.). One of ordinary skill in the art at the time of the invention to would adjust the thickness of the wood pulp based material of the base region of the storage portion of modified Doglioni Majer based upon the desired puncturability of the base floor of the beverage container as suggested by Eickhoff et al.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-15 of copending Application No. 18/697,166 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-15 of the copending ‘166 application recites a broader scope of limitations that reads on Claims 1-12 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-7 of copending Application No. 18/696,780 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-7 of the copending ‘780 application recites a broader scope of limitations that reads on Claims 1-12 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Doglioni Majer US 2016/0039601 discloses a container (capsule 1) including a storage portion (hollow body 5) comprising a cavity with a base (upper wall 3) and a closing member (lower wall 4) and at least a base region of the storage portion (hollow body 5) (‘601, Paragraph [0041]) wherein the storage portion includes stiffener portions (plurality of recessed portions 20a) (‘601, FIGS. 1-2) (‘601, Paragraph [0053]) wherein the storage portion (hollow body 5) includes a sidewall (lateral wall 2) and the base region comprises the base (upper wall 3) and a proximal region of the sidewall (lateral wall 2) (‘601, FIGS. 1-2) wherein the container (capsule) is made of biomaterials (‘601, Paragraph [0042]) wherein the stiffener portions (plurality of recessed portions 20a) protrude (intended inside the hollow body 5) into an interior of the storage portion (hollow body 5) and not outwardly from an exterior (‘601, Paragraph [0053]).
Doglioni Majer US 2014/0234494 discloses a container (capsule 1) comprising a storage portion comprising a cavity with a base (upper wall 3), a sidewall (lateral wall 2) a closing member (lid 4), and a base region of the storage portion (‘494, Paragraphs [0066]-[0067]) wherein the storage portion includes stiffener portions (plurality of protruding elements 8) which are arranged to stiffen the base (upper wall 3) to resist displacement when the base (upper wall 3) is perforated by a penetrator of a machine (protruding elements 8 stiffen the upper portion of the capsule to avoid undesired deformation when the capsule is pierced by a piercing means of a brewing device) (‘494, FIG. 2) (‘494, Paragraph [0067]).
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Heukamp et al. US 2021/0245950 discloses a container (capsule 310) comprising a storage portion comprising a cavity with a base (inlet wall 320), a sidewall (sidewall 315), and a closing member (‘950, Paragraph [0089]) wherein the storage portion includes stiffener portions (ridges 328) which are arranged to stiffen the base (inlet wall 320) to resist displacement when the base (inlet wall 320) is perforated by a penetrator of a machine (reinforces the base against collapse during piercing) (‘950, FIGS. 5-6) (‘950, Paragraph [0091]).
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Borse et al. US 2019/0329969 discloses a container (container 100) comprising a storage portion comprising a cavity with a base (base 140), a closing member, and a base region of the storage portion (‘969, Paragraph [0035]) wherein the storage portion includes stiffener portions (third wall 144) (‘969, FIGS. 1D-1E) (‘969, Paragraph [0036]) which are arranged to stiffen the base (base 140) to resist displacement when the base (base 140) is perforated by a penetrator of a machine (third wall 144 provides desired strength and rigidity at the bottom of the beverage container 100 to withstand forces encountered during the piercing process) (‘969, Paragraph [0036]).
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Tung et al. US 2019/0084759 discloses a container (container 100) comprising a storage portion comprising a cavity with a base (base 110), a closing member, and a base region of the storage portion wherein the storage portion includes stiffener portions (strengthening wall 112)) arranged to stiffen the base (base 110) to resist displacement when the base (base 110) is perforated by a penetrator of a machine (strengthening wall 112 is designed to distribute the stress of a needle puncturing a base) (‘759, FIG. 2) (‘759, Paragraph [0056]).
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Bunner et al. US 2017/0042362 discloses a container comprising a storage portion comprising a cavity with a base (floor disk 140), a closing member, and a base region of the storage portion (‘362, Paragraph [0045]) wherein the storage portion includes stiffener portions (stiffener panels 1182, 1184) (‘362, FIG. 1) (‘362, Paragraph [0053]) which are arranged to stiffen the base (140) to resist displacement when the base (floor disk 140) is perforated by a penetrator of a machine (‘362, Paragraph [0062]).
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Minganti US 2016/0355327 discloses a container comprising a storage portion (space V) comprising a cavity with a base, a lateral wall (containment body 2) a closing member, and a base region of the storage portion (space V) (‘327, Paragraph [0041]) wherein the storage portion (space V) includes stiffener portions (stiffening ribs 9) (‘327, FIG. 1) (‘327, Paragraph [0085]).
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Kay US 2015/0298897 discloses a container comprising a storage portion comprising a cavity with a base (base 16), a sidewall (wall 12) a closing member, and a base region of the storage portion wherein the storage portion includes stiffener portions (strengthening ribs 18) (‘897, FIGS. 3-4) (‘897, Paragraph [0028]).
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Amrein et al. US 2014/0196608 discloses a container (capsule 1) comprising a storage portion (capsule body 2) comprising a cavity with a base (base 4), a closing member (lid 5), and a base region of the storage portion wherein the storage portion includes stiffener portions (recesses 8) (‘608, FIGS. 1 and 11) (‘608, Paragraphs [0132]-[0134]) arranged for reinforcement (‘608, Paragraph [0017]) wherein the container (capsule) is made of at least one biopolymer (‘608, Paragraphs [0042] and [0044]).
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Zweed US 2014/0170281 discloses a container (capsule 101) comprising a storage portion (housing 102) comprising a cavity with a base, a closing member (foil 108), a sidewall (peripheral wall 104) and a base region (upper wall 103) of the storage portion (housing 102) wherein the storage portion (housing 102) includes stiffener portions (strengthening elements 106) that resists deformation of housing during use and protrudes into an interior of the storage portion (housing 102) and not outwardly from an exterior (strengthening elements 106 are recessed into upper wall 103 and/or peripheral wall 104) (‘281, FIG. 1A) (‘281, Paragraph [0036]).
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Doglioni Majer US 2017/0036854 discloses a container (capsule 1) comprising a storage portion (body 5) comprising a cavity with a base (inlet wall 3), a sidewall (lateral wall 2), and a closing member (outlet wall 4) (‘854, Paragraph [0061]) and a stiffener portion (at least one recessed portion 51) (‘854, FIG. 1) (‘854, Paragraph [0133]) which are arranged to stiffen the base (inlet wall 3) to resist displacement when the base (inlet wall 3) is perforated by a penetrator of a machine (‘854, Paragraph [0132]).
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Andreae et al. US 2017/0158422 discloses a container (capsule 11) comprising a storage portion (housing 12) that is made essentially solely of compostable biodegradable biopolymers and/or recycled paper (‘422, Paragraphs [0016] and [0020]) wherein the bioplastics are plastics derived from cellulose (‘422, Paragraph [0021]), the storage portion (housing 12) comprises a cavity with a base (end side 12a), a closing member (compostable film 13) and at least a base region of the storage portion (housing 12) (‘422, Paragraph [0042]) wherein the storage portion (housing 12) includes stiffener portions (‘422, FIG. 2).
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Schlack US 2021/0401220 discloses a container made from a bioplastic comprising wood (‘220, Paragraph [0284]).
Affolter et al. US 2024/0034548 discloses a container (capsule) made of a wood material compounded with bioplastic (‘548, Paragraph [0003]).
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