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 1-2, 4-10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Doglioni Majer US 2015/0183575 in view of Orler US 2020/0253413 and Chen et al. US 2019/0062998.
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]) wherein the stiffener portions (plurality of recesses 9) protrude 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]).
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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.
Orler discloses a container for use with a machine for preparing a beverage (‘413, Paragraph [0119]). The container (cartridge 112) includes a storage portion (cartridge body 200) comprising a cavity with a base for containing a precursor material and a closing member (cover 204) to close the storage portion (cartridge body 200) (‘413, Paragraph [0044]) and at least a base region of the storage portion (cartridge body 200) wherein the storage portion (cartridge body 200) is formed of a wood pulp based material (‘413, Paragraph [0081]). Chen et al. discloses a container (coffee capsule) for use with a machine for preparing a beverage (‘998, Paragraph [0006]). The container (coffee capsule) includes a storage portion (capsule main body CMB) comprising a cavity with a base for containing a precursor material (coffee) and a closing member (capsule lid CL) to close the storage portion (capsule main body CMB) and at least a base region of the storage portion (capsule main body CMB) (‘998, Paragraphs [0006]-[0007]) wherein the storage portion (capsule main body CMB) is formed of a wood pulp (‘998, Paragraphs [0026] and [0034]).
Doglioni Majer, Orler, and Chen et al. are all 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 beverage container of Doglioni Majer and construct the beverage container out of a wood pulp based material as taught by Orler and 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.). Orler and Chen 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 Orler and Chen 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]). Orler discloses the storage portion being formed of a wood pulp based material (‘413, Paragraph [0081]). Chen et al. also discloses the storage portion being formed of a wood pulp based material (‘998, Paragraphs [0026] and [0034]). 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 Orler and Chen 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 Orler and Chen 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 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 Orler and Chen 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]).
Orler discloses the storage portion being formed of a wood pulp based material (‘413, Paragraph [0081]). Chen et al. also discloses the storage portion being formed of a wood pulp based material (‘998, Paragraphs [0026] and [0034]). 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 Orler and Chen 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 Orler and Chen 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 Orler US 2020/0253413 and Chen et al. US 2019/0062998 as applied to claim 1 above in further view of Eickhoff et al. US 2022/0127068.
Regarding Claim 11, Orler discloses the storage portion being formed of a wood pulp based material (‘413, Paragraph [0081]). Chen et al. also discloses the storage portion being formed of a wood pulp based material (‘998, Paragraphs [0026] and [0034]). However, Doglioni Majer modified with Orler and Chen 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. Although Claims 1-15 of the copending ’166 application recites a broader recitation of at least part of the storage portion being formed of wood pulp based material rather than the specific at least a base region of the storage portion being formed of a wood pulp based material, 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). Claims 1-15 of the copending ‘166 application teaches that there was known utility in the coffee capsule art to construct at least a part of the storage portion out of wood pulp. Furthermore, claims which read on the prior art except with regard to the position of the storage portion made of wood pulp is held unpatentable because shifting the position of the part of the storage portion made of wood pulp would not have modified the operation of the device in view of In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (MPEP § 2144.04.IV.C.).
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. Although Claims 1-7 of the copending ’780 application recites a broader recitation of at least part of the storage portion being formed of wood pulp based material rather than the specific at least a base region of the storage portion being formed of a wood pulp based material, 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). Claims 1-7 of the copending ‘780 application teaches that there was known utility in the coffee capsule art to construct at least a part of the storage portion out of wood pulp. Furthermore, claims which read on the prior art except with regard to the position of the storage portion made of wood pulp is held unpatentable because shifting the position of the part of the storage portion made of wood pulp would not have modified the operation of the device in view of In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (MPEP § 2144.04.IV.C.).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Examiner notes that the previous Double Patenting rejections have been maintained herein.
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 obviousness rejections under 35 USC 103(a) to Giuliano are withdrawn in view of the amendments. Giuliano does not teach or suggest the stiffener portions protruding into an interior of the storage portion and not outwardly from an exterior.
Applicant’s arguments with respect to the rejection(s) of Claim 1 under 35 USC 103(a) to Doglioni Majer in view of Heydel et al. have been fully considered and are persuasive. Applicant argues on Page 7 of the Remarks that Heydel is not prior art under the exception of 35 USC 102(b)(2)(C). Heydel would only be prior art under 35 USC 102(a)(2) and not 102(a)(1). The exception under 35 USC 102(b)(2)(C) states that a disclosure shall not be prior art under 102(a)(2) if the subject matter disclosed and the claimed invention, not later than the filing date, were owned by the same person or subject to an obligation to assign to the same person. Both the present application and the Heydel reference were owned by Societe des Produits Nestle SA at the time of filing of the present application. Heydel is not prior art for the present application. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection under 35 USC 103(a) is made in view of Doglioni Majer in view of Orler and Chen et al.
A Non Final Office Action has been issue herein.
Conclusion
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
Prosecution Insights