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, 3-8, and 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Doglioni Majer US 2015/0183575 in view of Orler US 2020/0253413, Chen et al. US 2019/0062998, and Stefanoni US 2020/0346849.
Regarding Claim 1, Doglioni Majer discloses a container (capsule 1) comprising a storage portion (body 5) comprising a cavity with a sidewall (lateral wall 2), a flange portion (flange like rim 6), and a base (inlet wall 3), and a closing member (outlet wall 4) (‘575, FIG. 1) (‘575, Paragraphs [0049] and [0086]) wherein at least part of the storage portion if formed of biodegradable material (‘575, Paragraph [0017]). The storage portion (body 5) comprises a perforation region (portion 10 comprising inner lateral wall 11, external lateral wall 12, and perforating wall 13) arranged at the base (inlet wall 3) of the storage portion (body 5) (‘575, Paragraph [0053]) and stiffener portions (plurality of recessed portions 9) arranged to extend along the base (inlet wall 3) from a periphery of the base to contiguous the perforation region (portion 10 comprising inner lateral wall 11, external wall 12, and perforating wall 13) to stiffen the base (inlet wall 3) to resist displacement (‘575, Paragraph [0097]).
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Doglioni Majer discloses the container (capsule) being made of bioplastics (‘575, Paragraph [0017]). However, Doglioni Majer is silent regarding at least part of the storage portion being formed of 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 sidewall, a flange portion, and a base for containing a precursor material and a closing member (cover 204) to close the storage portion (cartridge body 200) (‘413, Paragraph [0044]) wherein at least a part of 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 sidewall, a flange portion, and a base for containing a precursor material (coffee) and a closing member (capsule lid CL) to close the storage portion (capsule main body CMB) (‘998, Paragraphs [0006]-[0007]) wherein at least a part of 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 biodegradable capsule container of Doglioni Majer and construct the biodegradable capsule 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, Doglioni Majer modified with Orler and Chen et al. is silent regarding the perforation region of the storage portion being treated to facilitate comparatively easier perforation by a penetrator of the machine than a portion that is not treated.
Stefanoni discloses a container comprising a storage portion (containment portion 111) comprising a cavity with a sidewall, a flange portion (flange radial 115), a base (bottom wall 102) (‘849, Paragraphs [0032]-[0033]), and a closing member (closing element 120) (‘849, FIG. 2) (‘849, Paragraph [0036]) wherein the storage portion (containment portion 111) comprises a perforation region (perforation regions 103) arranged at the base (bottom wall 102) which is treated via reduced thickness areas to facilitate comparatively easier perforation by a penetrator of a machine than a portion that is not treated (‘849, FIG. 2) (‘849, Paragraph [0037]) wherein the container (capsule) is recyclable and compostable (‘849, Paragraphs [0016] and [0045]).
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Both modified Doglioni Majer and Stefanoni are directed towards the same field of endeavor of biodegradable/compostable beverage containers used with machines 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 modified Doglioni Majer and construct the perforation region at the base of the storage and treat the perforation with reduced thicknesses compared to the rest of the base as taught by Stefanoni in order to facilitate comparatively easier perforation by a penetrator of a machine than a portion that is not treated with reduced thickness (‘849, Paragraph [0012]).
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 “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 at least a part of the storage portion (cartridge body 200) is formed of a wood pulp based material (‘413, Paragraph [0081]). Chen et al. also discloses at least a part of the storage portion (capsule main body CMB) is formed of a wood pulp (‘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, Chen et al., and Stefanoni 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 and the perforation region being arranged at the base of the storage portion which is treated to facilitate comparatively easier perforation by a penetrator of a machine than a portion that is not treated as claimed, one of ordinary skill in the art would expect the beverage container of Doglioni Majer modified with Orler, Chen et al., and Stefanoni 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.
Further regarding Claim 1, it is noted that Claim 1 recites the limitation “wherein the storage portion comprises two or more of the a perforation region…stiffener portions…and a shoulder.” Since the prior art combination of Doglioni Majer modified with Orler, Chen et al., and Stefanoni renders obvious two of the clauses pertaining to a perforation region and stiffener portions as enumerated in the rejections above, the limitations with respect to a shoulder are optional limitations that are not required to be taught by the prior art combination since the prior art combination teaches the two elements of a perforation region and stiffener portions.
Regarding Claim 3, Doglioni Majer discloses the storage portion (body 5) comprising the stiffener portion (plurality of recesses 9) wherein the the stiffener portion (plurality of recesses 9) comprises discrete units that are circumferentially disposed about a circumference of the sidewall (lateral wall 2) of the container (capsule 1) (‘575, FIG. 1).
Regarding Claim 4, Doglioni Majer discloses the storage portion (body 5) comprising the stiffener portions (plurality of recesses 9) wherein the stiffener portions (plurality of recesses 9) protrude into an interior of the storage portion (body 5) and not outwardly from an exterior (‘575, FIG. 1) (‘575, Paragraph [0092]).
Regarding Claim 5, Doglioni Majer discloses the storage portion (body 5) comprising the stiffener portions (plurality of recesses 9) wherein the stiffener portions (plurality of recesses 9) are arranged as channels that bridge the base (inlet wall 3) and proximal region of the sidewall (lateral wall 2) (‘575, FIG. 1) (‘575, Paragraph [0093]).
Regarding Claims 6-8, Doglioni Majer discloses the storage portion (body 5) comprising the stiffener portions (plurality of recesses 9) (‘575, FIG. 1) (‘575, Paragraph [0092]). However, Doglioni Majer modified with Orler, Chen et al., and Stefanoni 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 the periphery of the base 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 10, Stefanoni discloses the storage portion (containment portion 111) comprising the perforation region (perforation regions 103) wherein the perforation region (perforation regions 103) includes a material property of reduced thickness compared to a portion that is not treated (‘849, Paragraph [0012]).
Regarding Claim 11, Doglioni Majer discloses the storage portion (body 5) comprising the perforation region (portion 10 comprising inner lateral wall 11, external lateral wall 12, and perforating wall 13) wherein the perforation region (portion 10 comprising inner lateral wall 11, external lateral wall 12, and perforating wall 13) is arranged as an annular ring which is central about an axis of rotation of the container (capsule 1) (‘575, FIG. 1) (‘575, Paragraph [0053]). Stefanoni also discloses the perforation (perforation region 103) being arranged as an annular ring which is central about an axis of rotation of the container (‘849, FIG. 2) (‘849, Paragraph [0037]).
Regarding Claim 12, Stefanoni discloses the annular ring being arranged as segments which are bounded by bridges that are not treated (‘849, FIG. 2) (‘849, Paragraph [0037]).
Regarding Claim 13, the limitations “where the bridges are arranged to have a different angular pitch compared to an angular pitch of elements forming 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 provided above. The comparative angular pitch of elements of the penetrator of the machine are limitations regarding structural features of the machine and not to the claimed container.
Regarding Claims 14-15, Doglioni Majer discloses the storage portion (body 5) comprising the perforation region (portion 10 comprising inner lateral wall 11, external lateral wall 12, and perforating wall 13) and the stiffener portions (plurality of recessed portions 9) (‘575, FIG. 1) (‘575, Paragraph [0053]).
Further regarding Claims 14-15, the limitations “wherein the perforation region is configured to be perforated by the penetrator element with a total area of 6-15 mm2 when subject to at least 1-10 Newtons” and “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 at least a part of the storage portion (cartridge body 200) is formed of a wood pulp based material (‘413, Paragraph [0081]). Chen et al. also discloses at least a part of the storage portion (capsule main body CMB) is formed of a wood pulp (‘998, Paragraphs [0026] and [0034]). Stefanoni discloses the perforation region having a reduced thickness relative to the remainder of the base to facilitate easier perforation (‘849, Paragraph [0037]). 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, Chen et al., and Stefanoni 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, Chen et al., and Stefanoni to behave in the same manner as claimed, i.e. the perforation region is configured to be perforated by the penetrator element with a total area of 6-15 mm2 when subject to at least 1-10 Newtons and 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.
Claims 1-2 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Doglioni Majer US 2015/0183575 in view of Orler US 2020/0253413, Chen et al. US 2019/0062998, Stefanoni US 2020/0346849, and Hale US 2003/0222089.
Regarding Claim 1, Doglioni Majer modified with Orler, Chen et al., and Stefanoni renders obvious the limitations of Claim 1 as enumerated above. Claim 1 recites the limitation “wherein the storage portion comprises two or more of the a perforation region…stiffener portions,…and a shoulder…” Since Doglioni Majer modified with Heydel et al. and Stefanoni teaches two of the limitations with respect to a perforation region and stiffener portions, the limitations “a shoulder that extends outwardly from the flange portion to a rim of the sidewall proximal to the base to define a void defining region of the sidewall that is arranged between the shoulder and the base to increase the rigidity of the base” are optional limitations. Nevertheless, Doglioni Majer modified with Orler, Chen et al., and Stefanoni does not teach the optional limitations relating to a shoulder.
Hale discloses a beverage container (beverage cartridge 10) comprising a storage portion (container 12) comprising a cavity with a sidewall (sidewall 16), a flange portion (upper edge 52), and a base (bottom wall 18) for containing a precursor material and a closing member (cover 14) to close the storage portion wherein the storage portion comprises a shoulder (shoulder 32) that extends outwardly from the flange portion (upper edge 52) to a rim of the sidewall (sidewall 16) proximal to the base (bottom wall 18) to define a void defining region (sloped step 26) of the sidewall (sidewall 16) that is arranged between the shoulder (shoulder 32) and the base (bottom wall 18) (‘089, FIGS. 2-3) (‘089, Paragraph [0034]) wherein the base (bottom wall 18) has structural rigidity (‘089, Paragraph [0056]).
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Both modified Doglioni Majer and Hale are directed towards the same field of endeavor of beverage containers used with a machine for preparing a beverage. Both beverage containers of Doglioni Majer and Hale have a perforation region arranged at the base of the storage portion that is perorated 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 beverage container of modified Doglioni Majer and construct the storage portion of the beverage container with a shoulder that extends outwardly from the flange portion to a rim of the sidewall proximal to the base to define a void defining region of the sidewall that is arranged between the shoulder and the base since Hale teaches that the incorporation of a shoulder (shoulder 32) creates a baffle to direct liquid away from the sidewall of the container towards the center of the cavity (brewing chamber 34) and the shoulder (shoulder 32) also facilitates an even distribution of the liquid throughout the cavity (brewing chamber 34), which enhances the extraction or dilution process and provides a brewed beverage of a higher quality and the shoulder (shoulder 32) further functions to increase the strength of the container so that the container is able to withstand internal and external pressures due to the extraction process and handling of the container (‘089, Paragraph [0047]).
Regarding Claim 2, Hale discloses a beverage container (beverage cartridge 10) comprising the storage portion (container 12) comprising a cavity with a sidewall (sidewall 16), a flange portion (upper edge 52), and a base (bottom wall 18) for containing a precursor material and a closing member (cover 14) to close the storage portion wherein the storage portion comprises the shoulder (shoulder 32) that extends outwardly from the flange portion (upper edge 52) to a rim of the sidewall (sidewall 16) proximal to the base (bottom wall 18) to define a void defining region (sloped step 26) of the sidewall (sidewall 16) that is arranged between the shoulder (shoulder 32) and the base (bottom wall 18) (‘089, FIGS. 2-3) (‘089, Paragraph [0034]) wherein the base (bottom wall 18) has structural rigidity (‘089, Paragraph [0056]). The combination of Doglioni Majer modified with Orler, Chen et al., Stefanoni, and Hale discloses the shoulder being arranged to extend along a periphery of the sidewall to a region contiguous the stiffener portions (‘575, FIG. 1) (‘089, FIG. 2). FIG. 1 of Doglioni Majer shows the container having the stiffener portion being disposed at the junction where the sidewall/lateral wall meets the base of the container. FIG. 2 of Hale shows the container having the shoulder extending from the flange portion to a location disposed above the junction where the sidewall/lateral wall meets the base of the container. Therefore, the combination of Doglioni Majer modified with Orler, Chen et al., Stefanoni, and Hale discloses the shoulder being arranged to extend along the periphery of the sidewall to a region contiguous the stiffener portions.
Regarding Claim 9, Hale discloses the storage portion (container 12) comprising the shoulder (shoulder 32) (‘089, FIGS. 2-3) (‘089, Paragraph [0034]). Although Hale does not explicitly teach the shoulder having a depth distance S between the flange portion and the rim of the sidewall which is comprised between 50 and 80% of a total depth D of the storage portion, Hale teaches the shoulder (shoulder 32) creating a baffle to direct liquid away from the sidewall of the container towards the center of the brewing chamber and the shoulder (shoulder 32) facilitating an even distribution of the liquid throughout the brewing chamber to enhance the extraction or dilution process and the increase the strength of the container so the container is able to withstand internal and external pressures due to the extraction process and handling of the container (‘089, Paragraph [0047]). Limitations relating to the size of the shoulder as a function of the distance between the flange portion and the rim of the sidewall relative to a total depth of the storage portion is not sufficient to patentably distinguish over the prior art in view of In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (MPEP § 2144.04.IV.A.). One of ordinary skill in the art would adjust the size of the shoulder relative to the size of the storage portion based upon the desired strength ability to withstand internal and external pressures due to the extraction process as suggested by Hale (‘089, Paragraph [0056]).
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 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-12 of copending Application No. 18/696,813 (reference application) in view of Stefanoni US 2020/0346849. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-12 of the copending ‘813 application recite most of the same limitations of Claims 1-15 of the instant invention. However, Claims 1-12 of the copending ‘813 application is silent regarding a perforation region arranged at the base of the storage portion which is treated to facilitate comparatively easier perforation by a penetrator of a machine than a portion that is not treated. Stefanoni discloses a container comprising a storage portion comprising a base wherein a perforation region is arranged at the base of the storage portion which is treated to facilitate comparatively easier perforation by a penetrator of a machine than a portion that is not treated (‘849, Paragraph [0037]). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the perforation region of the base of the storage portion of Claims 1-12 of the copending ‘813 application and construct the perforation region of the base of the storage portion as taught by Stefanoni in order to make it easier to perforate the base of the container.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-15 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) in view of Doglioni Majer US 2015/0183575. 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 recite most of the same limitations of Claims 1-15 of the instant invention. However, Claims 1-7 of the copending ‘780 application is silent regarding the storage portion comprising stiffener portions arranged to extend along the base from a periphery to contiguous the perforation region to stiffen the base to resist displacement when the base is perforated by a penetrator of the machine. Doglioni Majer discloses a container comprising a storage portion comprising a base and a perforation region wherein the storage portion further comprises stiffener portions arranged to extend along the base from a periphery to contiguous the perforation region to stiffen the base to resist displacement when the base is perforated by a penetrator of a machine (‘575, FIG. 1) (‘575, Paragraph [0089]). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the storage portion of the container of Claims 1-7 of copending ‘780 application and incorporate stiffener portions extending along the base as taught by Doglioni Majer in order to provide the necessary rigidity to the capsule to allow effective perforation thereof (‘575, Paragraph [0089]).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-12 of copending Application No. 18/696,790 (reference application) in view of Doglioni Majer US 2015/0183575. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-2 of the copending ‘790 application recite most of the limitations of Claims 1-15 of the instant application. However, Claims 1-2 of the copending ‘790 application is silent regarding stiffener portions arranged to extend along the base from a periphery to contiguous the perforation region to stiffen the base to resist displacement when the base is perforated by a penetrator of the machine. Doglioni Majer discloses a container comprising a storage portion comprising a base and a perforation region wherein the storage portion further comprises stiffener portions arranged to extend along the base from a periphery to contiguous the perforation region to stiffen the base to resist displacement when the base is perforated by a penetrator of a machine (‘575, FIG. 1) (‘575, Paragraph [0089]). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the storage portion of the container of Claims 1-12 of copending ‘790 application and incorporate stiffener portions extending along the base as taught by Doglioni Majer in order to provide the necessary rigidity to the capsule to allow effective perforation thereof (‘575, Paragraph [0089]).
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 Claim Objections have been withdrawn in view of the amendments.
Examiner notes that the previous indefiniteness rejections under 35 USC 112(b) have been withdrawn in view of the amendments.
Examiner notes that the previous 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.
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.and Stefanoni or alternatively to Doglioni Majer in view of Heydel., Stefanoni, and Hale have been fully considered and are persuasive. Applicant argues on Page 8 of the Remarks that Heydel is not prior art under the exception of 35 USC 102(b)(2)(C). Heydel was published on July 11, 2024, which is after the priority date of the present application. 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, Chen et al., and Stefanoni or alternatively to Doglioni Majer in view of Orler, Chen et al., Stefanoni, and Hale.
A Non Final Office Action has been issue herein.
Examiner notes that applicant’s comments on Pages 9-10 of the Remarks with respect to the Double Patenting rejections does not specifically and distinctly point out the supposed errors of the Office Action. Applicant never argues against the secondary references of Doglioni Majer or Stefanoni that are being relied upon as secondary references in the Double Patenting rejections.
Conclusion
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/ERICSON M LACHICA/Examiner, Art Unit 1792
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