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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 12, 2026 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on May 19, 2026 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is 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 1, 4-10, and 12 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 1 recites the limitation “local compaction” in lines 17-18. It is unclear what is meant by the phrase “local compaction.”
Claim 1 recites the limitation “for improving leak tightness during the preparation of the beverage” in lines 12-13 as well as the limitation “wherein the leak tightness is improved” in line 17. The term “improved” is a term that requires a standard of comparison for a “standard” leak tightness. It is unclear what constitutes an “improved” leak tightness since no standard of comparison for a “regular” leak tightness is not specified in the claims.
Clarification is required.
Claims 4-10 and 12 are rejected as being dependent on a rejected base claim.
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, 4, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Bosetti et al. US 2021/0107731 in view of Orler US 2020/0253413 (cited on Information Disclosure Statement filed October 1, 2025), Yoakim et al. US 2011/0041702 and Yamamoto et al. US 2021/0395951.
Regarding Claim 1, Bosetti et al. discloses a capsule (capsule 1) comprising a cup shaped body and a cover (covering element 11) for closing the cup shaped body wherein the cup shaped body is made of a biodegradable material (‘731, Paragraph [0036]). The cup shaped body comprises a bottom wall (bottom wall 3), a tubular lateral wall (sidewall 2), and an annular flange (flange 14) for the cover (covering element 11) to seal thereon (‘731, Paragraph [0045]). The tubular lateral wall (sidewall 2) and the annular flange (flange 14) is connected by a connecting wall (connection portion 2b) of the cup shaped body wherein the connecting wall (connection portion 2b) comprises at least a part protruding outward with respect to the lateral wall (sidewall 2) (‘731, FIG. 1A) (‘731, Paragraphs [0053]-[0056]). The protruding part cooperates with an edge (abutment surface 18) of a capsule enclosing member (piston 100) of a beverage preparation device (‘731, FIG. 2A) (‘731, Paragraphs [0051] and [0060]). Bosetti et al. also discloses a thickness of the protruding part (connecting portion 2b) being greater than a thickness of the tubular lateral wall (main portion 2a) (‘731, FIG. 1A) (‘731, Paragraphs [0055]-[0056]).
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Bosetti et al. discloses the capsule being made entirely of compostable material (‘731, Paragraph [0036]). However, Bosetti et al. is silent regarding the compostable material to be cellulose pulp.
Orler discloses a capsule (cartridge 112) comprising a cup shaped body (cartridge body 200) made of compostable cellulose pulp (‘413, FIG. 2) (‘413, Paragraph [0044]) wherein the capsule (cartridge 112) further comprises a cover (cover 204) for closing the cup shaped body (cartridge body 200) and the cup shaped body (cartridge body 200) comprises a bottom wall (bottom 212), a lateral wall (side 208), and an annular flange (rim 218) for the cover (cover 204) to seal thereon (‘413, Paragraphs [0045]-[0046]).
Both Bosetti et al. and Orler are directed towards the same field of endeavor of beverage capsules used in a beverage preparation device. Both beverage capsules of Bosetti et al. and Orler are made of compostable materials. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the compostable beverage capsule of Bosetti et al. and make the cup shaped body out of a compostable cellulose pulp as taught by Orler 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 teaches that there was known utility in the beverage capsule art to construct the cup shaped body of the beverage capsule out of biodegradable cellulose pulp.
Further regarding Claim 1, Orler discloses the cup shaped body (cartridge body 200) comprising a cellulose pulp (‘413, Paragraph [0044]). Bosetti et al. appears to show the protruding part to be integral with both the lateral wall and the annular flange of the capsule (‘731, FIG. 1).
Further regarding Claim 1, in the event that it can be argued that the capsule of Bosetti et al. does not necessarily teach the protruding part to be integral with both the tubular lateral wall and the annular flange of the capsule, Yoakim et al. discloses a capsule comprising a cup shaped body comprising an annular flange (rim) comprising a sealing means forming at least one integral protrusion or lip extending form the annular flange (rim) or which an added seal element such as soft plastic, foam or fibers is added which sealing means is integral with the body of the capsule, i.e. made of the same biodegradable material (‘702, Paragraph [0043]) wherein the body is made of polymer material or cellulose based material of paper or cardboard or natural fibers (‘702, Paragraph [0055]). Yoakim et al. also discloses the body being formed of an integrally molded cup shaped piece forming the inlet wall, sidewall, and rim (‘702, Paragraph [0032]), which indicates that the annular flange and the cup shaped body are integrally molded with one another. Yoakim et al. also discloses the sealing means being an integral protrusion and formed from paper (‘702, Paragraph [0056]).
Modified Bosetti et al. and Yoakim et al. are directed towards the same field of endeavor of beverage capsules. Bosetti discloses connecting wall comprising the protruding part (connection portion 2b) that protrudes outward with respect to the tubular annular wall (main portion 2a) (‘731, FIG. 2A) (‘731, Paragraphs [0055]-[0056]) which connecting wall (connection portion 2b) is a deformable seal when cooperating with an edge of a capsule enclosing member (piston 100) of a beverage preparation device (‘731, FIG. 2A) (“731, Paragraph [0027]). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the protruding part of the connecting wall that connects to the lateral wall and construct the protruding part to be integral with both the lateral wall and the annular flange as taught by Yoakim et al. since the use of a one piece construction instead of the structure disclosed in the prior art would be merely a matter of obvious engineering choice in view of In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) (MPEP § 2144.04.V.C.). Yoakim et al. teaches that there was known utility in the beverage capsule art to integrally construct protruding parts with the lateral wall and the annular flange.
Further regarding Claim 1, Bosetti et al. discloses the protruding part of the connecting wall (connecting portion 2b) being deformable (‘731, Paragraph [0060]) and to be capable of flexing (‘731, Paragraph [0064]). Orler discloses the tubular lateral wall (cartridge body 200) being made of paper, pulp, and/or cellulose (‘413, Paragraph [0080]). Yoakim et al. discloses the sealing means being made of paper (‘702, Paragraph [0056]). However, Bosetti et al. modified with Orler is silent regarding the density of the at least a protruding part of the connecting wall being less than the density of the tubular lateral wall.
Yamamoto et al. discloses a paper tube that comes in contact with beverages (‘951, Paragraph [0024]) wherein a high density paper which has been compressed with high force by a press to cause the fibers to adhere more closely together has strong interfiber bonds and demonstrates excellent strength and a high density paper is less likely to deform and thus is higher in modulus of elasticity compared to a low density paper (‘951, Paragraph [0040]).
Both modified Bosetti et al. and Yamamoto et al. are directed towards the same field of endeavor of paper based beverage containers. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the paper based beverage container of modified Bosetti et al. and construct the protruding part to have less density than that of the maximum density of the lateral wall in order to allow the tubular lateral wall to have excellent strength that is less likely to deform via a high density paper and to allow the deformable protruding part formed from a lower density paper to be capable of easily deforming when cooperating with an edge of a capsule enclosing member of a beverage preparation device as suggested by Yamamoto et al.
Further regarding Claim 1, the limitations “for the preparation of a beverage in a beverage preparation device,” “for closing the cup shaped body,” “for the cover to seal thereon,” “said at least a protruding part cooperating with an edge of a capsule enclosing member of the beverage preparation device for improving leak tightness during the preparation of the beverage,” and “wherein the leak tightness is improved through local compaction and/or deformation of the cellulose pulp of the protruding part when the capsule enclosing member presses onto the protruding part due to the lower density and greater thickness of the protruding part with respect to the tubular lateral wall” are seen to be recitations regarding the intended use of the “capsule.” 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, Bosetti et al. discloses the capsule being used to prepare a beverage in a beverage preparation device (‘731, Paragraph [0002]), the cover closing the cup shaped body and sealing thereon (‘731, Paragraph [0022]), , and the at least a protruding part cooperating with an edge of a capsule enclosing member of the beverage preparation device (‘731, FIG. 2A) (‘731, Paragraph [0060]).
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Further regarding Claim 1, the limitations “wherein the leak tightness is improved through local compaction and/or deformation of the cellulose pulp of the protruding part when the capsule enclosing member presses onto the protruding part due to the lower density and greater thickness of the protruding part with respect to the tubular lateral wall” are limitations with respect to the properties of the claimed beverage capsule. Since the prior art combination teaches the claimed structural limitations, one of ordinary skill in the art would expect the prior art combination to behave in the same manner as claimed and have the same claimed properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of 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.). Furthermore, 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.). Nevertheless, Bosetti et al. teaches the greater thickness of the protruding part (at connecting portion 2b) leading to “improved” leak tightness when the protruding part (at connecting portion 2b) cooperates with an edge of a capsule enclosing member of the beverage preparation device (‘731, Paragraphs [0027] and [0060]). Furthermore, Bosetti et al. discloses the protruding part (connecting portion 2b) being deformable when engaging with a beverage preparation device (‘731, Paragraph [0060]). Yoakim et al. discloses a sealing means being made of paper fibers (‘702, Paragraph [0056]). Yamamoto et al. discloses low density paper is more likely to deform (‘951, Paragraph [0040]). Therefore, the combination of prior art of the deformable sealing means made of relatively lower paper/cellulosic fibers would have “improved” leak tightness since lower density paper fibers can more easily deform as suggested by Yamamoto et al. (‘951, Paragraph [0040]).
Regarding Claim 4, Bosetti et al. discloses at least a protruding part (connecting portion 2b) having a greater thickness than the maximum thickness of the lateral wall (main portion 2a) (‘731, FIG. 1B) (‘731, Paragraph [0056]).
Regarding Claim 6, Bosetti et al. modified with Orler, Yoakim et al., and Yamamoto et al. is silent regarding the difference between the density D1 of the lateral wall of the cup shaped body and the density D2 of the protruding part of the connecting wall comprising a value between 0.1% of D1 and 20% of D1, i.e. 1%D1 ≤(D1-D2)≤ 20%D1. However, differences in the relative densities between that of the lateral wall and the protruding part of the connecting wall will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such difference between the maximum density D1 of the lateral wall of the cup shaped body and the density D2 of the protruding part of the connecting wall 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.). Yamamoto et al. discloses a high density paper which has been compressed with high force by a press to cause the fibers to adhere more closely together has strong interfiber bonds and demonstrates excellent strength and a high density paper is less likely to deform and thus is higher in modulus of elasticity compared to a low density paper (‘951, Paragraph [0040]). Yoakim et al. discloses the sealing means being formed from paper (‘702, Paragraph [0056]). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beverage capsule of modified Bosetti et al. and construct the protruding part to have less density than that of the maximum density of the lateral wall in order to allow the tubular lateral wall to have excellent strength that is less likely to deform via a high density paper and to allow the deformable protruding part formed from a lower density paper to be capable of easily deforming when cooperating with an edge of a capsule enclosing member of a beverage preparation device as suggested by Yamamoto et al.
Claims 5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Bosetti et al. US 2021/0107731 in view of Orler US 2020/0253413 (cited on Information Disclosure Statement filed October 1, 2025), Yoakim et al. US 2011/0041702 and Yamamoto et al. US 2021/0395951 as applied to claim 1 above in further view of Doglioni Majer US 2015/0208852.
Regarding Claim 5, Bosetti et al. modified with Orler, Yoakim et al., and Yamamoto et al. is silent regarding the at least a protruding part of the connecting wall having a round shape.
Doglioni Majer discloses a capsule comprising a cup shaped body and a cover for closing the cup shaped body wherein the cup shaped body comprises a bottom wall, a lateral wall (lateral wall 2), and an annular flange (flange like rim 4) of the cover to seal thereon wherein the lateral wall and the annular flange (flange like rim 4) are connected by a connecting wall (plurality of ridges or protruding elements 24) of the cup shaped body wherein the connecting wall (plurality of ridges or protruding elements 24) comprises at least a part protruding outward with respect to the lateral wall (lateral wall 2) (‘852, FIG. 10) (‘852, Paragraph [0103]) wherein at least a protruding part cooperates with an edge (pressing edge 10) of a capsule enclosing member of a beverage preparation device (‘852, FIG. 3) wherein the protruding part (plurality of ridges or protruding elements 24) is integral with both the lateral wall (lateral wall 2) and the annular flange (flange like rim 4) of the capsule (‘852, Paragraph [0018]) wherein the protruding part (plurality of ridges or protruding elements 24) has a round/elliptical shape, i.e. a shape corresponding to that of the edge (pressing edge 10) of the capsule enclosing member of the beverage preparation device and to adapt to the indentations of the edge (pressing edge 10) of the capsule enclosing member of the beverage preparation device (‘852, Paragraph [0103]).
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Both modified Bosseti et al. and Doglioni Majer are directed towards the same field of endeavor of beverage capsules used in a beverage preparation device to make a beverage. Both beverage capsules of modified Bosseti et al. and Doglioni Majer contain a cup shaped body having a connecting wall protruding outward with respect to a lateral wall. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beverage capsule of modified Bosseti et al. and construct the protruding part of the connecting wall to have a round shape as taught by Doglioni Majer in order to adapt to the indentations of the edge of the capsule enclosing member of the beverage preparation device (‘852, Paragraph [0103]). Furthermore, the configuration of the claimed protruding part of the connecting wall 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 protruding part of the connecting wall was significant in view of In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (MPEP § 2144.04.IV.B.). Doglioni Majer teaches that there was known utility in the beverage capsule art to construct the connecting wall with a protruding part having a rounded shape.
Regarding Claim 8, Doglioni Majer discloses at least the protruding part of the connecting wall (plurality of ridges or protruding elements 24) having a rounded shape externally and a flat shape inclined with respect to a longitudinal axis of the cup shaped body internally (‘852, FIG. 10) (‘852, Paragraph [0103]). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beverage capsule of modified Bosseti et al. and construct the protruding part of the connecting wall to have a round shape externally as taught by Doglioni Majer in order to adapt to the indentations of the edge of the capsule enclosing member of the beverage preparation device (‘852, Paragraph [0103]). Furthermore, the configuration of the claimed protruding part of the connecting wall 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 protruding part of the connecting wall was significant in view of In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (MPEP § 2144.04.IV.B.). Doglioni Majer teaches that there was known utility in the beverage capsule art to construct the connecting wall with a protruding part having a rounded shape externally and a flat shape inclined with respect to a longitudinal axis of the cup shaped body internally.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Bosetti et al. US 2021/0107731 in view of Orler US 2020/0253413 (cited on Information Disclosure Statement filed October 1, 2025), Yoakim et al. US 2011/0041702 and Yamamoto et al. US 2021/0395951 as applied to claim 1 above in further view of Doglioni Majer US 2015/0208852 and Mariller US 2011/0297005.
Regarding Claim 7, Bosetti et al. modified with Orler, Yoakim et al., and Yamamoto et al. is silent regarding the inner surface being inclined in a direction seen in longitudinal section forming an angle with the direction of inclination of the lateral wall of the cup shaped body which angle is between 100° and 150°.
Doglioni Majer discloses a capsule comprising a cup shaped body and a cover for closing the cup shaped body wherein the cup shaped body comprises a bottom wall, a lateral wall (lateral wall 2), and an annular flange (flange like rim 4) of the cover to seal thereon wherein the lateral wall and the annular flange (flange like rim 4) are connected by a connecting wall (plurality of ridges or protruding elements 24) of the cup shaped body wherein the connecting wall (plurality of ridges or protruding elements 24) comprises at least a part protruding outward with respect to the lateral wall (lateral wall 2) (‘852, FIG. 10) (‘852, Paragraph [0103]) wherein at least a protruding part cooperates with an edge (pressing edge 10) of a capsule enclosing member of a beverage preparation device (‘852, FIG. 3) wherein the protruding part (plurality of ridges or protruding elements 24) is integral with both the lateral wall (lateral wall 2) and the annular flange (flange like rim 4) of the capsule (‘852, Paragraph [0018]) wherein the protruding part (plurality of ridges or protruding elements 24) has a round/elliptical shape, i.e. a shape corresponding to that of the edge (pressing edge 10) of the capsule enclosing member of the beverage preparation device and to adapt to the indentations of the edge (pressing edge 10) of the capsule enclosing member of the beverage preparation device (‘852, Paragraph [0103]).
Mariller discloses a capsule (capsule 1b) comprising a cup shaped body and a cover for closing the cup shaped body wherein the cup shaped body comprises a bottom wall, a lateral wall (sidewall 2b), and an annular flange (rim 3b) for the cover to seal thereon wherein the lateral wall (sidewall 2b) and the annular flange (rim 3b) are connected by a connecting wall (gutter 4b) of the cup shaped body wherein the connecting wall (gutter 4b) comprises at least a part protruding outward with respect to the lateral wall and at least a protruding part cooperating with an edge of a capsule enclosing member (5b) of a beverage preparation device (‘005, FIG. 1B) (‘005, Paragraphs [0085]-[0093]) wherein one or more extra thicknesses placed in the bottom portion of the sidewall is used to make it easier to center the capsule in the capsule cage (‘005, Paragraph [0019]) wherein the protruding part is integral with the lateral wall and the annular flange (‘005, Paragraph [0031]).
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Modified Bosetti et al., Doglioni Majer, and Mariller are all directed towards the same field of endeavor of beverage capsules used in beverage preparation devices to make a beverage. Although Doglioni Majer and Mariller does not teach the claimed angle of inclination with respect to the lateral wall of between 100° and 150°, it would have been obvious to one of ordinary skill in the art at the time of the invention to adjust the inner surface of the connecting wall of the beverage capsule of modified Bosetti et al. to the claimed angle of inclination relative to the lateral wall since Doglioni Majer teaches adapting to the indentations of the edge (pressing edge 10) of the capsule enclosing member of the beverage preparation device (‘852, Paragraph [0103]) and since Mariller teaches one or more extra thicknesses placed in the bottom portion of the sidewall is used to make it easier to center the capsule in the capsule cage (‘005, Paragraph [0019]). This would be done irrespective of the particular angle of inclination of the inner surface of the connecting wall relative to the lateral wall. Differences in the angle of inclination of the inner surface of the connecting wall relative to the lateral wall will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such angle of inclination of the inner surface of the connecting wall relative to the lateral wall 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.).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Bosetti et al. US 2021/0107731 in view of Orler US 2020/0253413 (cited on Information Disclosure Statement filed October 1, 2025), Yoakim et al. US 2011/0041702, and Yamamoto et al. US 2021/0395951 as applied to claim 1 above in further view of Knack US 2015/0203607 and Marcinkowski US 2017/0355515.
Regarding Claim 9, Orler discloses the cup shaped body (cartridge body 200) being made of cellulose pulp comprising cellulose fibers (‘413, Paragraph [0044]). Orler also discloses an oxygen barrier liner (liner 700) attached at the inner surface of the cup shaped body (cartridge body 200) (‘413, FIG. 7) (‘413, Paragraph [0075]) made of cellulose pulp (‘413, Paragraph [0044]). The oxygen barrier liner (liner 904) is made of a home compostable polymer (‘413, Paragraphs [0081]-[0082] and [0100]).
However, Bosetti et al. modified with Orler, Yoakim et al., and Yamamoto et al. is silent regarding the cellulose fibers being in a percentage ranging from 80% to 100% by weight.
Knack discloses a capsule (coffee pad) containing a crosslinked polyethylene fiber or a mixture of polymer fibers or heat sealable filter paper (‘243, Paragraph [0044]) wherein the heat sealable filter paper contains natural fibers derived from cellulose in a weight percentage of from about 60% to about 85% and synthetic fibers derived from wood pulp in an amount of 15% to 40% (‘607, Paragraph [0041]), which overlaps the claimed cellulose fibers in a percentage ranging from 80% to 100%.
Both modified Bosetti et al. and Knack are directed towards the same field of endeavor of beverage capsules. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beverage capsule of modified Bosetti et al. and incorporate cellulose fibers in the claimed percentage as taught by Knack since where the claimed cellulose fiber concentration ranges overlaps cellulose fiber concentration 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.).
Further regarding Claim 9, Orler also discloses an oxygen barrier liner (liner 700) attached at the inner surface of the cup shaped body (cartridge body 200) (‘413, FIG. 7) (‘413, Paragraph [0075]) made of cellulose pulp (‘413, Paragraph [0044]). The oxygen barrier liner (liner 904) is made of a home compostable polymer (‘413, Paragraphs [0081]-[0082] and [0100]). However, Bosetti et al. modified with Orler and Knack is silent regarding the oxygen barrier liner being made of a polymer.
Marcinkowski discloses a capsule comprising a cup shaped body (cup 12) made of compostable cellulose fiber (‘515, Paragraph [0017]) and a liner including a polymer material and/or compostable polymers or paper made from a material impervious to moisture and gases (‘515, Paragraph [0025]).
Both modified Bosetti et al. and Marcinkowski are directed towards the same field of endeavor of beverage capsules. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beverage capsule of modified Bosetti et al. and construct the oxygen barrier liner out of a compostable polymer as taught by Marcinkowski 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). Marcinkowski teaches that there was known utility in the beverage capsule art to construct a liner of the beverage capsule out of a compostable polymer.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Bosetti et al. US 2021/0107731 in view of Orler US 2020/0253413 (cited on Information Disclosure Statement filed October 1, 2025), Yoakim et al. US 2011/0041702, and Yamamoto et al. US 2021/0395951. as applied to claim 1 above as further evidenced by Okamoto et al. US 2017/0107034.
Regarding Claim 10, the limitations “wherein said capsule is a single use coffee capsule” 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. Nevertheless, Bosetti et al. discloses the capsule being made entirely of compostable materials (‘731, Paragraph [0036]) wherein the capsule is a coffee capsule (‘731, Paragraphs [0009] and [0043]). Okamoto et al. provides evidence that it was known in the food and beverage container art that coffee capsules (container cup 60 of single use coffee pods) (‘034, Paragraph [0064]) made from compostable paper (‘034, Paragraph [0063]) are capable of being single use coffee capsules (‘034, Paragraph [0064]).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Bosetti et al. US 2021/0107731 in view of Orler US 2020/0253413 (cited on Information Disclosure Statement filed October 1, 2025), Yoakim et al. US 2011/0041702, and Yamamoto et al. US 2021/0395951 as applied to claim 1 above in further view of Heiberger US 2011/0114595.
Regarding Claim 12, Bosetti discloses the cup shaped body having revolutionary symmetry (main body comprises an axially symmetrical sidewall with respect to the central axis) (‘731, Paragraphs [0018] and [0041]). However, Bosetti modified with Orler, Yoakim et al., and Yamamoto et al. is silent regarding the protruding part/sealing member formed in O-ring shape being convex.
Heiberger discloses a beverage container (‘595, Paragraph [0038]) comprising an o-ring having a convex geometry (‘595, Paragraph [0047]).
Both modified Bosetti and Heiberger are directed towards the same field of endeavor of beverage containers. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the shape of the protruding part/sealing member having any shape such as an O-ring of modified Bosetti to be an O-ring having a convex shape as taught by Heiberger since the configuration of the claimed protruding part/sealing member 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 protruding part/sealing member was significant in view of In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (MPEP § 2144.04.IV.B.). One of ordinary skill in the art would adjust the shape of the protruding part/sealing member of the capsule of modified Bosetti based upon the dimensions of the beverage preparation device in which the capsule is inserted to provide a good seal between the capsule and the beverage preparation device (‘507, Paragraphs [0082]-[0083]).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Bosetti et al. US 2021/0107731 in view of Orler US 2020/0253413 (cited on Information Disclosure Statement filed October 1, 2025), Yoakim et al. US 2011/0041702, and Yamamoto et al. US 2021/0395951 as applied to claim 1 above in further view of Kay US 2018/0148251.
Regarding Claim 12, Bosetti discloses the cup shaped body having revolutionary symmetry (main body comprises an axially symmetrical sidewall with respect to the central axis) (‘731, Paragraphs [0018] and [0041]). However, Bosetti modified with Orler, Yoakim et al., and Yamamoto et al. is silent regarding the protruding part/sealing member shape being convex.
Kay a capsule comprising a cup shaped body comprising a bottom wall, a tubular lateral wall, and an annular flange wherein the tubular lateral wall and the annular flange are connected by a connecting wall of the cup shaped body wherein the connecting wall comprises at least a part protruding outward (annular recess 13) with respect to the tubular lateral wall wherein the protruding part (sealing rib 28) is convex (‘251, FIG. 2) (‘251, Paragraphs [0023]-[0024]).
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Both modified Bosetti and Kay are directed towards the same field of endeavor of beverage capsules. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the shape of the protruding part/sealing member having any shape of modified Bosetti to be a convex shape as taught by Kay since the configuration of the claimed protruding part/sealing member 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 protruding part/sealing member was significant in view of In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (MPEP § 2144.04.IV.B.). One of ordinary skill in the art would adjust the shape of the protruding part/sealing member of the capsule of modified Bosetti based upon the dimensions of the beverage preparation device in which the capsule is inserted to provide a good seal between the capsule and the beverage preparation device (‘251, Paragraphs [0009]-[0010]).
Response to Arguments
Examiner notes that a new indefiniteness rejection under 35 USC 112(b) have been made.
Applicant’s arguments with respect to the obviousness rejections of independent Claim 1 under 35 USC 103(a) have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Vilardell Pares US 2024/0367894 discloses a capsule comprising a sealing member made from paper cellulose that deforms to fit the pressing portion of an enclosing member (‘894, Paragraph [0008]).
Bartoli et al. US 2023/0090930 discloses a capsule comprising a sealing member comprising a plurality of cellulose based layers wherein each layers has different properties, e.g. the outer layer has a lower density than the inner layer to deform better and promote fluidic seal during dispensing (‘930, Paragraph [0139]).
Kay US 2022/0388764 discloses a capsule comprising a sealing ring comprising a compressible paper board layer (‘764, Paragraph [0068]).
Gort-Barten et al. US 2022/0204255 discloses a capsule comprising an annular flange comprising an annular seal made of paper cellulose material that deforms plastically in use wherein the annular seal comprises first and second layers wherein the first layer comprises long well bound fibers (‘255, FIGS. 5A-5B).
Garcia Rios US 2019/0150657 discloses a capsule (capsule 2) comprising a cup shaped body (main body 6) made of cellulose pulp (‘657, Paragraph [0043]) wherein the cup shaped body (main body 6) comprises a bottom wall (lower base 10), a tubular lateral wall (sidewall 18), and an annular flange (rim 12) (‘657, Paragraph [0045]) wherein the tubular lateral wall (sidewall 18) and the annular flange (rim 12) are connected by a connecting wall of the cup shaped body (main body 6) wherein the connecting wall comprises at least a part protruding outward (annular protrusion 24) with respect to the tubular lateral wall wherein the protruding part (annular protrusion 24) connects both the tubular lateral wall and the annular flange of the capsule wherein a thickness of the protruding part (annular protrusion 24) is greater than a thickness of the tubular lateral wall and the protruding part (annular protrusion 24) cooperates with an edge of a capsule enclosing member (enclosing member 102) of a beverage preparation device (‘657, FIGS. 2 and 5) (‘657,. Paragraph [0053]) wherein the cup shaped body (main body 6) is made by injection of a polymer (‘657, Paragraph [0042]).
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Kruger et al. US 2022/0063899 discloses a deformable seal that undergoes partial elastic shape reversion (‘899, Paragraph [0068]) wherein the seal is made of cellulose (‘899, Paragraph [0057]).
Yoakim et al. US 2009/0017177 discloses a capsule comprising an inelastic sealing material made from paper (‘177, Paragraph [0035]).
Guidotti et al. US 2022/0251785 discloses a cellulose product able to hold or withstand food and beverages (‘785, Paragraph [0040]) wherein the cellulose product is made from cellulose blank structures having varying densities, thicknesses, and grammage levels (‘785, Paragraph [0059]).
Gort-Barten et al. WO 2019/092144 discloses a capsule comprising a cup shaped body (main body 2) made of cellulose pulp and comprising a bottom wall (upper end 3), a tubular lateral wall, and an annular flange (flange 7) (‘144, Page 5, lines 10-14) wherein the capsule further comprises an annular seal made of paper (ring shaped seal 10 made of paper or fiber) (‘144, Page 4, lines 7-8) capable of cooperating with an edge of a capsule enclosing member of a beverage preparation device for improving leak tightness during the preparation of a beverage (‘144, Page 5, lines 6-9).
Asayama et al. US 2002/0012759 discloses a molding base paper used as a material for food packing vessels (‘759, Paragraph [0001]) wherein the molding base paper has a high density layer and a low density layer (‘759, Paragraph [0047]) wherein a foaming agent and/or light pigments is incorporated into the molding base paper to lower the density thereof (‘759, Paragraph [0069]) wherein the molding base paper is a multilayer paper wherein a low density layer is used as an intermediate layer and high density layers are used as outer layers sandwiching the intermediate layer to make a base paper that is bulky and has a high stiffness (‘759, Paragraph [0082]).
The prior art made of record, cited on a previous 892 Notice of Reference Cited form, and not relied upon is considered pertinent to applicant's disclosure.
Brivois US 2022/0348402 discloses a capsule comprising a sealing ring made from absorbent paper based material and/or cellulose (‘402, Paragraphs [0047] and [0049]).
Gort-Barten US 2020/0385204 discloses a capsule comprising a sealing means comprising a ring formed from a cellulose material or paper which ring deforms plastically in use when engaged by a capsule cage of a coffee machine to provide a seal (‘204, Paragraph [0011]) wherein the seal does not need to be made of an elastomeric material such as silicone wherein the non elastic deformation of paper or other cellulose based material provides a sufficiently strong seal that there is no meaningful leakage in known capsule machines (‘204, Paragraph [0031]).
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
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