DETAILED ACTION
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 3 – 5, and 7 – 9 are rejected under 35 U.S.C. 103 as being unpatentable over Footz et al. US 2023/0111111 as further evidenced by Appleford US 2020/0231370 as further evidenced by Nhan et al. US 2009/0321238.
First it is noted that the claims are directed to a capsule capable for the preparation of a beverage and not a beverage preparation device.
Regarding claim 1, Footz discloses a capsule (pod 102) capable of preparing a beverage in a beverage preparation device which capsule comprises a cup shaped body (fig. 1 and 2) and a cover (lid 104) for closing the cup shaped body. Further, in figure 4 top right portion Footz shows a mold (404) from which the capsule would be made which mold appears to show an annular flange for the cover to seal thereon. It would therefore have been obvious to the ordinarily skilled artisan to have provided an annular flange to the capsule. The cup shaped body comprises a bottom wall (208), a tubular lateral wall (108), and the annular flange. The bottom wall comprises at least a fluid injection portion (202) capable of being pierced by a piercing member of the beverage preparation device, and at least a surrounding portion (fig. 2) surrounding said fluid injection portion.
The cup-shaped body comprises a cellulose pulp layer (wood pulp) made of cellulose pulp, and an oxygen barrier liner (EVOH) (paragraph [0025]). Appleford provides further provides further evidence that it was well known in the art to provide a capsule capable of preparing a beverage which capsule is made from a cellulose pulp with a flange (2) (paragraph [0004], [0080], and fig. 1A – 1C).
Footz as further evidenced by Appleford also discloses the fluid injection portion of the capsule is compressed and decreased in thickness with respect to the surrounding portions of the bottom wall (‘111, paragraph [0027] and fig. 2), which is to say that the stiffness of the cellulose pulp layer of said fluid injection portion would have a greater density with respect to the density of the cellulose pulp and therefore a greater stiffness than the stiffness of the cellulose pulp layer of said surrounding portion.
With respect to the cellulose pulp layer of the fluid injection portion being ultrasonically stiffened, while the limitation ultrasonically stiffened is a method limitation and does not determine the patentability of the product unless the process produces unexpected results, Footz as further evidenced by Appleford discloses the final compression, i.e., the final compression of fluid injection portion of the article (202), would be formed through the use of energetic treatments and specifically cites this to include ultrasonic treatments (‘111, paragraph [0025]). Therefore increasing the density, i.e., the stiffness of the cellulose pulp of the fluid injection portion ultrasonically would have been an obvious matter of choice and/or design to the ordinally skilled artisan.
Claim 1 now further recites “ said cellulose pulp layer of the fluid injection portion comprises ultrasonically stiffened cellulose pulp, wherein the surrounding portion comprises non-ultrasonically treated fibers of the cellulose pulp”.
Footz as further evidenced by Appleford has disclosed that the bottom wall (208) comprises a compressed portion as layers which layers are fused (a region of fused layers 202) and that said fusing is created by ultrasonic treatment (energetic forces such as . . . ultrasound). Footz as further evidenced by Appleford further discloses the bottom wall would also comprise an uncompressed portion (‘111, paragraph [0027] and fig. 2), which is to say a portion (208) is comprising non-ultrasonically treated fibers of the cellulose pulp.
In the event that Footz as further evidenced by Appleford can be construed as not teaching the uncompressed portion would comprise non-ultrasonically treated fibers of the cellulose pulp Nhan teaches that when subjected to ultrasonic energy cellulose fibers tend to flatten (paragraph [0116) which is to say that cellulose pulp that has not been ultrasonically treated would be understood by the ordinarily skilled artisan to have not have been flattened or ultrasonically stiffened based on the teachings of Nhan. Stated somewhat differently, given the teachings of Footz as further evidenced by Appleford in view of the teachings of Nhan the ordinarily skilled artisan would readily understand that the non-compressed portion (208) shown in figure 2 of Footz would comprise non-ultrasonically treated fibers of the cellulose pulp.
Regarding the surrounding portion of the cellulose pulp layer comprising the non-ultrasonically treated fibers of the cellulose pulp, once it was known to provide an ultrasonically stiffened cellulose pulp and a non-ultrasonically treated portion on the bottom wall of the capsule it is not seen that patentability would be predicated on which portion of the bottom wall would be surrounded, that is the treated portion being surrounded by the non-treated portion of the other way round, absent strong and compelling evidence to the contrary as this would merely be a rearrangement of parts and the exact position of the ultrasonically stiffened portion in relationship to the non-ultrasonically treated portion is not seen to modify the operation of the bottom wall of the capsule (MPEP 2144.04 VI.C.).
Regarding claim 3, as set forth above in the rejection of claim 1 Footz as further evidenced by Appleford in view of Nhan has disclosed that it would have been obvious to ultrasonically stiffen the fluid injection portion of the cellulose pulp layer of the capsule. Footz as further evidenced by Appleford in view of Nhan is silent regarding the amount of hydrogen bonds, however Nhan discloses that when cellulose pulp is subjected to ultrasonic energy the cellulose fibres flatten, which is to say the density of said fibres is increased, i.e., stiffened and the amount of hydrogen bonds is increased with respect to cellulose pulp that has not been subjected to ultrasonic energy (paragraph [0116]) therefore it would be expected that the ultrasonically stiffened cellulose pulp of the fluid injection portion of the capsule would have an increase in the amount of hydrogen bonds with respect to the non-ultrasonically treated fibres of the cellulose pulp.
Regarding claim 4, Footz as further evidenced by Appleford in view of Nhan discloses that the cellulose pulp layer of the capsule would be formed in a mould, and thereafter additional compression would be applied to said pulp layer (‘111, paragraph [0018]). As set forth in the rejection of claim 1, this additional compression is seen to be applied as an ultrasonic treatment to the fluid injection portion of the capsule bottom and after this additional compression a bioplastic, i.e., the oxygen barrier recited in claim 1, may further be injected as a layer thereto as a third or further step (after one or more of the above steps) (paragraph [0018]). Stated somewhat differently it is seen it would have been an obvious matter of choice and/or design to the ordinarily skilled artisan to have ultrasonically stiffened only the cellulose pulp layer of the cup shaped body and not the oxygen barrier layer.
Regarding claim 5, since Footz as further evidenced by Appleford in view of Nhan discloses the cellulose portion of the cup shaped body to be made of cellulose fibres (wood pulp) (‘111, paragraph [0025]) it is seen that the cellulose pulp would have a cellulose fibre percentage of 100%.
Regarding claim 7, Footz as further evidenced by Appleford in view of Nhan discloses the oxygen barrier liner would comprise a thermoformable polymer (EVOH) (‘111, paragraph [0025]).
Regarding claim 8, Footz as further evidenced by Appleford in view of Nhan discloses the capsule would be made from cellulose pulp and an oxygen barrier liner (EVOH) (‘111, paragraph [0025]) both of which would be home compostable (in a home composter) (‘111, paragraph [0013]).
Regarding claim 9, Footz as further evidenced by Appleford in view of Nhan discloses the capsule is a single use coffee capsule (‘111, paragraph [0002] – [0003]).
Claims 2 and 6 rejected under 35 U.S.C. 103 as being unpatentable over Footz et al. US 2023/0111111 as further evidenced by Appleford et al. US 20200231370 in view of Nhan et al. US 2009/0321238 in view of Törnblom US 2023/0256702 and Sippus US 2020/0332468.
Claim 2 differs from Footz as further evidenced by Appleford in view of Nhan in difference between the density of the fluid injection portion (D1) and the density of the surrounding portion (D2) having a value that is 0.1%D1 ≤ (D1 – D2) ≤ D1.
Claim 6 differs from Footz as further evidenced by Appleford in view of Nhan in the specific amount of decrease in thickness with respect to the thickness of the cellulose pulp layer of the surrounding portion.
Footz as further evidenced by Appleford in view of Nhan does disclose that the fluid injection portion of the capsule (layers 202) comprises an area of denser, decreased thickness (thinner, more uniform) so that the capsule is fully penetrated (‘111, paragraph [0025]). Once it was known to vary the density and thickness of a fluid injection portion of a capsule it is not seen that patentability would be predicated on differences in the relative densities and/or thicknesses between the fluid injection portion and the density of the surrounding portion unless there is evidence indicating such difference between the maximum density D1 of the fluid injection portion of the cup shaped body and the density D2 of the surrounding portion or the specific thickness is critical. Nevertheless Törnblom discloses that hot pressing, i.e., compressing, which after all is what ultrasonic treatment is in effect doing here, would result in a compacted, that is a decreased thickness, i.e., increased (higher) density as compared to surrounding portions that have not been so treated and that the change in density and thereby a decrease in thickness, which would increase stiffness, will depend on the degree of treatment (paragraph [0070] and [0073] and fig. 2). Sippus discloses that increasing the density of a cellulose pulp based product by 10% – 15%, which would also result in a decreased thickness, provides good results in improved delamination prevention and provides good strength, i.e., increased stiffness to the area so treated as opposed to the surrounding portions which have not been treated to increase the density thereof and would also result in a decreased thickness (paragraph [0032] and [0035]). Therefore, based on the teaching of Törnblom and Sippus it is seen that the particular density and thickness one would choose to provide the fluid injection portion of the capsule would have been a result effective variable which the ordinarily skilled artisan would have conventionally and routinely optimized. 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 (MPEP § 2144.05.I1.A.).
Appleford provides further evidence that it was well established and conventional in the art to provide a capsule with a stiffened cellulose pulp layer of an injection portion that is where the thickness is decreased (paragraph [0078] and fig. 2D), which would be expected to increase the density thereof, with respect to the thickness of the cellulose pulp layer of the surrounding portion.
Further regarding claim 6, once it was known to provide the cup shaped body of the capsule with a thickness of the ultrasonically stiffened cellulose pulp layer thinner with respect to the cellulose pulp layer of the surrounding portion it is not seen that patentability would be predicated on the particular difference in thickness of said stiffened cellulose pulp layer. Limitations relating to the thickness of the ultrasonically stiffened cellulose pulp layer are not sufficient to patentably distinguish over the prior art. The mere scaling down of a prior art ultrasonically stiffened cellulose pulp layer capable of being so scaled, if such were the case, would not establish patentability in a claim to an old ultrasonically stiffened cellulose pulp layer." 531 F.2d at 1053, 189 USPQ at 148.). Where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed stiffened cellulose pulp layer and a capsule having the claimed relative dimensions would not perform differently than the prior art capsule, the claimed ultrasonically stiffened cellulose pulp layer is not patentably distinct from the prior art device (MPEP § 2144.04 IV.A.).
Response to Arguments
Initially it is noted that applicant indicates that replacement sheets for figures 2A and 2B were submitted in applicant’s latest response but the Examiner is unable to locate these replacement drawings. Applicant is requested to please submit additional copies with any reply.
Applicant's arguments filed 22 June 2026 have been fully and carefully considered but they are not found persuasive.
Applicant urges that with respect to the bottom of the capsule Footz is not disclosing the fluid injection portion would be surrounded by a portion that is non-ultrasonically treated and that ultrasonic stiffening treatment changes the structure and properties of the cellulose pulp. These urgings are not deemed persuasive.
Footz as further evidenced by Appleford has disclosed that the bottom wall (208) comprises a compressed portion as layers which layers are fused and that said fusing is created by ultrasonic treatment. Footz as further evidenced by Appleford further discloses the bottom wall would also comprise an uncompressed portion of fibres, which is to say the uncompressed portion that is not fused. Nhan teaches that when subjected to ultrasonic energy cellulose fibers tend to flatten which is to strongly suggest that the cellulose pulp that has not been ultrasonically treated, in this case the uncompressed fibers of Footz as further evidenced by Appleford would be understood by the ordinarily skilled artisan to have not have been flattened which is to say the uncompressed fibres would comprise non-ultrasonically treated/stiffened based on the additional teachings of Nhan. Therefore as set forth above in the rejection of claim 1 Footz as further evidenced by Appleford in view of Nhan is seen to teach that the cellulose pulp that is non-ultrasonically treated would not be stiffened and more densified than cellulose pulp that has been so treated as Footz shows in figure 2 (208). Once it was known to provide an ultrasonically stiffened cellulose pulp and a non-ultrasonically treated portion on the bottom wall of the capsule it is not seen that patentability would be predicated on which portion of the bottom wall would be surrounded, that is the treated portion being surrounded by the non-treated portion of the other way round. Footz also discloses that the mold (404) may include one or more fusing elements which is say that the entire mold of Footz need not comprise said fusing elements and those portion of the capsule that come into contact with portions of the mold that do not comprise said elements would be non-ultrasonically treated.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAIM A SMITH whose telephone number is (571)270-7369. The examiner can normally be reached Monday-Thursday 09:00-18:00.
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/C.S./
Chaim SmithExaminer, Art Unit 1791 29 August 2026
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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