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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to show “a plurality of through holes 5E” as described in the specification on page 13, line 3. While reference sign 5E is present in figures 5 and 6 the lead lines 5E as seen in the figures appear to depict an extension of the oxygen barrier 14. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "14" and "5E" both appear to have been used to depict an oxygen barrier liner. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 – 9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite “wherein the bottom wall comprises a first protruding portion which protrudes toward an inside of the cup-shaped body and is shaped to contact an external portion of the lateral wall”. There is no support found in applicant’s specification for “the cup-shaped body” to be “shaped to contact an external portion of the lateral wall”. Applicant’s specification as submitted as well as paragraphs [0010], [0017], [0091], and [0092] of applicant’s pre-grant publication all recite that the first protrusion would come into contact with an “extremal portion” of an internal portion and not an external portion or a lateral wall making it obvious that the term “extremal” is not a typographical error. The term “extremal” is defined as “pertaining to extreme qualities or configurations, or highest or lowest values”. Therefore the new limitation “wherein the bottom wall comprises a first protruding portion which protrudes toward an inside of the cup-shaped body and is shaped to contact an external portion of the lateral wall” raises an issue of new matter and as such must be deleted.
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.
Claim 13 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 13, it is still unclear how the bottom wall would comprise 0.1% of cellulose pulp if said bottom wall would comprise 100% polymer.
Examiner’s Remarks
It is again noted that the claims are directed to a capsule capable of preparing a beverage and not a beverage preparation device.
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 – 9 are rejected under 35 U.S.C. 103 as being unpatentable over Cabilli et al. US 2017/0334624 in view of Okamoto et al. US 2017/0107034.
Regarding claim 1, Cabilli discloses a capsule (cartridge 10) which would be capable of preparing of a beverage in a beverage preparation device which capsule comprises a cup-shaped body (14) and a cover (16) capable of closing the cup-shaped body (paragraph [0035] – [0037]). The cup-shaped body comprises a bottom wall (142) capable of being pierced by a piercing member of a beverage preparation device (paragraph [0048]), a lateral wall (140) and an annular flange (144) for the cover to seal thereon (fig. 1). The lateral wall is made at least of a first structural layer (cellulose) (paragraph [0083]) and the bottom wall is made at least of a second structural layer (PLA) (paragraph [0082]). Further, the first structural layer of the lateral wall is made of cellulose pulp (compostable paper/cellulose) (paragraph [0083]) and the second structural layer of the bottom wall comprises 0% cellulose pulp and 100% of a polymer (PLA ) (paragraph [0082]). Cabilli further discloses the lateral wall may also comprise PHA, which is known to have oxygen barrier properties (paragraph [0062]).
Claim 1 now further recites “wherein the bottom wall comprises a first protruding portion which protrudes toward an inside of the cup-shaped body and is shaped to contact an external portion of the lateral wall”. Cabilli discloses the bottom wall comprises a first protruding portion which protrudes towards an inside of the cup-shaped body (concave . . . facing . . . the inside of the cartridge) (paragraph [0042]). Cabilli further discloses the lateral wall (140) would comprise a triple layered laminate which is to say that the lateral wall would comprise two external portions and an interior portion (paragraph [0083]) in that the edges of the bottom wall (142) directly contact one of the external surfaces of the lateral wall (140) as opposed to the interior portion of the lateral wall it is seen that bottom wall (142) is shaped to directly contact an external portion of the lateral wall (connected in a fluid-tight way . . . to the side wall 140) (paragraph [0039]).
Claim 1 differs from Cabilli, if at all, in the cup-shaped body comprises an oxygen barrier liner attached to the inner surface of at least said first structural layer of said lateral wall, wherein said oxygen barrier liner comprises at least a polymer.
Okamoto discloses a capsule (container 90) which would be capable of preparing a beverage in a beverage preparation device which capsule comprises a cup-shaped body (cup 60) and a cover (lid 70) (paragraph [0065]). The cup-shaped body comprises a bottom wall capable of being pierced by a piercing member of a beverage preparation device, a lateral wall (62), an annular flange (64) for the cover to seal thereon (fig. 7), and the capsule is made at least of a first structural layer, a cellulose pulp (compostable paper structure) (paragraph [0063]).
Okamoto further discloses the cup-shaped body would comprise an oxygen barrier liner attached to the inner surface of the cup-shaped body, which oxygen barrier would comprise a polymer (PVOH) (paragraph [0041]). Okamoto is providing a capsule made of a cellulose pulp to counter the environmental effect of non-compostable capsules made of aluminium or polypropylene. Since paper containers have poor oxygen barrier properties making them poor capsules for the packaging of coffee which is oxygen sensitive (paragraph [0006] – [0007]) Okamoto is attaching to the inner surface of the capsules an oxygen barrier liner to provide good oxygen barrier properties for the art recognized function of maintaining the quality of contained ingredients, such as coffee (paragraph [0008]) which is applicant’s reason for doing so as well. To therefore modify Cabilli if necessary and attach an oxygen barrier liner to the inner surface of the capsule as taught by Okamoto would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
Regarding claim 2, in order for the contents of the capsule to be protected from oxygen degradation it is obvious that Cabilli in view of Okamoto are disclosing the oxygen barrier liner would be attached at least to an inner surface (internal sizing) (paragraph [0041]) of the first structural layer of the lateral wall and to the inner surface of the second structural layer of the bottom wall.
Regarding claim 3, since Cabilli in view of Okamoto disclose the entire inner surface of the capsule would comprise a polymer (PVOH) (‘034, paragraph [0041]) it is obvious that at least a polymer of the bottom wall would be the same as at least a polymer of the oxygen barrier.
With respect to the remaining recitations beginning “such as to increase the attachment of said oxygen liner” these are seen to be recitations regarding the intended use of the polymer.
In this regard applicant’s attention is invited to MPEP 2114 which states that “an apparatus must be distinguished from the prior art in terms of structure rather than function”. That is to say, apparatus claims cover what a device is, not what a device does. If the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and then further limitations merely state, for example, the purpose or intended use of the invention, rather than any distinct structural definition of any of the claimed invention’s structural limitations, then any limitations regarding the intended use of the device are of no significance to claim construction. 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 claim which Cabilli in view of Okamoto obviously does. Further, if the prior art structure is capable of performing the intended use, then it meets the claim.
It is The Office’s position that the further limitations do not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. “such as to increase the attachment of said oxygen liner”, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art, that is Cabilli in view of Okamoto and further that the prior art structure, which is identical and/or obvious in view of the prior art to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claim 4, Cabilli in view of Okamoto disclose the second structural layer of the bottom wall would be 100% made of the polymer (PLA, in a single layer or in a double-layered or triple-layered) (‘624, paragraph [0082]) and the oxygen barrier (PVOH) would be provided at an inner surface of the lateral wall of the cup-shaped body (oxygen barrier may be laminated to) (‘034, paragraph [0054]) that is to say the polymer is provided directly to said wall of the cup-shaped body.
Regarding claim 5, Cabilli in view of Okamoto disclose the cup-shaped body comprises a connecting portion (146) that connects the bottom wall and the lateral wall and said connecting portion comprises edges of the bottom wall and the lateral wall (‘624, paragraph [0039] and fig. 1 and 2). In order for the oxygen barrier liner to properly function it is obvious that the edges would be tightly connected to each other.
Regarding claim 6, Cabilli in view of Okamoto disclose the bottom wall would comprise holes (perforation) (‘624, paragraph [0055]).
Further the limitation “evacuating the vacuum, during the connection of the oxygen barrier liner by thermoforming, to the inner surface of the cup-shaped body” is a method limitation and does not determine the patentability of the product, unless the process produces unexpected results. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. MPEP 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Cabilli in view of Okamoto discloses the bottom wall would comprise holes.
Regarding claim 7, Cabilli in view of Okamoto disclose the bottom wall would comprise PLA (‘624, paragraph [0082]).
Regarding claim 8, Cabilli in view of Okamoto disclose the cup-shaped body is a compostable paper container (‘034, paragraph [0034]) which is to say that the cup-shaped body of the capsule would be made of home compostable materials.
Regarding claim 9, Cabilli in view of Okamoto disclose the capsule is a single use coffee capsule (‘624, paragraph [0002]).
Claims 11 – 14 are rejected under 35 U.S.C. 103 as being unpatentable over Cabilli et al. US 2017/0334624 in view of Okamoto et al. US 2017/0107034 as further evidenced by Anghileri US 2017/0050799.
Regarding claim 11, as set forth above in the rejection of claim 1 Cabilli in view of Okamoto have disclosed the capsule as claimed.
Cabilli in view of Okamoto disclose first structural layer, i.e., the cellulose layer, would be molded to produce the cellulose portion of the container (034, paragraph [0034]). Cabilli in view of Okamoto further disclose that the second structure layer, i.e., the bottom wall (‘624, fig. 1 – 2, reference sign 142) would be applied to the first structural layer which would be seen as an application of over molding and that the capsule would be moulded (‘034, paragraph [0034]).
Anghileri provides further evidence that it was conventional and well established in the art to employ over molding techniques in methods of producing capsules capable of producing beverages and that over molding is a particular technique to stably incorporate elements to an edge for reinforcement (paragraph [00134]) and therefore it would have been an obvious matter of design and/or choice to the ordinarily skilled artisan to have employed over molding techniques.
Regarding claim 12, Cabilli in view of Okamoto as further evidenced by Anghileri disclose the second structural layer of the bottom wall is 100% made of a polymer (PLA, in a single layer or in a double-layered or triple-layered) (‘624, paragraph [0082]).
Regarding claim 13, Cabilli in view of Okamoto as further evidenced by Anghileri disclose the second structural layer of the bottom wall is 100% made of a polymer (PLA, in a single layer or in a double-layered or triple-layered) (‘624, paragraph [0082]) and the oxygen barrier (PVOH) is provided at the inner surface of the lateral wall of the cup-shaped body (‘034, paragraph [0052]) that is to say the polymer is provided directly to said wall of the cup-shaped body. Further, when the bottom wall is welded, i.e., molded thereon it is seen that as least some cellulose would be attached to said bottom wall.
Regarding claim 14, Cabilli in view of Okamoto as further evidenced by Anghileri disclose the oxygen barrier liner would be thermoformed to the inner surface of the cup-shaped body (added to the paper layer by any known means including thermal) (‘034, paragraph [0052]).
Response to Arguments
Applicant's arguments filed 22 June 2026 have been fully and carefully considered but they are not found persuasive.
Applicant urges that claim 1 recites, in part, the bottom wall comprises a first protruding portion which protrudes towards an inside of the cup-shaped body and is shaped to contact an external portion of the lateral wall and that Cabilli fails to teach or suggest this feature. This urging is not deemed persuasive.
As set forth above in the rejections Cabilli clearly teaches the bottom wall comprises a first protruding portion (concave . . . facing . . . the inside of the cartridge). 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 27 August 2026
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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