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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election of Group I, Claims 22-36 in the reply filed on 6 May 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 37-44 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 22 is objected to because of the following informalities: steps (i) and (iii) begin with a capital letter. Each claim should begin with a capital letter and end with a period. See MPEP 608.01m. Appropriate correction is required.
Claim 27 is objected to because of the following informalities: the limitation “and combinations thereof” should be included within the Markush grouping. Therefore, line 5 of the claim should be amended to recite “...gum arabic, pullulan, , and combinations thereof.”, or like thereof. Appropriate correction is required.
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.
Claim 22-36 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 22, the limitation “providing a compact of a beverage powder or a mixture of beverage powders” is indefinite because it is not clear if the term “compact” is also associated with “a mixture of beverage powders”. That is, the claim could be construed as requiring one of (1) a compact of a beverage powder or (2) a mixture of beverage powders. Therefore, all subsequent recitation of “the compact” would only refer to option (1). Appropriate correction is required.
Claims 23-36 are rejected based on their dependency on a rejected claim.
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.
The factual inquiries 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.
Claim(s) 22, 23 and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nickel (DE 102014000187 A1- see machine translations).
Regarding Claims 22 and 27, Nickel discloses a method of manufacturing a capsule having a coating, for preparing a beverage from a beverage powder by introducing water, comprising the steps of:
(i) Providing a compact of a beverage powder (coffee compact, page 3, fourth paragraph), the compact having a surface that is uncoated;
(ii) contacting at least a portion of the surface of the compact with at least one polysaccharide, at least one crosslinking agent, and at least one polyol to form a layer (liquid cellulose, polyolic spacers, and various crosslinkers, required in Claim 27, page 3, fourth paragraph);
(iii) Drying of the layer (page 2, ninth paragraph).
Nickel is silent to wherein
- the layer formed in ii) and iii) is adjusted with a degree of swelling of between 20% and 900%; and/or
- the capsule is expanded on contact with water by 0.3% to 6%.
However, since Nickel discloses the claimed process having the similar composition of at least one polysaccharide, at least one crosslinking agent, and at least one polyol to form a layer, discussed above, there is a reasonable expectation that the layer of Nickel would undergo similar degrees of swelling and/or expansion on contact with water. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01.
Regarding Claim 23, Nickel further teaches wherein the polyol after step iii) is crosslinked with the at least one polysaccharide (the cladding layer becomes a cross-linked film, page 2, ninth paragraph).
Claim(s) 24-26, 28-29, 31-32, 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nickel (DE 102014000187 A1- see machine translations, hereon referred to as ‘Nickel ‘187’) in view of Nickel (WO 2017/167624- hereon referred to as ‘Nickel’624’).
Regarding Claim 24, Nickel’187 is silent to wherein the adjustment of the degree of swelling is carried out by a heat treatment at a temperature below 100°C. Nickel’624 is relied on to teach a coating that similarly comprises a cross-linked polysaccharide (abstract) with a polyol (polyol spacer, page 3, fifth paragraph). Nickel’624 discloses a process of coating a coffee capsule with a solution which forms a gel around the coffee capsule and is dried at room temperature (see Example 1, page 7). Room temperature is construed to be below 100°C. Therefore, it would have been obvious to one of ordinary skill in the art to subject the capsule to heat treatment at room temperature to allow sufficient drying of the coating.
Regarding Claims 25-26, Nickel’187 is silent to wherein steps (ii) and (iii) are repeated a plurality of times. Nickel’624 is relied on to teach a coating compositing that similarly comprises a cross-linked polysaccharide (abstract) with a polyol (polyol spacer, page 3, fifth paragraph), and discloses a process that involves a coating step followed by a drying step, and “immediately thereafter” performs another coating process and further drying (see Example 1, page 7 of the translations). The membrane provides stable protection for the brewing process. Therefore, since both Nickel references are directed to providing a coating for beverage compact, it would have been obvious to one of ordinary skill in the art to perform the coating and drying step a plurality of times to achieve the desired degree of coating for the purpose of providing sufficient protection for the beverage compact during brewing. As to Claim 26, since Nickel’187 discloses a composition comprising cellulose (see page 3, fourth paragraph of the translations), and Nickel’624 discloses performing step (ii) and (iii) a plurality of times (as discussed above), the additional layer taught by Nickel’624 constitutes wherein the compact according to step (iii) is additionally contacted with at least one cellulose. As to the at least one further polysaccharide, Nickel’624 discloses a composition that comprises “at least one” polysaccharide selected from starch, cellulose, chitin, carrageenan, agar, and alginates (see page 3, second paragraph). Therefore, it would have been obvious to one of ordinary skill in the art to combine or substitute equivalents known for the same purpose (see MPEP 2144.06). Also, Nickel’624 notes that alginates have been found to lower water hardness as well as prevent unpleasant acid taste (page 3, second paragraph). Therefore, it would have been obvious to one of ordinary skill in the art to further include polysaccharides such as alginates for the purpose of reducing water hardness and preventing unpleasant acid taste.
Regarding Claim 28, Nickel’187 is silent to wherein the at least one polysaccharide is alginate. Nickel ‘624 is relied on to teach a coating layer (3) comprising a cross-linked polysaccharide (see abstract) wherein the at least one polysaccharide can be selected from both cellulose and alginates (see page 3, second paragraph of the translations). The coating layer of Nickel’624 is similarly provided to be an environmentally friendly packing material that provides sufficient transport protection (page 2, last paragraph). Therefore, since both Nickel‘187 and Nickel’624 are directed biodegradable coating for beverage capsules, it would have been obvious to one of ordinary skill in the art to substitute polysaccharides known for the same purpose (see MPEP 2144.06).
Regarding Claim 29, Nickel’187 is silent to wherein the at least one crosslinking agent is selected from compounds having one or more carbonyl and/or carboxyl functions. Nickel’624 is relied on to teach a cross-linking agent selected from carboxylic acids (see page 3, third paragraph). Since both Nickel ‘187 and Nickel ‘624 are directed to coating compositions comprising a polysaccharide and a crosslinking agent, it would have been obvious to one of ordinary skill in the art to substitute cross-linking agents known for the same purpose (see MPEP 2144.06).
Regarding Claim 31, for reasons similarly discussed in Claim 29, Nickel’624 is further relied on to teach salt of a divalent or higher-valent cation (page 3, fifth paragraph).
Regarding Claim 32, Nickel’187 is silent to wherein the at least one polyol is selected from the group consisting of aliphatic polyols; cyclic polyols; sugar substitutes; and aromatic polyols; and combinations thereof. Nickel’624 is relied on to teach a polyol spacer selected from aliphatic polyols, cyclic polyols, aromatic polyol, and sugar substitutes (such as sorbitol, see page 3, fifth paragraph). Since both Nickel ‘187 and Nickel ‘624 are directed to coating compositions comprising a polysaccharide, a polyol, and a crosslinking agent, it would have been obvious to one of ordinary skill in the art to substitute polyol spacers known for the same purpose (see MPEP 2144.06).
Regarding Claim 36, for reasons discussed in the rejection of claims 28, 29 and 31, Nickel’624 is further relied on to teach wherein the at least one polysaccharide comprises an alginate (page 3, second paragraph), wherein the at least one polyol comprises sorbitol (page 3, fifth paragraph), and wherein the at least one crosslinking agent comprises calcium chloride (page 6, second paragraph). Since both Nickel references are directed to a cross-linked coating composition, it would have been obvious to substitute the above components known for the same purpose (See MPEP 2144.06).
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination as applied to Claim 29, further in view of Salumae et al. (WO 2020/264063 A1).
Regarding Claim 30, while Nickel’187 discloses carboxylic acids as suitable crosslinking agents, Nickel’187 does not specifically recite wherein the crosslinking is selected from citric acid, fumaric acid, maleic acid, tartaric acid, malic acid, adipic acid, and combinations thereof. Salumae is relied on to a soluble film using polysaccharide (paragraph 45) and a cross-linking agent, wherein the crosslinking agent can be citric acid (paragraph 67). That is, both Salumae and Nickel’187 recognize the effects of weak acids as a cross-linking agent for polysaccharides. Therefore, since it is known to use citric acid as a crosslinking agent with polysaccharides, it would have been obvious to one of ordinary skill in the art to use citric acid as a crosslinking agent within the Nickel’187 reference, especially since Nickel’187 also recognizes weak acids as suitable cross-linking agents.
Claim(s) 33-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nickel (DE 102014000187 A1- see machine translations, hereon referred to as ‘Nickel ‘187’) in view of Salumae et al. (WO 2020/264063 A1).
Regarding Claim 33, Nickel’187 is silent to wherein the polysaccharide comprises an alginate, wherein the at least one polyol comprises glycerol, and wherein the at least one crosslinking agent comprises citric acid. Salumae is relied on to a soluble film using polysaccharide (paragraph 45) and a cross-linking agent, and further teaches wherein the cross-linking agent is citric acid (As applied in the rejection of Claim 30, incorporated herein). Salumae also discloses wherein the polysaccharide comprises an alginate (sodium alginate, paragraph 45), and further comprises glycerol as a plasticizer to impart flexibility to a film (paragraph 102). Therefore, since both Nickel’187 and Salumae are directed to edible coatings comprising polysaccharides, it would have been obvious to one of ordinary skill in the art to substitute equivalents, i.e. cellulose and alginates, known for the same purpose (see MPEP 2144.06). Also, it would have been obvious to one of ordinary skill in the art to further comprise glycerol as a plasticizer for the purpose of imparting a degree of flexibility to the film formed by the composition.
Regarding Claim 34, the claim is rejected for reasons similar to Claim 33. Salumae is relied on to teach comprising tartaric acid as an alternative to citric acid (paragraph 112).
Regarding Claim 35, the claim is rejected for reasons similar to Claim 33. Salumae is relied on to teach comprising sorbitol as an alternative to glycerol (paragraph 160).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THANH H NGUYEN whose telephone number is (571)270-0346. The examiner can normally be reached 10am-6pm.
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/T.H.N/Examiner, Art Unit 1792
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
