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 is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02 September 2026 has been entered.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 – 5, 7 – 10, and 12 – 15 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Yoakim WO 2008/148834 et al. in view of Murphy et al. US 2002/0014531 in view of Aker US 2010/0078480.
Regarding claim 1, Yoakim discloses a method capable of preparing a beverage from a system which comprises providing a capsule (1) comprising a container and a beverage ingredient contained therein which container comprises a body, a lid connected to the body, and a rim (page 17, ln 16 – page 18, ln 6). The method comprises rotating the container around an axis of rotation traversing the capsule (page 5, ln 14 – 22), and the system further comprises a beverage preparation device which beverage preparation device comprises a capsule holder for holding the capsule. The beverage preparation device comprises a rotational driver for driving the holder and the capsule in rotation along the axis of rotation, when the capsule is rotated along the axis (page 2, ln 19 – 31), and extracting the beverage from the capsule by rotating the capsule along the axis (page 5, ln 14 – 22). Murphy further discloses the quality of the finished beverage would depend on many parameters and that the control of said parameters is essential for controlling the quality of the beverage (page 2, ln 5 – 14).
Claim 1 differs from Yoakim in the container comprising a code capable of being identified or read by an external reader.
Murphy discloses that it was well established and conventional in the art to provide a container containing an ingredient with a code (indicia) (bar 28) which code is located on the bottom of the container. The container has a round conic section (paragraph [0034]) and the code is located along the periphery of a circular path to allow the code to be identified or read by an external reader (photo-transceiver) (paragraph [0040]) in a method of preparing food (paragraph [0032]). The container would be rotated around an axis of rotation traversing the container and the code would be read when the container is rotated along said axis (paragraph [0013] – [0014] and fig. 2a and 3) to provide preparation instructions (cooking instructions) to a food preparation system (paragraph [0007] and [0032]). Murphy is providing a container having a round conic section with a code located on the bottom of the container with the code along the periphery of a circular path to be easily read when the container is rotated around an axis of rotation in order to improve the quality of a prepared food item by providing precise instructions to a food preparation system which is applicant’s reason for applying a code to a container having a round conic section as well. Further, once it was known to provide the code as a circular code along the periphery oriented about the centre axis of the bottom of a circular container the specific placement, that is the diameter of the code to include the outer edge of the container would have been obvious. To therefore modify Yoakim and provide a code on the periphery of the bottom, that is the underside of the rim of the container of a capsule capable of preparing a beverage to provide precise instructions to a system to control and improve the quality thereof as taught by Murphy would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
Claim 1 now further recites “the body comprising a rim, and a code being repeated along a circumference of the container and being present on the bottom of the rim of the capsule”.
Aker discloses a capsule (40) capable of preparing a beverage from a system (paragraph [0002]). The capsule comprises a container which container comprises a body, a lid is connected to the body, the body comprises a rim, and a code (50) is repeated along a circumference of the container (paragraph [0017] and fig. 2A/2B). Aker is repeating a code along a circumference of the container for the art recognized function of allowing the code to be read repeatedly and reliably by a code reader in a beverage preparation machine which is applicant’s reason for doing so as well. To therefore modify Yoakim in view of Murphy and repeat the code of Yoakim in view of Murphy along the circumference of the container on the bottom of the rim as taught by Aker would have been an obvious matter of design and/or design to the ordinarily skilled artisan.
Regarding claim 2, first it is to be noted that in order for the code to be read Yoakim in view of Murphy in view of Aker disclose that the container would have to be rotated for the data to be read to provide instructions to the system to control the preparation process (‘531, paragraph [0013] and [0032]) which would constitute a first rotational speed. Yoakim in view of Murphy in view of Aker further disclose that the rotation would be stopped without the loss of any data read from the code (‘531, paragraph [0014]). Further Yoakim in view of Murphy in view of Aker further disclose the container of the capsule would be filled with water to wet the beverage ingredient contained therein after which the capsule would be rotated to extract the beverage (page 24, ln 9 – 31), which is to say that the beverage would be extracted from the capsule at a second rotational speed.
Regarding claim 3, Yoakim in view of Murphy in view of Aker disclose the code would extend along a circumference of the capsule for any desired length (‘531 paragraph [0052]) making it obvious to the ordinarily skilled artisan to have the code extend along at least an eight of a circumference of the capsule.
Regarding claim 4, Yoakim in view of Murphy in view of Aker disclose the code would be read once the container has begun to rotate (‘531, paragraph [0037]) which is to say that the external reader cannot read the code without rotation of the capsule.
Regarding claim 5, Yoakim in view of Murphy in view of Aker disclose the external reader comprises a light emitter (led) and a light sensor (photosensitive device) (‘531, paragraph [0037]).
Regarding claim 7, Yoakim in view of Murphy in view of Aker disclose projecting a light beam onto the bottom of the rim of the capsule to produce a reflected light and sensing the reflected light by the external reader (‘531, paragraph [0036]).
Regarding claim 8, Yoakim in view of Murphy in view of Aker disclose the code is printed (imprinted) (‘531, paragraph [0036]) and includes surfaces having different reflective properties (black, white) (‘531, paragraph [0040]).
Regarding claim 9, Yoakim in view of Murphy in view of Aker disclose the pattern includes first surfaces having adsorbing properties to light (black) and second surfaces having reflective properties (white) to light (‘531, paragraph [0040]).
Regarding claim 10, Yoakim in view of Murphy in view of Aker disclose a light beam would be projected onto the bottom of the rim of the capsule to produce a reflected light off of the first surfaces and sensed by the external reader (‘531, paragraph [0036]).
Regarding claim 12, Yoakim in view of Murphy in view of Aker disclose the code is a bit code (‘531, paragraph [0013]).
Regarding claim 13, Yoakim in view of Murphy in view of Aker disclose the bit code would comprise black and white elements, that is absorbing surfaces and flat reflecting surfaces and that the bit code would further comprise “0” (binary zeros) and “1” (binary ones) (paragraph [0043]) which would be read by rotating the capsule along the axis of rotation traversing the capsule (paragraph [0037]).
Further regarding the absorbing surfaces representing bit “0” and the flat reflective surfaces representing bit (1), one it was known to provide different surfaces, in this case absorbing and reflecting surfaces to represent bit “0” and bit “1” it is not seen that patentability would predicated on which surface would represent bit “0” and represent bit “1” absent strong and compelling evidence to the contrary because shifting which surface would represent which “bit” would not modify the operation of the capsule and would therefore have been an obvious matter of choice and/or design to the ordinarily skilled artisan (MPEP § 2144.04 VI.C.).
Regarding claim 14, Yoakim in view of Murphy in view of Aker disclose the code would comprise different colour patterns (red, blue, green or any other spectral discernable colors) (‘531 paragraph [0040]) which is to say that the external reader would also obviously be a colour reading device.
Regarding claim 15, since the code reading device comprises an LED and a receiver to read the light reflected from the code it is obvious that the code would be an optical code (paragraph [0037]).
Claim 6 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Yoakim WO 2008/148834 et al. in view of Murphy et al. US 2002/0014531 in view of Aker US 2010/0078480 in view of Ruchonnet WO 2005/044067.
Claim 6 differs from Yoakim in view of Murphy in view of Aker in the external reader comprising a UV-light beam source and a UV detector.
Ruchonnet discloses a capsule comprising a container (receptacle 3) and a beverage ingredient (coffee) therein which container comprises a body (13) (page 6, ln 8) and a lid (cover 17) (page 7, ln 15) connected to the body. Ruchonnet further discloses the container would comprise a code on the capsule where the code is in the form of a U.V. barcode located on a surface of the capsule (page 3, ln 19 – 26) and that the proper reading of said barcode would allow a beverage production machine to cycle thereby guarantee the automatic implementation of the beverage preparation cycle allowing a user to avoid having to act manually (page 3, ln 1 – 23 and fig. 2). Once it was known to provide a U.V. light beam source, which would also necessarily comprise a U.V. detector, the substitution of one known external reader, i.e., the external reader of Yoakim in view of Murphy in view of Aker with the external reader of Ruchonnet to obtain predictable results would have been an obvious matter of choice and/or design to the ordinarily skilled artisan (MPEP § 2143 I.B.).
Claim 11 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Yoakim WO 2008/148834 et al. in view of Murphy et al. US 2002/0014531 in view of Aker US 2010/0078480 in view of McMurtry et al. US 6,802,454.
Regarding claim 11, Yoakim in view of Murphy in view of Aker discloses the code would be affixed, that is separately attached about the circular circumference of said container., to the container (‘531, paragraph [0042]).
Claim 11 differs from Yoakim in view of Murphy in view of Aker in the code engraved on the container by a laser.
McMurtry discloses that when affixing a separate code to a container that will be rotated at high speeds problems can arise when particles of the adhesive used to affix the code to the container creep out from beneath the separate code or shards fly off the label from the cutting operation thereby contaminating the code reading equipment and thereby causing failures (col. 1, ln 32 – 38). McMurtry further discloses that these problems can be overcome by laser etching, i.e., engraving the code onto the container (col. 1, ln 40 – 41) and that laser engraving permits multiple code sequences to be simply applied to maximize the readability of said code (col. 3, ln 25 – 33). To therefore modify Yoakim in view of Murphy in view of Aker and apply the code on the container by laser engraving to avoid contamination of the code reading equipment and maximize readability of the code as taught by McMurtry would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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 05 September 2026
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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