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 .
Claim Status
This Office action is in response to the Continuation filed 9/26/2024. Claims 1-27 are currently pending.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-27 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6-7, 4, 1, 1, 8-22, 23, 23, and 24-25 of U.S. Patent No. 12,139,281 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite substantially the same subject matter.
Claim Rejections - 35 USC § 102
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 following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 4, 19, and 23-27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tottone (US 2021/0253336 A1).
Regarding claim 1, Tottone disclose a method for manufacturing a beverage filter cartridge, the method comprising the steps of: obtaining a container (the assembly of 4, 5, and 6 – Fig. 7) formed by a sidewall (4 – Fig. 7) and bottom end (6 – Fig. 7) with an access opening (the opening covered by 5 – Fig. 7 and see para. 0057) disposed opposite the bottom end (see Fig. 7); adding an amount of a first beverage medium (GC – Fig. 9) to the container such that the first beverage medium forms a layer on top of the internal surface of the bottom end (see Figs. 9a,b); adhering a filter medium (10 – Fig. 9) to the sidewall of the container such that the filter medium is disposed at or above a top surface of the layer of the first beverage medium (see Fig. 9e); adding an amount of a second beverage medium (SC – Fig. 9e) to the container such that the second beverage medium forms a layer on top of the filter medium (see Fig. 9e); and enclosing the container with a sealed lid (5 – Fig. 9).
Tottone further discloses:
Claim 4, determining the amount of the first beverage medium (GC – Fig. 9) to be added to the container (para. 0090, since the amount of GC is “dosed” the amount to be added has been determined).
Claim 19, the second beverage medium (SC – Fig. 9e) is ground coffee (para. 0071, since the coffee layer SC has a grain size, it is grounded).
Claim 23, the first beverage medium (GC – Fig. 9) is a powder (para. 0071).
Claim 24, at least one of the first beverage medium (GC – Fig. 9) and the second beverage medium (SC – Fig. 9e) is soluble (para. 0063).
Claim 25, at least one of the first beverage medium (GC – Fig. 9) and the second beverage medium (SC – Fig. 9e) is water soluble (para. 0063).
Claim 26, the first beverage medium (GC – Fig. 9) is not able to pass through the filter medium (when the cartridge is in the upright position, since GC is below the filter, it is not able to pass through the filter).
Claim 27, the step of adhering the filter medium (10 – Fig. 9) comprises welding the filter medium to the sidewall of the container (paras. 0074-0075).
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 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Tottone (US 2021/0253336 A1) in view of Duignan (US 2020/0138089 A1).
Regarding claims 2 and 3, Tottone discloses essentially all of the elements of the claimed invention in claim 1.
However, Tottone does not expressly disclose the step of determining the amount of the added first beverage medium to the container.
Duignan teaches a method of filling a container in which there is a step of determining the amount of an added medium to a container performed by a gravimetric checkweigher (para. 0072; although the device is not expressly disclosed, since the amount is determined by weighing, there is necessarily a gravimetric checkweigher) in order to ensure that the proper amount has been added (para. 0072) and thereby improve the reliability of the method. One of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, would have recognized that the container and medium of Duignan is analogous to the container and first beverage medium of Tottone since both methods are directed to filling the medium in a container.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified the method of Tottone to include the step of determining the amount of the added first beverage medium as suggested by Duignan in order to improve the reliability of the method.
Claims 5 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Tottone (US 2021/0253336 A1) in view of Bardsley (US 4804550).
Regarding claim 5, Tottone discloses essentially all of the elements of the claimed invention in claim 4.
However, Tottone does not expressly disclose the step of determining is performed by a gravimetric checkweigher.
Bardsley teaches a similar method in which the amount of a beverage medium to be added is determined using a gravimetric checkweigher (col. 4, lines 7-12; note that the mechanism for metering predetermined amounts by weight is interpreted to the claimed gravimetric checkweigher since it weighs the beverage medium).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified the method of Tottone such that the step of determining is performed by a gravimetric checkweigher as taught by Bardsley since Tottone is silent with regard to how the amount of the beverage medium is determined and Bardsley teaches a known solution.
Regarding claim 7, Tottone discloses essentially all of the elements of the claimed invention in claim 1.
However, Tottone does not expressly disclose the step of leveling the first beverage medium.
Bardsley teaches a similar method in which at least a top portion of a top surface of an added beverage medium is leveled (col. 4, lines 13-28) in order to allow the beverage medium to settle more densely (col. 4, lines 13-28) and thereby ensure a predetermined amount of the beverage medium is packaged.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified the method of Tottone to include the step of leveling as taught by Bardsley in order to ensure a predetermined amount of the beverage medium is packaged. Note that since the first beverage medium is filled before the second beverage medium in the disclosure of Tottone, the step of leveling would happen prior to step c.
Regarding claim 8, Tottone, as modified by Bardsley, teaches essentially all of the elements of the claimed invention in claim 7.
However, Tottone, as modified by Bardsley does not expressly disclose how far the top surface of the added first beverage medium is from the internal bottom end of the container.
In this case, the distance of the top surface of the first beverage medium from the internal bottom end of the container is a result effective variable because it affects the concentration of coffee in a cup of coffee brewed using the container.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have made the top surface of the added first beverage medium in any viable range including in the range of 1 mm to 11 mm from the internal bottom end of the container since it has been held that where the prior art teaches the general conditions of the claim, finding the viable values requires only routine skill. In re Aller 105, USPQ 233.
Regarding claim 9, Tottone, as modified by Bardsley, further teaches a settling device or vibration mechanism (40 – Fig. 1B, Bardsley) is used for implementing the leveling step (col. 4, lines 13-28, Bardsley).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Tottone (US 2021/0253336 A1) in view of Duignan (US 2020/0138089 A1) and Gelada Camps (US 2019/0056258 A1).
Regarding claim 6, Tottone, as modified by Duignan, teaches essentially all of the elements of the claimed invention in claim 2.
However, Tottone, as modified by Duignan, does not teach that the amount of the first beverage medium is determined by detecting a height of the first beverage medium relative to the internal bottom end of the container.
Gelada Camps teaches a method of determining the amount of an added medium to the container by detecting a height of the level of the medium relative to the internal bottom end of the container (paras. 0016 and 0063). One of ordinary skill in the art, upon reading the teaching of Gelada Camps, would have recognized that the method of determining the volume of Gelada Camps is simply an alternative to the method of determining the amount of Tottone and Duignan.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have substituted the method of determining the amount of the first beverage medium of Tottone and Duignan with the method of Gelada Camps since the method of Gelada Camps is a known alternative.
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Tottone (US 2021/0253336 A1) in view of Schmied (US 2008/0134629 A1).
Regarding claim 10 and 11, Tottone discloses essentially all of the elements of the claimed invention in claim 1.
However, Tottone does not disclose comparing the amount of the first beverage medium to a reference value and if the amount is greater, identifying the container as unsuitable to proceed to step c and if the amount is equal to the reference value, identifying the container as suitable to proceed to step c.
Schmied teaches a method of filling a container comprising the step of comparing an amount of a medium to a reference value and if the amount if greater than the reference value, identifying the container as unsuitable to proceed to the next step and if the amount is equal to the reference value, identifying the container as suitable to proceed to the next step (para. 0019, lines 12-15; para. 0026; and para. 0038) in order to ensure the proper amount of medium is filled in each container, thereby improving the reliability of the method.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified the method of Tottone to include the step of comparing and identifying as taught by Schmied in order to ensure the proper amount of medium is filled in each container.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Tottone (US 2021/0253336 A1) in view of Yoon (KR 20120108541 A). Note that for convenience, citations to the written description of Yoon refer to the attached translation.
Regarding claim 12, Tottone discloses essentially all of the elements of the claimed invention in claim 1.
However, Tottone does not expressly disclose subjecting the container to a static eliminator prior to performing step c.
Yoon teaches a similar method comprising the step of subjecting a container to a static eliminator prior to adding a medium to the container (pg. 3, first full paragraph) in order to prevent the medium from sticking to the sidewalls during filling, thereby allowing the medium to properly settle in the container.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified the method of Tottone to include the step of subjecting the container to a static eliminator prior to performing step c as suggested by Yoon in order to allow the second beverage medium to properly settle in the container on the filter.
Claims 15-18 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Tottone (US 2021/0253336 A1) in view of Lino (BR 102016025705 B1). Note that for convenience, citations to the written description of Lino refer to the attached translation.
Regarding claims 15-18 and 22, Tottone discloses essentially all of the elements of the claimed invention in claim 1 with Tottone further disclosing that the first beverage medium comprises a filler (para. 0090, ground coffee is interpreted to be a filler).
However, Tottone does not expressly disclose that the first beverage medium comprises an ingredient of interest.
Lino discloses a first beverage medium comprising an ingredient of interest (potassium, para. 027) and a filler material (ground coffee, para. 027), wherein the filler material is a fiber (ground coffee has a significant amount of fiber, hence it is interpreted to be a fiber) and the ingredient of interest is a mineral (potassium is a mineral) of an amount equal to or less than 1% (para. 027, if potassium is 1g/100g of coffee, then it is 1% by total weight of the beverage medium). One of ordinary skill in the art, upon reading the teaching of Lino, would have recognized that the first beverage medium of Tottone is analogous to the first beverage medium of Lino since they both include coffee for brewing.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have substituted the first beverage medium of Tottone for the first beverage medium of Lino since they are known alternatives.
Claims 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Tottone (US 2021/0253336 A1) in view of Thilly (EP 2420450 A1).
Regarding claims 20 and 21, Tottone discloses essentially all of the elements of the claimed invention in claim 1.
However, Tottone does not expressly disclose determining the amount of the second beverage medium.
Thilly teaches a method of filling containers comprising the step of determining the amount of a medium in a container by weighing the container and subtracting the mass or weight of all the elements that are not the medium (para. 0041), wherein the mass or weight of all the elements that are not the medium are based on the average mass or weight of a large sample of elements (para. 0041, note that using an average weight implies that the weight is based on a large sample) in order to reject containers that are improperly filled, thereby improving the reliability of the filling process. One of ordinary skill in the art, upon reading the teaching of Thilly, would have recognized that the second beverage medium of Tottone is analogous to the medium of Thilly since they are both elements that are filled in a container and the container, first beverage medium, and filter are analogous to the container of Thilly since they are the elements not including the medium.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified the method of Tottone to include the step of determining as suggested by Thilly in order to improve the reliability of the filling process. Note that since Thilly discloses that the container weight is based on an average container weight, then when the method is applied to Tottone, the subtraction would occur using the average container, first beverage medium, and filter weight.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS M WITTENSCHLAEGER whose telephone number is (571)272-7012. The examiner can normally be reached MON-FRI: 9:00-5:00.
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/THOMAS M WITTENSCHLAEGER/Primary Examiner, Art Unit 3731
8/5/2025