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 Objections
Claims 2-7 and 15-17 are objected to because of the following informalities:
Claim 2 recites the limitation “the coating layer” in lines 1-2. It appears the claim should recite “the at least one coating layer” in order to maintain consistency with “at least one coating layer” recited in Claim 1, line 4.
Claim 3 recites the limitation “the polysaccharide of the at least one coating layer” in line 2. It appears the claim should recite “the crosslinked polysaccharide of the at least one coating layer” in order to maintain consistency with “the at least one coating layer comprises a crosslinked polysaccharide” recited in Claim 1, lines 6-7.
Claim 4 recites the limitation “the polysaccharide of the at least one coating layer” in line 2. It appears the claim should recite “the crosslinked polysaccharide of the at least one coating layer” in order to maintain consistency with “the at least one coating layer comprises a crosslinked polysaccharide” recited in Claim 1, lines 6-7.
Claim 5 recites the limitation “the polysaccharide of the at least one coating layer” in lines 1-2. It appears the claim should recite “the crosslinked polysaccharide of the at least one coating layer” in order to maintain consistency with “the at least one coating layer comprises a crosslinked polysaccharide” recited in Claim 1, lines 6-7.
Claim 6 recites the limitation “the polysaccharide of the at least one coating layer” in line 2. It appears the claim should recite “the crosslinked polysaccharide of the at least one coating layer” in order to maintain consistency with “the at least one coating layer comprises a crosslinked polysaccharide” recited in Claim 1, lines 6-7.
Claim 7 recites the limitation “the polysaccharide of the at least one coating layer” in lines 1-2. It appears the claim should recite “the crosslinked polysaccharide of the at least one coating layer” in order to maintain consistency with “the at least one coating layer comprises a crosslinked polysaccharide” recited in Claim 1, lines 6-7.
Claim 15 recites the limitation “the polysaccharide of the at least one coating layer” in lines 1-2. It appears the claim should recite “the crosslinked polysaccharide of the at least one coating layer” in order to maintain consistency with “the at least one coating layer comprises a crosslinked polysaccharide” recited in Claim 1, lines 6-7.
Claim 16 recites the limitation “the polysaccharide of the at least one coating layer” in lines 1-2. It appears the claim should recite “the crosslinked polysaccharide of the at least one coating layer” in order to maintain consistency with “the at least one coating layer comprises a crosslinked polysaccharide” recited in Claim 1, lines 6-7.
Claim 17 recites the limitation “the polysaccharide of the at least one coating layer” in lines 1-2. It appears the claim should recite “the crosslinked polysaccharide of the at least one coating layer” in order to maintain consistency with “the at least one coating layer comprises a crosslinked polysaccharide” recited in Claim 1, lines 6-7.
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.
Claims 1-20 are 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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitations “in particular for preparing a beverage from beverage powder” in lines 1-2 as well as “in particular coffee from coffee powder” in line 2. The phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 1 recites the limitation “which is filled with a powder” in line 4. It is unclear what structure the phrase “which is filled with a powder” modifies.
Claim 1 recites the limitation “a powder” in line 4. It is unclear if this refers to “beverage powder” recited in Claim 1, line 2, “coffee powder” recited in Claim 1, line 2, or to an entirely different powder.
Claim 1 recites the limitation “a crosslinked polysaccharide” in lines 6-7. It is unclear if this refers to “at least one polysaccharide” recited in Claim 1, line 4 or to an entirely different polysaccharide.
Claim 1 recites the limitation “a polysaccharide” in line 8. It is unclear if this refers to “at least one polysaccharide” recited in Claim 1, line 4 or to an entirely different polysaccharide.
Claim 2 recites the limitation “the outside” in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitations “preferably comprises a polyol spacer that is preferably an aliphatic, cyclic, or aromatic polyol and particularly preferably an ethylene glycol, propanetriol, triethylene glycol, polyethylene glycol, sorbate, glucose, fructose, galactose, cyanidin, corilagin, digallic acid, gallic acid or tannin acid” in lines 4-8. The phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 8 recites the limitation “preferably a calcium alginate” in line 3. The phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 9 recites the limitation “preferably cellulose fibers” in line 3. The phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 10 recites the limitation “preferably 2 to 20, particularly preferably with 2 to 10 and most preferably with 2 to 5 coating layers whereby the coating layers are preferably composed of calcium alginate” in lines 3-5. The phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 12 recites the limitation “wherein the capsule body is filled with a material” in lines 2-3. It is unclear if this refers to “filled with a powder containing polysaccharide” recited in Claim 1, lines 4-5 or to an entirely different material.
Claim 12 recites the limitation “milk powder” in line 4. It is unclear if this refers to “a powder containing polysaccharide” recited in Claim 1, lines 4-5 or to an entirely different powder.
Claim 13 recites the limitation “a hollow cylinder having at its one front end a collar” in line 3. There is insufficient antecedent basis for the hollow cylinder to have one front end.
Claim 13 recites the limitation “its” in line 3. It is unclear what structure “its” refers to.
Claim 13 recites the limitation “a hollow truncated cone having a collar at one of its front ends” in line 4. There is insufficient antecedent basis for the hollow truncated cone to have multiple front ends.
Claim 14 recites the limitation “a fibrous polysaccharide” in line 3. It is unclear if this refers to “at least one polysaccharide” recited in Claim 1, line 4 or to an entirely different polysaccharide.
Claim 14 recites the limitation “preferably paper, paperboard, or cardboard” in line 3. The phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 18 recites the limitation “preferably cellulose fibers” in line 2. The phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 19 recites the limitation “preferably cellulose fibers” in line 2. The phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 20 recites the limitation “preferably cellulose fibers” in line 2. The phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Clarification is required.
Claims 3-5, 7, 11, and 15-17 are rejected as being dependent on a rejected base claim.
Claim Rejections - 35 USC § 103
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 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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-3, 9-14, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Andreae et al. WO 2015/177591 (cited on Information Disclosure Statement filed November 26, 2024) in view of Mintus et al. US 2015/0104546, Macinnes et al. US 2003/0008059, and Bauer et al. US 5,688,776 (cited on Information Disclosure Statement filed November 26, 2024).
Regarding Claim 1, Andreae et al. discloses a capsule comprising a capsule body (housing) composed of at least one polysaccharide (‘591, Page 8, lines 14-25) (‘591, Page 10, lines 17-28) and which is filled with a powder (ground coffee or chocolate milk powder) (‘591, Page 2, lines 17-20) wherein the capsule body is coated by at least one coating layer (barrier layer for oxygen) (‘591, Page 5, lines 23-30) wherein the at least one coating layer (barrier layer for oxygen) comprises a crosslinked polysaccharide (starch) (‘591, Page 8, lines 14-30).
Andreae et al. is silent regarding the ground coffee or chocolate milk powder being composed of at least one polysaccharide.
Mintus et al. discloses a coffee powder coated with small amounts of polysaccharides (‘546, Paragraph [0005]). Alternatively, Macinnes et al. discloses a method of making a dried soluble beverage product suitable for producing beverage powders containing high levels of carbohydrates and/or polysaccharides and which have high levels of overrun (‘059, Paragraph [0002]) for making a soluble polysaccharide powder beverage product, e.g. a soluble coffee powder, a soluble tea powder, or a soluble milk powder (‘059, Paragraph [0021]).
Andreae et al., Mintus et al., and Macinnes et al. are all directed towards the same field of endeavor of beverage powders in the form of coffee powder and/or milk powders. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the capsule of Andreae et al. that contains a coffee powder or milk powder and process the powder such that the coffee powder or milk powder contains polysaccharides as taught by Mintus et al. and Macinnes et al. since the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Mintus et al. and Macinnes et al. both teach that there was known utility in the beverage art to process coffee powders and milk powders such that the coffee powders and milk powders contain polysaccharides.
Further regarding Claim 1, the limitations “in particular for preparing a beverage from beverage powder, in particular coffee from coffee powder by introducing water into the capsule” are seen to be recitations regarding the intended use of the “capsule.” In this regard, applicant’s attention is invited to MPEP § 2114.I. and MPEP § 2114.II. which states features of an apparatus may be recited either structurally or functionally in view of In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima facie case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possess the functionally defined limitations of the claimed apparatus in view of In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40,100 USPQ2d 1433, 1440 (Fed. Cir. 2011). The burden then shifts to applicant to establish that the prior art does not possess the characteristic relied on in view of In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432; In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 228 (CCPA 1971). Additionally, apparatus claims cover what a device is, not what a device does in view of Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). 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 claimed in view of Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Furthermore, if the prior art structure is capable of performing the intended use, then it meets the claim. Nevertheless, Andreae et al. discloses the capsule being used for preparing a beverage from coffee beverage powder (‘591, Page 2, lines 17-20) by introducing water into the capsule (‘591, Page 4, lines 11-16).
Further regarding Claim 1, the limitations “wherein the crosslinked polysaccharide was obtained by crosslinking a polysaccharide by means of a crosslinking agent” are product by process limitations. Even though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process in view of In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP § 2113.I.). However, in the event that it can be shown that the process by which the cross linked polysaccharide was obtained was critical, Bauer eta l. discloses crosslinking polysaccharides with a dicarboxylic acid agent (‘776, Column 4, lines 40-56) (‘776, Column 6, lines 15-21). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the capsule of modified Andreae et al. and obtain the cross linked polysaccharide with a cross linking agent since Bauer et al. teaches that this was a known method of producing a crosslinked polysaccharide.
Regarding Claim 2, Andreae et al. discloses the outside of the capsule body being fully encased with the coating layer (further material layer comprising starch) (‘591, Page 8, lines 14-25) (‘591, Page 9, lines 7-13) (‘591, Page 11, lines 6-9).
Regarding Claim 3, Andreae et al. discloses the polysaccharide of the at least one coating layer being starch (‘591, Page 8, lines 27-30).
Regarding Claim 9, Andreae et al. discloses the at least one coating layer comprising cellulose fibers (‘591, Page 20, lines 12-15).
Regarding Claim 10, Andreae et al. discloses the capsule body being encased with 3 coating layers (two material layers and a PVOH layer) (‘591, Page 15, lines 26-34), which falls within the claimed range of 1 to 100 coating layers.
Further regarding Claim 10, it is noted that the limitations “optionally comprises cellulose fibers” are optional limitations that are not require to be taught by the prior art. Nevertheless, Andreae et discloses the at least one coating layer comprising cellulose fibers (‘591, Page 10, lines 17-28).
Further regarding Claim 10, it is noted that the limitations following the term “preferably” are rejected as being indefinite under 35 USC 112(b) above since it is unclear if the limitations following the term “preferably” are required.
Regarding Claim 11, Andreae et al. discloses the capsule body being completely encased with the at least one coating layer (further material layer comprising starch) (‘591, Page 8, lines 14-25) (‘591, Page 9, lines 7-13) (‘591, Page 11, lines 6-9).
Regarding Claim 12, Andreae et al. discloses the capsule body being filled with a material of coffee, tea, drinking chocolate, or milk powder (‘591, Page 2, lines 17-20).
Regarding Claim 13, Andreae et al. discloses the capsule body (housing 27) being shaped as a hollow cylinder (cup shaped) having a collar (laterally protruding flange 30) at one of its front ends (‘591, FIG. 7) (‘591, Page 21, lines 3-6).
Regarding Claim 14, Andreae et al. discloses the capsule body being composed of a fibrous polysaccharide of paper and/or cardboard (‘591, Page 10, lines 8-10).
Regarding Claims 18-19, Andreae et al. discloses the at least one coating layer comprising cellulose fibers (‘591, Page 10, lines 17-28).
Claims 4, 6, 8, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Andreae et al. WO 2015/177591 (cited on Information Disclosure Statement filed November 26, 2024) in view of Mintus et al. US 2015/0104546 and Macinnes et al. US 2003/0008059 as applied to claim 2 above in further view of Kim KR 2014/0112339 (cited on Information Disclosure Statement filed November 26, 2024).
It is noted that a machine translation of Kim KR 2014/0112339 has been attached herein. All citations to Kim KR 2014/0112339 are with respect to the machine translation of Kim KR 2014/0112339.
Regarding Claim 4, Andreae et al. modified with Mintus et al. and Macinnes et al. is silent regarding the polysaccharide of the at least one coating layer being an alginate.
Kim discloses a capsule comprising a capsule body coated by at least one coating layer made of an alginate (‘339 Machine Translation, Paragraphs [0011], [0033], and [0061]).
Both modified Andreae et al. and Kim are directed towards the same field of endeavor of beverage capsules. Both beverage capsules of modified Andreae et al. and Kim have a capsule body that is coated with at least one coating layer. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the capsule of modified Andreae et al. and use an alginate to make the at least one coating layer that coats the capsule body as taught by Kim since the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Kim teaches that there was known utility in the beverage art to construct the at least one coating layer of a beverage capsule out of alginate.
Regarding Claim 6, Andreae et al. discloses the polysaccharide comprising triethylene glycol (‘591, Page 11, lines 6-9) (‘591, Page 11, lines 23-27), which is a type of polyol spacer in view of applicant’s disclosure (Specification, Page 4, lines 17-22). Bauer et al. discloses a coating layer being crosslinked with a crosslinking agent of a carbony (dicarbonyl) or a carboxyl (dicarboxyl) group (‘776, Column 6, lines 12-21).
Regarding Claim 8, Kim discloses the crosslinked polysaccharide of the at least one coating layer to be an alkaline earth metal alginate (calcium alginate) (‘339 Machine Translation, Paragraphs [0011], [0033], and [0061]).
Regarding Claim 20, Andreae et al. discloses the at least one coating layer comprising cellulose fibers (‘591, Page 10, lines 17-28).
Claims 5, 7, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Andreae et al. WO 2015/177591 (cited on Information Disclosure Statement filed November 26, 2024) in view of Mintus et al. US 2015/0104546 and Macinnes et al. US 2003/0008059 as applied to claim 1 above in further view of DeMartino US 4,143,007 (cited on Information Disclosure Statement filed November 26, 2024) and Penhashi et al. US 2002/0110593 (cited on Information Disclosure Statement filed November 26, 2024).
Regarding Claims 5, 7, and 15-16 the limitations “wherein the polysaccharide of the at least one coating layer is crosslinked through a covalent bond” and “wherein the polysaccharide of the at least one coating layer is cross linked through ionic and/or coordinative bonds” are product by process limitations and as such are rejected for the same reasons regarding product by process enumerated in the rejections of Claim 1 above.
Further regarding Claims 5 and 7, in the event that it can be shown that the process by which the crosslinked polysaccharide was obtained was critical and that Andreae et al. modified with Mintus et al. and Macinnes et al. does not teach the polysaccharide of the at least one coating layer being crosslinked through a covalent bond or through ionic and/or coordinative bonds, DeMartino discloses cross linking galactomannan using covalent, ionic, or hydrogen bonds wherein it is known that galactomannan is a known type of polysaccharide (‘007, Column 1, lines 30-52). Penhashi et al. also teaches covalently crosslinking a polysaccharide (‘593, Paragraph [0099]).
Modified Andreae et al., DeMartino, and Penhashi et al. are all directed towards crosslinked polysaccharides. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of crosslinking the polysaccharides of modified Andreae et al. and cross link the polysaccharide of the at least one coating layer using a covalent bond since both DeMartino and Penhashi et al. teach that crosslinking polysaccharides using a covalent bond was a known and conventional way to cross link polysaccharides together. Similarly, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of crosslinking the polysaccharides of modified Andreae et al. and cross link the polysaccharide of the at least one coating layer using an ionic bond since DeMartino teaches that crosslinking polysaccharides using an ionic bond was a known and conventional way to cross link polysaccharides together.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Andreae et al. WO 2015/177591 (cited on Information Disclosure Statement filed November 26, 2024) in view of Mintus et al. US 2015/0104546, Macinnes et al. US 2003/0008059, and Kim KR 2014/0112339 (cited on Information Disclosure Statement filed November 26, 2024) as applied to claim 4 above in further view of DeMartino US 4,143,007 (cited on Information Disclosure Statement filed November 26, 2024) and Penhashi et al. US 2002/0110593 (cited on Information Disclosure Statement filed November 26, 2024).
Regarding Claim 17, the limitations “wherein the polysaccharide of the at least one coating layer is crosslinked through a covalent bond” are product by process limitations and as such are rejected for the same reasons regarding product by process enumerated in the rejections of Claim 1 above.
Further regarding Claim 17, in the event that it can be shown that the process by which the crosslinked polysaccharide was obtained was critical and that Andreae et al. modified with Mintus et al. and Macinnes et al. does not teach the polysaccharide of the at least one coating layer being crosslinked through a covalent bond, DeMartino discloses cross linking galactomannan using covalent, ionic, or hydrogen bonds wherein it is known that galactomannan is a known type of polysaccharide (‘007, Column 1, lines 30-52). Penhashi et al. also teaches covalently crosslinking a polysaccharide (‘593, Paragraph [0099]).
Modified Andreae et al., DeMartino, and Penhashi et al. are all directed towards crosslinked polysaccharides. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the process of crosslinking the polysaccharides of modified Andreae et al. and cross link the polysaccharide of the at least one coating layer using a covalent bond since both DeMartino and Penhashi et al. teach that crosslinking polysaccharides using a covalent bond was a known and conventional way to cross link polysaccharides together.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-12 of U.S. Patent No. 11,365,046. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-12 of the ‘046 patent recite a more narrow scope that reads on Claims 1-20 of the instant invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Massey et al. US 2013/0142915 discloses a coating layer comprising a polysaccharide including alginate gels (‘915, Paragraph [0062]).
Matsuda et al. US 2016/0165914 discloses a milk powder comprising soluble polysaccharides (‘914, Paragraph [0082]).
Shibata et al. US 2013/0078357 discloses a powdered milk comprising a polysaccharide (‘357, Paragraph [0136]).
Toyoda et al. US 2011/0244107 discloses a powdered milk comprising polysaccharides (‘107, Paragraph [0058]).
Cattaneo et al. US 4,759,940 discloses powdered milk comprising sugars comprising polysaccharides wherein some of the sugars added are finely ground before adding.
Destaillats et al. US 2006/0073256 discloses a polysaccharide solution including any suitable carbohydrate including starches, celluloses, alginates, and the like or maltodextrin (‘256, Paragraph [0031]).
Zeller et al. US 2006/0040038 discloses coffee polysaccharide carbohydrates stabilize espresso foam (‘038, Paragraph [0008]).
Miljkovic US 2005/0019474 discloses a dried coffee powder having an improved nutrient profile having essential coffee polysaccharides preserved that would otherwise be destroyed in a roasting process (‘474, Paragraph [0014]).
Gerhard-Bieben et al. US 5,897,903 discloses a soluble coffee powder comprising polysaccharides.
The prior art made of record, cited on a previous Information Disclosure Statement, and not relied upon is considered pertinent to applicant's disclosure.
Massey et al. GB 2,480,829 discloses a method of coating a beverage capsule in dissolved polysaccharide.
Ozasa et al. US 2005/0202229 discloses a food container (‘229, Paragraph [0001]) comprising polysaccharide fibers (‘229, Paragraph [0142]).
Chu et al. US 2008/0149561 discloses crosslinking glyoxal with polysaccharides (‘561, Paragraph [0071]).
Kruger US 2013/0129872 discloses a capsule for preparing a beverage from beverage powder wherein the beverage is coffee from coffee powder (‘872, Paragraphs [0002] and [0023]).
Combs et al. US 2014/0193653 discloses a food container (‘653, Paragraph [0023]) comprising a crosslinker increasing the adhesive properties and/or increase water resistance of adhesive wherein glyoxal crosslinkers are used in combination with polysaccharides (‘653, Paragraph [0041]).
Trebbi US 2008/0236106 discloses a method of coating and drying capsules (‘106, Paragraph [0008]).
Markland et al. US 2012/0125231 discloses a food container (‘231, Paragraph [0031]) comprising a crosslinking agent of glyoxal that crosslinks components of the coating composition including polysaccharides (‘231, Paragraph [0015]).
Gualandi et al. WO 2016/079701 discloses a capsule comprising a capsule body composed of at least one polysaccharide (starch) (‘701, Page 4, lines 16-21) wherein the capsule body is completely encased by at least one air tight coating layer comprising a polysaccharide derived from an alginate (‘701, Page 19, lines 26-29).
Bridgeford US 4,226,264 discloses protective coatings for food packages comprising crosslinking agents and polysaccharides.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICSON M LACHICA whose telephone number is (571)270-0278. The examiner can normally be reached M-F, 8:30am-5pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached at 571-270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERICSON M LACHICA/Examiner, Art Unit 1792
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