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 .
EXAMINER’S REMARKS
Claim 1 of the instant application, which has an effective filing date of January 2, 2025, recites the limitation “each longitudinal fold extending longitudinally along said sidewall starting from an area adjacent to said opening and ending at said base.” The parent application 15/308,998, which has an effective filing date of May 7, 2014, does not provide adequate written description support for this limitation. The drawings only show each longitudinal fold being parallel to the opening and parallel to the base as shown in e.g. FIG. 2. The drawings do not show each longitudinal fold extending longitudinally along the sidewall starting from an area adjacent to the opening and ending at the base as claimed in Claim 1 of the instant application. Applicant asserts that the instant application is a continuation of the parent application 15/308,998. However, the instant application is actually a Continuation In Part of application 15/308,998 since the aforementioned limitations of Claim 1 of the instant application is not supported in the parent ‘998 application. Therefore, Claims 1-11 of the instant application has an effective filing date of January 2, 2025. Examiner notes that any claims of the instant application that are amended to fully have adequate written description support of the ‘998 parent application would have an effective filing date of May 7, 2014.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on January 2, 2025 and January 2, 2025 were filed. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following must be shown or the feature(s) canceled from the claim(s):
Each longitudinal fold extending longitudinally along the sidewall starting from an area adjacent to the opening and ending at the base as claimed in Claim 1. The drawings only show each longitudinal fold being parallel to the opening and parallel to the base as shown in e.g. FIG. 2. The drawings do not show each longitudinal fold extending longitudinally along the sidewall starting from an area adjacent to the opening and ending at the base as claimed in Claim 1.
An endplate contained between two layers of the base as claimed in Claim 5.
An end plate arranged externally to the body and/or below the base as claimed in Claim 6.
The sidewall presenting recesses for housing the external reinforcement means as claimed in Claim 11.
No new matter should be entered.
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. 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 Objections
Claims 5 and 7 are objected to because of the following informalities:
Claim 5 recites the limitation “said at least two layers of base” in line 3. It appears the claim should recite “said at least two layers of said base” for grammatical purposes.
Claim 7 recites the limitation “said end plate” in line 3. It appears the claim should recite “said biodegradable end plate” in order to maintain consistency with “said biodegradable end plate” recited in Claim 6, lines 1-2.
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 1-11 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 limitation “a mixture” in line 3. It is unclear if this refers to “a beverage mixed with injected pressurized fluid solution” recited in Claim 1, lines 1-2 or to an entirely different mixture.
Claim 1 recites the limitation “an area adjacent to said opening” in lines 14-15. It is unclear if this refers to “an area adjacent to said opening” recited in Claim 1, line 8 or to an entirely different area adjacent to said opening. For purposes of examination Examiner interprets the claim to refer to the same area adjacent to said opening.
Claim 5 recites the limitation “said end plate” in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation “the mixture containing volume” in lines 3-4. There is insufficient antecedent basis for this limitation in the claim.
Clarification is required.
Claims 2-4 and 7-11 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 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Tedford US 2012/0097602 (cited on Information Disclosure Statement filed January 2, 2025) in view of Fu et al. US 2009/0321508, Takami US 4,206,854 (cited on Information Disclosure Statement filed January 2, 2025), and Rapparini US 2011/0247975 (cited on Information Disclosure Statement filed January 2, 2025) or alternatively Claims 1 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Tedford US 2012/0097602 (cited on Information Disclosure Statement filed January 2, 2025) in view of Wolff US 5,326,019 and Rapparini US 2011/0247975 (cited on Information Disclosure Statement filed January 2, 2025).
Regarding Claim 1, Tedford discloses a biodegradable capsule (biodegradable beverage filter cartridge 100) (‘602, Paragraph [0083]) comprising a body (cup shaped component 104) having a base (base portion 128), a sidewall (exterior surface 120), and an opening (opening 144) longitudinally opposite to the base (base 128) wherein the body (cup shaped component 104) forms a chamber and an upper part (lid component 112) coupled to the body (at lip portion 136 of cup shaped component 104) in such a way as to obstruct the opening (opening 144) (‘602, FIG. 2) (‘602, Paragraphs [0083]-[0084]) wherein the sidewall (cup shaped component 104) is made up of multilayer material comprising at least two layers (three, four, or five layer laminate) (‘602, FIGS. 3-5) (‘602, Paragraphs [0087]-[0089]).
Tedford is silent regarding the sidewall having a plurality of longitudinal folds arranged radially on the sidewall wherein each longitudinal fold extends longitudinally along the sidewall starting from an area adjacent to the opening and ending at the base, an external reinforcement means wrapping around the sidewall and coupled to the sidewall wherein the external reinforcement means is at least one biodegradable thread spirally wound around the sidewall starting from an area adjacent to the opening and ending at the base, and the at least one biodegradable thread being contained between the at least two layers wherein the at least one biodegradable thread wraps externally around at least one of the at least two layers of the sidewall.
Fu et al. discloses a biodegradable beverage capsule (container 100) (‘508, Paragraph [0032]) comprising a body having a base, a sidewall, and an opening longitudinally opposite to the base wherein the biodegradable capsule (container 100) comprises an external reinforcement means of at least one biodegradable thread (insulating material 216) spirally wrapping around the sidewall and coupled to the sidewall (‘508, Paragraph [0043]) wherein the external reinforcement means (insulating material 216) is wound around the sidewall starting from an area adjacent to the opening and ending at the base wherein the sidewall is made up of multilayer material comprising at least two layers wherein the at least one biodegradable thread (insulating material 216) is contained between the at least two layers (inner wall 102, outer wall 104) wherein the at least one biodegradable thread (insulating material 216) wraps externally around at least one of the at least two layers (inner wall 102, outer wall 104) of the sidewall (‘508, FIGS. 2 and 8) (‘508, Paragraphs [0047] and [0050]).
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Both Tedford and Fu et al. are directed towards the same field of endeavor of biodegradable beverage capsule containers. Tedford discloses the beverage making machine capsule (cup 10) being used with a beverage administration machine (brewing machine 18) and brewing using hot water (‘602, Paragraph [0071]). Fu et al. discloses heat insulating members being formed radially on the outer surface of the peripheral wall wherein each heat insulating member is formed obliquely between two layers of the sidewall (‘508, FIGS. 2 and 8) (‘508, Paragraph [0027]). Takami discloses that many types of cups or food tubs have been invented for containing and cooking edible food with boiling/hot water wherein heat insulating features disposed on a container wall prevents intense heat from being felt by the user who holds it (‘854, Column 1, lines 16-29). It would have been obvious to one of ordinary skill in the art to modify the beverage making machine capsule used in Tedford that is used in a brewing machine used to make hot beverages (‘602, Paragraph [0081]) to include at least one spirally wound biodegradable thread spirally wrapped around two layers of the sidewall since Takami teaches that heat insulating means disposed on a wall of a food container holding boiling/hot liquid foods and beverages prevents an intense heat from being felt by the user who holds it (‘854, Column 1, lines 17-35). One of ordinary skill in the art would incorporate the obliquely disposed spirally wound heat insulating members of Fu et al. into the beverage making machine capsule of Tedford in order to prevent the user who takes out the used/spent capsule after making the beverage from feeling an intense heat from handling the capsule and to prevent the user from burning their hands when handling the capsule with their hands for disposal purposes as taught by Takami. Furthermore, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the biodegradable capsule of Tedford and incorporate an external reinforcement means wrapping around the sidewall and coupled to the sidewall wherein the external reinforcement means is at least one biodegradable thread spirally wound around the sidewall starting from an area adjacent to the opening and ending at the base, and the at least one biodegradable thread being contained between the at least two layers wherein the at least one biodegradable thread wraps externally around at least one of the at least two layers of the sidewall as taught by Fu et al. in order to thermally insulate the container to keep the container contents hot (‘508, Paragraph [0029]). Additionally, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the container of Tedford and make the at least one biodegradable thread (insulating material 216) in a spiral pattern (‘508, FIG. 8) (‘508, Paragraph [0043]) such that the at least one biodegradable thread is contained between at least two layers of the sidewall wherein the at least one biodegradable thread wraps externally at least around one of the at least two layers of the sidewall (‘508, FIG. 2) as taught by Fu et al. since the configuration of the claimed at least one biodegradable thread is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed at least one biodegradable thread was significant in view of In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (MPEP § 2144.04.IV.B.). Fu et al. teaches that there was known utility in the beverage container art to construct at least one biodegradable thread in the claimed manner around the sidewall.
Alternatively with respect to the limitations regarding an external reinforcement means wrapping around the sidewall and coupled to the sidewall wherein the external reinforcement means is at least one biodegradable thread spirally wound around the sidewall starting from an area adjacent to the opening and ending at the base, and the at least one biodegradable thread being contained between the at least two layers wherein the at least one biodegradable thread wraps externally around at least one of the at least two layers of the sidewall, Wolff discloses a biodegradable beverage capsule (paper beverage cup) (‘019, Column 1, lines 6-12) comprising a body having a base, a sidewall, and an opening longitudinally opposite to the base wherein the biodegradable beverage capsule (paper beverage cup) comprises an external reinforcement means wrapping around the sidewall and coupled to the sidewall wherein the external reinforcement means is at least one biodegradable (paper) thread spirally wound around the sidewall starting from an area adjacent to the opening and ending at the base wherein the sidewall is made up of multilayer material comprising at least two layers and the at least one biodegradable (paper) thread (insert C) wraps externally at least around one of the at least two layers (inner wall A and outer wall B) of the sidewall (‘019, FIG. 1) (‘019, Column 1, lines 62-68) (‘019, Column 2, lines 20-27).
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Both Tedford and Wolff are directed towards the same field of endeavor of biodegradable beverage capsule containers. Tedford discloses the beverage making machine capsule (cup 10) being used with a beverage administration machine (brewing machine 18) and brewing using hot water (‘602, Paragraph [0071]). Wolff discloses the sidewall having two layers to create a pocket of air between the two layers for warm beverages (‘019, Column 1, lines 28-40). It would have been obvious to one of ordinary skill in the art to modify the beverage making machine capsule used in Tedford that is used in a brewing machine used to make hot beverages (‘602, Paragraph [0081]) to include at least one spirally wound biodegradable thread spirally wrapped around two layers of the sidewall as taught by Wolff in order to create a pocket of air that acts as an insulator for warm beverages which spirally wound biodegradable thread provides structural rigidity (‘019, Column 1, lines 28-36).
Further regarding Claim 1, Tedford modified with Fu et al. and Takami is silent regarding the sidewall having a plurality of longitudinal folds arranged radially on the sidewall wherein each longitudinal fold extends longitudinally along the sidewall starting from an area adjacent to the opening and ending at the base.
Rapparini discloses a biodegradable (compostable) capsule (container body 101) (‘975, Paragraph [0015]) comprising sidewalls having a plurality of longitudinally disposed folds (pleated portions 201) (‘975, FIGS. 10-12) (‘975, Paragraphs [0075]-[0077]) wherein the longitudinal folds (pleated portions) are provided as having an expanded state and a partially flattened in a collapsed storage state (‘975, Paragraph [0083]). The longitudinal folds (pleated portions 201) have a component that extends radially on the sidewall and each longitudinal fold (pleated portions 2010 extends longitudinally and continuously along the sidewall starting from an area adjacent to the opening and ending at the base (‘975, FIGS. 10-12). The combination of Tedford modified with Fu et al., Takemi et al., and Rapparini would necessarily teach the reinforcement means of Fu et al. to be disposed between two layers of the sidewall wherein the longitudinal folds of Rapparini are disposed on the outer layer of the sidewall.
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Both modified Tedford and Rapparini are directed towards the same field of endeavor of beverage containers used in a beverage making machine to prepare beverages. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify modified Tedford and incorporate into the sidewall a plurality of longitudinal folds extending longitudinally and continuously along the sidewall staring from an area adjacent to the opening and ending at the base as taught by Rapparini in order to stiffen the container body (‘975, Paragraph [0076]) and to reduce the possibility of being inadvertently squeezed and compressed when handled by a user (‘975, Paragraph [0075]).
Further regarding Claim 1, the limitations “for administration of a beverage by injecting a pressurized fluid solution therethrough by a beverage administration machine through a mixture,” “for containing said mixture,” “prevent an escape of said mixture,” “said at least one biodegradable thread being configured to oppose resistance to pressure acting on said biodegradable capsule by containing an expansion of said sidewall during the injection of said pressurized fluid solution under pressure,” and “wherein said pressure acts on said biodegradable capsule from inside the biodegradable capsule and/or from outside the biodegradable capsule” are seen to be recitations regarding the intended use of the “biodegradable 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, Tedford discloses the biodegradable capsule being used to make a beverage by injecting a pressurized fluid solution therethrough by a beverage administration machine through a mixture (‘602, Paragraphs [0062]-[0063]).
Regarding Claim 10, the limitations “wherein said at least two layers and said at least one biodegradable thread contained between said two layers are provided separate with respect to the body and then assembled to the body” 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.).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Tedford US 2012/0097602 (cited on Information Disclosure Statement filed January 2, 2025) in view of Fu et al. US 2009/0321508, Takami US 4,206,854 (cited on Information Disclosure Statement filed January 2, 2025), and Rapparini US 2011/0247975 (cited on Information Disclosure Statement filed January 2, 2025) as applied to claim 1 above in further view of Blok et al. US 6,253,995 or alternatively Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Tedford US 2012/0097602 (cited on Information Disclosure Statement filed January 2, 2025) in view of Wolff US 5,326,019 and Rapparini US 2011/0247975 (cited on Information Disclosure Statement filed January 2, 2025) as applied to claim 1 above in further view of Blok et al. US 6,253,995.
Regarding Claim 2, Tedford modified with Fu et al., Takami, and Rapparini or alternatively Tedford modified with Wolff and Rapparini is silent regarding the body being subjected to a grease and waterproofing treatment on an inner surface and an external surface of the biodegradable capsule.
Blok et al. discloses a beverage capsule (container 10) comprising a body having a base, a sidewall (sidewall 12), and an opening longitudinally opposite to the base (‘995, Column 3, lines 20-30) wherein the beverage capsule (container 10) comprises an external reinforcement means of at least one thread (fluted layer 26) spirally wrapping around the sidewall (sidewall 12) and coupled to the sidewall (sidewall 12) wherein the external reinforcement means (fluted layer 26) is wound around the sidewall (sidewall 12) starting from an area adjacent to the opening and ending at the base wherein the sidewall (sidewall 12) is made up of multilayer material comprising at least two layers (inner layer 22, outer layer 24) wherein the at least one thread (fluted layer 26) is contained between the at least two layers (inner layer 22, outer layer 24) wherein the at least one thread (fluted layer 26) wraps externally around at least one of the at least two layers (inner layer 22, outer layer 24) of the sidewall (sidewall 12) (‘995, FIG. 2) (‘995, Column 4, lines 6-21). Blok et al. further discloses the body being subjected to a grease proofing treatment on an external surface (outer layer 24) of the beverage capsule (‘995, Column 6, lines 31-45) and to a water proofing treatment on an inner surface (inner layer 22) of the beverage capsule (‘995, Column 6, lines 16-30).
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Both modified Tedford and Blok et al. are directed towards the same field of endeavor of beverage capsules. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beverage capsule of modified Tedford and subject the body to a grease proofing treatment on an external surface of the beverage capsule and to a water proofing treatment on an inner surface of the beverage capsule as taught by Blok et al. in order to prevent condensation from damaging the sidewall and to protect the sidewall from oil or other contaminants (‘995, Column 6, lines 31-37).
Claims 3-4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Tedford US 2012/0097602 (cited on Information Disclosure Statement filed January 2, 2025) in view of Fu et al. US 2009/0321508, Takami US 4,206,854 (cited on Information Disclosure Statement filed January 2, 2025), and Rapparini US 2011/0247975 (cited on Information Disclosure Statement filed January 2, 2025) as applied to claim 1 in further view of Kamerbeek et al. US 2012/0225168 (cited on Information Disclosure Statement field January 2, 2025) or alternatively Claims 3-4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Tedford US 2012/0097602 (cited on Information Disclosure Statement filed January 2, 2025) in view of Wolff US 5,326,019 and Rapparini US 2011/0247975 (cited on Information Disclosure Statement filed January 2, 2025) as applied to claim 1 above in further view of Kamerbeek et al. US 2012/0225168 (cited on Information Disclosure Statement filed January 2, 2025).
Regarding Claims 3 and 9, Tedford modified with Fu et al., Takami, and Rapparini or alternatively Tedford modified with Wolff and Rapparini is silent regarding the base having a plurality of holes for administration of the beverage during the injection of the pressurized fluid solution in the biodegradable capsule and the upper part having one or more holes for passage of the pressurized fluid solution under pressure within the body.
Kamerbeek et al. discloses a biodegradable container (capsule 2) (‘168, Paragraph [0020]) comprising a body (cup 12) having a base (bottom 18), a sidewall (circumferential wall 16), and an opening (opening closed by lid 14) opposite to the base (bottom 18) wherein the body forms a chamber (inner space 22) for containing a preparation, the base (bottom 18) having a plurality of holes (entrance openings 25) for administration of the beverage during the injection of the pressurized fluid solution in the container and an upper part (lid 14) coupled to the body wherein the base (bottom 18) has a plurality of holes (entrance openings 25) (‘168, Paragraphs [0051] and [0057]) and the upper part (lid 14) has one or more holes (exit openings 27) (‘168, FIG. 2) (‘168, Paragraphs [0042], [0047], and [0051]).
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Both modified Tedford and Kamerbeek et al. are directed towards the same field of endeavor of beverage containers used in a beverage making machine. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the both the base and upper part lid of modified Tedford and construct the base and the upper part lid with one or more holes for passage of the fluid solution under pressure as taught by Kamerbeek et al. in order to allow the prepared coffee to exit the capsule through the openings (‘168, Paragraphs [0056]-[0057]).
Further regarding Claims 3 and 9, the limitations “for administration of said pressurized fluid solution during the injection of said pressurized fluid solution in said biodegradable beverage making machine capsule” and “for the passage of said fluid solution under pressure” are limitations regarding the intended use of the container and as such are rejected for the same reasons regarding intended use enumerated in the rejections of Claim 1 provided above.
Regarding Claim 4, Tedford discloses a biodegradable bottom filter (filter component 108) arranged inside the body above the base (base portion 128) (‘602, FIG. 2) (‘602, Paragraph [0092]).
Further regarding Claim 4, the limitations “for filtering said beverage and prevent a leakage of said mixture during the injection of said pressurized fluid solution in said biodegradable capsule” are intended use limitations and as such are rejected for the same reasons regarding intended use enumerated in the rejections of Claim 1 above.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Tedford US 2012/0097602 (cited on Information Disclosure Statement filed January 2, 2025) in view of Fu et al. US 2009/0321508, Takami US 4,206,854 (cited on Information Disclosure Statement filed January 2, 2025), Rapparini US 2011/0247975 (cited on Information Disclosure Statement filed January 2, 2025) and Kamerbeek et al. US 2012/0225168 (cited on Information Disclosure Statement field January 2, 2025) as applied to claim 4 above in further view of Zangerle US 2010/0307930 (cited on Information Disclosure Statement filed January 2, 2025) or alternatively Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Tedford US 2012/0097602 (cited on Information Disclosure Statement filed January 2, 2025) in view of Wolff US 5,326,019, Rapparini US 2011/0247975 (cited on Information Disclosure Statement filed January 2, 2025), and Kamerbeek et al. US 2012/0225168 (cited on Information Disclosure Statement filed January 2, 2025) as applied to claim 4 above in further view of Zangerle US 2010/0307930 (cited on Information Disclosure Statement filed January 2, 2025).
Regarding Claim 5, Tedford modified with Fu et al., Takami, and Rapparini or alternatively Tedford modified with Wolff and Rapparini is silent regarding an end plate contained between the at least two layers of the base.
Zangerle discloses a beverage capsule comprising a body having a base, a sidewall, and an opening longitudinally opposite to the base and an upper part coupled to the body wherein the base is made of a multilayer material comprising at least two layer wherein an end plate (labyrinth plate 4) is contained between the at least two layers (sealing film 7, flat base 15) of the base (‘930, FIGS. 5-6 and 8-9) (‘930, Paragraphs [0019]-[0020] and [0025]).
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Both modified Tedford and Zangerle are directed towards the same field of endeavor of beverage capsules. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beverage capsule of modified Tedford and incorporate an end plate between at least two layers of the base as taught by Zangerle in order to form a laminar liquid jet by which the liquid flows (‘930, Paragraph [0027]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Tedford US 2012/0097602 (cited on Information Disclosure Statement filed January 2, 2025) in view of Fu et al. US 2009/0321508, Takami US 4,206,854 (cited on Information Disclosure Statement filed January 2, 2025), and Rapparini US 2011/0247975 (cited on Information Disclosure Statement filed January 2, 2025) as applied to claim 1 above in further view of Kruger US 2011/0142996 (cited on Information Disclosure Statement filed January 2, 2025) or alternatively Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Tedford US 2012/0097602 (cited on Information Disclosure Statement filed January 2, 2025) in view of Wolff US 5,326,019 and Rapparini US 2011/0247975 (cited on Information Disclosure Statement filed January 2, 2025) as applied to claim 1 above in further view of Kruger US 2011/0142996 (cited on Information Disclosure Statement filed January 2, 2025).
Regarding Claim 6, Tedford discloses using biodegradable polypropylene materials (‘602, Paragraph [0070]). However, Tedford modified with Fu et al., Takami, and Rapparini or alternatively Tedford modified with Wolff and Rapparini is silent regarding an end plate being arranged internally to the body and above the base to improve the mechanical strength of the base.
Kruger discloses a container (portion capsule 1) comprising a body (base element 2) having a base (bottom region 11), a sidewall, and an opening (opening closed off by membrane 4) opposite to the base (bottom region 11) wherein the body (base element 2) forms a chamber (cavity 3) for containing a preparation (coffee) and an upper part (membrane 4) coupled to the body (base element 2) in such a way as to obstruct the opening and prevent escape of the preparation (coffee) (‘996, FIG. 1) (‘996, Paragraph [0006]). Kruger further discloses an end plate (filter element 5) arranged internally to the body (base element 2) and above the base (bottom region 11) (‘996, FIG. 1) (‘996, Paragraph [0024]). Additionally, the capsule has a greater degree of mechanical stability and deformation, i.e. lateral buckling of the capsule is prevented (‘996, Paragraph [0006]), which reads on the claimed improved mechanical strength of the base.
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Both modified Tedford and Kruger are directed towards the same field of endeavor of beverage capsules used in a beverage preparation machine. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the container of modified Tedford and incorporate an end plate in the form of a rigid filter element disposed internally to the body and above the base as taught by Kruger in order to further filter out the ingredients of the container during beverage preparation.
Further regarding Claim 6, the limitations “to adjust the mixture containing volume of said body” are intended use limitations and as such are rejected for the same reasons regarding intended use enumerated in the rejections of Claim 1 provided above.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Tedford US 2012/0097602 (cited on Information Disclosure Statement filed January 2, 2025) in view of Fu et al. US 2009/0321508, Takami US 4,206,854 (cited on Information Disclosure Statement filed January 2, 2025), Rapparini US 2011/0247975 (cited on Information Disclosure Statement filed January 2, 2025) and Kruger US 2011/0142996 (cited on Information Disclosure Statement filed January 2, 2025) as applied to claim 6 above in further view of Zangerle US 2010/0307930 (cited on Information Disclosure Statement filed January 2, 2025) or alternatively Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Tedford US 2012/0097602 (cited on Information Disclosure Statement filed January 2, 2025) in view of Wolff US 5,326,019, Rapparini US 2011/0247975 (cited on Information Disclosure Statement filed January 2, 2025) and Kruger US 2011/0142996 (cited on Information Disclosure Statement filed January 2, 2025) as applied to claim 6 above in further view of Zangerle US 2010/0307930 (cited on Information Disclosure Statement filed January 2, 2025).
Regarding Claim 7, Tedford modified with Fu et al., Takami, Rapparini, and Kruger or alternatively Tedford modified with Wolff, Rapparini, and Kruger is silent regarding an end plate contained between the at least two layers of the base.
Zangerle discloses a beverage capsule comprising a body having a base, a sidewall, and an opening longitudinally opposite to the base and an upper part coupled to the body wherein the base is made of a multilayer material comprising at least two layer wherein an end plate (labyrinth plate 4) is contained between the at least two layers (sealing film 7, flat base 15) of the base (‘930, FIGS. 5-6 and 8-9) (‘930, Paragraphs [0019]-[0020] and [0025]).
Both modified Tedford and Zangerle are directed towards the same field of endeavor of beverage capsules. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beverage capsule of modified Tedford and incorporate an end plate between at least two layers of the base as taught by Zangerle in order to form a laminar liquid jet by which the liquid flows (‘930, Paragraph [0027]).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Tedford US 2012/0097602 (cited on Information Disclosure Statement filed January 2, 2025) in view of Fu et al. US 2009/0321508, Takami US 4,206,854 (cited on Information Disclosure Statement filed January 2, 2025), and Rapparini US 2011/0247975 (cited on Information Disclosure Statement filed January 2, 2025) as applied to claim 1 above in further view of Nelson US 1,571,061 and Capitani US 2014/0083873 (cited on Information Disclosure Statement filed January 2, 2025) or alternatively or alternatively Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Tedford US 2012/0097602 (cited on Information Disclosure Statement filed January 2, 2025) in view of Wolff US 5,326,019 and Rapparini US 2011/0247975 (cited on Information Disclosure Statement filed January 2, 2025) as applied to claim 1 above in further view of Nelson US 1,571,061 and Capitani US 2014/0083873 (cited on Information Disclosure Statement filed January 2, 2025).
Regarding Claim 8, Tedford modified with Fu et al. Takami, and Rapparini or alternatively Tedford modified with Wolff and Rapparini is silent regarding a biodegradable outer ring arranged externally to the body and at the opening for the coupling between the body and the upper part.
Nelson discloses a food container comprising a body (pail 12) having a base, a sidewall, an opening, and an upper part (celluloid disc 11) coupled to the body (pail 12) in such a way as to obstruct the opening and an outer ring (ring 10) arranged externally to the body (pail 12) and at the opening for the coupling between the body (pail 12) and the upper part (celluloid disc 11) (‘061, FIG. 1) (‘061, Page 1, lines 19-43).
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Both modified Tedford and Nelson are directed to the same field of endeavor of food or beverage containers. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beverage capsule of modified Tedford and incorporate an outer ring arranged externally to the body and at the opening since Nelson teaches that incorporating an outer ring was a known way to coupling the body to the upper part.
Further regarding Claim 8, Tedford modified with Fu et al., Takami, Rapparini, and Nelson is silent regarding the outer ring being biodegradable.
Capitani discloses a biodegradable capsule comprising a body (body 12) (‘873, Paragraph [0046) having a base (121), a sidewall, and opening, and an upper part (sealing film 16) coupled to the body. Capitani further discloses an outer ring (reinforcement ring 20) arranged externally to the body and at the opening for the coupling between the body and the upper part (sealing film 16) (‘873, FIG. 4) wherein the outer ring (reinforcement ring) is biodegradable (made of paper) (‘873, Paragraph [0037]).
Both modified Tedford and Capitani are directed towards the same field of endeavor of biodegradable beverage capsules. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beverage capsule of modified Tedford and incorporate an outer ring arranged externally to the body and at the opening (‘873, Paragraph [0034]) and have the outer ring made of biodegradable paper material 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). Capitani teaches that there was known utility in the beverage capsule art to construct the outer ring out of biodegradable materials.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Tedford US 2012/0097602 (cited on Information Disclosure Statement filed January 2, 2025) in view of Fu et al. US 2009/0321508, Takami US 4,206,854 (cited on Information Disclosure Statement filed January 2, 2025), and Rapparini US 2011/0247975 (cited on Information Disclosure Statement filed January 2, 2025) as applied to claim 1 above in further view of Norton et al. US 2014/0072675 (cited on Information Disclosure Statement filed January 2, 2025) or alternatively Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Tedford US 2012/0097602 (cited on Information Disclosure Statement filed January 2, 2025) in view of Wolff US 5,326,019 and Rapparini US 2011/0247975 (cited on Information Disclosure Statement filed January 2, 2025) as applied to claim 1 above in further view of Norton et al. US 2014/0072675 (cited on Information Disclosure Statement filed January 2, 2025).
Regarding Claim 11, Tedford modified with Fu et al., Takami, and Rapparini or alternatively Tedford modified with Wolff and Rapparini is silent regarding the sidewall presenting recesses for housing the external reinforcement means.
Norton et al. discloses a capsule comprising a body (body 2) having a base (base 4), a sidewall (sidewall 5), and an opening (open upper end 20) longitudinally opposite to the base (base 4) and an upper part (lid 3) coupled to the body (body 2) (‘675, Paragraph [0059]) wherein the sidewall (sidewall 5) presents recesses (channels 29) (‘675, FIG. 2) (‘675, Paragraph [0060]).
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Both modified Tedford and Norton et al. are directed towards the same field of endeavor of beverage capsules. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beverage capsule of modified Tedford and incorporate recesses into the sidewall as taught by Norton et al. in order to allow the beverage to drain downwards to allow a faster flow (‘675, Paragraph [0101]).
Further regarding Claim 11, the limitations “for housing said external reinforcement means” are intended use limitations and as such are rejected for the same reasons regarding intended use enumerated in the rejections of Claim 1 above. The proposed combination of modified Tedford would have the reinforcement means disposed within the two layers of the sidewall of Fu et al. or alternatively Wolff would be housed within the recesses disclosed by Norton et al.
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 and 3-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 of US Patent No. 10,843,867 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of the ‘867 reads on the end plat recited in Claims 1 and 3-7 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Zhang et al. US 2010/0108693 discloses a recyclable thermally insulated double walled plastic container (‘693, FIG. 1) (‘693, Paragraph [0023]).
Watkins et al. US 4,261,501 discloses a beverage capsule (cup for drinking hot liquids such as coffee (‘501, Column 1, lines 6-15) comprising a body having a base, a sidewall (sidewall 18) wherein the sidewall (sidewall 18) has a plurality of longitudinal folds (ribs 28) arranged radially on the sidewall (sidewall 18), each longitudinal fold (ribs 28) extending longitudinally along the sidewall starting from an area adjacent to the opening (lip section 26) and ending at the base (24) (‘501, FIG. 2) (‘501, Column 2, lines 65-68).
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Fu et al. US 2013/0303351 discloses a biodegradable beverage capsule (container 100) (‘351, Paragraphs [0036] and [0038])comprising a body having a base, a sidewall (inner wall 102 and outer wall 104), and an opening longitudinally opposite to the base wherein the biodegradable capsule (container 100) comprises an external reinforcement means of at least one biodegradable thread (insulating material 216) spirally wrapping around the sidewall and coupled to the sidewall wherein the external reinforcement means (insulating material 216) is wound around the sidewall starting from an area adjacent to the opening and ending at the base wherein the sidewall (inner wall 102 and outer wall 104) is made up of multilayer material comprising at least two layers (inner wall 102 and outer wall 104) wherein the at least one biodegradable thread (insulating material 216) is contained between the at least two layers (inner wall 102 and outer wall 104) wherein the at least one biodegradable thread (insulating material 216) wraps externally around at least one of the at least two layers (inner wall 102 and outer wall 104) of the sidewall (‘351, FIG. 2) (‘351, Paragraphs [0038]-[0039]).
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Fu et al. US 2012/0285972 discloses a biodegradable beverage capsule (container 100 (‘972, Paragraph [0075]) comprising a body having a base, a sidewall (inner wall 102 and outer wall 104), and an opening longitudinally opposite to the base wherein the biodegradable capsule comprises an external reinforcement means of at least one biodegradable thread (insulating material 216) spirally wrapping around the sidewall and coupled to the sidewall (inner wall 102 and outer wall 104) (‘972, Paragraphs [0044] and [0086]) wherein the external reinforcement means is wound around the sidewall starting from an area adjacent to the opening and ending at the base wherein the sidewall is made up of multilayer material comprising at least two layers (inner wall 102 and outer wall 104) wherein the at least one biodegradable thread (insulating material 216) is contained between the at least two layers (inner wall 102 and outer wall 104) wherein the at least one biodegradable thread (insulating material 216) wraps externally around at least one of the at least two layers (inner wall 102 and outer wall 104) of the sidewall (‘972, FIG. 19) (‘972, Paragraphs [0093]).
Lee 2011/0215103 discloses a beverage capsule comprising a body having a base, a sidewall, and an opening longitudinally opposite to the base wherein the capsule comprises an external reinforcement means (foam portions 51 of foam layer 5) wrapping around the sidewall and coupled to the sidewall wherein the external reinforcement means (foam portions 51 of foam layer 5) is wound around the sidewall starting from an area adjacent to the opening and ending at the base wherein the sidewall is made up of multilayer material comprising at least two layers wherein the at least one thread (foam portions 51) is contained between the at least two layers wherein the at least one biodegradable thread (foam portions 51) wraps externally around at least one of the at least two layers of the sidewall (‘103, FIG. 6) (‘103, Paragraphs [0027] and [0027]).
Schwartz US 3,169,689 discloses a beverage capsule (drinking cup) (‘689, Claim 1) comprising a body having a base, a sidewall (walls 11), and an opening longitudinally opposite to the base wherein the sidewall (walls 11) has a plurality of longitudinal folds (longitudinal ribs 13) arranged radially on the sidewall (walls 11) and a plurality of transverse folds (transverse ribs 24) arranged axially on the sidewall (walls 11) (‘689, FIG. 1) (‘689, Column 3, lines 20-53).
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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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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