DETAILED ACTION
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Examiner's Remarks
It is noted that the claims extensively recite reference signs. While reference signs may be recited note, that the use of reference signs is considered to have no effect on the scope of the claims (MPEP § 608.01M).
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 “forming a web of cellulose pulp” and “thermoforming the capsule by hot moulding said web” as recited in claim 11, “injecting air into the cellulose pulp web” as recited in claim 12, “wetting the sheet prior to thermoforming” as recited in claim 14 must be shown or the features canceled from the claims. 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.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Objections
Claims 1 and 3 are objected to because of the following informalities:
Claim 1 recites “comprising a body having a side wall bordered on either side by a base and a rim” which seems to infer that each side of the body would have both a base and a rim. It would appear that the claim should recite ‘a body having a side wall bordered on one side of the side wall by a base and a rim on the opposite side of the side wall opposed to the base’ or similar language.
Claim 3 recites “between 1% and 50% by weight of MFC microfibrillated cellulose”. It appears the claim should recite ‘between 1% and 50% by weight of the MFC microfibrillated cellulose’.
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 4, 5, and 10 – 15 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 4, it is unclear what the term “it” is referring to. Would this be the entire capsule, the base of the capsule, the rim of the capsule, or something else entirely?
Regarding claim 5, 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).
Regarding claim 6, it is unclear what the term “it” is referring to. Would this be the entire capsule, the base of the capsule, the rim of the capsule, or something else entirely?
Regarding claim 10, it is unclear what the term “it” is referring to. Would this be the entire capsule, the base of the capsule, the rim of the capsule, or something else entirely?
Regarding claim 11, it is unclear if the “a capsule” is the same as the “a capsule” recited in claim 1 from which claim 11 depends or some other capsule not heretofore recited.
Regarding claim 11 which depends from claim 1, it is unclear if the “a web” is the same “a web” recited in claim 1, or some other web not heretofore recited.
Regarding claim 12, it is unclear what the term “it” is referring to or how it “provides”. Would this be the method for producing the body of the capsule, something to do with the dry moulding, forming the “a web of cellulose pulp”, or something else entirely?
Regarding claim 12, there is no antecedent basis for the term “the cellulose pulp web”.
Claim 12 recites “prior to thermoforming” but it is unclear what is to be thermoformed. Would this refer to “thermoforming the capsule” as recited in claim 11 or something else?
Regarding claim 13, it is unclear what the term “it” is referring to or how it “provides” for forming the web as a sheet of cellulose pulp. Would this refer to the entire method for producing the body of the capsule, producing, i.e., forming only the base of the capsule, forming only the rim of the capsule, or some other web entirely?
Regarding claim 14, it is unclear what the term “it” is referring to or how it provides for wetting the sheet.
Claim 14 recites “prior to thermoforming” but it is unclear what is to be thermoformed. Would this refer to “thermoforming the capsule” as recited in claim 11 or something else?
Regarding claim 15, it is unclear what the term “it” is referring to or how it “provides” for cutting the web. Would “it” refer to the method of claim 11, the “cutting the web”, the “form(ing) a cross-shaped geometry around the zone”, or something else?
Regarding claim 15, there is no antecedent basis for the term “the zone”.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating
obviousness or nonobviousness.
Claims 1 – 10 are rejected under 35 U.S.C. 103 as being unpatentable over Chen US 2019/0062998.
Regarding claim 1 and 2, Chen discloses a capsule (capsule main body (CMB)) (paragraph [0006] and fig. 6) capable of receiving a substance that is capable of preparing a beverage. The capsule comprises a body having a side wall bordered on either side by a base and by a rim surrounding an opening in said body (fig. 6). Chen further discloses the capsule body is formed from cellulose pulp (fibrillated cellulose) (paragraph [0003]) that would comprise micro-fibrillated cellulose (paragraph [0003]).
Regarding the limitation “said capsule being characterized in that the body is formed by dry-moulding a web of cellulose pulp” this is a method limitation and does not determine the patentability of the product, unless the process produces unexpected results. The method of forming the product is not germane to the issue of patentability of the product itself, unless applicant presents evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Chen discloses the capsule as claimed.
Regarding claim 3, Chen discloses that the cellulose pulp can comprise 50% fibrillated cellulose (Mixture structure 50% BG / 50% NFC) (figure 5) of between (1:100 to about 1:1) (paragraph [0003]) and also discloses the cellulose pulp would comprise micro-fibrillated cellulose with said pulp at a ratio 1:100 or 1:1 (paragraph [0042]) and is thus seen to disclose the micro-fibrillated cellulose would comprise between 1% and 50% by weight. Since Chen discloses using MFC and/or NFC interchangeably Chen is seen as teaching and/or suggesting that either microfibrillated and/or nanofibrillated cellulose are equally available to be part of the molded cellulose pulp body (paragraph [0057], [0058], [0067], and [0068]). To therefore modify figure 5 of Chen that uses a mixture of 50% BG and 50% NFC and to use 50% microfibrillated cellulose (MFC) or another amount of MFC such as between about 1% to about 50% as part of the molded cellulose body would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
Regarding claims 4 and 5, Chen discloses the capsule can have an oxygen transmission rate of at most 5 cm3/m2/day-atm (paragraph [0050]). Therefore, it would have been an obvious matter of choice and/or design to the ordinarily skilled artisan to modify the capsule of Chen to obtain the claimed oxygen transmission rate according to ASTM E3985.
Regarding claims 6 – 7, Chen discloses that the capsule can have a water vapor transmission rate that is less than 10g/m2-24h (paragraph [0050]). Therefore, it would have been an obvious matter of choice and/or design to the ordinarily skilled artisan to have modified the capsule of Chen according to ASTM E96.
Regarding claim 8, Chen discloses that the container can be formed with a base layer, a polymer layer and a coating layer which reads on the side wall of the body being covered with a sealing label and/or sealing coating (In some embodiments, the consumer product comprises a base layer, a polymer layer and/or a coating layer) (paragraph [0006]) (dip coating) (paragraph [0012]) (surface coated support material) (paragraph [00 71]).
Regarding claim 9, Chen discloses that the coating would comprise hairy fiber (paragraph [0006] [0043]), and that hairy fiber would also comprise micrometer sized fibres (paragraph [0024]) which is to say that Chen is disclosing the sealing coating would comprise micro-fibrillated cellulose. Further since Chen discloses that fibrillated cellulose, such as micro-fibrillated cellulose is advantageous for its mechanical properties and improving gas barrier properties (paragraph [0033]) it would have been an obvious matter of choice and/or design to the ordinarily skilled artisan to employ the use of micro-fibrillated cellulose.
Regarding claim 10, Chen discloses the capsule capable of receiving a substance capable of preparing a beverage is biodegradable (paragraph [0054])
Claims 11 – 14 are rejected under 35 U.S.C. 103 as being unpatentable over Chen US 2019/0062998 in view of Kuiper et al. US 2024/0336391 in view of Sectoral News (SN).
Regarding claims 11, 12, and 13, as set forth above in the rejection of claim 1 Chen discloses the capsule would be made of cellulose pulp. In order for the capsule to have been made from cellulose pulp as taught by Chen a web would have necessarily have to have been formed. Chen further discloses the capsule would be thermoformed by hot-moulding said web (heat press of wet preforms) (paragraph [0087]).
Claims 11 differs from Chen in thermoforming the capsule by dry moulding the body of the capsule.
Claim 12 differs from Chen in prior to thermoforming air being injected into the cellulose pulp web.
Kuiper discloses a container (2) capable of receiving a substance that would be capable of preparing a beverage which container comprises a body (4) having a side wall (8), a bottom (6), and a rim (flange 10) ([0070] and fig. 1A – 1D). A web is formed as a sheet of cellulose pulp (micro-fibrillated cellulose) (paragraph [0024]) (the pulp can be dried and supplied as sheets) and air is injected into the cellulose pulp web prior to thermoforming (preferably using fluffy pulp) (paragraph [0061]). Kuiper further discloses the capsule would be then thermoformed by hot moulding, i.e., by dry forming. Kuiper that the particular advantage of dry moulding (dry forming) of 3D moulded fibre products is that the energy consumption is only 20% to 35% in comparison with wet forming technology and that the investment in tooling and machinery is considerably lower (paragraph [0062]). Regarding claim 12 and injecting air, SN discloses that by injecting air into the cellulose pulp web (fluff pulp/air-laid) said web will have better tensile strength and tear resistance making a cellulose pulp web so treated to be a perfect choice for consumer markets (What is Air Laid?) (page 3). Therefore, given the art taken as a whole it would have been an obvious matter of choice and/or design to the ordinarily skilled artisan to modify Chen and produce the capsule body of a capsule by dry forming a cellulose pulp web into which air was injected as taught by Kuiper in view of SN.
Regarding claim 14, Chen in view of Kuiper in view of SN disclose that the sheet would be wetted prior to thermoforming (formation of wet paper preforms) (‘998, paragraph [0087], [0096], and fig. 6).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Chen US 2019/0062998 in view of Kuiper et al. US 2024/0336391 in view of Sectoral News (SN) in view of Pierce US 2021/0316935.
Claim 15 differs from Chen in view of Kuiper in view of SN in the web being cut to form a cross-shaped geometry around the zone of the web to be moulded. Pierce discloses a container (cup) (paragraph [0009]) made from a sheet (paragraph [0243]) that employs a geometry known as “wall tongues” (paragraph [0039]) and that by cutting the sheet, i.e., web to form a cross-shaped geometry of said tongues allows for the forming of complex curvatures during moulding (paragraph [00168] – [0171]). Pierce further discloses that the use of “wall tongues” provides a cost-efficient way of producing container structures and reducing the amount of material and time to produce container structures (paragraph [0039]). To therefore modify Chen in view of Kuiper in view of SN and cut the web to form a cross-shaped geometry around a zone of the web to be moulded to allow for the forming of complex curvatures during moulding as well as to provide a cost-efficient way of producing container structures and reducing the amount of material and time to produce container structures as taught by Pierce would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
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 – 8, 10, 11, and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 19099781 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because copending claims 1, 8, and 16 disclose a capsule comprising a body having a side wall bordered on either side by a base and a rim surrounding an opening and the capsule body being formed by molding a cellulose pulp, and the side wall being covered by a sealing label and/or a sealing coating and formed by dry-moulding a web of cellulose pulp. The sealing label can be construed as reading on a "sealing coating," because the sealing label of the copending claims is covering the side wall in the same manner as the sealing coating of claim 1 of this Application.
Regarding claim 2 and 3, copending claims 2 and 4 disclose cellulose pulp and that the cellulose pulp would comprise MFC microfibrillated cellulose.
Regarding claims 4 – 7, copending claims 9 – 12 disclose an oxygen transmission rate of at most 5 cm3/m2-day-atm and a water vapor transmission rate of less than 10 g/m2-24h.
Regarding claim 10, copending claim 14 discloses the capsule body is biodegradable.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 – 8, 10, 11, and 16 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1-13 of
copending Application No. 19099782 (reference application).
Claims 1 – 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-10 of copending Application No. 19099782.
Although the claims at issue are not identical, they are not patentably distinct from each other because regarding claim 1, copending claims, 1 and 8 disclose a capsule intended for receiving a substance for preparing a beverage, said capsule comprising a body having a side wall bordered on either side by a base and by a rim surrounding an opening in said body, said capsule being characterized in that the body is formed by molding a cellulose pulp and the side wall is covered with a sealing label.
Regarding claims 2-3, copending claims 2 and 3 discloses that the sealing label comprises MFC microfibrillated cellulose.
Regarding claims 4-7, copending claims 4 – 7 disclose an oxygen transmission rate of at most 5 cm3/m2-day.atm and a water vapor transmission rate of less than 10 g/m2-24h.
Regarding claim 8, copending claims 9 and 10 disclose the sealing label on the inside and/or the outside of the wall and since there are a limited number of options for how the sealing label would have been applied to the side wall either on the inside or the outside of the side wall, the copending claims are seen to encompass the claimed structure.
Regarding claim 10 copending claim 11 teaches that the capsule body is biodegradable.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-10 of copending Application No. 19099783 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1, 2, and 10, copending claim 1 discloses a capsule for receiving a substance for preparing a beverage comprising a body having a side wall bordered on either side by a base and by a rim surrounding an opening in said body, said capsule being characterized in that the body is formed by molding a cellulose pulp comprising MFC microfibrillated cellulose.
Regarding claims 4 – 7, copending claims 3 – 6 disclose an oxygen transmission rate of at most 5 cm3/m2-day.atm and a water vapor transmission rate of less than 10 g/m2-24h.
Regarding claims 8 – 9, copending claims 7 – 8 disclose a sealing label comprising MFC microfibrillated cellulose.
Regarding claim 10, copending claim 9 discloses that the capsule is biodegradable.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAIM A SMITH whose telephone number is (571)270-7369. The examiner can normally be reached Monday-Thursday 09:00-18:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at (571) 270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.S./
Chaim SmithExaminer, Art Unit 1791 03 August 2026
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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