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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1, 8 and 12 are objected to because of the following informalities:
Claim 1 recites the limitation, “a body having a side wall bordered on either side by a base and by a rim.” In light of the specification it is clear that the claim is reciting that the side wall has a base on one side and a rim on a side opposite to the base. For matters of form, the claim limitation should be amended to recite, “a body having a side wall bordered on one side of the side wall by a base and bordered on another side of the side wall by a rim that is positioned opposite to the base,” or similar language.
Claim 8 recites the limitation, “to improve its resistance to moisture.” For matters of form this limitation should be amended to recite, “to improve the sealing label’s resistance to moisture.”
Claim 12 recites the limitation, “an IML process.” The acronym IML should be written out.
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 4-9, 11, 14 and 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.
Claims 5, 11, 14 and 15 recite the limitation, “in particular” which makes the claim unclear as to whether the limitations following this phrase are required or not. For the purpose of examination, the limitations following, “in particular” have been construed as being optional.
Claims 4 and 6 recite the limitation “it” on line 2 of both claims. It is not clear as to what “it” is referring to, the capsule as a whole, or the sealing label or some other structure previously recited as part of the capsule.
Claims 7 and 8 are rejected based on their dependence to a rejected claim.
Claim 9 recites, “a sealing label” on line 2. It is not clear whether this is intending to be the same or different sealing label as recited in claim 1.
Claim 15 recites, “the label” on the last line, which lacks proper antecedent basis.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2 and 10-13 are rejected under 35 U.S.C. 102a1 as being anticipated by Chen (US 20190062998).
Regarding claim 1, Chen discloses a capsule intended for receiving a substance for preparing a beverage (see figure 6; paragraph 6: “coffee capsule”) comprising a body (see paragraph 6: “capsule main body (CMB)”) having a side wall bordered on either side by a base and a rim surrounding an opening (see figure 6, which shows an unsealed capsule comprising a sidewall having a base and a rim surrounding an opening in the body).
Chen discloses that the capsule body is formed from cellulose pulp, because the reference discloses that cellulose pulp is formed into the capsule body (see paragraph 96 and figure 6, disclosing using a pulp molding machine to produce the capsule; see paragraph 6: “base layer comprises pulp fiber, nanofibrillated cellulose”; see paragraph 26; see paragraph 52, “cellulose pulp”; paragraph 71, “injection molding”). It is further noted that since the claim is directed to a product and not a method of making the product, the structure implied by “molding a cellulose pulp” is the capsule body comprising cellulose pulp.
Chen discloses at paragraph 6 that the container can be formed with a base layer, a polymer layer and a coating layer and therefore reads on the side wall of the body being covered with a sealing label (see paragraph 6: “In some embodiments, the consumer product comprises a base layer, a polymer layer and/or a coating layer.”; see paragraph 12, “dip coating”; see paragraph 60 and 71). Chen also discloses that a laminate structure, such as the layered structure shown in figure 5, can be shaped into the capsule, to make the capsule as shown in figure 6, thus disclosing that the sealing label would necessarily have covered the side wall of the cellulose pulp capsule body.
Further regarding the limitation of, “a sealing label,” since the claim is directed to the product and not a method of making the product, the structure implied by “a sealing label” is a “sealing” layer. The claim also does not provide any specificity as to what the sealing label is sealing or sealing against such that any additional layer could be construed as a sealing layer. Nonetheless, in figure 5, Chen further discloses that there can be a layer that can control oxygen transmission (see the last row: “laminated with 50% NFC”) and at paragraph 33, Chen discloses that the fibrillated cellulose can provide binding properties as well as improving the gas barrier properties such that Chen discloses and anticipates that the side wall is covered with a sealing label. The polymer layer as disclosed at paragraph 6 can also be construed as a sealing label.
Regarding claim 2, Chen discloses that the sealing label comprises a cellulose based layer (see for example, the laminate in figure 5, which comprises fibrillated cellulose).
Regarding claim 10, in view of the fibrillated cellulose layer being part of the laminated structure which is formed into the capsule body and therefore capsule side wall, Chen reads on the sealing label comprising a sealing layer on the side wall.
Regarding claim 11, Chen discloses that the capsule body is fully biodegradable (see paragraph 54).
Regarding claims 12-13, it is initially noted that the claims are directed to the product and not the method of making the product, such that the claim is construed to be a product by process claim, where 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 (MPEP 2113). In view of this, since Chen discloses a sealing label applied to the side wall and further discloses a capsule having the structure as recited in claim 1, the structure as implied by claims 12 and 13 has been disclosed by Chen. Nonetheless, Chen also discloses that the fibrillated cellulose layer would have been part of the laminate structure used to form the capsule and capsule side wall (see paragraph 69-70: thermoplastic polymer laminated MFC/NFC-enhanced fiber preforms; paragraph 72, “The composite materials produced…maybe subsequently be molded into the desired shape, for example by compression molding or hot pressing…”) and also discloses a wet coffee capsule preform which is then heat pressed into a desired capsule shape, and therefore is disclosing wet molding, for example (see paragraph 37, 96).
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 3-9 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (US 20190062998).
Regarding claim 3, the claim differs from Chen as applied to claim 2, in specifically reciting that the cellulose based sealing label comprises MFC microfibrillated cellulose (claim 3).
Chen teaches that the sealing label can comprise NFC and/or hairy fiber and that the hairy fiber comprises fibrillated fibers of a micron size(i.e. microfibrillated cellulose)(see page 17, claim 94, paragraph 24, “fibrillation process;” micrometer sized). Chen further teaches that fibrillated cellulose, such as microfibrillated cellulose is advantageous for its mechanical properties and improving gas barrier properties (see paragraph 33). At paragraph 38, Chen also discloses that the NFC can have an average diameter of 100 nm but an average length of 1-1000 microns, thus also being readable on a microfibrillated cellulose. To therefore specifically use MFC microfibrillated cellulose as part of the sealing label, would have been obvious to one having ordinary skill in the art for achieving the desired mechanical and gas barrier properties.
Regarding claims 4-5, Chen teaches that the capsule can have an oxygen transmission rate of no higher than 5 or 1 cc/m2-day-atm (see paragraph 50). Therefore, it would have been obvious to one having ordinary skill in the art to modify Chen’s capsule for achieving the requisite oxygen transmission rate for protecting the contents from oxygen.
Regarding claims 6-7, Chen teaches that the capsule can have a water vapor transmission rate of no higher than 10g/m2-day (see paragraph 50). Therefore, it would have been obvious to one having ordinary skill in the art to modify Chen’s capsule for achieving the requisite protection against water vapor.
Regarding claim 8, Chen as applied to claim 1 teaches a composite that comprises a cellulose pulp layer and a fibrillated cellulose layer (see figure 5). Chen further teaches that there can be a coating layer of fibrillated cellulose (see paragraph 6, last sentence). Chen further teaches that the coating layer can help to block the pores that naturally exist on fiber surface to reduce the liquid permeability of the fiber sheet formed (see paragraph 33). Chen also teaches making the paper based materials impermeable by impregnating the structure, such as the laminate structure, with polymer resins to render the overall structure impermeable to gases and liquid (see paragraph 33, last two sentences). In view of this and since the claim does not provide specificity as to how the sealing label has been treated, it would have been obvious to one having ordinary skill in the art to use an additional coating on top of the sealing label or the polymer layer or to impregnate the sealing fibrillated sealing label with polymer resins for further reducing the water vapor impermeability of the capsule.
Regarding claim 9, Chen teaches that a laminate structure that comprises the sealing label can be shaped into the capsule as shown in figure 6 and disclosed in paragraphs 70-72. In view of this, there would have been a limited number of options for the specific position of the microfibrillated sealing layer: either inside or outside of the capsule side wall, such that it would have been obvious to one having ordinary skill in the art to have experimented and/or tried either placing the sealing label on the inside or outside of the side wall as an obvious matter of engineering and/or design.
Claim 8 is also rejected under 35 U.S.C. 103 as being unpatentable over Chen (US 20190062998) as applied to claim 7 above, and in further view of Kuiper (US 20230166895).
Further regarding claim 8, Chen teaches making the paper based materials impermeable by impregnating the structure with polymer resins to render the overall structure impermeable to gases and liquid (see paragraph 33, last two sentences).
If it could have been construed that Chen’s disclosure as discussed above did not specifically teach treating the sealing label, then it is noted that:
Kuiper also teaches that a layer of microfibrillated cellulose can be advantageous for providing good barrier properties (see paragraph 63: “MFC provide a biofilm on…the surface of the packaging unit”). Kuiper also teaches that MFC can improve gas and liquid barrier properties (see paragraph 63-64), has improved printability, can reduce cost and enhance optical properties (see paragraph 65) and can be used in combination with additional materials for providing the advantages of both materials (paragraph 66). Kuiper further teaches that the biofilm layer and a multilayer structure can be provided on the side-wall of the container (see paragraph 153).
Kuiper teaches modifying the hydroxyl groups on the surface of the microfibrillated cellulose to improve water barrier properties (paragraph 64) thus teaching treating of the sealing label.
In view of this and since the claim does not provide specificity as to how the sealing label has been treated, it would have been obvious to one having ordinary skill in the art to modify the cellulose layer of Chen by modifying the hydroxyl groups on the surface of the microfibrillated cellulose for further reducing the water vapor impermeability of the capsule.
Claims 9, 10 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (US 20190062998) and in further view of Brivois (US 20210024283).
Regarding claim 9, Chen teaches that a laminate structure that comprises the sealing label can be shaped into the capsule as shown in figure 6 and disclosed in paragraphs 70-72. In view of this, there would have been a limited number of options for the specific position of the microfibrillated sealing layer: either inside or outside of the capsule side wall.
Nonetheless, Brivois teaches a capsule capable of receiving a substance for preparing a beverage (see figure 1a and 1b, item 1), said capsule comprising a capsule body having a side wall (figure 1a and 1b, item 3) bordered on either side by a base (figure 1a, item 2, 2a) and by a rim surrounding an opening in said body (see figure 1b, item 4, 4a). The capsule has a moulded body (see paragraph 18, 31) and the side wall of the body is covered by a sealing label which is on the outside of the side wall (see figure 4 and 5, item 13, 14; paragraph 33-35, 40, 45)
Since Chen is also teaching a sealing label that provides barrier properties, like Brivois, that it would have been obvious to one having ordinary skill in the art to have placed the sealing label on the outside of the side wall as an obvious matter of engineering and/or design.
Regarding claim 10, if it could have been construed that Chen did not teach the sealing label comprising a sealing layer on the side wall, then it is noted that Brivois teaches a sealing label (Figure 3, item 13) which includes an outermost layer (13c) that can also provide moisture barrier and/or oxygen barrier properties and which has been applied to a layer that comprises moisture barrier properties (13d). To therefore modify Chen and to include another layer to the sealing label which can be construed as a sealing layer would have been obvious to one having ordinary skill in the art for providing additional barrier properties to the capsule.
Regarding claim 15, Chen is not limiting as to the particular shape of the capsule (see paragraph 71, “heat formed or consolidated into a desired shape”).
Claim 15 differs from Chen in specifically reciting that the base comprises a lower opening covered by a lower lid.
Brivois teaches a capsule comprising a lower opening (figure 1a and 2b, item 10) that is covered by a lower lid (see figure 6c, item 11, 13; paragraph 50). Brivois teaches that providing an opening that is covered by a lower lid can be useful for providing regular and effective piercing during beverage preparation, in order to guarantee a regular distribution of the extracting liquid throughout the whole mass of the substance contained in the capsule (paragraph 53).
Therefore, it would have been obvious to one having ordinary skill in the art to modify Chen to provide an opening in Chen’s base which is covered by a lower lid, as taught by Brivois, for the purpose of guaranteeing a regular distribution of the extracting liquid throughout the whole mass of the substance contained in the capsule.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Chen (US 20190062998) in view of Bartoli (WO 2022003529).
Regarding claim 14, Chen teaches in figure 6 that the capsule comprises a rim, but claim 14 differs in specifically reciting that the rim is, “fitted with a sealing ring.”
Bartoli teaches beverage producing capsules (see figure 2, item 2) that comprise a rim (see figure 2, item 205) and which rim is fitted with a cellulose based sealing ring (see figure 2, item 401; see the abstract, “wherein the sealing element is made as a cellulose-based annular body”). Bartoli discloses that the capsule body can be made from cellulose (see page 6, lines 11-20) and where the sealing element helps to make a fluid tight seal with a dispensing machine due to the cellulose based sealing ring being capable of softening and becoming more flexible to further improve the fluid tight seal (see page 8, lines 1-12; page 10, lines 22-31).
Since Chen already teaches a beverage producing capsule usable with a machine (see paragraph 96), to modify Chen to use a cellulose based sealing ring on the rim of the capsule, as taught by Bartoli, would have been obvious to one having ordinary skill in the art for ensuring a fluid tight seal between the capsule and the machine.
Claims 1-13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Brivois (US 20210024283) in view of Chen (US 20190062998), Kuiper (US 20230166895) and Heydel (WO 2023041333).
Regarding claim 1, Brivois teaches a capsule capable of receiving a substance for preparing a beverage (see figure 1a and 1b, item 1), said capsule comprising a capsule body having a side wall (figure 1a and 1b, item 3) bordered on either side by a base (figure 1a, item 2, 2a) and by a rim surrounding an opening in said body (see figure 1b, item 4, 4a). The capsule has a moulded body (see paragraph 18, 31) and the side wall of the body is covered by a sealing label (see figure 4 and 5, item 13, 14; paragraph 33-35, 40, 45).
Brivois teaches that the capsule body can be a biodegradable molded capsule body (see paragraph 31) but claim 1 differs from Brivois in specifically reciting that the body is formed by molding a cellulose pulp.
Chen teaches beverage producing capsules (see figure 6) that can be moulded from cellulose pulp material (see paragraph 6, “the base layer comprises pulp fiber”; see paragraph 10, 12, see paragraph 71, “injection molding”; see paragraph 72, “nanocellulose”; “molded into a desired shape”) and can also be optionally impregnated or mixed with a polymer such as PLA (see paragraph 71). Chen teaches that such materials for the capsule help to provide a more environmentally friendly, sustainable and cost effective functional material that can provide for air and moisture impermeable coffee capsules (see paragraph 25).
Kuiper also teaches capsules usable for producing beverages (see figure 8) and which capsules can comprise a cellulose pulp body (see paragraph 28; see paragraph 78, “moulded pulp material”; see paragraph 143 which discloses moulded pulp material comprising natural fibers as well as PLA; see paragraph 59-62, where natural fibers include cellulose fibers such as fibrillated cellulose for reinforcement). Kuiper teaches that the matrix used to make the coffee capsule can comprise microfibrillated cellulose (see paragraph 99-101). Kuiper teaches that such materials can be useful for providing a fully sustainable capsule with improved recycling possibilities (see para graph 2-4).
Heydel also teaches a cellulose pulp molded body for a capsule capable of producing a beverage (see figure 6-7; see figure 5, item 200,211; page 1, lines 10-13 and page 11, lines 32-36) and which body can have sealing labels covering the side wall (see figure 5, layers 310,320,340). Heydel teaches using a cellulose pulp body because not only is it compostable but also has a material strength that is sufficient to provide the container with the rigidity required in the beverage preparation process (see page 1, lines 32-35).
To therefore modify Brivois and to form the body as a molded body comprising cellulose pulp, would have been obvious to one having ordinary skill in the art based on using another conventional material of construction for beverage producing capsules, that also can improve environmentally friendliness, sustainability and cost effectiveness.
Regarding claim 2, Brivois teaches that the sealing label can comprise a cellulose based layer (see paragraph 40).
Regarding claim 3, the claim differs from Brivois in specifically reciting that the cellulose-based layer comprises MFC microfibrillated cellulose.
However, Chen teaches that fibrillated cellulose, such as microfibrillated cellulose can be applied as a layer onto the surface of a capsule (see paragraph 12) and which microfibrillated cellulose provides excellent mechanical properties and can improve gas barrier properties and reduce liquid permeability (see paragraph 33).
Kuiper also teaches that a layer of microfibrillated cellulose can be advantageous for providing good barrier properties (see paragraph 63: “MFC provide a biofilm on…the surface of the packaging unit”). Kuiper also teaches that MFC can improve gas and liquid barrier properties (see paragraph 63-64), has improved printability, can reduce cost and enhance optical properties (see paragraph 65) and can be used in combination with additional materials for providing the advantages of both materials (paragraph 66). Kuiper further teaches that the biofilm layer and a multilayer structure can be provided on the side-wall of the container (see paragraph 153).
To therefore modify Brivois and to provide the cellulose based layer as microfibrillated cellulose would have been obvious to one having ordinary skill in the art for the purpose of improving the mechanical properties, gas barrier properties and reduce liquid permeability while still providing a capsule that can be fully biodegradable.
Regarding claims 4-7, Brivois teaches that the capsule can have an oxygen transmission rate of 1 cc/m2-day (see paragraph 35) and can have a water vapor transmission rate of 10g/m2-24hr (see paragraph 39).
Regarding claim 8, Chen teaches making the paper based materials impermeable by impregnating the structure with polymer resins to render the overall structure impermeable to gases and liquid (see paragraph 33, last two sentences).
Kuiper teaches modifying the hydroxyl groups on the surface of the microfibrillated cellulose to improve water barrier properties (paragraph 64).
In view of this and since the claim does not provide specificity as to how the sealing label has been treated, it would have been obvious to one having ordinary skill in the art to modify the cellulose layer of Brivois and to impregnate the sealing label with polymer resins or modify hydroxyl groups on the surface of the microfibrillated cellulose for further reducing the water vapor impermeability of the capsule.
Regarding claim 9, Brivois teaches that the sealing label covers the outside of the side wall (see figure 5).
Regarding claim 10, Brivois teaches that the sealing label comprises a sealing layer on the side wall (see figure 5 and 6a-6b, item 13, 14; see also paragraph 41 where layer 13b has sealing properties).
Regarding claim 11, Brivois teaches that the body of the capsule is biodegradable (see paragraph 31).
Regarding claim 12, it is initially noted that the claim is directed to the product and not the method of making the product, such that the claim is construed to be a product by process claim, where 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 (MPEP 2113). In this instance, the structure implied by claim 12 is that the sealing label is “associated” with the side wall and in this regard, as shown in figure 5 and 6a-6b, Brivois teaches that the sealing label is associated with the capsule side wall. Nonetheless, it is also noted that Brivois teaches using an in-mould labeling process (see paragraph 48).
Regarding claim 13 it is noted that the claim is directed to the product and not the method of making the product, such that the claim is construed to be a product by process claim, where 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 (MPEP 2113). In this instance, the structure implied by claim 13 is the structure as recited in claim 1. In view of this, the combination teaches the recited structure.
Regarding claim 15, Brivois teaches that the base comprises a lower opening (see figure 2b, item 10) and the lower opening is covered by a lower lid (see paragraph 50 and figure 6c).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over the combination, as applied to claim 1 above, which relies on Brivois (US 20210024283) as the primary reference, and in further view of Bartoli (WO 2022003529).
Regarding claim 14, Chen teaches in figure 6 that the capsule comprises a rim, but claim 14 differs in specifically reciting that the rim is, “fitted with a sealing ring.”
Bartoli teaches beverage producing capsules (see figure 2, item 2) that comprise a rim (see figure 2, item 205) and which rim is fitted with a cellulose based sealing ring (see figure 2, item 401; see the abstract, “wherein the sealing element is made as a cellulose-based annular body”). Bartoli discloses that the capsule body can be made from cellulose (see page 6, lines 11-20) and where the sealing element helps to make a fluid tight seal with a dispensing machine due to the cellulose based sealing ring being capable of softening and becoming more flexible to further improve the fluid tight seal (see page 8, lines 1-12; page 10, lines 22-31).
Since Chen already teaches a beverage producing capsule usable with a machine (see paragraph 96), to modify Chen to use a cellulose based sealing ring on the rim of the capsule, as taught by Bartoli, would have been obvious to one having ordinary skill in the art for ensuring a fluid tight seal between the capsule and the machine.
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 1-7 and 9-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-10 of copending Application No. 19099783.
Although the claims at issue are not identical, they are not patentably distinct from each other because regarding claim 1, copending claim 7 teaches 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 claim 7 discloses that the sealing label comprises MFC microfibrillated cellulose.
Regarding claims 4-7, copending claims 3-6 teach an oxygen transmission rate of at most 5 cc/m2/day and a water vapor transmission rate of less than 10 g/m2-24hr.
Regarding claim 9, since the copending claims disclose the sealing label on the side 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, since the copending claims disclose a sealing label, it would have been obvious that the sealing label comprises a sealing layer. That is, the claim does not provide any specificity as to the particulars of the sealing layer, or whether it is a different layer than the sealing label.
Regarding claim 11, copending claim 9 discloses that the capsule is biodegradable.
Regarding claims 12-13, it is noted that the claims are directed to the product, and not the method of making the product such that the structure implied by claims 12 and 13 is a sealing label covering a side wall of a molded cellulose pulp capsule body. In this regard, the copending claims teach a sealing label covering a side wall of a molded cellulose pulp capsule body.
This is a provisional nonstatutory double patenting rejection.
Claim 8 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-10 of copending Application No. 19099783 as applied to claim 7 above, and in further view of Chen (US 20190062998) and Kuiper (US 20230166895).
Claim 8 differs from the copending claims in specifically reciting that the sealing label has been treated to improve its resistance to moisture.
Chen teaches making the paper based materials impermeable by impregnating the structure with polymer resins to render the overall structure impermeable to gases and liquid (see paragraph 33, last two sentences).
Kuiper teaches modifying the hydroxyl groups on the surface of the microfibrillated cellulose to improve water barrier properties.
In view of this and since the claim does not provide specificity as to how the sealing label has been treated, it would have been obvious to one having ordinary skill in the art to modify the sealing label of the copending claims and to impregnate the sealing label with polymer resins or modify hydroxyl groups on the surface of the microfibrillated cellulose for further reducing the water vapor impermeability of the capsule.
This is a provisional nonstatutory double patenting rejection.
Claim 14 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-10 of copending Application No. 19099783 as applied to claim 1 above, and in further view of Bartoli (WO 2022003529).
Claim 14 differs from the copending claims in specifically reciting that the rim is, “fitted with a sealing ring.”
Bartoli teaches beverage producing capsules (see figure 2, item 2) that comprise a rim (see figure 2, item 205) and which rim is fitted with a cellulose based sealing ring (see figure 2, item 401; see the abstract, “wherein the sealing element is made as a cellulose-based annular body”). Bartoli discloses that the capsule body can be made from cellulose (see page 6, lines 11-20) and where the sealing element helps to make a fluid tight seal with a dispensing machine due to the cellulose based sealing ring being capable of softening and becoming more flexible to further improve the fluid tight seal (see page 8, lines 1-12; page 10, lines 22-31).
Since the copending claims are also directed to a capsule used to prepare a beverage, to modify the copending claims and to use a cellulose based sealing ring on the rim of the capsule, as taught by Bartoli, would have been obvious to one having ordinary skill in the art for ensuring a fluid tight seal between the capsule and the machine.
This is a provisional nonstatutory double patenting rejection.
Claim 15 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-10 of copending Application No. 19099783 as applied to claim 1 above, and in further view of Brivois (US 20210024283).
Claim 15 differs from the copending claims in specifically reciting that the base comprises a lower opening covered by a lower lid.
Brivois teaches a capsule comprising a lower opening (figure 1a and 2b, item 10) that is covered by a lower lid (see figure 6c, item 11, 13; paragraph 50). Brivois teaches that providing an opening that is covered by a lower lid can be useful for providing regular and effective piercing during beverage preparation, in order to guarantee a regular distribution of the extracting liquid throughout the whole mass of the substance contained in the capsule (paragraph 53).
Therefore, it would have been obvious to one having ordinary skill in the art to modify the copending claims to provide an opening in the capsule base which is covered by a lower lid, as taught by Brivois, for the purpose of guaranteeing a regular distribution of the extracting liquid throughout the whole mass of the substance contained in the capsule.
This is a provisional nonstatutory double patenting rejection.
Claims 1-7 and 9-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 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 claim 1 teaches 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 coating. The sealing coating can be construed as reading on a “sealing label,” because the sealing coating of the copending claims is covering the side wall in the same manner as the sealing label of claim 1 of this Application.
Regarding claims 2-3, copending claim 2 teach that the sealing label comprises MFC microfibrillated cellulose and therefore reads on the structure of claim 2-3, which is that the sealing label comprises a cellulose based layer which comprises MFC microfibrillated cellulose.
Regarding claims 4-7, copending claims 9-12 disclose an oxygen transmission rate of at most 5 cc/m2-day-atm and a water vapor transmission rate of less than 10 g/m2-day.
Regarding claim 9, since the copending claims disclose the sealing label on the side 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, since the copending claims disclose a sealing label covering a side wall, it would have been obvious that the sealing label comprises a sealing layer. That is, the claim does not provide any specificity as to the particulars of the sealing layer, or whether it is a different layer than the sealing label. Additionally, copending claim 13 discloses a sealing coating applied to a label thus teaching and suggesting a sealing label comprising a sealing layer.
Regarding claim 11, copending claim 14 teaches that the capsule body is biodegradable.
Regarding claims 12-13, it is noted that the claims are directed to the product, and not the method of making the product such that the structure implied by claims 12 and 13 is a sealing label associated with a side wall of a molded cellulose pulp capsule body. In this regard, the copending claims teach a sealing layer covering and associated with a side wall of a molded cellulose pulp capsule body.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 8 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-16 of copending Application No. 19099781 as applied to claim 7 above, and in further view of Chen (US 20190062998) and Kuiper (US 20230166895).
Claim 8 differs from the copending claims in specifically reciting that the sealing label has been treated to improve its resistance to moisture.
Chen teaches making the paper based materials impermeable by impregnating the structure with polymer resins to render the overall structure impermeable to gases and liquid (see paragraph 33, last two sentences).
Kuiper teaches modifying the hydroxyl groups on the surface of the microfibrillated cellulose to improve water barrier properties.
In view of this and since the claim does not provide specificity as to how the sealing label has been treated, it would have been obvious to one having ordinary skill in the art to modify the sealing label of the copending claims and to impregnate the sealing label with polymer resins or modify hydroxyl groups on the surface of the microfibrillated cellulose for further reducing the water vapor impermeability of the capsule.
This is a provisional nonstatutory double patenting rejection.
Claim 14 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-16 of copending Application No. 19099781 as applied to claim 1 above, and in further view of Bartoli (WO 2022003529).
Claim 14 differs from the copending claims in specifically reciting that the rim is, “fitted with a sealing ring.”
Bartoli teaches beverage producing capsules (see figure 2, item 2) that comprise a rim (see figure 2, item 205) and which rim is fitted with a cellulose based sealing ring (see figure 2, item 401; see the abstract, “wherein the sealing element is made as a cellulose-based annular body”). Bartoli discloses that the capsule body can be made from cellulose (see page 6, lines 11-20) and where the sealing element helps to make a fluid tight seal with a dispensing machine due to the cellulose based sealing ring being capable of softening and becoming more flexible to further improve the fluid tight seal (see page 8, lines 1-12; page 10, lines 22-31).
Since the copending claims are also directed to a capsule used to prepare a beverage, to modify the copending claims and to use a cellulose based sealing ring on the rim of the capsule, as taught by Bartoli, would have been obvious to one having ordinary skill in the art for ensuring a fluid tight seal between the capsule and the machine.
This is a provisional nonstatutory double patenting rejection.
Claim 15 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-16 of copending Application No. 19099781 as applied to claim 1 above, and in further view of Brivois (US 20210024283).
Claim 15 differs from the copending claims in specifically reciting that the base comprises a lower opening covered by a lower lid.
Brivois teaches a capsule comprising a lower opening (figure 1a and 2b, item 10) that is covered by a lower lid (see figure 6c, item 11, 13; paragraph 50). Brivois teaches that providing an opening that is covered by a lower lid can be useful for providing regular and effective piercing during beverage preparation, in order to guarantee a regular distribution of the extracting liquid throughout the whole mass of the substance contained in the capsule (paragraph 53).
Therefore, it would have been obvious to one having ordinary skill in the art to modify the copending claims to provide an opening in the capsule base which is covered by a lower lid, as taught by Brivois, for the purpose of guaranteeing a regular distribution of the extracting liquid throughout the whole mass of the substance contained in the capsule.
This is a provisional nonstatutory double patenting rejection.
Claims 1-7 and 9-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 19099483.
Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 8 teaches 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 or sealing coating. 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 claims 2-3, copending claim 9 teaches that the sealing label comprises MFC microfibrillated cellulose and therefore reads on the structure of claim 2-3, which is that the sealing coating comprises a cellulose based layer which cellulose based layer comprises MFC microfibrillated cellulose.
Regarding claims 4-7, copending claims 4-7 disclose an oxygen transmission rate of at most 5 cc/m2-day-atm and a water vapor transmission rate of less than 10 g/m2-day.
Regarding claim 9, since the copending claims disclose the sealing label on the side 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 8 discloses that the side wall is covered with a sealing label and a sealing coating, which therefore would read on the sealing label also including a sealing layer.
Regarding claim 11 copending claim 10 teaches that the capsule body is biodegradable.
Regarding claims 12-13, it is noted that the claims are directed to the product, and not the method of making the product such that the structure implied by claims 12 and 13 is a sealing label associated with a side wall of a molded cellulose pulp capsule body. In this regard, the copending claims teach a sealing layer covering and associated with a side wall of a molded cellulose pulp capsule body.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 8 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-10 of copending Application No. 19099483 as applied to claim 7 above, and in further view of Chen (US 20190062998) and Kuiper (US 20230166895).
Claim 8 differs from the copending claims in specifically reciting that the sealing label has been treated to improve its resistance to moisture.
Chen teaches making the paper based materials impermeable by impregnating the structure with polymer resins to render the overall structure impermeable to gases and liquid (see paragraph 33, last two sentences).
Kuiper teaches modifying the hydroxyl groups on the surface of the microfibrillated cellulose to improve water barrier properties.
In view of this and since the claim does not provide specificity as to how the sealing label has been treated, it would have been obvious to one having ordinary skill in the art to modify the sealing label of the copending claims and to impregnate the sealing label with polymer resins or modify hydroxyl groups on the surface of the microfibrillated cellulose for further reducing the water vapor impermeability of the capsule.
This is a provisional nonstatutory double patenting rejection.
Claim 14 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-10 of copending Application No. 19099483 as applied to claim 1 above, and in further view of Bartoli (WO 2022003529).
Claim 14 differs from the copending claims in specifically reciting that the rim is, “fitted with a sealing ring.”
Bartoli teaches beverage producing capsules (see figure 2, item 2) that comprise a rim (see figure 2, item 205) and which rim is fitted with a cellulose based sealing ring (see figure 2, item 401; see the abstract, “wherein the sealing element is made as a cellulose-based annular body”). Bartoli discloses that the capsule body can be made from cellulose (see page 6, lines 11-20) and where the sealing element helps to make a fluid tight seal with a dispensing machine due to the cellulose based sealing ring being capable of softening and becoming more flexible to further improve the fluid tight seal (see page 8, lines 1-12; page 10, lines 22-31).
Since the copending claims are also directed to a capsule used to prepare a beverage, to modify the copending claims and to use a cellulose based sealing ring on the rim of the capsule, as taught by Bartoli, would have been obvious to one having ordinary skill in the art for ensuring a fluid tight seal between the capsule and the machine.
This is a provisional nonstatutory double patenting rejection.
Claim 15 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-10 of copending Application No. 19099483 as applied to claim 1 above, and in further view of Brivois (US 20210024283).
Claim 15 differs from the copending claims in specifically reciting that the base comprises a lower opening covered by a lower lid.
Brivois teaches a capsule comprising a lower opening (figure 1a and 2b, item 10) that is covered by a lower lid (see figure 6c, item 11, 13; paragraph 50). Brivois teaches that providing an opening that is covered by a lower lid can be useful for providing regular and effective piercing during beverage preparation, in order to guarantee a regular distribution of the extracting liquid throughout the whole mass of the substance contained in the capsule (paragraph 53).
Therefore, it would have been obvious to one having ordinary skill in the art to modify the copending claims to provide an opening in the capsule base which is covered by a lower lid, as taught by Brivois, for the purpose of guaranteeing a regular distribution of the extracting liquid throughout the whole mass of the substance contained in the capsule.
This is a provisional nonstatutory double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hausmann (WO 2023222625) packaging comprising paper layer (cellulose layer; figure 1, item 2) together with a sealing label comprising microfibrillated cellulose (see page 5, line 24 to page 6, line 8; figure 1, item 3).
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/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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