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.
Drawings
The drawings are objected to because reference characters, “212”, “231 and “230” appear to be pointing to the same line.
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 1, 3, 5, 9, 11, 13, 14, 15, 16 are objected to because of the following informalities:
Claim 1 recites, “the half-shells” on lines 7 and 9; Claim 14, line 2 and claim 15 line 2 also recite, “the half-shells”. It is clear that this limitation is referring to the two half-shells as recited on line 4 of claim 1, but for matters of form, this limitation should be amended to recite, “the two half-shells.”
Claim 1, lines 15, 17, 19; claim 6, line 3; claim 9, line 2; claim 13, line 2; and claim 16, lines 1-2 all recite, “the sidewall.” While it is clear that this limitation is referring to “the circumferential sidewall,” as recited on line 11 of claim 1, for matters of form, this limitation should be amended to recite, “the circumferential sidewall.”
Claim 1, line 17 and 18; claim 9, line 2; and Claim 11, line 2 recite, “the rim.” While it is clear that this limitation is referring to “the circumferential rim,” as recited on line 14 of claim 1, for matters of form, this limitation should be amended to recite, “the circumferential rim.”
Claim 3 recites, “the rim transition area.” While it is clear that this limitation is referring to “the circumferential rim transition,” as recited on line 18 of claim 1, for matters of form, this limitation should be amended to recite, “the circumferential rim transition area.”
Claim 5 recites, “the bottom transition area.” While it is clear that this limitation is referring to “the circumferential bottom transition,” as recited on line 20 of claim 1, for matters of form, this limitation should be amended to recite, “the circumferential bottom transition area.”
Claim 15 recites, “the pod each of the half-shells” on line 2. It appears that the limitation, “the pod” should be deleted.
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 1-18 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.
Claim 1 recites, “the respective other half-shell” on line 15. This limitation lacks proper antecedent basis. This rejection can be overcome by amending the limitation to recite, “of the other half-shell of the two half shells.”
Claim 1 recites, two wherein clauses on lines 18 and 20, respectively. These wherein clauses are not intended within the wherein clause of line 9, which makes the wherein clauses unclear as to whether they apply to both of the two half-shells or only one of the two half shells.
Claim 1 recite, “wherein a circumferential rim transition area, which directly connects the rim and the sidewall” (lines 18-19). It is not clear as to how the circumferential rim transition area directly connects the rim and the sidewall, when on lines 11-13 the claim recites that the circumferential sidewall extends from the bottom to a circumferential edge and the circumferential rim extends outward from the circumferential edge.
Claim 1 recites, “their cavities” on line 16. It is not clear as to what “their” cavities is referring to.
Claim 6 recites that a rim-side section of the sidewall, has a sidewall radius of between 2 and 4mm. Applicant’s specification appears to disclose that there is a diameter D251, D243 and D242, all of which can have a diameter such as 15-25mm, 31-35mm and 33-36mm, respectively. To the skilled artisan, such diameters would have resulted in a radius of 7.5-12.5, 15.5-17.5 and 11-18, respectively. As such, it is not clear as to how the circumferential sidewall transition area can then have a sidewall radius of between 2-4mm, especially as Applicant’s specification shows the circumferential sidewall transition area (244) between D243 and D242.
Claim 7 recites, “the sidewall transition area” which lacks proper antecedent basis.
Claim 11 recites that “the sidewall extends from the rim toward the bottom with decreasing diameter.” Claim 1 already recites on lines 12-13 that, “the [circumferential] sidewall tapers from the circumferential edge towards the bottom.” Since the sidewall is tapering toward the bottom and since the sidewall is circumferential, it is not clear as to how claim 11 would further limit claim 1, when claim 1 would also appear to implicitly disclose a decreasing diameter (in view of the sidewall being a circumferential sidewall).
Claim 15 recites, “the respective openings” on lines 2-3, which lacks proper antecedent basis.
Claim 17 recites, “the top plane” and “the bottom plane,” both of which lack proper antecedent basis.
Claims 2-5, 8-14 and 16 are rejected based on their dependence to a rejected claim.
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, 2, 4 and 10-18 are rejected under 35 U.S.C. 103 as being unpatentable over Magnani (WO 2021161121) in view of Jarisch (US 20090047389), Gres (WO 2020127147) and Gres (WO 2020114995 referred to as Gres995).
Regarding claim 1, Magnani teaches a pod that is capable of preparation of a beverage in a beverage production machine, where the pod is made of a biodegradable/compostable material (see at least, page 1, lines 2-3), wherein the pod comprises a pod body composed of two half shells (see figure 1 and 5, item 2a and 3a) joined to each other to delimit a chamber (see figure 1, between 2a and 3a) capable of containing a substance (page 7, line 7) for preparation of the beverage (see figure 1, item 8a which joins the two half-shells; page 5, lines 24-27; page 14, lines 19-26).
Each of the half shells (2a, 3a) is shaped from a sheet of biodegradable cellulose based material having a barrier function (see page 7, lines 18-19) and each of the half-shells comprises a bottom (see figure 3, item 12f), a circumferential sidewall extending from the bottom to a circumferential edge of the sidewall to define a cavity (see annotated figure 5 below), wherein the sidewall tapers from the circumferential edge towards the bottom (see figure 5). See annotated figure 5:
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There is a circumferential rim extending laterally outward from the circumferential edge for being joined with the rim of the respective other half-shell, so that their cavities together define the chamber.
It would have been obvious to one having ordinary skill in the art that a circumferential inner edge of the rim would delimit an opening of the cavity, such as where the circumferential edge transitions to the circumferential rim.
As shown in figure 5, Magnani also teaches that there is a circumferential bottom transition area which directly connects the sidewall and the bottom and further teaches a circumferential rim transition area connecting the rim and the sidewall. Regarding the limitation, “transition area” this has been construed as a region between what can be construed as the bottom, the sidewall and the rim. The claim does not limit the particulars of the above “areas.”
See annotated figure 5 below:
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Claim 1 differs from Magnani in specifically reciting that the circumferential rim transition area has a rim radius of between 1 mm and 3mm and that the circumferential bottom transition area has a bottom radius of between 10mm and 20mm.
Since Magnani already teaches that the pod is to be used in a machine that produces a beverage (see page 1, lines 9-10), and since Magnani also teaches a similar shape to the pod as that shown in Applicant’s figures, it is not seen that patentability can be predicated on the specific dimensions of the circumferential rim transition area and the circumferential bottom transition area because where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Furthermore, such a modification is also seen to have been an obvious change in shape, absent persuasive evidence that the particular configuration of the claimed container was significant (MPEP 2144.04(IV)(A)&(B)).
Further regarding the pod comprising a sidewall, edge, rim, inner edge and bottom transition area that are all circumferential, if it could have been construed that Magnani was not clear on the pod having circumferential structures, then it is further note that Jarisch (US 20090047389) teaches a pod comprising two half-shells (see figure 3b, item 4, 4’) and which pod has a bottom, a bottom transition area, a sidewall and a rim, all of which are circumferential (see figure 5 and 6).
Further regarding the limitation that, “the sidewall tapers from the circumferential edge towards the bottom,” if it could have been construed that Magnani was not clear in this regard, then it is also noted that Jarisch teaches a circumferential sidewall, which tapers from a circumferential edge toward the bottom.
See annotated figure 5 below:
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Gres (WO 2020127147) teaches a pod shell (see figure 4) that can be made of cellulose based materials such as paper together with a layer of PLA and which combination can provide barrier properties (see page 4, lines 24-27). The shell, as shown in figure 4, comprises a bottom, a bottom transition area and a sidewall that has a decreasing diameter towards the bottom. See annotated figure 4 below:
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Gres thus teaches that having a circumferential sidewall that has a diameter that decreases toward the bottom and which shape has been a conventional shape for beverage producing pods.
To therefore modify Magnani and to make the pod circumferential and where the sidewall tapers from a circumferential edge toward the bottom would therefore have been obvious to one having ordinary skill in the art, as a matter of engineering and/or design, based on conventional shapes for pods made from two identical half-shells.
Further regarding Magnani’s pod as being “home-compostable,” since Magnani teaches that the pod is fully compostable (page 7, lines 21-23) while also teaching a cellulose based material (page 7, line 29-30; page 8, lines 5-13) and a barrier function (page 8, lines 3-4) it would have been reasonable to expect that Magnani is teaching a home-compostable pod.
If it could have been construed that Magnani was not clear on the pod being home-compostable, then Gres995 teaches a formed beverage producing pod (Page 7, lines 3-5) that is home compostable (see page 8, lines 5-7) and which can be made of similar materials such as paper (i.e. cellulose based) (page 9, line 2 and 5-7) together with a barrier function using barrier materials such as PVOH (page 9, lines 8-10).
To therefore modify Magnani and to ensure that the pod was home-compostable would have been obvious to one having ordinary skill in the art for the purpose of making the pod more environmentally friendly.
Regarding claim 2, Magnani teaches that the rim radius bulges inwardly with respect to the cavity (see annotated figure 5 below)
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Regarding claim 4, the circumferential bottom transition area as taught by the combination above would also have had a bottom radius that bulges outwardly with respect to the cavity. See Magnani Annotated Figure 5 below
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Regarding claim 10, Magnani teaches that the cavity has a height measured along the shortest distance between the bottom and the opening can be 5mm or 7mm (see page 13, lines 15-17), which falls within the claimed range.
Regarding claim 11, since the combination teaches a circular/circumferential pod and where the sidewall tapers toward the bottom, it would have been obvious to one having ordinary skill in the art that the sidewall would also have had a decreasing diameter toward the bottom.
Regarding claim 12, the bottom as taught by Magnani is flat. The remaining limitations are recited in the alternative and therefore are not required.
Regarding claim 13, it would have been obvious to one having ordinary skill in the art that the sidewall would have extended at least partially along a sidewall plane in a vertical cross-section, especially since the sidewall extends vertically.
Regarding claim 14, Magnani teaches that the half-shells are shaped from a sheet comprising a primary cellulose based material (see page 7, lines 29-30 and page 8, lines 5-6 and 13 disclosing cellulose based biodegradable fibers) and a secondary layer having the barrier function (see page 8, lines 3-4 disclosing a gas barrier medium such as vegetable parchment). It is further noted that Gres995 further teaches using barrier materials such as PVOH for gas barrier properties (see page 9, lines 9-10 and the table between pages 9-10), such that it would have been obvious to one having ordinary skill in the art to have used known barrier materials that can be part of a beverage producing pod, for the purpose of providing the requisite barrier properties while also still being home compostable.
Regarding claim 15, each of the half-shells of Maganani’s pod has a round contour (see figure 5 showing a rounded contour).
Regarding claim 16, since Magnani’s sidewall extends vertically, it would have been obvious to one having ordinary skill in the art that the sidewall would also extend at least partially along a sidewall plane at a rim side section of the sidewall, especially since there would have been an infinite number of planes in the vertical cross-section through which Magnani’s sidewall can extend.
Regarding claim 17, it is noted that the claim is directed to a plane and not to a specific structure of the sidewall. Therefore, it would have been obvious to one having oirndary skill in the art that an angle between the sidewall plane and the top plane can be between 50° to 60°.
Regarding claim 18, a top plane and the bottom plane are seen to be parallel to each other, as shown in figure 5.
Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over the combination, as applied to claim 1 above, which relies on Magnani (WO 2021161121) as the primary reference, and in further view of Comunetti (IT MI20122212).
Regarding claims 3 and 5, Applicant’s specification defines “transition angle” as the angle, over which the respective transition area (or radius) extends (within a sectional plane). The claim does not specifically refer to a particular sectional plane and therefore the transition angle can vary depending on the specific sectional plane being referred to. Regarding the limitation, “transition area” this has been construed as a region between what can be construed as the bottom, the sidewall and the rim. The claim does not limit the particulars of the above “area.”
Regarding claims 3 and 5, it is initially noted that to modify the specific shape of the particular portions of Magnani’s pod, such as by changing the shape of the mold would have been an obvious matter of engineering and/or design, absent persuasive evidence that the particular configuration of the claimed container was significant (see MPEP 2144.04(IV)(B)).
Further regarding claim 3, as shown in figure 5, it would appear that at minimum, the rim transition area would “extend over” (i.e. encompass) a top transition angle of between 90°-160°, because at maximum, the angle between the rim and the circumferential rim transition area would appear to be 180°. See annotated figure 5 below:
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Additionally however, Comunetti further teaches a pod (see figure 11) where there is a rim transition area that has an angle that would have been greater than 90° because at figure 11, item 6 and paragraph 77, Comunetti teaches that the external wall having the rim transition area can have an angle of between 8-12° with respect to the lateral wall, and therefore is suggesting a top transition angle that would have been greater than 90° by 8-12°, or 98-102°. See annotated figure 11 below:
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Since Comunetti teaches a similar type of rim transition area as Magnani, to modify Magnani such that the rim transition area extends over a top transition angle such as 98-102° would have been obvious to one having ordinary skill in the art, as an obvious matter of engineering and/or design, based on conventional shapes for a similar portion of a beverage producing pod used to prepare beverages.
Regarding claim 5, Magnani teaches a bottom transition area where it would appear that the angle of the bottom transition area would, “extend over” (i.e. encompass) a bottom transition angle that is greater than 10° and less than 90°. See annotated figure 5 below:
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It is further noted however, that Comunetti further teaches a bottom transition area that can comprise an angle such as about 56.145°:
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To modify Magnani such that the bottom transition area extends over a bottom transition angle such as 56.145° would have been obvious to one having ordinary skill in the art, as an obvious matter of engineering and/or design, based on conventional shapes for a similar portion of a beverage producing pod used to prepare beverages.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over the combination as applied to claim 1 above, which relies on Magnani (WO 2021161121) as the primary reference, and in further view of Nabeiro (US 20260103331).
Regarding claim 6, Magnani can be construed as teaching an area of the sidewall that is a circumferential sidewall transition area that would connect a bottom-side section of the sidewall with a rim-side section of the sidewall.
Claim 6 differs from Magnani in specifically reciting that the circumferential sidewall transition area has a sidewall radius between 2mm and 4mm.
It is noted however, that Magnani teaches that there is a curved transition area that can be construed as a sidewall transition area which would connect a bottom section of the sidewall with a rim-side section of the sidewall. See annotated figure 5 below:
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Nabeiro further teaches a beverage producing pod, that has a sidewall (figure 2, item 15) and a bottom (figure 2, item 12) and which has a curved transition area between the bottom and the sidewall. Nabeiro further teaches that this curved section can have a radius of 3mm, for example, for providing the desired curved shape and for providing a degree of structural resistance and reducing deflection (see paragraph 99).
To therefore modify Magnani to provide a sidewall transition area that connects a bottom of the sidewall section to a rim-side section of the sidewall and having a radius of 3mm would have been obvious to one having ordinary skill in the art for providing a degree of structural resistance and reducing deflection.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over the combination as applied to claim 1 above, which relies on Magnani (WO 2021161121) as the primary reference, and in further view of Rosa (US 20090159525).
Regarding claim 7, Applicant’s specification defines “transition angle” as the angle, over which the respective transition area (or radius) extends (within a sectional plane). The claim does not specifically refer to a particular sectional plane and therefore the transition angle can vary depending on the specific sectional plane being referred to.
Regarding claim 7, it is initially noted that to modify the specific shape of the particular portions of Magnani’s pod, such as by changing the shape of the mold would have been an obvious matter of engineering and/or design, absent persuasive evidence that the particular configuration of the claimed container was significant (see MPEP 2144.04(IV)(B)).
Regarding claim 7, the claim differs from Magnani in specifically reciting that there is a sidewall transition area that extends over a sidewall transition angle of between 20°-80°.
However, Magnani teaches a sidewall transition area where it would appear that the angle of the sidewall transition area would, “extend over” (i.e. encompass) a sidewall transition angle that is greater than 10° and less than 90°. See annotated figure 5 below:
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It is further noted however, that Rosa further teaches a pod for preparing a beverage, and which pod that comprises a bottom, (figure 1, item B), a bottom transition area (D) and a sidewall transition area (see above figure 1, item D) a transition area that can comprise an angle such as about 45°:
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It would have been obvious to one having ordinary skill in the art to provide Magnani with a sidewall transition angle that is about 45° as an obvious matter of engineering and/or design based on conventional shapes for beverage producing pods.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over the combination as applied to claim 1 above, which relies on Magnani (WO 2021161121) as the primary reference, and in further view of Rosa (US 20090159525) and MacMahon (US 20090232944).
Regarding claims 8 and 9, the claims differ from Magnani in specifically reciting that “the bottom has a bottom surface area between 170mm^2 and 500mm^2 and/or the bottom has a diameter between 15mm to 25mm” (claim 8) and “wherein the rim has an outer diameter between 35mm to 50mm” (claim 9).
Nonetheless, and further regarding claims 8 and 9, it is initially noted that to modify the specific diameters of Magnani’s pod, would have been an obvious matter of engineering and/or design, because where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (see MPEP 2144.04(IV)(A)).
Further regarding the diameter of the bottom and the rim, Rosa teaches a bottom of a beverage producing pod, that can have a diameter of 18.5mm (see figure 1 and the abstract). Rosa further teaches that there is a sidewall (figure 1, item C) and a bottom transition area (figure 1, item D) connecting the sidewall to the bottom. Rosa further teaches a rim (see figure 1, item F) and which rim has an outer diameter of 40.8mm (see figure 1 and paragraph 8).
MacMahon also teaches a beverage producing pods that can have a diameter of between 30-100mm based on the particular type of machine that the pad is desired to be used with (see the figures and paragraph 90) and therefore encompasses the bottom diameter and the outer diameter.
To modify Magnani such that the bottom has a diameter of 18.5mm and the rim has an outer diameter of 40.8mm, for example, would have been obvious to one having ordinary skill in the art, as an obvious matter of engineering and/or design, based on conventional shapes for a similar portion of a beverage producing pod used to prepare beverages and based on the specific type of machine that the pod is desired to be used with.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20210078794 discloses a beverage producing pod comprising a bottom, a bottom transition area, a tapering sidewall, to circumferential edge and an outwardly extending rim.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIREN THAKUR whose telephone number is (571)272-6694. The examiner can normally be reached M-F: 10:30-7:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached at 571-270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VIREN A THAKUR/Primary Examiner, Art Unit 1792
