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
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 16/607375, filed on October 23, 2019.
Claim Objections
Claims 1, 3, 6, 10, 11, 12, 15, 16, 17, 20 are objected to because of the following informalities:
Claim 1 recites, “according to ISO Standard 3689/1994 / dry burst strength measured according to ISO Standard 2758:201.” (see lines 4-5). For matters of form, this limitation should be amended to recite, “according to ISO Standard 3689/1994 to dry burst strength measured according to ISO Standard 2758:201.”
Claim 3 recites, “g/m2” on lines 2 and 3. For matters of form, this limitation should be amended to recite, “g/square meter” or “g/m2.”
Claim 6 recites, “PBS (poly(butylene succinate)) biopolyesters” on line 4. It appears that the term, “and” is missing immediately before, “biopolyesters”
Claims 10, 11, 15 and 16 recite, “said oxygen barrier layer.” For matters of form, this limitation should be amended to recite, “the at least one oxygen barrier layer.”
Claims 12, 16, 17 and 20 recite, “the compostable lid.” While it is clear that this is referring to “a multilayer compostable lid” as recited in claim 1, for matters of form, this limitation should be amended to recite, “the multilayer compostable lid.”
Claim 12 recites, ‘wherein the compostable lid comprises two oxygen barrier layers.” It appears that this limitation is intending to further limit, “the at least one oxygen barrier layer” of claim 1. For matters of form, the above limitation should be amended to recite, “wherein the at least one oxygen barrier layer comprises two oxygen barrier layers” or “wherein the at least one oxygen barrier layer comprises at least two oxygen barrier layers.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites, “A container comprising a capsule sealed with a multilayer compostable lid comprising at least.” (see lines 1-2). It is not clear as to what “comprising at least” is modifying, “the container” or “the multilayer compostable lid.”
Claim 2 recites, “the container of claim 1, containing a foodstuff other than coffee.” This limitation is not clear as to whether it is the capsule that contains the foodstuff or the container. That is, it is not clear whether the claim is intending to recite a sealed capsule within a container; and the container comprises a foodstuff other than coffee while the sealed capsule is open to any contents (if at all), or whether the sealed capsule contains a foodstuff other than coffee.
Claim 5 and 6 recite, “chosen from the group comprising” on lines 1-2. This limitation is indefinite because claims 5 and 6 are reciting a Markush group using the transitional phrase “comprising” which would imply that the group can have members other than those listed without defining what the other members may be. Therefore, the claims are not clear as to what the biodegradable fibers and the thermosealable fibers can be.
Claim 6 recites, “the thermosealable fibers” on line 1, which lacks proper antecedent basis.
Claim 1 recites, “the non-woven” on the last two lines of the claim. Claim 7, 9-11, 13 and 16 recite, “the non-woven” and “said non-woven.” These limitations lack proper antecedent basis. This rejection can be overcome by amending the limitation to recite, “the non-woven layer.”
Claim 20 recites, “the coffee capsule” on lines 1 and 3. This limitation lacks proper antecedent basis. The claim is also indefinite because claim 20 depends from claim 2, which recites that the foodstuff in the container is a foodstuff other than coffee. In view of this, claim 20 is not clear because a recitation of “the coffee capsule” would appear to imply that there is coffee in the capsule.
Claim 20 is also unclear because the claim recites placing the foodstuff into the capsule, whereas claim 2 appears to recite that it is the container that contains a foodstuff and not the capsule.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 3-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6 and 8-15 of U.S. Patent No. 12344459.
Regarding claim 1, patented claim 1 teaches a container comprising a capsule sealed with a multilayer compostable lid, the multilayer compostable lid comprising, a support comprising vegetable parchment having a ratio of a wet burst strength measured according to ISO 3689/1994 to a dry burst strength measured according to ISO 2758:201 of between 1:2 and 7:10 (see lines 6-10). The patented claim further discloses a non-woven layer comprising at least 50% by weight biodegradable fibers (see lines 4-5); at least one oxygen barrier layer (line 11) and the lid is sealed to a rim of the capsule with the nonwoven facing the rim.
Regarding claim 3, patented claim 1 teaches the at least one oxygen barrier layer has a grammage of 0.5-8g/square meter.
Regarding claim 4, patented claim 2 teaches that at least 40% of the biodegradable fibers are thermosealable fibers.
Regarding claim 5, patented claim 3 teaches that the biodegradable fibers can comprise cellulose.
Regarding claim 6, patented claim 4 teaches that the thermosealable fibers can comprise PLA.
Regarding claims 7-9, patented claim 6 discloses that the non-woven can comprise 100% biodegradable fibers such as PLA fibers.
Regarding claim 10, patented claim 8 discloses that the oxygen barrier layer is positioned between the non-woven and the support.
Regarding claim 11, patented claim 9 discloses that the support is positioned between the non-woven and the oxygen barrier layer.
Regarding claim 12, patented claim 10 discloses two oxygen barrier layers as part of the lid.
Regarding claim 13, patented claim 11 discloses that the two oxygen barrier layers are placed side by side and between the non-woven and the support.
Regarding claim 14, patented claim 12 discloses that the two oxygen barrier layers are separated and placed on either side of the support.
Regarding claim 15, patented claim 13 discloses that oxygen barrier layer can comprise polyvinyl alcohol.
Regarding claim 16, patented claim 14 discloses that the lid comprises an adhesive layer between the oxygen barrier and the non-woven.
Regarding claim 17, patented claim 15 discloses that the compostable lid has a pressure resistance of between 5 and 15 bar.
Claims 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6 and 8-15 of U.S. Patent No. 12344459 as applied above to claim 1, and in further view of Andreae (WO 2015177591 cited on IDS).
Claim 18 differs from the patented claims in specifically reciting that the capsule is compostable.
However, Andreae teaches a multilayer compostable lid (see page 4, lines 33; page 5, lines 12-14 and page 24, lines 24-25; figure 1, item 2) sealed to a compostable capsule (see at least, page 4, lines 33-34) for the purpose of reducing environmental pollution (see page 5, lines 12-14).
To therefore modify the patented claims and to make the capsule compostable would have been obvious to one having ordinary skill in the art for reducing environmental pollution.
Regarding claim 19, the claim differs from the patented claims in specifically reciting that the capsule comprises polylactic acid.
However, Andreae teaches that the housing (i.e. the capsule) can comprise polylactic acid (see page 8, lines 14-20) and to therefore modify the patented claims to use compostable materials such as polylactic acid for the capsule would have been obvious to one having ordinary skill in the art, for the purpose of reducing the environmental pollution when disposing of the container.
Claims 2 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6 and 8-15 of U.S. Patent No. 12344459 as applied above to claim 1, and in further view of Zweed (WO 2017063680).
Regarding claim 2, the claim differs from the patented claim in specifically reciting that the container contains a foodstuff other than coffee.
Zweed teaches a multilayer lid (see figure 1) that is compostable (see page 11, line 30 and page 24, lines 26-31) and that is sealed to a rim of a capsule (see figure 1, item 2). Zweed discloses that the container can comprise coffee, but can also be used with other foodstuffs (see page 2, lines 24-28). To therefore modify the patented claims to contain a foodstuff other than coffee would have been obvious to one having ordinary skill in the art based on a substitution of one type of foodstuff commonly sealed within a capsule for another foodstuff recognized to be used in a similar manner.
Regarding claim 20, patented claim 17 teaches a method of forming the container of patented claim 1, comprising providing a capsule and a compostable lid, placing foodstuff into the capsule and sealing the compostable lid to the capsule rim.
The patented claim differs in specifically reciting that the foodstuff is other than coffee, however, Zweed has been relied on as discussed directly above with respect to claim 2 to teach packaging either coffee or other foodstuffs known to be packaged in similar types of capsules.
To therefore modify the patented claims to contain a foodstuff other than coffee would have been obvious to one having ordinary skill in the art based on a substitution of one type of foodstuff commonly sealed within a capsule for another foodstuff recognized to be used in a similar manner.
Claims 1, 3-10, 12, 15-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6, 11, 16, 18 and 20 of U.S. Patent No. 11794985 in view of Andreae (WO 2015177591 cited on IDS) and Schaude (WO 2016187724 cited on IDS).
US 20180148250 has been relied on as the English equivalent of Schaude WO2016187724).
Regarding claim 1, patented claim 1 teaches a container comprising a capsule sealed with a multilayer compostable lid, the multilayer compostable lid comprising, a support comprising vegetable parchment having a ratio of a wet burst strength measured according to ISO 3689 to a dry burst strength measured according to ISO 2758 and that is within the ratio of 1:2 and 7:10 (see patented claim 1, the last wherein clause). The patented claim further discloses a non-woven layer comprising at least 50% by weight biodegradable fibers (see lines 3-5); and since the lid is sealed to the capsule it would have been obvious to one having ordinary skill in the art that the capsule would have had some form of rim to which the lid has been sealed..
Claim 1 differs from the patented claim 1 in specifically reciting that there is at least one oxygen barrier layer and that the nonwoven faces the rim.
However, Andrae teaches that it has been desirable to provide an oxygen barrier layer to a covering lid for a beverage capsule for protecting the contents from oxygen (see page 5, line 23-27; page 16, line 25 - “polyvinyl alcohol”). To thus modify the patented claims to include an oxygen barrier layer would thus have been obvious to one having ordinary skill in the art for the purpose of preventing oxygen from passing through the covering film.
Regarding the nonwoven facing the rim, Andreae teaches a nonwoven layer (see page 9, lines 15-20 - page 15, lines 14-15 – “first layer is composed of a non-woven fabric” for example, “compostable PLA”) and where this layer is facing the rim of the capsule body (see Andrae, figure 1, item 3; figure 5, item 13a). Andreae further teaches that this layer can also function as a carrier layer (page 15, line 24). Schaude has only been relied on as further evidence that PLA fibers are thermosealable for sealing a lid to a container (see paragraph 48).
Therefore, since Andrae already teaches that the layer contacting the container can be entirely a polylactic acid non-woven material, and in view of Schaude, the combination teaches that the PLA fibers are thermosealable fibers.
To therefore modify the patented claims and to position the non-woven as facing the rim would have been obvious to one having ordinary skill in the art based on a known arrangement for a similar layer and which layer can also serve as a carrier layer and a layer to seal the multilayer lid to the capsule.
Regarding claim 3, patented claim 11 teaches the vegetable parchment has a grammage of 30-120 g/square meter.
Regarding claim 4, patented claim 2 teaches that at least 40% of the biodegradable fibers are heat sealable.
Regarding claim 5, patented claim 3 teaches that the biodegradable fibers can comprise cellulose.
Regarding claim 6, patented 4 and the combination as applied to claim 1 teaches that the thermosealable fibers can comprise PLA.
Regarding claims 7-9, patented claim 6 discloses that the non-woven can comprise 100% biodegradable fibers such as PLA fibers and encompasses that 100% of the non-woven can comprise polylactic acid fibers. (see patented claim 6, “at least 50% by weight are composed of PLA).
Regarding claim 10, the claim differs from the patented claims in specifically reciting that the oxygen barrier layer is placed between the non-woven and the support
Andreae teaches positioning the oxygen barrier (PVOH) between a non-woven such as the PLA non-woven (figure 5, item 13a – page 16, line 21-25) and the cellulose shielding layer (see page 6, lines 10-16; figure 5, item 13f) for the purpose of protecting the oxygen barrier layer, thus teaching the oxygen barrier between said non-woven and said support.
To therefore modify the patented claims and to position the oxygen barrier between the non-woven and the support would have been obvious to one having ordinary skill in the art for the similar purpose of protecting the oxygen barrier layer.
Regarding claim 12, the claim differs from the patented claims in specifically reciting that the lid comprises two oxygen barrier layers.
Andrae teaches that the cover film can have multiple oxygen barrier layers (see page 23, lines 14-16 - “at least one polymer oxygen barrier layer”) and therefore suggests two oxygen barrier layers present in the lid, where it would have been obvious to one having ordinary skill in the art to modify the combination and to provide additional oxygen barrier layers for increasing the oxygen barrier properties of the cover film.
Regarding claim 15, Andrae teaches the oxygen barrier layer can be polyvinyl alcohol (see page 5, line 23-27; page 16, line 25 - “polyvinyl alcohol”).
It would have been obvious to one having ordinary skill in the art to modify the combination and to use polyvinyl alcohol as the oxygen barrier layers based on known expedients for performing the same purpose.
Regarding claim 16, the claim differs from the patented claims in specifically reciting that there is an adhesive layer applied between the oxygen barrier layer and the non-woven.
Andrae teaches an adhesive layer (see figure 1, item 4) between the oxygen barrier layer 5 and the non-woven 3.
It would have been obvious to one having ordinary skill in the art to modify the combination and to position an adhesive between the oxygen barrier layer and the non-woven for the known purpose of ensuring adhesion between the layers.
Regarding claim 17, patented claim 16 discloses that the compostable lid has a pressure resistance of between 5 and 15 bar.
Regarding claims 18 and 19, patented claims 18 and 20 teach that the capsule comprises PLA and is compostable.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6, 11, 16, 18 and 20 of U.S. Patent No. 11794985 as applied above to claim 1, and in further view of Kuhl (US 20190016528 cited on IDS) and Planchard (US 20150151508 cited on IDS) and as evidenced by Yam (cited on IDS).
Regarding claim 11, Andrae teaches providing cellulose shielding layers on each side of the oxygen barrier layer (see page 6, lines 13-16, 31).
Claim 11 differs from the combination as applied to claim 1 in specifically reciting that the support is between the non-woven layer and the oxygen barrier layer.
Kuhl teaches that it has been conventional to use parchment as a cover film layer for providing moisture barrier properties for protecting an oxygen barrier layer (see paragraph 25, 28). Planchard teaches that vegetable parchment can provide wet strength (see paragraph 22), thus evidencing that vegetable parchment can be used as a stiff support layer. Planchard also evidences that such parchment papers provide moisture barrier properties (see paragraph 37). Yam further evidences that vegetable parchment is a water resistant paper that has conventionally been used in food packaging (see page 909 - “vegetable parchment”), and is clearly thus another type of parchment paper.
Since in view of Andreae the combination is suggesting protecting the oxygen barrier layer, it would have been obvious to one having ordinary skill in the art to position the support that is vegetable parchment between the non-woven layer and the oxygen barrier layer, with another layer positioned on another side of the oxygen barrier layer for the purpose of protecting the oxygen barrier layer.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6, 11, 16, 18 and 20 of U.S. Patent No. 11794985 as applied above to claim 12, and in further view of and in further view of Penttinen (US 20130071677 cited on ID).
Further regarding claim 13, it is noted that Andrae already suggests multiple oxygen barrier layers, as discussed above with respect to claim 12.
Regarding placing the oxygen barrier layers side by side and between the nonwoven and the support layer, as the combination applied to claim 12 already teaches providing the non-woven as positionable against the rim of the container, and the support layer as protecting the oxygen barrier layer, it would have been obvious to one having ordinary skill in the art to have provided two side by side oxygen barrier layers for the known purpose of increasing the oxygen barrier properties of the covering film, while also protecting the second oxygen barrier layer. Nonetheless, Penttinen teaches a covering film comprising multiple intermediate layers, which can be oxygen barrier layers (see paragraph 19, 22). Paragraph 40, 42 teaches that the intermediate layers can be layers that can have oxygen barrier properties and the figures teach intermediate layers between the outermost layers that can be positioned side by side.
To thus modify the combination to position two oxygen barrier layers side by side would thus have been obvious to one having ordinary skill in the art for providing the requisite oxygen barrier protection for the covering film.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6, 11, 16, 18 and 20 of U.S. Patent No. 11794985 as applied above to claim 12, and in further view of and in further view of Berlin (US 20030003197 cited on IDS) or Nevalainen (US 20150298438 cited on IDS) and Shetty (US 20040052987 cited on IDS).
Regarding claim 14, it is noted that the claim recites that the two oxygen barrier layers are separated and placed on either side of said support. This is seen to read on the two oxygen barrier layers both being on a single side of the support but separated from each other.
Nonetheless, claim 14 differs from the combination as applied to claim 12 in specifically reciting that the two oxygen barrier layers are separated and placed on either side of the support.
In this regard, Berlin teaches that it has been conventional to provide multiple oxygen barrier layers on a packaging laminate, where the oxygen barrier layers are separated from each other by a distancing layer, and where both oxygen barrier layers are on one side of the paper based support (see paragraph 35).
To thus modify the combination, which already suggests multiple oxygen barrier layers and to use another conventional arrangement of multiple oxygen barrier layers would have been an obvious matter of engineering and/or design choice, for the purpose of achieving the requisite strength and oxygen barrier properties to the film.
Alternatively, it is noted that Nevalainen teaches in figure 4 that there is a food packaging laminate (paragraph 27) where there can be an oxygen barrier layer on each side of the paperboard support (see figure 4; paragraph 13 and paragraph 19 - “fibrous base of paper, paperboard or cardboard”). That is, on paragraph 13, Nevalainen teaches there can be an oxygen barrier layer between the inner most and outer most polymers layers. In figure 4, there are innermost polymer layers (2, 2’) and outermost polymer layers (4, 4’) on each side of the paperboard substrate and thus, Nevalanien teaches oxygen barrier layers that are separated and on both sides of the support.
Additionally, and similar to Nevalainen, Shetty teaches a food packaging substrate (see at least, paragraph 60), where there is a paper substrate (figure 2, item 22) and on both sides of the substrate are positioned barrier layers (28, 30)that can be used for preventing the transmission of oxygen (paragraph 62). Therefore, since the combination already teaches using multiple oxygen barrier layers, and in view of Nevalainen and Shetty, one having ordinary skill in the art would have been routinely led and motivated to use other conventional arrangements of oxygen barrier layers associated with a paper substrate layer, for achieving the requisite oxygen barrier protection from the cover film.
Claims 2 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6, 11, 16, 18 and 20 of U.S. Patent No. 11794985 as applied above to claim 1, and in further view of Zweed (WO 2017063680).
Regarding claim 2, the claim differs from the patented claim in specifically reciting that the container contains a foodstuff other than coffee.
Andreae teaches a multilayer compostable lid (see page 4, lines 33; page 5, lines 12-14 and page 24, lines 24-25; figure 1, item 2) sealed to a compostable capsule (see at least, page 4, lines 33-34) for the purpose of reducing environmental pollution (see page 5, lines 12-14). The capsule can comprise dissolvable or extractable foods such as ground coffee (see page 23, lines 4-6) and therefore suggests coffee as but one example of a food that is capable of being extracted and/or dissolved and therefore is suggesting other foods known to one having ordinary skill in the art to also be dissolvable or extractable, such as tea for example. Nonetheless, Zweed teaches a multilayer lid (see figure 1) that is compostable (see page 11, line 30 and page 24, lines 26-31) and that is sealed to a rim of a capsule (see figure 1, item 2). Zweed discloses that the container can comprise coffee, but can also be used with other foodstuffs (see page 2, lines 24-28). To therefore modify the patented claims to contain a foodstuff other than coffee would have been obvious to one having ordinary skill in the art based on a substitution of one type of foodstuff commonly sealed within a capsule for another foodstuff recognized to be used in a similar manner.
Regarding claim 20, patented claim 17 obviously teaches providing a capsule and a compostable lid, placing foodstuff into the capsule and sealing the compostable lid to the capsule rim because the claim teaches a sealed capsule containing coffee.
The patented claim differs in specifically reciting that the foodstuff is other than coffee, however, Andreae and Zweed have been relied on as discussed directly above with respect to claim 2 to teach packaging either coffee or other foodstuffs known to be packaged in similar types of capsules.
To therefore modify the patented claims to contain a foodstuff other than coffee would have been obvious to one having ordinary skill in the art based on a substitution of one type of foodstuff commonly sealed within a capsule for another foodstuff recognized to be used in a similar manner.
Conclusion
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/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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