DETAILED ACTION
Status of the Application
Receipt of the Response and Amendment after Non-Final Office Action filed 04/22/2024 is acknowledged.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1, 5, 17
Withdrawn claims: 6-16
Previously cancelled claims: 2-4, 18
Newly cancelled claims: None
Amended claims: 1, 5-13, 16-17
New claims: None
Claims currently under consideration: 1, 5, 17
Currently rejected claims: 1, 5, 17
Allowed claims: None
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 5, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Tresser (US 4,430,350) in view of Afoakwa (Afoakwa et al., “Microstructure and mechanical properties related to particle size distribution and composition in dark chocolate”, 2009, International Journal of Food Science and Technology, vol. 44, pages 111-119).
Regarding claim 1, Tresser teaches an edible fat-based suspension comprising sweetening and flavoring solids in an edible fat (Abstract). Tresser teaches that the suspension contains 30-70 wt.% of the fat or oil (column 5, lines 14-16). Therefore, the content of solid particles in the suspension is from an amount greater than 0 wt.% to an amount of 70 wt.%, which overlaps the claimed concentration of particles. It would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
Since the sweetening and flavoring agents are solids, they are present in at least one of a crystalline, semi-crystalline, or amorphous form and the suspension is not an emulsion. Also, since the sweetening and flavoring agents are sugar and cocoa powder and the fat in the suspension is either a fat or an oil (column 9, lines 5-15), the suspension is not a nut product. Tresser teaches that the suspension is or is contained within a chocolate or ice cream product (column 5, lines 23-29; column 6, lines 11-14). Tresser teaches that emulsifiers such as lecithin may be present in the suspension as desired (column 5, lines 11-12) and teaches that standard methods of refining and conching are applied to the suspension which includes rendering the suspensions to have a desired particle size (column 5, lines 30-33; column 6, lines 5-7). It does not teach that the particles in the suspension have the claimed particle size and the claimed particle size distributions; or that the suspension contains the claimed amount of lecithin.
However, Afoakwa teaches that chocolate is a suspension of solid particles comprising sugar crystals and cocoa solids (page 111, column 1, paragraph 1). It also teaches that final particle size critically influences chocolate rheological and sensory characteristics and that particle size distribution and the composition of other ingredients in the suspension determines the character in chocolate (page 111, column 1, paragraphs 1-2). It also discloses that during refining to produce the chocolate suspension, the particles are milled so that they have a particle size of less than 30 µm (page 111, column 1, paragraph 1), which overlaps the claimed particle size. It would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05. Furthermore, Afoakwa discloses that particle size distribution, fat content, and lecithin content significantly influence the firmness and hardness of the chocolate so that the interactions between these factors were central to mechanical properties of the chocolate suspension (Abstract).
As the rheological properties, sensory properties, firmness, hardness, and mechanical properties of the suspension are variables that can be modified, among others, by adjusting particle size, particle size distribution, fat content, and lecithin content, particle size, particle size distribution, fat content, and lecithin content would have been considered result effective variables by one having ordinary skill in the art before the effective filing date of the invention. As such, without showing unexpected results, the claimed particle size, particle size distribution, and lecithin content cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, the particle size, particle size distribution, and lecithin content in the suspension of Tresser to obtain the desired balance between rheological properties, sensory properties, firmness, hardness, and mechanical properties of the suspension as taught by Afoakwa (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Therefore, the claimed particle size, particle size distributions, and lecithin content are rendered obvious.
Regarding claim 5, Tresser teaches the invention as described above in claim 1, including the particles comprise a mixture of carbohydrate (corresponding to sugar), sweetener (corresponding to sugar), and chocolate ingredient (corresponding to cocoa powder) (column 9, lines 11-14).
Regarding claim 17, Tresser teaches the invention as described above in claim 1, including the particles are milled (corresponding to refining to a particle size by a roll refiners) (Afoakwa, page 111, column 1, paragraph 1). In reference to the yield value and plastic viscosity of the claimed dispersion when compared to dispersions without particles having the claimed particle size, the Office does not have laboratory facilities to test claim limitations drawn toward results of practicing the method as claimed. Accordingly, such yield value and plastic viscosity do not serve to distinguish the product as claimed from the prior art and are thus considered obvious to one having ordinary skill in the art. Furthermore, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Since the product of the prior art may comprise the claimed particle size and particle size distributions recited by claim 1 since they are results effective variables and the product of the prior art contains milled particles as required by claim 17 (Afoakwa, Abstract; page 111, column 1, paragraphs 1-2), the product of the prior art encompasses embodiments which are considered to be substantially the same as the claimed product.
Response to Arguments
Claim Rejections – 35 U.S.C. §103 of claims 1 and 5 over Konaka and Wilmott: Applicant’s arguments have been fully considered and are considered moot.
Applicant amended claim 1 to recite that the claimed product is a suspension, not an emulsion; and to recite that the suspension is or is contained within a chocolate or ice cream product. Applicant argued that Konaka and Willmott are directed to emulsions so that neither of these cited references disclose a fat-based suspension as now presently claimed. Applicant also argued that Konaka does not disclose a chocolate or ice cream product, but discloses emulsions containing water for folding into bakery products. Applicant added that Wilmott also does not disclose a chocolate or ice cream product, but discloses an emulsion which functions by charge repulsion. Applicant argued that the emulsions of Wilmott and Konaka are fundamentally different from the claimed suspension since the claimed suspension contains uncharged fats and carbohydrates and is a hydrophobic solid-in-fat suspension that does not contain water (Applicant’s Remarks, page 5, paragraph 4 – page 7, paragraph 3).
However, in the new grounds of rejection necessitated by the amendment of the claims, the features of amended claim 1 are rendered obvious by the combination of Tresser and Afoakwa while neither Konaka nor Wilmott are cited as prior art. As described above in the rejection of amended claim 1, Tresser teaches an edible fat-based suspension comprising sweetening and flavoring solids in an edible fat (Abstract) and that the suspension is or is contained within a chocolate or ice cream product (column 5, lines 23-29; column 6, lines 11-14). In response to Applicant’s assertion that the claimed suspension contains uncharged fats and carbohydrates and is a hydrophobic solid-in-fat suspension that does not contain water, the Examiner points out that: (1) the claims do not require the fats and carbohydrate particles in the suspension to be uncharged; (2) claim 1 does not require the particles to be a carbohydrate; (3) the claims do not exclude water from the suspension; (4) the claims do not require the suspension to be hydrophobic; (5) the claims do not require the suspension to be a solid-in fat suspension. Therefore, Applicant’s arguments regarding the claimed suspension possessing such features are moot. Since new prior art has been applied to the rejection of amended claim 1, Applicant’s arguments are moot and the rejections of the claims stand as written herein.
Claim Rejections – 35 U.S.C. §103 of claim 17 over Konaka, Wilmott, and Hess: Applicant’s arguments have been fully considered and are considered moot.
Applicant argued that Hess does not cure the aforementioned deficiencies of Konaka and Wilmott so that claim 17 is not obvious over Konaka, Wilmott and Hess (Applicant’s Remarks, page 7, paragraph 3).
However, in the new grounds of rejection necessitated by the amendment of the claims, the features of amended claims 1 and 17 are rendered obvious by the combination of Tresser and Afoakwa while none of Konaka, Wilmott, or Hess are cited as prior art. Since new prior art has been applied to the rejection of amended claim 1, Applicant’s arguments are moot and the rejections of the claims stand as written herein.
Applicant further amended claim 1 to recite that the lecithin content in the suspension is 5-10 wt.% instead of 8-10 wt.% (Applicant’s Remarks, page 7, paragraph 4).
However, the Examiner points out that none of the Examples use a lecithin content of 5-10 wt.% as now claimed so that any asserted benefit ascribed to such a concentration of lecithin is not demonstrated.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
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/JEFFREY P MORNHINWEG/Primary Examiner, Art Unit 1793
/KELLY P KERSHAW/Examiner, Art Unit 1791
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