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 .
Continued examination under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e) was filed after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.114 has been timely paid, the finality of the previous Office Action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on 05/13/2026 has been entered.
Claim status
The examiner acknowledged the amendment made to the claims on 05/13/2026.
Claims 1-3, 5, 7, 9, 15-20 and 22 are pending in the application. Claims 1 and 22 are currently amended. Claims 2-3, 5, 7, 9 and 16-20 are previously presented. Claims 4, 6, 8 and 10-14 remain cancelled. Claim 15 is previously withdrawn in response to the restriction requirement. Claim 21 is currently canceled. Claims 1-3, 5, 7, 9, 16-20 and 22 are hereby examined on the merits.
Examiner Note
Any objections and/or rejections that are made in the previous actions and are not repeated below, are hereby withdrawn.
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.
Claim 1-3, 5, 9, 16-18, 20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Borges EP 2384630 A1 (hereinafter referred to as Borges) in view of Boldon US Patent No. 6,391,366 ( hereinafter referred to as Boldon).
Regarding claims 1-3, 5, 9, 16, 18, 20 and 22, Borges teaches a comestible product (e.g., brownie-type soft cake) comprising a continuous bakery portion (e.g., a baked dough) that comprises 5-35% chocolate or 0-10% cocoa powder, 10-25% fat such as vegetable oil, flour, sugar, egg, fat, a discrete inclusion and a filling, wherein the continuous and the discrete inclusion comprise source of cocoa butter (e.g., chocolate and cocoa powder) ([0007; 0011; 0015; 0019; 0035-0038; 0045; 0055]).
The amount of sources of cocoa butter or CBE (e.g., chocolate or cocoa powder) as disclosed by Borges overlaps with those recited in claim 1. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Borges teaches that the continuous bakery portion contains 10-25% fat such as vegetable oil ([0019]), and 5-35% chocolate or 0-10% cocoa powder ([0019]) which contributes extra fat content of 0-10.5% (chocolate and cocoa powder are known to contain 30% and 10-20% fat, respectively). As such, the amount of fat as disclosed by Borges falls within or overlaps with those recited in claims 1 and 20. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Borges is silent regarding the continuous bakery portion comprising 0.3%-3% (claim 1) or 0.3%-1% (claim 16) sorbitan tristearate and at least one emulsifier other than sorbitan tristearate.
Boldon teaches adding 0.1-6% an emulsifier to a dough (e.g., batter) that comprises starch, sugar, fat, egg and chocolate, etc. so as to improve the grain texture and structure of the baked goods, to create, disperse and stabilize gas cells in the batter, and to maintain the emulsion integrity of the batter; examples of the emulsifier include sorbitan tristearate, DATEM, lecithin, etc. (column 2, line 39-45; column 7, line 38-67; column 8, line 1-29).
Both Borges and Boldon are directed to baked goods that comprise starch, sugar, fat, egg and chocolate. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Borges by including 0.1-6% an emulsifier such as sorbitan tristearate and DATEM, lecithin in the bakery portion of Borges so as to improve the grain texture and structure of the baked goods, to create, disperse and stabilize gas cells in the batter, and to maintain the emulsion integrity of the batter.
It would also have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have combined sorbitan tristearate and DATEM/lecithin in the bakery portion of Borges, for the reason that "it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). MPEP 2144.06.
Further, a skilled artisan would have been motivated to vary the individual concentrations of sorbitan tristearate and DATEM/lecithin in the bakery portion to ensure the grain texture and structure of the baked goods are improved and that the emulsion integrity of the dough is maintained, provided that the total emulsifier concentration in the dough is 0.1-6% as required by Boldon. As such, the concentration of sorbitan tristearate as recited in claims 1 and 16 are merely obvious variants of the prior art.
On the limitation that the STS is added to the dough as a solid powder without prior melting or prior dispersion in a fat phase, and wherein the STS is dispersed as discrete solid particles in the dough and undergoes in-situ melting during baking: Boldon teaches that the emulsifier such as STS is pehydrated or is admixed with shortening before being added to the batter (column 7, line 41 and 50) thus being silent regarding that STS is added to the dough as a solid powder and dispersed as discrete solid particle in the dough and undergoes in-situ melting during baking. However, the instant claims are directed to a final comestible product comprising a continuous bakery portion as opposed to a process of making the comestible product comprising the continuous bakery portion, and since the baking process will melt the STS (see page 14, line 13-14 of the instant specification), one would not be able to tell the manner the STS is added to the dough upon baking, judging from the final baked product. In other words, the final STS- containing continuous bakery portion as disclosed by Borges in view of Boldon is materially indistinguishable from that as recited in claim 1. For the same reason, upon melting of STS during baking, the particle distribution as recited in claim 22 no longer exists in the continuous bakery portion, and the baked product as recited in prior art appears to be materially indistinguishable from that as recited in claim 22.
Regarding claim 17, Borges as recited above, teaches cocoa powder. Therefore, it would have been obvious to have selected alkalized defatted cocoa powder to include in the continuous bakery portion where Borges teaches cocoa powder, as one of ordinary skill would have had the reasonable expectation that any cocoa powder (e.g. alkalized defatted cocoa powder) would function effectively in the continuous portion. This is merely selecting from a group of suitable options, absent a clear showing of the criticality associated with alkalized defatted cocoa powder.
Claims 7 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Borges in view of Boldon as applied to claim 1 above, in further view of Gatewood, "Vegetable Oils – Comparison, Cost, and Nutrition", [Online], published Aug. 19, 2013, [retrieved on 2021-09-08]. Retrieved from the Internet: <URL: https://blogs.extension.iastate.edu/spendsmart/2013/08/19/vegetable-oils-comparison-cost-and-nutrition/> (hereinafter referred to as Gatewood).
Regarding claims 7 and 19, Borges teaches that the continuous bakery portion comprises 10-25% fat such as vegetable oil, and sources of cocoa butter or CBE (e.g., chocolate or cocoa powder) ([0015; 0019]). Borges is silent regarding the amount of saturated fat by weight of fatty acid in the continuous bakery portion.
Gatewood teaches that oil such as canola oil, peanut oil, and a blend soybean oil, corn oil and/or sunflower oil are suitable for use in baking (Table). Both Borges and Gatewood are directed to baking that uses vegetable oil. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Borges by using the aforementioned oil as disclosed by Gatewood because those oils are art-recognized oils suitable for use in baking. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.07.
Borges in view of Gatewood teaches that the continuous bakery portion comprises 10-25% vegetable oil such as canola oil, peanut oil and a blend of corn oil, soybean oil and/or sunflower oil which is known to have a saturated fat content of 7-18% (Gatewood, the chart of “Oil Composition”). Further, it is calculated from above that chocolate or cocoa powder of Borges contributes extra 0-10.5% fat which adds up to extra 0-5.8% saturated fat (cocoa butter is known to contain ~55% saturated fat). As such, Borges in view of Gatewood teaches a saturated fat content that falls within or overlaps with those recited in claims 7 and 19 (e.g., ((10%-25%) x (7%-18%) + (0-10.5%) x 55%))/((10%-25%) + (0-10.5%)). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Claim 1-3, 5, 9, 16-18, 20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Borges EP 2384630 A1 (hereinafter referred to as Borges) in view of Boldon US Patent No. 6,391,366 ( hereinafter referred to as Boldon) and Nessrien, “Effect of Adding Different Gums and Emulsifiers on Quality Attributes and Staling Rate of Microwave-Baked Cakes”, Alex. J. Fd. Sci. & Technol, 2011, 8(2), pages 1-12 (hereinafter referred to as Nessrien).
Regarding claims 1-3, 5, 9, 16, 18 and 20, Borges teaches a comestible product (e.g., brownie-type soft cake) comprising a continuous bakery portion (e.g., a baked dough) that comprises 5-35% chocolate or 0-10% cocoa powder, 10-25% fat such as vegetable oil, flour, sugar, egg, fat, a discrete inclusion and a filling, wherein the continuous and the discrete inclusion comprise source of cocoa butter (e.g., chocolate and cocoa powder) ([0007; 0011; 0015; 0019; 0035-0038; 0045; 0055]).
The amount of sources of cocoa butter or CBE (e.g., chocolate or cocoa powder) as disclosed by Borges overlaps with those recited in claim 1. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Borges teaches that the continuous bakery portion contains 10-25% fat such as vegetable oil ([0019]), and 5-35% chocolate or 0-10% cocoa powder ([0019]) which contributes extra fat content of 0-10.5% (chocolate and cocoa powder are known to contain 30% and 10-20% fat, respectively). As such, the amount of fat as disclosed by Borges falls within or overlaps with those recited in claims 1 and 20. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Borges is silent regarding the continuous bakery portion comprising 0.3%-3% (claim 1) or 0.3%-1% (claim 16) sorbitan tristearate (STS) and at least one emulsifier other than sorbitan tristearate. Borges is further silent regarding that STS is added to the dough as a solid powder and dispersed as discrete solid particles in the dough and undergoes in-situ melting during baking.
Boldon teaches adding 0.1-6% an emulsifier to a dough (e.g., batter) that comprises starch, sugar, fat, egg and chocolate, etc. so as to improve the grain texture and structure of the baked goods, to create, disperse and stabilize gas cells in the batter, and to maintain the emulsion integrity of the batter; examples of the emulsifier include sorbitan tristearate, DATEM, lecithin, etc. (column 2, line 39-45; column 7, line 38-67; column 8, line 1-29).
Nessrien teaches a method of making a cake, comprising mixing all the dry ingredients including wheat flour, sugar, milk powder, cocoa powder, salt, baking powder and emulsifier powder (e.g., spongolit 283) to make a cake batter, followed by baking the cake batter to obtain the cake (Abstract; page 2, right hand column, “Materials”; “Preparation of cakes”).
Borges, Boldon and Nessrien are all directed to baked products that comprise starch, sugar, fat, egg and chocolate. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Borges by including 0.1-6% an emulsifier such as sorbitan tristearate and DATEM, lecithin in the bakery portion of Borges so as to improve the grain texture and structure of the baked goods, to create, disperse and stabilize gas cells in the batter, and to maintain the emulsion integrity of the batter.
It would also have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have combined sorbitan tristearate and DATEM/lecithin in the bakery portion of Borges, for the reason that "it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). MPEP 2144.06.
Further, a skilled artisan would have been motivated to vary the individual concentrations of sorbitan tristearate and DATEM/lecithin in the bakery portion to ensure the grain texture and structure of the baked goods are improved and that the emulsion integrity of the dough is maintained, provided that the total emulsifier concentration in the dough is 0.1-6% as required by Boldon. As such, the concentration of sorbitan tristearate as recited in claims 1 and 16 are merely obvious variants of the prior art.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Borges by adding the STS in powder form to the dough such that the emulsifiers are dispersed as discrete solid particles in the dough with reasonable expectation of success, for the reason that prior art has established that such a way of introducing an emulsifier to the dough is suitable for making a baked product.
Given that Borges teaches a baking temperature that is far above the melting point of STS (0067), it logically follows that STS undergoes in-situ melting during the baking of the dough.
Regarding claim 17, Borges as recited above, teaches cocoa powder. Therefore, it would have been obvious to have selected alkalized defatted cocoa powder to include in the continuous bakery portion where Borges teaches cocoa powder, as one of ordinary skill would have had the reasonable expectation that any cocoa powder (e.g. alkalized defatted cocoa powder) would function effectively in the continuous portion. This is merely selecting from a group of suitable options, absent a clear showing of the criticality associated with alkalized defatted cocoa powder.
Regarding claim 22, it is noted the claim further recites the particle size distribution of the STS powder that is added to the dough prior to baking. However, the particle distribution will lose upon adding a fat component and mixing, since STS is lipophilic. In other words, in the pre-bake dough, the particle distribution as recited in claim 22 will no longer exit. Further, the instant claim is directed to a final comestible product comprising a continuous bakery portion as opposed to a process of making the comestible product comprising adding powdered emulsifier to the dough prior to baking, and since the baking process will melt the STS (see page 14, line 13-14 of the instant specification), the particle distribution as recited in claim 22 no longer exists in the continuous bakery portion, and the baked product or the STS as recited in prior art appears to be materially indistinguishable from that as recited in claim 22.
Claims 7 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Borges in view of Boldon and Nessrien as applied to claim 1 above, in further view of Gatewood, "Vegetable Oils – Comparison, Cost, and Nutrition", [Online], published Aug. 19, 2013, [retrieved on 2021-09-08]. Retrieved from the Internet: <URL: https://blogs.extension.iastate.edu/spendsmart/2013/08/19/vegetable-oils-comparison-cost-and-nutrition/> (hereinafter referred to as Gatewood).
Regarding claims 7 and 19, Borges teaches that the continuous bakery portion comprises 10-25% fat such as vegetable oil, and sources of cocoa butter or CBE (e.g., chocolate or cocoa powder) ([0015; 0019]). Borges is silent regarding the amount of saturated fat by weight of fatty acid in the continuous bakery portion.
Gatewood teaches that oil such as canola oil, peanut oil, and a blend soybean oil, corn oil and/or sunflower oil are suitable for use in baking (Table). Both Borges and Gatewood are directed to baking that uses vegetable oil. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Borges by using the aforementioned oil as disclosed by Gatewood because those oils are art-recognized oils suitable for use in baking. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.07.
Borges in view of Gatewood teaches that the continuous bakery portion comprises 10-25% vegetable oil such as canola oil, peanut oil and a blend of corn oil, soybean oil and/or sunflower oil which is known to have a saturated fat content of 7-18% (Gatewood, the chart of “Oil Composition”). Further, it is calculated from above that chocolate or cocoa powder of Borges contributes extra 0-10.5% fat which adds up to extra 0-5.8% saturated fat (cocoa butter is known to contain ~55% saturated fat). As such, Borges in view of Gatewood teaches a saturated fat content that falls within or overlaps with those recited in claims 7 and 19 (e.g., ((10%-25%) x (7%-18%) + (0-10.5%) x 55%))/((10%-25%) + (0-10.5%)). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Response to Arguments
Applicant's arguments filed 05/13/2026 have been fully considered but they are not persuasive.
Applicant argues on pages 7-8 of the Remarks that the manner in which STS is introduced into the dough directly affects the structure of the pre-baked dough. Applicant goes on to assert that the characterization of the dry-powder addition in the specification as preferred relative to the alternative of pre-melting “reflects the inventor’s recognition that the mode of STS incorporation into the dough prior to baking has practical and functional significance”.
The argument and the assertion are considered. They are not found unpersuasive. Although the manner in which STS ius introduced to the dough affects the structure of the “pre-baked dough”, the claims are directed to a final baked product. Further, it is noted that where the rejection submits that the final baked product are the same regardless of how the STS is introduced to the dough, applicant has not shown any concrete evidence pointing to the contrary. See MPEP 716.01(c) II. Attorney arguments cannot take the place of evidence. MPEP 2145 I. Argument does not replace evidence where evidence is necessary.
Applicant asserts unexpected result that STS is able to prevent fat bloom on page 8.
The applicant is noted that such an assertion is presented earlier to which the examiner has responded. See pages 7-8 of the Examiner’s Answer dated 05/03/2023. Further, PTAB decision issued 09/23/2024 also affirmed the examiner’s stance that the preponderance of the evidence supports the finding of obviousness over unobviousness. For example, the PTAB says that “First, the comparison made by the applicant is of a product with the claimed combination of emulsifiers, including STS and a product with no emulsifiers. Thus the data does not show unexpected result”.
Applicant argues on pages 8-9 of the Remarks that Boden teaches prehydrating the emulsifier or mixing the emulsifier with fat thus “teaching away from “ the limitation about adding STS as a solid powder.
The argument is considered but found unpersuasive. The claims are directed to a final baked good as opposed to a process comprising adding an emulsifier in solid powder form to a dough. As set forth in the office action, it does not appear that the manner of introducing STS results in materially different product. Nor does applicant show any difference by concrete evidence. Further, prior art’s silence about adding solid STS does not constitute a teaching away, since prior art does not criticize this feature, or suggest such a feature will wreck the baked product.
Applicant argues on page 9 of the Remarks that the currently amended claim 1 defines the dough, which is a structural intermediate of the claimed product, as a product in which STS particles are present in discrete solid form prior to baking. This pre-bake structural feature exists and is directly observable in the claimed dough before baking occurs, regardless of what happens to the STS during the baking step. To put it another way, the "materially indistinguishable" argument on page 9 of the Office Action does not address the structural state of the dough prior to baking, which is a feature now explicitly recited in claim 1 as amended.
The examiner disagrees. The issue is not how different the pre-baked doughs are, the issue is how different the final baked products are. Again, applicant is reminded that the claims are directed to a final baked product, as opposed to a method comprising adding a solid STS to a dough, or an intermediate.
Applicant argues on pages 9-10 of the Remarks that the specification on page 9 has provided a basis for concluding that the manner of introducing STS affect distribution or bloom prevention.
The examiner disagrees. Nowhere in the instant specification including page 9 suggests that adding STS in powder form and in pre-melt form will result in products having different properties including bloom prevention. Applicant is invited to shed more light on this assertion. See MPEP 716.01(c) II. Attorney arguments cannot take the place of evidence. MPEP 2145 I. Argument does not replace evidence where evidence is necessary.
Applicant argues on pages 10-12 of the Remarks that the proposed combination of Borges with Bolden is not supported by the required rationale. Applicant further argues that the problem addressed by applicant (e.g., the prevention of fat bloom) is not recognized by prior art.
The applicant is remined that the rationale of modifying Borges with Bolden is the advantage of improving the grain texture and structure of the baked goods, creating, dispersing and stabilizing gas cells in the batter, and maintaining the emulsion integrity of the batter. To this end, MPEP 2144 II states that the expectation of some advantage is the strongest rationale for combining references. The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6.
Applicant’s attention is further drawn to MPEP 2145 II which states that prima facie obviousness is not rebutted by merely recognizing additional advantages or latent properties present but not recognized in the prior art. In the instant case, where Borges as modified by Boldon teaches including STS in a dough, then the advantage of preventing fat bloom is within the teaching of the prior art.
Further, the applicant is noted that the rationale to modify Borges with Boldon is affirmed by PTAB. See page 5 of the PTAB decision issued 09/23/2024.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANGQING LI whose telephone number is (571)272-2334. The examiner can normally be reached 9:00-5:00.
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/CHANGQING LI/Primary Examiner, Art Unit 1791
