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 .
Claim status
The examiner acknowledged the amendment made to the claims on 12/12/2025.
Claims 1-3, 5, 7, 9 and 15-22 are pending in the application. Claims 1-3, 5, 7, 9, 15-20 and 22 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 Claim 15 is previously withdrawn in response to the restriction requirement.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 amended. Claims 1-3, 5, 7, 9 and 16-22 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Any objections and/or rejections that are made in the previous actions and are not repeated below, are hereby withdrawn.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 Objections
Claim 21 is objected to because of the following informalities: “the continuous bakery portion dough” should read “the dough”. Appropriate correction is required.
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 and 20-22 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 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 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.
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 claims 21-22, Borges as recited above teaches that the continuous bakery portion is obtained by baking a dough.
On the limitation that the STS is added to the dough as a powder and is dispersed in the dough as a solid: 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 powder or solid. 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 in what form the STS is added to the dough upon baking, judging from the final baked product. In other words, the STS- containing continuous bakery portion as disclosed by Borges in view of Boldon is materially indistinguishable from that as recited in claim 21. For the same reason, upon melting of STS during baking, the particle distribution limitation of the particle 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. Therefore, Borges in view of Boldon renders obvious claims 21-22.
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 Rejections – res judicata
Claims 1-3, 5, 7, 9 and 16-20 are rejected under the ground of res judicata. The PTAB affirmed the rejections of claims 1-3, 5, 7, 9 and 16-20 on 09/23/2024. It is found that none of the claims has been amended. See MPEP 2190 II, which states that a patent owner or applicant may be precluded from seeking a claim that is not patentably distinct from a claim that was previously rejected if the rejection was affirmed on appeal and the decision on appeal became final. A res judicata rejection should be applied only when the earlier decision was a decision of the Patent Trial and Appeal Board (or its predecessor Board) or any one of the reviewing courts and when there is no opportunity for further court review of the earlier decision. See In re Hitchings, 342 F.2d 80, 85, 144 USPQ 637, 641 (CCPA 1965) (holding that unappealed rejections from examiners cannot have a preclusive effect).
Response to Arguments
Applicant's arguments filed 12/12/2025 have been fully considered and the examiner’s response is shown below:
The 35 USC 112(a) rejection of claims 21-22 are withdrawn in view of the amendment made to claim 21.
Applicant argues on pages 5-6 of the Remarks that since Boldon teaches that the emulsifier is pehydrated or is admixed with shortening before being added to the dough, Borges as modified by Boldon is silent regarding the limitation that STS is added to the dough as a powder or solid.
The argument is considered. 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 in what form the STS is added to the dough upon baking, judging from the final baked product. In other words, the STS- containing continuous bakery portion as disclosed by Borges in view of Boldon is materially indistinguishable from that as recited in claim 21. For the same reason, upon melting of STS during baking, the particle distribution limitation of the particle 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. Therefore, Borges in view of Boldon renders obvious claims 21-22.
On the other hand, the examiner notes that applicant has not shown any new result associated with the feature of adding STS to the dough as a powder, or that the particle distribution property of the powder as recited in claim 22 still exists in the bakery portion.
Conclusion
Pertinent art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure
Mohmood US Patent Application Publication No. 2018/0132513 A1, which teaches that it is suitable to incorporate an emulsifier such as lecithin in powdered form into a dough to make a baked product (para. [0005]).
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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