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 .
Claims and Status of Application
Claims 1, 3-4, 6-9, 14-20 and 26-28 are under consideration.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 6-9, 14-20 and 26-28 are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. 2013/0183428 (DECLERCQ).
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DECLERCQ teaches a chocolate-based coating product comprising a water-in-oil emulsion [0010], [0014]. The emulsion can be used as a coating [0041].
The emulsion will preferably comprise up to 60% water, preferably 5-50% water, more preferably 10-40% water, more preferably 15-30% water by weight based on the total weight of the emulsion. Conversely, this means that the lipids may account for as little as 40%, preferably 50-95%, more preferably 60-90%, more preferably 70-85% of the emulsion by weight [0016].
The products can be chocolate based and comprise a water-in-oil emulsion characterized in that droplets of the aqueous phase, dispersed throughout a lipid phase, are encapsulated by substantially crystalline shells. The shells, formed by crystallization of the lipid phase around the droplets, should be intact and stable [0042]. Thus, the emulsion contains a crystallization starter.
In [0015], milk solids are present.
The lipid composition will contain cocoa butter and anhydrous milk fat. When anhydrous milk fat is used, it will preferably be used in an amount of at least 3% by weight, preferably of 5 to 20% by weight, based on the total weight of the lipid composition [0021]. This at least touches on the claimed range.
[0020] and [0022] teaches that the lipid compositions can be cocoa butter and cocoa liquor, respectively.
In [0039] of DECLERCQ, it is taught that tempering is a process which is well known in the art and which uses temperature cycling (heat decreases and increases) to ensure optimum crystal formation. This allows the molecules to solidify in an orderly fashion and for the chocolate to harden properly and provides a coating composition with increased hardness relative to an equivalent coating composition lacking the tempered lipids. Thus, a person of ordinary skill in the art would have a reasonable expectation of success that the thermal tempering, as disclosed in DECLERCQ, would be successful for generating the claimed coating composition with the improved hardness and pick-up behaviour. The tempering in the present disclosure, with a two-step process, combined with the inclusion of the crystallization starter results in a coating composition with improved hardness and pick-up behaviours relative to a composition without tempered lipids obtained by using a two-step addition of lipids. See paragraph [0021], Examples 1 and 2 of the present description.
In [0020], it is taught that the lipid phase is formed from a lipid composition. The constituents of the lipid composition will be selected by a skilled person depending on the nature of the chocolate product being produced. Thus, for a chocolate spread for example, it will be desirable to include oils and/or fats with a lower melting point. For a hard or moldable chocolate product, the skilled person will favor fats with a higher melting point, preferably fats that are solid at room temperature.
Thus, DECLERCQ teaches that the hardness is a result effective variable that can be varied based on the type of fats used.
Moreover, as to the hardness at -30oC , the Patent Office does not have the facilities to test the hardness of chocolate compositions at various temperature. Applicant has chosen to use parameters that cannot be measured by the Office, for the purpose of prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability. 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, 911F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, as a prima facia case of obviousness has been properly established, the burden is shifted to the applicant to show that the prior art product is different.
In [0026], DECLERCQ teaches the sweetener may be present in the aqueous phase in any form. For example, it may be dissolved, partially dissolved, dispersed or suspended in the aqueous phase. Preferably, it will be at least partially dissolved. DECLERCQ places NO limits on the amount of sweetener that can be added. It would have been obvious to vary the amount of sweetener based on the desired taste of product.
It would have been obvious to use tempering step with the fats including cocoa butter (see [0020]), as DECLERCQ teaches that they help form crystalline shell coatings.
As to the crystalline starter, [0036] of the present specification states that crystalline starters can be interesterified palm and cocoa butter. DECLERCQ teaches at [0020] that the lipid composition will comprise lipids selected from the group consisting of: cocoa butter, cocoa butter alternatives (such as cocoa butter equivalents, cocoa butter substitutes or cocoa butter replacers), milk fat, anhydrous milk fat, and mixtures of two or more thereof. Cocoa butter alternatives may include, for instance, hydrogenated and non-hydrogenated vegetable fats such as palm or coconut oil, interesterified palm or coconut oil, or palm or coconut oil fractions. The lipid composition may also comprise modified cocoa butter (such as interesterified cocoa butter) and/or cocoa butter fractions. For instance, it may comprise fractionated cocoa butter stearins and stearin fractions from interesterified cocoa butter, preferably from enzymatically interesterified cocoa butter. In any event, the lipid composition should comprise one or more fats capable of forming substantially crystalline shells around the aqueous droplets of the aqueous phase. Thus, it would have been obvious to use a crystalline starter as the DECLERCQ uses the same ingredients.
In [0021], it taught that cocoa butter and anhydrous milk fat are used. Anhydrous milk fat is used in an amount of at least 3% by weight, preferably of 5 to 20% by weight, based on the total weight of the lipid composition. This leaves 95 to 80% of cocoa butter. This overlaps the claimed range of 20 to 85% for the claimed first lipid. It must also be noted that DECLERCQ teaches that additional fats can be added (see [0020]). Thus, the first lipid can be in even lower amounts in other embodiments.
As to the manner in which the emulsion is produced (i.e. number of steps), the claimed invention is directed to a product. Product claims are based on their structure. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.).
While applicant argues that DECLERCQ teaches the two-step process discussed above results in a different structure than the product of DECLERCQ, there is no evidence to support this allegation.
Claim 3 recites that the crystallization starter is chosen from high melting triacylglycerols, partial acylglycerols, waxes, fractionated oils, interesterified oils, hydrogenated oils and mixtures thereof.
Claim 4 recites the lipid phase comprises lipids that have been fractionated and/or interesterified.
As to claims 3 and 4, DECLERCQ teaches that cocoa butter alternatives may include, for instance, hydrogenated and non-hydrogenated vegetable fats such as palm or coconut oil, interesterified palm or coconut oil, or palm or coconut oil fractions. In any event, the lipid composition should comprise one or more fats capable of forming substantially crystalline shells around the aqueous droplets of the aqueous phase [0039].
Claim 6 recites the emulsion comprises from 20 to 65 wt% of aqueous phase, based on the total weight of the emulsion, and from 35 to 80 wt% of lipid phase, based on the total weight of the emulsion.
The emulsion will preferably comprise up to 60% water, preferably 5-50% water, more preferably 10-40% water, more preferably 15-30% water by weight based on the total weight of the emulsion. Conversely, this means that the lipids may account for as little as 40%, preferably 50-95%, more preferably 60-90%, more preferably 70-85% of the emulsion by weight [0019].
Claim 7 is directed to a food product comprising the coating of claim 1 and further ingredients.
Claim 8 recites that emulsion is present as a coating of and/or as a filling in said food product.
Claim 9 recites that the food product is frozen.
As to clams 7-9, [0041] of DECLERCQ teaches that the product can be filling or in a frozen dessert and additionally contains flavoring ingredients such as vanilla [0022].
Claim 14 recites that the interesterified lipid is interesterified cocoa butter stearin fractions.
DECLERCQ teaches that the lipid composition may also comprise modified cocoa butter (such as interesterified cocoa butter) and/or cocoa butter fractions. For instance, it may comprise fractionated cocoa butter stearins. In particular, stearin fractions from interesterified cocoa butter are used [0020]. In any event, the lipid composition should comprise one or more fats capable of forming substantially crystalline shells around the aqueous droplets of the aqueous phase.
It would have been obvious to use these fats/oils in the composition, as DECLERCQ teaches that they help form crystalline shell coatings.
Claim 15 recites the lipid phrase comprises tempered lipids.
In [0039] of DECLERCQ, it is taught that tempering is a process which is well known in the art and which uses temperature cycling (heat decreases and increases) to ensure optimum crystal formation.
It would have been obvious to use tempering step with the fats including cocoa butter, as DECLERCQ teaches that they help form crystalline shell coatings.
Claim 16 recites that the frozen product is ice cream.
[0041] of DECLERCQ teaches that the product can be filling or in a frozen dessert including ice-cream.
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This is a product by process recitation. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer.
DECLERCQ teaches a chocolate coating product comprising a water-in-oil emulsion the water-in-oil emulsion [0010], [0014] that requires a high shear or 100 or more rpm [0036]. DECLERCQ teaches a chocolate coating product comprising a water-in-oil emulsion the water-in-oil emulsion [0010], [0014]. In [0039] of DECLERCQ, it is taught that tempering is a process which is well known in the art and which uses temperature cycling (heat decreases and increases) to ensure optimum crystal formation.
It would have been obvious to use tempering step with the fats including cocoa butter, as DECLERCQ teaches that they help form crystalline shell coatings.
DECLERCQ teaches that the amount of rpms and time the composition is mixed [0037] assures that the mixture is homogenously mixed [0036]. Thus, it would have been obvious to vary the amount of rpms and time mixed to assure that the mixture is homogenously mixed.
It would have been obvious to use tempering step with the fats including cocoa butter, as DECLERCQ teaches that they help form crystalline shell coatings.
Claim 18 recites that the coating composition has a Casson viscosity of from 0.5 to 2 Pa∙s when measured at 40oC.
In [0020], it is taught that the lipid composition will be selected by a skilled person depending on the nature of the chocolate product being produced. Thus, for a chocolate spread for example, it will be desirable to include oils and/or fats with a lower melting point. For a hard or mouldable chocolate product, the skilled person will favor fats with a higher melting point, preferably fats that are solid at room temperature. Thus, it would have been obvious to vary the amount of and type of fat based on the desired viscosity and hardness of the fat (i.e., spreadable v. moldable).
Moreover, Applicant has chosen to use parameters that cannot be measured by the Office, for the purpose of prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability. 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, 911F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, as a prima facia case of obviousness has been properly established, the burden is shifted to the applicant to show that the prior art product is different.
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The lipid composition contains cocoa butter and anhydrous milk fat. When anhydrous milk fat is used, it will preferably be used in an amount of at least 3% by weight, preferably of 5 to 20% by weight, based on the total weight of the lipid composition [0021]. This at least touches on the claimed range. DECLERCQ teaches that the amount of rpms and time the composition is mixed [0037] assures that the mixture is homogenously mixed [0036].
Thus, it would have been obvious to vary the amount of rpms and time mixed to assure that the mixture is homogenously mixed.
Moreover, the claimed invention is a product. There is no evidence that the process steps result in a different product than DECLERCQ when taking into consideration that DECLERCQ teaches, it would have been obvious to vary the amount of and type of fat based on the desired viscosity and hardness of the fat (i.e., spreadable v. moldable) (see [0020]. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.).
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It would have been obvious to vary the thickness and homogeneity/coverage of the coating based on desired taste and appearance of the product.
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The claimed invention is directed to a product. DECLERCQ teaches a chocolate coating product comprising a water-in-oil emulsion the water-in-oil emulsion [0010], [0014]. In [0039] of DECLERCQ, it is taught that tempering is a process which is well known in the art and which uses temperature cycling (heat decreases and increases) to ensure optimum crystal formation. There is no evidence that the process steps result in a different product than DECLERCQ when taking into consideration that DECLERCQ teaches, it would have been obvious to vary the amount of and type of fat based on the desired viscosity and hardness of the fat (i.e., spreadable v. moldable) (see [0020]).
The tempering and selection of fat allows the molecules to solidify in an orderly fashion and for the chocolate to harden properly and provides a coating composition with increased hardness relative to an equivalent coating composition lacking the tempered lipids. This solidification also results in an improved pick-up.
Claim 27 recites that the composition has a pick-up of from 25 to 35%.
DECLERCQ teaches a chocolate coating product comprising a water-in-oil emulsion the water-in-oil emulsion [0010], [0014]. In [0039] of DECLERCQ, it is taught that tempering is a process which is well known in the art and which uses temperature cycling (heat decreases and increases) to ensure optimum crystal formation. This allows the molecules to solidify in an orderly fashion and for the chocolate to harden properly and provides a coating composition with increased hardness relative to an equivalent coating composition lacking the tempered lipids. This solidification also results in an improved pick-up. It would have been obvious to vary the amount of tempering (i.e., amount of tempered lipids) based on the desired thickness and hardness of the coating thus achieving the desired pickup.
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DECLERCQ teaches a chocolate-based coating product comprising a water-in-oil emulsion [0010], [0014]. The emulsion can be used as a coating [0041].
The emulsion will preferably comprise up to 60% water, preferably 5-50% water, more preferably 10-40% water, more preferably 15-30% water by weight based on the total weight of the emulsion. Conversely, this means that the lipids may account for as little as 40%, preferably 50-95%, of the emulsion by weight [0016].
The products can be chocolate based and comprise a water-in-oil emulsion characterized in that droplets of the aqueous phase, dispersed throughout a lipid phase, are encapsulated by substantially crystalline shells. The shells, formed by crystallization of the lipid phase around the droplets, should be intact and stable [0042]. Thus, the emulsion contains a crystallization starter.
In [0015], milk solids are present.
The lipid composition will contain cocoa butter and anhydrous milk fat. When anhydrous milk fat is used, it will preferably be used in an amount of at least 3% by weight, preferably of 5 to 20% by weight, based on the total weight of the lipid composition [0021]. This at least touches on the claimed range.
[0020] and [0022] teaches that the lipid compositions can be cocoa butter and cocoa liquor, respectively.
Tempering improves pick-up behavior and hardness. In [0039] of DECLERCQ, it is taught that tempering is a process which is well known in the art and which uses temperature cycling (heat decreases and increases) to ensure optimum crystal formation. This allows the molecules to solidify in an orderly fashion and for the chocolate to harden properly and provides a coating composition with increased hardness relative to an equivalent coating composition lacking the tempered lipids. Thus, a person of ordinary skill in the art would have a reasonable expectation of success that the thermal tempering, as disclosed in DECLERCQ, would be successful for generating the claimed coating composition with the improved hardness and pick-up behaviour. The tempering in the present disclosure, with a two-step process, combined with the inclusion of the crystallization starter results in a coating composition with improved hardness and pick-up behaviours relative to a composition without tempered lipids obtained by using a two-step addition of lipids. See paragraph [0021], Examples 1 and 2 of the present description.
In [0026], DECLERCQ teaches the sweetener may be present in the aqueous phase in any form. For example, it may be dissolved, partially dissolved, dispersed or suspended in the aqueous phase. Preferably, it will be at least partially dissolved. DECLERCQ places NO limits on the amount of sweetener that can be added. It would have been obvious to vary the amount of sweetener based on the desired taste of product.
It would have been obvious to use tempering step with the fats including cocoa butter (see [0020]), as DECLERCQ teaches that they help form crystalline shell coatings.
As to the crystalline starter, [0036] of the present specification states that crystalline starters can be interesterified palm and cocoa butter. DECLERCQ teaches at [0020] that the lipid composition will comprise lipids selected from the group consisting of: cocoa butter, cocoa butter alternatives (such as cocoa butter equivalents, cocoa butter substitutes or cocoa butter replacers), milk fat, anhydrous milk fat, and mixtures of two or more thereof. Cocoa butter alternatives may include, for instance, hydrogenated and non-hydrogenated vegetable fats such as palm or coconut oil, interesterified palm or coconut oil, or palm or coconut oil fractions. The lipid composition may also comprise modified cocoa butter (such as interesterified cocoa butter) and/or cocoa butter fractions. For instance, it may comprise fractionated cocoa butter stearins and stearin fractions from interesterified cocoa butter, preferably from enzymatically interesterified cocoa butter. In any event, the lipid composition should comprise one or more fats capable of forming substantially crystalline shells around the aqueous droplets of the aqueous phase. Thus, it would have been obvious to use a crystalline starter as the DECLERCQ uses the same ingredients.
In [0021], it taught that cocoa butter and anhydrous milk fat are used. Anhydrous milk fat is used in an amount of at least 3% by weight, preferably of 5 to 20% by weight, based on the total weight of the lipid composition. This leaves 95 to 80% of cocoa butter. This overlaps the claimed range of 20 to 85% for the claimed first lipid. It must also be noted that DECLERCQ teaches that additional fats can be added (see [0020]). Thus, the first lipid can be in even lower amounts in other embodiments.
As to the manner in which the emulsion is produced (i.e. number of steps), [0035] of DECLERCQ teaches that if more than one lipid is going to be used to form the lipid composition, it will be prepared by blending the selected lipids prior to step (a). If one or more additional ingredients (e.g. solids such as cocoa powder) are to be dispersed throughout the lipid phase, this may be done prior to, during or after step (a). [0036] teaches that step (a) will preferably be achieved by high speed or high shear mixing of the lipid and aqueous compositions. Thus, high speed shearing is taught,
However, the claimed invention is directed to a product. Product claims are based on their structure. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.).
While applicant argues that DECLERCQ teaches the two-step process discussed above results in a different structure than the product of DECLERCQ, there is no evidence to support this allegation.
Hardness and Viscosity are result effective variables. In [0020], it is taught that the lipid phase is formed from a lipid composition. The constituents of the lipid composition will be selected by a skilled person depending on the nature of the chocolate product being produced. Thus, for a chocolate spread for example, it will be desirable to include oils and/or fats with a lower melting point. For a hard or moldable chocolate product, the skilled person will favor fats with a higher melting point, preferably fats that are solid at room temperature. Thus, DECLERCQ teaches that the hardness is a result effective variable that can be varied based on the type of fats used. Thus, it would have been obvious to vary the lipid compositions based on desired hardness and viscosity.
Moreover, as to the hardness and viscosity properties, the Patent Office does not have the facilities to test the hardness of chocolate compositions at various temperature. Applicant has chosen to use parameters that cannot be measured by the Office, for the purpose of prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability. 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, 911F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, as a prima facia case of obviousness has been properly established, the burden is shifted to the applicant to show that the prior art product is different.
Response to Arguments
Applicant's arguments 3/16/2026 have been fully considered but they are not persuasive.
The applicant argues that claim 1 recites a specific composition having a particular internal arrangement: the lipid phase of the emulsion comprises a first lipid composition and a second lipid composition; the emulsion comprises a first emulsion comprising the aqueous phase dispersed in the first lipid composition; and the second lipid composition is dispersed in the first emulsion, with the first lipid composition comprising cocoa butter and the second lipid composition comprising cocoa liquor. It is argued that Declercq teaches that, where more than one lipid is used, the lipid composition is prepared by blending the selected lipids prior to step (a). Declercq then forms the emulsion by dispersing droplets of the sweetened aqueous composition throughout that lipid composition. Thus, it is argued that Declercq teaches a pre-blended lipid composition before emulsification, not the claimed composition in which an aqueous-in-first lipid emulsion is first present and followed by a second lipid composition comprising cocoa liquor that is then dispersed in that first emulsion.
However, [0035] of DECLERCQ teaches that if more than one lipid is going to be used to form the lipid composition, it will be prepared by blending the selected lipids prior to step (a). If one or more additional ingredients (e.g. solids such as cocoa powder) are to be dispersed throughout the lipid phase, this may be done prior to, during or after step (a).
[0036] teaches that step (a) will preferably be achieved by high speed or high shear mixing of the lipid and aqueous compositions. The terms “high speed” or “high shear mixing” as used herein will preferably refer to mixing at a rotation speed of 100 rpm or more, more preferably of 200 to 5000 rpm, more preferably still of 500 to 2000 rpm.
Thus, DECLERQ does not just teach a blended fat as suggested by applicant. Rather, DECLERQ also teaches that when additional ingredients and fats are used that the product can be subjected to a high shear. A high shear that would result in emulsification.
The applicant also argues that the rejection also fails to properly map several additional limitations of claim 1. In particular, it is argued that claim 1 requires that the lipid phase comprise non-fatty cocoa and/or milk solids between 15 wt% and 40 wt% based on the total weight of the lipid phase. The Office cites Declercq Pars. [0015], [0021], and [0022]. However, Declercq paragraph [0021] is related to anhydrous milk fat in a lipid composition of cocoa butter and anhydrous milk fat. It is argued that milk fat is not the same as the claimed non-fatty cocoa and/or milk solids. Furthermore, it is argued that Declercq states only that the lipid phase may include optional additional ingredients such as cocoa liquor, cocoa powder, cocoa mass, and milk solids dispersed therein.
However, [0022] states that the lipid phase can include, for instance, cocoa powder, cocoa liquor and/or cocoa mass, milk solids (e.g. milk powder or defatted milk powder), whey proteins and/or soy milk proteins, flavoring agents (such as vanilla or vanillin), emulsifiers (such as lecithin or polyglycerol polyricinoleate, PGPR) and possibly some additional sweetener. While the specific amounts are not provided in [0022], it is clear that solids are dispersed throughout the lipid phase (e.g., see claim 20).
The applicant argues that claim 1 further requires that the aqueous phase comprise 65 wt% to 90 wt% of a sweetener composition based on the total weight of the aqueous phase and Declercq states that when the sweetener is a crystalline sugar, it is preferably included in the aqueous phase in an amount of at least 25% by weight, preferably 25-60% by weight, and more preferably 25-40% by weight, based on the total weight of the aqueous composition [0025]. .
However, “at least 25%” includes the range of 65 to 90 wt%. Moreover, the ingredient at issue is a sweetener. One skilled in the art would have been motivated to vary the amount based on the desired sweetness of the product.
The applicant also argues that the Office Action relies on Declercq paragraphs [0020]-[0022] to assert the claimed first and second lipid compositions. It is argued that reliance is insufficient. Declercq paragraph [0020] broadly identifies possible lipids for a lipid composition, including cocoa butter, cocoa butter alternatives, milk fat, and anhydrous milk fat. Declercq paragraph [0022] lists cocoa liquor only as one of several optional ingredients that may be dispersed in the lipid phase. Neither paragraph teaches that cocoa butter is a claimed first lipid composition forming a first emulsion with the aqueous phase, while cocoa liquor is a distinct second lipid composition.
However, this fails to take the overall teachings of Declercq into consideration. Given Declercq provides a limited number of options it would have been obvious to provide cocoa butter in the first lipid composition and cocoa liquor in a second lipid composition.
The applicant also argues that claim 1 recites more than a mere manufacturing history. Claim 1 defines the coating composition in terms of the relationship of the aqueous phase, the first lipid composition, and the second lipid composition. The rejection does not show that Declercq discloses or renders obvious that claimed arrangement.
However, as noted above, [0035] of DECLERCQ teaches that if more than one lipid is going to be used to form the lipid composition, it will be prepared by blending the selected lipids prior to step (a). If one or more additional ingredients (e.g., solids such as cocoa powder) are to be dispersed throughout the lipid phase, this may be done prior to, during or after step (a). [0036] teaches that step (a) will preferably be achieved by high speed or high shear mixing of the lipid and aqueous compositions. Thus, Declercq does render obvious the claimed arrangement.
The applicant also argues that claim 1 requires that the coating composition has improved pick-up behavior and increased hardness at a temperature between -30°C and -4°C relative to an equivalent coating composition emulsion produced in a single step. The Office relies primarily on Declercq's tempering disclosure [0039]. The applicant acknowledges that Declercq indeed states that cooling may include a tempering phase and that tempering uses temperature cycling to ensure optimum crystal formation. But argues that general disclosure does not teach the specific comparative property recited in claim 1, namely improved pick-up behavior and increased hardness relative to an equivalent single-step emulsion. Moreover, it is also argued that Declercq fails to establish that hardness and pick-up are result-effective variables.
However, while it is true that Declercq does not teach the recited properties of pick-up behavior and increased hardness, [0039] of DECLERCQ teaches taught that tempering is a process which is well known in the art and which uses temperature cycling (heat decreases and increases) to ensure optimum crystal formation. The crystallization, which can be optimized, influences hardness and pick-up. Thus, a person of ordinary skill in the art would have a reasonable expectation of success that the thermal tempering, as disclosed in DECLERCQ, would be successful for generating the claimed coating composition with the improved hardness and pick-up behaviour.
It is also argued that Declercq does not teach or suggest the claimed differentiated shear mixing requirements, and the Office has not provided an articulated reason to modify Declercq
to arrive at them.
However, these are process recitations, whereas the claimed invention is a product. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.).
Moreover, as noted above, the claimed arrangement of phases is taught by Declercq and it cannot be said that the process steps recited in claims 1 and 28 result in a patentable difference. The applicant also argues that Claim 28 recites measurable parameters: a Casson viscosity of 0.5 to 2 Pa∙s at 40 °C and a pick-up of 25 to 35%. It is argued that Declercq contains no teaching of Casson viscosity, let alone the recited numerical range at 40 °C, and does not disclose a pick-up value or target range.
Applicant has chosen to use parameters that cannot be measured by the Office, for the purpose of prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability. 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, 911F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, as a prima facia case of obviousness has been properly established, the burden is shifted to the applicant to show that the prior art product is different.
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 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 PHILIP A DUBOIS whose telephone number is (571)272-6107. The examiner can normally be reached on M-F, 9:30-6:00p.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached on 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHILIP A DUBOIS/ Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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