DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Receipt of the Response after Non-Final Office Action filed 12/30/2025 is acknowledged.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 40-53
Withdrawn claims: None
Previously cancelled claims: 1-39
Newly cancelled claims: None
Amended claims: None
New claims: None
Claims currently under consideration: 40-53
Currently rejected claims: 40-53
Allowed claims: None
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.
The factual inquiries 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 40-41, 43, and 45 are rejected under 35 U.S.C. 103 as being unpatentable over Sunwarrior (“Banana Flour Brownies”, May 2017, Sunwarrior, https://sunwarrior.com/blogs/health-hub/banana-flour-brownies; previously cited) in view of Hike (“Making Dehydrated Pureed Banana For the Trail”, 2014, HikeLighter.com, https://hikelighter.wordpress.com/2014/05/25/making-dehydrated-pureed-banana-for-thetrail/) and Salt (“Toasted Flour Shortbread”, 2011, Not Without Salt, http://notwithoutsalt.com/toasted-flour-shortbread/; previously cited) as evidenced by Flexicon (“Bulk Handling Equipment & Systems”, 2016, flexicon, https://web.archive.org/web/20160820060845/http://www.flexicon.com/Materials-Handled/Cocoa-Powder.html; previously cited) and Suntharalingam (Suntharalingam, S., Racindran, G., “Physical and biochemical properties of green banana flour”, 1993, Plant Foods for Human Nutrition, vol. 43, pages 19-27; previously cited).
Regarding claim 40, Sunwarrior teaches a chocolate-flavored food product (corresponding to brownie on page 1, paragraph 2) comprising ¼ cup green banana flour and ¼ cup cocoa powder (second and fourth bullet under list of ingredients on page 2). These volumetric measurements translate to 29.6 g banana flour (since banana flour has an average density of 0.5 g/ml as evidenced by Table 2 on page 22 of Suntharalingam) and 33.1 g cocoa powder (since cocoa powder has an average density of 35 lbs. per cubic foot as evidenced by column 2, paragraph 2 of Flexicon) and a mass ratio of green banana flour to cocoa powder of 1: 1.1, which falls within the claimed range. Sunwarrior does not teach that the banana flour is roasted green banana flour made from peeled green banana where the flour is subsequently roasted at a temperature of 160-240°C for 15-150 minutes.
However, Hike teaches a green banana flour (corresponding to banana powder made from green bananas) as an ingredient in baked products (page 1, paragraph beginning “I started with”; page 14, picture and paragraph beginning “With it being ground up”). Hike teaches that the flour is prepared by peeling green bananas, mashing the peeled bananas into a slurry (corresponding to pureeing them in a Nutribullet), and drying the puree into a green banana flour (page 1, paragraphs 3-8 and 10).
It would have been obvious for a person of ordinary skill in the art to have modified the method of Sunwarrior by using roasted green banana flour as taught by Hike. Since Sunwarrior teaches that its baked product comprises green banana flour, but does not disclose a method of making a green banana flour, a skilled practitioner would have been motivated to consult an additional reference such as Hike in order to determine a suitable method of producing a green banana flour that is suitable as an ingredient in baked goods. Therefore, the claimed process of producing the green banana flour is rendered obvious.
The combination of Sunwarrior and Hike does not teach that the banana flour is subsequently roasted at a temperature of 160-240°C for 15-150 minutes.
However, Salt teaches roasting (corresponding to toasting) flour prior to using the flour in baked goods to provide deeper flavor to the baked goods (page 1, paragraph 3-page 2, paragraph 2). Salt teaches roasting the flour at about 177°C (corresponding to 350°F) for about 45 minutes (page 2, paragraph 3), which falls within the claimed temperature and time.
It would have been obvious for a person of ordinary skill in the art to have modified the method of modified Sunwarrior by roasting the green banana flour as taught by Salt. Since Sunwarrior teaches the incorporation of green banana flour in its brownie composition; Han teaches a green banana flour; and Salt teaches roasting flour prior to using the flour in baked goods to provide deeper flavor to the baked goods, a skilled practitioner would have been motivated to roast the banana flour of Han to improve the taste of the banana flour and thus improve the taste of the chocolate-flavored food product of Sunwarrior in which the roasted green banana flour is used. Therefore, the claimed roasting time and temperature are rendered obvious.
Regarding claim 41, Sunwarrior teaches the invention as described above in claim 40, including the food product is a brownie (page 1, paragraph 2).
Regarding claim 43, Sunwarrior teaches the invention as described above in claim 40, including the banana flour is roasted at about 177°C for about 45 minutes (Salt, page 2, paragraph 3), which falls within the claimed temperature and time.
Regarding claim 45, modified Sunwarrior teaches the invention as described above in claim 40, including the green banana is produced by peeling, comminuting, dehydrating, and grinding green bananas (Hike, page 1, paragraphs 3-8 and 10; page 14, picture and paragraph beginning “With it being ground up”). Since the prior art does not disclose a heating/cooking step, the green banana flour is made from a native green banana flour.
Claims 40, 44, 46, and 50 are rejected under 35 U.S.C. 103 as being unpatentable over Sunwarrior (“Banana Flour Brownies”, May 2017, Sunwarrior, https://sunwarrior.com/blogs/health-hub/banana-flour-brownies; previously cited) in view of Han (US 2013/0156893; IDS citation) and Salt (“Toasted Flour Shortbread”, 2011, Not Without Salt, http://notwithoutsalt.com/toasted-flour-shortbread/; previously cited) as evidenced by Flexicon (“Bulk Handling Equipment & Systems”, 2016, flexicon, https://web.archive.org/web/20160820060845/http://www.flexicon.com/Materials-Handled/Cocoa-Powder.html; previously cited) and Suntharalingam (Suntharalingam, S., Racindran, G., “Physical and biochemical properties of green banana flour”, 1993, Plant Foods for Human Nutrition, vol. 43, pages 19-27; previously cited).
Regarding claim 40, Sunwarrior teaches a chocolate-flavored food product (corresponding to brownie on page 1, paragraph 2) comprising ¼ cup green banana flour and ¼ cup cocoa powder (second and fourth bullet under list of ingredients on page 2). These volumetric measurements translate to 29.6 g banana flour (since banana flour has an average density of 0.5 g/ml as evidenced by Table 2 on page 22 of Suntharalingam) and 33.1 g cocoa powder (since cocoa powder has an average density of 35 lbs. per cubic foot as evidenced by column 2, paragraph 2 of Flexicon) and a mass ratio of green banana flour to cocoa powder of 1: 1.1, which falls within the claimed range. Sunwarrior teaches that the green banana flour is a flour gluten substitute in its brownie (page 1, paragraphs 1-2 under picture), but does not teach that the banana flour is roasted green banana flour made from peeled green banana where the flour is subsequently roasted at a temperature of 160-240°C for 15-150 minutes.
However, Han teaches a banana flour (corresponding to banana powder) [0007] as a gluten substitute in baked products [0100]. Han teaches that the flour is prepared by subjecting an unpeeled green banana to a heat treatment, peeling the heat-treated green banana, comminuting the heat-treated peeled banana into a puree, and drying the puree into a banana flour (corresponding to banana powder) [0009].
It would have been obvious for a person of ordinary skill in the art to have modified the method of Sunwarrior by using green banana flour as taught by Han. Since Sunwarrior teaches that its baked product comprises green banana flour, but does not disclose a method of making a green banana flour, a skilled practitioner would have been motivated to consult an additional reference such as Han in order to determine a suitable method of producing a green banana flour that is suitable as a flour gluten substitute in baked goods. Therefore, the claim is rendered obvious.
The combination of Sunwarrior and Han does not teach that the banana flour is subsequently roasted at a temperature of 160-240°C for 15-150 minutes.
However, Salt teaches roasting (corresponding to toasting) flour prior to using the flour in baked goods to provide deeper flavor to the baked goods (page 1, paragraph 3-page 2, paragraph 2). Salt teaches roasting the flour at about 177°C (corresponding to 350°F) for about 45 minutes (page 2, paragraph 3), which falls within the claimed temperature and time.
It would have been obvious for a person of ordinary skill in the art to have modified the method of modified Sunwarrior by roasting the green banana flour as taught by Salt. Since Sunwarrior teaches the incorporation of green banana flour in its brownie composition; Han teaches a green banana flour; and Salt teaches roasting flour prior to using the flour in baked goods to provide deeper flavor to the baked goods, a skilled practitioner would have been motivated to roast the banana flour of Han to improve the taste of the banana flour and thus improve the taste of the chocolate-flavored food product of Sunwarrior in which the roasted green banana flour is used. Therefore, the claimed roasting time and temperature are rendered obvious.
Regarding claim 44, modified Sunwarrior teaches the invention as described above in claim 40, including the roasted green banana flour is made from green banana in stages 1-3 of ripeness (Han [0076]), which overlaps the claimed stages. The selection of a value within the overlapping range renders the claim obvious.
Regarding claim 46, modified Sunwarrior teaches the invention as described above in claim 40, including the roasted green banana flour is produced by gelatinizing the green bananas (Han [0085]). Therefore, the roasted green banana flour is pre-gelatinized.
Regarding claim 50, modified Sunwarrior teaches the invention as described above in claim 40, including the method further comprising: subjecting an unpeeled green banana to a heat treatment, peeling the heat-treated green banana, comminuting the heat-treated peeled banana into a slurry (corresponding to puree), and drying the slurry into a banana flour (corresponding to banana powder) (Han [0009]). Salt teaches that the banana flour is subsequently roasted (corresponding to toasting) prior to using the flour in baked goods to provide deeper flavor to the baked goods (page 1, paragraph 3-page 2, paragraph 2). Salt teaches roasting the flour at about 177°C (corresponding to 350°F) for about 45 minutes (page 2, paragraph 3), which falls within the claimed temperature and time recited in present claim 40. Since the prior art teaches that the flour is roasted at the claimed time and temperature, it would have been obvious for the roasted flour to have a toasted flavor and/or toasted odor which are considered to be sensory attributes of a cocoa aroma as recited by present claim 50.
Claim 42 is rejected under 35 U.S.C. 103 as being unpatentable over Sunwarrior (“Banana Flour Brownies”, May 2017, Sunwarrior, https://sunwarrior.com/blogs/health-hub/banana-flour-brownies; previously cited) in view of Han (US 2013/0156893; IDS citation) and Salt (“Toasted Flour Shortbread”, 2011, Not Without Salt, http://notwithoutsalt.com/toasted-flour-shortbread/; previously cited) as evidenced by Flexicon (“Bulk Handling Equipment & Systems”, 2016, flexicon, https://web.archive.org/web/20160820060845/http://www.flexicon.com/Materials-Handled/Cocoa-Powder.html; previously cited) and Suntharalingam (Suntharalingam, S., Racindran, G., “Physical and biochemical properties of green banana flour”, 1993, Plant Foods for Human Nutrition, vol. 43, pages 19-27; previously cited) as applied to claim 40 above, and further in view of Chanelle (Chanelle, “Brownie Covered Oreos”, 2011, The Tall Girl Cooks, http://www.thetallgirlcooks.com/2011/04/brownie-coveredoreos.html; previously cited).
Regarding claim 42, Sunwarrior teaches the invention as described above in claim 40, including the food product is a brownie (page 1, paragraph 2). Sunwarrior does not teach that the food product is a chocolate coating.
However, Chanelle teaches that brownies are used to cover Oreo cookies (page 1, paragraph 4).
It would have been obvious for a person of ordinary skill to have modified the method of Sunwarrior by using the brownies as a chocolate coating as taught by Chanelle. Since Sunwarrior teaches the preparation of brownies and Chanelle teaches that cookies are covered in brownie, a skilled practitioner would readily recognize that the brownies of Sunwarrior can be used to coat the cookies as described in Chanelle. Therefore, the brownie of Sunwarrior qualifies as a chocolate coating, thereby rendering the claim obvious.
Claims 47-48 are rejected under 35 U.S.C. 103 as being unpatentable over Sunwarrior (“Banana Flour Brownies”, May 2017, Sunwarrior, https://sunwarrior.com/blogs/health-hub/banana-flour-brownies; previously cited) in view of Hike (“Making Dehydrated Pureed Banana For the Trail”, 2014, HikeLighter.com, https://hikelighter.wordpress.com/2014/05/25/making-dehydrated-pureed-banana-for-thetrail/) and Salt (“Toasted Flour Shortbread”, 2011, Not Without Salt, http://notwithoutsalt.com/toasted-flour-shortbread/; previously cited) as evidenced by Flexicon (“Bulk Handling Equipment & Systems”, 2016, flexicon, https://web.archive.org/web/20160820060845/http://www.flexicon.com/Materials-Handled/Cocoa-Powder.html; previously cited) and Suntharalingam (Suntharalingam, S., Racindran, G., “Physical and biochemical properties of green banana flour”, 1993, Plant Foods for Human Nutrition, vol. 43, pages 19-27; previously cited) as applied to claim 40 above and further evidenced by Li (Li et al., “Influence of Alkalization Treatment on the Color Quality and the Total Phenolic and Anthocyanin Contents in Cocoa Powder”, 2014, Food Sci. Biotechnol., vol 23, issue 1, pages 59-63; previously cited) and Chun (Chun, K., “How (and Why) to Toast Flour”, 2011, Bon Appetit, https://www.bonappetit.com/test-kitchen/inside-our-kitchen/article/how-and-why-to-toast-flour; previously cited).
Regarding claim 47, Sunwarrior teaches the invention as described above in claim 40, including the chocolate-flavored food product contains green banana flour and cocoa powder (second and fourth bullet under list of ingredients on page 2) and that the green banana flour is roasted green banana flour (Hike, page 1, paragraphs 3-8 and 10; Salt, page 2, paragraph 3). The combination of prior art does not disclose that the roasted green banana flour has a brown color that resembles the color of the cocoa powder. However, cocoa powder does not have any standardized color as its color is determined by several factors such as its alkalization treatment as evidenced by Li (page 59, column 2, paragraphs 2-3). Also, the method of claim 40 discloses wide ranges of times and temperatures for preparing the roasted green banana flour which include the time of about 45 minutes and the temperature of about 177°C disclosed by Salt (page 2, paragraph 3). Since roasting time dictates the color of the roasted flour, as evidenced by Chun (page 3, paragraph 3), it is presumable that roasting green bananas at a temperature of 177°C for about 45 minutes will produce a flour that has a brown color that resembles a color of a cocoa powder.
Regarding claim 48, Sunwarrior teaches the invention as described above in claim 47, including the chocolate-flavored food product contains green banana flour and cocoa powder (second and fourth bullet under list of ingredients on page 2) and that the green banana flour is roasted green banana flour (Hike, page 1, paragraphs 3-8 and 10; Salt, page 2, paragraph 3). The cited prior art does not disclose that the roasted green banana flour and the cocoa powder are indistinguishable from each other according to a standardized color matching system. However, cocoa powder does not have any standardized color as its color is determined by several factors such as its alkalization treatment as evidenced by Li (page 59, column 2, paragraphs 2-3). Also, the method of claim 40 discloses wide ranges of times and temperatures for preparing the roasted green banana flour which include the time of about 45 minutes and the temperature of about 177°C disclosed by Salt (page 2, paragraph 3). Since roasting time dictates the color of the roasted flour, as evidenced by Chun (page 3, paragraph 3), it is presumable that roasting green bananas at a temperature of 177°C for about 45 minutes will produce a flour that has a color that is indistinguishable from that of a cocoa powder according to a standardized color matching system.
Claim 49 is rejected under 35 U.S.C. 103 as being unpatentable over Sunwarrior (“Banana Flour Brownies”, May 2017, Sunwarrior, https://sunwarrior.com/blogs/health-hub/banana-flour-brownies; previously cited) in in view of Hike (“Making Dehydrated Pureed Banana For the Trail”, 2014, HikeLighter.com, https://hikelighter.wordpress.com/2014/05/25/making-dehydrated-pureed-banana-for-thetrail/) and Salt (“Toasted Flour Shortbread”, 2011, Not Without Salt, http://notwithoutsalt.com/toasted-flour-shortbread/; previously cited) as evidenced by Flexicon (“Bulk Handling Equipment & Systems”, 2016, flexicon, https://web.archive.org/web/20160820060845/http://www.flexicon.com/Materials-Handled/Cocoa-Powder.html; previously cited) and Suntharalingam (Suntharalingam, S., Racindran, G., “Physical and biochemical properties of green banana flour”, 1993, Plant Foods for Human Nutrition, vol. 43, pages 19-27; previously cited) as applied to claim 40 above, and further evidenced by De Rivas (US 2019/0000121; previously cited) and Alfaro (Alfaro, D., “What is Cocoa Powder?, 2022, The Spruce Eats, https://www.thespruceeats.com/what-is-cocoa-powder-520351; previously cited).
Regarding claim 49, Sunwarrior teaches the invention as described above in claim 40, including that unhealthy ingredients can be switched out and replaced with whole foods (page 1, paragraph 1). Sunwarrior also lists the health benefits associated with green banana flour (page 1, paragraphs 2-3), which at least suggests that the green banana flour is considered to be the “whole food” replacement for unhealthy ingredients in the brownies. Cocoa ingredients in a chocolate product contain high levels of fat [0011] and fat accumulation in the body leads to obesity and coronary disease [0010] as evidenced by De Rivas. Since Sunwarrior at least suggests that the green banana flour replaces unhealthy ingredients in a brownie and cocoa powder contains fat as evidenced by Alfaro (page 1, second paragraph under “Cocoa powder vs. Chocolate”), which leads to obesity and coronary disease (De Rivas [0010]), a skilled practitioner would readily recognize that green banana flour is a suitable replacement for cocoa ingredients such as the cocoa powder in the brownie of Sunwarrior, especially since cocoa powder contains fat as evidenced by Alfaro (page 1, second paragraph under “Cocoa powder vs. Chocolate”). Therefore, the replacement of at least a portion of the cocoa powder in a formula for a chocolate-flavored food product is rendered obvious, which includes an equal amount replacement as claimed, especially wherein the banana flour and cocoa powder are in a mass ratio in the chocolate-flavored food product of the prior art which falls within the range recited by claim 40.
Claims 51 and 53 are rejected under 35 U.S.C. 103 as being unpatentable over Sunwarrior (“Banana Flour Brownies”, May 2017, Sunwarrior, https://sunwarrior.com/blogs/health-hub/banana-flour-brownies; previously cited) in view of Han (US 2013/0156893; IDS citation) and Salt (“Toasted Flour Shortbread”, 2011, Not Without Salt, http://notwithoutsalt.com/toasted-flour-shortbread/; previously cited) as evidenced by Flexicon (“Bulk Handling Equipment & Systems”, 2016, flexicon, https://web.archive.org/web/20160820060845/http://www.flexicon.com/Materials-Handled/Cocoa-Powder.html; previously cited), Suntharalingam (Suntharalingam, S., Racindran, G., “Physical and biochemical properties of green banana flour”, 1993, Plant Foods for Human Nutrition, vol. 43, pages 19-27; previously cited), De Rivas (US 2019/0000121; previously cited), and Alfaro (Alfaro, D., “What is Cocoa Powder?, 2022, The Spruce Eats, https://www.thespruceeats.com/what-is-cocoa-powder-520351; previously cited).
Regarding claim 51, Sunwarrior teaches a chocolate-flavored food product (corresponding to brownie on page 1, paragraph 2) comprising ¼ cup green banana flour and ¼ cup cocoa powder (second and fourth bullet under list of ingredients on page 2). These volumetric measurements translate to 29.6 g banana flour (since banana flour has an average density of 0.5 g/ml as evidenced by Table 2 on page 22 of Suntharalingam) and 33.1 g cocoa powder (since cocoa powder has an average density of 35 lbs. per cubic foot as evidenced by column 2, paragraph 2 of Flexicon) for a combined total mass of green banana flour and cocoa powder of 62.7 g. Banana flour has a mass of 42% of the combined total mass, which falls within the claimed range.
Sunwarrior teaches that the banana flour is added with a cocoa powder and other ingredients for preparing the chocolate-flavored product (page 2, steps listed under “Directions”). Sunwarrior also teaches that unhealthy ingredients can be switched out and replaced with whole foods (page 1, paragraph 1). Sunwarrior lists the health benefits associated with green banana flour (page 1, paragraphs 2-3), which at least suggests that the green banana flour is considered to be the “whole food” replacement for unhealthy ingredients in the brownies. Cocoa ingredients in a chocolate product contain high levels of fat [0011] and fat accumulation in the body leads to obesity and coronary disease [0010] as evidenced by De Rivas. Since Sunwarrior at least suggests that the green banana flour replaces unhealthy ingredients in a brownie and cocoa powder contains fat as evidenced by Alfaro (page 1, second paragraph under “Cocoa powder vs. Chocolate”), which leads to obesity and coronary disease (De Rivas [0010]), a skilled practitioner would readily recognize that green banana flour is a suitable replacement for cocoa ingredients such as the cocoa powder in the brownie of Sunwarrior, especially since cocoa powder contains fat as evidenced by Alfaro (page 1, second paragraph under “Cocoa powder vs. Chocolate”). Therefore, the replacement of at least a portion of the cocoa powder in a formula for a chocolate-flavored food product is rendered obvious, especially wherein the banana flour in the chocolate-flavored food product of the prior art comprises an amount of the combined total mass of cocoa powder and banana flour which falls within the claimed range.
Sunwarrior teaches that the green banana flour is a flour gluten substitute in its brownie (page 1, paragraphs 1-2 under picture). Sunwarrior does not teach that the banana flour is produced by the method recited in claim 51; or that the banana flour is subsequently roasted at a temperature of 128-264°C for 8-144 minutes to comprise a sensory attribute of a cocoa aroma.
However, Han teaches a banana flour (corresponding to banana powder) [0007] as a gluten substitute in baked products [0100]. Han teaches that the flour is prepared by subjecting an unpeeled green banana to a heat treatment, peeling the heat-treated green banana, comminuting the heat-treated peeled banana into a puree, and drying the puree into a green banana flour (corresponding to banana powder) [0009].
It would have been obvious for a person of ordinary skill in the art to have modified the method of Sunwarrior by using green banana flour as taught by Han. Since Sunwarrior teaches that its baked product comprises green banana flour, but does not disclose a method of making a green banana flour, a skilled practitioner would have been motivated to consult an additional reference such as Han in order to determine a suitable method of producing a green banana flour that is suitable as a flour gluten substitute in baked goods. Therefore, the claimed process of producing the green banana flour is rendered obvious.
The combination of Sunwarrior and Han does not teach that the banana flour is subsequently roasted at a temperature of 128-264°C for 8-144 minutes to comprise a sensory attribute of a cocoa aroma.
However, Salt teaches roasting (corresponding to toasting) flour prior to using the flour in baked goods to provide deeper flavor to the baked goods (page 1, paragraph 3-page 2, paragraph 2). Salt teaches roasting the flour at about 177°C (corresponding to 350°F) for about 45 minutes (page 2, paragraph 3), which falls within the claimed temperature and time.
It would have been obvious for a person of ordinary skill in the art to have modified the method of modified Sunwarrior by roasting the green banana flour as taught by Salt. Since Sunwarrior teaches the incorporation of green banana flour in its brownie composition; Han teaches a green banana flour; and Salt teaches roasting flour prior to using the flour in baked goods to provide deeper flavor to the baked goods, a skilled practitioner would have been motivated to roast the banana flour of Han to improve the taste of the banana flour and thus improve the taste of the chocolate-flavored food product of Sunwarrior in which the roasted green banana flour is used. Therefore, the claimed roasting time and temperature are rendered obvious. Furthermore, since the prior art teaches that the flour is roasted using a time and a temperature which fall within the claimed ranges, it would have been obvious for the roasted flour to have a toasted flavor and/or toasted odor which are considered to be sensory attributes of a cocoa aroma as presently claimed.
Regarding claim 53, modified Sunwarrior teaches the invention as described above in claim 51, including the roasted green banana flour is produced by gelatinizing the green bananas (Han [0085]). Therefore, the roasted green banana flour is pre-gelatinized.
Claims 51 and 52 are rejected under 35 U.S.C. 103 as being unpatentable over Sunwarrior (“Banana Flour Brownies”, May 2017, Sunwarrior, https://sunwarrior.com/blogs/health-hub/banana-flour-brownies; previously cited) in view of Hike (“Making Dehydrated Pureed Banana For the Trail”, 2014, HikeLighter.com, https://hikelighter.wordpress.com/2014/05/25/
making-dehydrated-pureed-banana-for-thetrail/) and Salt (“Toasted Flour Shortbread”, 2011, Not Without Salt, http://notwithoutsalt.com/toasted-flour-shortbread/; previously cited) as evidenced by Flexicon (“Bulk Handling Equipment & Systems”, 2016, flexicon, https://web.archive.org/web/20160820060845/http://www.flexicon.com/Materials-Handled/Cocoa-Powder.html; previously cited), Suntharalingam (Suntharalingam, S., Racindran, G., “Physical and biochemical properties of green banana flour”, 1993, Plant Foods for Human Nutrition, vol. 43, pages 19-27; previously cited), De Rivas (US 2019/0000121; previously cited), and Alfaro (Alfaro, D., “What is Cocoa Powder?, 2022, The Spruce Eats, https://www.thespruceeats.com/what-is-cocoa-powder-520351; previously cited).
Regarding claim 51, Sunwarrior teaches a chocolate-flavored food product (corresponding to brownie on page 1, paragraph 2) comprising ¼ cup green banana flour and ¼ cup cocoa powder (second and fourth bullets under list of ingredients on page 2). These volumetric measurements translate to 29.6 g banana flour (since banana flour has an average density of 0.5 g/ml as evidenced by Table 2 on page 22 of Suntharalingam) and 33.1 g cocoa powder (since cocoa powder has an average density of 35 lbs. per cubic foot as evidenced by column 2, paragraph 2 of Flexicon) for a combined total mass of green banana flour and cocoa powder of 62.7 g. The banana flour has a mass of 42% of this combined total mass, which falls within the claimed range.
Sunwarrior teaches that the banana flour is added with a cocoa powder and other ingredients for preparing the chocolate-flavored product (page 2, steps listed under “Directions”). Sunwarrior also teaches that unhealthy ingredients can be switched out and replaced with whole foods (page 1, paragraph 1). Sunwarrior lists the health benefits associated with green banana flour (page 1, paragraphs 2-3), which at least suggests that the green banana flour is considered to be the “whole food” replacement for unhealthy ingredients in the brownies. Cocoa ingredients in a chocolate product contain high levels of fat [0011] and fat accumulation in the body leads to obesity and coronary disease [0010] as evidenced by De Rivas. Since Sunwarrior at least suggests that the green banana flour replaces unhealthy ingredients in a brownie and cocoa powder contains fat as evidenced by Alfaro (page 1, second paragraph under “Cocoa powder vs. Chocolate”), which leads to obesity and coronary disease (De Rivas [0010]), a skilled practitioner would readily recognize that green banana flour is a suitable replacement for cocoa ingredients such as the cocoa powder in the brownie of Sunwarrior, especially since cocoa powder contains fat as evidenced by Alfaro (page 1, second paragraph under “Cocoa powder vs. Chocolate”). Therefore, the replacement of at least a portion of the cocoa powder in a formula for a chocolate-flavored food product is rendered obvious, especially wherein the banana flour in the chocolate-flavored food product of the prior art comprises an amount of the combined total mass of cocoa powder and banana flour which falls within the claimed range.
Sunwarrior teaches that the green banana flour is a flour gluten substitute in its brownie (page 1, paragraphs 1-2 under picture). Sunwarrior does not teach that the banana flour is produced by the method recited in claim 51; or that the banana flour is subsequently roasted at a temperature of 128-264°C for 8-144 minutes to comprise a sensory attribute of a cocoa aroma.
However, Hike teaches a green banana flour (corresponding to banana powder made from green bananas) as an ingredient in baked products (page 1, paragraph beginning “I started with”; page 14, picture and paragraph beginning “With it being ground up”). Hike teaches that the flour is prepared by peeling green bananas, mashing the peeled bananas into a slurry (corresponding to pureeing them in a Nutribullet), and drying the puree into a green banana flour (page 1, paragraphs 3-8 and 10).
It would have been obvious for a person of ordinary skill in the art to have modified the method of Sunwarrior by using roasted green banana flour as taught by Hike. Since Sunwarrior teaches that its baked product comprises green banana flour, but does not disclose a method of making a green banana flour, a skilled practitioner would have been motivated to consult an additional reference such as Hike in order to determine a suitable method of producing a green banana flour that is suitable as an ingredient in baked goods. Therefore, the claimed process of producing the green banana flour is rendered obvious.
The combination of Sunwarrior and Han does not teach that the banana flour is subsequently roasted at a temperature of 128-264°C for 8-144 minutes to comprise a sensory attribute of a cocoa aroma.
However, Salt teaches roasting (corresponding to toasting) flour prior to using the flour in baked goods to provide deeper flavor to the baked goods (page 1, paragraph 3-page 2, paragraph 2). Salt teaches roasting the flour at about 177°C (corresponding to 350°F) for about 45 minutes (page 2, paragraph 3), which falls within the claimed temperature and time.
It would have been obvious for a person of ordinary skill in the art to have modified the method of modified Sunwarrior by roasting the green banana flour as taught by Salt. Since Sunwarrior teaches the incorporation of green banana flour in its brownie composition; Han teaches a green banana flour; and Salt teaches roasting flour prior to using the flour in baked goods to provide deeper flavor to the baked goods, a skilled practitioner would have been motivated to roast the banana flour of Han to improve the taste of the banana flour and thus improve the taste of the chocolate-flavored food product of Sunwarrior in which the roasted green banana flour is used. Therefore, the claimed roasting time and temperature are rendered obvious. Furthermore, since the prior art teaches that the flour is roasted using a time and temperature which fall within the claimed ranges, it would have been obvious for the roasted flour to have a toasted flavor and/or toasted odor which are considered to be sensory attributes of a cocoa aroma as presently claimed.
Regarding claim 52, modified Sunwarrior teaches the invention as described above in claim 51, including the banana flour is prepared by peeling green bananas, mashing the peeled bananas into a slurry, and drying the puree into a green banana flour (Hike, page 1, paragraphs 3-8 and 10). Since the cited prior art does not disclose a heating/cooking step, the green banana flour is made from a native green banana flour.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 40, 43-46, and 50-53 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-12, 14-17, and 21-23 of U.S. Patent No. 11,259,551. Although the claims at issue are not identical, they are not patentably distinct from each other because patented claims 5-9 and 14 require features of instant claims 40, 43, 50, and 51; patented claims 10 and 15 require features of instant claim 44; patented claims 11 and 16 require features of instant claims 45 and 52; and patented claims 12 and 17 require features of instant claims 46 and 53.
Response to Arguments
Claim Rejections – 35 U.S.C. §103 of claims 40-41, 43, and 45 over Sunwarrior, Hike, and Salt as evidenced by Flexicon and Suntharalingam: Applicant’s arguments have been fully considered and are considered unpersuasive.
Applicant argued that Hike fails to disclose using a banana powder in a baked product and thus does not direct to the use of banana flour as a suitable ingredient for a baked product (Applicant’s Remarks, page 5, 1st paragraph under section 1 – page 6, 1st paragraph).
However, Hike states “just take a spoonful out of the bag and throw it into your smoothie, oatmeal, or if you are a […] baker this would make one really awesome backcountry banana bread” under the photo on page 14. Banana bread is a baked good. Therefore, Hike discloses the use of banana powder in a baked product.
Applicant argued that a skilled practitioner would understand that Salt was referring to wheat flour in its disclosure so that the practitioner would have no reasonable expectation of success in toasting a flour made from a fruit such as the green banana flour in the present claims. Applicant argued that relying upon Salt in the rejection is inviting the practitioner to experiment as Salt does not provide any indication that toasting flour made from fruit would provide the same results as toasting flour made from grain. Applicant argued that a skilled practitioner would not think to toast the banana flour of Sunwarrior using the method of Salt as doing so may result in a green banana flour that does not have the neutral taste required by Sunwarrior. Applicant stated that relying on hope is not sufficient to make a case of prima facie obviousness and that relying on the results in the present disclosure is impermissible hindsight (Applicant’s Remarks, page 6, 2nd paragraph – page 7, 2nd paragraph).
However, there is nothing in Salt that would suggest that the method of Salt would apply only to wheat flour as asserted by Applicant, especially wherein Salt discloses using other browned substances to obtain “another layer of flavor by adding a toasted, caramel, nutty quality” such as browned butter, caramel, and puff pastry (page 1, 1st – 3rd paragraphs). Similarly, there is nothing in Sunwarrior that would suggest that the banana flour is required to have a neutral taste as Sunwarrior merely states “When blended with other ingredients, the flour has a very neutral taste” (page 1, 2nd paragraph under photo). From this statement in Sunwarrior, “a very neutral taste” is not explicitly regarded as a positive or negative attribute of the banana flour; or regarded as a requirement for the banana flour by Sunwarrior.
Furthermore, it is known in the art to toast flours made from other substances besides wheat grain for the same goal of obtaining a deeper color and aroma, such as almond flour as evidenced by Cultured (1st paragraph under “Blueberry & Toasted Almond Salad”) (“More Flavor, Less Cost: DIY Almond Flour”, 2015, The Cultured Cook, https://web.archive.org/web/20150926053033/http://theculturedcook.com/2014/06/more-flavor-less-cost-diy-almond-flour/; previously cited). It is also known in the art to toast fruits for the same purpose as toasting wheat grain which is to obtain a deeper color and flavor such as peppers as evidenced by Carolina (“How to Toast (Dry Roast” Dried Peppers”, 2013, The Carolina Sauce Company, https://carolinasaucecompany.blogspot.com/2013/01/how-to-toast-dry-roast-dried-peppers.html; previously cited). Therefore, Salt and the knowledge in the field of the art at the time of filing of the present application would lead a skilled practitioner to toast a flour made from fruit such as green banana in order to obtain a deeper color and flavor as described in the present claim rejections.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
For these reasons, Applicant’s arguments have been shown to be unpersuasive and the rejections of the claims are maintained as written herein.
Claim Rejections – 35 U.S.C. §103 of claims 40, 44, 46, and 50 over Sunwarrior, Han, and Salt as evidenced by Flexicon and Suntharalingam: Applicant’s arguments have been fully considered and are considered unpersuasive.
Applicant argued that Han and the other cited references fail to teach roasting the banana flour resulting from the preparation method of Han. Applicant argued that the heat treatment method in Han is for roasting whole unpeeled green bananas and not for roasting green banana flour (Applicant’s Remarks, page 7, 1st under section 2 – page 8, 2nd paragraph).
However, as described above in the rejection of claim 40, Salt teaches roasting flour prior to using the flour in baked goods to provide deeper flavor to the baked goods (page 1, paragraph 3-page 2, paragraph 2), wherein the flour is roasted at about 177°C (corresponding to 350°F) for about 45 minutes (page 2, paragraph 3), which falls within the claimed temperature and time ranges. Since Sunwarrior teaches the incorporation of green banana flour in its brownie composition; Han teaches a green banana flour; and Salt teaches roasting flour prior to using the flour in baked goods to provide deeper flavor to the baked goods, a skilled practitioner would have been motivated to roast the banana flour of Han to improve the taste of the banana flour and thus improve the taste of the chocolate-flavored food product of Sunwarrior in which the roasted green banana flour is used.
Applicant argued that a skilled practitioner would understand that Salt was referring to wheat flour in its disclosure so that the practitioner would have no reasonable expectation of success in toasting a flour made from a fruit such as the green banana flour in the present claims. Applicant argued that relying upon Salt in the rejection is inviting the practitioner to experiment as Salt does not provide any indication that toasting flour made from fruit would provide the same results as toasting flour made from grain. Applicant argued that a skilled practitioner would not think to toast the banana flour of Sunwarrior using the method of Salt as doing so may result in a green banana flour that does not have the neutral taste required by Sunwarrior. Applicant stated that relying on hope is not sufficient to make a case of prima facie obviousness and that relying on the results in the present disclosure is impermissible hindsight (Applicant’s Remarks, page 8, 3rd paragraph – page 9, 3rd paragraph).
However, there is nothing in Salt that would suggest that the method of Salt would apply only to wheat flour as asserted by Applicant, especially wherein Salt discloses using other browned substances to obtain “another layer of flavor by adding a toasted, caramel, nutty quality” such as browned butter, caramel, and puff pastry (page 1, 1st – 3rd paragraphs). Similarly, there is nothing in Sunwarrior that would suggest that the banana flour is required to have a neutral taste as Sunwarrior merely states “When blended with other ingredients, the flour has a very neutral taste” (page 1, 2nd paragraph under photo). From this statement in Sunwarrior, “a very neutral taste” is not regarded as a positive or negative attribute of the banana flour by Sunwarrior.
Furthermore, it is known in the art to toast flours made from other substances besides wheat grain for the same goal of obtaining a deeper color and aroma, such as almond flour as evidenced by Cultured (1st paragraph under “Blueberry & Toasted Almond Salad”) (“More Flavor, Less Cost: DIY Almond Flour”, 2015, The Cultured Cook, https://web.archive.org/web/20150926053033/http://theculturedcook.com/2014/06/more-flavor-less-cost-diy-almond-flour/; previous cited). It is also known in the art to toast fruits for the same purpose as toasting wheat grain which is to obtain a deeper color and flavor such as peppers as evidenced by Carolina (“How to Toast (Dry Roast” Dried Peppers”, 2013, The Carolina Sauce Company, https://carolinasaucecompany.blogspot.com/2013/01/how-to-toast-dry-roast-dried-peppers.html; previous cited). Therefore, Salt and the knowledge in the field of the art at the time of filing of the present application would lead a skilled practitioner to toast a flour made from fruit such as green banana in order to obtain a deeper color and flavor as described in the present claim rejections.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant then argued that the sequence of steps as recited by present claim 50 result in a roasted green banana flour that has the sensory attributes to make the flour suitable as a cocoa powder replacement. Applicant argued that neither Han not Salt are enabling for teaching the claimed limitation of “roasting the green banana flour until the roasted green banana flour comprises a sensory attribute of a cocoa aroma” as the heat treatment disclosed in Han is for reducing moisture in the banana pulp into a powder; and there are no conditions described in Salt from which a skilled practitioner would think it possible to achieve a roasted green banana flour with “a sensory attribute of a cocoa aroma” (Applicant’s Remarks, page 9, 4th paragraph – page 10, 3rd paragraph).
However, as described above in the rejection of claim 50, Han teaches the method further comprising: subjecting an unpeeled green banana to a heat treatment, peeling the heat-treated green banana, comminuting the heat-treated peeled banana into a slurry (corresponding to puree), and drying the slurry into a banana flour (corresponding to banana powder) [0009]. Salt teaches that the banana flour is subsequently roasted prior to using the flour in baked goods to provide deeper flavor to the baked goods (page 1, paragraph 3-page 2, paragraph 2). Salt teaches roasting the flour at about 177°C (corresponding to 350°F) for about 45 minutes (page 2, paragraph 3), which falls within the claimed temperature and time recited in present claim 40. Since the prior art teaches that the flour is roasted at the claimed time and temperature, it would have been obvious for the roasted flour to have a toasted flavor and/or toasted odor which are considered to be sensory attributes of a cocoa aroma as recited by present claim 50.
For these reasons, Applicant’s arguments have been shown to be unpersuasive and the rejections of the claims are maintained as written herein.
Claim Rejections – 35 U.S.C. §103 of claim 42 over Sunwarrior, Han, Salt, and Chanelle as evidenced by Flexicon and Suntharalingam; claims 47-48 over Sunwarrior, Hike, and Salt as evidenced by Flexicon, Suntharalingam, Li, and Chun; claim 49 over Sunwarrior, Hike, and Salt as evidenced by Flexicon, Suntharalingam, De Rivas, and Alfaro; claims 51 and 53 over Sunwarrior, Han and Salt as evidenced by Flexicon, Suntharalingam, De Rivas, and Alfaro; claims 51-52 over Sunwarrior, Hike, and Salt as evidenced by Flexicon, Suntharalingam, De Rivas, and Alfaro: Applicant’s arguments have been fully considered and are considered unpersuasive.
Applicant argued that the rejections of the claims should be withdrawn for all the reasons noted in regard to claim 40 (Applicant’s Remarks, page 10, paragraph under section 3 – page 12, 2nd paragraph under section 7).
However, the rejection of claim 40 is maintained for the reasons provided above in the rejections and in the Examiner’s responses to Applicant’s arguments. Therefore, the rejections of claims 42, 47-49, and 51-53 are maintained as written herein.
Double Patenting: Applicant will respond to the rejection at such a time that allowable subject matter has been identified (Applicant’s Remarks, page 12, section labeled “Double Patenting”).
The rejection is maintained as written herein.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/KELLY P KERSHAW/Examiner, Art Unit 1791