DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-27 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 21 recites “a particle size of less than 30 µm”. However, the application only discloses that: “It is conventionally recognized in the chocolate industry that a size of less than 60 µm, more preferentially less than 30 µm, contributes to the elimination of the gritty sensation” (page 9, lines 14-18). The application fails to positively disclose that the product of the invention also possessed the claimed particle size.
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.
Claims 21-27 are rejected under 35 U.S.C. 103 as being unpatentable over Choromanski et al [US 2012/0294986A1] in view of Rumbaut et al [US 2010/0196574A1], Luccas et al [US 2009/0311409A1], and Applicant’s Admitted Prior Art (page 9, lines 14-18).
Choromanski et al teach confectionary products with pea protein (title) comprising a milk chocolate or white chocolate product (paragraph 0019, 0030), the product containing 0.5-30% pea proteins (paragraph 0015; claim 1), a particle size of 10-500 µm (paragraph 0081), the optional use of 0-30% milk proteins (paragraph 0091, 0093), a chocolate example having 11% pea protein, 24% cocoa butter, and a Casson viscosity of 0.7 Pa*s (page 8, Table 6, paragraph 0165), the replacement of milk proteins with pea proteins NOT significantly altering the rheological behavior such as viscosity of Casson’s model (paragraph 0057), the test chocolate having a higher protein content than the control chocolate (paragraph 0176), a trained panel being unable to tell the difference between traditional milk chocolate and the chocolate using pea protein in a blind triangular test with trained panelists (paragraph 0174), an emulsifier in the form of lecithin (page 8, Table 5)
Choromanski et al do not explicitly recite an example possessing both a particle size less than 30 µm and a Casson viscosity of less than 6 Pa*s (claim 21), or 1-6 Pa*s (claim 22), 3-6 Pa*s (claim 26).
Rumbaut et al teach a chocolate product (abstract) possessing a Casson viscosity of 500-4500 mPa*s or 0.5-4.5 Pa*s, and more preferably 1500-3500 mPa*s or 1.5-3.5 Pa*s (paragraph 0029) and a particle size of 15- 25µm (paragraph 0020).
Luccas et al teach a chocolate composition comprising cocoa and proteinaceous fat-substitute (abstract; paragraph 0031), the composition including 25-40% cocoa, 2-10% fat-substitute protein, and 10-30% milk (paragraph 0056); a Casson viscosity of 4-11 Pa*s (paragraph 0073), and a particle size of 20-25 µm (paragraph 0071).
Applicant’s Admitted Prior Art (AAPA) teaches “It is conventionally recognized in the chocolate industry that a size of less than 60 µm, more preferentially less than 30 µm, contributes to the elimination of the gritty sensation” (page 9, lines 14-18).
It would have been obvious to one of ordinary skill in the art to incorporate the claimed Casson viscosity levels into the invention of Choromanski et al, in view of Rumbaut et al and Luccas et al, since all are directed to chocolate products, since Choromanski et al already included a chocolate example having 11% pea protein and a Casson viscosity of 0.7 Pa*s (page 8, Table 6, paragraph 0165) but simply did not mention any further values for Casson viscosity for other protein amounts, since chocolate products with increased protein levels commonly possessed a Casson viscosity of 4-11 Pa*s as shown by Luccas et al, since chocolate products commonly possessed a Casson viscosity of 500-4500 mPa*s or 0.5-4.5 Pa*s, and more preferably 1500-3500 mPa*s or 1.5-3.5 Pa*s (paragraph 0029) as shown by Rumbaut et al, since Choromanski et al also disclosed the replacement of milk proteins with pea proteins NOT significantly altering the rheological behavior such as viscosity of Casson’s model (paragraph 0057), and since the claimed Casson viscosity values would have been used during the course of normal experimentation and optimization procedures due to factors such as the desired end use of the chocolate product, the desired type of chocolate product, and/or the desired final texture and taste qualities of the chocolate product of Choromanski et al, in view of Luccas et al and Rumbaut et al.
It further would have been obvious to one of ordinary skill in the art to incorporate the claimed particle size into the invention of Choromanski et al, in view of Luccas et al, Rumbaut et al, and AAPA; since all are directed to chocolate products, since Choromanski et al already included a broad particle size range of 10-500 µm (paragraph 0081), since chocolate products commonly possessed a particle size of 15- 25µm (paragraph 0020) as shown by Rumbaut et al, since chocolate products commonly possessed a particle size of 20-25 µm (paragraph 0071) as shown by Luccas et al, since “It is conventionally recognized in the chocolate industry that a size of less than 60 µm, more preferentially less than 30 µm, contributes to the elimination of the gritty sensation” (page 9, lines 14-18) as shown by AAPA, since a taste and texture similar to conventional chocolate was the end goal of Choromanski et al, and since using a small aprticle size would have resulted in a texture and taste profile which more closely matched conventional chocolate in the invention of Choromanski et al, in view of Luccas et al, Rumbaut et al, and AAPA.
In conclusion, all of the claimed elements/features were known in the prior art and one skilled in the art could have combined the elements/features as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art.
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 21-27 (particularly claim 21) are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 (particularly claim 15) of copending Application No. 19/134,577 in view of Rumbaut et al, Luccas et al, and AAPA.
The ‘577 application also claims a composition with 5-75% cocoa and 1-30% legume protein (claim 1), and a Casson viscosity of 1-6 Pa*s (claim 15). The ‘577 application does not claim a particle size of less than 30 µm (claim 1 of present application).
Rumbaut et, Luccas et al, and AAPA teach the above mentioned concepts and components.
It further would have been obvious to one of ordinary skill in the art to incorporate the claimed particle size into the invention of ‘577, in view of Luccas et al, Rumbaut et al, and AAPA; since all are directed to chocolate products, since ‘577 already included cocoa and legume protein but simply did not mention a particle size, since chocolate products commonly possessed a particle size of 15- 25µm (paragraph 0020) as shown by Rumbaut et al, since chocolate products commonly possessed a particle size of 20-25 µm (paragraph 0071) as shown by Luccas et al, since “It is conventionally recognized in the chocolate industry that a size of less than 60 µm, more preferentially less than 30 µm, contributes to the elimination of the gritty sensation” (page 9, lines 14-18) as shown by AAPA, and since the claimed particle size would have been used during the course of normal experimentation and optimization procedures due to factors such as the desired texture, taste, and/or flavor properties of the final product of ‘577, in view of Luccas et al, Rumbaut et al, and AAPA.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 6/8/26 have been fully considered but they are not persuasive.
Applicant argues that the references do not disclose the claimed particle size. However, it would have been obvious to one of ordinary skill in the art to incorporate the claimed particle size into the invention of Choromanski et al, in view of Luccas et al, Rumbaut et al, and AAPA; since all are directed to chocolate products, since Choromanski et al already included a broad particle range of 10-500 µm (paragraph 0081), since chocolate products commonly possessed a particle size of 15- 25µm (paragraph 0020) as shown by Rumbaut et al, since chocolate products commonly possessed a particle size of 20-25 µm (paragraph 0071) as shown by Luccas et al, since “It is conventionally recognized in the chocolate industry that a size of less than 60 µm, more preferentially less than 30 µm, contributes to the elimination of the gritty sensation” (page 9, lines 14-18) as shown by AAPA, and since a tase and texture similar to conventional chocolate was the end goal of Choromanski et al.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
The declaration under 37 CFR 1.132 filed 6/8/26 is insufficient to overcome the rejection of claims 21-27 based upon Choromanski et al, in view of Rumbaut et al, Luccas et al, and AAPA; as set forth in the Office action because: the present claim includes a protein range of 25-40%, while Choromanski et al disclosed a protein range of 0.5-30% protein, as well as an example using 11% protein which was not gritty or pasty. The declaration only considers an instance of Choromanski et al using 30% protein, and does not consider or test an instance with 25% protein. The submitted declarations fail to show that a protein level of 25% in Choromansky et al would not provide the claimed Casson viscosity. Furthermore, the tested example of the declaration of 1/23/62 used a particle size of 38 µm, which is outside the claimed range. Choromanski et al disclosed a particle size range of 10-500 µm. A more appropriate comparison would have included a particle size within the range of both Choromansky et al and the claims (ie 10-30 µm). Regardless, the present rejection is based upon the combined teachings and suggestion of Choromansky et al, in view of Rumbaut et al, Luccas et al, and AAPA; rather than Choromansky et al alone. It would have been obvious to one of ordinary skill in the art that a smaller particle size would have enabled better texture properties in chocolate products as shown by Rumbaut et al, Luccas et al, and AAPA above.
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 DREW E BECKER whose telephone number is (571)272-1396. The examiner can normally be reached 8am-5pm Monday-Friday.
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/DREW E BECKER/Primary Examiner, Art Unit 1792
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