DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/18/2026 has been entered.
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.
Claims 13-14, and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Deya EP 0458358A1 in view of Knights US 2013/0011515 in view of Lecollier WO 2019/130264 in view of St John et al. US 5,464,649 in view of Brog US 4,397,927 in view of Glazier US 2015/0237881 in view of Ashitani US 2019/0223464.
Regarding claim 13, Deya discloses a process for preparing a food comprising the steps of (a) providing a milk substrate (concentrated skim milk) comprising protein and a total solids content of 43% (b) treating the milk substrate with an enzyme having transglycosylation activity (beta-galactosidase) (Pg. 4, Example) to provide a milk product comprising a carbohydrate mixture. Deya discloses that the carbohydrate mixture comprises galactooligosaccharides in an amount of 5wt% or more, or about 5-15% (Pg. 3, lines 2-5, Pg. 4, lines 6-9), overlapping the claimed range. It is noted that Knights provides evidence that skim milk comprises protein ([0045], Table 1).
Claim 13 differs from Deya in the recitation that the carbohydrate mixture specifically has at most 30wt% lactose. However, Deya provides an example carbohydrate mixture that contains 33.8wt% lactose, which is merely close to the claimed at most 30wt% lactose (MPEP 2144.05).
Claim 13 differs from Deya in the recitation that that the food is a confectionery material comprising 1wt-32.5wt% of non-carbohydrate milk solids.
Lecollier discloses a process for preparing a confectionery material (chocolate) ([0054], [0064], [0065]) comprising: (a) providing a milk substrate comprising a total solids between 40wt% and 75wt% ([0025], claim 24) and (b) treating the milk substrate with an enzyme having transglycosylation activity in a solution (beta-galactosidase) ([0027]). Lecollier discloses that the product obtained by treating a milk substate with an enzyme can be used in confectionery products such as chocolate (‘264, [0064], [0065]).
It is noted that Deya discloses that the product obtained by the invention of Deya can be used in foods in general (see Pg. 2, lines 3-5, Pg. 4, Example, lines 49-50).
It would have been obvious to one of ordinary skill in the art to add the product of Deya to chocolate as taught by Lecollier, in order to enhance a chocolate with the composition of Deya, since Deya teaches that the composition can be used with any food and since Lecollier recognizes a similar type of product to Deya can be utilized as an ingredient in chocolate, thereby combining prior art elements (the composition of Deya and chocolate) according to known methods to yield the predictable results of providing a chocolate enhanced with the composition of Deya. It has been held that “Combining prior art elements according to known methods to yield predictable results” supports a conclusion of obviousness (MPEP 2141.III.A). Additionally, the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (MPEP 2144.07).
Claim 13 differs from Deya in view of Lecollier in the recitation that the confectionery material (chocolate) specifically comprises 1wt-32.5wt% of non-carbohydrate milk solids.
St. John discloses a confectionery material (milk chocolate) comprising 3.39-7% milkfat and 12-20% milk solids non-fat (col. 13, lines 49-56).
Brog discloses that the main essential ingredients of nonfat milk solids include carbohydrates (e.g., lactose), protein, fat and minerals. Brog discloses that non-fat solids contain from 50-55% carbohydrates, chiefly as lactose, 30-38% protein, 0.5-1.5% fat and 6-10% minerals (col. 6, lines 6-17).
Thus, in light of the teaching of Brog that carbohydrates are 50% of the milk solids non-fat, the confectionery material (milk chocolate) of St John comprises 6% non-carbohydrate milk solids non-fat – 10% non-carbohydrate milk solids non-fat (50% of 12% = 6% and 50% of 20% = 10%) and 3.39%-7% milkfat. Therefore, the confectionery material (milk chocolate) of St. John in view of Brog comprises 9.39%-17% non-carbohydrate milk solids. Thus, the prior art as a whole recognizes that a conventional milk chocolate composition comprises 9.39%-17% non-carbohydrate milk solids. It is noted that Lecollier teaches that the confectionery material can be a chocolate in general, and therefore the particular chocolate composition is not limited (‘264, [0064], [0065]).
It would have been obvious to one of ordinary skill in the art to modify the confectionery material (chocolate) of Deya in view of Lecollier to comprise 9.39%-17% non-carbohydrate milk solids as taught by St John in view of Brog in order to provide a milk chocolate composition having conventional amounts of non-carbohydrate milk solids. It has been held that “Combining prior art elements according to known methods to yield predictable results” supports a conclusion of obviousness (MPEP 2143.A).
Claim 1 differs from Modified Deya in the recitation that the carbohydrate mixture is present in an amount greater than 0% and less than 35wt% of the confectionery material. However, given that the carbohydrate mixture obviously provides taste and nutritional benefit to the confectionery material, it would have been obvious to one of ordinary skill in the art to routinely adjust the amount of carbohydrate mixture added to the based on the desired taste and nutrition of the confectionery material.
In any case, it is noted that the carbohydrate mixture of Deya is a skim milk powder, and Glazier recognizes that skim milk powder can be utilized to make a chocolate, and that skim milk powder can be added in an amount such as 13.34wt% (17.26wt% of 77.33wt%) (See [0138], Table 4, table 5). Therefore, it would have been obvious to one of ordinary skill in the art to utilize the carbohydrate mixture of Deya in an amount such as 13.34wt% in a chocolate as suggested by Glazier.
Additionally, Attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in the fact situation of the instant case, and wherein the Court stated on page 234 as follows:
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected, and useful function. In re Benjamin D. White, 17 C.C.P.A (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
It is additionally noted that Ashitani discloses providing chocolate having milk powder with 0-10% galactooligosaccharide ([0033]-[0035]). Therefore, one of ordinary skill in the art would have had a reasonable expectation of success in utilizing the carbohydrate mixture of Deya in an amount such as 13.34wt% as suggested by Glazier in a chocolate.
Regarding claim 14, Modified Deya discloses that the solution prepared is dried to provide a solid (the resulting reaction mixture was powderized using a spray dryer) for combination with other ingredients of the confectionery material to form the confectionery material (the obtained skim milk powder can be used as a material for food) (Deya, Pg. 4 Example) (‘264, [0064], [0065]).
Regarding claims 16, claim 16 differs from Deya in the recitation that Deya specifically discloses that the milk substrate comprises at least 15wt% lactose based on dry solids content.
However, it is noted that Deya discloses that the milk substrate is concentrated skim milk (Deya, Pg. 4, Example). In light of the teachings of Knights already relied upon above, which discloses that skim milk conventionally contains 48.4g lactose/100g solids = 48.4% lactose based on dry solids content ([0045], Table 1), the concentrated skim milk of Deya, while concentrated, necessarily contains the same ratio of lactose to other dry components, since concentrating the skim milk only removes moisture from the skim milk (Deya, Pg. 4, Example) and would not alter to ratio of the dry components to each other. Therefore, Modified Deya discloses that the milk substrate (concentrated skim milk) comprises at least 15% lactose based on dry solids content (48.4% lactose based on dry solids content).
Claims 17-19 are rejected for the same reasons given above as for claim 16. Modified Deya discloses that the milk substrate (concentrated skim milk) comprises 48.4% lactose based on dry solids content as discussed above.
Regarding claim 20, Deya discloses the process further includes fully inactivating the enzyme after step (b) (terminating the enzymatic reaction) (Deya, Pg. 2, lines 40-42, Pg. 3, lines 16-17, 51-52, Table 1, Pg. 4, Example).
Regarding claim 21, claim 21 is rejected for the same reasons given above in claim 13. Modified Deya discloses that the confectionery material (chocolate) comprises 9.39%-17% non-carbohydrate milk solids, as discussed above in claim 13.
Response to Arguments
Applicant’s arguments filed 05/18/2026 have been considered but have not been found persuasive.
On pg. 6 of the remarks Applicant argues that, Deya, Knights, Lecollier, St John, and Brog alone or in combination fail to render obvious the claimed invention. For example, Deya, Knights, Lecollier, St John, and Brog alone or in combination fail to disclose or suggest treating the milk substrate with an enzyme having transglycosylation activity in a solution to provide a milk product comprising a carbohydrate mixture, wherein the carbohydrate mixture is present in an amount greater than 0 wt% and less than or equal to 35 wt% of the confectionery material, the carbohydrate mixture comprises galactooligosaccharides in an amount of 10-100 wt% of the carbohydrate mixture, and at most 30 wt% of the carbohydrate mixture is lactose, as required by the present claims. I
This argument has not been found persuasive; it is first noted that evidence of criticality of the claimed amount of carbohydrate mixture in a confectionery material has not been established. As discussed in the action Deya discloses that the carbohydrate mixture comprises galactooligosaccharides in an amount of 5wt% or more, or about 5-15% (Pg. 3, lines 2-5, Pg. 4, lines 6-9), overlapping the claimed range. Claim 13 differs from Deya in the recitation that the carbohydrate mixture specifically has at most 30wt% lactose. However, Deya provides an example carbohydrate mixture that contains 33.8wt% lactose, which is merely close to the claimed at most 30wt% lactose (MPEP 2144.05). It is additionally made of note that the lactose concentration of the confectionery material is not limited. As discussed in the action it is noted that Claim 1 differs from Modified Deya in the recitation that the carbohydrate mixture is present in an amount greater than 0% and less than 35wt% of the confectionery material. However, given that the carbohydrate mixture obviously provides taste and nutritional benefit to the confectionery material, it would have been obvious to one of ordinary skill in the art to routinely adjust the amount of carbohydrate mixture added to the based on the desired taste and nutrition of the confectionery material (MPEP 2144.05.II).
In any case, it is noted that the carbohydrate mixture of Deya is a skim milk powder, and Glazier recognizes that skim milk powder can be utilized to make a chocolate, and that skim milk powder can be added in an amount such as 13.34% (17.26% of 77.33%) (See [0138], Table 4, table 5). Therefore, it would have been obvious to one of ordinary skill in the art to utilize the carbohydrate mixture of Deya in an amount such as 13.34wt% as suggested by Glazier.
Additionally, Attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in the fact situation of the instant case, and wherein the Court stated on page 234 as follows: This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected, and useful function. In re Benjamin D. White, 17 C.C.P.A (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
It is additionally noted that Ashitani discloses providing chocolate having milk powder with 0-10% galactooligosaccharide ([0033]-[0035]). Therefore, one of ordinary skill in the art would have had a reasonable expectation of success in utilizing the carbohydrate mixture of Deya in an amount such as 13.34wt% as suggested by Glazier in a chocolate. (MPEP 2143.02).
On Pg. 6 of the remarks Applicant argues that the claimed invention is not a routine addition of an ingredient to chocolate. On Pg. 7 of the remarks, Applicant argues the references do not teach that an oligosaccharide rich, low lactose system can be included in chocolate. On Pg. 7 of the remarks Applicant argues that Lecollier provides no teaching of how to adapt chocolate formulations to accommodate the claimed carbohydrate mixture required by the claims.
These arguments have not been found persuasive; It is noted that the MPEP recites “Prior art is not limited just to the references being applied, but includes the understanding of one of ordinary skill in the art. The prior art reference (or references when combined) need not teach or suggest all the claim limitations. However, Office personnel must explain why the difference(s) between the prior art and the claimed invention would have been obvious to one of ordinary skill in the art. The "mere existence of differences between the prior art and an invention does not establish the invention’s nonobviousness." Dann v. Johnston, 425 U.S. 219, 230, 189 USPQ 257, 261 (1976). The gap between the prior art and the claimed invention may not be "so great as to render the [claim] nonobvious to one reasonably skilled in the art." Id. In determining obviousness, neither the particular motivation to make the claimed invention nor the problem the inventor is solving controls. The proper analysis is whether the claimed invention would have been obvious as of the relevant time to one of ordinary skill in the art after consideration of all the facts. See 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a). Factors other than the disclosures of the cited prior art may provide a basis for concluding that it would have been obvious to one of ordinary skill in the art to bridge the gap”. In this case it is noted that Deya already teaches that the product of Deya can be utilized in food products in general, and gives an example that already includes a type of confectionery, such as ice cream (Pg. 4, lines 49-50). It is noted that “foods” broadly encompasses chocolate. In any case, Lecollier was only further relied upon to modify the specific food product to which Deya is added to be chocolate. Both the products of Deya and Lecollier are directed to compositions obtained by treating milk products with beta-galactosidase, with the obtained product including carbohydrates which include galacto-oligosaccharide and are therefore directed to similar processes and products (see Lecollier claim 1 and 7, galacto-oligosaccharides are oligosaccharides, claim 17, [0021], [0022]) (see Deya Pg. 4, lines 6, 29-45, claims 1-6). Thus, Lecollier was only relied upon for teaching that the product obtained by treating a milk substate with an enzyme (i.e. a product similar to the product of Deya) can be used in confectionery products such as chocolate ('264, [0064], [0065]). Lecollier does not disclose that protein containing ingredients cannot be added to chocolate and therefore does not teach away from modifying the food of Deya to be chocolate. Deya generically teaches adding the product of the invention to food and therefore also does not teach away from using the invention of Deya with chocolate. As discussed in the office action, the motivation to modify the food product of Deya to be chocolate includes to enhance a chocolate with the composition of Deya. "It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements." (MPEP 2145.III). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.") (MPEP 2145.III).
In any case, it is also noted that the invention of Deya includes improving food products by adding a skim milk powder containing galacto-oligosaccharide to food products (Pg. 1, lines 1-16, Pg.4 lines 10-13, 49-50). Lecollier shows it was already known to add galacto-oligosaccharide to food products including chocolate, as Lecollier discloses that the composition (which comprises galacto-oligosaccharide) can be added to any food including confectionary products such as chocolate (‘264, [0054], [0064], [0065]). The additional secondary reference St. John discloses that the milkfat component of chocolate can be delivered by nonfat milk powder (i.e. skim milk powder) (‘649, col. 13, lines 60-63). It is noted that US 3057727 provides evidence that skim milk powder is nonfat milk powder (727, col. 2, lines 48-49). Thus, the prior art as a whole recognizes that skim milk powder and galacto-oligosaccharide can be added to chocolate. Deya already teaches adding the skim milk powder containing galacto-oligosaccharide to products which skim milk powder is commonly added to (see Deya Pg. 2, lines 13-14, Pg. 4 lines 49-50). Therefore, it would have been obvious to modify the food product of Deya to which the skim milk powder containing galacto-oligosaccharide of Deya is added to, to specifically be chocolate, since the prior art as a whole recognizes that skim milk powder and galacto-oligosaccharide can be added to chocolate. Glazier and Ashitani have also been brought to teach this as well.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Sibakov WO 2008/037839 discloses a method of producing a milk based product containing a mixture of galactooligosaccharides to produce functional food products. Sander US 2007/0082116 discloses milk chocolate with increased protein content ([0018]). Tams US 2020/00113200 discloses a method of producing a milk based product containing a mixture of galactooligosaccharides.
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/A.A/
Ashley AxtellExaminer, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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