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 .
DETAILED ACTION
Status of Claims
Note: The amendment of April 14th 2026 has been considered.
Claims 1-20 are pending in the current application.
Claims 1-12 and 14-20 are withdrawn from consideration.
Claim 13 is examined in the current application.
Any rejections not recited below have been withdrawn.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35 of the U.S. Code not included in this action can be found in a prior Office action.
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.
Claim 13 stands rejected under 35 U.S.C. 103 as being unpatentable over Hühn (EP 3114942 B1) in view of Hammerstone Jr. et al., (US 6,627,232).
Regarding claim 13: Hühn discloses cocoa beans extracts with high content of polyphenols, antioxidants, vitamins and/or sugars, wherein the nibs are not fermented or pre-dried prior to extraction (see Hühn paragraphs [0001] and [0012]-[0014]). Furthermore, Hühn discloses the extraction process temperature is below 70°C and comprises first forming a suspension of cocoa nibs in an aqueous ethanol solution (i.e., a mixture of a first extraction agent, water and ethanol) comprising 1-90wt% ethanol, followed by wet grinding and separating the ground suspension into three phases, water, fat (i.e., cocoa butter) and solids, followed by further processing the phases to attain cocoa butter, cocoa powder, polyphenolic powder and cocoa aroma extracts (see Hühn paragraphs [0012]-[0014], [0029], [0033] and [0043]-[0044]), but fails to disclose an organic solvent; However, Hammerstone discloses extracting cocoa butter, aroma and other compounds from cocoa nibs using a 50:50 mixture of water and acetone as such mixture provides better separation than provided by a water and ethanol solution (see Hammerstone abstract; from column 3, line 43 to column 5, line 39). Accordingly, it would have been obvious to a skilled artisan at the time the application was filed to have modified Hühn and to have used a 50:50 water:acetone extraction solution, to attain improved separation, and thus arrive at the claimed limitations.
In the alternative, even though Hühn in view of Hammerstone may fail to disclose every step of the claimed process of extracting the cocoa nibs, it is noted that the recited cocoa nibs extract product is limited and defined by process limitations, as such, the patentability of the coca beans extract product and not the recited process steps of claim 13 must be established. As set forth in MPEP §2113, “even 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). In this case, Hühn discloses cocoa beans extracts with high content of polyphenols, antioxidants, vitamins and/or sugars, wherein such productions are known to involve extraction methods using low temperature processes and solvents, the cocoa beans extracts in Hühn in view of Hammerstone reasonably appears to be either identical or similar to the cocoa beans extracts recited in the claims, and thus Hühn in view of Hammerstone meets the claim limitations.
Otherwise, any slight differences in the composition as a result of the recited process steps would have been obvious to one of ordinary skill in the art and well within the ordinary level of skill to have produced. Modifications to a well-established process that are minor is considered well within the realm of ordinary skill.
Response to Arguments
Applicant's arguments filed on April 14th 2026 have been fully considered but they are not persuasive.
Applicant argues on pages 3-4 of the “Remarks” the prior art references fail to render the claimed invention obvious, because the cocoa beans in Hühn and in Hühn as modified by Hammerstone are processed through processes that differ from the process recited in the product-by-method claim 13 claiming the cocoa bean extract, as Hühn discloses a temperature controlled dry grinding of the nibs and Hammerstone discusses extractions using different organic solvents of processed nibs, which is different than the wet grinding and organic extraction unprocessed nibs recited in claim 13 and contemplated by Applicant in the specification. The examiner respectfully disagrees.
As discussed above, while Hühn in view of Hammerstone may fail to disclose every step of the claimed process of extracting the cocoa nibs, it is noted that the recited cocoa nibs extract product is limited and defined by process limitations, as such, the patentability of the coca beans extract product and not the recited process steps of claim 13 must be established. As set forth in MPEP §2113, “even 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). In this case, Hühn discloses cocoa beans extracts with high content of polyphenols, antioxidants, vitamins and/or sugars, wherein such productions are known to involve extraction methods using low temperature processes and solvents, the cocoa beans extracts in Hühn in view of Hammerstone reasonably appears to be either identical or similar to the cocoa beans extracts recited in the claims, and thus Hühn in view of Hammerstone meets the claim limitations.
Applicant argues on page 4 that the prior art references fail to render the claimed invention obvious, because Hühn modified by Hammerstone, at most, teaches a method where the three-phase separation would be attained by using ethyl acetate and acetone/ethanol as the solvents, which would provide extracts different from the extracts produced by the steps of claim 13, as the majority of the polyphenols would have been already removed via the aqueous phase as disclosed in Hühn. The examiner respectfully disagrees.
The Hühn in view of Hammerstone would not only teach attaining the three-phase separation using ethyl acetate and acetone/ethanol as the solvents. Instead, since Hammerstone discloses embodiments of serial extractions to selectively attain higher or lower molecular weight cocoa procyanidin oligomers from cocoa beans, Hammerstone also discloses in column 4 lines 15-59, that the organic solvents used may be aqueous ethanol and/or aqueous acetone and that the choice of solvent allows for different process parameters (e.g., temperature) and extracted product. Accordingly, Hühn modified by Hammerstone also teaches substituting the aqueous ethanol from Hühn with the aqueous acetone from Hammerstone to attain desire product.
Moreover, as to prior art combination teaching the majority of the polyphenols are present in the aqueous phase, which is different than the extract produced by the claimed method, it is noted that claim 13 recites the polyphenols are in the first liquid phase. Since claim 13 recites the cocoa butter is in the second liquid phase (i.e., the hydrophobic phase), the first liquid phase in claim 13 is the aqueous phase, which also comprises polyphenols according to the claim language.
Finally, the assertion that the method of the prior art combination provides extracts that are different than the extracts attained by the claimed method is not persuasive, because Applicant fails to provide evidence supporting that assertion.
Applicant argues on pages 4-5 of the “Remarks” that the prior art references fail to render the claimed invention obvious, because substituting the aqueous ethanol from Hühn with the aqueous acetone from Hammerstone would render different extracted product, and Hammerstone contemplates serial extraction steps with the aqueous acetone extraction as one of the steps, which would render a different product than the claimed product. The examiner respectfully disagrees.
To clarify, while Hammerstone discloses embodiments of serial extractions to selectively attain higher or lower molecular weight cocoa procyanidin oligomers from cocoa beans, Hammerstone also discloses in column 4 lines 15-59, that the organic solvents used may be aqueous ethanol and/or aqueous acetone and that the choice of solvent allows for different process parameters (e.g., temperature) and extracted product. Accordingly, it would have been obvious to a skilled artisan to substitute the aqueous ethanol from Hühn with the aqueous acetone from Hammerstone to attain desire product.
Moreover, it is noted that while Hühn does not disclose all the features of the present claimed invention, Hammerstone is used as a teaching reference, and therefore, it is not necessary for these secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather, Hammerstone teaches that aqueous ethanol and aqueous acetone provide selective cocoa extracts with high molecular weight oligomers, and that cocoa extractions with aqueous ethanol are carried out at 20°C-50°C and that cocoa extraction with aqueous acetone are carried out at 50°C-boiling point of mixture, thus in combination with Hammerstone (i.e., teaching reference), Hühn discloses the presently claimed invention.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASSAF ZILBERING whose telephone number is (571)270-3029. The examiner can normally be reached M-F 8:30-5:00.
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/ASSAF ZILBERING/Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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