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 December 19th 2025 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Claims 1-12 and 14-20 are withdrawn from consideration.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Any rejections not recited below have been withdrawn.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 is 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, see “Remarks”, filed on December 19th 2025, with respect to the rejection of claim 13 under 35 USC §103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of Hühn as modified by Hammerstone Jr. et al., (see discussion, above).
Conclusion
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 on M-F 8:30-5:00.
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/ASSAF ZILBERING/Examiner, Art Unit 1792