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 .
This office action is in regard to the application filed on December 3, 2021 and in response to a Request for Continued Examination filed on September 10, 2025.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 10, 2025 has been entered.
Status of Application
The amendment filed September 10, 2025 has been entered. Claims 1-20 are currently pending in the application; claims 1-14 and 16-20 are withdrawn. Claim 15 is hereby examined on the merits.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Hühn (EP 3114939; cited on IDS dated Dec. 3, 2021) in view of Berenschot et al. (US PG Pub. 2015/0208687; listed on PTO-892 dated Dec. 20, 2024), herein after referred to as Hühn and Berenschot.
Hühn discloses a cocoa powder [0012] that is obtained by a method comprising the steps of:
a) adding water to cocoa beans to form a suspension;
b) wet grinding said suspension;
c) subjecting said suspension to a heat treatment at a temperature of 70°C or less;
d) separating the suspension into a water phase (heavy phase), a fat phase (light phase), and a solid phase, said fat phase comprising cocoa butter as a major component and solids and/or water as minor components, and said solid phase comprising cocoa powder and water; and
e) separating cocoa powder from the solid phase [0013].
Hühn is silent as to instantizing the cocoa powder obtained in step e to obtain an instant cocoa powder.
Berenschot, in the same field of invention, teaches a dispersible cocoa powder (i.e., instant cocoa powder) ([0001]; [0008]) obtained by pregelatinizing a cocoa powder/liquid mixture, then agglomerating the pregelatinized cocoa powder to obtain an instant cocoa powder (i.e., instantizing a cocoa powder) (claims 11-15). Berenschot offers the motivation that typical cocoa powder does not create a uniform suspension when added to cold liquids [0002], and as such, creating an instant cocoa powder with the taught method allows for good and rapid dispersion in cold liquids without compromising organoleptic properties and shelf life [0008]. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have incorporated the “instantizing” step of Berenschot into the method of Hühn. One would have been motivated to make this modification for the benefit of obtaining a cocoa powder that uniformly and instantly disperses in cold liquids.
Response to Amendment
The declaration under 37 CFR 1.132 filed August 11, 2025 is insufficient to overcome the rejection of claim 15 based upon Hühn (EP 3114939) in view of Berenschot et al. (US PG Pub. 2015/0208687) under 35 U.S.C. 103 as set forth in the last Office action because: the facts presented are not germane to the rejection at issue.
Declarant states that one of ordinary skill in the art would not have expected the cocoa powder produced by the method of Hühn to have the rich aromatic profile and pleasant taste of the cocoa powder obtained by the instant invention, the flavor of which Declarant alleges is a surprising and unexpected result (Declaration, paras. 9-12).
These statements made by the Declarant are not germane to the rejection at issue where the method of Hühn is modified by the method of Berenschot to render obvious the instant claims. In any case, these statements are not correct, as Hühn explicitly discloses that in the taught process, undesired components that cause overly bitter, acidic, and/or unpalatable tastes are removed [0023], the resulting products have a pleasant, non-bitter, non-acidic taste [0029], a pleasant cocoa flavor, and taste profile [0030], and that the taught cocoa products preserve high levels of nutritionally useful components without compromising a pleasant taste [0063]. Thus, one of ordinary skill in the art would expect the cocoa powder of Hühn to have a pleasant taste, as Hühn explicitly discloses it as such.
In further response to Declarant’s statement that the references fail to show certain features of the invention, it is noted that the features upon which Declarant relies (e.g., pleasant taste and flavors) are not recited in the rejected claim. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Declarant states that the cocoa powder used by Berenschot is a conventionally alkalized, dutched, or tempered cocoa powder, while the cocoa powder of Hühn is a water-extracted cocoa powder, and as such, Berenschot does not suggest utilizing the cocoa powder of Hühn for the preparation of a cocoa or chocolate beverage (Declaration, paras. 12 and 14),
These statements made by the Declarant are not germane to the rejection at issue where the claimed invention is directed to an instant cocoa powder, not a cocoa beverage, where Berenschot is used only to teach “instantizing” step of the claimed invention, and where the motivation to combine the Berenschot and Hühn is based upon Berenschot’s teaching that “instantizing” a cocoa powder improves the dispersibility in liquids.
Moreover, Berenschot does not only teach a conventionally alkalized, dutched, or tempered cocoa powder, as alleged by the Declarant, but Berenschot teaches that the cocoa powder used “may be from any source and processed (either before or after pregelatinization) according to any methods known in the art” [0018]. Thus, the cocoa powder taught by Hühn is a perfectly suitable cocoa powder to be used and modified by the method of Berenschot.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Response to Arguments
Applicant's arguments filed September 10, 2025 have been fully considered but they are not persuasive.
Applicant argues that “one of skill in the art would not combine the teachings of Hühn and Berenschot because the proposed combination would not be expected to lead to a viable product” because, per the filed Declaration, “one of skill in the art would not expect that the cocoa powder obtained using the claimed method would be suitable for cocoa beverages because the solids have already been extracted using an extensive aqueous extraction technique” (remarks, p. 6).
This argument is not persuasive. Applicant has not provided any evidence to support this argument, either in the present remarks or in the Declaration filed Aug. 11, 2025. There is no showing that the cocoa powder of Hühn would not be suitable for a cocoa beverage, and moreover, Berenschot explicitly teaches that the cocoa powder used in the taught method “may be from any source and processed (either before or after pregelatinization) according to any methods known in the art” [0018]. The goal of Berenschot’s invention is to improve dispersibility of cocoa powders in liquids; even if the cocoa powder of Hühn is unsuitable for cocoa beverages as Applicant claims, the method steps taught by Berenschot would have necessarily modified the cocoa powder of Hühn in order to make it suitable in cocoa beverages.
Applicant argues that the result of the instant invention is unexpected, specifically related to favorable tastes and textures, and that one of ordinary skill in the art would not expect the cocoa powder of Hühn to have these alleged favorable tastes and textures because the process of Hühn removes hydrophilic substances from the solid phase (remarks, p. 7).
This argument is not persuasive. Applicant has not provided any evidence as to these alleged results nor is there any showing that the cocoa powder taught by the prior art would not also achieve these same results. Applicant is reminded that attorney arguments cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). See MPEP 716.01(c).II.
Additionally, this argument is not persuasive because Hühn discloses that in the taught process, undesired components that cause overly bitter, acidic, and/or unpalatable tastes are removed [0023], the resulting products have a pleasant, non-bitter, non-acidic taste [0029], a pleasant cocoa flavor, and taste profile [0030], and that the taught cocoa products preserve high levels of nutritionally useful components without compromising a pleasant taste [0063]. Thus, one of ordinary skill in the art would expect the cocoa powder of Hühn to have favorable tastes and textures, as Hühn explicitly discloses it as such.
Applicant argues that the cocoa powder used by Berenschot is different than the cocoa powder obtained by Hühn and as such, one of ordinary skill in the art would not have been motivated to combine the references because a cocoa beverage with favorable organoleptic properties would not be the expected result (remarks, p. 7).
This argument is not persuasive. Berenschot discloses that the cocoa powder used “may be from any source and processed (either before or after pregelatinization) according to any methods known in the art” [0018]. Thus, the cocoa powder taught by Hühn is a perfectly suitable cocoa powder to be used and modified by the method of Berenschot.
Moreover, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). See MPEP 2144.IV.
In response to applicant's argument that prior art does not teach or suggest favorable organoleptic properties (remarks, p. 7), the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Berenschot offers the motivation that typical cocoa powder does not create a uniform suspension when added to cold liquids [0002], and as such, creating an instant cocoa powder with the taught method allows for good and rapid dispersion in cold liquids without compromising organoleptic properties and shelf life [0008].
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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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/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791