DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The Amendment filed November 14, 2025 has been entered. Claim 10 is new. Claims 4-10 are pending.
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.
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.
Claims 4-10 are rejected under 35 U.S.C. 103 as being unpatentable over Yanamoto et al. (US 5,395,635).
Regarding claim 4, Yanamoto et al. disclose a method for roasting white cacao beans comprising the steps of: (a) fermenting raw white cacao beans; (a) preheating fermented raw cacao beans by immersing the beans in hot water to deactivate enzymes and destroy microorganisms present in the beans (C2/L22-52); (b) drying the preheated white cacao beans to a moisture content of not more than 7% (C2/L53-56, C3/L62-66/Example 1) ; and (c) roasting the dried white cacao beans by microwave heating under reduced pressure and at a temperature of not more than 130°C (C2/L57-C3/L2). Yanamoto et al. disclose that in order to assure the white cacao beans remain white, excessively high temperatures should not be used for roasting (i.e., temperatures above 130°C).
Yanamoto et al. does not explicitly limit its method to a method consisting essentially of: (a) obtaining raw cacao beans; and (b) roasting the raw cacao beans by heating for a predetermined time with microwaves in a state where a pressure has been reduced below a normal pressure such that a surface temperature of the cacao beans is maintained in a range of 50°C to 90°C for the predetermined period of time. However, the present specification defines a raw cacao bean as “cacao beans in a state where cacao beans that are seeds of harvested cacao fruits are fermented and then dried by solar drying or the like” (p. 4/1. Roasted cacao beans). Therefore, the recited steps of Yanamoto et al. directed to producing a raw fermented white cacao bean are steps that are considered to materially affect the basic and novel characteristic of the claimed invention (MPEP §2111.03 III).
While Yanamoto et al. disclose roasting at temperatures below 130°C, the reference is silent with respect to surface temperature.
Here, given Yanamoto et al. disclose roasting white cacao beans using microwave heating and maintaining temperatures less than 130°C, one of ordinary skill in the art would reasonably expect the roasted cacao beans to exhibit properties identical to the claimed roasted cacao beans, including wherein the surface temperature is in a range of 50° to 90°C.
Regarding claims 5 and 6, Yanamoto et al. disclose all of the claim limitations as set forth above. While Yanamoto et al. disclose roasting white cacao beans using microwave heating at reduced pressure and at temperatures of no more than 130°C, the reference is silent with respect to heating time and pressure.
Given Yanamoto et al. disclose that roasting should be conducted at temperatures of not more than 130°C to avoid browning the white cacao beans, one of ordinary skill in the art would have been motivated to adjust, in routine processing the time, temperature and pressure of the roasting process to obtain a desired flavor profile and desired level of browning.
Regarding claims 7 and 8, Yanamoto et al. disclose all of the claim limitations as set forth above. Given Yanamoto et al. disclose a process of roasting white cacao beans substantially similar to that presently claimed, inherently the cacao beans would display the recited total polyphenol content.
Regarding claim 9, Yanamoto et al. disclose all of the claim limitations as set forth above. While Yanamoto et al. disclose that the dried raw white cacao beans have a moisture content of not more than 7% (C3/L56-C4/L2/Example 1), the reference is silent with respect to the moisture content of the roasted white cacao beans.
However, given Yanamoto et al. disclose a process of roasting white cacao beans using microwave heating at reduced pressure substantially similar to the claimed process, including at temperatures of less than 130°C, inherently the roasted white cacao beans would display a moisture content in the claimed range.
In the alternative, one of ordinary skill in the art, given the disclosure of Yanamoto et al. would have been motivated to adjust, in routine processing, the roasting temperature and time to obtain a white cacao bean with no browning and having desired aroma compounds and moisture content.
Regarding claim 10, Yanamoto et al. disclose a method for roasting white cacao beans comprising the steps of: (a) fermenting raw white cacao beans; (a) preheating fermented raw cacao beans by immersing the beans in hot water to deactivate enzymes and destroy microorganisms present in the beans (C2/L22-52); (b) drying the preheated white cacao beans to a moisture content of not more than 7% (C2/L53-56, C3/L62-66/Example 1) ; and (c) roasting the dried white cacao beans by microwave heating under reduced pressure and at a temperature of not more than 130°C (C2/L57-C3/L2). Yanamoto et al. disclose that in order to assure the white cacao beans remain white, excessively high temperatures should not be used for roasting (i.e., temperatures above 130°C).
While Yanamoto et al. disclose roasting at temperatures below 130°C, the reference is silent with respect to surface temperature.
Here, given Yanamoto et al. disclose roasting white cacao beans using microwave heating and maintaining temperatures less than 130°C, one of ordinary skill in the art would reasonably expect the roasted cacao beans to exhibit properties identical to the claimed roasted cacao beans, including wherein the surface temperature is in a range of 50° to 90°C.
Given Yanamoto et al. disclose a process of roasting white cacao beans substantially similar to that presently claimed, inherently the cacao beans would display the recited total polyphenol content.
Response to Arguments
Applicant's arguments filed November 11, 2025 have been fully considered but they are not persuasive.
Applicant notes “[t]o more clearly distinguish over the teachings of Yanamoto et al., claim 4 is amended to use the transitional phrase “consisting essentially of”. Applicant understand that the transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention.
Yanamoto et al. does not explicitly limit its method to a method consisting essentially of: (a) obtaining raw cacao beans; and (b) roasting the raw cacao beans by heating for a predetermined time with microwaves in a state where a pressure has been reduced below a normal pressure such that a surface temperature of the cacao beans is maintained in a range of 50°C to 90°C for the predetermined period of time. However, the present specification defines a raw cacao bean as “cacao beans in a state where cacao beans that are seeds of harvested cacao fruits are fermented and then dried by solar drying or the like” (p. 4/1. Roasted cacao beans). Therefore, the recited steps of Yanamoto et al. directed to producing a raw fermented white cacao bean are steps that are considered to materially affect the basic and novel characteristic of the claimed invention (MPEP §2111.03 III). In other words, the additional steps disclosed by Yanamoto et al. are merely the steps the inventors or the present specification would conduct in order to obtain their “raw cacao beans” required for claim 4.
Applicants submit “Yanamoto et al. specializes in the use of rare white cacao” and “[a]s described in the background art of Yanamoto et al., white cacao does not contain anthocyanins (a kind of polyphenol).” Applicants argue, while Yanamoto et al. disclose roasting only white cacao at temperatures below 130°C, the reference provides no basis for using cacao bean that contain polyphenols.”
While Yanamoto et al. is directed to white cacao and are known to be white in color and do not contain anthocyanin, a polyphenol responsible for color, cacao is known to comprise other polyphenols, e.g., catechins which are colorless and contribute to flavor and health (see Andűjar et al., “Cocoa Polyphenols and Their Potential Benefits for Human Health”, Oxid Med Cell Longev., (2012), pp. 1-23). Therefore, given Yanamoto et al. disclose a process of roasting raw cacao substantially similar to the claimed method, it necessarily follow the roasted cacao beans would exhibit a total polyphenol content in the claimed range of 3.0 mass% to 6.0 mass%. There is no evidence on the record showing that the amount of anthocyanins making up total polyphenol content is significant. As evidenced by Silva et al. (“Extraction, Identification and Quantification of polyphenols from the Theobroma cacao L. Fruit: Yield vs. Environmental Friendliness”, Foods, 13, 2397, (2024), pp. 1-21), cacao beans are known to comprise polyphenols in an amount of about 4% of the total polyphenols.
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 ELIZABETH A GWARTNEY whose telephone number is (571)270-3874. The examiner can normally be reached M-F: 9 a.m. - 5 p.m. EST.
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ELIZABETH A. GWARTNEY
Primary Examiner
Art Unit 1759
/ELIZABETH GWARTNEY/Primary Examiner, Art Unit 1759