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
Response to Amendment
As a result of the amendments to the claim, the 112(b) rejections over Claims 1-12 have been withdrawn.
All rejections not repeated in this Office Action have been withdrawn.
Claims 1-12 are currently pending in this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12- rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 1, the limitation “wherein a compounding amount of the cacao mass and the cocoa is 8.5 to 25% by weight in terms of a fat-free cacao solid material” renders the claim indefinite because it is not clear as to what “a fat-free cacao solid material” is referring to. Furthermore, since the claim already recites “cacao mass and cocoa…in a total amount of 10 to 40% by weight”, it is unclear if “a fat-free cacao solid material” is part of the “cacao mass and cocoa” or a separate component. For purpose of applying prior art, the cacao mass and cocoa powder will be construed as having a fat-component (i.e. cocoa butter) and a non-fat component (i.e. cocoa powder), and that “fat-free cacao soli material” is referring to the non-fat component of the combined cacao mass and cocoa.
Claims 2-12 are rejected based on its dependency on a rejected claim.
Regarding Claims 4, 7, 8 and 9, the term “residual aqueous component” renders the claim indefinite because it is not clear what the “aqueous component” is a residual of. That is, the term “residual” implies that the aqueous component is a minor component of an aqueous solution; therefore, “residual aqueous component” lacks proper antecedent basis.
Claims 5, and 10-12 are rejected based on its dependency on a rejected claim.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ozawa et al. (CN 105120675 A- see machine translations) in view of Velie (What's the Difference Between Dutch Process and Natural Cocoa Powder?, Serious Eats) and Ono (JP 2019000021 A- see machine translations).
In view of Applicant’s specification (Page 9, lines 21-22), and the Declaration filed 5 Feb 2025 (Paragraph 5), the term “cocoa” will hereon be construed as “cocoa powder” which is a part of cacao mass excluding cocoa butter (oil and fat part) that has been processed from cocoa cake derived from cacao mass.
Regarding Claim 1, Ozawa discloses an oily food material for combination use which is a water- in-oil type emulsion (page 12, third paragraph) comprising:
cacao mass and cocoa (page 13, fifth paragraph);
an oil or fat in an amount of 30%-45% (page 14, lines 3-6), which is within the claimed range;
water in an amount of 5%-15% by weight (page 12, third paragraph); and
an emulsifying agent selected from lecithin (page 12, first paragraph) in a total amount of 0.1 to 2% mass (page 12, first paragraph) which overlaps with the claimed range.
Ozawa is silent to wherein the cacao mass and cocoa each have a pH of 5 to 6 in a total amount of 10 to 40% by weight, and wherein a compounding amount of the cacao mass and cocoa is 8.5 to 25% by weight in terms of a fat-free cacao solid material.
As to the pH level, it is noted that Ozawa is silent to alkalized (or Dutch processed) cocoa powder and therefore may be construed as natural cocoa powder absent any teachings of alkalized or pH adjusted cocoa powder. In any case, Velie is relied on to teach cocoa products having two main varieties: natural and Dutch process (page 2, second paragraph). Velie notes that the choice between the two depends on the type of food being baked and the taste desired (“your choice of cocoa is all about your personal taste”, page 10, first paragraph). Therefore, it would have been obvious to one of ordinary skill in the art to select natural cocoa powder based on the desired flavor profile. In this case, Velie notes that natural cocoa powder has a pH between 5 and 6 (page 3). For similar reasons, it would have been obvious to one of ordinary skill in the art to select natural cocoa mass for the same purpose.
As to the quantity of cacao mass and cocoa powder, Ono is relied on to teach similar oil and fat compositions having a moisture content of 5% to 20%, and fat content of 25% to 50%, and further teaches comprising cocoa mass and cocoa powder in an amount of 13% (cacao mass 4.0%, cocoa powder 9.0%, see Text Example 1, page 6). Since cocoa powder is construed to be the non-fat component of cacao mass, a composition comprising 9% cocoa powder is construed to also comprise more than 8.5% fat-free cacao solid materials. Additionally, since the cacao mass and cocoa powder is in a total amount of 13%, the composition is also construed to have less than 25% fat-free cacao solid materials. Since both Ozawa and Ono are directed to similar oil and fat compositions directed to chocolate products, it would have been obvious to one of ordinary skill in the art to comprise similar amounts of cacao mass and cocoa powder based on the desired chocolate flavor.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination as applied in the rejection of Claim 1, further in view of Chen et al. (CN 108244312 A).
Regarding Claim 2, it is noted that the limitation within the parenthesis “BM type viscometer No. 2 or No. 3, measurement at 30 rpm/40°C” is construed to having no effect on the scope of the claim. Ozawa is silent to the viscosity of the oily food material. Chen is relied on to teach a water and oil emulsion containing chocolate (see abstract), wherein the emulsion viscosity is 100 to 210 centipoise (see abstract). The emulsion taught by Chen is configured to provide good texture and taste for a hydrous chocolate product (see page 2, fifth paragraph). Since the stability index change value at 40°C is 0.1~5, it is construed that the viscosity at 25°C is similar to the viscosity at 40°C.
Since both Ozawa and Chen are directed to a water and oil emulsion comprising cacao to produce an oil and fat composition comprising chocolate, it would have been obvious to one of ordinary skill in the art to adjust the viscosity to 100 to 210 centipoise based on the desired texture of the liquid chocolate composition.
Claim(s) 3 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination as applied in Claims 1 and 2, further in view of Kawamura et al. (CN 102187930 A- see machine translations).
Regarding Claims 3 and 6, as discussed in the rejection of Claim 1, Velie further teaches cocoa mass and cocoa powder having a pH level of 5-6 which is within the range recited in Claim 1. Therefore, since the composition taught by the prior art combination suggest all the components of the claim, and especially cocoa mass and cocoa powder within the claimed range, the prior art composition is construed to have a pH level similar to the claimed range. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
The combination do not specifically recite a fat-free milk solid material of 7.5% by weight or less. However, Ozawa discloses whole milk powder, and skim milk powder as optional food material and/or food additive (page 12, second paragraph), therefore, not comprising the milk powders would read on the claimed limitation since the range includes 0%. In any case, Kawamura is relied on to teach a chocolate composition comprising cocoa mass and cocoa (paragraph 164) and further comprises non-fat milk solids at 0.5 to 5% by weight or less to reduce activity without deterioration in flavor and taste (paragraph 145). Since both Kawamura and Ozawa are directed to chocolate compositions, it would have been obvious to one of ordinary skill in the art to modify the composition of Ozawa to have a fat-free milk solid material of 5% or less to reduce the activity of the chocolate material while preserving its taste.
The limitation “for use with a frozen sweet” is construed as an intended use limitation. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Since Ozawa is directed to a baked food oil or fat composition (page 1 under ‘Technology field’), Ozawa meets the claim limitation because a baked food composition is capable of being added as a topping to frozen sweet products, such as ice cream.
Claim(s) 4-5, 7-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination as applied in the rejection of Claim 1, 2, 3 and 6, further in view of Li et al. (CN 103875882 A).
Regarding Claims 4-5 and 7-12, Ozawa teaches a method of preparing an oily dough comprising the steps of:
preparing an oily dough comprising the cacao mass and cocoa, the oil or fat, and the emulsifying agent (see rejection of Claim 1);
adding a residual aqueous component to the oily dough to form a mixture (water, page 12, second paragraph); and
emulsifying the mixture (page 12, third to last paragraph).
Ozawa further teaches a sterilization treatment (page 13, third to last paragraph), but is silent to the specific time and temperatures for sterilization. Li is relied on to teach a chocolate composition comprising cocoa powder, cocoa butter, oil and fat, and an emulsifier (see abstract), wherein the composition is sterilized at a temperature of 65-68 degrees C for 30 minutes (see paragraph 57).
Since both Ozawa and Li are directed to water and oil emulsions comprising cocoa powder, it would have been obvious to one of ordinary skill in the art to use known sterilization conditions for the purpose of producing a sterilized food products for commercial purposes.
As to the use with a frozen sweet, Li further discloses a chocolate coating composition that is to be mixed with particles and is applied with frozen beverage (see paragraphs 2 and 105). Therefore, it would have been obvious to one of ordinary skill in the art to apply the chocolate composition of the combination with a frozen confectionary product based on food preference and product choice.
Response to Arguments
Applicant’s arguments in the response filed 5 Feb 2025 has been considered, but is rendered moot in view of the new grounds of rejections necessitated by amendment.
That is, Applicant argues on the basis that Kawamura does not teach a water-in-oil type emulsion. However, the argument is rendered moot because Kawamura is no longer relied on to teach the water-in-oil limitation.
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.
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/T.H.N/Examiner, Art Unit 1792
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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