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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 15 Oct 2025 has been entered.
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As a result of the amendments to the claim, the 112(b) rejections over Claims 1-12 have been withdrawn.
All rejections not repeated in this Office Action have been withdrawn.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, 3-5, 8, 11 are currently pending in this Office Action.
Claim Objections
Claim 1 objected to because of the following informalities: the limitation “a viscosity is 340 to 3000 cP” is grammatically incorrect because it follows “a water-in-oil-type emulsion comprising:” The limitation should instead recite “a viscosity of 340 to 3000 cP…”. Appropriate correction is required.
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, 3-5, 8 and 11 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 term “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, the fat-free cacao solid material being defined as a portion excluding cacao butter from a solid material derived from the cacao mass and the cocoa” renders the claim indefinite because it is not clear if “8.5 to 25%” is a percentage of the cacao mass and cocoa, or the total weight of the composition. That is, the claim can be construed such that 8.5 to 25% of the compounding amount of the cacao mass and cocoa constitutes the fat-free cacao solid material, thereby being approximately 0.85% to 10% of the total composition; however, the specification appears to disclose that the total composition comprises 8.5 to 25% by weight of a fat-free cacao solid material (paragraph 9).
To overcome this rejection, Applicant may consider deleting “cacao mass and cocoa…in a total amount of 10 to 40% by weight” and positively reciting both the fat-free cacao solid material and the cocoa butter component, such as:
“Claim 1. An oily food material for combination use which is a water-in-oil-type emulsion comprising:
Cacao mass and cocoa each having a pH of 5 to 6, wherein the cacao mass and cocoa comprises fat-free cacao solid material in an amount of 8.5 to 25% by weight of the emulsion, and cocoa butter in an amount of 1.5 to 15% by weight of the emulsion…”,
or like thereof.
Claims 3-5, 8, and 11 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), Ono (JP 2019000021 A- see machine translations) and De Clercq et al. (WO 2017/075010 A1).
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, and a viscosity of 350 to 3000 cP
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 an emulsion 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.
As to the viscosity, 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. De Clercq is relied on to teach a water and oil emulsion containing chocolate (see paragraphs 13-14), wherein the emulsion viscosity is 0.5 to 2 Pa.s (equivalent to 500 to 2000 cP, see paragraph 69). This allows the product to be suitable as a coating food product due to improved pick-up behavior (paragraph 9, pick-up is correlated with flow behavior such as viscosity, paragraph 68).
Since both Ozawa and De Clercq are directed to a water and oil emulsion comprising cacao to produce an oil and fat composition comprising chocolate that can be used as a coating cream, it would have been obvious to one of ordinary skill in the art to adjust the viscosity to 500 to 2000 centipoise based on the desired texture of the chocolate coating.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination as applied in Claim 1, further in view of Kawamura et al. (CN 102187930 A- see machine translations).
Regarding Claim 3, 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, 8 and 11 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, 8 and 11, 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 an aqueous component comprising the water 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 15 October 2025 has been considered, but is found not persuasive over the prior art.
Applicant argues that the Ozawa reference is not a water-in-oil type and is directed to an anhydrous oily food type emulsion. However, the argument is not persuasive because Ozawa explicitly recite that the composition of the invention can be margarine with a water phase, or coating cream, both of which are water-in-oil type emulsion. In the case of water-in-oil type emulsion, the water is set to be 1 to 30% by mass (page 12, third paragraph). Therefore, it is maintained that Ozawa is directed to a water-in-oil type emulsion and is not anhydrous.
Applicant argues that Velie is not directed to an emulsion stability which is the reason Applicant selects the pH; however, the argument is not persuasive because 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).
As to the Ono reference, Applicant argues that the second oil layer of oil which discloses the claimed cacao mass and cocoa cannot be relied on because the moisture content of the layer is below the claimed range. However, the argument is not persuasive because Ozawa is relied on to teach the claimed water content. Ono is solely relied on to modify the amounts of the cacao mass and cocoa powder. Furthermore, the water content of Ono’s food material is not necessary for one of ordinary skill in the art to consider the ratio of cacao mass and cocoa. That is, both Ozawa and Ono are directed to chocolate confectionary products, and the key component of the chocolate confection product is the cacao mass and cocoa which determines the overall chocolate flavor profile of the composition as a whole. In other words, while Ono comprises little to no water compared to the Ozawa reference, it still remains that Ono is a chocolate confectionary product and one of ordinary skill in the art would look into known combinations of cacao mass and cocoa to obtain similar flavors. Therefore, Examiner submits that Ono’s layer having little to no water content does not teach one of ordinary skill in the art away from known combinations of cacao mass and cocoa.
As to the Chen reference, the argument is rendered moot in view of the new grounds of rejection.
As to the pH, Applicant argues that the Velie reference does not disclose the pH of the pudding, the pre-baked chocolate cake batter, or the post-baked food product. The argument is not persuasive because it is maintained that since the prior art meets all the structures of the claim, such as comprising cocoa powder and cacao mass within the claimed range, the oily food material as a whole would necessarily have similar pH levels as the claimed invention. "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. Therefore, it is maintained that the prior art suggests the claimed pH level.
As to the milk solids, Applicant argues that Ozawa’s milk solids are directed to the grease composition and not directed to the emulsion as claimed. The argument is not persuasive because the claim recites “7.5% by weight or less” (emphasis added) which reads on 0%, thereby met by the Ozawa reference. Further, Applicant argues that Kawamura is directed to solving “activity” problem which is unrelated to Ozawa’s baking purposes. However, Kawamura is directed to an emulsion (see paragraph 112). Both emulsion of Ozawa, and Kawamura, whether it is oil-in-water, or water-in-oil, are susceptible to microbiological deterioration and thus would benefit from a reduction in water-activity while preserving flavor. For these reasons, the combination is maintained.
As to the Li reference, Applicant argues that Li is not directed to an emulsion and there would be no motivation to apply the temperature conditions disclosed in Li. However, the argument is not persuasive because Applicant has not presented any evidence as to why Li not being directed to an emulsion would teach away from using Li’s sterilization conditions. Therefore, it is maintained that since both Li and Ozawa are directed to chocolate confectionary product comprising similar ingredients, such as cocoa powder and cocoa butter, and Li discloses that these ingredients are stable in sterilizing conditions, one of ordinary skill in the art would have looked into the Li reference to safely sterilize similar ingredients.
For these reasons, the prior art has been maintained.
Conclusion
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/T.H.N/Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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