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 .
Claim Objections
Claims 1, 10 and 16 are objected to because of the following informalities:
Regarding claim 1, in line 5 after “ingredient” delete “will” and insert “does” in order to place the claim in better form.
In line 6, before “hydrogenated” delete “any” since the term does not substantially add to the meaning of the claim i.e., “[does] not comprise hydrogenated fat” already excludes all hydrogenated fats.
The claim inconsistently recites both “weight%” and “wt%” throughout. The respective limitations should be amended to recite only one of the forms for consistency. For example, “weight%” in lines 1-4 should be amended to instead recite “wt%” for consistency with lines 6-7, as well as claim 17.
Regarding claim 10, in line 2 after “consisting of” delete “:” to place the claim in better form and for consistency.
Regarding claim 16, in line 2 after “consisting of” delete “:” to place the claim in better form and for consistency.
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 18-19 are 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.
The limitations “sensory qualities similar to milk chocolate” in claim 18 and “creamy mouthfeel and snap” in claim 19 render the respective claims indefinite. The limitations are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The features of “creamy mouthfeel” and “snap” are subjective, where the respective features may have different meanings to different individuals. Applicant’s disclosure does not provide any art-recognized standard or other objective, measurable value(s) which would allow one of ordinary skill in the art to determine the feature(s) encompassed by the limitations in question. Further, one of ordinary skill would have reasonably expected that “milk chocolate” can have varying levels of “creamy mouthfeel and snap” based on factors such as composition, particular ingredients used, environment (e.g., ambient temperature), and manufacturing method (e.g., tempered or untampered).
MPEP 2173.05(b)IV recites, “Some objective standard must be provided in order to allow the public to determine the scope of the claim. A claim that requires the exercise of subjective judgment without restriction may render the claim indefinite.” In re Musgrave, 431 F.2d 882, 893, 167 USPQ 280, 289 (CCPA 1970). “Claim scope cannot depend solely on the unrestrained, subjective opinion of a particular individual purported to be practicing the invention.” Datamize LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350, 75 USPQ2d 1801, 1807 (Fed. Cir. 2005)).
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.
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 1-6, 8-10, 12, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Bareket (US 2020/0085076 A1) in view of Huang (US 2019/0037876 A1). Coconut NPL is relied on as evidence for claims 8-10.
It is noted that the term “milk” is interpreted in view of the specification to refer to milks of mammalian origin (paragraph 17). The limitation “plant-based protein” is interpreted to refer to proteins originating from plants other than soy, where the protein is a non-cocoa protein (paragraph 20). The limitation “characterized in that” is interpreted to be a transitional phrase synonymous with “comprising”.
Regarding claim 1, Bareket teaches a non-dairy and/or vegan chocolate-based product (abstract), comprising a mixture of at least one cocoa component, at least one coconut component, at least one non-dairy vegan source dried powder, and at least one flavoring component, where the mixture is solidified to produce the confectionary product (paragraph 31). The cocoa component comprises at least one of cocoa liquor, cocoa powder, cocoa butter, cocoa solids, and combinations thereof (paragraph 12), the non-dairy vegan source dried powder comprising protein extract of a legume such as dried protein powder from chickpea (paragraphs 15 and 18). The composition comprises the non-dairy vegan source dried powder in an amount of at least 5 wt% of the product (paragraph 21). The product further comprises at least one vegetable fat extract such as vegetable, coconut, or palm oil (paragraph 27). Since the product is non-dairy and/or vegan, and since the product replaces dairy milk with non-dairy milk and protein sources, the composition is construed to contain 0 wt% milk solids.
Regarding the composition being free from soy protein, Bareket teaches separate embodiments of said product, where a first embodiment comprises the “at least one non-dairy vegan source dried powder” (paragraph 31), and a second embodiment comprises tofu/soy powder (paragraph 32). The “at least one non-dairy vegan source dried powder” can be e.g., protein powder from chickpea, as stated above. Since the embodiments are distinguished by the presence and absence of tofu/soy powder, the first embodiment upon which the rejection relies is construed to be free from soy protein.
Regarding the plasticizer ingredient, Applicant’s specification discloses the plasticizer comprises liquid oils from a vegetable source, such as vegetable oil or palm oil (paragraph 28). Since Bareket teaches vegetable and palm oil as stated above, the composition is construed to include a “plasticizer ingredient” as claimed.
Regarding the chocolate composition comprising at least 30 wt% cocoa solids, said cocoa solids comprising 10-25 wt% cocoa liquor and not less than 18 wt% cocoa butter, Bareket teaches chocolate contains at least 10 wt% chocolate liquor and a minimum of 35 wt% cocoa solids based on the chocolate type (paragraph 5). The reference provides an example comprising 26 wt% cocoa butter and 13 wt% cocoa liquor (paragraph 38). While the example utilizes soy as a dry ingredient, the reference teaches an embodiment without soy (paragraph 31), where said embodiment is relied on as stated above.
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the composition of Bareket to comprise at least 30 wt% cocoa solids comprising 10-25 wt% cocoa liquor and at least 18 wt% cocoa butter since the prior art recognizes said components and amounts used in making chocolate, since there is no evidence of criticality or unexpected results associated with the claimed values, and since the claimed values would have been used during the course of routine experimentation and optimization procedures due to factors such as the type of chocolate being made (e.g., milk, dark, etc.), desired intensity of “chocolate” flavor, desired texture/mouthfeel, and nutritional profile.
Bareket does not teach 0.5-10 wt% of the plasticizer ingredient, said plasticizer ingredient not comprising hydrogenated fat.
Huang teaches a chocolate comprising non-hydrogenated vegetable oil (abstract), where hydrogenated vegetable oils are undesirable due to impact on human health (paragraph 2), where non-hydrogenated vegetables are preferred for health and safety (paragraph 3), and to obtain products with performance and quality equaling or surpassing those of the products prepared with hydrogenated oils (paragraph 4).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the composition of Bareket to use non-hydrogenated vegetable oils since the reference does not indicate that hydrogenated oils are required, since the prior art recognizes hydrogenated oils are undesirable, and therefore to provide a product that meets consumer demand for health, safety, performance and quality, and since the claimed values would have been used during the course of routine experimentation and optimization procedures due to factors such as the type of chocolate being made, desired texture/mouthfeel, flavor, aroma, and nutritional profile.
Additionally, Applicant has not shown sufficient evidence that the claimed ingredients (plant based protein, plasticizer without hydrogenated fat, cocoa solids, liquor and butter) and amounts produce new, unexpected, and useful function, see In re Levin, 84 U.S.P.Q. 232, 234 (C.C.P.A. 1950). Id. at 7. The following passage is quoted from Levin.
“This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected, and useful function. In re White, 39 F.2d 974, 17 C.C.P.A., Patents, 956; In re Mason et al., 156 F.2d 189, 33 C.C.P.A., Patents, 1144.”
Regarding claim 2, Bareket teaches the “non-dairy vegan source dried powder” comprises protein extract/concentrate of a legume (paragraph 15).
Regarding claim 3, Bareket teaches the legume protein includes pea protein (paragraph 18).
Regarding claim 4, Bareket teaches the composition comprises vegetable oil (paragraph 27).
Regarding claim 5, the claim recites alternatives. For the sake of examination, the alternative “liquid oil” is chosen. The alternatives of “randomized fats, and combinations thereof” are construed to not be required. Bareket teaches vegetable oil as stated above, where vegetable oil is known to exist in liquid form at room temperature.
Regarding claim 6, the alternative “liquid oil” is chosen for examination as stated for claim 5, where “randomized fats” is construed to not be required. Regardless, the combination applied to claim 1 teaches non-hydrogenated vegetable oil as taught by Huang.
Regarding claim 8, the claim recites alternatives. For the sake of examination, the alternative “insoluble dietary fibres” is chosen. Bareket teaches the composition includes a coconut component (paragraph 31), where the component includes coconut shards, fiber, and dried coconut (paragraph 14). Coconut is known to include insoluble dietary fibers as evidenced by Coconut NPL (page 3 “Fiber”). It is noted that Applicant’s specification discloses coconut fibers as a bulking agent (paragraph 42).
Regarding claims 9-10, the claims recite alternatives. For the sake of examination, the altnerative “vegetable fibres” is chosen for claim 9, and “fruit fibres” for claim 10. Bareket teaches coconut fiber as stated for claim 8 above, where coconut is known to be a fruit as evidenced by Coconut NPL (page 1).
Regarding claim 12, Bareket teaches the composition is free from milk solids as stated for claim 1, particularly for individuals who are lactose intolerant or choose to avoid consumption of animal products (paragraph 5).
Regarding claim 16, Bareket teaches coconut fibers as stated above.
Regarding claim 17, Bareket teaches chocolate contains at least 10 wt% [cocoa] liquor (paragraph 5) as stated for claim 1.
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the composition of Bareket to include 15-25 wt% cocoa liquor for the same reasons stated for claim 1, particularly since there is no evidence of criticality or unexpected results associated with the feature, and since the claimed values would have been used during the course of routine experimentation and optimization.
Regarding claims 18-19, Bareket teaches the composition provides the “same sensation and taste” as chocolate without dairy components (paragraph 5), which one of ordinary skill in the art would understand to encompass “sensory qualities”, “creamy mouthfeel” and “snap” associated with milk chocolate.
Claims 7 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Bareket in view of Huang as applied to claims 1-6, 8-10, 12, and 16-19 above, and further in view of Bhaggan et al. (US 2017/0071224 A1).
Regarding claim 7, Bareket teaches vegetable oil as stated for claims 1 and 5, but does not teach the oil selected from the claimed alternatives. For the sake of examination, the alternative “high oleic sunflower seeds” is chosen.
Bhaggan et al. teaches a confectionary product comprising a fat blend, the product comprising a chocolate-like product including cocoa butter and cocoa powder (paragraphs 84, 86 and 91), where the fat blend comprises non-hydrogenated liquid oil such as high oleic sunflower oil (paragraph 63), where the oil is sourced from sunflower seeds as is known in the art.
It would obvious to one of ordinary skill in the art at the time of the invention to modify the vegetable oil of Bareket to be high oleic sunflower oil since the reference does not particularly limit the type of oil (paragraph 27), since there is no evidence of criticality or unexpected results associated with the type of oil, since the prior art recognizes the claimed oil as a component of chocolate-like confectionary, as a substitution of art recognized equivalents suitable for the same purpose i.e., liquid vegetable oils used in chocolate products, and as a matter of manufacturing choice based on features such as the composition of fatty acids (unsaturated, polyunsaturated, etc.) within the oil used, desired flavor, aroma, texture/mouthfeel, consistency and nutritional profile.
Regarding claim 11, Bareket teaches a sweetener such as sugar (paragraphs 10 and 24), but does not teach sucrose.
Bhaggan et al. further teaches the product comprises sugar such as sucrose (paragraph 87).
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Bareket to comprise sucrose since the reference does not specify nor limit the type of sugar used (see whole document), since sucrose is a known sweetener commonly used in the confectionary arts, and to impart a desired flavor and degree of sweetness to the product.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Bareket in view of Huang as applied to claims 1-6, 8-10, 12, and 16-19 above, and further in view of Cox (US 2016/0143333 A1).
Regarding claim 13, Bareket does not teach the composition is free of maltitol and/or erythritol.
Cox teaches that sugar alcohols such as maltitol and erythritol can cause stomach discomfort, and have laxative or digestive problems associated therewith (paragraph 3). Foods that can exclude sugar alcohols include chocolates (paragraph 30).
It would have been obvious to one of ordinary skill in the art at the time of the invention to exclude maltitol and erythritol from the composition of Bareket since the reference does not teach or otherwise indicate that the sweetener must be a sugar alcohol, since the prior art recognizes that chocolates can be made without sugar alcohols, to provide a “natural” sweetener that does not cause stomach discomfort, digestive problems, or laxative effects, since there is no evidence of criticality or unexpected results associated with the claimed feature, and to provide a product having a desired sweetness and/or nutritional profile.
Response to Arguments
New claims 18-19 are rejected under 35 USC 112(b) for the reasons stated in the respective section of the Office Action above.
Applicant's arguments filed 5/26/2025 have been fully considered, but the amendments to claim 1 necessitated new grounds of rejection.
Santhanam et al. and Inui et al. are no longer relied upon, and are instead replaced with Bareket in view of Huang. Bareket teaches a chocolate composition comprising the features recited by claim 1, and Huang teaches hydrogenated fats are undesirable, where non-hydrogenated fats are used instead. Bhaggan is relied on for claims 7 and 11. Cox is relied on for claim 13.
Dependent claims 2-13 and 16-19 are addressed above.
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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/B.K/Examiner, Art Unit 1792 /DREW E BECKER/ Primary Examiner, Art Unit 1792
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