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 response to applicant’s submission dated March 19, 2026. Any rejections and/or objections made in previous actions and not repeated below are hereby withdrawn.
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, 2, 4, 6-18 are rejected under 35 U.S.C. 103 as being unpatentable over Choromanski et al. (US 20120294986 A1) in view of Ervin (US 20100278978 A1).
With respect to Claim 1, Choromanski et al. teaches the use of pea proteins as a substitute for milk proteins in confectionary products traditionally made with milk. [0018] Choromanski et al. teaches one such composition as being comprised of 45.55% sucrose, 11% cocoa paste, 11% pea protein, 5.85% anhydrous milk fat, 0.5% lecithin, and 24% cocoa butter. [Table 6] Anhydrous milk fat in this context applies to the liposoluble plasticizer limitation.
The values of the pea protein and liposoluble plasticizer taught in Choromanski et al. lie within the ranges recited in claim 1. Choromanski et al. is silent to the liposoluble plasticizer ingredient having a melting point lower than cocoa butter and being substantially free from hydrogenated fat content as recited in claim 1 and a cocoa composition comprising less than 3% milk solids.
Ervin teaches a milk chocolate with improved health characteristics that maintain the organoleptic qualities of traditional milk chocolate. [0090] The composition taught by Ervin comprises an edible oil component between 0.001-15%. [0101] Additionally, Ervin teaches that the edible oil displaces the milk fat and sugar in the composition and can be derived from almond, sesame, sunflower, peanut, and more [0101], all of which would provide a vegetable oil free from soy protein. Ervin also teaches that many of the major health issues facing consumers can be linked to the consumption of hydrogenated fats [0034] and that the edible oil used in the composition provides improved health characteristics. [0101] The edible oil taught by Ervin would be a liquid at room temperature, and therefore have a melting point below that of cocoa butter, a composition which is naturally a solid at room temperature.
Choromanski et al. and Ervin exist within the same field of endeavor in that they are both concerned with confectionary compositions. Where Choromanski et al. teaches a cocoa composition comprising pea protein, Ervin teaches a chocolate composition, free from hydrogenated fats, that utilizes a vegetable oil as a liposoluble plasticizer with a melting point below cocoa butter. Ervin provides a motivation to use the vegetable oil in that the oil improves the health characteristics of the chocolate composition.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the application, to have combined the non-hydrogenated vegetable oil taught in Ervin with the cocoa composition taught in Choromanski et al. in order to produce a cocoa composition that reads on the limitations presented in claim 1.
With respect to Claim 2, Choromanski et al. in view of Ervin teaches the invention recited in claim 1, as described above. Choromanski et al. teaches that the pea protein can be pea protein concentrates or pea protein isolates. [0062]
With respect to Claim 4 and 6, Choromanski et al. in view of Ervin teaches the invention recited in claim 1, as described above. Choromanski et al. teaches a cocoa composition [Table 6], and Ervin teaches a liposoluble plasticizer suitable for confectionary that is a liquid oil selected from sources including almonds. [0101] Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the application, to have produced the cocoa composition recited in claims 4 and 6 by utilizing the vegetable oil sourced from almonds as taught in Ervin in the cocoa composition taught by Choromanski et al. and arrive at the claimed composition.
With respect to Claim 7-9 and 16, Choromanski et al. in view of Ervin teaches the invention recited in claim 1, as described above. Choromanski et al. teaches the cocoa composition may contain a soluble vegetable fiber [0115] and/or an insoluble vegetable fiber [0123], wherein the fibers may be inulins [0117], fibers from fruits and vegetables including pea fiber [0124], or maltodextrin. [0085] Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the application, to have included the bulking agents recited in claims 7-9 and 16 in the production of a cocoa composition taught by Choromanski et al. in view of Ervin.
With respect to Claim 10, Choromanski et al. in view of Ervin teaches the invention recited in claim 1, as described above. Choromanski et al. teaches a cocoa composition with 45.55% sucrose. [Table 6], which falls within the claimed range.
With respect to Claim 11, Choromanski et al. in view of Ervin teaches the invention recited in claim 1, as described above. Choromanski et al. teaches a cocoa composition with 11% cocoa paste and 24% cocoa butter. [Table 6] Cocoa paste and cocoa butter are considered cocoa solids as per the definition provided in the instant specification. [00013] Therefore, Choromanski et al. teaches a cocoa composition with 35% cocoa solids, falling within the claimed range.
With respect to Claim 12, Choromanski et al. in view of Ervin teaches the invention recited in claim 1, as described above. Choromanski et al. teaches a cocoa composition that uses anhydrous milk fat as the liposoluble plasticizer and only milk solid ingredient. [Table 6] Ervin teaches a liposoluble plasticizer that is suitable for confectionary purposes. [0101] One would be motivated to substitute the milk fat taught in Choromanski et al. with the vegetable fat taught in Ervin in order to provide a healthy alternative. The resulting composition would not have any milk solids. Therefore, Choromanski et al. in view of Ervin describes a composition that is substantially free from milk solids.
With respect to Claim 13, Choromanski et al. in view of Ervin teaches the invention recited in claim 1, as described above. Choromanski et al. teaches a cocoa composition that does not comprise maltitol, erythritol, and/or lactitol. [Table 6] Therefore, the composition of Choromanski et al. comprises less than 30% maltitol, erythritol, and/or lactitol.
With respect to Claim 14, Choromanski et al. teaches that the invention can be used in a variety of confectionary products such as white chocolates, milk chocolates, and fudges, [0019] and teaches a composition comprising milk chocolate in the form of ganache. [0035] Therefore, it would have been obvious to use the composition taught by Choromanski et al. in view of Ervin in confectionary products and dairy-alternatives.
With respect to Claim 15, Choromanski et al. teaches a cocoa composition [Table 6] and Ervin teaches a vegetable-based liposoluble plasticizer suitable for confectionary. [0101] Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the application, to have produced the cocoa composition recited in claim 4 by combining the cocoa composition taught by Choromanski et al. with the vegetable oil composition taught in Ervin.
With respect to Claim 17, Choromanski et al. in view of Ervin teaches the invention recited in claim 1, as described above. Choromanski et al. teaches a cocoa composition that comprises 11% cocoa paste. [Table 6] Cocoa paste is equivalent to cocoa liquor. Therefore, Choromanski et al. in view of Ervin reads on the limitation recited in claim 17.
With respect to Claim 18, Choromanski et al. in view of Ervin teaches the invention recited in claim 1, as described above. Choromanski et al. teaches a cocoa composition that comprises 24% cocoa butter. [Table 6] This falls within the claimed range.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Choromanski et al. (US 20120294986 A1) in view of Ervin (US 20100278978 A1) as applied to Claim 1, in further view of Rabault et al. (EP 3476224 A1).
With respect to Claim 19, Choromanski et al. in view of Ervin et al. teaches the invention recited in claim 1, as described above, but is silent as to the use of randomized fats.
Rabault et al. teaches an invention designed to reduce the bloom in a chocolate composition [0001] through the use of randomly interesterified fats. [0010] Rabault teaches that these fats have a high compatibility with cocoa butter and has a similar melting profile to palm oil, making the invention particularly suited to confections. [0010]
Choromanski et al., Ervin, and Rabault et al. exist within the same field of endeavor in that they teach confectionary compositions. Where Choromanski et al. teaches a cocoa composition comprising pea protein, Ervin teaches a chocolate composition, free from hydrogenated fats, that utilizes a vegetable oil as a liposoluble plasticizer with a melting point below cocoa butter, and Rabault teaches a randomly interesterified fat advantageous for chocolate compositions. One would have been motivated to use the invention taught by Rabault et al. in order to reduce the bloom in the cocoa composition.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the teachings of Choromanski et al. in view of Ervin, in further view of Rabault, to produce the invention recited in claim 1, wherein the fat is a randomly interesterified fat, thereby rendering claim 19 obvious.
Response to Arguments
Applicant's arguments filed March 19, 2026, have been fully considered but they are not persuasive.
Applicant asserts on Page 5, line 22, that “Choromanski does not teach the claimed low-milk-solids framework” referring to the composition taught in the 103 rejection of claim 1 above. Applicant makes this assertion again on Page 10, lines 7-8, saying, “The fact that Choromanski includes AMF confirms that Choromanski begins from a composition that contains milk solids”.
Applicant excludes the assertion made by examiner in the aforementioned rejection that the AMF taught in Choromanski is replaced by the soluble lipid in Ervin. MPEP 2145 IV states, “One cannot show nonobviousness by attacking individually where the rejections are based on combination of references”. For this reason, applicant’s assertion is found to be unpersuasive.
Applicant addresses the inclusion of Ervin, asserting on Page 6, lines 22-24, that “Ervin does not teach the claimed plasticizer ingredient as a simple, standalone drop-in replacement for milk-derived fat in Choromanski’s formulation”, continuing on Page 7, lines 8-10, “Ervin does not teach that the edible oil, by itself and apart from Ervin’s other expressly synergistic ingredients and process, can simply be extracted and inserted into Choromanski’s” and again on lines 20-21 that one would not have “isolated only Ervin’s edible oil from Ervin’s expressly multi-component, synergistic system”.
MPEP 2145 states, “If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case”. Applicant submits arguments, but does not present evidence that said assertions are true. Regardless of whether the edible oil can be simply substituted into the composition, the claim limitation states the composition comprises the limiting ingredients, and MPEP 2111.03 I states, “The transitional term ‘comprising’, which is synonymous with ‘including’, ‘containing’, or ‘characterized by’, is inclusive or open-ended and does not exclude additional, unrecited elements or method steps”.
The assertion by applicant that the composition of Choromanski et al. in view of Ervin et al. does not teach the claimed limitations due to the additional elements required to achieve the desired results taught by the combination is found to be unpersuasive due to the transitional term “comprising”. There is no limitation in the instant claim which explicitly excludes the oil composition taught in Ervin et al. included in the composition taught by Choromanski et al. Therefore, applicant’s assertions are found to be unpersuasive.
Applicant asserts on Page 7, lines 24-27, “The rejection is also deficient with respect to the specific plasticizer properties” specifically, “the liposoluble plasticizer ingredient having a melting point lower than cocoa butter and being substantially free from hydrogenated fat content”. Applicant’s assertion relies primarily on the belief that “the cited portions of Ervin do not expressly disclose those claim limitations”, and referring to the above rejection wherein the oil being liquid at room temperature defines a composition with a lower melting point than cocoa butter, which is known to be solid at room temperature.
MPEP 2144.01 states, “[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom”. Though Ervin does not explicitly disclose the melting point of the liquid fat, one skilled in the art would have understood that a liquid fat is liquid at room temperature, and therefore possesses a melting point lower than room temperature. Therefore, applicant’s assertion is unpersuasive.
Applicant asserts on Page 8, lines 13-16, “The specification further teaches that the claimed plasticizer ingredient performs ‘a comparable function … to milk fat in a traditional milk chocolate’ and ‘will result in the cocoa composition having a less brittle structure and a more creamy mouthfeel’”. MPEP 2145 VI states, “Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims”. For this reason, applicant’s assertion is found to be unpersuasive.
Applicant asserts on Page 8, lines 25-26, “that a person of ordinary skill in the art would not have a reasonable expectation of success” and lines 31-Page 9, line 1 “the rejection does not identify a teaching in the cited art that clearly and specifically discloses the claimed ingredient, concluding that “the rejection relies on inference and conclusory reasoning”. Applicant’s assertion in this instance amounts to a summation of the assertions made until this point. Applicant is directed to the rejection and responses above with regard to this assertion, which is found to be unpersuasive.
Applicant asserts on Page 9 and 10 that the rejections of dependent claims 2, 4, and 6-18 are insufficient due to their reliance on claim 1 and applicant’s assertion that the assertions with regard to claim 1 overcome the rejection of record. Examiner finds the rejection of claim 1 to be sufficient, and therefore, the rejections of the dependent claims sufficient as well.
With regard to claim 19, the new claim is rejected in light of a new art of record, and the assertions made by applicant are therefore moot.
For this reason, and those explicitly stated above, the rejection of claims 1-2, 4, and 6-18 are upheld and the rejection of claim 19 is added.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office Action. Accordingly, THIS ACTION IS MADE FINAL. 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 JOSEPH CULLEN MERCHLINSKY whose telephone number is (571)272-2260. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.C.M./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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