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 .
Status of the Application
Receipt of the Response and Amendment after Non-Final Office Action filed 10 November 2025 is acknowledged.
Applicant has overcome the following by virtue of amendment of the claims: (1) the objection to claim 3 has been withdrawn; (2) the 112(b) rejection of claim 12 has been withdrawn; (3) the non-statutory double patenting rejections have been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-3 and 5-20
Withdrawn claims: None
Previously canceled claims: 4 and 21
Newly canceled claims: None
Amended claims: 1, 3, 12, and 16
New claims: None
Claims currently under consideration: 1-3 and 5-20
Currently rejected claims: 1-3 and 5-20
Allowed claims: None
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 8 recites, “The cocoa composition of claim 5, characterized in that the liquid oil is in the form of a paste selected from the group consisting of almonds, pine nuts, pistachios, cashews, peanuts, sesame seeds, and mixtures of two or more thereof.” Nut and seed pastes contain protein. Therefore, claim 8 fails to include all limitations of claim 1, which requires that the cocoa composition does not comprise any protein other than its incidental cocoa protein content.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 5-15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bachmüller (EP 3685673 A1, see Google Patents Translation).
Regarding claim 1, Bachmüller teaches a cocoa composition – a chocolate mass, preferably a vegan chocolate mass, including a dark chocolate mass, a milk chocolate mass, and a white chocolate mass (p. 2, ¶ 8) comprising:
at least 2 weight% of cocoa solids – “The chocolate mass according to the invention is preferably a couverture containing the cocoa butter in an amount in a range from 10 to 50% by weight…and the cocoa mass in an amount in a range from 1 to 25% by weight…based in each case on the weight of the chocolate mass.” (p. 2, ¶ 9). Together, the cocoa butter and cocoa mass are disclosed to be in a range of 11 to 75% by weight of the chocolate mass. This range lies inside the claimed range of at least 2 weight%.
less than 5 weight% of milk solids – The cocoa composition of Bachmüller is a vegan chocolate mass (p. 2, ¶ 8) comprising no milk solids. Bachmüller teaches, “The chocolate mass of the invention is particularly preferably a vegan chocolate mass, preferably a vegan couverture, which contains no animal constituents, in particular no whole milk powder, no butterfat and no milk sugar.” (p. 2, ¶ 8).
and characterized in that it comprises 0.5-20% of a bulking ingredient – Inulin is known in the art to be a bulking agent as evidenced by the instant specification on p. 14, Table 2. Bachmüller teaches at least one sweetener, including inulin, in a range from 20 to 80% by weight (p. 2, ¶ 11). The claimed range of 0.5 to 20% overlaps the disclosed range of 20 to 80 weight%. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I). It is also considered that in a combination of one or more sweeteners, such as sucrose and inulin, the amount of inulin would further overlap the claimed range.
and 0.5-10% of a plasticizer ingredient wherein the plasticizer is a liposoluble ingredient and is from a vegetable source – Bachmüller teaches, “A particularly preferred cooking oil [i.e., plasticizer] in view of the preferably vegan nature of the chocolate mass according to the invention is a vegetable cooking oil or a vegetable oil” (p. 3, ¶ 6). “The amount of oil-containing constituents is preferably in a range of…5 to 10% by weight” (p. 3, ¶ 8). This range lies inside the claimed range.
wherein the composition has a water content of less than 10% by weight based on the total weight of the composition – The cocoa composition of Bachmüller does not comprise water.
Bachmüller does not specifically discuss that the cocoa composition does not comprise any protein other than its incidental cocoa protein content.
However, while Bachmüller teaches that the cocoa mass comprises at least 1% hydrolyzed oatmeal (which comprises protein) (p. 2, ¶ 7), the hydrolyzed oat powder is a replacement for milk powder usually used in making milk chocolate (p. 3, ¶ 1). Bachmüller also teaches that the vegan chocolate mass can be a dark chocolate mass (p. 2, ¶ 8).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to omit the hydrolyzed oatmeal from the invention to prepare a vegan dark chocolate. MPEP § 2144(II)(A) states, “Omission of an element and its function is obvious if the function of the element is not desired”. Where milk is not required or desired for dark chocolate, it would have been obvious to omit the hydrolyzed oatmeal (milk replacer) from the vegan chocolate mass of Bachmüller. One of ordinary skill in the art would have had a reasonable expectation of success in arriving at the claimed invention in doing so because milk is not required to make a dark chocolate, and the omission of the milk replacer results in a cocoa composition that does not comprise any protein other than its incidental cocoa protein as claimed.
Therefore, claim 1 is rendered obvious.
Regarding claim 2, Bachmüller teaches the cocoa composition according to claim 1.
Bachmüller also teaches that the bulking ingredient is selected from the group consisting of an oligosaccharide, a polysaccharide, a soluble dietary fiber, an insoluble dietary fiber, and mixtures of two or more thereof – Inulin is a well-known soluble dietary fiber.
Claim 2 is therefore rendered obvious.
Regarding claims 5 and 7-8, Bachmüller teaches the cocoa composition according to claim 1.
Bachmüller also teaches that the liposoluble ingredient is selected from the group consisting of glycerin, liquid oil, randomized fats, and combinations of two or more thereof (re: claim 5); that the liquid oil is selected from the group consisting of oils sourced from almonds, pistachios, cashews, hazelnuts, peanuts, sesame seeds, sunflower seeds, rapeseeds, and mixtures of two or more thereof (re: claim 7); and that the liquid oil is in the form of a paste selected from the group consisting of almonds, pistachios, cashews, peanuts, sesame seeds, and mixtures of two or more thereof (re: claim 8) – Bachmüller teaches, “A preferred vegetable oil is a nut oil, with hazelnut oil and almond oil being preferred nut oils and hazelnut oil being a very particularly preferred oil in the context of the invention. A preferred oily ingredient is an oily paste…Particularly preferred oil-containing components are a hazelnut fit [sic], an almond paste or a mixture thereof.” (p. 3, ¶ 8). Oils and pastes from hazelnut, almond, rapeseed, sunflower, sesame, peanut, pistachio, and cashew are disclosed (p. 3, ¶ 8).
Claims 5, 7, and 8 are therefore rendered obvious.
Regarding claim 6, Bachmüller teaches the cocoa composition according to claim 1.
Bachmüller also teaches that the plasticizer ingredient does not comprise any hydrogenated fats – Bachmüller does not mention hydrogenated fats.
Claim 6 is therefore rendered obvious.
Regarding claims 9 and 17-18, Bachmüller teaches the cocoa composition according to claim 1.
Bachmüller also teaches that the cocoa composition comprises at least 30 weight% sucrose (re: claim 9), at least 32 weight% sucrose (re: claim 17), and at least 35 weight% sucrose (re: claim 18) – “Sugar, in particular sucrose, fructose or a mixture thereof, are particularly preferred as sweeteners. The chocolate mass according to the invention preferably contains the at least one sweetener in an amount in a range from 20 to 80% by weight.” (p. 2, ¶ 11). The claimed ranges of at least 30 weight%, at least 32 weight %, and at least 35 weight % overlap the disclosed range of 20 to 80 weight%. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
Claims 9, 17, and 18 are therefore rendered obvious.
Regarding claim 10, Bachmüller teaches the cocoa composition according to claim 1.
Bachmüller also teaches that the cocoa composition comprises at least 30 weight% of cocoa solids – “The chocolate mass according to the invention is preferably a couverture containing the cocoa butter in an amount in a range from 10 to 50% by weight…and the cocoa mass in an amount in a range from 1 to 25% by weight…based in each case on the weight of the chocolate mass.” (p. 2, ¶ 9). Together, the cocoa butter and cocoa mass are disclosed to be in a range of 11 to 75% by weight of the chocolate mass. The claimed range of at least 30 weight % overlaps the disclosed range of 11 to 75% by weight. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
Claim 10 is therefore rendered obvious.
Regarding claim 11, Bachmüller teaches the cocoa composition according to claim 1 as described above.
Bachmüller also discloses that the cocoa composition comprises cocoa solids in an amount from 2 to 20 weight% – “The chocolate mass according to the invention is preferably a couverture containing the cocoa butter in an amount in a range from 10 to 50% by weight…and the cocoa mass in an amount in a range from 1 to 25% by weight…based in each case on the weight of the chocolate mass.” (p. 2, ¶ 9).
The claimed range of 2 to 20 weight% overlaps the disclosed ranges of 10 to 50% by weight cocoa butter, 1 to 25% by weight cocoa mass, and 11 to 75 weight% of the sum of cocoa butter and cocoa mass. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
Claim 11 is therefore rendered obvious.
Regarding claim 12, Bachmüller teaches the cocoa composition according to claim 1.
Bachmüller also teaches that the cocoa composition comprises less than 1 weight % of milk solids – The cocoa composition of Bachmüller is a vegan chocolate mass (p. 2, ¶ 8) comprising no milk solids. Bachmüller teaches, “The chocolate mass of the invention is particularly preferably a vegan chocolate mass, preferably a vegan couverture, which contains no animal constituents, in particular no whole milk powder, no butterfat and no milk sugar.” (p. 2, ¶ 8).
Claim 12 is therefore rendered obvious.
Regarding claims 13 and 19-20 Bachmüller teaches the cocoa composition according to claim 1.
Bachmüller also teaches that the cocoa composition comprises less than 30 weight% sugar alcohols (re: claim 13), less than 20 weight% sugar alcohols (re: claim 19), and that it does not contain any sugar alcohols (re: claim 20) – While sugar alcohols are disclosed as optional sweeteners (p. 2, ¶ 11), they are not required. Bachmüller discloses sugars, polydextrose, and inulin among other suitable, non-sugar-alcohol sweeteners. The exemplary cocoa composition does not contain any sugar alcohols (p. 5, ¶ 6, “Example”).
Claims 13, 19, and 20 are therefore rendered obvious.
Regarding claims 14-15 Bachmüller teaches the cocoa composition according to claim 1.
Bachmüller also teaches food products comprising the cocoa composition according to claim 1 together with one or more further ingredients (re: claim 14), and characterized in that the food products are selected from the group consisting of confectionary products, and dairy-alternative products (re: claim 15) – “Preferred finished chocolate products include, but are not limited to, confectionery, chocolate bonbons…” (p. 3, ¶ 10). These examples are confectionery products. Bonbons include one or more further ingredients. The chocolate mass is preferably a vegan couverture (i.e., covering for food products), implying one or more further ingredients (p. 2, ¶ 8).
Claims 14-15 are Therefore rendered obvious.
Claims 3 and 16 is rejected under 35 U.S.C. 103 as being unpatentable over Bachmüller (EP 3685673 A1, see Google Patents Translation) in view of Norte Eurocao (DE 202019105314 U1, see Google Patents Translation).
Regarding claims 3 and 16, Bachmüller teaches the cocoa composition according to claim 2 as described above.
Bachmüller does not discuss that the insoluble dietary fiber is selected from the group consisting of: cereal or grain fiber, fruit fiber, legume fiber, and mixtures of two or more thereof (re: claim 3), or that the soluble and/or insoluble dietary fibers are selected from the group consisting of: rice fibers, pea fibers, coconut fibers, soy fibers, and mixtures of two or more thereof (re: claim 16).
However, Norte Eurocao teaches a cocoa-based food product which contains no added sugars or sweeteners and in which these ingredients are completely replaced by vegetable fibers, texture regulators, and flavorings (p. 2, ¶ 6). “According to a first aspect, the present invention discloses a cocoa-based food product comprising at least one cocoa derivative and at least one vegetable fat, characterized in that the sugars are completely replaced by 0.1% to 75% vegetable fibers, based on the total product weight, 0, 1% to 60% texture regulators, based on the total product weight and / or at least one flavoring are replaced.” (p. 2, ¶ 12). Suitable vegetable fibers include inulin, fructo-oligosaccharides, acacia fiber, cocoa fiber, pea fiber (i.e., legume fiber), fruit fibers and fibers of cereal derivatives, and not excluding the use of other vegetable fibers (p. 2, ¶ 9). Example 4 is a dark chocolate composition (p. 3, ¶¶ 13-14). Vegetable fibers are considered to be bulking agents.
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute at least part of the sugar in the chocolate mass of Bachmüller with pea fiber as disclosed by Norte Eurocao with the motivation to provide consumers with a reduced-sugar chocolate mass. One of ordinary skill in the art would have had a reasonable expectation of success in arriving at the claimed invention in doing so because Norte Eurocao teaches that pea fiber is a suitable vegetable fiber for replacing sugar in chocolate compositions, 0.1 to 75% is a suitable amount, and vegetable fiber is considered to be a bulking ingredient. The claimed range of 0.5-20% of a bulking ingredient lies inside the disclosed range of 0.1 to 75%. In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists, MPEP § 2144.05(I).
Claims 3 and 16 are therefore rendered obvious.
Response to Arguments
Claim Objections:
Applicant has overcome the objection to claim 3 by amendment. Accordingly, the objection has been withdrawn.
Claim Rejections – 35 U.S.C. § 112:
Applicant has overcome the 35 U.S.C. § 112(b) rejections of claim 12 based on amendment. Accordingly, the 35 U.S.C. § 112(b) rejection has been withdrawn.
Claim Rejections – 35 U.S.C. § 102:
Applicant made no substantive arguments concerning the 35 U.S.C. § 102 rejections of claims 1-3, 5-10, 12-15, and 17-20 (p. 6, ¶ 1). Applicant’s amendment to claim 1 filed on 10 November 2025 is sufficient to overcome the rejections under 35 U.S.C. § 102. Accordingly, the 35 U.S.C. § 102 rejections have been withdrawn. However, upon consideration of the amendments, the new grounds of rejection under 35 U.S.C. § 103 presented in this Office action are made.
Claim Rejections – 35 U.S.C. § 103:
Applicant’s arguments filed on 10 November 2025 have been fully considered, but they are not persuasive.
Regarding claim 11, Applicant argued that amended claim 1 is not obvious, and therefore dependent claim 11 is not obvious (p. 6, ¶¶ 4-5).
Applicant’s argument has been considered, but it is not persuasive. Claims 1 and 11 are rendered obvious under the new grounds provided hereinabove.
Applicant asserted surprising and unexpected results that the present invention in which the cocoa composition (which does not require plant-based protein and milk solids), although not brittle, maintains the desired snappy effect when broken or bitten into, and has a creamy sensation and is comparable to that of milk-based cocoa compositions, citing paragraph [0056] of the specification and Examples 1, 3, and 4 in Tables 1 and 3 of the specification (p. 6, last ¶ -p. 7, ¶ 2).
Applicant’s assertion of unexpected technical results is acknowledged. Applicant’s argument has been considered, but it is not found to be persuasive. 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. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc)”, and “[r]ebuttal evidence may include evidence of ‘secondary considerations,’ such as ‘commercial success, long felt but unsolved needs, [and] failure of others.’ Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 4459, 467. See also, e.g., In re Piasecki, 745 F.2d 1468, 1473, 223 USPQ 785, 788 (Fed. Cir. 1984) (commercial success). Rebuttal evidence may also include evidence that the claimed invention yields unexpectedly improved properties or properties not present in the prior art. Rebuttal evidence may consist of a showing that the claimed compound possesses unexpected properties. Dillon, 919 F.2d at 692-93, 16 USPQ2d at 1901. A showing of unexpected results must be based on evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997)”. However, as provided by MPEP § 2145(II), “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979)”, and “‘[t]he fact that appellant 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.’ Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)”. Furthermore, “[e]vidence of unexpected results must be weighed against evidence supporting prima facie obviousness in making a final determination of the obviousness of the claimed invention. In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978).” See MPEP § 716.02(c)(I). “‘Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof.; In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967)”. See MPEP § 716.02(c)(II).
“Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the ‘objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.’ In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)”. See MPEP § 716.02(d).
In the present case, Applicant’s citation of paragraph [0056] does not constitute evidence, but merely an unproven statement that the sensory qualities of the product of the invention are similar to those of milk-based cocoa composition. Applicant provided exemplary cocoa compositions 1, 3, and 4 in Tables 1 and 3 as evidence of the alleged unexpected results. However, Applicant’s evidence is not commensurate in scope with the claimed invention. First, compositions 1 and 3 comprise nut pastes, which contain protein that is not incidental cocoa protein. Amended claim 1 requires that “the cocoa composition does not comprise any protein other than its incidental cocoa protein content”. Therefore, only composition 4 meets this requirement. However, composition 4 is also not commensurate in scope with the claimed invention because it cannot be ascertained whether the alleged unexpected result occurs over the entire claimed ranges and combinations of the claimed ingredients from the much narrower composition of composition 4, and none of the claims are directed toward the specific embodiment provided by any of the examples. Additionally, no comparative data are presented to demonstrate any similarity of composition 4 with a milk-based chocolate composition. Applicant therefore has not successfully demonstrated any surprising or unexpected results.
Applicant’s argument with respect to claim 16 (p. 7, ¶¶ 5-8) have been considered but are moot because the new ground of rejection does not rely on Choromanski for any teaching or matter specifically challenged in the arguments.
Double Patenting:
Applicant makes no substantive arguments concerning the provisional nonstatutaory double patenting rejections (p. 8). Applicant requested that the double patenting rejections be held in abeyance until the instant claims are allowable.
Applicant’s amendments to the instant claim 1, and the claims of the copending applications are sufficient to overcome the provisional nonstatutory double patenting rejections of the pending claims. Accordingly, the double patenting rejections have been withdrawn. Applicant is advised that subsequent amendments may require new double patenting rejections.
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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/JAMES P. SHELLHAMMER/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793