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 .
Response to Amendment
In applicant’s reply on 02/12/2026, the claims were amended. Revised rejections under 35 U.S.C. 103 can be found below, as well as the rejection of the new claim under 35 USC 103.
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, 8-11 and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Choromanski (US 2012/0294,986 A1), found in Applicant’s IDS filed 12/12/2023.
Regarding claim 1, Choromanski teaches a cocoa composition (cocoa paste Par. 0136)
comprising at least 30 weight % sucrose (sucrose between 30% and 60% Par. 0021; icing sugar 45.55% Table 6)
and less than 5 weight % of milk solids (some or all of milk can be replaced with pea proteins, and with carbohydrates to make up for the lactose contained in milk, a fat can also be added to make up for the lipid part of the milk Par. 0099)
2-16 weight % of a plant-based protein other than soy protein (2-16% pea protein on dry basis Par. 0090; residual moisture is negligible Par. 0156)
0.005-29.7 weight % of a bulking ingredient (pea protein in form of granulated milk powder comprises pea protein and starch hydrolysate Par. 0081; weight ratio of the pea protein to the starch hydrolysate is between 99:1 and 1:99 Par. 0082; 0.5% to 30% of pea proteins Par. 0015). This would result in .005%-29.7% bulking ingredient (starch hydrolysate)
wherein the bulking ingredient comprises inulin, polydextrose, pectin, and/or vegetable fibers selected from the group consisting of cereal and grain fibres, fruit fibres, rice fibres, pea fibres, coconut fibres, soy fibres, and mixtures of two or more thereof, wherein the bulking ingredient does not include starch derivatives, wherein the starch derivatives are glucose syrup, maltodextrin and dextrin (according to an embodiment, the confectionery contains at least one form of soluble vegetable fibre, inulin, polydextrose Par. 0115-0116). It is noted that though Choromanski does not teach the concentration of soluble vegetable fibers, as branched maltodextrins are taught as a soluble vegetable fiber (Par. 0116-0117), it would have been obvious for one having ordinary skill in the art to look at the concentration of maltodextrin (Par. 81-0082, 0015, see above) for the concentration of soluble vegetable fiber to try.
and wherein the cocoa composition does not comprise any hydrogenated fats (optionally contain other ingredients such as vegetable and/or animal fats Par. 0108; cocoa butter Table 6). No hydrogenated fats are required in the product of Choromanski.
Regarding 0.5-15 weight % of a plant-based protein other than soy protein, Choromanski teaches 2-16 weight % of pea protein (Par. 0090, as seen above). As Choromanski discloses a range which overlaps with the claimed amount, it would have been obvious to one having an ordinary skill in the art to modify Choromanski to have 0.5-15% of pea protein. It would have been prima facie case of obviousness to have selected the overlapping portion of the range (i.e. 2-25% pea protein) from the taught range of 2-16% pea protein (as seen above). In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); See MPEP 2144.05 (I).
Regarding 3.0-12.0 weight % of a bulking ingredient, Chromanski teaches 0.005-29.7 weight % of a bulking ingredient (Par. 0081, Par. 0082, Par. 0015, a seen above). Chromanski discloses a concentration which encompasses the claimed range, and therefore a prima facie case of obviousness exists. It would have been obvious to one having an ordinary skill in the art to modify Chromanski to have 3.0-12.0% of bulking ingredient. Prior art encompassing the claimed range is sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range. See In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941); See MPEP 2144.05 (I).
Regarding claim 2, Choromanski further teaches 2-20 weight % cocoa solids (cocoa paste 11% Table 6).
Regarding claim 3, Choromanski further teaches at least 30 weight % cocoa solids (25-40% cocoa dry matter Par. 0031).
Regarding claim 4, Choromanski further teaches the plant-based protein is selected from the group consisting of legumes, cereals and grains, nuts, and combinations of two or more thereof (pea protein Par. 0090).
Regarding claim 5, Choromanski further teaches the plant-based protein is a pea protein (pea protein Par. 0090).
Regarding claim 6, Choromanski further teaches the plant-based protein is not derived from peanuts and/or sesame seeds (pea protein Par. 0090).
Regarding claim 8, Choromanski teaches the bulking ingredient is selected from the group consisting of vegetable fibers, polydextrose, inulin, pectin, and mixtures of two or more thereof (Par. 0115-0116, see rejection of claim 1 above)
Regarding claim 9, Choromanski teaches the bulking ingredient comprises vegetable fibers selected from the group consisting of cereal or grain fibres, fruit fibres, and mixtures of two or more thereof (at least one form of insoluble vegetable fibre, said insoluble vegetable fibre is selected from the group comprising resistant starches, fibres from cereals, fibres from fruits, fibres from vegetables, fibres from leguminous plants and mixtures thereof Par. 0123-0124). It is noted that though Choromanski does not teach the concentration of insoluble vegetable fibers, as branched maltodextrins are taught as a vegetable fiber (Par. 0116-0117), it would have been obvious for one having ordinary skill in the art to look at the concentration of maltodextrin (Par. 81-0082, 0015, see above rejection of claim 1) for the concentration of insoluble vegetable fiber to try.
Regarding claim 10, Choromanski further teaches substantially free from milk solids (some or all of milk can be replaced with pea proteins, and with carbohydrates to make up for the lactose contained in milk, a fat can also be added to make up for the lipid part of the milk Par. 0099)
Regarding claim 11, Choromanski further teaches no sugar alcohols (none mentioned in disclosure).
Regarding claim 13, Choromanski teaches food products comprising the cocoa composition according to claim 1 (see above rejection of claim 1)
together with one or more additional ingredients (nuts, such as almonds, hazelnuts, walnuts, pistachios, pecans, pine nuts, peanuts Par. 0038-0039).
Regarding claim 14, Choromanski further teaches the food products are selected from the group consisting of bakery products, confectionary products, and dairy-alternative products (confectionary products traditionally made with milk Par. 0019).
Regarding claim 15, Choromanski teaches the bulking ingredient comprises vegetable fibers selected from the group consisting of rice fibres, pea fibres, coconut fibres, soy fibres and mixtures of two or more thereof (at least one form of insoluble vegetable fibre, said insoluble vegetable fibre is selected from the group comprising resistant starches, fibres from cereals, fibres from fruits, fibres from vegetables, fibres from leguminous plants and mixtures thereof, such as pea fibres Par. 0123-0124). It is noted that though Choromanski does not teach the concentration of insoluble vegetable fibers, as branched maltodextrins are taught as a vegetable fiber (Par. 0116-0117), it would have been obvious for one having ordinary skill in the art to look at the concentration of maltodextrin (Par. 81-0082, 0015, see above rejection of claim 1) for the concentration of insoluble vegetable fiber to try.
Regarding claim 16, though Choromanski teaches sensory testing for caramels made with pea protein citing a creamy eating sensation comparable to a milk-based caramels (Par. 0222-0228), it does not teach a creamy eating sensation comparable to a milk-based cocoa composition.
However, as the invention of Choromanski teaches a similar composition to the claimed invention, one having ordinary skill in the art would expect the inventions to have similar eating sensation.
Claims 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Choromanski, found in Applicant’s IDS filed 12/12/2023, in view of Cox (US 2018/0184684 A1).
Regarding claim 17, Choromanski teaches a cocoa composition (cocoa paste Par. 0136)
comprising at least 30 weight % sucrose (sucrose between 30% and 60% Par. 0021; icing sugar 45.55% Table 6)
and less than 5 weight % of milk solids (some or all of milk can be replaced with pea proteins, and with carbohydrates to make up for the lactose contained in milk, a fat can also be added to make up for the lipid part of the milk Par. 0099)
2-16 weight % of a plant-based protein other than soy protein (2-16% pea protein on dry basis Par. 0090; residual moisture is negligible Par. 0156)
0.005-29.7 weight % of a bulking ingredient (pea protein in form of granulated milk powder comprises pea protein and starch hydrolysate Par. 0081; weight ratio of the pea protein to the starch hydrolysate is between 99:1 and 1:99 Par. 0082; 0.5% to 30% of pea proteins Par. 0015). This would result in .005%-29.7% bulking ingredient (starch hydrolysate).
and wherein the cocoa composition does not contain any hydrogenated fats (optionally contain other ingredients such as vegetable and/or animal fats Par. 0108; cocoa butter Table 6). No hydrogenated fats are required in the product of Choromanski.
Regarding 0.5-15 weight % of a plant-based protein other than soy protein, Choromanski teaches 2-16 weight % of pea protein (Par. 0090, as seen above). As Choromanski discloses a range which overlaps with the claimed amount, it would have been obvious to one having an ordinary skill in the art to modify Choromanski to have 0.5-15% of pea protein. It would have been prima facie case of obviousness to have selected the overlapping portion of the range (i.e. 2-25% pea protein) from the taught range of 2-16% pea protein (as seen above). In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); See MPEP 2144.05 (I).
Regarding 3.0-12.0 weight % of a bulking ingredient, Choromanski teaches 0.005-29.7 weight % of a bulking ingredient (Par. 0081, Par. 0082, Par. 0015, a seen above). Choromanski discloses a concentration which encompasses the claimed range, and therefore a prima facie case of obviousness exists. It would have been obvious to one having an ordinary skill in the art to modify Choromanski to have 3.0-12.0% of bulking ingredient. Prior art encompassing the claimed range is sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range. See In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941); See MPEP 2144.05 (I).
Choromanski does not teach the plant-based protein is selected from the group consisting of cereals and grains, nuts, and combinations of two or more thereof.
Cox, in the same field of endeavor, teaches a plant-based protein is selected from the group consisting of cereals and grains, nuts, and combinations of two or more thereof (vegetable protein is pea protein and/or oat protein Par. 0008)
It would have been obvious to one having ordinary skill in the art, at the time of filing, to modify the invention of Choromanski with the protein source of Cox. Cox discloses both pea protein and oat protein as possible protein sources for their invention. Therefore, one would have been motivated to make this modification to select a protein of a known process based on its suitability for its intended use, supporting a prima facie obviousness determination. See MPEP 2144.07.
Regarding claim 18, Choromanski further teaches the bulking ingredient is selected from the group consisting of vegetable fibers dextrin, maltodextrin, polydextrose, inulin, dehydrated grain syrups, pectin, and mixtures of two or more thereof (maltodextrins, glucose syrups, dextrose Par. 0085)
Regarding claim 19, Choromanski teaches the bulking ingredient comprises vegetable fibers selected from the group consisting of cereal or grain fibres, fruit fibres, and mixtures of two or more thereof (according to an embodiment, the confectionery contains at least one form of insoluble vegetable fibre, said insoluble vegetable fibre is selected from the group comprising resistant starches, fibres from cereals, fibres from fruits, fibres from vegetables, fibres from leguminous plants and mixtures thereof Par. 0123-0124). It is noted that though Choromanski does not teach the concentration of insoluble vegetable fibers, as branched maltodextrins are taught as a vegetable fiber (Par. 0116-0117), it would have been obvious for one having ordinary skill in the art to look at the concentration of maltodextrin (Par. 81-0082, 0015, see above rejection of claim 17) for the concentration of insoluble vegetable fiber to try.
Regarding claim 20, Choromanski further teaches the cocoa composition is substantially free from milk solids (some or all of milk can be replaced with pea proteins, and with carbohydrates to make up for the lactose contained in milk, a fat can also be added to make up for the lipid part of the milk Par. 0099)
Response to Arguments
Applicant's arguments filed 02/12/2026 have been fully considered but they are not persuasive.
Applicant argues that Choromanski requires starch hydrolysates, contrary to amended claim 1. Choromanski teaches the use of starch hydrolysate in an embodiment (Par. 0080), but it is merely an embodiment and does not mean the invention of Choromanski requires starch hydrolysates. It is optionally used and other embodiments may be used which do not require starch hydrolysate.
Applicant argues that regarding amended claim 1, Choromanski does not teach the claimed concentration of specifically claimed bulking ingredients. The rejection of claim 1 has been amended to address the newly amended bulking ingredients, which are obvious over Choromanski because Choromanski teaches soluble vegetable fibers which include inulin, polydextrose and branched maltodextrins. As branched maltodextrins are similar to the maltodextrins used as starch hydrolysates, one having ordinary skill in the art would reasonably use the concentration of maltodextrins as the concentration for the soluble vegetable fiber and adjust as needed.
Applicant argues the rejection of the concentration of pea protein in claim 1 no longer works because the amended bulking ingredients are changed. As discussed above, the amended bulking ingredients are obvious over Choromaski and therefore the rejection of pea protein concentration stands.
Further, applicant cannot merely look to the examples in the prior art for taught concentrations, but should look at the disclosed invention as a whole including various embodiments. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP 2123(II).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Heine (US 9,655,374 B1), found in Applicant’s IDS filed 08/16/2022 teaches 0.5-3.0 weight% of a bulking ingredient, pectin (Col. 2 lines 20-21), which overlaps with the claimed range.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARIEL M RODGERS whose telephone number is (571)272-7857. The examiner can normally be reached Monday - Friday 9:00 am - 6:00 pm.
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/A.M.R./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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