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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/20/2025 has been entered.
Application Status
Amended claim 1-15, 17-18 and 21-23 are under examination.
Claim 16, 19-20 are cancelled.
Claim 1-15, 17-18 and 21-23 are rejected.
Withdrawn Rejection
The 112 second paragraph rejections over claim 10, 11, 12 and 15 are withdrawn in light of Applicant’s amendments.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 2, 3, 4, 5, 12 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bernaert et al. (US 2009/0324798) as evidenced by Health Benefits of Cacao Nibs (Ref. U) and University of York (Ref. V).
Regarding claim 1, Bernaert et el. (Bernaert) discloses a flavored cocoa bean (composition) (‘798, [0007]) comprising cocoa bean including cocoa nibs (‘798, [0047]), wherein cocoa nibs contains cocoa fibre as evidenced by Health Benefits of Cacao Nibs (Ref. U, pg.1, bottom of page) and natural flavoring (‘798, [0008]) including limonene (‘798, [0018]).
With respect to new limitation of “…wherein the composition is in a dosage form to be administered to a human or animal for human or veterinary therapeutic use in a treatment for reducing obesity…”; Bernaert teaches the flavored cocoa bean (composition) as in food products (dosage form) for administration (‘798, [0110]-[0116]). With respect to the recitation of “…to be administered to a human or animal for human or veterinary therapeutic use in a treatment for reducing obesity…”, first it is noted the claim is to a composition hence the recitation is considered intended use of the composition. 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.
Regarding claim 2, Bernaert discloses the natural flavoring including fruit orange, peels (‘798, [0068], [0069], [0074]), wherein the orange peels contains essential oils with more than 90 wt% of limonene as evidenced by University of York (Ref. V, pg. 1, first paragraph).
Regarding claim 3, Bernaert discloses a flavored cocoa bean (composition) (‘798, [0007]) comprising cocoa bean including cocoa nibs (first substance) (‘798, [0047]), wherein cocoa nibs contains cocoa fibre as evidenced by Health Benefits of Cacao Nibs (pg.1, bottom of page) and natural flavoring (‘798, [0008]) including limonene (second substance) (‘798, [0018]). Bernaert discloses the cocoa bean including cocoa nibs (‘798, [0047]) as cocoa product including cocoa powder and cocoa extract (‘798, [0032]-[0033], [0037]).
With respect to new limitation of “…wherein the composition is in a dosage form to be administered to a human or animal for human or veterinary therapeutic use in a treatment for reducing obesity…”; Bernaert teaches the flavored cocoa bean (composition) as in food products (dosage form) for administration (‘798, [0110]-[0116]). With respect to the recitation of “…to be administered to a human or animal for human or veterinary therapeutic use in a treatment for reducing obesity…”, first it is noted the claim is to a composition hence the recitation is considered intended use of the composition. 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.
Regarding claim 4, Bernaert discloses the cocoa bean including the cocoa nibs (first substance/cocoa fibre) (‘798, [0047]) to the natural flavoring (‘798, [0008]), limonene (second substance) (‘798, [0018]) with a weight ratio of between 15:1 and 10:1 (‘798, [0064]), which corresponds to the natural flavoring (‘798, [0008]), limonene (second substance) is between 6.25% to 9.09% by weight and within range with the cited range.
Regarding claim 5 and 12, Bernaert discloses the cocoa bean including the cocoa nibs (first substance/cocoa fibre) (‘798, [0047]) to the natural flavoring (‘798, [0008]), the limonene (second substance) (‘798, [0018]) with a weight ratio of between 15:1 and 10:1 (‘798, [0064]), which corresponds to cocoa nibs (first substance/cocoa fibre) is between 93.75% to 90.91% by weight and within range with the cited range.
Bernaert’s flavored cocoa bean (composition) (‘798, [0007]) comprising cocoa bean including cocoa nibs (‘798, [0047]), wherein cocoa nibs contains cocoa fibre as evidenced by Health Benefits of Cacao Nibs (pg.1, bottom of page) and the natural flavoring (‘798, [0008]) including the limonene (‘798, [0018]) and encompass the limitation of the product by process limitation.
Regarding claim 18, Bernaert discloses the natural flavoring including fruit orange, peels (‘798, [0068], [0069], [0074]), wherein the orange peels contains essential oils with more than 90 wt% of limonene as evidenced by University of York (Ref. V, pg. 1, first paragraph).
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) 6, 7, 8, 9, 10, 11, 13, 14, 15, 17, 21, 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Bernaert et al. (US 2009/0324798) as evidenced by Health Benefits of Cacao Nibs (Ref. U).
Regarding claim 6 and 17, Bernaert discloses the claimed invention as discussed in above in claim 1 and 3. Bernaert discloses the cocoa bean including the cocoa nibs (‘798, [0047]) as cocoa powder and cocoa extract (‘798, [0032]-[0033], [0037]). Bernaert does not explicitly disclose the cocoa powder with a grain size as cited. However it would have been obvious to one of ordinary skill in the art to grind the cocoa powder to a desired grain size including the cited range as a matter of preference for food application.
Regarding claim 7 and 9, the limitation depended upon product claim 1 and 6, is considered a product by process limitation, see MPEP 2113,
I. PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 8, the recitation in the claim is considered an intended use of the product of claim 1 and 6, hence 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. Bernaert’s flavored cocoa bean (composition) (‘798, [0007]) comprising cocoa bean including cocoa nibs (‘798, [0047]), wherein cocoa nibs contains cocoa fibre as evidenced by Health Benefits of Cacao Nibs (pg.1, bottom of page) and the natural flavoring (‘798, [0008]) including limonene (‘798, [0018]); wherein flavored cocoa bean (composition) is a food product (‘798, [0116] for human consumption. When reading the preamble in the context of the entire claim, the recitation “for treating obesity” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Regarding claim 10, Bernaert discloses the cocoa bean including the cocoa nibs (first substance/cocoa fibre) (‘798, [0047]) to the natural flavoring (‘798, [0008]), the limonene (second substance) (‘798, [0018]) with a weight ratio of between 25:1 and 5:1 (‘798, [0064]), which corresponds to cocoa nibs (first substance/cocoa fibre) is between 96.15% to 83.33% by weight and overlaps the cited range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 11, Bernaert discloses the cocoa bean including the cocoa nibs (first substance/cocoa fibre) (‘798, [0047]) to the natural flavoring (‘798, [0008]), limonene (second substance) (‘798, [0018]) with a weight ratio of between 25:1 and 5:1 (‘798, [0064]), which corresponds to the natural flavoring (‘798, [0008]), limonene (second substance) is between 3.85% to 16.67% by weight and overlaps with the cited range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 13, Bernaert discloses the cocoa bean including the cocoa nibs (first substance/cocoa fibre) (‘798, [0047]) to the natural flavoring (‘798, [0008]), the limonene (second substance) (‘798, [0018]) with a weight ratio of between 25:1 and 5:1 (‘798, [0064]), which corresponds to cocoa nibs (first substance/cocoa fibre) is between 96.15% to 83.33% by weight and overlaps the cited range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 14 and 15, Bernaert discloses the cocoa bean including the cocoa nibs (first substance/cocoa fibre) (‘798, [0047]) to the natural flavoring (‘798, [0008]), limonene (second substance) (‘798, [0018]) with a weight ratio of between 25:1 and 5:1 (‘798, [0064]), which corresponds to the natural flavoring (‘798, [0008]), limonene (second substance) is between 3.85% to 16.67% by weight and overlaps with the cited range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 21, the recitation in the claim is considered an intended use of the product of claim 17, hence 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. Bernaert’s flavored cocoa bean (composition) (‘798, [0007]) comprising cocoa bean including cocoa nibs (‘798, [0047]), wherein cocoa nibs contains cocoa fibre as evidenced by Health Benefits of Cacao Nibs (pg.1, bottom of page) and the natural flavoring (‘798, [0008]) including limonene (‘798, [0018]); wherein flavored cocoa bean (composition) is a food product (‘798, [0116] for human consumption. When reading the preamble in the context of the entire claim, the recitation “for treating obesity” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Regarding claim 22, Bernaert discloses a flavored cocoa bean (composition) (‘798, [0007]) comprising cocoa bean including cocoa nibs (first substance) (‘798, [0047]), wherein cocoa nibs contains cocoa fibre as evidenced by Health Benefits of Cacao Nibs (pg.1, bottom of page) and natural flavoring (‘798, [0008]) including limonene (second substance) (‘798, [0018]). Bernaert discloses the cocoa bean including cocoa nibs (‘798, [0047]) as cocoa product including cocoa powder and cocoa extract (‘798, [0032]-[0033], [0037]).
Bernaert discloses the cocoa bean including the cocoa nibs (‘798, [0047]) as cocoa powder and cocoa extract (‘798, [0032]-[0033], [0037]). Bernaert does not explicitly disclose the cocoa powder with a grain size as cited. However it would have been obvious to one of ordinary skill in the art to grind the cocoa powder to a desired grain size including the cited range as a matter of preference for food application.
With respect to the limitation of “…wherein the composition is obtained by mixing the first substance with the second substance under continuous stirring to form solid spherical lumps of variable dimensions which are then broken by mechanical action…” is considered product by process limitation, see MPEP 2113,
I. PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
With respect to new limitation of “…wherein the composition is in a dosage form of a tablet, capsule, granules, or suspension for oral administration to a human or animal for human or veterinary therapeutic use in a treatment for reducing obesity…”; Bernaert teaches the flavored cocoa bean (composition) as in food products (dosage form) including solution (suspension) and beverage powders (granules) for administration (‘798, [0110]-[0116]). With respect to the recitation of “…for oral administration to a human or animal for human or veterinary therapeutic use in a treatment for reducing obesity…”, first it is noted the claim is to a composition hence the recitation is considered intended use of the composition. 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.
Regarding claim 23, with respect to the composition is in the dosage form of a gelatine capsule; Bernaert teaches the flavored cocoa bean (composition) as in food products (dosage form) including solution (suspension) and beverage powders (granules) for administration (‘798, [0110]-[0116]). It is well known in the art to formulate beverage powders (granules) in gelatine capsule for ease of customer’s consumption in a beverage. It would have been obvious to one of ordinary skill in the art to form Bernaert’s flavored cocoa bean (composition) in gelatine capsule as a matter of preference for ease of customer’s consumption.
Response to Arguments
Applicant's arguments filed 11/2025 have been fully considered but they are not persuasive.
Applicant respectfully submits that Bernaert et al. disclose flavored cocoa beans for chocolate food products. There is absolutely no disclosure of a therapeutic use of flavored cocoa beans and certainly no disclosure of therapeutic use for treating obesity. In this respect, the additional publications cited as evidence (Ref. U and Ref. V) also completely fail to disclose any relation with the use of cacao or limonene for treatment of obesity.
In response to applicant's argument with respect to new limitation of “…wherein the composition is in a dosage form to be administered to a human or animal for human or veterinary therapeutic use in a treatment for reducing obesity…”; Bernaert teaches the flavored cocoa bean (composition) as in food products (dosage form) for administration (‘798, [0110]-[0116]). With respect to the recitation of “…to be administered to a human or animal for human or veterinary therapeutic use in a treatment for reducing obesity…”, first it is noted the claim is to a composition hence the recitation is considered intended use of the composition. 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.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The additional publications cited as evidence (Ref. U and Ref. V) are supportive evidence for elements of the cocoa fibre and the limonene, and not relied upon for a treatment of obesity.
The instant claims are to a composition, and not a treatment of obesity or a process of making a composition; hence Applicant’s remarks do not commensurate the instant claims. Bernaert teaches the flavored cocoa bean (composition) as in food products (dosage form) including solution (suspension) and beverage powders (granules) for administration (‘798, [0110]-[0116]). With respect to the recitation of “…for oral administration to a human or animal for human or veterinary therapeutic use in a treatment for reducing obesity…”, first it is noted the claim is to a composition hence the recitation is considered intended use of the composition. 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.
Conclusion
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/HONG T YOO/Primary Examiner, Art Unit 1792