DETAILED ACTION
Background
The response dated December 04, 2025 (response) not containing an amendment has been entered. Claims 1-2 and 4-8 have been examined. Claim 3 has been canceled.
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 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 1-2 and 4-8 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 recited average particle area in claim 1 is indefinite because it is not clear what is actually being measured. The instant specification at (5) on pages 10-11 directs the measure of an area without units. The claims do not state if the area measured is a surface area, a volume area, an apparent area in light scattering or some other measure of an area?
The Office interprets the claimed have an average particle area as an average particle size area.
Claims 2 and 4-8 are rejected as being dependent from a rejected base claim.
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 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0065822 A1 to Miller et al. (Miller), as evidenced by US 5773056 B to Hohenthal et al. (Hohenthal).
Unless otherwise disclosed, the Office interprets any percent (%) disclosed in the art as being a weight % (wt%); and a wt% is considered to be interchangeable with mass %.
The Office interprets the claimed have an average particle area as an average particle size area.
Regarding instant claims 1-2 and 8, Miller at Example 16 and [240]-[0242] discloses a dark chocolate (claim 8 as a “fatty solid food”) compositing a protein content of at least 90% of 40 - 50 % by mass (mass%) or 36-45 mass%, relative to the total mass of the fatty solid food as protein particles comprising whey protein micelles. Miller discloses at Example 16 compositions of 3-5 mass% milkfat, 5-15 mass% cocoa butter ad 30-40 mass% cocoa liquor which as disclosed in Hohenthal at col. 1, lines 45-49 is 50 to 55 wt% fat as cocoa butter, for a total fat content of about (3 + 5 + 50% of 30 mass% at a minimum or) about 23 mass % to about (5% + 15% + 55% of 40% at most or) about 42 mass% of fat, relative to the total mass of the fatty solid food (claim 2) to form the chocolate. Example 17, Method 3 in the Table at [0243] discloses (at [0249]) chocolate having a protein content of 30-35 wt%, 20-30 wt% cocoa butter and 1-10 wt% milkfat, of 21 to 30 wt% fat (claim 2). The Office considers the claimed protein particles dispersed in a fat continuous phase to include the fatty solid food disclosed as a chocolate in Examples 16 and 17, Method 3 of Miller.
Examples 16 and 17 of Miller use a protein particle powder from Example 13 which has an apparent particle size of from 10 to 100 µm, which is a wide range of an apparent size and does not indicate an average size or the nature of the particle size distribution. Accordingly, Miller does not provide an Example of protein particles in its chocolate fatty solid food having an average particle area of 250 µm2 or smaller. However, at [0158] discloses whey protein micelle concentrates in solid form for protein rich consumables like (at [0127]) chocolate. Further, at [0164] Miller discloses spray dried pure whey protein micelles having a surface median diameter (D32) of between 3 and 4 µm and which is most appropriate for surface area measurements; and, Miller at [0164] discloses an average particle size diameter of greater than 1 µm for agglomerates. Both disclosed particle sizes appear to have an average particle area of 250 µm2 or smaller.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Miller to use the spray dried whey protein micelle particles of [0164] in Miller having an average particle size area of 250 µm2 or smaller to make its chocolate because Miller discloses that its spray dried pure whey protein particles because Miller discloses that such particles make a desirable protein for consumables like chocolate.
Regarding instant claims 6-7, the chocolate of Miller at Example 16 appears to be substantially the same thing as the claimed fatty solid food. Accordingly, absent a clear showing as to how the moisture content and particle size stability in the chocolate of Miller differs from that as claimed or as to how the claimed particle size is unobvious over Miller, the Office considers the dark chocolate product disclosed in Miller at Example 16 to have a moisture content of from 0.5 to 15 mass%, relative to the total mass of the fatty solid food as in claim 6 and to be a fatty solid food wherein the protein particles with an average particle area of 250 µm2 or smaller remain dispersed in the fat continuous phase even after a lapse of 30 days at 23°C after production as in claim 7. See MPEP 2112.01.I.
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0065822 A1 to Miller et al. (Miller), as evidenced by US 5773056 B to Hohenthal et al. (Hohenthal), as applied to claim 1, above in view of JP S6443150 A to Ohata (Ohata), of record.
All references to Ohata refer to the Clarivate machine translation, a copy of which is included with this Office Action.
As applied to claim 1, Miller at Example 16 discloses a fatty solid food comprising protein particles have an average particle area of 250 µm2 or smaller that are dispersed in a fat continuous phase, and wherein a protein content is 16.2 to 50 % by mass, relative to the total mass of the fatty solid food of the food.
Regarding instant claim 4, Miller does not disclose an example of a fatty solid food having the claimed protein content and further comprising an aqueous ingredient. However, Miller at [0130] discloses amino acids as additional nutrients.
Regarding instant claim 5, Miller does not provide an example of a fatty solid food comprising 1 to 15 mass% of an aqueous ingredient, relative to the total mass of the fatty solid food. However, Miller at [0242] discloses mixing and heating to make a chocolate.
The Office considers the claimed fatty solid food having an aqueous ingredient in the amount of 1 to 15 mass%, relative to the total mass of the fatty solid food as in claim 5 to include the composition at any time during the forming of the fatty solid food as long as the claimed fat is present, including at formulation and before, during and after any moisture removal step.
Ohata at Abstract on page 1 discloses a chocolate having excellent flavor, and made by blending a chocolate raw material containing a saccharide and protein, and making it into a mixture with a specific water content, which is 2 to 15 wt% (mass%) , relative to the total mass of the chocolate. At page 2, 3rd and 4th to last line, Ohata discloses adding water to the sugar and protein as water, a sugar solution, or amino acid solution as occasion demands to make a mixture whose moisture is 2~15%, which the claimed 1 to 15 mass% of an aqueous ingredient, relative to the total mass of the fatty solid food at least overlaps. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", the Office considers that a prima facie case of obviousness exists. See MPEP 2144.05.I. Further, at claim 1 on page 6, Ohata discloses heating the mixture to make the chocolate.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Ohata for Miller to add an aqueous ingredient as in claim 4 and to add the aqueous ingredient in the amount of 1 to 15 wt%, relative to the total mass of the fatty solid food as in claim 5. Both references disclose making protein containing chocolates and the chocolates made thereby by a method including mixing the ingredients and heating the mixture. The ordinary skilled artisan in Miller would have desired to form a chocolate product as a fatty solid food having a content of 1 to 15 wt% of an aqueous ingredient by mixing and heating a mixture including the protein, fat and aqueous ingredient to form a protein containing chocolate having an improved flavor.
Regarding instant claim 6, Miller does not disclose the moisture content of its fatty solid food of Example 16. However, the product of Example 16 of Miller as modified by Ohata and made by adding an aqueous ingredient and the claimed fatty solid food having a moisture content of 0.5 to 15 mass %, relative to the total mass of the fatty solid food appear to be substantially the same thing. Accordingly, absent a clear showing as to how the moisture content in the chocolate of Miller as modified by Ohata differs from that as claimed, the Office considers the chocolate of Example 16 of Miller as modified by Ohata to have the claimed moisture content of 0.5 to 15% by mass based on the mass of the chocolate as in claim 6. See MPEP 2112.01.I.
Response to Arguments
In view of the remarks accompanying the response dated December 04, 2025, the rejections of claims 1-2 and 6-8 are rejected under 35 U.S.C. 102 as being anticipated by US 2013/0065822 A1 to Miller et al. (Miller), as evidenced by US 5773056 B to Hohenthal et al. (Hohenthal) have been withdrawn and converted to an obviousness rejection.
The positions taken in the remarks accompanying the response dated December 04, 2025 (Reply) have been fully considered but are not found persuasive for the following reasons:
Regarding the position taken in the Reply at pages 2-3 alleging that the Office action merely concludes Miller discloses protein particles having an average particle area of 250 µm2 or smaller and that it is not clear what is the basis in for the finding, respectfully the contentions are not found persuasive. The position taken in the rejection is based on the submicron particle size of the whey protein micelles not cited in the rejection but disclosed repeatedly in Miller as at [0020], [0090] and [0190] and establishing that the chocolate of Miller at Example 16 containing them is substantially the same thing as the claimed fatty solid food. Based on this disclosure in Miller, the Office is entitled to shift the burden to Applicant to overcome the rejection. See MPEP 2112.01.I.
Regarding the position taken in the Reply at page 4 and its particle area analysis, even if the broadly reported apparent diameter in Example 13 of Miller were not a highly variable measure that is perspective dependent, there is no way for one to ascertain any median from what appears to be just a rough distribution. Those data are at best indeterminate.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW E MERRIAM whose telephone number is (571)272-0082. The examiner can normally be reached M-H 8:00A-5:30P and alternate Fridays 8:30A-5P.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki H Dees can be reached on (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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/ANDREW E MERRIAM/Examiner, Art Unit 1791