DETAILED ACTION
Background
The response dated May 12, 2026 (Reply) not containing an amendment has been entered. Claims 1-2 and 4-8 as filed with the amendment dated June 20, 2025 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 § 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 [0240]-[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 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 average particle size. Both particle sizes disclosed at [0164] in Miller 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 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 uses the protein particles of Example 13 that have a moisture content of 4 wt%. Accordingly, Miller as modified by Ohata and made by adding an aqueous ingredient to 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. See MPEP 2112.01.I.
Response to Arguments
In view of the remarks accompanying the response dated May 12, 2026, the rejections of claims 1-2 and 4-8 under 35 U.S.C. 112(b) as being indefinite because it is not clear what is actually being measured have been withdrawn.
Regarding the now withdrawn indefiniteness rejection, the Office finds that in view of Applicants remarks at pages 2-3 of the instant specification, the Office finds the recited average particle area to be an average particle size area.
The positions taken in the remarks accompanying the response dated May 12, 2026 (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 “presumes” that Miller discloses the claimed average particle size area and makes “conclusory findings” about average particle size area, respectfully the Office has found evidence reasonably showing that the product fatty solid food of Miller and the fatty solid food as claimed are substantially the same thing. However, the rejection does not cite Miller as anticipating! Rather as cited in the rejection, Miller discloses of submicron particle size of the whey protein micelles at [0020], [0090] and [0190]; further, Miller discloses particles at between about 1 an about 4 microns at [0164]; and, Miller discloses in Examples 16 and 17 conching its mixture containing the claimed amount of protein particles and fat overnight at 65 °C to make a chocolate. The Office’s position remains that the chocolate of Miller at Example 16 is substantially the same thing as the claimed fatty solid food made by a method disclosed in the instant specification at [0059] by extruding a mixture of whey protein concentrate powder and fat with a sugar solution. 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 pages 4-6 alleging that Miller discloses raw material and not product particle sizes, respectfully Miller at Examples 16 and 17 discloses conching to make its fatty solid food, which is akin to milling. Accordingly, the Office finds that the average particle size area of the protein particles in the product is conserved or reduced in making the fatty solid food and that the fatty solid food made by conching in Miller at Examples 16 and 17 is substantially the same as the fatty solid food as claimed and as disclosed extruded fatty solid food of Example 1 at [0059] of the instant specification.
Regarding the data in the instant specification cited in the Reply and the allegation in the Reply that such data in the instant specification distinguish the claimed invention over Miller, respectfully those data do not fairly address Examples 16 and 17 of Miller, especially Example 17, and are of little probative value concerning the disclosure in Miller. In contrast to cited Comparative Example 1 in the specification at [0064], disclosing hand mixing materials for an undisclosed period at 23 °C, Miller discloses conching whey powder and fat powder materials overnight at 65 °C which comprises shearing the material mixture in the same way as the disclosed extrusion in Example 1 of the instant specification. Further, the temperature of mixing at 65 °C disclosed in Miller is higher than the temperature of Example 1 in the instant specification disclosing extruding a mixture at 50 °C, not lower than the mixture temperature of Example 1 like the cited Comparative Example 1.
In addition, and contrary to the allegation that Comparative Example 1 of the instant specification results in protein particles absorbing water, there is little or no added water or moisture in the mixture Example 17 of Miller to absorb into a protein powder.
Accordingly, for all of the above reasons the Office finds that Miller provides a reasonable basis for making a fatty solid food having protein particles with an average particle size area of 250 µm2 or less.
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.
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
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