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 .
This office action is in response to the application filed on September 13, 2022 and in response to Applicant’s Amendments and Arguments/Remarks filed on November 26, 2025.
Status of Application
The amendment filed November 26, 2025 has been entered. Claims 1-20, 22, and 23 are currently pending in the application; claims 9-20, 22, and 23 are withdrawn; claim 21 is canceled; claim 4 has been amended. Claims 1-8 are presented for examination.
Claim Objections
Claim 1 is objected to because of the following informalities: The claim recites “the emulsifier/surfactant comprising a combination,” should read “the emulsifier/surfactant comprises a combination.” Appropriate correction is required.
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.
Claim 4 is 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.
Claim 4 is not clear what the surface area is of the “refined and water addition treated allulose at average of 25 microns” such that one of ordinary skill in the art can determine a surface area that is less than 70% of the roll refined allulose surface area. It is unclear what the applicant is intending to specifically claim. Moreover, it is unclear what the “water addition” to the allulose entails. The specification does not provide clarification and one or ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purposes of examination, the claim will be interpreted as the milk chocolate confectionery product wherein the particle size of the allulose is reduced, thereby refining the allulose and lowering the surface area of the allulose in the confectionery product.
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.
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 1-3, 6, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Seo et al. (US PG Pub 2019/0269140, listed in IDS dated September 14, 2022), herein after referred to as Seo.
Regarding claims 1-3 and 7, Seo discloses a milk chocolate (Examples 2 and 3, [0085]) having reduction of saccharides added to chocolate (i.e., a milk chocolate confectionery product having a reduced sugar content) (Abstract) comprising:
cacao butter (i.e., fat),
allulose (i.e., a sweetener comprising at least one rare sugar, wherein the at least one rare sugar is allulose),
whole milk powder (i.e., a milk ingredient),
cacao mass (i.e., a cacao ingredient),
soybean lecithin (i.e., an emulsifier/surfactant), and
natural vanilla (i.e., an optional bulk filler and/or flavor) (Table 2: Example 2).
Seo does not disclose that the milk chocolate confectionery product has a stable plastic viscosity at 40°C using the NCA/CMA Casson regression model of 500 to 10,000 cp, and stable yield value at 40°C using the NCA/CMA Casson regression model of 1-150 dynes/cm2, and
wherein the plastic viscosity is stable at temperatures of from about 100°F (38°C) to about 120°F (49°C) for at least one month. Nor does Seo disclose that the milk chocolate confectionery product has an apparent viscosity at 40°C and 20 rpm (as measured by Brookfield viscometer) of 1,000 to 15,000 cp.
However, where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Since the structure recited in Seo is substantially identical to that of the claims, the claimed properties or functions must also be present in the composition of Seo. See MPEP 2112.01.I.
To compare, the table below lists the components of the milk chocolate composition of Seo (Seo: Example 2) and an example milk chocolate composition recited in the instant specification (Specification: Example 1, Table 1). Each specific component has been categorized as the components recited in claim 1 for ease of comparison.
Component
Seo (Example 2)
(% by weight)
Instant Specification (Example 1)
(% by weight)
Fat (cacao butter; cocoa butter)
19.03
19
Sweetener (allulose; allulose)
38.37
45.07
Milk ingredient(s) (whole milk powder; anhydrous milk fats and non-fat milk solids)
29.48
20.5
Cacao ingredient (cacao mass; unsweetened chocolate)
12.65
15
Emulsifier (lecithin; lecithin and PGPR)
0.14
0.4
Optional flavor (natural vanilla; vanillin)
0.05
0.03
Given that the milk chocolate compositions as taught by Seo and as recited in the instant specification are substantially identical, the composition of Seo must have the claimed stable plastic viscosity and claimed stable yield value at the claimed temperature range, as well as the claimed apparent viscosity, thereby establishing a prima facie case of obviousness.
Seo also teaches that the emulsifier is lecithin (Table 2: Example 2), but does not teach an amount of about 0.2% to about 0.9% by weight. Seo instead teaches 0.14% by weight of lecithin (Table 2: Example 2), which is slightly under the claimed range.
However, Seo teaches that the milk chocolate may comprise 0.01 to 3 parts by weight of an emulsifier based on 100 parts by weight of the total chocolate composition [0020] wherein the emulsifier may be lecithin and/or polyglycerin polyricinoleate (PGPR) (i.e., 0.01% to 3% by weight of lecithin and/or PGPR) [0021], which encompasses the claimed ranges. 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). See MPEP 2144.05.I.
Regarding claim 6, Seo teaches that the milk chocolate of example 2, as processed in Comparative example 4, has a moisture content of 0.18 wt.% [0093], which falls within the claim limitation of a moisture content of less than about 1.5% by weight.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Seo et al. (US PG Pub 2019/0269140, listed in IDS dated September 14, 2022) as applied to claim 3 above, and further in view of St. John et al. (US Patent 5,464,649; cited on PTO-892 dated December 18, 2023), herein after referred to as St. John.
Seo teaches the milk chocolate confectionery product as set forth above with regard to claim 3. In light of the lack of clarity with regard to the 112(b) rejection above, a “refined and water addition treated” allulose will be considered to be a milled allulose with an addition of water, and overall, the claim will be interpreted as the milk chocolate confectionery product wherein the particle size of the allulose is reduced, thereby refining the allulose and lowering the surface area of the allulose in the confectionery product.
Seo does not teach that the particle size, and thus surface area, of the allulose is reduced.
St. John, in the same field of invention, teaches a milk chocolate that has a reduction in the surface area of the sweetener, achieved by reducing the particle size of the sweetener through milling with the addition of water (col. 9 lines 3-8 and col. 9 line 52 to col. 10 line 18). St. John offers the motivation that the particle size of the ingredients influences the viscosity of chocolate (col. 4 lines 65-66) and that a particle size reduction results in the desired smoothness of the chocolate (col. 3 lines 16-25). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the chocolate of Seo with the sweetener particle size reduction of St. John. One would have been motivated to make this modification for the benefit of producing chocolate with a smooth texture.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Seo et al. (US PG Pub 2019/0269140, listed in IDS dated September 14, 2022) as evidenced by U.S. Dairy Export Council (“Dry Whole Milk & Whole Milk Powder”, Think USA Dairy, Retrieved from Internet Archive WayBack Machine captured 2015; cited on PTO-892 dated December 18, 2023), herein after referred to as USDEC.
Seo teaches the milk chocolate confectionery product as set forth above with regard to claim 3.
Seo additionally teaches that the milk chocolate comprises 19.03 wt.% cacao butter and 29.48 wt.% whole milk powder (Table 2: Example 2). Seo does not explicitly teach the fat content of the milk chocolate.
Cacao butter is a fat, and it is known that whole milk powder contains a substantial amount of fat. As evidenced by USDEC, whole milk powder contains between 26%-42% fat (paragraph 1), for an average and median of 34% fat in whole milk powder. Thus, approximately 10 wt.% of the whole milk powder in the milk chocolate of Seo is fat (34% of 29.48%). Therefore, the milk chocolate of Seo contains 29.03 wt.% fat, which reads on the claim limitation of about ≥30% by weight fat.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Seo et al. (US PG Pub 2019/0269140, listed in IDS dated September 14, 2022) as applied to claim 3 above, and further in view of Despland et al. (US Patent 5,490,996; cited on PTO-892 dated December 18, 2023), herein after referred to as Despland.
Seo teaches the milk chocolate confectionery product as set forth above with regard to claim 3.
Seo teaches that the chocolate comprises an emulsifier in an amount of 0.01 to 3 parts by weight of an emulsifier based on 100 parts by weight of the total chocolate composition (i.e., 0.01-3 wt.%) [0026]. Seo also discloses that the emulsifier may be a phosphate ester of monoglyceride and diglyceride [0021].
Seo does not teach that the emulsifier comprises ammonium phosphatide (AMP) in an amount of 0.1% to about 0.7% by weight.
Despland, in the same field of invention, teaches a sucrose-free milk chocolate (Abstract) wherein the chocolate comprises an emulsifier such as ammonium phosphatide (AMP) (col. 3 lines 19-23). AMP is an ammonium neutralized phosphate ester of mono- and di-glycerides, thereby being a suitable emulsifier for the milk chocolate as taught by Seo. Given that both AMP and a phosphate ester of mono- or diglycerides are taught as suitable emulsifiers in reduced-sugar milk chocolate, the compounds are equivalents and may be substituted for the same purpose. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have used the AMP of Despland as the emulsifier of Seo, thereby arriving at the claimed invention, with the reasonable expectation that the two components are suitable, substitutable equivalents.
Seo teaches that the chocolate comprises 0.01-3 wt.% emulsifier [0026], and given that the AMP of Despland is a suitable emulsifier, the chocolate thus comprises 0.01-3 wt.% AMP, which encompasses the claimed range of about 0.1% to about 0.7% by weight. 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). See MPEP 2144.05.I.
Response to Arguments
Applicant's arguments filed November 26, 2025 have been fully considered but they are not persuasive.
The 112(b) rejection of amended claim 4 has been maintained as the meaning of the claim is still unclear. As suggested in a prior interview with applicant, clear numbers instead of percentages of differences would vastly increase clarity.
Applicant argues, with regard to the 112(b) rejection of claim 4, that the amendments to the claim render the claim language clear when properly read in light of the specification (remarks, p. 8). This argument is not persuasive. The claim remains unclear despite the current amendments as set forth in the rejection above.
Applicant argues that Seo does not teach a combination of emulsifiers as claimed (remarks, p. 9).
This argument is not persuasive. Seo teaches that there is one or more emulsifiers in the composition, including both lecithin and PGPR [0021], as instantly claimed. Just because Seo does not teach a specific example with both emulsifiers, does not mean that Seo does not teach or suggest using two emulsifiers. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See MPEP 2123.
Applicant argues that the emulsifiers, and range, types, combinations, and amounts thereof, taught by Seo is not enabled and thus the claimed invention cannot be considered obvious, citing Raytheon Technologies Corp. v. General Electric Co., 999 F.3d 1374 (Fed. Cir. 2021) (remarks, p. 9-11).
This argument is not persuasive. The teachings of Seo are self-enabling, as Seo teaches all the necessary components so that one of ordinary skill in the art can make and use the subject matter disclosed in Seo. Per MPEP 2121(I), the prior art is presumed to be enabled; when the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable. Seo teaches the emulsifier at 0.01-3 parts by weight based on 100 parts by weight of the chocolate composition [0020], that the chocolate composition may include “one or more” emulsifiers, and specifically teaches PGPR and lecithin as emulsifiers [0021].
Moreover, the prior art is available for all it teaches, not only for specific embodiments. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989). See MPEP 2123.
Lastly, a person of ordinary skill is a person of ordinary creativity, a specific example is not needed in order for one to piece teachings together. See MPEP 2141.03.I. This is especially apparent as the rejection at hand is one of obviousness, not anticipation.
Applicant argues that Seo addresses a different and unrecognized problem than that of the claimed invention (remarks, p. 11-13).
This argument is not persuasive. Aside from any potential “long-felt need,” the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). See MPEP 2144.IV. The prior art of Seo does not need to solve or recognize the same problem addressed by the claimed invention, because Seo already teaches the claimed composition. Seo is not being modified to solve a problem, but rather Seo is merely used as is taught, with the exception of a few component ranges, which render obvious the claim limitations as set forth above.
Applicant argues that the previously filed 132 Declaration rebuts the prima facie case, the declaration is germane and directly addresses the examiner’s assertions, is commensurate in scope with the claims, demonstrates that Seo’s formulation is not “substantially identical,” and that it provides a complete and legally sufficient rebuttal (remarks, p. 13-17).
These arguments are not persuasive. It is not entirely clear why applicant has decided to further argue the findings presented in the 132 Declaration filed on March 12, 2025 since the Declaration has already been considered, responded to, and was found insufficient to overcome the claims at hand. Due to this fact that the Declaration has already been considered and responded to, any further explanation of the content of the Declaration is considered to be a moot point, but nevertheless not persuasive.
In the absence of any further arguments with regard to the rejections of the additional dependent claims, the rejections of these dependent claims are maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 MAURA E SWEENEY whose telephone number is (571)272-0244. The examiner can normally be reached M-F 8:00-5:00 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at (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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/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791