DETAILED ACTION
Background
The amendment dated February 17, 2026 (amendment) amending claims 1, 2, 4, 13-14 and 18-19 8 has been entered. Claims 1-7 and 9-21 as filed with the amendment have been examined. Claim 8 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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 17, 2026 has been entered.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 4-7 and 9-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-6 and 9-16 of copending Application No. 18/044,593 (reference application) in view of US 2009/0017184 A1, to De Brouwer et al. (De Brouwer). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claim 1 and claim 1 of the reference application claim the same confectionary composition and bulking agent comprising dietary fibre and a partially hydrolysed starch, further comprising 10 wt% or more of fat, and wherein the partially hydrolysed starch and the dietary fibre are present in the bulking agent at a weight ratio ranging from 80:20 to 20:80.
Further regarding instant claims 1-2, 4-7 and 9-12, they differ from claims 1, 4-6 and 9-16 of the reference application where the claims of the recite 20 wt% to 45 wt% of sugar; and, the claims 1, 4-6, 9-12 and 14-16 of the reference application do not mention sugar; and claim 13 of the reference application recites 45 wt% or less of total sugars. Further however, De Brouwer et al. at clam 1 disclose a chocolate confectionary composition comprising corn dextrin (“partially hydrolysed starch”), inulin (“dietary fibre”) and 23 to 27 wt% sucrose (“sugar”). The ordinary skilled artisan would have found it obvious in view of De Brouwer for one in the reference application to include from 20 wt% to 45 wt% of sugar, based on the weight of the confectionary composition because De Brouwer discloses that the claimed amount of sugar is suitable to make a desirable confectionary composition comprising bulking agents.
In addition, claims 1-2, 4-7 and 9-12 differ from claims 1, 3-6 and 9-16 of the reference application in that claims 1-2, 4, 7 and 9-12 recite the partially hydrolysed starch as a bulking agent and claims 1, 3-6 and 9-16 of the reference application recite a maltodextrin which does not encompass resistant maltodextrin as bulking agent. However, instant claims 5-6 recite a maltodextrin having a DE of 15-35 which is not a resistant maltodextrin; and the specification in the reference application at [0016] and the instant specification at [0016] discloses maltodextrin as the partially hydrolysed starch, including (at [0015]) disclosing partially hydrolysed starch having a DE of 10 to 40. Accordingly, the claimed partially hydrolysed starch and the maltodextrin in the claims of the reference application are not patentably distinct from one another.
Claims 9 and 12 are identical to claims 11 and 15 in the reference application, as follows:
Claim 11 in the reference application is identical to claim 9; and,
Claim 15 in the reference application is identical to claim 12.
Regarding instant claim 2, the claimed dietary fibre recites the same bran and cocoa fibre as in claim 16 of the reference application. Further, the claimed dietary fibre includes the micronized wheat bran in claim 4 and micronized cocoa fibre in claim 5 of the reference application because the claimed cocoa fibre and bran include the same milled or ground dietary fibre. The instant specification discloses milled fibre at [0051] and [0054], while the reference application specification at [0050], [0052] and [0055] discloses micronized dietary fibre as including or being the same thing as milled fibre.
Regarding instant claims 4-7 and 11, claim 6 in the reference application is identical to claim 4 except that claim 4 recites a partially hydrolysed starch having a dextrose equivalence (DE) of from 10 to 40 and claim 6 of the reference application recites a maltodextrin having a DE of from 10 to 40; likewise, claims 5 and 6 recite maltodextrin as the bulking agent with the dietary fibre as in claim 1 of the reference application; claim 7 is identical to claim 9 of the reference application except that claim 7 recites a partially hydrolysed starch and claim 9 of the reference application recites a maltodextrin; and, further, claim 10 is identical to claim 12 of the reference application except that claim 10 recites a partially hydrolysed starch and claim 12 of the reference application recites a maltodextrin. The specification in the reference application at [0016] and the instant specification at [0016] both disclose maltodextrin as the partially hydrolysed starch. Accordingly, the claimed partially hydrolysed starch and the maltodextrin in the claims of the reference application are not patentably distinct from one another.
Regarding instant claim 11, claim 11 is identical to claim 13 of the reference application except that claim 11 recites a partially hydrolysed starch and claim 13 of the reference application recites a maltodextrin, where maltodextrin and partially hydrolysed starch are obvious variants or the same thing . Further claim 13 of the reference application recites “substantially no milk solids” which the Office considers to be substantially the same thing as the claim 11 “no milk solids”. In addition, claim 11 differs from claim 13 of the reference application in that claim 13 of the reference application recites 45 wt% or less of total sugars which lies within the range of 20 to 45 wt% as claimed in claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 13-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-19 and 22-23 of copending Application No. 18/044,593 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claim 13 and claim 18 of the reference application claim the same confectionary composition and bulking agent comprising dietary fibre and a partially hydrolysed starch, further comprising 10 wt% or more of fat and 20 wt% to 45 wt% of sugar, and wherein the partially hydrolysed starch and the dietary fibre are present in the bulking agent at a weight ratio ranging from 80:20 to 20:80. Likewise, claims 13-14 and 16-17 recite a partially hydrolysed starch as a bulking agent whereas claims 18-19 and 22-23 of the reference application recite maltodextrin which is not a resistant maltodextrin as a bulking agent. However, claim 15 recites maltodextrin having a DE of from 15 and 35 as the partially hydrolysed starch and is not patentably distinct from claim 18 of the reference application. Further, the instant specification at [0016] discloses maltodextrin as a partially hydrolysed starch. Thus, the claimed partially hydrolysed starch and the maltodextrin which is not a resistant maltodextrin in the claims of the reference application are not patentably distinct from one another.
Regarding instant claim 14, the claimed dietary fibre recites the same bran and cocoa fibre respectively, as the micronized wheat bran and micronized cocoa fiber in claim 19 of the reference application. Further, the instant specification discloses the dietary fibre as a milled fibre at [0051] and [0054], while the reference application specification at [0050], [0052] and [0055] discloses micronized dietary fibre as being the same thing as milled fibre.
Except for the difference of partially hydrolysed starch in the claim rather than maltodextrin, as discussed above, claim 16 is otherwise identical with claim 23.
Claim 17 is identical to claim 22 in the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-7 and 9-21 are rejected under 35 U.S.C. 103 as unpatentable over US 2009/0017184 A1, to De Brouwer et al. (De Brouwer) in view of US20167/0135368 A1 to Brendel et al. (Brendel), both of record.
The Office interprets the claims as reciting a wt% of fat and sugar based on the total amount of the confectionary composition.
Regarding instant claims 1, 3, 7, 9-14 and 16-17 De Brouwer at Abstract discloses a chocolate (a “confectionary composition” of claim 1 and a food product of claim 12) having a sucrose content reduced by at least 30 wt% and containing a dextrin (“partially hydrolysed starch” - claims 1 and 13) and inulin (claims 3 and 14) as “dietary fibre” (claims 1 and 13). Further, at [0040] and the accompanying Table De Brouwer discloses a dark chocolate containing no animal products or milk solids (“vegan chocolate” - claim 13) comprising 29.2 wt% of sucrose (“sugar” in claims 1 and 13), and (8.8 wt% + 5.8 wt% or) 14.6 wt% in total of a bulking agent (claim 9). Further, as disclosed at [0040] of De Brouwer, the vegan chocolate composition contains no high-intensity sweeteners and contains no milk solids (claim 11) and is free of milk solids (claim 13). The chocolate and the vegan chocolate disclosed, respectively at [0037] and [0040] of De Brouwer comprises 8.8 wt% of dietary fibre (claims 10 and 17) and 5.8 wt% of corn dextrin.
Further, and regarding instant claims 4-6 and 15, De Brouwer does not disclose a partially hydrolysed starch having a dextrose equivalence (DE) of from 15 to 35 as in claims 1 and 13, or of from 15 to 30 as in claim 4; further, De Brouwer does not disclose a partially hydrolysed starch comprising a maltodextrin or a glucose syrup having a DE of from 15 to 35 as in claims 5 and 15, or disclose as a partially hydrolysed starch the maltodextrin having a DE of from 15 to 35 as in claim 6. And De Brouwer does not disclose the claimed disclose the claimed partially hydrolysed starch to dietary fiber a weight ratio of 80:20 to 20:80 as in claims 1 and 13, or disclose the maltodextrin and dietary fiber weight ratio of 70:30 to 30:70 as in claims 7 and 16; further, De Brouwer does not disclose the claimed total amount of 10 to 25 wt% of bulking agent where a partially hydrolysed starch has a DE of 15 to 35 relative to the total weight of the composition as in claim 9, and does not disclose a composition having from 4 to 20 wt% of the partially hydrolysed starch, based on the total weight of the composition as in claims 10 and 17.
Brendel discloses at Abstract a reduced calorie confectionary item which at [0024] comprises from 2 to 10 wt% of a starch hydrolyzate (“partially hydrolysed starch”), which the claimed 4 to 20 wt% overlaps, and from 1 to 10 wt% of a fiber, all %s by weight relative to the total weight of the confectionery. At [0029] Brendel discloses that suitable fiber can comprise cereal fiber or fruit fiber. As disclosed in Brendel at [0053], the partially hydrolysed starch may be a maltodextrin or glucose syrups. Further, at [0055] maltodextrins are classified as having a DE of from 1 to 20, which the claimed DE of 15 to 35 in claims 1 and 13 overlaps and which the claimed DE of from 15 to 30 in claim 4 overlaps, while glucose syrups have a DE of greater than 20, which the claimed DE 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. The ordinary skilled artisan in Brendel would have found it obvious to use the claimed partially hydrolysed starch having a DE of from 15 to 35 in the claimed amount because Brendel discloses that such partially hydrolysed starches provide desirable confectionary compositions.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Brendel for De Brouwer to include from 4 to 20 wt% of a partially hydrolysed starch, as a maltodextrin or a glucose syrup having a DE of from 15 to 35 or a DE of from 15 to 30 as claimed. Further, the ordinary skilled artisan would have found it obvious to use an amount of the partially hydrolysed starch as disclosed in Brendel which would lie within the claimed weight ratio of partially hydrolysed starch to dietary fiber of 80:20 to 20:80 and of 70:30 to 30:70 when the fiber is used as disclosed in De Brouwer at [0037] and [0040] of De Brouwer. Both references disclose confections that are conventionally fat-based and that comprise sugar and a combination of partially hydrolysed starch and fiber in roughly the same amounts as each other. The ordinary skilled artisan in De Brouwer would have desired to include the partially hydrolysed starch of Brendel in the amount of the fiber in De Brouwer to reduce the need for fat to build body or make the confection of De Brouwer in solid form.
Regarding instant claims 18-19 and 21 De Brouwer at Abstract discloses a reduced-sugar chocolate having a sucrose content reduced by at least 30 wt% and containing a dextrin (“partially hydrolysed starch” - claim 18) and inulin (claim 19) or oligofructose as “dietary fibre” (claim 18). Further, at [0037] and [0040] and the accompanying Tables De Brouwer discloses, respectively a dark chocolate containing no high intensity sweeteners (claim 18), and (8.8 wt% + 5.8 wt% or) 14.6 wt% in total of a bulking agent as 8.8 wt% of dietary fibre (claim 21) and 5.8 wt% of corn dextrin. In addition, De Brouwer at [0016] discloses use of from 6 to 11 wt% of dietary fiber (claim 21) at [0011] discloses a sugar content of from 15 to 30 wt%, which the claimed 0 to 20 wt% overlaps. See MPEP 2144.05.I. De Brouwer further indicates the desired (at [0005]) to reduce sugar content with bulking agents.
De Brouwer does not disclose a reduced-sugar chocolate wherein sugar is present in a concentration of from 0 to 20 wt% of the total weight of the chocolate; and De Brouwer does not disclose a partially hydrolysed starch having a dextrose equivalence (DE) of from 15 to 35 as in claim 18; or disclose the claimed partially hydrolysed starch to dietary fiber a weight ratio of 80:20 to 20:80 as in claim 18, or disclose the amount of 4 to 20 wt% of the total weight of the composition as in claim 21. However, at [0011] De Brouwer discloses sucrose (“sugar”) in the amount of 15 to 30 % by weight (wt%) of the composition, which the claimed 0 to 20 wt% lies within. 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. The ordinary skilled artisan would have found it obvious in view of De Brouwer to reduce its sugar content to from 0 to 20 wt% of its chocolate because De Brouwer discloses that 0 to 20 wt% of sugar is a desirable amount for making a reduced sugar chocolate.
However, the ordinary skilled artisan in De Brouwer would have found it obvious in view of Brendel at [0024], [0053] and [0055] to use the claimed maltodextrin or glucose syrups having a DE of from 15 to 35 as its partially hydrolysed starch in the amount of 2 to 10 wt% of the composition to further reduce the amount of sugar needed to make its solid confection, which includes the amount of dietary fiber disclosed in De Brouwer at [0016] and meets the claimed partially hydrolysed starch to dietary fiber a weight ratio of 80:20 to 20:80.
Claims 2, 14 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over US 2009/0017184 A1, to De Brouwer et al. (De Brouwer) in view of US20167/0135368 A1 to Brendel et al. (Brendel) as applied to claims 1, 13 and 18 above, and further in view of US2022/0039446 A1 to Dimartino et al. (Dimartino).
As applied to claims 1, 13 and 18 above, De Brouwer at Abstract and [0037] and the accompanying Table discloses a confectionary chocolate composition comprising a bulking agent as dietary fiber and partially hydrolysed starch and 20 to 45 wt% sugar, and discloses (at [0040]) and the accompanying Table a vegan chocolate composition and a reduced-sugar chocolate comprising a bulking agent as dietary fiber and partially hydrolysed starch, with all compositions containing 10 wt% or more of fat as cocoa butter and chocolate liquor, all %s by weight (wt%s) relative to the total weight of the confectionery composition. Further, De Brouwer as modified by Brendel at [0029], [0053] and [0055] discloses compositions having a partially hydrolysed starch with a dextrose equivalence (DE) of from 15 to 35.
De Brouwer as modified by Brendel does not disclose a dietary fiber selected from the group consisting of bran, cocoa fiber, bamboo fiber and mixtures of two or more thereof.
Dimartino at Abstract discloses cocoa pod husk powder (“cocoa fiber”) and (at [0041]-[0042] discloses a chocolate product having a reduced fat content comprising sucrose or sugar and bulk sweeteners including maltodextrin, and (at [0046] discloses the chocolate product containing 2 to 10 wt% of the cocoa fiber. At Example 4 and [0177] and the accompanying Table, Dimartino discloses its chocolate comprising cocoa mass, cocoa butter, sugar and 9.23 wt% of the cocoa fiber, based on the total weight of the chocolate composition.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Dimartino for De Brouwer as modified by Brendel to use the cocoa fiber of Dimartino as its dietary fiber. All references disclose confectionary compositions comprising bulking agents including dietary fiber and having a reduced level of sugar and/or fat. The ordinary skilled artisan in De Brouwer as modified by Brendel would have desired to use the cocoa fiber of Dimartino as its dietary fiber that is from fruit as in Brendel and as the dietary fiber in De Brouwer for use in its chocolate, in particular as the cocoa husk and fiber powder of Dimartino is compatible with chocolate and its flavor.
Response to Arguments
In view of the amendment dated September 09, 2025, the following rejections have been withdrawn as moot:
The rejection of claims 1-7 and 9-21 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite in regard to the basis for the weight percent of fat and the weight % of sugar;
The rejection of claim 13 under 35 U.S.C. 112(b) as being indefinite in regard to the antecedent basis for the limitation "the confectionary composition";
The rejections of claims 1-7 and 9-17 under 35 U.S.C. 102(a)(1) as being anticipated by US 2009/0017184 A1 to De Brouwer et al.; and,
The rejections of claims 18-21 under 35 U.S.C. 103 as being unpatentable over US 2009/0017184 A1, to De Brouwer et al.
Applicant’s positions taken in the remarks accompanying the amendment dated February 17, 2026 (Reply) with respect to claims 1-7 and 9-21 and the anticipation rejection over De Brouwer have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Regarding the outstanding nonstatutory double patenting rejections, the Reply provides no traversal of the rejections which are maintained.
Please be advised that the claims will not be held in abeyance.
Regarding the positions taken in the remarks accompanying amendment dated February 17, 2026 (Reply), the positions have been fully considered and are not found persuasive for the following reasons:
Regarding the position taken in the Reply at pages 12-13, the rejection acknowledges the amendment adding narrowing dextrose equivalent (DE) language to the instant claims and that a partially hydrolysed starch as claimed in claims 1, 13 and 18 has a DE of from 15 to 35.
Regarding the position taken in the Reply at pages 13-14 that De Brouwer does not meet the sugar content of 0 to 20 wt% in the reduced-sugar, the Reply acknowledges that De Brouwer at [0011] discloses a sugar content of from 15 to 30 wt%, which the claimed range in claim 18 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, and respectfully it does not follow from the allegation that De Brouwer at [0004] made comments discouraging use of inulin alone that De Brouwer does not support the concept of the reduced-sugar chocolate as claimed. Paragraph [0011] of De Brouwer disclosing sugar in amounts overlapping the claimed range in claim 18 and the use of inulin in a further combination at [0007] of De Brouwer provide evidence contrary to the position taken and preponderate on this question.
Applicants are respectfully reminded that the subcombination in claims 18-21 may be found to be patentably distinct invention from the subcombination claimed in claims 1-7 and 9-17.
All remaining positions taken address the nature of the NUTRIOSE and dextrins disclosed in the art merely repeat positions already addressed. These positions are taken as a general allegation of patentability and are given no additional weight. See 1.111(b).
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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/ANDREW E MERRIAM/Examiner, Art Unit 1791