DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Objections
Claim 19 is objected to because of the following informalities:
Claim 19 recites “comprising mixing the glycerin and the dextrose monohydrate with the conched fat based component prior to tempering” and should be changed to “wherein the mixing of the glycerin and the dextrose monohydrate with the conched fat based component is performed prior to tempering”. 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 3 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.
Regarding claim 3, claim 3 has been amended to further clarify the claim, however it is unclear if “wherein the polyol and dextrose monohydrate combination is added to the fat-based chocolate composition” is the same as or different from the step (d) mixing of claim 1.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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
Claims 1, 3-4, 6-10, and 12-16 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Rostagno et al. GB 1219996 in view of Davila US 6,488,979.
Regarding claim 1, Rostango discloses a method of making a heat resistant chocolate that comprises fat components comprising cocoa butter, wherein the method comprises b) preparing a fat based component by mixing the fat components with the remaining components of the chocolate other than dextrose monohydrate; c) conching the fat based component to provide a fat based chocolate composition and d) mixing dextrose monohydrate with the fat based chocolate composition to produce the heat resistant chocolate, wherein the chocolate comprises between 0.1wt% to 3wt% dextrose monohydrate (preferably the quantity of amorphous sugar added to the chocolate mass represents from 1 to 10%, a quantity of reducing sugar us added to the amorphous sugar. The amorphous sugar to reducing sugar ratio may be between 70:30 and 90:10 parts by weight) (Pg. 1, Right Col., lines 76-92) (reducing sugar can be dextrose monohydrate) (Pg. 2, Right Col., Example, lines 89-90, claim 1, 3).
Claim 1 differs from Rostango in the recitation that the method comprises a) combining the dextrose monohydrate with a polyol, wherein the polyol is not encapsulated or gelled and d) mixing the polyol and dextrose monohydrate combination with the fat based chocolate composition to produce a heat resistant chocolate, wherein the chocolate comprises between 0.5wt% and 1.25wt% polyol.
Davila discloses a method of making a heat resistant chocolate that comprises fat components comprising cocoa butter, wherein the method comprises: (b) preparing a fat-based component by mixing fat components with remaining components of the chocolate to form a fat based component; c) conching the fat based component to provide a fat based chocolate composition (commercial/conventional chocolate is conched) (col.6, lines 11-23, examples); d) mixing a polyol that is not encapsulated or gelled with the fat based chocolate composition to produce the heat resistant chocolate, wherein the chocolate comprises between 0.5wt% to 20wt% polyol (examples, col. 5, lines 3-16). Davila discloses that the polyol can be sorbitol, mannitol or glycerin (col. 5, lines 62-67, col. 6, lines 1-2).
It would have been obvious to one of ordinary skill in the art to modify the method of Rostango to additionally comprise mixing a polyol with the fat based composition to produce a heat resistant chocolate comprising 0.5wt%-1.25wt% polyol as suggested by Davila, in order to provide a heat resistant chocolate, since "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." (MPEP 2144.06)
Claim 1 differs from Rostango in view of Davila in the recitation that the method comprises a) combining the dextrose monohydrate with the polyol and d) mixing the polyol and the dextrose monohydrate combination with the fat-based chocolate composition to produce the heat-resistant chocolate.
However, given that Rostango and Davila each teach adding the dextrose monohydrate and the polyol after a chocolate composition has been conched, and that MPEP 2144.04.C recites “selection of any order of mixing ingredients is prima facie obvious” and “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results.” (MPEP 2144.04.C), it would have been obvious to one of ordinary skill in the art to modify Rostango in view of Davila such that the method comprises a) combining the dextrose monohydrate with a polyol, wherein the polyol is not encapsulated or gelled and d) mixing the polyol and dextrose monohydrate combination with the fat based chocolate composition to produce a heat resistant chocolate.
Regarding claim 3, Modified Rostango suggests mixing the polyol and dextrose monohydrate combination with the fat based chocolate composition prior to tempering, since Rostango discloses adding the dextrose monohydrate to chocolate prior to tempering (Pg. 3, left col. Lines 6-16) and Davila discloses adding polyol to chocolate prior to tempering (‘979, col. 6, lines 3-10).
Regarding claim 4, claim 4 differs from Modified Rostango in the recitation that the method comprises reducing the particle size of the polyol and dextrose monohydrate combination, however Rostango discloses finely grounding the dextrose monohydrate (‘996, Pg. 2, lines 1-10) prior to the addition to conched chocolate, to therefore reduce the particle size of the polyol and dextrose monohydrate combination is seen to be a mere rearrangement in the order of performing process steps, absent evidence of criticality (MPEP 2144.04.C)
Regarding claim 6, Modified Rostango discloses molding the heat-resistant chocolate (‘996, Pg. 3, lines 6-15)
Regarding claim 7, Modified Rostango discloses the method further comprises solidifying the molded heat-resistant chocolate (‘996, Pg. 3, left col. lines 6-15) (‘979, col. 5, lines 25-27)
Regarding claim 8, Modified Rostango discloses using the heat-resistant chocolate to coat a core (‘996, Pg. 3, left col. lines 59-60).
Regarding claim 9, Modified Rostango discloses coating the core with the heat-resistant chocolate by enrobing (‘996, Pg. 1, left col., lines 26-30) (‘979, example 6)
Regarding claim 10, Modified Rostango discloses that chocolate coatings are commonly applied to biscuits and cookies (‘979, col. 1, lines 23-30), therefore it would have been obvious to modify the core to comprise a biscuit or a cookie.
Regarding claim 12, Modified Rostango discloses solidifying the heat-resistant chocolate coated core (‘979, col.7, example 6).
Regarding claim 13, Modified Rostango discloses the dextrose monohydrate was ground to a particle size of 15 to 20 microns (‘996, Pg. 2, left col. Lines 1-10).
Regarding claim 14, Modified Rostango discloses the claimed method and where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes claimed properties or functions are presumed to be inherent (MPEP 2112.01).
Regarding claim 15, Modified Rostango discloses that addition of the polyol and/or the dextrose monohydrate does not alter the viscosity of the fat-based composition to such a degree that it becomes unworkable (‘979, col. 4, lines 58-63, claim 1, 5). Additionally, Modified Rostango discloses the claimed method and where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes claimed properties or functions are presumed to be inherent (MPEP 2112.01).
Regarding claim 16, Modified Rostango suggests mixing the polyol and dextrose monohydrate combination with the fat based chocolate composition prior to tempering, since Rostango discloses adding the dextrose monohydrate to chocolate prior to tempering (Pg. 3, left col. Lines 6-16) and Davila discloses adding polyol to chocolate prior to tempering (‘979, col. 6, lines 3-10).
Claim 5 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Rostagno et al. GB 1219996 in view of Davila US 6,488,979 in view of Silvano WO 2012/146920.
Regarding claim 5, claim 5 differs from Modified Rostango in the recitation that the method further comprises reducing the particle size of the heat resistant chocolate.
Silvano discloses that rerefining conched chocolate which has been mixed with additional ingredients confers greater temperature tolerance when compared a non-re-refined product (Pgs 6-7, Pg. 24, lines 1-4, Pg. 8, lines 7-9). It would have been obvious to one of ordinary skill in the art to modify the method of Modified Rostango such that the method further comprises reducing the particle size of the heat resistant chocolate as taught by Silvano in order to confer greater temperature tolerance to the heat resistant chocolate. It has been held that the “use of known technique to improve similar methods, or products in the same way” supports a conclusion of obviousness (MPEP 2143.I.C).
Claim 11 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Rostagno et al. GB 1219996 in view of Davila US 6,488,979 in view of Ciccone US 2,784,096.
Regarding claim 11, claim 11 differs from Modified Rostango in the recitation that the core comprises a dry aerated mass.
Ciccone discloses that a dry aerated mass (solidified aerated chocolate) can be coated/enrobed with chocolate (col. 4, lines 63-71, claim 1). It would have been obvious to one of ordinary skill in the art to modify the core of Modified Rostango to comprise a dry aerated mass as taught by Ciccone, since it has been held that “Simple substitution of one known element for another to obtain predictable results” supports a conclusion of obviousness.
Note on Allowable Subject Matter
It is noted that claims 1 and 3-16 are not commensurate in scope with the evidence of unexpected results presented in the declaration from 09/01/2022 (see MPEP 716.02(d)) filed 10/29/25. The claims are not commensurate in scope with the evidence because the claim does not explicitly require glycerin in combination with dextrose monohydrate, it is noted that claim 1 includes other listed polyols and glycerin is only an option and therefore glycerin is not specifically required.
Regarding claims 2 and 17-19, The declaration under 37 CFR 1.132 from 09/01/2022 filed 10/29/25 is sufficient to overcome the closest prior art of record, Rostango and Davila and sufficient to establish evidence of unexpected results (MPEP 716.02). “A greater than expected result is an evidentiary factor pertinent to the legal conclusion of obviousness ... of the claims at issue.” “the claimed combination showed an additive result when a diminished result would have been expected. This result was persuasive of nonobviousness”. “Evidence of a greater than expected result may also be shown by demonstrating an effect which is greater than the sum of each of the effects taken separately” (i.e., demonstrating "synergism"). (MPEP 716.02(a).I).
Specifically, at paragraph 16 of the declaration Applicant points out that “the studies presented in the experimental report attached as appendix 2 revealed that adding only dextrose monohydrate did not improve heat resistance, but rather deteriorated heat resistance of the test composition, whereas the combination of glycerin and monosaccharide (dextrose monohydrate) improved heat resistance over glycerin alone”. In Appendix 2, the experimental report, example A shows that “adding dextrose monohydrate does not improve the heat resistance of a fat containing composition and in fact deteriorates the heat resistance of the composition” and example B shows that the combination of glycerin and dextrose monohydrate provides measurably improved heat resistance over glycerin alone, even when the dextrose monohydrate itself does not improve heat resistance. It is noted that example A shows that a 1wt% amount of dextrose monohydrate had a closer time of failure to the control than the other amounts.
In paragraph 19 Applicant points out that “The data in Appendix 3 show that the unique interaction between glycerin and dextrose monohydrate influenced the physical properties of the chocolate matrix in a manner that was unexpected and synergistic when compared with the contributions each of the individual ingredients made to the physical properties of the Control chocolate.” In paragraph 20 Applicant points out that “With regard to Resistance to Deformation, as can be seen from the data in Appendix 3 (see Figure 2.1), both addition levels of dextrose monohydrate alone (1% and 2%, recipes 3 and 4) brought a negative impact to the Control (recipe 6). This means that the combination recipe 5 (1% glycerin and 1% dextrose monohydrate) could only outperform recipe 1 (1% glycerin) if there was a positive interaction between the glycerin and the dextrose monohydrate. This unique interaction changed the negative impact that dextrose monohydrate had alone and through this unique interaction with glycerin resulted in something significantly improved.”
Response to Arguments
Applicant's arguments filed 10/29/2025 have been fully considered, the arguments regarding the support for claim 5 on Pg. 7 of the remarks are persuasive, and the remarks regarding the 103 rejection are discussed below.
On pages 10-11 of the remarks Applicant argues that based on the teachings of Rostango and Davila a person of ordinary skill in the art would not have been motivated to make a chocolate containing both dextrose monohydrate and glycerin. Applicant argues that Rostango makes no suggestion that the dextrose monohydrate itself provides heat resistance to the resulting chocolate product. Applicant argues that Rostango provides no evidence as to the suitability of dextrose monohydrate for providing or enhancing heat resistance to the chocolate of Davila.
These arguments have not been found persuasive. It is noted that Rostango is the reference being modified, not Davila. Rostango discloses that the invention provides a process for producing heat resistant chocolate and that the method includes providing dextrose monohydrate in the composition (Pg.1, Right col., lines 76-92) (reducing sugar can be dextrose monohydrate) (Pg.2, Right Col., Example, lines 89-90). Since the composition of Rostango is directed to a composition for heat resistant chocolate and Davila is also directed to a composition for heat resistant chocolate by including glycerol in the chocolate composition, one of ordinary skill in the art would have had motivation to include glycerol in the heat resistant chocolate composition of Rostango as "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." (MPEP 2144.06).
On Pg 14 of the remarks Applicant argues that a person of ordinary skill in the art at the time of Applicant's filing would have appreciated that polyols other than glycerol would perform in the same manner as glycerol when used in combination with dextrose monohydrate to manufacture a heat resistant chocolate. Applicant argues that this is evidenced by Applicant's specification, which discloses that any of the polyols disclosed therein - and recited in claim 1 as amended herein - can be used in a method of making a heat-resistant chocolate as presently claimed. Applicant cites paragraph [0067] of the specification and paragraph [0081] for support.
While Applicant’s remarks have been considered, they have not been found persuasive. While glycerin is a polyol, glycerin does have a different chemical structure and different chemical properties from the other polyols, and therefore without evidence that the other polyols behave in the same manner with dextrose monohydrate as glycerin presented in the declaration from 09/01/2022 (see MPEP 716.02(d)) filed 10/29/2025, the declaration is not sufficient to support unexpected results for the other listed polyols in the claim. See MPEP 716. Additionally, “arguments presented by applicant cannot take the place of evidence in the record” (MPEP 2145).
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.
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/A.A/
Ashley AxtellExaminer, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792