DETAILED ACTION
Background
The amendment dated August 07, 2025 (amendment) amending claims 1-2, 4 and 7-9 and canceling claims 5-6 and 10-18 has been entered. Claims 1-4 and 7-9 as filed with the amendment have been examined. With the exception of the remaining objection to claim 8, all outstanding claim objections have been withdrawn. In view of the amendment, all outstanding rejections of canceled claims 5-6 and 10-18 have been withdrawn.
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 Objections
Claims 1, 2 and 8 are objected to because of the following informalities:
In claim 1, at line 7 after “by weight,” insert -- based on the weight of the chocolate powder,--;
In claim 2, at line 2 after “by weight” insert -- based on the weight of the chocolate powder--; and,
In claim 8, at line 3 before “the additive” insert a comma (,), start a new line with an indent to start the new line, and insert --further wherein, -- to begin the new line.
Appropriate correction is required.
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 1-4 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0196237 A1 to Wegst (Wegst) in view of CN 102894159 A to Geng (Geng), as evidenced by US 2348837 to Nyrop (Nyrop).
All references to Geng refer to the Clarivate machine translation, a copy of which was included with the previous Office action.
Unless otherwise indicated, the Office considers a disclosed percentage (%) without units to be a weight %, and considers a weight% and a mass% to be interchangeable. Further, unless otherwise indicated the Office considers grams (g) and milliliters (ml) to be interchangeable and that the disclosed ingredient or food has a specific density of about 1.0 g/mL.
Regarding instant claims 1 and 9, Wegst at Abstract discloses methods of making a freeze-dried edible (“freeze-dried chocolate”) from an aqueous solution or slurry (“chocolate solution”) of cocoa powder (a “chocolate powder” as a “cocoa product” as in claim 9) and water (“solvent having a water content of 100% by weight, based on the solvent weight”) including a carbohydrate ingredient. The Wegst disclosed method comprises freezing the chocolate solution (at [0023]) in a mold (“filling in a mold, freeze-forming”) and lyophilizing (“freeze-drying”) the frozen slurry (chocolate solution) and then demolding to form an edible. At [0039], Wegst discloses forming a chocolate solution by thoroughly mixing or whipping (“subjecting the chocolate powder chocolate powder and solvent to mixing and high shear emulsifying to obtain a chocolate solution”) mixtures of water, cocoa powder and sugar (claim 9 as an “other ingredient”).
The Office interprets the term “shear” in claim 1 as including a shear of more than 1,000 rpm as disclosed in the instant specification at page 5, lines 20-23. The Office considers the claimed “mixing and shear emulsifying” to include the mixing and whipping into a foam disclosed in Wegst at [0039].
Further regarding instant claim 1, the Office considers the recited chocolate being put under a temperature of ≤65°C as including any chocolate that is exposed to a temperature of ≤65°C for any amount of time via any means.
Further regarding instant claim 1, Wegst at [0062] and the accompanying Table 6 and the accompanying Table (Table 1) at page 4, 2nd to last line discloses a freeze-dried chocolate cast from a chocolate solution comprising 10% by volume cocoa powder (“chocolate powder”), 10% carbohydrate and the remainder of water, which is to 80 wt% by volume (“a weight ratio of the solvent of 60% to 80% by weight, based on the weight of the chocolate solution”). Water’s density of 1.0 g/ml is below that of cocoa powder and maple sap solids. The ordinary skilled artisan would have found it obvious to use the claimed weight ratio of solvent in the chocolate solution as Wegst discloses the claimed solvent weight ratio as desirable to produce a successful casting or molding as denoted by a “Y” (see Wegst at [0043]). In addition, as the solvent volume in Wegst during freeze-drying the relative amount of water will drop below 80 vol%, and the Office considers the claims as including the solvent weight ratio of a chocolate solution at any time during the claimed process.
Still further regarding instant claim 1, and regarding instant claim 2, Wegst does not disclose that its chocolate powder has a total fat content of less than or equal to (<) 25 wt% and of from 15-25 wt% (claim 2). However, Nyrop at col. 1, lines 9-16 discloses that cocoa powder is a product of fat removal from cacao and that cocoa powder has a fat content of from 10 to 25 wt%. Accordingly, the Office considers the claimed chocolate powder having a total fat content of the chocolate powder of less than or equal to (<) 25 wt% and of from 15-25 wt% (claim 2) to include the cocoa powder of Wegst.
Still further regarding instant claim 1, because the claim recites a particle size without more, the Office interprets the claims as including any chocolate powder wherein even one particle that has a particle size of <35 µm. Wegst does not disclose a particle size of its chocolate powder and so does not evidence the method of using a chocolate powder having a particle size of <35 µm. Further, Wegst does not disclose that its freeze-dried chocolate does not stick to packaging, and does not melt or deform upon storage at a temperature of ≤65°C; however, at [0043] Wegst discloses that stickiness indicates failure in its freeze-dried chocolate products.
Geng discloses chocolate bean (“chocolate powder”) at [0004] on page 2 to provide a smooth mouthfeel and improved taste by a manufacturing method comprising (at [0016] on page 4, at step 5 grinding in a refiner cocoa powder with glucose and lecithin as slurry to a particle size particle size of 25-30 µm and, at step 6 on page 4 spray drying to form a powder. At page 2 [0005], Geng discloses a cocoa powder comprising from 15 to 38 wt% cocoa butter, which the claimed total fat content of <25 wt% 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.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Geng for Wegst to use a cocoa powder having a particle size of <35 µm. Both references disclose chocolate powders for use in making chocolate or chocolates. The ordinary skilled artisan in Wegst would have desired to reduce the particle size of its cocoa powder to a particle size of <35 µm as in Geng to improve the mouthfeel of foods made from the cocoa powder.
Yet still further regarding instant claim 1, the freeze-dried chocolate of Wegst as modified by Geng appears to be the same thing as the claimed freeze-dried chocolate. Accordingly, absent a clear showing as to how the physical form and the sticking or thermal properties of the claimed freeze-dried chocolate differs from that of Wegst as modified by Geng, the Office considers freeze-dried chocolate of [0062] and the accompanying Table on page 4 of Wegst to comprise a freeze-dried chocolate that does not form a continuous fat phase and that does not sticking to packaging and does not melt or deform upon storage at a temperature of ≤65°C. See MPEP 2112.01.I.
Regarding instant claims 3-4, Wegst as modified by Geng does not disclose a chocolate powder obtained by roller refining or jet milling (claim 3) or equipment used in the roller refining comprising two three-roll refiners in series, a six-roll refiner or a five roll refiner as in claim 4. However, the recited chocolate powder in claims 3-4 is a product-by-process.
The patentability of a product does not depend on its method of production. See MPEP 2113.I. Further, once a product appearing to be substantially identical is found and a prior art rejection is made, the burden shifts to the applicant to show an nonobvious difference over the art. See MPEP 2113.II. In the present case, Wegst at [0062] and the accompanying Table on page 4, 2nd example of Wegst discloses refining to make chocolate powder by mixing and grinding or refining chocolate solutions. The Office considers the Wegst as modified by Geng chocolate powder to be substantially the same thing as the claimed chocolate powder made by roller refining or milling using a five roll refiner, a six roll refiner or two three roll refiners or six roll refiners as in claims 3-4.
Regarding instant claim 7, at [0012] Wegst discloses casting chocolate around a freeze-dried inclusion (a “next filling is conducted” on a “chocolate solution that is superficially or fully prefrozen into a solid”). Further, at [0071] Wegst discloses adding to the mold a series of solutions one after the other, through successive freezing. The ordinary skilled artisan in Wegst would have found it obvious to fill its mold at least two times and prefreeze each filling into a solid form.
Regarding instant claim 8, Wegst at [0066]-[0077] discloses blackberry (“fruit”) as an additive further added in the chocolate solution and in the mold.
Claims 1-4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over US 6361813 B1 to Kitaoka et al. (Kitaoka) in view of CN 102894159 A to Geng (Geng).
All references to Geng refer to the Clarivate machine translation, a copy of which is included with this Office action.
Unless otherwise indicated, the Office considers a disclosed percentage (%) without units to be a weight % (wt%), and considers a weight% and a mass% to be interchangeable. Further, unless otherwise indicated the Office considers grams (g) and milliliters (ml) to be interchangeable and that the disclosed ingredient or food has a specific density of about 1.0 g/mL
Regarding instant claims 1, 3 and 9, Kitaoka at Abstract discloses methods of making freeze-dried food products (“freeze-dried chocolate”) by forming aqueous solution (“chocolate solution”) or paste, emulsifying the solution (“subjecting the chocolate powder chocolate powder and solvent to mixing and shear emulsifying to obtain a chocolate solution”), cooling the emulsion, freeze-drying the emulsion by further cooling in a mold (“filling in a mold, freeze-forming”), then subjecting the formed product to freeze-drying treatment (“freeze-drying”) and then demolding to form a food product. At Example 5 on col. 5, lines 20-42 and the accompanying table, Kitaoka discloses making the freeze-dried chocolate from an aqueous emulsion chocolate comprising 17.4 wt% of cocoa butter (a “cocoa product” in claim 9) and chocolate (a “chocolate powder” as a “cocoa product” in claim 9) and 70 wt% water (“solvent”). At col. 2, lines 8-12, Kitaoka discloses the chocolate as roll refined (claim 3) including milk powder (an “other ingredient” as in claim 9). Further, at Example 5 and the accompanying table Kitaoka discloses a chocolate solution comprising 70 wt% water as solvent, based on the weight of the chocolate solution, wherein the solvent comprises 100 wt% water.
Further regarding instant claim 1, and regarding instant claim 2, Kitaoka at col. 2, lines 19-27 discloses its freeze-dried chocolate as having from 10 to 80 wt% cocoa butter as a total fat content, which the claimed <25 wt% fat content of the freeze-dried chocolate, based on the weight of the freeze-dried chocolate in claim 2 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 Kitaoka would have found it obvious to make a freeze-dried chocolate having the claimed fat content because Kitaoka discloses that a chocolate powder with the claimed fat content makes a desirable freeze-dried chocolate.
Further regarding instant claim 1, because the claim recites a particle size without more, the Office interprets the claims as including any chocolate powder wherein even one particle that has a particle size of <35 µm. Kitaoka does not disclose a particle size of its chocolate powder and so does not evidence the method of using a chocolate powder having a particle size of <35 µm.
Geng discloses a chocolate bean (“chocolate powder”) at [0004] on page 2 to provide a smooth mouthfeel and improved taste by a manufacturing method comprising (at [0016] on page 4, at step 5 grinding in a refiner cocoa powder with glucose and lecithin as slurry to a particle size particle size of 25-30 µm and, at step 6 on page 4 spray drying to form a powder. At page 2 [0005], Geng discloses a chocolate powder comprising from 15 to 38 wt% cocoa butter, which the claimed total fat content of <25 wt% 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.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Geng for Kitaoka to use a chocolate powder and a cocoa butter powder having a particle size of <35 µm. Both references disclose chocolate powders for use in making chocolate or chocolates. The ordinary skilled artisan in Kitaoka would have desired to reduce the particle size of its chocolate powder to a particle size of <35 µm as in Geng to improve the mouthfeel of foods made from the chocolate powder.
Still further regarding instant claim 1, the freeze-dried chocolate of Kitaoka Example 5 as modified by Geng appears to be the same thing as the claimed freeze-dried chocolate. Accordingly, absent a clear showing as to how the sticking and thermal properties and physical form of the claimed freeze-dried chocolate differs from that of Kitaoka as modified by Geng, the Office considers the freeze-dried chocolate of Example 5 of Kitaoka to comprise a freeze-dried chocolate that does not form a continuous fat phase and that does not stick to packaging and does not melt or deform upon storage at a temperature of ≤65°C. See MPEP 2112.01.I.
Regarding instant claim 4, Kitaoka at Example 5 as modified by Geng does not disclose a chocolate powder obtained by refining or milling wherein the equipment used in roller milling comprises two three-roll refiners in series, a six-roll refiner or a five roll refiner as in claim 4. However, the recited chocolate powder in claim 4 is a product-by-process.
The patentability of a product does not depend on its method of production. See MPEP 2113.I. Further, once a product appearing to be substantially identical is found and a prior art rejection is made, the burden shifts to the applicant to show an nonobvious difference over the art. See MPEP 2113.II. In the present case, Kitaoka at Example 5 as modified by Geng at [0005] and [0016], step five) discloses refining to make chocolate powder by mixing and grinding or refining chocolate solutions. The Office considers the Kitaoka as modified by Geng chocolate powder to be substantially the same thing as the claimed chocolate powder made by roller refining using a five roll refiner, a six roll refiner or two three roll refiners or six roll refiners as in claims 4.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over US 6361813 B1 to Kitaoka et al. (Kitaoka) in view of CN 102894159 A to Geng (Geng) as applied to claim 3 above, and further in view of US 2022/0256881 A1 to Bernaert et al. (Bernaert).
As applied to claim 3, Kitaoka at Example 5 as modified by Geng at [0005] and [0016] and discloses a freeze-dried chocolate and a method for making it comprising subjecting a chocolate powder made by roller refining or jet milling and a solvent to shear emulsifying to form a chocolate solution and then molding, freeze-forming and freeze-drying the chocolate solution and demolding to form the chocolate wherein the chocolate powder has a particle size of <35 µm and a total fat content of <25 wt%.
Regarding instant claim 4, Kitaoka as modified by Geng does not disclose a chocolate powder obtained by roller refining using equipment comprising two three-roll refiners in series, a six-roll refiner or a five roll refiner.
Bernaert at [0101] discloses refining a chocolate solution or slurry comprising (at [0100]) cocoa products and a cacao pod husk powder in a five roll refiner to form chocolate (at [0102]) as comprising a “regular process” of making chocolate.
As of the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Bernaert for Kitaoka as modified by Geng to refine its chocolate powder using a five roll refiner. All references disclose chocolate powders as cocoa products; and each of Bernaert and Geng (at [0016], step five) disclose refining to make chocolate powder. The ordinary skilled artisan in Kitaoka would have desired to use a five roll refiner as in Bernaert to make its chocolate powder having a particle size of <35 µm and form a smooth chocolate.
Response to Arguments
In view of the amendment dated August 07, 2025, the following rejections have been withdrawn as moot:
The rejections of claims 1-18 under 35 U.S.C. 112(b), as being indefinite in regard to the term “high shear” in claim 1, the recited “<25%” total fat content in claim 1, and the recited “15%-25%” total fat content in claim 2; and,
The rejections of claims 7-8 and 16-17 under 35 U.S.C. 103 as being unpatentable over US 6361813 B1 to Kitaoka et al. in view of CN 102894159 A to Geng and US 2017/0196237 A1 to Wegst.
The positions taken in the remarks accompanying the amendment dated August 07, 2025 (Reply) have been fully considered but are not found persuasive for the following reasons:
Regarding the position taken in the Reply at page 6 that Wegst teaches away from using the cocoa powder or chocolate powder of Geng because Wegst discloses at [0093] a “potentially high cocoa percentage” and that this amounts to an emphasis on a high fat content, respectfully this disclosure is unhelpful to Applicants because it ignores the cited Examples in Wegst. A “potential for a high fat content” does not discourage the actual examples of Wegst which disclose at [0062] and the accompanying Table on page 4, the use of a cocoa powder which appears to be the same cocoa powder as in Geng and also in Nyrop at col. 1, lines 9-16 and appears to have a fat content within the claimed fat content. Respectfully, Wegst cannot teach away from itself.
Regarding the position taken in the Reply at page 7 that Kitaoka can include emulsifiers or crystalline cellulose whereby the process in Kitaoka differs from that claimed, respectfully the present claims are open ended and do not exclude emulsifiers or crystalline cellulose. Further, the allegation that including emulsifiers or crystalline cellulose would lead to a freeze-dried chocolate in Examples 5 or 6 of Kitaoka that sticks to packaging or does not have a smooth taste or is not free of a continuous fat phase does not amount to evidence. Arguments of counsel cannot take the place of evidence on the record. See MPEP 716.01(c).II. Be advised that Example 5 of Kitaoka does not disclose crystalline cellulose.
Regarding the position taken in the Reply at page 7 that the claimed content of fat and particle size are critical to applicants objective of preventing a formation of continuous oil phase in a lyophilized product with non-fat materials as scaffold, respectfully the statement of this objective does not amount to evidence. Further, the position taken does not distinguish the art of Kitaoka or Wegst. The claimed freeze-dried chocolate is not limited in fat content; rather, the recited chocolate powder is limited in fat content and the claims are open-ended and can include other ingredients as in Kitaoka. Meanwhile, Kitaoka at col. 2, lines 8-10 discloses its chocolate as including cocoa. The Office interprets “cocoa” as being cocoa powder, which appears to be the same chocolate powder as disclosed in Geng and Nyrop, further which has the claimed fat content, and which is ground to the claimed size as in Geng at [0016] on page 4, at step 5 to improve the mouthfeel of products containing it.
Regarding the position taken in the Reply at page 7 alleging that the disclosure in Kitaoka somehow shows that a chocolate of Kitaoka does not achieve the effect of not sticking to packaging and not melting or deforming upon storage at a temperature of <65°C effect of the claimed process, respectfully this position is stated as a bald conclusion and is lacking in evidence. The allegations around lyophilization and emulsifier content also are stated as a bald conclusion. The Reply does not in any way address Example 5 or the cited disclosure of Kitaoka at col. 2, lines 4-11 and 25-27 in view of the claimed freeze-dried chocolate.
Regarding the position taken in the Reply that any of the art does not form a freeze-dried chocolate that does not form a continuous fat phase, respectfully the positions taken fail to provide any evidence of any difference between the freeze-dried chocolate of Example 5 of Kitaoka or the 2nd example at [0062] and the accompanying Table on page 4 of Wegst, much less any evidence that the Wegst and Kitaoka freeze-dried chocolate forms a continuous fat phase.
In response to applicant's arguments against the references individually at page 8 of the Reply, one cannot show nonobviousness by attacking the Geng or Bernaert references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Regarding the position taken in the Reply at page 9 regarding molding a series of solutions, the position is moot because the claims no longer recite such a limitation. The positions taken otherwise merely reiterate earlier arguments and are treated therefor as a general allegation of patentability. 37 CFR 1.111(b).
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.E.M./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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