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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 8-14 in the reply filed on September 2, 2025 is acknowledged. Claims 1-7 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date as stated in the Response to Request for Corrected Filing Receipt mailed August 1, 2023; and in the Petition Decision mailed October 7, 2025. Thus, at present, the instant application has a filing date of June 30, 2023.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: Figure 2, Reference Character 200. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because Figure 3 is illegible, blurry, and difficult to read (in both the black and white and colored drawings). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 9 is objected to because of the following informalities: Claim 9 twice recites “single-server mold”. This is appears to be a typographical error meant to recite “single-serving mold” or “single-serve mold”. 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.
Claims 8-14 are 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 8 recites “heating the chocolate”. It is unclear if “the chocolate” is meant to refer to “the chocolate paste” previously recited, or to a different intermediate or chocolate product.
Claim 8 line 7 recites “adding a predetermined amount of enzyme”. It is unclear as to if the enzyme must include the lactase enzyme recited in the preamble, or if it could be another enzyme, and the lactase enzyme is added at some other point in production.
Claim 9 recites “a desired single-server mold”. It is unclear as to what would and would not be considered a “desired” mold as the term is relative and based on the opinion of one manufacture or another. The term does not have clear metes and bounds.
Claim 10 recites “the heating”. It is unclear as to if this refers to the heating recited in claim 8 line 4 or the second heating step recited in claim 8 line 6.
Claim 11 recites “the heated chocolate to the low 80-degrees Fahrenheit”. It is unclear as to what would and would not be encompassed by “low 80-degress Fahrenheit” as there is no bench mark for comparing “low” to. Although the instant disclosure gives an example that this may be from 80-85F (paragraph 51), it is unclear as to if other temperatures, such as 86F, could also be considered “low” as there is no bench mark relative to what “low” is measured. It is suggested that applicant amend the claim with the desired temperature range.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 8-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Voss et al (US 2021/0378257).
Voss et al (Voss) teaches of a lactose enzyme infused chocolate manufactured by the exact ordered steps as claimed (see claims 8-14 which recite the claim limitations verbatim, as well as Figures 1-3).
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.
Claims 8 and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Solomon (WO 2008/127777 A1) in view of Lees and Jackson (Sugar Confectionery & Chocolate Manufacture Leonard Hill 1973, pages 122 and 139-141).
Regarding a lactase enzyme infused chocolate manufactured with the method steps as recited in claims 8-14, it is noted that the recited limitations are product by process limitations and thus are considered as they affect the claimed product. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979). When the reference teaches a product that appears to be the same as, or an obvious variant of, the product set forth in a product-by-process claim although produced by a different process. See In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113.
Regarding the product by process limitations of the chocolate as manufactured with the following ordered steps: transforming raw cocoa into powder form to create a chocolate paste; measuring and depositing a predetermined amount of chocolate paste into a pot; heating the chocolate; cooling the heated chocolate; and heating and mixing the heated chocolate as recited in claim 8, wherein the heating is from 116-120F as recited in claim 10, cooling is to the low 80 degrees F as recited in claim 11, the heating and mixing is at 88-90F as recited in claim 12, and the cooling as in a water jacketed pot as recited in claim 14, the recited method steps would result in a tempered chocolate. Solomon teaches a chocolate product (page 10 lines 20-25 and claim 33), however is not specific to the chocolate as tempered. Lees and Jackson (Lees) teaches tempering is a method of inducing cocoa butter to crystalize in a stable form in a fluid chocolate mass. Lees teaches tempering is necessary to ensure a long shelf life and that chocolate that is incorrectly tempered has a short shelf life, poor gloss, and inadequate stability (page 139, Section 8.11 paragraph 1). Lees teaches that to temper chocolate is first heated to 120F; then cooled to 80F, and then reheated to 88-90F in a melting kettle which is continuously and efficiently stirred (page 141 paragraph 2). It would have been obvious for the chocolate of Solomon to be tempered in a known method, including first heating to 120F; then cooling to 80F, and then mixing and reheating to 88-90F, in order to form a tempered chocolate which had a long shelf life as taught by Lees. To use a known treatment process of forming chocolate wherein chocolate was disclosed would have been particularly obvious to one of ordinary skill in the art.
Regarding the chocolate as a lactase enzyme infused chocolate, wherein a predetermined amount of the enzyme is adding during heating and mixing as recited in claim 8, wherein adding the enzyme includes constant churning as recited in claim 13, as discussed above the claimed limitations are unclear. Regardless, the method would be expected to impart active lactase into the final chocolate product. As Solomon teaches that the food product, which includes chocolate, contains active lactase for consumption by the consumer for treatment of lactose intolerance (abstract, page 1 lines 12-17, page 2 lines 3-17, page 10 lines 14-15 and 25, and claim 33), the product of Solomon encompasses or alternatively makes obvious the product as claimed.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Solomon (WO 2008/127777 A1) in view of Lees and Jackson (Sugar Confectionery & Chocolate Manufacture Leonard Hill 1973, pages 122 and 139-141), further in view of Freeland et al (WO 2010/151637).
As discussed above, Solomon teaches that the food product, which includes chocolate, contains active lactase for consumption by the consumer for treatment of lactose intolerance.
Regarding the mixed chocolate as poured into a single serve mold and cooled as recited in claim 9, the recited method step would impart a single serving product and a formed shape to the claimed product. Solomon teaches a chocolate product, including chocolate chips (page 10 lines 20-25 and claim 33). The examiner takes official notice that chocolate was known as a solid. Thus, as Solomon teaches of a chocolate product, such as and including chocolate chips, the product of Solomon would encompass a product with a formed shape as claimed. The position is further supported as Lees teaches that chocolate was molded after tempering (page 122, Figure 12). Solomon is not specific to the chocolate as in a single serving size.
Freeland et al (Freeland) teaches of chocolate containing active ingredients (abstract). Freeland teaches the chocolate can be any size or form, but that single dose forms are particularly useful (page 4 lines 11-13 and page 6 lines 3-26).
It would have been obvious to one of ordinary skill in the art for the chocolate containing active ingredient of Solomon to be in a single serving form as Freeland teaches single serving forms of chocolate containing active ingredients were particularly useful.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Catani et al (US 2008/0057158) teaches of chocolate containing lactose.
Minifie (Chocolate, Cocoa, and Confectionery 3rd Edition Chapman and Hall 1989) teaches that chocolate is often an ingredient in tablets and pills used for therapeutic purposes because chocolate is a suitable and pleasant carrier for many medicine (page 181).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELLY BEKKER whose telephone number is (571)272-2739. The examiner can normally be reached Monday-Friday 8am-3:30pm.
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, Erik Kashnikow can be reached at 571-270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
KELLY BEKKER
Primary Patent Examiner
Art Unit 1792
/KELLY J BEKKER/Primary Patent Examiner, Art Unit 1792