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 .
DETAILED ACTION
Status of Claims
Note: The amendment of October 27th 2025 has been considered.
Claims 1 and 6-10 have been amended.
Claims 16-21 were added.
Claims 3, 5 and 11-12 are cancelled.
Claims 1, 2, 4, 6-10 and 13-21 are pending in the current application.
Claims 13-15 and 20 are withdrawn from consideration.
Claims 1, 2, 4, 6-10, 16-19 and 21 are examined in the current application.
Any rejections not recited below have been withdrawn.
Election/Restrictions
Newly submitted claim 20 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claim 20 and claims 1, 2, 4, 6-10, 16-19 and 21 are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the coca product can be used in baked goods, which is materially different than using the cocoa product to prepare a beverage.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 20 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 102
In light of the amendments filed on October 27th 2025, the anticipation rejections of claim 1, 9 and 10 have been withdrawn.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35 of the U.S. Code not included in this action can be found in a prior Office action.
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, 2, 4, 6, 9, 10, 16-19 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Blondeel et al. (USPat.Pub. 2009/0263556).
Regarding claims 1, 4, 6, 9 and 10: Blondeel discloses a flavoring composition that comprises flavorants/polyphenols extracted from cocoa to be used in foods, such as ice-cream (i.e., a dairy product) and wherein the composition comprises 2.5-5% theobromine and is in liquid form (see Blondeel abstract; paragraphs [0305] and [0100]). Moreover, Blondeel discloses the flavoring composition comprises the antioxidants cocoa polyphenols, procyanidins (see Blondeel paragraph [0360]), which encompasses the claimed procyanidins. While Blondeel fails to disclose the relative contents of the procyanidins, it would have been obvious to a skilled artisan at the time the application was filed to have modified Blondeel and to have adjusted the content of the procyanidins in the flavoring composition in order to attain a flavoring composition with the desired antioxidant effect, and thus arrive at the claimed limitations. As set forth in MPEP §2144.05 discovering an optimum value of a result effective variable, involves only routine skill in the art.
Regarding claim 2: Blondeel discloses a flavoring composition that comprises flavorants/polyphenols extracted from cocoa to be used in foods, such as ice-cream (i.e., a dairy product) and wherein the composition comprises 5%-15% of the antioxidant, epicatechin (see Blondeel abstract; paragraphs [0100] and [0108]). Since the epicatechin content recited in claim 2 is close enough to the epicatechin content in Blondeel, it would have been obvious to a skilled artisan at the time the application was filed that the amount of epicatechin recited in claim 2, is but an obvious variant of the content disclosed in Blondeel, and thus it would have been within the purview of a skilled artisan to arrive at the claimed invention in order to attain a cocoa flavoring composition with the desired antioxidant content, and thus arrive at the claimed limitations. As set forth in MPEP §2144.05 discovering an optimum value of a result effective variable, involves only routine skill in the art.
Regarding claims 16-19: Blondeel discloses a flavoring composition that comprises flavorants/polyphenols extracted from cocoa to be used in foods, such as ice-cream (i.e., a dairy product) and wherein the composition comprises 2.5-5% theobromine, the antioxidants cocoa polyphenols, procyanidins and is in liquid form (see Blondeel abstract; paragraphs [0100], [0305] and [0360]).
Even though Blondeel fails to disclose the process of making the cocoa product, it is noted that the recited cocoa product is limited and defined by process limitations, as such, the constituents making the cocoa product and not the recited process steps must be established. As set forth in MPEP §2113, “even 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). In this case, Blondeel discloses a cocoa composition which comprises the same constituents as recited in the claims oil production. Accordingly, the coca product in Blondeel reasonably appears to be either identical, or similar to the cocoa product recited in the claims, and thus Blondeel meets the claimed limitations.
In the alternative, any slight differences in the composition as a result of the recited process steps would have been obvious to one of ordinary skill in the art and well within the ordinary level of skill to have produced. Modifications to a well established process that are minor is considered well within the realm of ordinary skill.
Regarding claim 21: Blondeel discloses the cocoa product is provided in a capsule (see Blondeel paragraph [0403]).
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being obvious over Blondeel et al. (USPat.Pub. 2009/0263556) as applied to claims 1, 2, 4, 6, 9, 10, 16-19 and 21 above, and further in view of Van Praag et al., (US 3,582,360).
Regarding claims 7 and 8: Blondeel discloses a flavoring composition that comprises flavorants/polyphenols extracted from cocoa, but fails to disclose phenyl alkenals, such as 2-isopropyl-5-methyl-2-hexenal and 4-methyl-2-phenyl-2-pentenal; However, Van Praag discloses extracting phenyl alkenals (i.e., flavorants), such as 2-isopropyl-5-methyl-2-hexenal and 4-methyl-2-phenyl-2-pentenal from cocoa, as the flavorants provide the cocoa/woody flavor and aroma (see Van Praag abstract; column 2; Example VI). Therefore, it would have been obvious to a skilled artisan to have modified Blondeel and to have added phenyl alkenals, such as 2-isopropyl-5-methyl-2-hexenal and 4-methyl-2-phenyl-2-pentenal and adjust their contents to attain a flavoring composition with the desired cocoa/woody flavor and aroma, and thus arrive at the claimed limitations. As set forth in MPEP §2144.05 discovering an optimum value of a result effective variable, involves only routine skill in the art.
Response to Arguments
Applicant's arguments filed on October 27th 2025 have been fully considered but they are not persuasive.
Applicant argues on pages 6-7 of the “Remarks” that the prior art references fail to render the claimed invention obvious, because Applicant had shown that the combination of cocoa powder and cocoa extract provided a product with improved taste and color as compared to beverages prepared using only cocoa powder, or only cocoa extract. The examiner respectfully disagrees.
While the Applicant showed that the combination of cocoa powder and cocoa extract provided a product with improved taste and color as compared to beverages prepared using only cocoa powder, or only cocoa extract, the claims do recite a combination of cocoa powder and cocoa extract.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASSAF ZILBERING whose telephone number is (571)270-3029. The examiner can normally be reached M-F 8:30-5:00.
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/ASSAF ZILBERING/Examiner, Art Unit 1792