DETAILED ACTION
Status of Claims
Amendments made January 8, 2026 have been entered.
Claims 122-145 remain pending;
Claims 122-137 and 145 have been withdrawn.
Note: Although claim 145 does not have the correct status identifier (it is listed as “previously presented” and not “withdrawn”), the claim was clearly withdrawn in the election and in the non-final rejection, and the case has been examined with the claim withdrawn in order to prevent a delay in prosecution.
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 .
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.
Claim Rejections - 35 USC § 102/103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Notes:
The term “chocolate product” refers to a product having the characteristics defined herein (instant specification, paragraph 25), and thus, the chocolate product recited in the claims refers to any product with the recited elements.
The rejection of claims 138-144 under 35 U.S.C. 103 as being unpatentable over Cantz (US 2010/0151110) has been withdrawn in light of applicant’s amendments made January 8, 2026 which require a ratio of non-reducing to one or more reducing sugars between 95:5 to 70:30.
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 138-142 and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jeffery et al (US 4045583).
Regarding claims 138 and 140-142, Jeffery et al (Jeffery) teaches of a heat-resistant chocolate product formed from an intermediate evaporated product comprising: about 10% moisture; at least one edible fat which is preferably cocoa butter, and thus one or more cocoa components; and sugar (abstract and column 1 line 55 through column 2 line 26). Jeffery teaches in the example that the sugar includes sucrose, which is a non-reducing sugar at 34.9% and glucose, which is a reducing sugar at 4.9% (Example 3), and thus encompasses a ratio of non-reducing sugar to reducing sugar at about 87.7 to 12.3 which is within the claimed ranges. As a product has been defined to be one with the recited elements (see note above), and Jeffery teaches of an intermediate product with the claimed elements, the evaporated mix, which is an intermediate product of Jeffery is considered to anticipate the product as claimed. The position of the office is further supported as claim 144 recites the product is moldable, i.e. may be molded, and is not necessarily a dried and/or molded final product.
Regarding claim 139, as Jeffery teaches the chocolate was produced with 16.3% cocoa butter emulsifier fat and 4.8% cocoa solids resulting in a product with 26.1% fat and 1.8% moisture (Example 3), wherein it was disclosed that the mixture for evaporation contained approximately 10% water and was made for a product comprising 15-35% at last one edible fat selected from cocoa butter, not less than 40% sugar, to form a chocolate product, which by definition contains at least 8%, preferably at least 14.7% cocoa butter and at least 14% cocoa solids (column 1 lines 55-27 and column 2 lines 35-62), the intermediate product of Jeffery would comprise cocoa butter and cocoa components within the claimed ranges.
Regarding the chocolate product as moldable as recited in claim 144, as Jeffery teaches the evaporated product is shaped and dried to produce a shaped heat-resistant chocolate product (column 1 line 55 through column 2 line 4), the intermediate evaporated product of Jeffery would be capable of molding, i.e. moldable, as claimed.
Claim 143 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Jeffery et al (US 4045583).
As discussed above, Jeffery teaches of a heat-resistant chocolate product formed from an intermediate evaporated product comprising: about 10% moisture; at least one edible fat which is preferably cocoa butter, and thus one or more cocoa components; and sugar (abstract and column 1 line 55 through column 2 line 26). Jeffery teaches in the example that the sugar includes sucrose, which is a non-reducing sugar at 34.9% and glucose, which is a reducing sugar at 4.9% (Example 3), and thus encompasses a ratio of non-reducing sugar to reducing sugar at about 87.7 to 12.3 which is within the claimed range. As a product has been defined to be one with the recited elements (see note above), and Jeffery teaches of an intermediate product with the claimed elements, the evaporated mix which is an intermediate product of Jeffery is considered to anticipate the product as claimed.
Regarding the chocolate product as heat resistant as recited in claim 143, as the prior art teaches of a product with an overlapping composition as claimed, it would be expected to encompass, or alternately make obvious a product with the same properties. The position is further supported as Jeffery teaches that the final product, from which the intermediate product is formed is heat stable (column 1 lines 5-6), and that the sugar phase locks in the fat to provide heat resistance (column 2 lines 63 through column 3 line 3), which is the same mechanism as disclosed for heat resistance (instant specification paragraph 16). Applicant has described the product with parameters which cannot be measured by the office for prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability purposes. 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, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, as a prima facie case of obviousness has been properly established, the burden is shifted to the applicant to show that the prior art product is different.
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 138 and 142-144 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 66, 77, and 78 of copending Application No. 18/255,120 as amended January 14, 2026 (‘120, reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the method recited by ‘120 would result in a heat-resistant chocolate product with a moisture content of about 4-10% comprising: one or more cocoa components, sucrose which is a non-reducing sugar, one or more reducing sugars, and water (claim 67), wherein the ratio of non-reducing sugar to one or more reducing sugars is between 95:5 and 70:30.
Regarding the chocolate product as moldable as recited in claim 144, although ‘120 does not recite that the chocolate product is moldable, as the method claimed by the reference application results in a product with an overlapping composition as claimed, the product resulting from the method of ‘120 would be expected to encompass, or alternately make obvious a product with the same properties as claimed. Alternatively, the examiner takes official notice that chocolate products were known to be molded. Thus, to make a chocolate product, such as that resulting from the method claimed by ‘120, in known forms, such as in a molded form would have been obvious to one of ordinary skill in the art.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 139-141 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 66, 77, and 78 of copending Application No. 18/255,120 as amended January 14, 2026 (‘120, reference application), further in view of Van Der Schueren et al (US 5,976,605). Although the claims at issue are not identical, they are not patentably distinct from each other because the method recited by ‘120 would result in a heat-resistant chocolate product with a moisture content of about 4-10% comprising: one or more cocoa components, sucrose which is a non-reducing sugar, one or more reducing sugars, and water (claim 67), wherein the ratio of non-reducing sugar to one or more reducing sugars is between 95:5 and 70:30.
Claim 77 recited by ‘120 is silent to the chocolate as comprising 5-60% cocoa butter and 5-80% cocoa components as recited in claim 139, or wherein the one or more reducing sugars includes one or more monosaccharides as recited in claim 140 or glucose as recited in claim 141.
Van Der Schueren et al (VDS) teaches that glucose can replace 5-100% sucrose, which is the normal sweetening agent for chocolates (title, abstract, column 2 lines 5-19, and column 3 lines 41-45). VDS teaches that the chocolate products comprise 25-32% fat (column 2 lines 16-19), and exemplify the chocolate products as comprising cocoa butter and one or more cocoa components within the claimed ranges (see tables in Examples 1 and 2).
Regarding the chocolate as comprising 5-60% cocoa butter and 5-80% cocoa components as recited in claim 139, as discussed above, the chocolate product resulting from the claims of ‘120 would comprise one or more cocoa components. It would have been obvious for the one or more cocoa components of ‘120 to be those which were known to be successfully incorporated into chocolate products, such as and including cocoa butter and cocoa components within the claimed ranges as taught by VDS. To use known and successful types and amounts of cocoa components, wherein one or more cocoa components were claimed would have been obvious and well within the purview of one or ordinary skill in the art.
Regarding the one or more reducing sugars as including one or more monosaccharides as recited in claim 140 or glucose as recited in claim 141, as discussed above, the chocolate product resulting from the claims of ‘120 would comprise one or more reducing sugars. It would have been obvious for the one or more reducing sugar of ‘120 to be one which was known to be successfully incorporated into chocolate products, such as and including glucose, which is a monosaccharide, as taught by VDS. To use a known and successful reducing sugar, wherein one was claimed would have been obvious and well within the purview of one or ordinary skill in the art.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments 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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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.
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KELLY BEKKER
Primary Patent Examiner
Art Unit 1792
/KELLY J BEKKER/Primary Patent Examiner, Art Unit 1792