DETAILED ACTION
Background
The amendment dated December 03, 2025 (amendment) amending claims 1-7 and adding new claim 8 has been entered. Claims 1-8 have been examined. No claims have been canceled. In view of the amendment, all outstanding claim objections have been withdrawn.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 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 8 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.
In claim 8, at line 1, the recited “breaking strength” is indefinite because it is not clear what is broken in the test if not cells themselves; and, it is not clear how the breaking strength is determined even though many ways of measuring such a breaking strength are known. The Office interprets the claimed breaking strength as being the strength of a sample of whole cacao beans as set forth in the instant specification at [0162] and as determined using a tensile tester having the geometry as set forth in the instant specification at [0162]. A claim reciting those features as disclosed would be considered reasonably clear and definite.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over US1768230 to Borg (Borg) in view of US2016/0000110 A1 to Maruta et al. (Maruta), both of record.
Regarding instant claim 1, Borg at page 2, line 108 to page 3, line 15 discloses cocoa nibs (“cacao composition”) having reduced bitterness and burnt flavor made by a method comprising preliminary moistening and heating to dry cocoa beans, followed by heat treating at about 106 to 110 °C without breaking the cell walls, then cooling, cracking, dehulling and (at page 3, lines 33 to 38) reducing the beans to a degree of fineness of to 24 to 27 million particles/g (“having a particle size distribution in the range of 10 µm to 1.5 mm”). Further, at page 3, lines 112-130 Borg discloses food compositions comprising the cacao composition and bran flakes which are friable to form a flour; and, at page 4, lines 10-24 discloses cakes (“baked confectionary”) that comprise its cacao compositions. Still further, Borg at claim 9 discloses a cocoa product and at claim 10 discloses a chocolate product in which the cell walls of the cocoa bean retain their identity.
The Office interprets the claim 1 oil content in cacao composition as including any oil or fat, whether liquid or solid.
Further, and regarding instant claim 8, Borg discloses ground cocoa beans made by a method comprising exposing them to moisture, heating them and milling; and Borg at page 2, lines 57-63 discloses cacao compositions wherein substantially no aromatic volatile constituents are lost in processing. The “wet-heated ground product” as a cacao composition recited in claim 1 is a product by process limitation. The patentability of a product does not depend on its method of production. See MPEP 2113.I. And 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. The Office considers the claimed cacao compositions made by wet-heated grinding as disclosed at [0054]-[0055] of the instant specification and the crushed cocoa beans of Borg to be substantially the same thing. Accordingly, absent a clear showing as to how cacao composition in Borg differs from that of the cacao composition as claimed, the Office considers the ground cacao composition product as disclosed at page 2, line 108 to page 3, line 38 of Borg to comprise a cacao composition containing 30% or more of undisrupted cacao bean cells, based on a total number of cacao bean cells and having a free fat content of 30% by weight or lower based on total oil content in the cacao composition as in claim 1; and to comprise cacao composition containing undisrupted cacao bean cells, which has a breaking strength of 3 kgf or lower as in claim 8. See MPEP 2112.01.I.
Further, and regarding instant claims 5-7, Borg does not disclose an example of baked confectionary consisting of its cacao composition; Borg does not disclose a baked confectionary comprising a mixing amount of the cacao composition in a raw material of the baked confectionary of from 1 to 65 wt%, based on the weight of the raw material as in claim 5; Borg does not disclose a baked confectionary comprising a cacao composition which has a moisture content lower than 10 wt% of the baked confectionary as in claim 6; and, does not disclose a cookie, biscuit or financier as in claim 7.
Maruta at [0051] discloses a crushed cocoa powder (“cacao composition”) which is used (at [0092]) in cakes and cookies (“baked confectionary”) to impart a chocolate flavor. At [0012], Maruta discloses that its cacao compositions retain their polyphenol components after processing. Further, at Example 3 and Table 5, Maruta discloses a cookie having a desired theobromine content and comprising 6 wt% of its cacao composition. And Maruta discloses at [0111] in Example 3 that its cookie has a theobromine (“polyphenol”) content of 1.5 to 2.0 wt%.
The Office considers the claimed baked confectionary comprising a cacao composition which has a moisture content lower than 10 wt% of the baked confectionary as in claim 6 as including the disclosed cookie in Example 3 of Maruta.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Maruta for Borg to use from 1 to 65 wt% of its cacao composition in a raw material used to make its baked confectionary as in Maruta and to make a baked confectionary having a moisture content lower than 10 wt% of the baked confectionary as in claim 6, including any of a cookie, biscuit or financier of claim 7, as in Maruta. Both references disclose baked confectionary products comprising a moist heat treated, ground or sieved cacao composition. The ordinary skilled artisan in Borg would have desired to flavor a baked confectionary with its cacao composition as in Maruta and to use form 1 to 65 wt% of the cacao composition, based on the weight of the raw materials contained in the baked confectionary to impart such a flavor as in Maruta and to add its antioxidant health benefit. In addition, the ordinary skilled artisan in Borg would have desired to make cookie or biscuit or baked confection as in Maruta as the confection disclosed in Borg at page 4, line 21.
The Office considers the baked confectionary cookie of Borg at page 2, line 108 to page 3, line 38 as modified by Maruta at Example 3 to be substantially the same thing. Accordingly, absent a clear showing as to how the baked confectionary in Borg as modified by Maruta differs from that of the baked confectionary as claimed, the Office considers the baked confectionary cookie of Borg at page 2, line 108 to page 3, line 38 as modified by Maruta at Example 3 to have a polyphenol content of 0.05% by weight or higher, based on the weight of the baked confectionary as in claim 2; to have a polyphenol content of 1% by weight or higher, based on the weight of the baked confectionary as in claim 3; and, to have a procyanidin content of 0.1% by weight or higher, based on the weight of the baked confectionary as in claim 4. See MPEP 2112.01.I.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over US2016/0000110 A1 to Maruta et al. (Maruta), of record.
Regarding instant claims 1, 5 and 7, Maruta at [0042] discloses a cacao raw material (“cacao composition”) having a reduced caffeine content but which retains its polyphenol and procyanidin content. At [0047], Maruta discloses cacao beans as its cacao composition, wherein at [0050] the cacao composition is crushed to an average particle diameter of 10 to 200 µm by a method (disclosed at [0057]) of extruder grinding the cacao composition at from 50 to 100 °C in water (at [0058]) as solvent with a supercritical fluid. Further, Maruta at [0051] discloses a crushed cocoa powder (“cacao composition”) which is used (at [0092]) in cakes and cookies (“baked confectionary”) to impart a chocolate flavor. Further, at Example 3 and Table 5, Maruta discloses a cookie (claim 7) having a desired theobromine content for its health benefits and comprising 6 wt% of its cacao composition as a raw material of the baked confectionary (claim 5). In addition, regarding instant claim 3 Maruta discloses at [0111] in Example 3 that its cookie has a theobromine (“polyphenol”) content of 1.5 to 2.0 wt%.
The Office interprets the claim 1 oil content in a cacao composition as including any oil or fat, whether liquid or solid.
Further, and regarding instant claims 2-4 and 8, the recited “wet-heated ground product” in claim 1 is a product by process limitation. The patentability of a product does not depend on its method of production. See MPEP 2113.I. And 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. The Office considers the claimed cacao compositions which are made by wet-heated grinding as disclosed at [0054]-[0055] of the instant specification and the crushed cacao composition made by extruding a cacao composition in the presence of heat and moisture as disclosed at [0057] and [0058] of Maruta to be substantially the same thing. Accordingly, absent a clear showing as to how cacao composition and the baked confectionary disclosed in Maruta differs from that of the cacao composition as claimed, the Office considers the ground cacao composition product of Maruta at [0057]-[0058] to comprise a cacao composition containing 30% or more of undisrupted cacao bean cells, based on a total number of cacao bean cells and having a free fat content of 30% by weight or lower based on total oil content in the cacao composition as in claim 1; and to comprise cacao composition containing undisrupted cacao bean cells, which has a breaking strength of 3 kgf or lower as in claim 8. In addition, the Office considers the baked confectionary disclosed at [0057]-[0058], [0092], [0111] and Example 3 of Maruta comprising a cacao composition to have a polyphenol content of 0.05% by weight or higher, based on the weight of the baked confectionary as in claim 2; to have a polyphenol content of 1% by weight or higher, based on the weight of the baked confectionary as in claim 3; and, to have a procyanidin content of 0.1% by weight or higher, based on the weight of the baked confectionary as in claim 4. See MPEP 2112.01.I.
Regarding instant claim 6, the Office considers the claimed baked confectionary comprising a cacao composition which has a moisture content lower than 10 wt% of the baked confectionary as including the disclosed cookie in Example 3 of Maruta.
Response to Arguments
In view of the amendment dated December 03, 2025, the following rejections have been withdrawn as moot:
The rejections of claims 1-7 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite in regard to (i) each of the recited polyphenol content in % by weight in claims 2 and 3, the recited procyanidin content in % by weight in claim 4; and the recited amount of the cacao composition in % by weight claim 5 for lacking a basis; and in regard to (ii) the antecedent basis for the limitation "in raw material" in claim 5;
The rejections of claims 1-4 and 6-7 under 35 U.S.C. 102(a)(1) as being anticipated by JPH11318338 to Matsuda et al.;
The rejections of claims 1-4 under 35 102(a)(1) as being anticipated by US1768230 to Borg; and,
The rejections of claim 5 under 35 U.S.C. 103 as being unpatentable over JPH11318338 to Matsuda et al. in view of US2016/0000110 A1 to Maruta et al.
The arguments with respect to the art of Matsuda 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.
The positions taken in the remarks accompanying the response dated December 03, 2025 (Reply) have been fully considered but are not found persuasive for the following reasons:
Regarding the position taken in the Reply at pages 4-5 that the breaking strength is not indefinite because the measurement is made on the recited cacao composition, and one can refer to the instant specification and see how the measurement is made, the position taken is respectfully not found persuasive. The test in the instant specification at [0162] says that it measures cacao beans, whereas the claims clearly recite a wet-heat ground cacao bean cacao composition that is a different composition from cacao beans. Further, the instant specification at [0162] recites a specific test plunger, plunger speed and penetration depth, such that a change in any of which will change the test result claimed. Given the disconnect between the claimed composition and the composition tested in the instant specification and the variability in breaking strength test settings, the position taken amounts to an admission that the claims do not recite a definite breaking test. It is in this case improper to import claim limitations from the specification. See MPEP 2111.01.II.
Regarding the position taken in the Reply at page 7 and Borg, the position taken is respectfully not found persuasive. The position taken alleges that Borg at page 2, lines 44-50 discloses a liquid. The position does not read Borg as a whole. Borg at page 2, lines 50-55 and at page 3, lines 25-30 discloses that many of the cell walls are unruptured. How much of the cells in Borg are ruptured is not clear and has not been established. In the ex parte process of examining a patent application, however, the PTO lacks the means or resources to gather evidence which supports or refutes the. See MPEP 2145.
Regarding the position taken in the Reply at page 7 regarding Borg further alleges that Borg does not make a composition in the same way as the claimed wet-heated grinding product by process, the art cannot meet the present claims. Respectfully, even if true this position does not apply the correct standard!. 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. Because Borg at page 2, line 108 to page 3, line 38 provides evidence that it avoids rupturing cacao cell wells, it is not sufficient merely to reiterate that the claimed product is made by a different process than that of the art.
Regarding the position taken in the Reply at page 7 regarding Maruta alleges that Maruta does not make a composition in the same way as the claimed wet-heated grinding product by process, the art cannot meet the present claims. Respectfully, Maruta at [0057]-[0058] discloses extrusion in wet-heat conditions and so in fact does disclose wet-heated grinding. Moreover, the position taken does not apply the correct standard!. 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. Because Maruta appears to disclose a wet-heated ground cacao composition, the burden fails to Applicant to show how the cacao composition claimed differs from that of Maruta.
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 ANDREW E MERRIAM whose telephone number is (571)272-0082. The examiner can normally be reached M-H 8:00A-5:30P and alternate Fridays 8:30A-5P.
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/A.E.M./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791