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 .
The amendment filed October 20, 2025 is acknowledged. Claims 19-28 are pending in the application. Claims 1-18 have been cancelled.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on November 20, 2025 has been entered.
Claim Rejections - 35 USC § 102
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 19-26 and 28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Triggs GB 631027 (hereinafter “Triggs”).
Regarding the recitation of “for producing a chocolate” in the preamble of claims 19-26 and 28, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
With respect to claim 19, Triggs teaches a method of making a chocolate (P1, L15-16).
Regarding the recitation of comprising a step of crushing at least a cacao raw material and a sugar raw material in a sealed crusher, and a grinding step of grinding the cacao raw material without the sugar raw material in the sealed crusher, before the step of crushing, wherein the cacao raw material in the grinding step is cacao nibs in claim 19, Triggs teaches grinding cacao nibs without sugar, combining the ground cacao nibs with sugar, and pulverizing the combination in an enclosed pulverizer (P1, L43-49 and 54-58; P2, L61-65, 86-90, 94-95, and 100-107; and P4, L120-125).
With respect to claim 20, Triggs is relied upon for the teaching of the method of claim 19 as addressed above.
Regarding the recitation of wherein a chocolate having strong aroma characteristics is able to be produced in claim 20, it is noted that this recitation relates to a resulting effect of practicing the claimed method. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04. Further, it has been held that the recitation that an element is “capable of” performing a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. In re Hutchison, 69 USPQ 138.
Absent any clear and convincing evidence to the contrary, the method would naturally arrive at this claimed feature since Triggs teaches a method that is identical to the presently claimed method as addressed above in claim 19 and Triggs teaches the chemical actions that occur during the method develop and improve flavour and aroma of the chocolate product (P1, L15-18 and 56-60; P2, L106; and P4, L7-11).
With respect to claims 21-24, Triggs is relied upon for the teaching of the method of claim 20 as addressed above.
Regarding the recitations of wherein the aroma characteristics include at least one of a fruity aroma and a floral aroma in claim 21, wherein the aroma characteristics include at least a fruity aroma in claim 22, wherein the aroma characteristics include at least a floral aroma in claim 23, and wherein an aroma component is at least one of isoamyl acetate and acetic acid in claim 24, it is noted that this recitation relates to a resulting effect of practicing the claimed method. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04.
Absent any clear and convincing evidence to the contrary, the method would naturally arrive at these claimed features since Triggs teaches a method that is identical to the presently claimed method as addressed above in claims 19 and 20 and Triggs teaches the chemical actions that occur during the method develop and improve flavour and aroma of the chocolate product (P1, L15-18 and 56-60; P2, L106; and P4, L7-11).
With respect to claim 25, Triggs is relied upon for the teaching of the method of claim 19 as addressed above.
Regarding the recitation of wherein all chocolate raw materials are crushed as a whole in the sealed crusher in the step of crushing in claim 25, Triggs teaches grinding cacao nibs without sugar, combining the ground cacao nibs with sugar and other ingredients as desired, and pulverizing the combination in an enclosed pulverizer (P1, L43-49 and 54-58; P2, L61-65, 86-90, 94-95, and 100-107; and P4, L120-125).
With respect to claim 26, Triggs is relied upon for the teaching of the method of claim 19 as addressed above.
Regarding the recitation of wherein the sealed crusher is a ball mill, a stone mill, a jet mill, a colloid mill, a refiner conche, a disc mill, or a bead mill in claim 26, Triggs teaches using a refiner conche (P2, L100-107; and P4, L24).
With respect to claim 28, Triggs is relied upon for the teaching of the method of claim 23 as addressed above.
Regarding the recitation of wherein an aroma component in the chocolate comprises linalool in claim 28, it is noted that this recitation relates to a resulting effect of practicing the claimed method. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04.
Absent any clear and convincing evidence to the contrary, the method would naturally arrive at this claimed feature since Triggs teaches a method that is identical to the presently claimed method as addressed above in claims 19, 20, and 23 and Triggs teaches the chemical actions that occur during the method develop and improve flavour and aroma of the chocolate product (P1, L15-18 and 56-60; P2, L106; and P4, L7-11).
Claim Rejections - 35 USC § 102/103
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.
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.
Claim 27 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Triggs GB 631027 (hereinafter “Triggs”).
Where Applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the Examiner may make a rejection under both 35 U.S.C. 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. See MPEP 2112.
With respect to claim 27, Triggs is relied upon for the teaching of the method of claim 19 as addressed above.
Regarding the recitation of “for producing a chocolate” in the preamble of claim 27, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of wherein 80% or more of an aroma component contained in the cacao raw material is able to be remained in the chocolate in claim 27, it is noted that this recitation relates to a resulting effect of practicing the claimed method. Applicant is reminded that language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. The following types of claim language may raise a question as to its limiting effect: (A) statements of intended use or field of use, including statements of purpose or intended use in the preamble, (B) "adapted to" or "adapted for" clauses, (C) "wherein" or "whereby" clauses, (D) contingent limitations, (E) printed matter, or (F) terms with associated functional language. See MPEP 2103 and 2111.04. Additionally, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) and MPEP 2111.04. Further, it has been held that the recitation that an element is “capable of” performing a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. In re Hutchison, 69 USPQ 138.
Absent any clear and convincing evidence to the contrary, the method would naturally arrive at this claimed feature since Triggs teaches a method that is identical to the presently claimed method as addressed above in claim 19 and Triggs teaches the chemical actions that occur during the method develop and improve flavour and aroma of the chocolate product (P1, L15-18 and 56-60; P2, L106; and P4, L7-11).
Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the processing conditions in the method of Triggs through routine experimentation with the expectation of successfully preparing an organoleptically desirable chocolate product containing aroma components from the cacao raw material. One of ordinary skill in the art would have been motivated to do so because Triggs teaches maintaining desired processing conditions, such as temperature and humidity, during the process and obtaining a product of superior taste and aroma (P1, L15-18; and P2, L106), and it is understood that, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. There would have been a reasonable expectation of success. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 II).
Response to Arguments
Applicant’s remarks filed on October 20, 2025 are acknowledged.
Due to the amendments to the claims, the 35 USC 102(a)(1) rejection of claims 19-26 and 28 and the 35 USC 102/103 rejection of claim 27 over Dunning in the previous Office Action have been withdrawn. Upon further searching and consideration, a new ground of rejection has been made. As addressed above, Triggs teaches a method that is identical to that as presently claimed. Applicant’s arguments have been considered but are moot as they pertain to Dunning which is not being used in the current rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TYNESHA L. MCCLAIN whose telephone number is (571)270-1153. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM ET.
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/T.L.M/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793