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 .
This office action is in regard to the application filed on December 11, 2023 and in response to Applicant’s Amendments and Arguments/Remarks dated March 31, 2026. The earliest effective filing date of the application is September 14, 2021.
Status of Application
The amendment filed March 31, 2026 has been entered. Claims 9-23 are currently pending in the application. Claims 17-23 have been withdrawn; claims 1-8 have been canceled; claims 9 and 11-16 have been amended. Claims 9-16 are presented for examination.
The previous 112(b) rejections of claim 9 have been partially withdrawn, and those of claims 10-16 have been either maintained or amended, in view of applicant’s claim amendments. The previous claim objections have been withdrawn in view of applicant’s claim amendments.
Claim Objections
Claim 9 is objected to because of the following informalities:
Claim 9 should have a set of commas encasing “including the water and the emulsifier/surfactant” in lines 13-14 (e.g., should read “….mixture, including the water and the emulsifier/surfactant, and the refined…”).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 9-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 9 recites “conching the combined mixture for about 2 to about 5 hours at a temperature of about 40 to about 50°C” in lines 15-16. The Examiner finds no support in neither the specification nor the claims as originally filed for the entire ranges of both the conching time and temperature. While there is support in the instant specification as originally filed for general conching ([0033]; [0046]), conching for two hours (Example 1: [0068]-[0069]), three hours (Example 1: [0069]-[0070]), 3.5 hours (Example 5: [0099]), 3.5-4 hours (Example 3: [0089]; Example 4: [0093]; Example 6: [0102]), at least four hours (Example 2: [0083]), and conching at 45°C (Example 2: [0083]), 46°C (Example 1: [0068]-[0070]), and 50°C (Examples 4-6: [0093], [0099], [0102]), the Examiner finds no support for the entire inclusive range of conching for about 2 to about 5 hours or for the entire inclusive range of conching at a temperature of about 40°C to about 50°C. There is sufficient support for 2, 3, 3.5, 4, and at least 4 hours, as well as support for 45°C, 46°C, and 50°C, but none for the claimed ranges. Therefore, there is no support for these amended claim limitations and applicant is not considered to have support for amended claim 9.
Claims 10-16 are rejected as being dependent on a rejected base claim.
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 9-16 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 9 recites “chocolate making ingredients” in line 11 which renders the claim indefinite as it is not clear what ingredients qualify as a “chocolate making” ingredient. Are they ingredients that are required in order to make chocolate (e.g., cocoa beans) or are they any ingredient that can be used in the making of chocolate (e.g., flavors such as vanilla, add-ins such as nuts)? The specification does not provide any further clarification as to the meaning of this term. This lack of clarity thereby renders the claim indefinite. For the purposes of examination, the claim will be interpreted as that “chocolate making ingredients” are any and all ingredients that can be used in the making of chocolate.
Claims 10 and 11 are rejected as being dependent on a rejected base claim.
Claim 12 is unclear what the surface area is of the “refined and water addition treated allulose having an average of 25 microns” such that one of ordinary skill in the art can determine a surface area that is less than 70% of the untreated roll refined allulose surface area. It is unclear what the applicant is intending to specifically claim. Moreover, it is unclear what the “water addition” to the allulose entails. The specification does not provide any further clarification and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purposes of examination, the claim will be interpreted as that in the method of making a milk chocolate confectionery product, the particle size of the allulose is reduced with an addition of water, thereby refining the allulose and lowering the surface area of the allulose in the confectionery product.
Claim 13 is rendered indefinite as it is unclear as to which step of the method “comprises adding fat in a content of about ≥30% by weight” and which step of the method or which mixture/composition has this fat content. Is it the final milk chocolate confectionery product? The unrefined or refined fat/sweetener mixture? The refined fat/sweetener mixture with water and emulsifier/surfactant? The unrefined or refined chocolate mixture? Moreover, where it recites “adding fat in a content of,” it is unclear what the basis of this percentage is. This lack of clarity thereby renders the claim indefinite. For the purposes of examination, the claim will be interpreted as that it is the final milk chocolate confectionery product that has the claimed fat contents.
Claim 14 is rendered indefinite as it is unclear as to what is having its total moisture content adjusted and at which processing step is this adjustment occurring. Is it the final milk chocolate confectionery product? The unrefined or refined fat/sweetener mixture? The refined fat/sweetener mixture with water and emulsifier/surfactant? The unrefined or refined chocolate mixture? This lack of clarity thereby renders the claim indefinite. For the purposes of examination, the claim will be interpreted as that it is the final milk chocolate confectionery product that has the claimed moisture content.
Furthermore, regarding both claims 13 and 14, the language reads as unclear and awkward, as what the claims are intending to claim, fat and moisture content, are properties of the product that is made with the claimed method. As set forth above, the language of each claim is unclear, and could be improved by directly claiming that the milk chocolate confectionery product has the intended fat and moisture contents, as that is what it appears to be what the applicant is intending to claim. E.g., claim 13 could read “…, wherein the milk chocolate confectionery product has a fat content of about ≥30% by weight.” For the purposes of examination, the claims will be interpreted as such.
Relatedly, claims 13 and 14 each refer to a percentage without defining the basis of the percentage. It is not clear if the percentages are based on the total mass of the total composition, the mass of a singular component, or something else. As such, the claim fails to distinctly claim the subject matter of the invention and is therefore indefinite. For the purposes of examination, the percentages will be interpreted on a basis of the final milk chocolate confectionery product.
Claims 15 and 16 each refer to a percentage without defining the basis of the percentage. In claim 15, the claim defines the amounts of lecithin and PGPR as being based on the chocolate confectionery product, but does not define the basis of the amounts of lecithin and PGPR in the combination of the two. Claim 16 is similar in that is defines the basis of the amount of AMP in both the individual addition and in combination with PGPR, but does not define the basis of the amount of PGPR in combination with the AMP. It is unclear if the percentages that have an undefined basis are based on the amount of emulsifier/surfactant within the milk chocolate confectionery product (e.g., there are additional emulsifiers/surfactants adding up to a total amount of 100%) or based on the total composition of the milk chocolate confectionery product. For the purposes of examination, the claims will be interpreted as each amount/percentage being based on the total composition of the milk chocolate confectionery product.
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 9-16 are rejected under 35 U.S.C. 103 as being unpatentable over St. John et al. (US Patent 5,464,649; cited on PTO-892 dated Dec. 5, 2025) in view of Seo et al. (US PG Pub. 2019/0269140; listed on IDS dated Dec. 11, 2023), herein after referred to as St. John and Seo, respectively.
Regarding claims 9 and 10, St. John discloses a method for making a milk chocolate confectionery product with a sugar substitute (i.e., reduced sugar content) (Examples 1 and 3; Fig. 4; col. 6 lines 29-39), the method comprising:
mixing a fat and a nutritive carbohydrate sweetener or a non-sugar sweetener to obtain a fat sweetener mixture;
refining the fat/sweetener mixture to obtain a particle size less than 60 microns;
adding water and an emulsifier/surfactant to the fat/sweetener mixture and subjecting the mixture to a drying process;
separately mixing chocolate-making ingredients including nonfat milk solids, milkfat, whole milk powder (i.e., at least one milk ingredient for milk chocolate confections), cocoa powder, chocolate liquor, and/or cocoa butter (all combining to make unsweetened chocolate) to obtain a chocolate mixture and refining the chocolate mixture to obtain a particle size less than about 50 microns;
combining the refined sweetener/fat mixture, including the water and the emulsifier/surfactant, and the refined chocolate mixture;
conching the combined mixture (col. 11 lines 31-65) for longer than 4 hours at a temperature of above 100°F (37°C) (col. 5 lines 19-22),
wherein the milk chocolate confectionery product has a stable Casson plastic viscosity of less than 15,000 cp and a stable Casson yield value of less than 100 dynes/cm2 (Table 1 part A).
The ranges of each refined particle size, plastic viscosity, and yield value taught by St. John (less than 60 or 50 microns, less than 15,000 cp, and less than 100 dynes/cm2, respectively) overlap with the claimed ranges of less than 45 microns, 500-10,000 cp, and 1-150 dynes/cm2. The range of conching time and temperature taught by St. John (longer than 4 hours and above 100°F (37°C)) overlap with or encompass the claimed ranges of 2-5 hours and 40-50°C. Where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05.I.
St. John is silent as to that the sweetener is allulose. St. John does teach that the sweetener can be a traditional sweetener such as sucrose or a sugar substitute such as sugar alcohols (polyols) or high potency sweeteners (col. 6 lines 23-39).
Seo, in the same field of invention, teaches a milk chocolate comprising allulose as a sweetener, wherein allulose is a replacement for traditional sucrose or other typical polyols. Seo offers the motivation that allulose does not cause adverse side effects that sucrose and polyols typically do, and as such, allulose is a suitable replacement sweetener in chocolate for these more traditional sweeteners (Seo: claim 1; [0003]-[0005]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have replaced the sweetener of St. John with the allulose of Seo, thereby arriving at the claimed invention. One would have been motivated to make this modification for the benefit of employing a sweetener that does not cause any known side effects.
Modified St. John is silent as to that the plastic viscosity is stable at temperature of from about 100-120°F for at least one month, as well as being silent as to that the milk chocolate confectionery product has an apparent viscosity at 40°C and 20 rpm (as measured by Brookfield viscometer) of 1,000-15,000 cp.
However, 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). Since the method and composition taught by modified St. John is substantially identical to that of the claims, the claimed properties or functions must also be present in the composition of St. John. See MPEP 2112.01.I.
Given that the method of making milk chocolate confectionery products as taught by modified St. John and as claimed are substantially identical, the method and composition of modified St. John must have the claimed plastic viscosity stability and claimed apparent viscosity, thereby establishing a prima facie case of obviousness.
Regarding claim 11, modified St. John teaches that the at least one rare sugar comprises allulose as set forth above. Modified St. John also teaches that the emulsifier/surfactant is lecithin (St. John: col. 4 lines 51-54; Table 2A; Example 1).
Regarding claim 12, as best understood in light of the 112(b) rejection above, modified St. John teaches that the chocolate has a reduction in the surface area of the sweetener, achieved by reducing the particle size of the sweetener through milling with the addition of water (St. John: col. 9 lines 3-8 and col. 9 line 52 to col. 10 line 18).
Regarding claim 13, modified St. John teaches that the milk chocolate confectionery product has a fat content of 20-24.5% by weight (St. John: col. 12 lines 65-67). This is slightly under the claimed range of about ≥30% by weight.
However, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05.I. The difference between the claimed range and that taught by modified St. John is virtually negligible absent any showing of unexpected results or criticality. One of ordinary skill in the art would have expected the final composition to have the same properties as a composition with the claimed amounts. Therefore, modified St. John renders obvious the instant claim.
Regarding claim 14, modified St. John teaches that the milk chocolate confectionery product has a total moisture content of less than 1% by weight (St. John: col. 13 lines 1-2).
Regarding claim 15, modified St. John teaches that the total amount of emulsifier, lecithin, in the milk chocolate is maximum 0.5% by weight (St. John: col. 13 lines 54-56; Table 2A), which overlaps with the claimed range of 0.2-0.9% by weight. Where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 16, modified St. John teaches that the emulsifier can be PGPR or ammonium salts of phosphatidic acid (i.e., ammonium phosphatide (AMP)) (St. John: col. 7 lines 7-9) and that the total amount of emulsifier in the milk chocolate is maximum 0.5% by weight (St. John: col. 13 lines 54-56), which overlaps with the claimed range of 0.1-0.7% by weight. Where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Response to Amendment
The declaration under 37 CFR 1.132 filed March 31, 2026 is insufficient to overcome the rejection of claims 9-16 based upon St. John et al., US Patent 5,464,649, applied under 35 U.S.C. 103 as set forth in the last Office action because: the comparison presented is not with the closest prior art.
Declarant has reproduced one of the examples of the prior art of Seo et al., US PG Pub. 2019/0269140, which is the secondary reference in the rejection at issue, and has partially reproduced that same example multiple times. The facts presented are not germane to the rejection at issue because Declarant does not provide any evidence or facts regarding the method and/or composition taught by the primary reference, St. John et al, in comparison to the claims at hand. Declarant only provides facts for Seo et al., which in the rejection at issue, is used only as a secondary reference to teach allulose, thereby modifying St. John et al. Declarant has not provided any evidence supporting the supplied argument that modifying St. John et al. with the allulose of Seo et al. would not work. An affidavit or declaration under 37 C.F.R. 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. See MPEP § 716.02(e).
Due to these reasons, the declaration is insufficient to overcome the rejections of St. John et al.
Response to Arguments
Applicant's arguments filed March 31, 2026 have been fully considered but they are not persuasive.
The prior art rejection has been amended in light of Applicant’s amendments to the claims, however, the essential prior art rejection has been maintained by the Examiner for the following reasons.
Applicant argues, with regard to the 112(b) rejection of claim 9, that the term “chocolate making ingredients” in claim 9 is clear and definite, citing a section of the instant specification that describes chocolate making ingredients (Remarks, p. 8-9).
This argument is not persuasive. While the cited instant specification gives examples of chocolate making ingredients, the instant specification does not clearly delineate what defines a chocolate making ingredient. Mere examples of chocolate making ingredients is not sufficient to offer a clear definition of the term.
Applicant argues, with regard to the 112(b) rejection of claim 12, that the amendments to the claim render the claim language clear when properly read in light of the specification (Remarks, p. 9-10). This argument is not persuasive because the claim remains unclear despite the current amendments, as set forth in the rejection above.
Applicant argues that one of ordinary in the art would not have been sufficiently motivated to modify the process of St. John by substituting in the allulose of Seo, as Seo expressly teaches that allulose cannot be merely substituted into conventional chocolate making processes as manufacturing difficulties arise, specifically in the conching phase (Remarks, p. 11-13).
This argument is not persuasive. The chocolate making process of St. John is not a conventional chocolate making process, as St. John teaches a process to produce reduced fat chocolate, that can contain a sweetener of various forms, including both sucrose and non-sugar sweeteners such as high-potency sweeteners and polyols. St. John teaches “non-standard chocolate products” and provides multiple method steps that differ from conventional processes that may be required in the taught method in order to produce non-standard chocolate that does not sacrifice texture, quality, or taste (St. John: col. 9-12). Moreover, St. John teaches that a low moisture content is essential in order to produce a non-standard chocolate with acceptable flow properties, and one method in achieving this is to alter the conching process by conching for longer than four hours at temperatures above 100°F (37°C), both of which encompass or overlaps with the claimed ranges. Relatedly, Seo also modifies the conching process. Therefore, there is in fact sufficient motivation to modify the method of St. John by substituting the sweetener with the allulose of Seo, as St. John does not teach a conventional chocolate making process, and it would have been understood by one of ordinary skill in the art that modifications to a chocolate making process are necessary depending on the desired output and composition of the chocolate (e.g., low fat, sugar substitute).
In the absence of any further arguments with regard to the rejections of the additional dependent claims, the rejections of these dependent claims are maintained.
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 MAURA E SWEENEY whose telephone number is (571)272-0244. The examiner can normally be reached M-F 9:00-6:00 EST.
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, Nikki Dees can be reached at (571)-270-3435. 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.
/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
Prosecution Insights