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 response to the application filed on December 11, 2023. The earliest effective filing date of the application is September 14, 2021.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 9-16, in the reply filed on October 9, 2025 is acknowledged.
Claims 17-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Status of Application
Claims 9-23 were originally presented and subject to a restriction requirement. Claims 9-23 are pending; claims 17-23 are withdrawn; claims 1-8 are canceled. Claims 9-16 are presented for examination.
Claim Objections
Claims 9, 11, 15, and 16 are objected to because of the following informalities:
Claim 9 recites the acronym “NCA/CMA.” Acronyms should be fully written out on the first occasion they are mentioned with the acronym following in parentheses. The claim should read “using the National Confectioners Association/Chocolate Manufacturers Association (NCA/CMA) Casson regression model.”
Claim 11 recites the acronyms “PGPR” and “AMP” in line 3. Acronyms should be fully written out on the first occasion they are mentioned with the acronym following in parentheses. The claim should read “group consisting of lecithin, polyglycerol polyricinoleate (PGPR), ammonium phosphatide (AMP).”
Claim 11 recites “and combinations or mixtures thereof” in lines 3-4. It is redundant to recite both “combinations” and “mixtures” as the meanings of each are essentially the same. Applicant should choose either “combinations” or “mixtures” to be recited in the claim.
Claims 15 and 16 each need a comma after “PGPR” and before “said combination” in lines 3 and 4, respectively.
Appropriate correction is required.
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.
Claim 9 also recites “combining the refined fat/sweetener mixture and the refined chocolate mixture” in line 13. While the “refined chocolate mixture” is clear as to what the claim is referring to, the “refined fat/sweetener mixture” is unclear as it seems to be referring to the fat/sweetener mixture after refinement but prior to the addition of water and an emulsifier/surfactant, as recited in lines 8-9, thereby rendering the claim indefinite. It is assumed that applicant is intending to combine the mixture of fat/sweetener/water/emulsifier/surfactant, not just the refined fat/sweetener mixture, with the refined chocolate mixture; however, the claim should be amended to further clarify that it is the refined mixture of fat/sweetener/water/emulsifier/surfactant being combined with the other mixture.
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 “roll refined allulose for a 25 micron milk chocolate” such that one of ordinary skill in the art can determine a surface area that is less than 70% of the roll refined allulose surface area. It is unclear what the applicant is intending to specifically claim. 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 the method of making a milk chocolate confectionery product wherein in the confectionery product, the particle size of the allulose is reduced, thereby lowering the surface area of the allulose in the confectionery product.
Claims 13 and 14 recite “the method according to claim 11, having a fat/total moisture content of,” which renders the claim indefinite, as it is unclear as to which step of the method has these fat/total moisture contents. 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 fat/total moisture contents.
Claims 15 and 16 each recite a content of a specific emulsifier/surfactant, or combination thereof, but the basis of this content is not defined and is unclear, thereby rendering the claim indefinite. For instance, claim 15 recites “emulsifier/surfactant comprises lecithin having a content of;” it is unclear if the amount of lecithin is 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 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) 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 and the refined chocolate mixture (col. 11 lines 31-65),
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. 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 (St. John: 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 22-24.5% by weight (St. John: col. 8 lines 25-32). 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).
Conclusion
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 8:00-5:00 EST.
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/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791