DETAILED ACTION
Amendments made on July 6, 2026, have been entered.
Claims 1-8, 10-11, 13, 15-21, and 23-24 are pending.
Claims 1-8, 10, 13, and 15-17 have been withdrawn.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 .
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 § 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.
The rejection of claims 11 and 18-20 under 35 U.S.C. 103 as being obvious over Te Biesebeke et al (US 2014/0017356) has been withdrawn in light of applicant’s amendments made July 6, 2026 which require the composition comprise the total amount of isomaltose, isomaltotriose and panose as between 2-10%.
The rejection of claim 21 under 35 U.S.C. 103 as being obvious over Te Biesebeke et al (US 2014/0017356), further in view of Schaffer-Lequart et al (US 2013.0259974) has been withdrawn in light of applicant’s amendments made July 6, 2026 which require the composition comprise the total amount of isomaltose, isomaltotriose and panose as between 2-10%.
Claims 11, 18-20, and 23 are rejected under 35 U.S.C. 103 as being obvious over Te Biesebeke et al (US 2014/0017356) in view of Satoshi (JP 2012239415 machine translation).
Regarding claims 11, 19, 20, and 23, Te Biesebeke et al (TB) teaches a cocoa beverage ingredient comprising by dry weight:
15-25% skim milk powder;
10-20% cocoa;
5-15% fat including vegetable fat;
10-20% carbohydrates which are selected from the group including sucrose; and
25-45% cereal based fractions, which are from hydrolyzed whole grain including barley (paragraphs 66, 103-106, 108, and 136-145, and claim 7).
As TB teaches the components by dry weight, the cocoa disclosed would be cocoa solids, and the cereal, i.e. barley, fraction would be hydrolyzed barley solids. As TB teaches that the beverage ingredient is in powdered form (paragraphs 107, 123, and 145), there would be a minimal amount of water in the product of TB and the disclosed dry weight composition would encompass a product with about the same components as disclosed, and thus, the claimed composition is considered encompassed or alternatively obvious over the teachings of the prior art.
Regarding the combined amount of glucose, sucrose, fructose, maltose, and isomaltose as between 10-40% as recited in claim 11, preferably from 20-40% as recited in claim 18, as discussed above, the teachings of TB encompass or alternatively make obvious a cocoa beverage powder comprising: 15-25% skim milk powder; 10-20% cocoa; 5-15% fat including vegetable fat; 10-20% carbohydrates which are selected from the group including sucrose; and
25-45% cereal based solids, which are from hydrolyzed whole grain including barley. As TB does not require any additional ingredients, it would have been encompassed, or at least obvious for the product of TB to consists of the recited ingredients; to form the product of the prior art as disclosed without any additional unrequired and/or nondisclosed ingredients would have been obvious and well within the purview of one of ordinary skill in the art. As TB teaches the carbohydrates are sugar, and further teaches it may be advantageous for the beverage ingredient to comprise sucrose below 50%, including from 0-25% (paragraph 102), the carbohydrate component of TB would contribute up to about 10-20% sucrose to the product. The only other component of TB’s composition contributing glucose, sucrose, fructose, maltose, and isomaltose would be the cereal based fractions. Although it is unknown as to how much of glucose, sucrose, fructose, maltose, and isomaltose is within the cereal based fraction, the composition disclosed by TB would still encompasses the claimed compositional range. For example, at the minimum amount of said elements from the cereal based fraction, when the cereal based fraction contributed 0% of glucose, sucrose, fructose, maltose, and isomaltose, the carbohydrate or sucrose component would still contribute about 20%, and the product of TB would have 20% glucose, sucrose, fructose, maltose, and isomaltose. When the cereal based fraction contributed a maximum amount, i.e. 100% glucose, sucrose, fructose, maltose, and isomaltose, and the carbohydrate or sucrose component is 10%, the product of TB would have about 35% glucose, sucrose, fructose, maltose, and isomaltose. Thus, the product as claimed is at least obvious over the teachings of the prior art.
TB is not specific to the total amount of isomaltose, isomaltotriose and panose as between 2-10% as recited in claim 22.
Satoshi et al (Satoshi) teaches a flavor improver for foods and beverages which provides for superior products with a cohesive flavor (title and paragraphs 2, 4, 5, and 10). Satoshi teaches that the flavor enhancer contains 15% or more, including 85% or more branched oligosaccharides in the flavor composition, wherein isomaltose, panos, and isomaltotrios are particularly preferable because they improve the flavor of foods and beverages (paragraphs 6, 16, and 14). Satoshi teaches the oligosaccharides can be obtained commercially or with hydrolysis of starch materials including barley (paragraphs 17 and 25).
It would have been obvious for the about 25-45% hydrolyzed cereal fractions of TB to comprise 15% or more isomaltose, isomaltotriose and panose as Satoshi teaches that said oligosaccharides can be produced from hydrolysis of starch, which is contained in cereal fractions including barley, and that isomaltose, isomaltotriose and panose provide for improved beverage flavor. Thus, the product of the prior art would comprise about 3.75% (25% hydrolyzed cereal *15% flavor enhancer from hydrolyzed cereal) to about 6.75% or more (45% hydrolyzed cereal *15% flavor enhancer from hydrolyzed cereal) isomaltose, isomaltotriose and panose which encompasses the claimed range. It would have been further obvious to adjust the amount of isomaltose, isomaltotriose and panose based on the desired flavor enhancement in view of Satoshi.
Claims 21 and 24 are rejected under 35 U.S.C. 103 as being obvious over Te Biesebeke et al (US 2014/0017356) in view of Satoshi (JP 2012239415 machine translation), further in view of Ofodu et al (WO 2021/013952).
As discussed above, TB teaches a powdered cocoa beverage ingredient comprising: about 15-25% skim milk powder; about 10-20% cocoa; about 5-15% fat; about 10-20% carbohydrates which are selected from the group including sucrose; and about 25-45% cereal based fractions, which are from hydrolyzed whole grain including barley. TB teaches that the beverage may comprise 10-75% carbohydrates (paragraph 127).
TB is not specific to the total amount of maltose in the product as between 1-8% as recited in claim 21, or 3-7% as recited in claim 24.
Ofodu et al (Ofodu) teaches that due to an increase in health concerns there is a trend to reduce the amount of added sugars without having an adverse impact of sweetness, specifically in starch derived beverages (page 1 line 24 through page 2 line 8 and page 2 line 26 through page 3 line 1). Ofodu teaches that glucose is more potent sweetener than maltose, so in forming a fermented malt beverage it is particularly advantageous to convert maltose to glucose to increase sweetness without increasing total sugars, wherein in a preferred embodiment the maltose in the beverage does not exceed 24% based on the total carbohydrate content (page 3 line6, page 7 lines 26-28, and page 9 lines 16-23).
Regarding the total amount of maltose in the product as between 1-8% as recited in claim 21, or 3-7% as recited in claim 24, it would have been obvious for the fermented grain beverage of TB to comprise 24% or less of the carbohydrates as maltose to increase the sweetness without increasing the total sugars in view of Ofodu. Thus, the beverage of TB which had 10-75% carbohydrates would have 18% or less maltose (75% carbohydrates *24% maltose) which encompasses the claimed ranges. Furthermore, as Ofodu teaches that it was known for different sugars to contain varying levels of sweetness intensity, it would have been obvious to adjust the different sugars to obtain the desired carbohydrate level while balancing sweetness.
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 11, 18-21, and 23-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of US Patent 12,568,989 (‘989). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim a cocoa and/or malt beverage comprising:
10-35% non-fat milk solids;
0-15% cocoa solids;
6-20% vegetable oil and/or milk fat;
0-25% sucrose; and
10-65% hydrolyzed barley solids, wherein,
The total amount of maltose is between 1-8%;
The combined isomaltose, isomaltotriose, and panose is between 2-10%; and
The total combined amount of glucose, sucrose, fructose, maltose, and isomaltose is between 20-40% (claim 1 of ‘989). Note the patent was previously referred to by the application number because the claims had been allowed but not yet published with a patent number. The rejection remains the same as previously presented with the addition of the newly added claims.
Response to Arguments
Applicant's arguments filed July 6, 2026 have been fully considered but they are not persuasive.
Applicant argues that TB does not disclose any composition of its hydrolysate and the composition of Santoshi is an additional enhancer ingredient and thus, there is no basis to assume TB’s cereal hydrolysate inherently have the composition taught by Satoshi. This argument is not convincing as the rejection is not based on inherency, but rather obviousness. The rejection is based on the fact that: (1) TB teaches a food product comprising about 25-45% cereal based fractions, which are from hydrolyzed whole grain including barley; and (2) Satoshi teaches hydrolyzed starch derived materials including those derived from barley preferably comprising 15% or more, including 85% or more branched oligosaccharides of isomaltose, panos, and isomaltotrios improve the flavor of foods and beverages. It would have been obvious for the about 25-45% hydrolyzed cereal fractions of TB to comprise 15% or more isomaltose, isomaltotriose and panose as Satoshi teaches that said oligosaccharides can be produced from hydrolysis of starch, which is contained in cereal fractions including barley, and that isomaltose, isomaltotriose and panose in an amount of 15% or more provide for improved beverage flavor. The product of the prior art would comprise about 3.75% (25% hydrolyzed cereal *15% flavor enhancer components from hydrolyzed cereal) to about 6.75% or more (45% hydrolyzed cereal *15% flavor enhancer from hydrolyzed cereal) isomaltose, isomaltotriose and panose which encompasses the claimed range. Additionally, it would have been further obvious to adjust the amount of isomaltose, isomaltotriose and panose based on the desired flavor enhancement in view of Satoshi. The claims do not limit where the sugars come from, but rather simply require them in the product.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 12,568,989 teaches a cocoa and/or malt beverage comprising isomalto-oligosaacharides.
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.
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KELLY BEKKER
Primary Patent Examiner
Art Unit 1792
/KELLY J BEKKER/Primary Patent Examiner, Art Unit 1792
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