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 .
Election/Restrictions
Applicant's election with traverse of Group II, claim 11 in the reply filed on November 24, 2025 and the cocoa species in the telephonic interview on February 26, 2026 is acknowledged. The traversal is on the ground(s) that the method claims incorporate the powder and product and the inventions are linked with a unified inventive concept which would not cause a burden for the examiner to consider together. This is not found persuasive because the application is filed as a 371, and lack of unity applies as the linking feature of the inventions was known in the prior art as stated in the restriction requirement mailed September 24, 2025, and as seen below. Regardless, it is noted that the searches between methods and products are different in nature in that the method would require search terms the product search would not.
The requirement is still deemed proper and is therefore made FINAL. Claims 1-10, 13, and 15-17 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claims 11 and 18-20 are rejected under 35 U.S.C. 103 as being obvious over Te Biesebeke et al (US 2014/0017356).
Regarding claims 11, 19, and 20, 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.
Claim 21 is rejected 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).
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 is not specific to the total amount of maltose in the product as between 1-8% as recited in claim 21.
Schaffer-Lequart et al (SL) teaches instant drink powders, including cocoa, comprising hydrolyzed whole grains, including from barley (abstract and paragraphs 45 and 51). SL teaches an advantage of a drink powder with hydrolyzed whole grain is an improved carbohydrate profile wherein traditionally supplied external sweeteners are replaced with the hydrolyzed grain (paragraphs 40-44 and 148). SL teaches that the amount of enzyme added for hydrolysis may result in a useful sugar profile which may affect the taste and reduce the external sugar added, wherein on a dry matter bases the hydrolyzed whole grain has a glucose content of at least 0.25%, and the maltose to glucose ratio is below 10:1 (paragraphs 86-89), and thus the hydrolyzed cereal grain would comprise about 40% or below maltose.
Regarding the total amount of maltose in the product as between 1-8% as recited in claim 21, as discussed above, TB teaches of a powdered drink, i.e. dry product, comprising about 25-45% cereal grain. It would have been obvious for the grain of TB to comprise below 40% maltose, as SL teaches it was a useful sugar profile. Thus, the product of the prior art would comprise about 10% or below maltose (25% cereal grain *10% or less maltose), which overlaps the claimed range. Furthermore, as it was known for different sugars to contain varying levels of sweetness intensity, see for example SL paragraph 89 which teaches glucose has a higher sweetness than maltose, or paragraph 74 which teaches glucose has 70-75% sweetness of sucrose, it would have been obvious to adjust the different sugars to obtain the desired carbohydrate level while balancing sweetness.
Claim 22 is rejected 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).
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 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 (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) to about 6.75% or more (45% *15% flavor enhancer) 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.
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 and 18-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of copending Application No. 17/754,171 (‘171, reference application), expected patent number 12568989. Although the claims at issue are not identical, they are not patentably distinct from each other because both claim a cocoa beverage product 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 5 of ‘171).
It is noted that although a notice of allowance, issue fee, and issue notification in the reference application is present, as the resulting patent has yet to be published, the rejection is not a provisional rejection and the application number has been used to refer to the document.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
“Cocoa” FoodData Central, pages 1-2 printed March 2026 shows cocoa contains no sugars.
Arbuckle, Ice Cream 4th Edition Springer Science 1986, page 32, shows nonfat milk solids consists of 36.7% protein, 55.5% lactose, and 7.8% minerals.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached at 571-270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KELLY BEKKER
Primary Patent Examiner
Art Unit 1792
/KELLY J BEKKER/Primary Patent Examiner, Art Unit 1792