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 March 15, 2024. The earliest effective filing date of the application is March 16, 2023.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-12, in the reply filed on March 2, 2026 is acknowledged.
Claims 13-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 1-21 were originally presented and subject to a restriction requirement. Claims 1-21 are pending; claims 13-21 are withdrawn. Claims 1-12 are presented for examination.
Drawings
The drawings are objected to because the graph of Figure 2 does not have labels for the x-axis or any of the plotted lines. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
Claim 4 recites that there is no “substantially no discoloration” of the white chocolate confectionery product at elevated storage temperatures. While there is no definition or meaning in the claims or specification as originally filed as to what constitutes “substantially” no discoloration, the claim later recites “as measured by ΔE ≤ 3.0.” Therefore, “substantially no discoloration” will be interpreted as meaning a white chocolate confectionery product with a ΔE ≤ 3.0 as claimed and as described in the specification.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it contains the implied phrases of “The present disclosure relates to” and “The present disclosure also relates to.” A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claim 9 is objected to because of the following informalities: The claim recites “and combinations or mixtures thereof” in line 4. It is redundant to recite both “combinations” and “mixtures” as the meanings of each are essentially the same. Applicant should choose either one or the other to be recited in the claim. 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 2, 4, and 11 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 2 recites “temperatures of from about 100°F” which renders the claim indefinite because the limitation of “from” a temperature implies that there should be an upper limit of “to” a higher temperature. There is no upper limit recited and as such, the claim is unclear. Clarity can be improved by amending the language to read “temperatures of at least about 100°F.”
Claim 4 recites “elevated storage temperatures from above 40°C” which renders the claim indefinite as it is unclear what exactly the elevated storage temperatures are. If they are assumed to be “from above 40°C,” there is an additional issue as it’s unclear if “from above” includes a temperature of exactly 40°C, or if a temperature needs to be at least a fraction above 40°C in order to read on the claim.
Claim 4 also recites a ΔE value, which renders the claim indefinite, as the method for calculating this value, as described in [0052] of the instant specification, is unclear. It is unclear how the difference in L*, a*, and b* values are calculated, as the equation writes them as L*2 – L*1 (same for a* and b*), while the difference is described as being between L*0 and L*n (same for a* and b*). There are no “0” or “n” in the written out equation. It cannot be ascertained what the 2 and 1 subscripts represent and whether the difference is supposed to subtract the L*0 value from the L*n value (same for a* and b*), or the other way around. Therefore, the claim is rendered indefinite.
Claim 11 refers to a percentage without defining the base unit. The claim limitation is unclear as to whether the percent is based on weight, volume, molar, etc., and as such, the claim fails to distinctly claim the subject matter of the invention and is therefore rendered indefinite. For the purposes of examination, the claim will be interpreted as percent by weight.
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 1-5, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Seo et al. (US PG Pub. 2019/0269140; listed on IDS dated March 15, 2024), herein after referred to as Seo.
Regarding claims 1-4, Seo teaches a white chocolate having a reduction of saccharides (i.e., a white chocolate confectionery product having a reduced sugar content) (Abstract; claims 1 and 2) comprising:
cacao butter (i.e., a fat ingredient),
saccharides containing allulose (i.e., a sweetener comprising at least one rare sugar wherein the rare sugar is allulose), and
an emulsifier (claim 1).
Seo is silent as to the stable apparent viscosity, stable plastic viscosity, stable yield value, and lack of discoloration of the white chocolate confectionery product.
However, where the claimed and prior art products are identical or substantially identical in structure or composition, 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). See MPEP 2112.01.I. Since the composition taught by Seo is substantially identical to that of the claims, the claimed properties or functions must also be present in the composition of Seo.
To compare, the table below lists the components of the chocolate composition of Seo (Seo: Example 2) and an example chocolate composition recited in the instant specification (Specification: Example 2, Table 2).
Component
Seo (Table 2: Example 2) (wt.%)
Instant Specification (Table 2) (wt.%)
Total fat
29.03 (as taught in the rejection of claim 6 set forth below)
35
Total sweetener (allulose; sugar and allulose)
38.37
38
Emulsifier (soybean lecithin; soy lecithin and PGPR)
0.14
0.70
Optional flavor (natural vanilla; vanilla flavor)
0.05
0.03
The most significant difference between the two compositions is the amount of emulsifier. However, Seo additionally teaches that the chocolate product has an emulsifier content of 0.01 to 3 parts by weight [0020], equivalent to 0.01-3 wt.%, which encompasses the amount of emulsifier taught in the example of the instant specification. 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.
Given that the white chocolate composition as taught by Seo and as instantly claimed are substantially identical, the composition of Seo must also have the claimed apparent viscosity, plastic viscosity, yield value, and lack of discoloration, at the claimed temperature ranges, thereby establishing a prima facie case of obviousness.
Regarding claim 5, Seo teaches that the sweetener is allulose (claim 1).
Regarding claim 7, Seo teaches that the milk chocolate of Example 2, as processed in Comparative Example 4, has a moisture content of 0.18 wt.% [0093], which meets the claim limitation of having a moisture content of less than about 2.0 wt.%. Seo discloses that “milk chocolate” as used in the invention is intended to include white chocolate [0013]. Thus, the milk chocolate of Example 2 as disclosed by Seo is considered to also be white chocolate.
Regarding claim 8, Seo teaches that the chocolate product has an emulsifier content of 0.01 to 3 parts by weight [0020], equivalent to 0.01-3 wt.%, which encompasses the claimed range of 0.5-0.9 wt.%. 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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Seo et al. (US PG Pub. 2019/0269140) as applied to claim 5 above, and as evidenced by U.S. Dairy Export Council (“Dry Whole Milk & Whole Milk Powder,” Think USA Dairy. Retrieved from Internet Archive WayBack Machine captured 2015), herein after referred to as USDEC. Both references are listed on the IDS dated March 15, 2024.
Seo teaches the white chocolate confectionery product as set forth above with regard to claim 5.
Seo additionally teaches that the chocolate comprises 19.03 wt.% cacao butter and 29.48 wt.% whole milk powder (Table 2: Example 2). Seo does not explicitly disclose the fat content of the chocolate.
However, cacao butter is a fat and it is known that whole milk powder contains a substantial amount of fat. As evidenced by USDEC, whole milk powder contains between 26-42% fat (p. 1 paragraph 1), for an average amount of 34% fat in whole milk powder. Thus, ~10 wt.% of the whole milk powder in the chocolate of Seo is fat (34% of 29.48 wt.%). Adding the 19.03 wt.% cacao butter and the 10 wt.% fat from the whole milk powder, the total amount of fat in the chocolate of Seo is 29.03 wt.%, which reads on the claim limitation of about ≥30 wt.% fat.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Seo et al. (US PG Pub. 2019/0269140; listed on IDS dated March 15, 2024) as applied to claim 5 above, and further in view of Shiki (US PG Pub. 2009/0263502).
Seo teaches the white chocolate confectionery product as set forth above with regard to claim 5.
Seo is silent as to that the white chocolate confectionery product further comprises a whitening agent.
Shiki, in the same field of invention, teaches that white chocolate is colored with titanium dioxide, which is a white-coloring agent (i.e., whitening agent) [0002].
Therefore, as it was known in the art to color white chocolate, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have added titanium dioxide as a whitening agent to white chocolate, as Shiki teaches that titanium dioxide is known as an additive to whiten white chocolate.
Claims 1-7, 9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Behringer et al. (US 2021/0092973), herein after referred to as Behringer.
Regarding claims 1-4, Behringer teaches a confectionery food composition that is a white chocolate spread (i.e., a white chocolate confectionery product) [0095] that has lower levels of sugar (i.e., having a reduced sugar content) ([0007]-[0008]) comprising:
a fat phase comprising high-melting and low-melting fats (i.e., a fat ingredient),
a sweetener (claims 1 and 4) wherein the sweetener is allulose (i.e., a sweetener comprising at least one rare sugar wherein the rare sugar is allulose) [0055],
a surfactant [0009]; and
a bulking agent (i.e., bulk filler) (claim 1).
Behringer is silent as to the stable apparent viscosity, stable plastic viscosity, stable yield value, and lack of discoloration of the white chocolate confectionery product.
However, where the claimed and prior art products are identical or substantially identical in structure or composition, 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). See MPEP 2112.01.I. Since the composition taught by Behringer is substantially identical to that of the claims, the claimed properties or functions must also be present in the composition of Behringer.
To compare, the table below lists the components of the chocolate composition of Behringer (Behringer: [0177]; Table in [0182]: T1) and an example chocolate composition recited in the instant specification (Specification: Example 2, Table 2).
Component
Behringer ([0177]; Table [0181]: T1) (wt.%)
Instant Specification (Table 2) (wt.%)
Fat content
45.2
35
Total sweetener (sucrose; allulose and sucrose)
40
38
Emulsifier/surfactant (sunflower lecithin; soy lecithin and PGPR)
0.5
0.70
The most significant difference between the two compositions is the amount of fat. However, given that instant claim 6 requires that the fat content of the composition is ≥ 30 wt.%, and where the composition of Behringer meets this limitation, the two compositions are still considered to be substantially identical.
Given that the white chocolate composition as taught by Behringer and as instantly claimed are substantially identical, the composition of Behringer must also have the claimed apparent viscosity, plastic viscosity, yield value, and lack of discoloration, at the claimed temperature ranges, thereby establishing a prima facie case of obviousness.
Regarding claim 5, Behringer teaches that the sweetener is allulose [0055].
Regarding claim 6, Behringer teaches that the white chocolate confectionery product has a fat content of 30.2 wt.% ([0177]; Table [0181]: U1), which meets the claimed range of about ≥30 wt.%.
Regarding claim 7, Behringer teaches that the food composition (i.e., white chocolate confectionery product) has a moisture content of less than 2.5 wt.%, which overlaps with the claimed range of less than about 2.0 wt.%. 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.
Regarding claim 9, Behringer teaches that the white chocolate confectionery product comprises a bulking agent (i.e., bulk filler) (claim 1) wherein the bulking agent is polydextrose [0062].
Regarding claim 11, where Behringer discloses that the white chocolate confectionery product comprises a fat phase, sweetener that is allulose, a surfactant, and a bulking agent that is polydextrose as set forth above with regard to claims 1, 5, 10, these components, with the exception of the surfactant, contain none or negligible amounts of protein.
Behringer teaches that the surfactant is a component of the dispersion of porous particles in the food composition [0009], the surfactant is a non-dairy protein [0068], and that the porous particles comprise 0.5-15 wt.% non-dairy protein [0069]. Therefore, the surfactant is a non-dairy protein and is the only source of protein in the white chocolate confectionery product. Since the porous particles are a component of the confectionery product, the amount of protein will be a fraction of the taught 0.5-15 wt.%. Given that the maximum amount of protein in the confectionery product must be 0.5-15 wt.%, this range overlaps with the claimed range of that the confectionery product comprises a protein content of less than 1.0 wt.%. 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.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Behringer et al. (US 2021/0092973) as applied to claim 9 above, and as evidenced by MyFoodData (“Pol[y]dextrose,” Nutrition Facts Search Tool, 2026), herein after referred to as MyFoodData.
Behringer teaches the white chocolate confectionery product as set forth above with regard to claim 9.
Behringer teaches that the bulking agent (i.e., bulk filler) is polydextrose [0062], but is silent as to the amount of protein in the polydextrose.
However, as evidenced by MyFoodData, polydextrose does not contain any amount of protein (p. 1 nutrition facts label). Therefore, the polydextrose taught by Behringer meets the claim limitation of that the bulk filler comprises a protein content of less than 20.0 wt.%.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Curto, EP 1964478, teaches mixing white chocolate and titanium dioxide, a whitening agent (Abstract).
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.
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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.
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/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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