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 without traverse of group I, claims 1-16 in the reply filed on 23 February 2026 is acknowledged.
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 10, 11, 13, 14 and 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.
Regarding claims 10 and 16, each of these claims recites a range for a proportion followed an exemplary preferable range within the first range for the same claim element. Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made. Appropriate correction is required.
Claims 11, 13 and 14 recite claim elements selected from the group “comprising”. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. (emphasis added) Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. See In re Kiely, 2022 USPQ2d 532 at 2* (Fed. Cir. 2022) (each independent claim recites "a selection from the group comprising a person, an animal, an animated character, a creature, an alien, a toy, a structure, a vegetable, and a fruit." … (emphasis added). "Given the breadth of variation among the specified alternatives and the use of the open-ended word ’comprising’ to define the scope of the list, we affirm the Board's conclusion that the pending claims recite improper Markush language and are indefinite under § 112(b)."). (MPEP 2173.05(h)) Appropriate correction is required.
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.
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 1-11 and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Ervin USPGPub 20100278984 and Hadnadev “Functionality of Starch Derivatives in Bakery and Confectionery Products” Chap. 9 in Grumezescu et al. (2018). Biopolymers for Food Design - Handbook of Food Bioengineering, Volume 20. Elsevier. Retrieved from https://app.knovel.com/hotlink/toc/id:kpBFDHFBV1/biopolymers-food-design/biopolymers-food-design
Regarding claims 1, 2, 4-11, and 16, Ervin teaches a solid at ambient temperature, molded [0116] chocolate composition comprising (claim 1):
≥ 40 wt% dark chocolate component
0-30 wt% chocolate liquor component
0.001-5 wt% virgin coconut component
0-15 wt% edible oil with a high level of unsaturated fatty acids (canola, soybean, sunflower) [0052]
0-20 wt% of a 100% cocoa component
0-20 wt% confectionary sugar
The proportions of the components of the composition of Ervin overlap or encompass the proportions of lipid, sugar, cocoa ingredient and saturated fat recited in claims 1, 4, 6, 8, 10, 11, and 16. In the case 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
Ervin is silent regarding using sugar replacer.
Hadnadev teaches “Due to the high sugar content in chocolate-like products there are many papers about reducing or replacing sugar amount using different bulking agents, such as polydextrose and maltodextrins, sugar alcohols (sorbitol, maltitol, xylitol, lactitol, isomalt), sweeteners (aspartame, sucralose, acesulfame K), and inulin (Goldman, 2006; Kruger and Freund, 2001; Rapaille et al., 1995; Riesen, 1977; Sokmen and Gunes, 2006; Takemorie et al., 1997). Generally, sugar alcohols are the most frequently used sugar replacers in chocolate-like products due to their high bulking capacity, sweetening strength, low caloric value, as well as noncariogenic and some of them even cariostatic effects (Maguire and Rugg-Gunn, 2003). (Pg. 299-300)
Ervin is directed to the confectionary art and Hadnadev is a handbook reference that establishes the level of ordinary skill in the confectionary art. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have replaced the confectionary sugar of Ervin partially or wholly with sugar alcohols as suggested by Hadnadev because such substitution was a known technique for reducing the caloric content of chocolate products. As such the proportions of sugar and sugar replacer recited in claims 1 and 5-7. Likewise, given the extensive understanding of the calorie contributions of various ingredients to chocolate and the health concerns surrounding saturated fats, (See [0028-0031] of Ervin), it would have been obvious to one of ordinary skill in the art at the time the application was filed to have balanced the saturated fat content of caloric density of the product. As such, the saturated fat content and caloric density recited in claim 4 is merely an obvious variant of the prior art. Therefore, Ervin modified with Hadnadev renders obvious the limitations of claims 1, 2, 4-11, and 16.
Regarding claim 3, Ervin does not require any non-chocolate solid inclusions as recited in claim 3.
Regarding claim 13, Ervin teaches confectionary sugar which is sucrose as recited in claim 13. [0106]
Regarding claim 14, the modification of Ervin with Hadnadev detailed above comprises sugar alcohol as sugar replacer.
Regarding claim 15, Ervin only requires dark chocolate and therefore contains a single cocoa containing ingredient.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Ervin USPGPub 20100278984 and Hadnadev “Functionality of Starch Derivatives in Bakery and Confectionery Products” Chap. 9 in Grumezescu et al. (2018). Biopolymers for Food Design - Handbook of Food Bioengineering, Volume 20. Elsevier. Retrieved from https://app.knovel.com/hotlink/toc/id:kpBFDHFBV1/biopolymers-food-design/biopolymers-food-design as applied to claim 1 above in further view of Patel “Applications of fat mimetics for the replacement of saturated and hydrogenated fat in food products” Current Opinion in Food Science 2020,33:61–68.
Regarding claim 12, Ervin teaches what has been recited above but is silent regarding the composition comprising wax.
Patel teaches “The main stability issue in chocolate and confectionary products is the migration and leakage of oil under storage conditions. Because of the fact that solid fat acts as an oil binder, replacement with fat mimetics needs to be carefully tailored to avoid compromising the stability of products. To this end, oil structurants that work either alone or together with the sugar network such as polymers, waxes, and resins (shellac) have been explored in products like chocolate bars, praline fillings, chocolate pastes, peanut butter, and confectionary creams.” (Pg. 64)
Ervin is directed towards a chocolate composition and Patel is a review article that catalogs the state of the chocolate art with regard to fat mimetics at the time the invention was made. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have included wax in the composition of Ervin as a stabilizer as taught by Patel. Therefore, the modification of Ervin with Hadnadev and Patel renders obvious the invention of claim 12.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michele L Jacobson whose telephone number is (571)272-8905. The examiner can normally be reached Monday through Friday from 10-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michele L Jacobson/Primary Examiner, Art Unit 1793
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