DETAILED ACTION
Background
The preliminary amendment dated May 15, 2024 (amendment) amending claims 1-11, 13 and 15-17 and canceling claim 12 has been entered. Claims 1-11 as filed with the amendment have been examined. Claims 13-17 have been withdrawn from consideration.
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
Claims 13-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 01, 2026.
Claim Objections
Claims 1, 4 and 9 are objected to because of the following informalities:
In claim 1, at line 7 at the beginning of the line delete [[c.]], and at line 11 after “to form a” insert -- dry--;
In claim 4, at line 2 after “b.” replace [[involves the addition of]] with --comprises adding--; and,
In claim 9, at line 5 after “coconut oil,” delete [[and]], before “high oleic” delete [[25]], and at line 6 after “sunflower” insert -- oil--.
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 8-9 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 8 recites the limitation “the fat source” at lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Claim 1 does not recite any fat.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 9 recites the broad recitation “emerging seed oil crops” at line 5, and the claim also recites “such as high oleic sunflower oil, high oleic rapeseed, high oleic palm, high oleic soybean oils & high stearin sunflower [oil]” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 11 recites the limitation "fat in step d." in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 1 does not recite a fat and step d. refers to homogenizing a plant protein mixture.
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 1-2 and 4-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-11 of copending Application No. 18/713,323 (reference application) cited by reference to US2025/0000118 A. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the reference application recites all of the claimed features of steps a., b., d., e., f. and g., with the exception that it claims drying and not specifically spray drying; however, the reference application discloses drying as including spray drying at [0229].
In addition, the following claims are identical:
Claim 2 of the reference application is identical to instant claim 2;
Claim 4 of the reference application is identical to instant claim 4;
Claim 5 of the reference application is identical to instant claim 5;
Claim 6 of the reference application is identical to instant claim 6;
Claim 7 of the reference application is identical to instant claim 7;
Claim 8 of the reference application is identical to instant claim 8;
Claim 9 of the reference application is identical to instant claim 9;
Claim 10 of the reference application is identical to instant claim 10; and,
Claim 11 of the reference application is identical to instant claim 11.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over US2018/0295849 A1 to Earl et al. (Earl), of record.
Regarding instant claims 1-2 and 7, Earl at [0002] discloses a plant-based milk alternative base and method for making it as well as (at Example V at [0072]-[0074] a method of making a chocolate product. Earl discloses the method comprising (at [0013] and in Example II at Table 7 and [0066]) adding a plant-based protein (“plant protein”) as a chickpea plant protein (from a legume source in claim 2) to a liquid as water to form a plant protein mixture; adding a carbohydrate as maltodextrin (“polysaccharide” as in claim 7) to the plant protein mixture, and forming a stable emulsion by agitating to form a plant milk (“homogenizing the plant protein mixture”). Further, at [0048], Earl discloses immersion blending at from 1000 to 15000 rpm or homogenizing the plant protein mixture. In addition, at Example V and Table 10 on page 7 and at [0072]-[0074], Earl discloses combining a dehydrated composition as a plant milk powder (“dry plant-based composition”) with other ingredients comprising sugar, cocoa mass and cocoa butter to form a milk chocolate (“chocolate product”).
Further, Earl does not provide an example wherein the method comprises applying a thermal treatment to the plant protein mixture to form a plant-based liquid and spray drying as the manner of drying the plant-based liquid to form a dry plant-based composition. However, at [0036] Earl discloses spray drying its plant-based liquid as its method of forming the dehydrated or dry plant-based composition and (at [0063]) generally discloses homogenizing and pasteurizing (applying thermal treatment) to its compositions before or in packaging to prepare them for commercial sale or use. The ordinary skilled artisan in Earl would have found it obvious to apply a thermal treatment to its plant based mixture to prepare it as a plant-based milk for later use or sale and to spray dry the plant-based milk for use in making its chocolate product because Earl discloses that applying a thermal treatment and spray drying are desirably used to make a plant milk powder or dry plant-based composition suitable for use in making its chocolate composition.
Regarding instant claim 3, Earl discloses a chickpea protein isolate in its Example II plant-based mixture.
Regarding instant claim 4, Earl at [0047] discloses adding sugar as a sweetener in a mixture with stabilizers including pectin, gums or starches (“polysaccharides”).
Regarding instant claims 5 and 6, while the Office considers optional limitations including all of the sugars listed in claim 5 and the polyols listed in claim 6, the claims themselves do not require them.
Regarding instant claims 8 and 9, at Table 7 Earl discloses the plant-based liquid or milk comprising palm oil and coconut oil.
Regarding instant claim 10, the weight ratio of plant protein to the total weight of sugar, polyol, one or more polysaccharides thereof or mixtures thereof disclosed in Table 7 of Earl is 7 (protein) to 18 (polysaccharide), or about 0.4:1.
Regarding instant claim 11, the weight ratio of plant protein to the total weight of fat disclosed in Table 7 of Earl is 7 (protein) to 5 (fat), or about 1.4:1.
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over US2018/0295849 A1 to Earl et al. (Earl) as applied to claim 1, above in view of WO2022/162174 A1 to Brunt et al. (Brunt).
As applied to claim 1, Earl at [0013], [0036], [0048], Example II at Table 7 and [0066] and Example V at [0072]-[0074] and Table 10 on page 7 discloses a method of making a chocolate product comprising adding a plant protein to water to form a plant protein mixture; adding a sugar, polyol, one or more polysaccharides thereof or mixtures thereof to the plant protein mixture; homogenizing the plant protein mixture; applying a thermal treatment to form a plant-based liquid; spray drying the plant-based liquid to form a dry plant-based composition’; and combining the dry plant-based composition with other ingredients to form a chocolate product.
Regarding instant claims 4-6, Earl does not disclose an Example of a method comprising adding a mixture of a sugar and at least one polysaccharide to its plant protein mixture as in claim 4; further, although the limitations of each of claims 5-6 is optional, Earl does not provide an example wherein sugar is selected from the group consisting of sucrose, fructose, glucose, dextrose, galactose, allulose, maltose, high dextrose equivalent hydrolysed starch syrup, xylose, and combinations thereof as in claim 5; and, further, does not disclose an example wherein the polyol is selected from the group consisting of sorbitol, mannitol, isomalt, maltitol, lactitol, xylitol, erythritol or glycerol as in claim 6. However, Earl at [0047] discloses adding sugar as a sweetener in a mixture with stabilizers including pectin, gums or starches
Brunt at page 1 (top of page), lines 3-6 discloses processes and ingredient formulations for the preparation of a plant-based chocolate crumb and of making a chocolate product therefrom, wherein the process for producing a crumb based on a plant-based milk (“plant protein mixture”) comprises heating a plant-based milk and drying it to a crumb. Further, at Examples 1-6, Brunt discloses making a chocolate product from the crumb comprising mixing the crumb with other ingredients. At page 18, lines 10-27 Brunt discloses that its plant protein mixture comprises sugars as sweeteners, including sucrose, fructose, glucose and galactose; and, at page 1, lines 37-48, Brunt discloses adding a combination of carbohydrates to the plant protein mixture, including maltodextrin as well as (at page 19, lines 31-33) inulin or fiber in addition to a sweetener. Further, at page 19, lines 22-29, Brunt discloses adding sugar alcohols as sweeteners, including sorbitol, mannitol, isomalt, maltitol, lactitol, xylitol, and/or erythritol.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Brunt for Earl to add a sugar and a polysaccharide, including maltodextrin, inulin or other fructo-oligosaccharides as fiber to its plant protein mixture or to add a sugar alcohol including any of sorbitol, mannitol, isomalt, maltitol, lactitol, xylitol, and/or erythritol to its plant protein mixture. Both references disclose methods of making a chocolate product from a dried plant-based liquid or milk. The ordinary skilled artisan in Earl would have desired to use any of the claimed sweeteners, including sugar or sugar alcohols as in Brunt to sweeten its plant protein mixture; and, further, would have desired to include any of the claimed polysaccharides listed Brunt, alone or with a sugar in its plant-based liquid to stabilize the liquid in drying and to provide bulk or digestive fiber.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US2017/0099852 A1 to Nono et al. (Nono) at Abstract discloses methods of forming dry aggregates of plant proteins and (at [0147]) discloses making a chocolate product from the dry plant protein mixture. At [0172]-[0179], Nono discloses the method comprising preparing a solution of pea proteins in water; pasteurizing it; homogenizing it; and spray-drying it to form the dry material for use in making the chocolate product.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW E MERRIAM whose telephone number is (571)272-0082. The examiner can normally be reached M-H 8:00A-5:30P and alternate Fridays 8:30A-5P.
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/ANDREW E MERRIAM/Examiner, Art Unit 1791
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