DETAILED ACTION
Background
The preliminary amendment dated May 15, 2024 (amendment) amending claims 1-11, 13- 15 and 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 Claims 13-17 have been withdrawn from consideration.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Claims 13-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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, 7 and 9 are objected to because of the following informalities:
In claim 1, at line 12 after “to form a” insert -- dry--;
In claim 4, at line 2 after “b.” replace [[involves the addition of]] with --comprises adding--; In claim 7, at line 3 after “soluble fibre” delete [[(e.g. dextrin)]]; and,
In claim 9, at line 5 after “coconut oil,” delete [[and]].
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.
Claim 3 is 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.
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 3 recites the broad recitation “an amylase” at line 5, and the claim also recites “preferably, an alpha amylase” 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.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of copending Application No. 18/710,281 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 9 of the reference application recites in steps b., d., e., f., g. and h. (of claim 1, from which claim 9 depends) all of the claimed features of steps a., c., e., f., g. and h., including dispersing a fat source in the composition in claim 9 prior to drying as in step d. by homogenizing its plant protein mixture, with the exception that claim 9 of the reference application claims adding a plant protein to water, enzyme and plant flour to form the plant protein mixture of plant proteins, enzyme and water as claimed; and, further, the instant claims recite adding a sugar, polyol or one or more polysaccharides or mixtures thereof to a plant protein mixture; however, the reference application at page 10, lines 1-8 discloses that its plant flour claimed in step a. (of claim 1) comprises a cereal which contains polysaccharides; in addition, the specification of the reference application at page 5, lines 10-14 confirms that its plant protein mixture of plant flour and plant protein comprises carbohydrates. The Office considers the claimed polysaccharides and sugars as including cereal carbohydrates.
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 1-3 and 7, Earl at [0002] discloses a plant-based milk alternative and method for making it as well as (at Example V at [0072]-[0074] a method of making a chocolate product from the milk alternative . Earl discloses the method comprising (at [0013] and in Example II at Table 7 and [0066]) making a plant milk by adding a plant-based protein as a chickpea plant protein (“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 adding fat source as coconut and palm oils, and forming a stable emulsion by agitating to form a plant milk (“dispersing a fat source in the plant protein mixture” and “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 making a chocolate by combining with other ingredients a dehydrated composition from its plant-based milk (at [0076]) that is made by a method comprising adding alpha-amylase (claim 3) and enzyme treating the plant protein mixture and drying it to form a “dry plant-based composition”. At Table 10, Earl discloses the other ingredients as comprising sugar, cocoa mass and cocoa butter to form a milk chocolate (“chocolate product”). The Office considers the claimed drying the plant-based liquid to include the Example V method of Earl that discloses drying the plant-based liquid to form a dry plant-based composition.
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. However, at [0063] Earl 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 or milk before drying to prepare it as a dehydrated plant-based milk for later use or sale for use in making its chocolate product because Earl discloses that applying a thermal treatment is desirably used to make a plant milk powder or dry plant-based composition suitable for use in making its chocolate composition.
Regarding instant claim 4, Earl at [0047] discloses adding sugar as a sweetener to its plant based liquid 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 as fat sources.
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], Table 10 and [0076] 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; adding an enzyme and enzyme treatment; dispersing a fat source in the plant protein mixture; homogenizing the plant protein mixture; applying a thermal treatment to form a plant-based liquid; 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 to its plant protein mixture 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 form 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, including dietary fiber, 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki H 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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/ANDREW E MERRIAM/Examiner, Art Unit 1791
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