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 1-13 in the reply filed on August 7, 2026 is acknowledged.
Claims 14-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 7, 2026.
Claim Status
The status of the claims upon entry of the present amendments stands as follows:
Pending claims:
1-15
Withdrawn claims:
14-15
Claims currently under consideration:
1-13
Currently rejected claims:
1-13
Allowed claims:
None
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1, 10, and 13 are objected to because of the following informalities:
Claim 1, amend “fibre” to “fiber” to align with U.S. spelling;
Claim 10, delete “comprising” at the start of line 3; and
Claim 13, amend “compound” to “a compound chocolate”.
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, 10, and 12 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 a Markush group for the polyol product. MPEP §2117(I) states “Claim language defined by a Markush grouping requires selection from a closed group ‘consisting of’ the alternative members.” However, claim 2 uses the language “comprising” prior to the Markush group. As such, claim 2 is rejected because the scope of the claim cannot be appraised due to use of an open-ended phrase for the Markush grouping. For the purposes of examination, it is presumed that claim 2 recites “the group consisting of” rather than “the group comprising”.
Claim 10 recites the limitation “a milk product”. It is unclear if the milk product of claim 10 is referring the milk product introduced in claim 1 or if it refers to a different milk product. For the purposes of examination, it is presumed that claim 10 recites “the milk product”.
Claim 12 recites the limitation “wherein the amount of carbohydrate mixture in the milk product and the amount of milk product in the chocolate product are selected so that the carbohydrate mixture is present in an amount of between 0.45wt% and 35wt% of the chocolate product”. However, based on the ranges of carbohydrate in the milk product and the amount of milk product in the chocolate recited by claim 12, the maximum amount of carbohydrate product in the chocolate product is 22.5wt%, which is under the upper limit. For the purpose of examination, it is presumed that the upper limit of carbohydrate product in the chocolate product is 22.5wt%.
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 12 recites the broad recitation “galactooligosaccharides in an amount of 10-100wt%, and the claim also recites “preferably 10-80wt%” 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. For the purposes of examination, the broader recitation will be used.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 12 recites the limitation “wherein the amount of carbohydrate mixture in the milk product and the amount of milk product in the chocolate product are selected so that the carbohydrate mixture is present in an amount of between 0.45wt% and 35wt% of the chocolate product”. However, based on the ranges of carbohydrate in the milk product and the amount of milk product in the chocolate recited by claim 1, the maximum amount of carbohydrate product in the chocolate product is 22.5wt%, which is under the upper limit recited by claim 12. Thus, claim 12 fails to incorporate the limitations of claim 1. For the purpose of examination, it is presumed that the upper limit of carbohydrate product in the chocolate product is 22.5wt%.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Liang (WO 2021/018700)(IDS Reference filed 09/03/2024).
Regarding claim 1, Liang discloses a confectionary product comprising a milk product, wherein the milk product comprises 10wt% to 90wt% of a carbohydrate mixture, where the carbohydrate mixture comprises galactooligosaccharides in an amount of 10-100wt% (claims 1, 8, 9). Liang also teaches that the confectionary, preferably a chocolate, comprises the milk product in an amount of greater than 0wt% and less than 70wt% (p. 7, ¶ 8, bullet 1), which encompasses the claimed range of “0.5wt% to 25wt%”. Liang also discloses that the confectionary material may contain a bulking agent (p. 13, ¶ 10) and the use of polyols, dietary fiber, and combinations thereof in the confectionary as the bulking agent (p. 14, ¶ 3) where the bulking agent is included in an amount between 1.0% and 40% by weight (p. 14, ¶ 6). Thus, one of ordinary skill would recognize that in the case where both polyol and dietary fiber are used as a bulking agent, they can each be included in an amount that overlaps with the claimed ranges of “10wt% to 50wt%” of polyol and “0.5wt% and 50wt%” of fiber.
With respect to the overlapping ranges, MPEP §2144.05 states “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).”
Regarding claim 2, Liang discloses that the polyol can be isomalt, sorbitol maltitol, mannitol, xylitol, erythritol and hydrogenated starch hydrolysates (p. 14, ¶ 3).
Regarding claim 3, Liang also teaches that the confectionary, preferably a chocolate, comprises the milk product in an amount of greater than 0wt% and less than 70wt% (p. 7, ¶ 8, bullet 1), which encompasses the claimed range of “5wt% to 20wt%”.
With respect to the overlapping ranges, MPEP §2144.05 states “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).”
Regarding claim 4, Liang also discloses that the confectionary material may contain a bulking agent (p. 13, ¶ 10) and the use of polyols, dietary fiber, and combinations thereof in the confectionary as the bulking agent (p. 14, ¶ 3) where the bulking agent is included in an amount between 1.0% and 40% by weight (p. 14, ¶ 6). Thus, one of ordinary skill would recognize that in the case where both polyol and dietary fiber are used as a bulking agent, the bulking agent can comprise an amount of polyol that overlaps with the claimed range of “17wt% to 45wt%” of polyol.
With respect to the overlapping ranges, MPEP §2144.05 states “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).”
Regarding claim 5, Liang also discloses that the confectionary comprises lactose in an amount from 0wt% to 15wt% of the total carbohydrates (claim 5), which matches the claimed range.
Regarding claim 6, Liang discloses that the carbohydrate mixture is a composition comprising lactose in an amount of 0-40wt%, glucose in an amount of 0-40wt%, galactose in an amount of 0-40wt%, and galactooligosaccharides in an amount of 10-80wt% (claim 6), which matches the claimed ranges.
Regarding claim 7, Liang discloses that the carbohydrate mixture is a composition comprising lactose in an amount of 3-20wt%, glucose in an amount of 10-30wt%, galactose in an amount of 1-10wt%, and galactooligosaccharides in an amount of 45-70wt% (claim 6), which matches the claimed ranges.
Regarding claim 8, Liang discloses that the confectionary comprises preferably between 0.0wt% and 15.0wt% of sugar (p. 13, ¶ 8), which overlaps with the claimed range of “below 10wt%”.
With respect to the overlapping ranges, MPEP §2144.05 states “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).”
Regarding claim 9, Liang discloses wherein the milk product comprises greater than 20wt% and less than 60wt% of the carbohydrate mixture by weight of the milk product and the remainder of the milk product is non-carbohydrate milk solids (claim 10).
Regarding claim 10, Liang discloses a confectionary product comprising a milk product, wherein the milk product comprises greater than 30wt% and less than 70wt% of a carbohydrate mixture (which matches the claimed range of “30wt% and 70wt%”; p. 7, ¶ 6-7), where the carbohydrate mixture comprises galactooligosaccharides in an amount of 20-80wt% (which matches the claimed range; p. 6, ¶ 1). Liang also teaches that the confectionary comprises the milk product in an amount of greater than 5wt% and less than 40wt% (which overlaps with the claimed range of “between 5wt% and 20wt%”; p. 7, ¶ 4-5).
With respect to the overlapping ranges, MPEP §2144.05 states “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).”
Regarding claim 11, Liang discloses that the polyol can be maltitol (p. 14, ¶ 3).
Regarding claim 12, Liang discloses a confectionary product comprising a milk product, wherein the milk product comprises 10wt% to 90wt% of a carbohydrate mixture, where the carbohydrate mixture comprises galactooligosaccharides in an amount of 10-100wt% (claims 1, 8, 9). Liang also teaches that the confectionary, preferably a chocolate, comprises the milk product in an amount of greater than 0wt% and less than 70wt% (p. 7, ¶ 8, bullet 1), which encompasses the claimed range of “0.5wt% to 25wt%”. Liang also discloses that the carbohydrate mixture is present in the confectionary in an amount of greater than 0wt% and less than 35wt% (claim 1), which overlaps with the claimed range of “between 0.45wt% and 35wt%”.
With respect to the overlapping ranges, MPEP §2144.05 states “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).”
Regarding claim 13, Liang discloses that the confectionary may be a milk chocolate or a white chocolate (claim 12).
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 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/843,362 (reference application, hereinafter ‘362). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Regarding claim 1, claim 1 of ‘362 recites a similar chocolate product comprising a milk product, wherein the milk product comprises between 10wt% and 90wt% of a carbohydrate mixture, the carbohydrate mixture comprises between 10wt% and 100wt% galactooligosaccharides, and the chocolate product comprises a polyol. Although the composition of ‘362 comprises different amounts of milk product and polyol in the chocolate product, the ranges of instant claim 1 and claim 1 of ‘362 overlap. Additionally, although claim 1 of ‘362 does not comprise fiber, it would have been obvious to include fiber in the product of ‘362.
Regarding claim 2, claim 2 of ‘362 recites the same polyols of the instant claimed invention.
Regarding claim 3, claim 3 of ‘362 recites an overlapping amount of milk product in the instant chocolate product.
Regarding claim 4, claim 4 of ‘362 recites an overlapping amount of polyol in the instant chocolate product.
Regarding claim 5, claim 5 of ‘362 recites the same amount of lactose as the instant claim 5.
Regarding claim 6, claim 6 of ‘362 recites the same amounts of carbohydrates as the instant claim 6.
Regarding claim 7, claim 7 of ‘362 recites the same amount of carbohydrates as the instant claim 7.
Regarding claim 8, claim 8 of ‘362 recites the same total sugar content as instant claim 8.
Regarding claim 9, claim 9 of ‘362 recites the same amount of carbohydrate in the milk product and the same amount of non-carbohydrate milk products as instant claim 9.
Regarding claim 10, claim 10 of ‘362 recites the same amount of carbohydrate mixture in the milk product and an overlapping amount of milk product in the chocolate product as instant claim 10.
Regarding claim 11, claim 11 of ‘362 is the same as instant claim 11.
Regarding claim 12, claim 12 of ‘362 recites the same or overlapping amount of products as recited in instant claim 12.
Regarding claim 13, claim 13 of ‘362 is the same as instant claim 13.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/A.S.H./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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