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 .
Claim status
Claims 1-5 filed 10/24/2024 are pending in the application and are hereby examined on the merits.
Claim Objections
Claims 3 and 5 are objected to because of the following informalities: “CBE, CBI, CBR, and CBS” in line 4 should be written out with full names for the first occurrence. Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Qiao CN 103478640 A (English translation relied upon for reference, hereinafter referred to as Qiao).
Regarding claim 1, Qiao teaches a processed fat food (e.g., burdock fried food) comprising roasted (e.g., baked) burdock and a cocoa butter alternative (e.g., palm oil) (Abstract; 0010; 0013).
Claims 1, 3 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li CN 104351446 A (cited in the IDS submitted 10/24/2024, English translation relied upon for reference, hereinafter referred to as Li).
Regarding claims 1 and 3-4, Li teaches a method of making a processed fat food (e.g., a burdock chocolate with wheat fragrance) comprising roasting (e.g., baking) burdock followed by mixing the roasted (e.g., baked) burdock with a cocoa butter alternative (e.g., cocoa butter substitute) (Abstract; 0010-0013).
Claim Rejections - 35 USC § 103
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.
Claims 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Li as applied to claim 1 above.
Regarding claims 2 and 5, Li teaches that the burdock chocolate is made by evenly mixing 150-200 parts of cocoa butter substitute, 30- 50 parts of maltodextrin, 4-6 parts of cocoa powder, 10-12 parts of whole milk powder, 30 to 50 parts of maltitol, 100-120 parts of xylitol, 80-100 parts of phospholipid, and 0.75-1 part of vanillin to form a first mixture; evenly mixing 100-120 parts of oats, 20-30 parts of roasted burdock, 10-15 parts of pecans, 10-12 parts of peanuts, and 10- 12 parts of sesame to form a second mixture; and evenly mixing the first mixture and the second mixture at a mass ratio of 1:1 to form the burdock chocolate (0010-0013). Thus the amount of cocoa butter substitute by weight of the burdock chocolate is 150/2x(150 +50 +6 +12 +50 +120 +100 + 1) to 200/2x (200 +30 +4+10 +30 +100 +80 +0.75) which is 15- 22%, and the amount of roasted burdock by weight of the burdock chocolate is 20/2x( 120 + 20 +15 +12 +12) to 30/2x(100 + 30 + 10 +10 +10) which is 5.5-9.5%.
The amount of roasted burdock as disclosed by Li overlaps with the range as recited in claim 2. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Further, it is found that the upper bound of cocoa butter alternative (e.g., 22%) as disclosed by Li is very close to the lower bound (e.g., 25%) as recited in claim 2 that that one skilled in the art would have expected them to have the same properties, given that both Li and the claimed invention are directed to a processed fat food that contains roasted burdock and a cocoa butter alternative. It has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (MPEP 2144.05).
Conclusion
Pertinent art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure
Koichiro JP2014064512 A, which teaches a coffee-like edible and drinkable composition comprising roasted burdock.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANGQING LI whose telephone number is (571)272-2334. The examiner can normally be reached 9:00-5:00.
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/CHANGQING LI/Primary Examiner, Art Unit 1791
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