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 .
Claims 1-27 of 7/23/2025 are listed in this application and subject to restriction requirement.
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
This application contains claims directed to the following patentably distinct species of
“wt.% of the solid substrate”
A). Claim 2 which requires “about 0.5 wt.% to about 30 wt.%” of the solid substrate
B). Claim 3 which requires “about 30 wt.% to about 50 wt.%” of the solid substrate
C). Claim 4 which requires “about 50 wt.% to about 70 wt.%” of the solid substrate
The above identified species are independent or distinct because the claims to different species recite mutually exclusive characteristics of such species. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species (single from each of the 2 sub-groups identified above), for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, claims 1 is generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply:
a). the species or groupings of patentably distinct species require a different field of search (e.g. searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
During a telephone conversation with Ms. Alicia Dickey (Registration # 77647) on January 5, 2026 a provisional election was made to prosecute the invention of species A, claim 2. Affirmation of this election must be made by applicant in replying to this Office action. Claims 3-4 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election. Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which are written in dependent form or otherwise require all the limitations of an allowed generic claim.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim status after election on the phone:
Applicant’s election without traverse of species of claim 2 in the telephonic reply of 1/5/2026 resulted in withdrawal of claims 3-4. Claims 1-2, 5-27 are examined in this application.
IDS statements of 9/25/2025 has been considered and the NPL as well as Foreign references where the copy is provided in the parent applications as pointed by the applicant has also been noted.
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 1-2 , 7-15, 18-23 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (CN-105995111-A), hereinafter Wang, in view of Kawasaki (JP-2006121958-A), hereinafter Kawasaki, Nakel (US 3619210), hereinafter Nakel. Further evidenced by NPL references to Rodriguez et al., hereinafter NPL1 and Tuenter et al., hereinafter NPL 2.
All references to text of Wang and Kawasaki references is to the text of full English translation of these references that have been provided to the applicant in parent application 17/865729 with the office action dated 1/9/2023.
Claims in general are directed to “A chocolate replica comprising:
a plant-based solid substrate” present in an amount of “about 0.5wt.% to about 99.9 wt.% of chocolate replica” and one or more of isolated volatile organic compounds (VOCs) and isolated non-volatile organic compounds (VOCs), Wang teaches a chocolate replica (such as “Cocoa butter substitute pet chocolate” described in para 7) comprising: a plant-based solid substrate (comprising at least “vegetable matter powder, corn starch” described in para 14 and “soybean lecithin” in para 15), wherein (as recited in claim 1) the plant-based solid substrate does not contain cocoa solids (para 8). Wang does not specifically teach identifiable volatile organic compounds like acetoin, but chocolates and cocoa replacers do contain volatile and non-volatile compounds and since the claim does not require the VOC s and Non-VOCs to be isolated, they can be part of the foods. Further identification and isolation of chocolate or cocoa compounds was known in the art before the effective filing date of the invention as taught by NPL 1 and NPL2, and wherein the one or more VOCs can comprise at least valeric acid, benzyl alcohol and that, wherein (as recited in claim 1) is at least “2,3,5-trimethylpyrazine”. NPL 2 also identifies volatile and non-volatile components separately. Several volatile and non-volatile compounds present in chocolates were known and were well recognized for providing cocoa like aroma, as evidenced by NPL1 and NPL 2. Kawasaki also teaches known fragrance composition having cocoa or chocolate flavor (para 3 best mode) and compounds taught by Kawasaki include one or more of compounds ( geraniol, para 8; acetoin and 2, 3, pentadione in para 11, Propionic acid and valeric acid in para 12 of machine translation). Kawasaki also teaches of some non-volatile chocolate flavor compounds including dihydroxy benzoic acid, 4-hydroxy-3 methoxycinnamic acid in para 12 and 2, 3 dimethyl pyrazine , trimethyl pyrazine and tetramethyl pyrazine in para 15 of machine translation). All above mentioned compounds taught by Kawasaki are also known to have cocoa-like flavor (para 6, 7-17). Also see para 6-17 for additional chocolate flavor compounds.
Other prior art to Nakel teaches that alkyl pyrazines with 1 to 4 alkyl groups are known flavor providers (Col. 1, lines 20-40) and that they are known to be added as flavor additives for flavors such as cocoa butter and cocoa beans (Col. 1, lines 50-72). Thus the claimed compounds were known before the effective filing date of the invention for their individual as well as combined cocoa flavor imparting and enhancing properties. Since prior art to wang teaches cocoa substitute based on vegetable powder and other ingredients, therefore, in view of the abundance of art identifying cocoa / chocolate flavoring compounds, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to include the above identified flavor imparting compounds. The ordinary artisan would have been motivated to modify Wang for at least for the purpose of using known additives that are known substitutes for cocoa type flavors to help make a product that is either devoid of cocoa or uses cocoa in smaller quantities (such as Wang’s “cocoa butter substituted” product), have a desirable chocolate or cocoa aroma and flavor.
Regarding claims 1-2, Wang teaches a chocolate replica of claim 1, wherein the plant-based solid substrate was derived from oil plant based product seed (such as “carob” bean powder or “corn” powder or “soybean”, or “cocoa butter” which are recited in claim 1– see para 8-10 of Wang). Further, Wang discloses “vegetable powder” in general (para 8), thus suggesting that any or multiple vegetables or seed sources may be suitable for use, and includes maize/ corn and soybean both are recited in claim 1.
Based at least on the teaching of Wang to include vegetable seeds based solid material, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Wang and utilize a desired combination of vegetable and oil seeds as part of plant based solids component of chocolate substitute components, in addition to of a specific desired flavor or a specific fiber content or other desirable nutritive value, such as grape seeds or castor seeds. The ordinary artisan would have been motivated to modify Wang for at least for the purpose of using a specific vegetable seed or oilseed based on its cost, availability and /or nutritive value in the finished chocolate product, and also based on customer nutritional preference.
Regarding claims 1-2, where relative proportion of each of the compounds is recited. Regarding the proportion of solid substrate from 0.5 to 99% and claim 2 recites 0.5 to 30% applicant is referred to para 8 of Wang where chocolate composition includes solids in the claimed range and para 10 which refers to an exemplary composition where solids carob powder, vegetable powder and corn starch comprise 170 parts from a total of 1000 parts of chocolate, i.e., the plant/ vegetable based solids are about 17% of the chocolate which falls in the claimed range of comprises “about 0.5 wt.% to about 30 wt.%.
Further, Wang teaches that ingredients can vary (see ranges given for para 8) and the product is only claimed as “comprises”; i.e. all the ingredients of final product are not listed, and they all affect the recited wt.% of the solid substrate. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the plant based solids from the desired source in an amount desired. The ordinary artisan would have been motivated to modify Wang for at least for the purpose of including a specific vegetable seed or oilseed in a desired amount based on its nutritive benefits in the finished chocolate product, and also based on the effect of plant based solids on the organoleptic quality of finished chocolate.
Regarding claim 7 Wang in view of Kawasaki as applied above teaches chocolate replica with the VOC and Non VOC compounds and Wang does not teach the cocoa replacement replica containing cocoa solids.
Regarding claims 8-11 where various compounds are listed and their relative proportion recited but since they all depend directly or indirectly on claim 1, where Kawasaki (para 10-17 of machine translation) teaches known fragrance composition having cocoa or chocolate flavor (para 3 best mode) and compounds taught by Kawasaki include at least the volatile compounds, especially benzaldehyde, hexanal, butyraldehyde, butyric acid, isobutyric acid, valeric acid, butyl acetate, isoamyl acetate and geranyl acetate, as recited in claim 8 and at least 2, 3 pentadione as recited in claim 9. Regarding the non-volatile compounds of claims 10 and 11 Kawasaki teaches vanillin, maltol and cinnamic acid. All above mentioned compounds taught by Kawasaki are also known to have cocoa-like flavor (para 6, 7-17). Also see para 6-17 for additional chocolate flavor compounds. Thus, inclusion of chocolate flavor compounds as recited in claims 8-11 was known in the art before the effective filing date of the invention. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include one additional VOCs and non-VOCs from the claimed list as flavor imparting compounds. The ordinary artisan would have been motivated to modify Wang at least for the purpose of incorporating known cocoa type flavoring compounds to help make a product that is either devoid of cocoa or uses cocoa in smaller quantities (such as Wang’s “cocoa butter substituted” product), have a more pronounced chocolate or cocoa aroma and flavor.
Regarding claims 12-14, Wang teaches vegetable powder, carob meal, lecithin but is silent regarding oil, which is taught by Kawasaki, (Para 21). Examples of Wang and Kawasaki teach the relative amount of chocolate flavor composition including oil. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the oil in the chocolate composition and the type and amount of oil as recited in claims 13 and 14, would have been based on the desired calorie content of the imitation chocolate as desired. The ordinary artisan would have been motivated to modify Wang for at least for the purpose of adding other additives and nutritional additives to the final product.
Regarding claims 15 and 18, Wang teaches carob meal (Para 8, 10) , which is seed meal and claim 18 recites “about 0 to about 30 wt.% seed meal”, i.e., seed meal is not a required ingredient but an optional one.
Regarding claims 19-21, Wang teaches of sugar, para 8 and 10 , which meets the limitation of claim 19 which requires “chocolate replica further comprises a sugar, an amino acid, or a combination thereof”. Claim 20 depends from 19 but sugar/sucrose is listed. And regarding the amount of sugar “about 0 to about 75 wt.% sugar” (Claim 21), Wang para 8 and 10 have sugar amount that falls in the claimed range.
Claims 22-23 lists amino acids but depends from claim 19 where the “chocolate replica further comprises a sugar, an amino acid, or a combination thereof”, thus amino acids as recited are not required for the composition. Further claim 23 recites that “the chocolate replica comprises about 0 to about 3 wt.% of the amino acid”, further confirming that amino acids are not required for the claimed chocolate product.
However, amino acids are essential part of soybean and locust bean meal of Wang (para 8) and arginine, aspartic acid, glutamine, alanine, lysine, isoleucine and valine are part carob powder, thus meeting the claimed requirement.
Regarding claim 27, Wang teaches lecithin (Para 8 and 10)
Claims 5-6, 16-17, and 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over Wang, Kawasaki, Nakel, NPL1 and NPL 2 as applied to 1-2, 8-15, 18-23 and 27, further in view of Rikon et al (WO 8002636), hereinafter Rikon.
Regarding claims 5-6 Wang in view of Kawasaki as applied above teach chocolate replica with the VOC and Non-VOC compounds but the references are silent regarding the chocolate replica containing plant-based solid substrate was derived from a food stream waste product, Rikon teaches seed and nut based meal (Page 14) and also teaches bran based flours, such as wheat, soy, barley and wheat bran (Page 14, last 2 lines and page 15, lines 1-2 and Table 6), wherein bran and its flours are food stream waste products obtained during seed milling, as it is the outermost coating of seeds which in not digestible a waste for flour milling process. Brans fall in the category where food stream waste product from which at least 75% of a starting amount of starch, protein, sugar, fat-soluble components, and flavor has been removed. Therefore, inclusion of food stream waste as claimed was routine in imitation chocolate and cocoa product, and it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include salt based on the general teaching of Rikon from page 2 and specific example on page 14 and 15. The ordinary artisan would have been motivated to modify Wang further and chose to include food stream waste as a part of solid substrate to create an imitation chocolate or chocolate replacer without undue experimentation.
Regarding claims 16-17, Wang in view of Kawasaki as applied above teach chocolate replica with the VOC and Non VOC compounds but the references are silent regarding the chocolate replica containing seed meal as per claims 16 and 17, where “ chocolate replica of claim 15, wherein the seed meal comprises sunflower meal or flour, coconut meal or flour, almond meal or flour, pecan meal or flour, hazelnut meal or flour, walnut meal or flour, pistachio meal or flour, cashew meal or flour, peanut meal or flour, canola meal or flour, safflower meal or flour, palm kernel meal or flour, mango kernel meal or flour, chia meal or flour, pumpkin seed meal or flour, Brazil nut meal or flour, macadamia nut meal or flour, chestnut meal or flour, flax meal or flour, hemp meal or flour, tiger nut meal or flour, or a combination thereof”. Rikon teaches of imitation cocoa powder where seeds and nut based flours are utilized (Page 14, ,lines 11-16) where finely ground nut flours and examples of peanut and walnut flours are taught. The selection of these flours or seed meals are based on the carbohydrate, fiber and protein content they provide (Rikon, page 14, lines 3-5) . Further, Wang as applied above teaches carob meal, which is a seed meal. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the above identified source of seed meal as taught by Rikon. The ordinary artisan would have been motivated to modify Wang for at least for the purpose of adding easily available inexpensive source of seeds that provides carbohydrate, fiber and protein content (Rikon, page 14, lines 3-5). and nutritional additives to the final product.
Rikon does not provide specific example of sunflower seed meal or flour but sunflower seeds are inexpensive source it is well known and easily available seed. Therefore, it would have been a matter of routine determination to change one source of seed meal for another. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to choose a suitable source of seed meal based on the general teaching of Rikon from page 14. The ordinary artisan would have been motivated to modify Wang further and chose a specific seed meal, such as , sunflower meal, at least for the purpose of adding an easily available, inexpensive source of seeds that provides carbohydrate, fiber and protein content (Rikon, page 14, lines 3-5) to the imitation chocolate.
Regarding claims 23-26, Wang in view of Kawasaki as applied above teach chocolate replica with the VOC and Non VOC compounds but the references are silent regarding the chocolate replica containing salt, specially “salt comprises sodium chloride, potassium chloride, magnesium chloride, sea salt, or a combination thereof” (Claim 17) and “the chocolate replica comprises about 0 to about 1.5 wt.% salt “ (claim 18). However, Rikon teaches that chocolate typically includes sugar, salt, lecithin, vanillin (Page 2, lines 10-15) and specifically shows inclusion of salt in imitation cocoa powder or chocolate compositions. See Example 2 on pages 23 where the amount of salt falls in the claimed range. Where salt is being interpreted as table salt, sodium chloride. Therefore, inclusion of salt as claimed was routine in chocolates and cocoa product, and it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include salt based on the general teaching of Rikon from page 2 and specific example on page 23. The ordinary artisan would have been motivated to modify Wang further and chose to include salt as is routinely done in chocolate manufacture.
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 1-2, 5-27 of current application are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11832632. Although the claims at issue are not identical, they are not patentably distinct from each other because both claims recite the limitation of “A chocolate replica comprising:
a plant-based solid substrate,
including isolated volatile organic compounds (VOCs) and including isolated non-volatile organic compounds (VOCs) wherein the list of compounds is substantially the same. Claims of the US patent require 2 or more of the volatile compounds and claims of current application 18/955743 require at least 5 of volatile and at least five non-volatile. Since two or more includes 5 or more, the claimed subject matter overlaps and renders claims of current application to be not patentably distinct from patented claims of U.S. Patent No. 11832632.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JYOTI CHAWLA whose telephone number is (571)272-8212. The examiner can normally be reached M-F 9:30- 5:30.
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/JYOTI CHAWLA/Primary Examiner, Art Unit 1791