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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in EP on 12/22/2023. It is noted, however, that applicant has not filed a certified copy of the EP23219964.6 application as required by 37 CFR 1.55.
Election/Restrictions
Claims 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 12/18/2025.
Applicant’s election without traverse of claims 1-15 in the reply filed on 12/18/2025 is acknowledged.
Drawings
The drawings are objected to because the y-axis in Fig. 3 does not have a label. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-15 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.
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 1 recites the broad recitation of “roasting the dry intermediate product at a temperature of at least 80°C”, and the claim also recites “preferably 110-180°C” which is the narrower statement of the range/limitation.
Claim 4 recites the broad recitation of “the ground material is one or more selected from the group consisting of: oats flour, sunflower meal, buckwheat flour, fava bean flour, cocoa bean powder, grape seed flour, cassava root flour, coffee grounds, carob powder, and corn flour”, and the claim also recites ‘preferably one or more selected from the group consisting of: oats flour, sunflower meal, buckwheat flour, cocoa bean powder, grape seed flour, cassava root flour, coffee grounds, carob powder, and corn flour” 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.
Claims 2, 3 and 5-15 are included in the rejection as they depend from a rejected base claim.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-14 is/are rejected under 35 U.S.C. 103 as being obvious over Marquart et al (WO 2023/285547 A1).
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
In regard to claim 1, Marquart et al discloses a flavor composition that “could be adjusted, mimicking flavor profiles of different cocoa types, e.g. so-called Forastero cocoa (Theobroma cacao IFC-1 ), and/or the flavor profiles of chocolates, including dairy-like and buttery aroma notes, usually not found in cocoa” (page 2 paragraph 4).
Marquart et al discloses a flavor composition comprises “at least one plant material selected from the group consisting of apricot kernels, plum kernels, peach kernels, cherry kernels, almond, jackfruit seeds, grape seeds, carob, beans, cereals, pseudo-cereals, non-cereal grains, potato, pomace, cassava root, yeast, and combinations thereof, wherein the at least one plant material has been heat-treated in the presence of at least one amino acid and/or amino acid derivative, at least one saccharide, or a combination thereof” (page 2 paragraph 6).
More specifically in regard to the method for the production of the cocoa or chocolate flavor composition, Marquart et al discloses:
(a) providing a mixture of
(i) at least one plant material, and
(ii) at least one amino acid and/or amino acid derivative, at least one saccharide, or a combination thereof, in an aqueous medium, wherein the at least one plant material is selected from the group consisting of apricot kernels, plum kernels, peach kernels, cherry kernels, almond, jackfruit seeds, grape seeds, carob, beans, cereals, pseudo-cereals, non-cereal grains, potato, pomace, cassava root, yeast, and combinations thereof;
(b) heating the aqueous mixture of step (a);
(c) drying the heated mixture of step (b);
(d) optionally rinsing the dried mixture obtained in step (c);
(e) subjecting the dried mixture to a heat treatment;
(f) optionally grinding and/or defatting the heat-treated dried mixture of step (e); and
(g) obtaining the flavor composition (page 3).
In regard to the recitation of the ground plant material, Marquart et al discloses press cakes (page 5 paragraph 5). Marquart et al discloses “[a]s used herein, the term “press cake” refers to the residue of the oil production, of oleaginous plant materials (e.g. seeds, or fruits), such as olives, apricot kernels, canola, linseed, sunflower, etc. The residue is derived from pressing or milling the plant materials, to recover the oil for further applications (food, cosmetics, and the like)” (page 5 bottom paragraph, page 6 top paragraph). Therefore by disclosing press cake that has been obtained by pressing or milling, Marquart et al discloses ground material.
In regard to the recitation of “applying vacuum 500 mbar or less at a temperature of 60-90°C” in claim 1, Marquart et al discloses drying under reduced pressure (page 7 paragraph 8).
Further in regard to the recitations of drying and roasting, Marquart et al discloses:
In one embodiment, the at least one plant material has been heat-treated by steeping, cooking, thermally drying, microwave irradiation, roasting, toasting, or a combination thereof.
In one embodiment, the at least one plant material has been heat-treated at a temperature from 100°C to 200°C for 2 min to 60 min. Preferably, the at least one plant material has been heat- treated at a temperature from 110°C to 180°C for 2 min to 45 min. More preferably, the at least one plant material has been heat-treated at a temperature from 120°C to 160°C for 5 min to 45 min (page 11 paragraph 7-8).
In one embodiment, the heat treatment in step (e) comprises roasting the dried mixture at a temperature of from 120°C to 220°C, preferably at a temperature of from 130°C to 210°C, for at least 2 min, preferably for at least 4 min such as from 4 min to 60 min (page 12 paragraph 4).
In regard to the specific amino acids, Marquart et al discloses “amino acid is selected from the group consisting of alanine, phenylalanine, glycine, isoleucine, lysine, leucine, proline, serine, threonine, valine, tyrosine, ornithine, and combinations thereof” (page 9 paragraph 5).
In regard to the amount of amino acid, Marquart et al discloses from 0 wt. % to 5wt. % of amino acids based on the total weight of plant material (page 12 bottom paragraph).
In regard to the amount of reducing sugar, Marquart et al discloses 0 wt. % to 10 wt. % of saccharide based on the total weight of plant material (page 13 top paragraph).
Further in regard to the relative concentration of water, amino acid, reducing sugar and plant material, Marquart et al provides the following examples:
100 g of the pre-treated apricot kernels were placed in a beaker, and 100 mL water, 5 g glucose, 0.75 g leucine, 0.75 g isoleucine, 0.5 g phenylalanine, and 1 g glycine were added. For incubation, the mixture was heated to 90°C on a hot plate while stirring and kept at that temperature for 15 min. The mixture was then placed in an electric oven at 90°C for 12 hours to dry. The apricot kernels were roasted in a drum roaster for 6.5 min at 170°C. The flavor was intensely cocoa- and chocolatelike, with subtle notes of sweet and roasted aroma.
100 g of untreated, hulless oat ( Avena nuda ) grains were placed in a beaker, and 100 mL water, 5 g glucose, 0.75 g leucine, 0.75 g isoleucine, 0.5 g phenylalanine, and 1 g glycine were added. For incubation, the mixture was heated to 90°C on a hot plate while stirring and kept at that temperature for 15 min. The mixture was then placed in an electric oven at 90°C for 12 hours to dry. After the same drying, the mixture was roasted in a drum roaster for 6.5 min at 170°C. The grains’ flavor was intensely cocoa- and chocolate-like, with subtle notes of cereal and roasted aroma. After roasting and grinding, the roasted apricot kernels and hulless oats were mixed 70/30 (w/w) and ground using a ball mill to a particle size D50 of about 600 pm. The obtained flavor composition can then be applied as a cocoa powder substitute (Example 1 on page 17).
The ranges of plant material, amino acid and reducing sugars overlap the claimed ranges. One of ordinary skill in the art would have been motivated to vary the amount of water added to the plant material based on the initial water content of the plant material, level of the final moisture content of the flavor composition and specific drying methods and conditions.
Marquart et al is silent as to the ranges of vacuum in the disclosed drying under reduced pressure (page 7 paragraph 8). One of ordinary skill in the art would have been motivated to vary the level of vacuum during drying based on the desired flavor profile of the final composition and desired temperatures involved in such drying.
Further in regard to the concentration and temperature recitations, it is noted that:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235(CCPA 1955) (MPEP 2144.05, II A).
Further, regarding the concentration and temperature ranges as examined above, it is noted that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
In regard to claim 2, Marquart et al discloses incubation of the raw material at 90C for 15 minutes (page 17 paragraph 2).
In regard to claim 3, Marquart et al discloses providing ground material, providing water; and providing the amino acids and reducing sugar (Example 1 on page 17).
In regard to claims 4-6, Marquart et al discloses:
In one embodiment, the at least one plant material comprises seeds derived from fruits of the Amygdaloideae subfamily, and preferably apricot kernels, plum kernels, peach kernels, cherry kernels, and combinations thereof.
In one embodiment, the at least one plant material is selected from the group consisting of apricot kernels, plum kernels, peach kernels, cherry kernels, almond, jackfruit seeds, grape seeds, carob, beans, cereals, pseudo-cereals, non-cereal grains, potato, pomace, cassava root, yeast, and combinations thereof. In one embodiment, the at least one plant material is selected from the group consisting of apricot kernels, plum kernels, peach kernels, cherry kernels, jackfruit seeds, grape seeds, carob, and barley malt, oats, beans, and combinations thereof. Preferred plant materials and combinations thereof include
(i) apricot kernels and oats
(ii) apricot kernels, oats, grape seeds, and sprouted barley
(iii) buckwheat
(iv) fava bean
(v) apricot kernels, oats, grape seeds, and sprouted barley
(vi) carob, sprouted barley, and oats
(vii) apricot kernels, grape seeds and oats
Exemplary grain, cereals, and pseudo cereals include corn, maize, oat, barley, rye, wheat, millet, sorghum, rice, quinoa, amaranth, buckwheat, and the like.
Exemplary beans include fava beans.
(pages 8-9).
In regard to claims 7, Marquart et al discloses press cakes (page 5 paragraph 5). Marquart et al discloses “[a]s used herein, the term “press cake” refers to the residue of the oil production, of oleaginous plant materials (e.g. seeds, or fruits), such as olives, apricot kernels, canola, linseed, sunflower, etc. The residue is derived from pressing or milling the plant materials, to recover the oil for further applications (food, cosmetics, and the like)” (page 5 bottom paragraph, page 6 top paragraph).
In regard to claims 8, Marquart et al discloses “at least one amino acid derivative is selected from the group consisting of acetylated alanine, acetylated phenylalanine, acetylated glycine, acetylated isoleucine, acetylated lysine, acetylated leucine, acetylated proline, acetylated serine, acetylated threonine, acetylated valine, acetylated tyrosine, acetylated ornithine, and combinations thereof” (claim 4).
In regard to claims 9-10, Marquart et al discloses “saccharide is selected from monosaccharides, disaccharides, and combinations thereof”, “the monosaccharide is selected from the group consisting of glucose, fructose, xylose, rhamnose, and combinations thereof”, “the disaccharide is selected from the group consisting of sucrose, maltose, lactose, and combinations thereof. Preferably, the disaccharide is selected from the group consisting of lactose, sucrose, and combinations thereof” (page 10 paragraphs 1-3).
In regard to the recitation of the depleting of at least one undesired flavor compound in claim 11 and a moisture content in claim 12, it is noted that although the reference does not specifically disclose every possible quantification or characteristic of its product, these characteristics would have been expected to be as claimed absent any clear and convincing evidence and/or arguments to the contrary. The reference discloses the same starting materials and methods as instantly (both broadly and more specifically) claimed, and thus one of ordinary skill in the art would recognize that depleting of at least one undesired flavor compound and the final moisture content among many other characteristics of the product obtained by referenced method, would have been an inherent result of the process disclosed therein. The Patent Office does not possess the facilities to make and test the referenced method and product obtain by such method, and as reasonable reading of the teachings of the reference has been applied to establish the case of obviousness, the burden thus shifts to applicant to demonstrate otherwise.
In regard to claim 12, Marquart et al discloses that the flavor composition was dried and ground using a ball mill to a particle size D50 of about 600 pm (Example 1). It appears that such dried and ground flavor material has a moisture content within a claimed range.
In regard to claim 13, Marquart et al discloses adding cocoa butter equivalent (commercially available, derived from AAK based on palm fat, and shea butter) to the flavor composition (Example 9 on page 20).
In regard to claim 14, Marquart et al discloses “the flavor composition is substantially free of cocoa or cocoa-derived solids” (claim 20). It is noted that that the instant specification provides explanation of the “the flavor composition is substantially free of cocoa or cocoa-derived solids” in paragraph [0128] of PGPUB US 20250386842 A1.
Claims 15 is/are rejected under 35 U.S.C. 103 as being obvious over Marquart et al (WO 2023/285547 A1) in view of Seltzer et al (US 2927860 A).
Marquart et al does not discloses fractionating and/or isolating at least one flavor compound from exhaust air during application of vacuum. Seltzer et al discloses”[i]t has been discovered that by carrying out the separation of the aroma from the tea extract under vacuum thereby effecting such evaporation at relatively low temperatures and then concentrating the distillate or condensate under atmospheric pressure, losses of aromatic materials may be greatly reduced while the flavor of the finished product remains substantially unimpaired” (page 1 col. 1 lines 43-49).
Seltzer et al discloses:
In the method of making a tea product from an aqueous extract of tea leaves said extract containing at least about 3% by weight of dissolved tea solids by removing water from said extract, the improvement which comprises continuously distilling from said extract about 5 to 30% thereof as a dilute aroma in an evaporator under a vacuum such that the temperature of evaporation is not greater than about 150° F so that the quality of the tea flavor is preserved substantially unchanged, continuously withdrawing the remaining 70 to 95% of extract from said evaporator as dearomatized extract and removing more water therefrom to produce concentrated extract, condensing the dilute aroma vapors and continuously feeding the dilute aroma to an aroma fractionating column at an intermediate point, fractionating said aroma in said column at a pressure at least as high as about atmospheric pressure while supplying heat to the base of the column sufficient to strip aroma from fluid flowing down the column and force it out the top of the column as vapor, condensing said vapor and returning the major portion thereof to the top of the fractionating column as reflux so as to maintain a high concentration of aroma in the condensate, and removing a minor portion of said condensate as concentrated aroma and combining said concentrated aroma with said concentrated extract (Claim 1).
One of ordinary skill in the art would have been motivated to modify Marquart et al in view of Seltzer et al and to employ fractionating of the desired flavor fraction in order to obtain cocoa/chocolate flavor substitute concentrate.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Tenney et al (WO 2023288050 A2) discloses preparation of chocolate replicas.
JP 2004514453 A discloses preparation of chocolate crumb.
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/VERA STULII/Primary Examiner, Art Unit 1791