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 II, claims 5-12, in the reply filed on Dec. 17, 2025 is acknowledged.
Claims 1-4 and 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim.
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 5-12 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.
Regarding claim 5, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 10 is indefinite as it recites “the at least one amino acid is glucose, glycine, leucine, phenylalanine, and proline…”. However, it is unclear exactly how many amino acids are present as the claim says “the at least one amino acid is”. Therefore, it is not clear if all the amino acids claimed are required, or if the language is intended to recite “the at least one amino acid is selected from…”.
Additionally, glucose is not an amino acid and therefore it is not clear why glucose is included in the list of amino acids.
Claim 11 is indefinite for similar reasons as claim 10. It is not clear if the amino acid comprises all the claimed amino acids, or just one of the claimed amino acids.
Claims 6-9 and 12 are included as they depend from claim 5.
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 5-12 are rejected under 35 U.S.C. 103 as being unpatentable over Shi et al. (US 2019/0343155 A1; Nov. 14, 2019) in view of Krizhanovskij et al. (SU 1003769 A1; March 15, 1983).
Regarding claim 5, Shi discloses a method of preparing a sweetener and flavor composition, wherein the flavor composition can be a chocolate or cocoa flavor ([0034], [0389], [0527], [0713], [1972], [4320]), the method comprising providing at least one plant material (e.g. a plant extract: [0005], [0339], [0358]), at least one amino acid, and at least one saccharide ([0009]-[0010], [0401], [0458]) in an aqueous medium ([0389]), heating the aqueous mixture ([0024]), and drying the heated mixture to obtain the flavor composition ([0756]).
The examiner notes that the rinsing and grinding steps are optional and therefore not required.
Shi teaches that grape seeds, which is a plant material, can be added before the heating step ([0715], [0770], [0834], [0835]). Shi teaches that grape seeds add flavor and provide antioxidant properties. Therefore, it would have been obvious to one of ordinary skill in the art to add grape seeds to the reaction mixture before heating depending on the desired flavor and properties of the flavor composition.
Shi teaches that the at least one amino acid can be can be alanine, phenylalanine, glycine, isoleucine, lysine, leucine, proline, serine, threonine, valine, or tyrosine ([0458]).
Shi teaches that the at least one saccharide can be glucose, fructose, xylose, rhamnose, sucrose, maltose, lactose, or isomaltulose ([0401]).
Shi teaches that the flavor composition does not have to include cocoa or cocoa-derived solids, as the flavor composition comprises a plant material, amino acids, and a saccharide and can be a cocoa substitute ([0034], [0389], [0527], [0713], [1972], [4320]). Therefore, Shi teaches that flavor composition is at least 95% free of cocoa or cocoa-derived solids.
While Shi teaches method as described above, Shi fails to further teach step (e) subjecting the dried mixture to a heat treatment.
Krizhanovskij discloses a method of producing a cocoa substitute from grape seeds, wherein the grape seeds are crushed, dried, cooled, and further dried by roasting in order to obtain the characteristics of cocoa products (Derwent Abstract).
It would have been obvious to further subject the dried mixture of Shi to a heat treatment as Krizhanovskij teaches that a roasting step on a dried mixture comprising the grape seed material brings out the characteristics of cocoa products (Derwent Abstract). Therefore, heating the dried mixed of Shi comprising the grape seeds would further bring out desired cocoa characteristics in order to provide a suitable chocolate or cocoa flavor composition.
Regarding claim 6, Shi teaches that the at least one amino acid can be phenylalanine, glycine, isoleucine, lysine, leucine, proline, serine, threonine, or valine ([0458]).
Shi additionally teaches that the at least one saccharide can be glucose, fructose, xylose, or rhamnose ([0401]).
Regarding claim 7, as stated above, Krizhanovskij teaches the use of grape seeds and further teaches that the grape seed material comprises a press cake (Derwent Abstract).
It would have been obvious to one of ordinary skill in the art have the grape seeds of Shi comprise a press cake as taught by Krizhanovskij as Krizhanovskij teaches that grape seed press cake is suitable for heating and roasting in order to provide a composition having cocoa characteristics.
Regarding claim 8, Shi teaches that the heating in step (b) comprises heating the aqueous mixture to a temperature from 50-200 C, thus overlapping the claimed ranges of 60-100 or 80-95 ([1374]).
Shi teaches that the heating is performed for a time of 10 minutes to 48 hours, thus overlapping the claimed ranges of at least 5 min, or at least 10 min, or at least 10 min to 180 min ([1375]).
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)
Regarding claim 9, as stated above, Krizhanovskij teaches a heat treatment step (e), which comprises roasting at a temperature of 140-150 C (Derwent Abstract), thus falling within the claimed range of 120-220 C or 130-210 C.
With respect to the time for roasting, Krizhanovskij fails to teach a specific time, however, it would have been obvious to one of ordinary skill in the art to determine the optimum time for roasting depending on the desired taste and characteristics. Krizhanovskij teaches that the roasting provides the grape seeds with a more cocoa characteristic and therefore it is well within the ordinary skill to vary the time for roasting depending on the desired characteristics of the product. This is merely routine experimentation that is well within the ordinary skill in the art.
Regarding claim 10, as stated above, Shi teach that the plant material comprises grape seeds.
Shi also teaches that the at least one amino acid can be phenylalanine, glycine, leucine, and proline ([0458], [1559]).
Shi additionally teaches that the at least one saccharide can be glucose ([0401]).
It would have been obvious to select the specifically claimed amino acids and saccharide as the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07)
Further, it would have been obvious to use more than one amino acids as Shi teaches that more than one can be used. As stated in MPEP 2144.06 ““It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.)”
Regarding claim 11, as stated above Shi teaches that the plant material comprises grape seeds.
Shi further teaches that the reaction mixture can include additives added before the heating step ([0070]), wherein the additives can include oats and barley ([0835], [0878], [0900]).
Therefore, it would have been obvious to one of ordinary skill in the art to add oats and barley to the reaction mixture comprising grape seed depending on the desired benefits provided by the oats and barley as Shi teaches that they are sources of fiber, antioxidants, and prebiotics ([0835], [0878], [0900]).
Shi further teaches that the at least one amino acid can be phenylalanine, glycine, isoleucine, proline and leucine ([0458]).
Shi additionally teaches that the at least one saccharide can be glucose ([0401]).
It would have been obvious to select the specifically claimed amino acids and saccharide as the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07)
Further, it would have been obvious to use more than one amino acids as Shi teaches that more than one can be used. As stated in MPEP 2144.06 ““It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.)”
Therefore, the prior art renders obvious the composition of (ii), (iii), and (vi).
Regarding claim 12, Shi teaches that the flavor composition does not have to include cocoa or cocoa-derived solids, as the flavor composition comprises a plant material, amino acids, and a saccharide and can be a cocoa substitute ([0034], [0389], [0527], [0713], [1972], [4320]). Therefore, Shi teaches that flavor composition is at least 99% free of cocoa or cocoa-derived solids.
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 5, 6 and 8-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12, 14, 16 and 19-22 of copending Application No. 18/579,268 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
The instant application recites a method of preparing a cocoa or chocolate flavor composition comprising reacting a plant material that is grape seeds, an amino acid and a saccharide. Parent application 18/579,268 recites reacting a plant material, where the plant materials recited include grape seed, with an amino acid, a saccharide, or a combination thereof. Therefore, it would have been obvious to have reacted the grape seed plant material with an amino acid and a saccharide based on the claims in the parent application. Additionally, dependent claims in both applications recite the same amino acids and saccharides, as well as the same conditions for heating and roasting.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki 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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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791