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
This application, filed on 03/31/2022, claims priority to U.S. Provisional Applications No. 63/168,458 filed on 03/31/2021.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/18/2025 has been entered.
DETAILED ACTION
The Amendments and Applicant’s Arguments submitted on 12/18/2025 have been received and
its contents have been carefully considered.
Claim 1 was amended by incorporating the limitation of claim 5, claim 5 was cancelled, and claims 17-20 were previously cancelled. Claims 1-4 and 6-16 are pending.
Claim interpretation
Examination requires claim terms first be construed in terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim. See MPEP § 2111. Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111.01. It is also appropriate to look to how the claim term is used in the prior art, which includes prior art patents, published applications, trade publications, and dictionaries. MPEP § 2111.01 (III). However, specific embodiments of the specification cannot be imported into the claims, particularly where the subject claim limitation is broader than the embodiment. MPEP § 2111.01(II).
The claims recite “increasing video game performance”. The specification described “video game performance” as accuracy, decision making, reaction time, hand-eye coordination, reducing visual fatigue and/or increasing visual acuity or point scores. [Instant specification, pg. 7, 024-025]. Instant specification also recites "enhancing electronic game play endurance" means preventing or limiting the decline of performance over time” by enhancing mood and decreasing tension, depression, anger, fatigue and/or confusion. [Instant specification, pg. 8, 028-029].
As such video game performance will be interpreted as accuracy, decision making, reaction time, hand-eye coordination, reducing visual fatigue, enhancing mood and decreasing tension, depression, anger, fatigue and confusion.
Response to Arguments
Applicant argue:
“The definition given in the Specification states that video game performance is “assessed by a measure selected from: accuracy, decision making, reaction time, hand-eye coordination, and game performance.” The inclusion of the additional portions of the definition improperly combines the definitions of “enhancing electronic game play endurance” and “mood of a subject during electronic gameplay” with that of “video game performance”. Paragraphs [028] and [029] do not state that endurance and mood are part of the definition of video game performance, but merely that endurance and mood can impact video game performance. Paragraph [028] states that game play endurance refers to the rate at which game play performance degrades over time, with improvements in endurance causing a slowed degradation. Similarly, paragraph [029] only notes that the “mood of a subject during electronic gameplay” can impact game play performance. It is respectfully requested that the definition given in paragraph [024] be taken to be the whole definition.”
Examiner response:
It appears that Applicant requests interpreting the term “increasing video game performance” as recited in [024]. However, neither [024] nor the instant specification provides an actual definition of this term [Pg. 7, [024]]:
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Paragraph [024] stated that “…in certain embodiments, video game performance is assessed by...” Paragraph [024] does not provide a definition, but alternative descriptions of what video game performance may be, as provided in some embodiments of [024], [025], [028] or [029]:
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[Pg. 8, [028]].
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[Pg. 8, [029]].
Similarly, the instant specification does not provide actual definition to the term “enhancing electronic game play endurance", rather the instant specification provides alternative descriptive embodiments, for example: “enhancing electronic game play endurance means preventing or limiting the decline of performance over time or, in certain embodiments, slowing the rate at which performance declines over time. Therefore, Applicant argument is unpersuasive.
Rejection Maintained
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 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.
§ 103 Rejection over Lelah in view of Costentin
Claims 1-4 and 6-16 remain rejected under 35 U.S.C. 103 as being unpatentable over M. Lelah (US PG-PUB 2021/0169891 A1, 06/10/2021, “Lelah” cited in the previous PTO-892 dated 12/20/2023) in view of J. Costentin et al. (US PG-PUB 2009/0325984 A1, 12/21/2009, “Costentin” cited in the previous PTO-892 dated 12/20/2023).
Note: Prior Art of Lelah
Based upon the earlier effectively filed date of the US PG-PUB 2021/0169891 A1 (09/12/2019), it constitutes prior art only under 35 U.S.C. 102(a)(2).
With respect to claims 1-3 and 14-15, Lelah teaches method and compositions for enhancing game play of electronic video games, wherein the compositions provide fast acting, broad spectrum cognitive enhancing formulas for gaming and video game purposes. [Lelah, pg. 1, 0001]. Lelah teaches that caffeine in the composition act as a fast-acting ingredient which increases energy and alertness, however, for enhancing alertness, caffeine is typically used at levels of 200 to 400 mg but this high level of caffeine can cause jitteriness and have unintended side effects that can reduce the positive effects of caffeine. [Lelah, pg. 3, 0029]. Lelah teaches in Example 1 trail 1 test parameters including memory/recall, mental ability speed, screen vision, mechanical reflexes, finger movement, energy level, sleep quality, refreshed, tiredness, overall gaming performance, overall gaming skills, overall gaming scores, and strategic thinking, the players show 21.5% improvement over baseline, 33.3% is the greatest improvement. [Lelah, pg. 5, 0049].
With respect to claims 4 and 6-10, Lelah teaches that the composition for enhancing the performance of video game comprises therapeutically effective amounts of caffeine, L-theanine, a choline bitartrate, an adaptogen, lutein, and zeaxanthin. [Lelah, pg. 2, 0014]. Lelah teaches that the composition improves cognitive function, have fast acting simultaneous positive effects on energy and alertness, brain wave function, vision, brain or nootropic functionality, neurotransmitter enhancement, sleep, calming, blood flow enhancement, hydration and reduced muscle soreness. [Lelah, pg. 2, 0024], wherein the composition having an effect within 30-60 minutes for immediate effect during gaming, and can also be acting within a few days. [Lelah, pg. 2, 0026].
With respect to claims 11 and 16, Lelah teaches that the composition can be consumed for at least 2 weeks and more likely 45-60 days. [Lelah, pg. 3, 0027].
While Lelah teaches that the video game enhancing composition comprising caffeine, Lelah does not teach that composition comprising paraxanthine.
With respect to claim 1, Costentin teaches that caffeine stimulating alertness, concentration, attention and intellectual functions and for the treatment of attention-deficit/hyperactivity disorder. However, Caffeine reputed to induce anxiety states and can sometimes cause panic attacks. Costentin teaches that paraxanthine, in contrast to caffeine, loses its anxiogenic and has anxiolytic activity. [Lelah, pg. 1, 0003-0005].
Costentin teaches the use of paraxanthine for manufacturing of a non-anxiogenic psychoanaleptic drug. [Costentin, Title]. Costentin teaches that psychoanaleptic drug is a pharmacological agent that induces alertness, reduces the desire to doze off and stimulates thought, attention, and intellectual faculties. [Costentin, pg. 1, 0006]. Costentin teaches that non-anxiogenic psychoanaleptic paraxanthine drug increases concentration and stimulates intellectual faculties, and treat attention-deficit/hyperactivity disorder. [Costentin, pg. 2, 0028]. Costentin also teaches that paraxanthine has anxiolytic effects. [Costentin, pg. 2, 0024]
Costentin teaches the use of paraxanthine for treating depression. Fatigue, psychomotor, uncharacterized depressive disorders or dysthymia and sleep disorders, accompanied or not by anxiety. [Costentin, pg. 2, 0027].
Costentin teaches the use of paraxanthine for treating patients who suffer from functional disorders, a disorder associated with psychomotor slowing and fatigue, without causing anxiety, a factor which aggravates these disorders. [Costentin, pg. 2, 0029].
Costentin teaches that the stimulating effects of paraxanthine associated with anxiolytic effects provide paraxanthine with favorable effects on attention and memory and ability to treat cognitive deficits. [Costentin, pg. 2, 0032].
Costentin teaches depression, mood disorder, feeling of intense sadness, pessimistic anxiety and self-depreciation, loss of enthusiasm, loss of energy, fatigue, difficulty experiencing pleasure, and sleep disorders. [Costentin, pg. 1, 0010, pg. 2, 0027].
With respect to claims 1-3 and 14-15 amount of paraxanthine, Costentin teaches pharmaceutical composition comprising paraxanthine in a therapeutically-active quantity, wherein paraxanthine is administered between 0.1 mg and 100 mg per kg of body weight per day, or between 0.5 mg and 20 mg per kg of body weight per day. [Costentin, pg. 3, 0039], wherein paraxanthine dose is predetermined to be therapeutically active. [Costentin, pg. 3, 0041].
Costentin teaches that the paraxanthine pharmaceutical composition contains paraxanthine in a therapeutically-active quantity and another active ingredient such as an antidepressant, an anxiolytic, an antipsychotic, etc. [Costentin, pg. 3, 0040].
With respect to claims 12 and 13, Costentin teaches that paraxanthine can be prepared by chemical synthesis or extracted from plants or other organisms. [Costentin, pg. 2, 0035, 0036].
Costentin teaches that paraxanthine stimulated locomotor activity in a group receiving paraxanthine compared to a group not receiving paraxanthine, [Costentin, pg. 4, 0053, Example 1, Figure 1], and paraxanthine shows anxiolytic affect in a group receiving paraxanthine compared to a group not receiving paraxanthine. [Costentin, pg. 4, 0058, Example 3, Figure 3.].
Therefore, it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of instantly claimed invention to substitute caffeine in Lelah composition with Costentin’s paraxanthine for enhancing video game performance. One of ordinary skill in the art would have been motivated to do so with reasonable expectation of success because Lelah teaches that caffeine can cause jitteriness and have unintended side effects, and Costentin teaches that caffeine reputed to induce anxiety states and can sometimes cause panic attacks, and that paraxanthine has the positive effect of caffeine without the side effects. Moreover, Costentin teaches that paraxanthine stimulates thought, attention and intellectual faculties, increases concentration, stimulates attention and memory, and treat anxiety, fatigue, psychomotor, attention-deficit, cognitive deficits, depression, mood disorder, feeling of intense sadness, loss of enthusiasm, loss of energy, and therefore, one of ordinary skill in the art would have been motivate to substitute caffeine in Lelah composition with paraxanthine for enhancing video game performance, and arrive at each and every limitations of claims 1-20.
Response to argument
Applicant argues:
“Costentin does not discuss impacts on accuracy, decision making, reaction time, or hand-eye coordination, but instead only discusses “concentration, attention and intellectual faculties”. These measures are not the same as those in the present claims, or those that would be understood from Lelah. As such, those skilled in the art would not be motivated to combine Costentin with Lelah. Specifically, concentration and attention are not attributes that would need to be improved to improve video game performance. the common ability for video game players to concentrate on and pay attention to video games while ignoring other responsibilities or obligations has caused the frustration of many parents and teachers. For that reason, the ability for paraxanthine to increase concentration and attention listed in Costentin would not motivate those skilled in the art to combine the paraxanthine of Costentin with the video game formulation of Lelah.” [Remarks, page 3, 2nd and 3rd para.].
Examiner response:
This argument is unpersuasive for the following reasons. First, as provided in MPEP 2145, Rebuttal evidence and arguments can be presented in the specification, In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995), by counsel, In re Chu, 66 F.3d 292, 299, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995), or by way of an affidavit or declaration under 37 CFR 1.132, e.g., Soni, 54 F.3d at 750, 34 USPQ2d at 1687; In re Piasecki, 745 F.2d 1468, 1474, 223 USPQ 785, 789-90 (Fed. Cir. 1984). However, arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Applicant does not provide evidence that a video game player does not need concentration and attention, the instant specification states: “…for gamers to perform at an optimum, numerous acute and chronic aspects of performance must be addressed. Chronic protection of brain health, eye health, or joint health is needed. In order to optimize performance, numerous aspects of physical and mental needs must be addressed simultaneously. Reaction time, concentration, accuracy, attention, memory, energy, hand-eye coordination.” [Pg. 1, [004]]. Second, Costentin teaches that paraxanthine induces alertness, stimulates thought, attention and intellectual faculties, increases concentration and stimulates intellectual faculties. [Pg. 1, [0006] pg. 2, [0028]]. Third, Costentin was brought in to provide motivation to one of ordinary skill in the art to replace Lelah’s caffeine with paraxanthine because Costentin teaches that caffeine is reputed to induce anxiety states and can sometimes cause panic attacks, and that paraxanthine has the positive effect of caffeine without the side effects. Costentin also teaches the attractive properties of paraxanthine including stimulates thought, attention and intellectual faculties, increases concentration, stimulates attention and memory, and treat anxiety and fatigue, which would provide motivation to one of ordinary skill in the art to specifically replace caffeine with paraxanthine for Lelah’s composition and method of enhancing video game performance.
Applicant argues:
This does not, however, indicate that paraxanthine would be valuable in improving video game
performance. [Remarks, Pg. 4, 2nd para.].
Examiner response:
This argument is not persuasive because as provided in MPEP 2143.02, obviousness does not require absolute predictability, but a reasonable expectation of success, and one of ordinary skill in the art have access to Costentin teachings would have reasonable expectation of success that replacing caffeine in Lelah composition with paraxanthine would enhance video game performance. That because Lelah teaches that caffeine can cause jitteriness and have unintended side effects, and Costentin teaches that caffeine reputed to induce anxiety states and can sometimes cause panic attacks, whereas paraxanthine has the positive effect of caffeine without the side effects. Moreover, Costentin teaches that paraxanthine stimulates thought, attention and intellectual faculties, increases concentration, stimulates attention and memory, and treat anxiety, fatigue, psychomotor, attention-deficit, cognitive deficits, depression, mood disorder, feeling of intense sadness, loss of enthusiasm, loss of energy.
The argument with respect to claim 14 appears to be parallel to the claim 1 argument above.
§ 103 Rejection over Costentin in view of Tartar
Claims 1-4 and 6-16 are rejected under 35 U.S.C. 103 as being unpatentable over J. Costentin et al. (US PG PUB 2009/0325984 A1, 12/21/2009, “Costentin” cited in the previous PTO-892 dated 12/20/2023) in view of J. Tartar et al. (Nutrients. 2019 Oct. 1; 11(10):2326, “Tartar” cited in the previous PTO-892 dated 12/20/2023).
Costentin teaches the use of paraxanthine for manufacturing of a non-anxiogenic psychoanaleptic drug. [Costentin, Title]. Costentin teaches that psychoanaleptic drug is a pharmacological agent that induces alertness, reduces the desire to doze off and stimulates thought, attention and intellectual faculties. [Costentin, pg. 1, 0006]. Costentin teaches that non-anxiogenic psychoanaleptic paraxanthine drug increases concentration and stimulates intellectual faculties, and treat attention-deficit/hyperactivity disorder. [Costentin, pg. 2, 0028]. Costentin also teaches that paraxanthine has anxiolytic effects. [Costentin, pg. 2, 0024]. Costentin teaches the use of paraxanthine for treating depression. Fatigue, psychomotor, uncharacterized depressive disorders or dysthymia and sleep disorders, accompanied or not by anxiety. [Costentin, pg. 2, 0027]. Costentin teaches the use of paraxanthine for treating patients who suffer from functional disorders, a disorder associated with psychomotor slowing and fatigue, without causing anxiety, a factor which aggravates these disorders. [Costentin, pg. 2, 0029]. Costentin teaches that the stimulating effects of paraxanthine associated with anxiolytic effects provide paraxanthine with favorable effects on attention and memory and ability to treat cognitive deficits. [Costentin, pg. 2, 0032]. Costentin teaches depression, mood disorder, feeling of intense sadness, pessimistic anxiety and self-depreciation, loss of enthusiasm, loss of energy, fatigue, difficulty experiencing pleasure, and sleep disorders. [Costentin, pg. 1, 0010, pg. 2, 0027].
Costentin teaches pharmaceutical composition comprising paraxanthine in a therapeutically-active quantity, wherein paraxanthine is administered between 0.1 mg and 100 mg per kg of body weight per day, or between 0.5 mg and 20 mg per kg of body weight per day. [Costentin, pg. 3, 0039], wherein paraxanthine dose is predetermined to be therapeutically active. [Costentin, pg. 3, 0041]. Costentin teaches that the paraxanthine pharmaceutical composition contains paraxanthine in a therapeutically-active quantity and another active ingredient such as an antidepressant, an anxiolytic, an antipsychotic, etc. [Costentin, pg. 3, 0040]. Costentin teaches that paraxanthine can be prepared by chemical synthesis or extracted from plants or other organisms. [Costentin, pg. 2, 0035, 0036]. Costentin teaches that paraxanthine stimulated locomotor activity in a group receiving paraxanthine compared to a group not receiving paraxanthine, [Costentin, pg. 4, 0053, Example 1, Figure 1], and paraxanthine shows anxiolytic affect in a group receiving paraxanthine compared to a group not receiving paraxanthine. [Costentin, pg. 4, 0058, Example 3, Figure 3.]. Costentin teaches that paraxanthine stimulates thought, attention and intellectual faculties, increases concentration, stimulates attention and memory, and treat anxiety, fatigue, psychomotor, attention-deficit, cognitive deficits, depression, mood disorder, feeling of intense sadness, loss of enthusiasm, loss of energy. While all these properties of paraxanthine described by instant specification to increase video game performance, Costentin does not specifically teach the use of paraxanthine to increase video game performance.
Tartar teaches an agent, inositol-enhanced arginine silicate, that provides similar effects as paraxanthine, for example offsets muscular fatigue, improves cognitive function, learning and memory, decreases stress and anxiety, and enhances mental focus. Tartar teaches that these enhancements in cognitive function impact video game performance. [Tartar, pg. 2, 4th – 6th para.]. Tartar teaches that the inositol-enhanced arginine silicate effect on cognitive function, anxiety, focus, and fatigue results in improved concentration, decreased reaction time, increased energy levels, enhanced cognitive function, mood states, and mental performance in video gamers. [Tartar, pg. 3, 3rd para.]. Tartar teaches that the inositol-enhanced arginine silicate was administered once daily for 7 days. [Tartar, pg. 4, 3rd para.]. Tartar teaches that the video games were played for one or more rounds and each round was 60 min (±5 min). More than one round of a video game is at least about 120 minutes. [Tartar, pg. 5, 2nd para.]. Tartar teaches the study-product was assessed using TMT-A, B, Stroop Test, and POMS test prior to dosing and 15 minutes after dosing. After the assessments, the subject started to play video game and immediately after completing first round (60 minutes), the assessment tests were repeated, and more than one round of games were played. [Tartar, pg. 5]. This appears to indicate that the dosing of the study-product is during video game, especially when more than one game rounds are played. Please note that the assessment tests and procedure of Tartar is similar to the claimed assessments and methods (see instant specification, Example 1). Tartar teaches that the mood states test including tension-anxiety, depression-dejection, anger-hostility, vigor-activity, fatigue-inertia, and confusion was performed at pre-dose and at least 15 min post-dosing at Visit 1 and Visit 2. [Tartar, pg. 6, 3rd para], wherein the test is repeated and more than one gaming round is played. [Tartar, pg. 5, 3rd para.]. Tartar teaches that the evaluation of the study-product was done using two group, group receiving the study-product and placebo, wherein significant improve was observed in the group receiving the product compared to placebo, and 95% confidence intervals were also noted. [Tartar, pg. 7, 2nd para.; Figures 1-5]. Tartar teaches that the study product improved executive functioning before and after video game playing, enhance processing speed, task switching, and selective attention, increased perceived vigor levels in eGamers after a single dose, and decreased anger, and improve accuracy, decision making, and reaction time during video game playing. [Tartar, pg. 12, 3rd para.].
Therefore, it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of instantly claimed invention to use Costentin’s paraxanthine in increasing video game performance during electronic gameplay in view of the teachings of Tartar. One of ordinary skill in the art would have been motivated to do so with reasonable expectation of success because Tartar use inositol-enhanced arginine silicate, an agent that offset muscular fatigue, improve cognitive function, learning and memory, decrease stress and anxiety, and enhance mental focus for decrease reaction time, increase energy levels, enhanced cognitive function, mood states, and mental performance in video gamers, and Costentin teaches that paraxanthine stimulates thought, attention and intellectual faculties, increases concentration, stimulates attention and memory, and treat anxiety, fatigue, psychomotor, attention-deficit, cognitive deficits, depression, mood disorder, feeling of intense sadness, loss of enthusiasm, loss of energy, and thus, one of ordinary skill in the art would have been motivated with reasonable expectation of success to use paraxanthine in increasing video game performance during egame play because paraxanthine provide same positive effects as Tartar’s inositol-enhanced arginine silicate.
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of instantly claimed invention to administer an amount of about 2 mg to about 800 mg of paraxanthine in view of the teaching of Costentin. One of ordinary skill in the art would have been motivated to do so with reasonable expectation of success because Costentin teaches that paraxanthine is administered between 0.1 mg/kg/day and 100 mg/kg/day, wherein paraxanthine dose is predetermined to be therapeutically active. "[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). Costentin’s paraxanthine amount appears to overlap with the claimed amount of paraxanthine.
Note: Applicant’s argument against Tarter is parallel to the argument against Lelah above. Similarly, argument against Costentin is parallel to the above argument. [see Remarks at pages 4-5]. Please refer to the Examiner’s response above.
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.
Double Patenting Rejection over Copending Application No. 17/701,349
Claims 1-4, and 6-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 13, 16-19, 21 and 26, of copending Application No. 17/701,349 (US PG-PUB 2022/0305019 A1 cited in the previous PTO-892) in view of J. Costentin et al. (US PG-PUB 2009/0325984 A1, 12/21/2009, “Costentin” cited in the previous PTO-892) and J. Tartar et al. (Nutrients. 2019 Oct 1; 11(10):2326. doi: 10.3390/nu11102326, “Tartar” cited in the previous PTO-892). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claims recite A method for increasing video game performance in a subject or enhancing mood of a subject during electronic gameplay, comprising: administering to the subject a composition comprising from about 2 mg to about 800 mg, about 20 mg to about 600 mg, or about 50 mg to about 400 mg of paraxanthine, wherein video game performance is assessed and is increased from about 10% to about 70% following administration of the composition, wherein the composition further comprises one or more additional active agents, wherein the composition is administered prior to the onset of play, or during video game play for about 1-9 weeks, wherein the paraxanthine is synthetic or derived from a natural source.
Copending Application No. 17/701,349 recites in conflicting claims a method for promoting weight loss, suppressing appetite or increasing swagger in a subject, comprising administering to the subject a composition comprising from about 2 mg to about 800 mg of paraxanthine, about 20 to about 600 mg or about 50 mg to about 400 mg of paraxanthine, wherein the composition further comprises caffeine, omega-3 fatty acids, vitamin D, B, protein, selenium, etc. copending Application No. 17/701,349 does not teach the use of paraxanthine for increasing video game performance or enhancing mood during electronic gameplay video game performance is assessed, or wherein the paraxanthine is synthetic or derived from a natural source.
Costentin teaches the use of paraxanthine for manufacturing of a non-anxiogenic psychoanaleptic drug that stimulates thought, attention and intellectual faculties. [Costentin, pg. 1, 0006], increases concentration, and treat attention-deficit/hyperactivity disorder. [Costentin, pg. 2, 0028]. Costentin also teaches that paraxanthine has anxiolytic effects, [Costentin, pg. 2, 0024], treat depression, Fatigue, psychomotor, uncharacterized depressive disorders or dysthymia and sleep disorders, [Costentin, pg. 2, 0027], treat disorder associated with psychomotor slowing and fatigue, without causing anxiety, a factor which aggravates these disorders. [Costentin, pg. 2, 0029]. Costentin teaches that the stimulating effects of paraxanthine associated with anxiolytic effects provide paraxanthine with favorable effects on attention and memory and ability to treat cognitive deficits. [Costentin, pg. 2, 0032]. Costentin teaches depression, mood disorder, feeling of intense sadness, pessimistic anxiety and self-depreciation, loss of enthusiasm, loss of energy, fatigue, difficulty experiencing pleasure, and sleep disorders. [Costentin, pg. 1, 0010, pg. 2, 0027]. Costentin teaches that paraxanthine can be prepared by chemical synthesis or extracted from plants or other organisms. [Costentin, pg. 2, 0035, 0036]. Costentin teaches that paraxanthine stimulated locomotor activity in a group receiving paraxanthine compared to a group not receiving paraxanthine, [Costentin, pg. 4, 0053, Example 1, Figure 1], and paraxanthine shows anxiolytic affect in a group receiving paraxanthine compared to a group not receiving paraxanthine. [Costentin, pg. 4, 0058, Example 3, Figure 3.].
With regard to using paraxanthine in increasing video game performance, Tartar teaches an agent, inositol-enhanced arginine silicate, that provide similar effect to paraxanthine, for example offset muscular fatigue, improve cognitive function, learning and memory, decrease stress and anxiety, and enhance mental focus. Tartar teaches that these enhancement in cognitive function impact video game performance. [Tartar, pg. 2, 4th – 6th para.]. Tartar teaches that the inositol-enhanced arginine silicate effect on cognitive function, anxiety, focus, and fatigue, improve concentration, decrease reaction time, increase energy levels, enhanced cognitive function, mood states, and mental performance in video gamers. [Tartar, pg. 3, 3rd para.]. Tartar teaches that the inositol-enhanced arginine silicate was administered once daily for 7 days. [Tartar, pg. 4, 3rd para.]. Tartar teaches that the video games were played for one or more round and each round is 60 min (±5 min). more than one round of video game is at least about 120 minutes. [Tartar, pg. 5, 2nd para.]. Tartar teaches the study-product was assessed using TMT-A,B, Stroop Test, and POMS test prior to dosing and 15 minutes after dosing. After the assessments, the subject started to play video game and immediately after completing first round (60 minutes), the assessment tests were repeated, and more than one round of games were played. [Tartar, pg. 5]. This appears to indicate that the dosing of the study-product is during video game, especially when more than one game rounds are played. Please note that the assessment tests and procedure of Tartar is similar to the claimed assessments and methods (see instant specification, Example 1). Tartar teaches that the mood states test including tension-anxiety, depression-dejection, anger-hostility, vigor-activity, fatigue-inertia, and confusion was performed at pre-dose and at least 15 min post-dosing at Visit 1 and Visit 2. [Tartar, pg. 6, 3rd para], wherein the test is repeated and more than one gaming round is played. [Tartar, pg. 5, 3rd para.]. Tartar teaches that the evaluation of the study-product was done using two group, group receiving the study-product and placebo, wherein significant improve was observed in the group receiving the product compared to placebo, and 95% confidence intervals were also noted. [Tartar, pg. 7, 2nd para.; Figures 1-5]. Tartar teaches that the study product improved executive functioning before and after video game playing, enhance processing speed, task switching, and selective attention, increased perceived vigor levels in eGamers after a single dose, and decreased anger, and improve accuracy, decision making, and reaction time during video game playing. [Tartar, pg. 12, 3rd para.].
Therefore, it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of instantly claimed invention to use paraxanthine taught by copending Application No. 17/701,349 in increasing vised game performance and enhancing mood during electronic gameplay in view of the teachings of Costentin and Tartar. One of ordinary skill in the art would have been motivated to do so with reasonable expectation of success because Tartar use an agent that offset muscular fatigue, improve cognitive function, learning and memory, decrease stress and anxiety, and enhance mental focus for decrease reaction time, increase energy levels, enhanced cognitive function, mood states, and mental performance in video gamers, and Costentin teaches that paraxanthine stimulates thought, attention and intellectual faculties, increases concentration, stimulates attention and memory, and treat anxiety, fatigue, psychomotor, attention-deficit, cognitive deficits, depression, mood disorder, feeling of intense sadness, loss of enthusiasm, loss of energy, and thus, one of ordinary skill in the art would have been motivated with reasonable expectation of success to use paraxanthine taught by copending Application No. 17/701,349 in increasing video game performance and mood during egame play because paraxanthine provide same positive effects as Tartar’s agent.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Double Patenting Rejection over Copending Application No. 17/706,183
Claims 1-4, and 6-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 7-8 and 11-15 of copending Application No. 17/706,183 (US PG-PUB 2022/0305020 A1 cited in the previous PTO-892) in view of J. Costentin et al. (US PG-PUB 2009/0325984 A1, 12/21/2009, “Costentin” cited in the previous PTO-892) and J. Tartar et al. (Nutrients. 2019 Oct 1; 11(10):2326. doi: 10.3390/nu11102326, “Tartar” cited in the previous PTO-892). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claims recite A method for increasing video game performance in a subject or enhancing mood of a subject during electronic gameplay, comprising: administering to the subject with a composition comprising from about 2 mg to about 800 mg, about 20 mg to about 600 mg, or about 50 mg to about 400 mg of paraxanthine, wherein video game performance is assessed and is increased from about 10% to about 70% following administration of the composition, wherein the composition further comprises one or more additional active agents, wherein the composition is administered prior to the onset of play, or during video game play for about 1-9 weeks, wherein the paraxanthine is synthetic or derived from a natural source.
Copending Application No. 17/706,183 recites in conflicting claims a method for attenuating stress-induced mental fatigue or enhancing the stress resiliency in a subject, comprising administering to the subject a composition comprising from about 2 mg to about 800 mg of paraxanthine, or about 50 mg to about 400 mg of paraxanthine, wherein the composition further comprises L-Theanine, omega-3 fatty acids, etc. copending Application No. 17/706,183 does not teach the use of paraxanthine for increasing video game performance or enhancing mood during electronic gameplay, video game performance is assessed, or wherein the paraxanthine is synthetic or derived from a natural source.
Costentin teaches as discussed in the non-statutory Double Patenting above, page 17.
With regard to using paraxanthine in increasing video game performance, Tartar teaches as discussed in the non-statutory Double Patenting above, pages 17-18.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of instantly claimed invention to use paraxanthine taught by copending Application No. 17/706,183 in increasing vised game performance and enhancing mood during electronic gameplay in view of the teachings of Costentin and Tartar. One of ordinary skill in the art would have been motivated to do so with reasonable expectation of success because Tartar use an agent that offset muscular fatigue, improve cognitive function, learning and memory, decrease stress and anxiety, and enhance mental focus for decrease reaction time, increase energy levels, enhanced cognitive function, mood states, and mental performance in video gamers, and Costentin teaches that paraxanthine stimulates thought, attention and intellectual faculties, increases concentration, stimulates attention and memory, and treat anxiety, fatigue, psychomotor, attention-deficit, cognitive deficits, depression, mood disorder, feeling of intense sadness, loss of enthusiasm, loss of energy. One of ordinary skill in the art would have been motivated with reasonable expectation of success to use paraxanthine taught by copending Application No. 17/706,183 in increasing video game performance and mood during egame play because paraxanthine provide same positive effects as Tartar’s agent.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Double Patenting Rejection over Copending Application No. 17/794,729
Claims 1-4, and 6-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6-7, 10-11, 13 and 15-16 of copending Application No. 17/794,729 (US PG-PUB 2023/0072854 A1 cited in the previous PTO-892) in view of J. Costentin et al. (US PG-PUB 2009/0325984 A1, 12/21/2009, “Costentin” cited in the previous PTO-892) and J. Tartar et al. (Nutrients. 2019 Oct 1; 11(10):2326. doi: 10.3390/nu11102326, “Tartar” cited in the previous PTO-892). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claims recite A method for increasing video game performance in a subject or enhancing mood of a subject during electronic gameplay, comprising: administering to the subject with a composition comprising from about 2 mg to about 800 mg, about 20 mg to about 600 mg, or about 50 mg to about 400 mg of paraxanthine, wherein video game performance is assessed and is increased from about 10% to about 70% following administration of the composition, wherein the composition further comprises one or more additional active agents, wherein the composition is administered prior to the onset of play, or during video game play for about 1-9 weeks, wherein the paraxanthine is synthetic or derived from a natural source.
Copending Application No. 17/794,729 recites in conflicting claims a dietary supplement comprising a first active ingredient comprising about 2 mg to about 800 mg paraxanthine, either natural or synthetic and a method for improving physical performance or energy in subject, comprising administering to the subject a composition comprising from about 2 mg to about 800 mg of paraxanthine, or about 50 mg to about 400 mg of paraxanthine, wherein the subject experiences improvement of at least one of mood, energy, focus, concentration or sexual desire or a reduction of at least one of anxiety, fatigue, perception of effort or perception of pain, wherein the composition further comprises caffeine, omega-3 fatty acids, etc. copending Application No. 17/794,729 does not teach the use of paraxanthine for increasing video game performance or enhancing mood during electronic gameplay, wherein video game performance is assessed.
Costentin teaches as discussed in the non-statutory Double Patenting above, page 17.
With regard to using paraxanthine in increasing video game performance, Tartar teaches as discussed in the non-statutory Double Patenting above, pages 17-18.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of instantly claimed invention to use paraxanthine taught by copending Application No. 17/794,729 in increasing vised game performance and enhancing mood during electronic gameplay in view of the teachings of Costentin and Tartar. One of ordinary skill in the art would have been motivated to do so with reasonable expectation of success because Tartar use an agent that offset muscular fatigue, improve cognitive function, learning and memory, decrease stress and anxiety, and enhance mental focus for decrease reaction time, increase energy levels, enhanced cognitive function, mood states, and mental performance in video gamers, and Costentin teaches that paraxanthine stimulates thought, attention and intellectual faculties, increases concentration, stimulates attention and memory, and treat anxiety, fatigue, psychomotor, attention-deficit, cognitive deficits, depression, mood disorder, feeling of intense sadness, loss of enthusiasm, loss of energy, and thus, one of ordinary skill in the art would have been motivated with reasonable expectation of success to use paraxanthine taught by copending Application No. 17/794,729 in increasing video game performance and mood during egame play because paraxanthine provide same positive effects as Tartar’s agent.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Double Patenting Rejection over Copending Application No. 17/965,754
Claims 1-4, and 6-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 28-29, 33-34, and 40-41 of copending Application No. 17/965,754 (US PG-PUB 2023/0115966 A1 cited in the previous PTO-892) in view of J. Costentin et al. (US PG-PUB 2009/0325984 A1, 12/21/2009, “Costentin” cited in the previous PTO-892) and J. Tartar et al. (Nutrients. 2019 Oct 1; 11(10):2326. doi: 10.3390/nu11102326, “Tartar” cited in the previous PTO-892). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claims recite A method for increasing video game performance in a subject or enhancing mood of a subject during electronic gameplay, comprising: administering to the subject with a composition comprising from about 2 mg to about 800 mg, about 20 mg to about 600 mg, or about 50 mg to about 400 mg of paraxanthine, wherein video game performance is assessed and is increased from about 10% to about 70% following administration of the composition, wherein the composition further comprises one or more additional active agents, wherein the composition is administered prior to the onset of play, or during video game play for about 1-9 weeks, wherein the paraxanthine is synthetic or derived from a natural source.
Copending Application No. 17/965,754 recites in conflicting claims a dietary supplement, a method for improving physical performance or energy, and a method of improving cognitive function in subject of comprising paraxanthine and a cholinergic agent, wherein the paraxanthine is present in an amount from about 2 mg to about 800 mg or about 50 mg to about 400 mg, wherein the cholinergic agent is chosen from: phosphatidylcholine, alpha-GPC (L-alpha glycerylphosphorylcholine), Citicoline (Cytidine diphosphate choline (CPD Choline)), Choline Bitartrate, caffeine, methyl caffeine, etc., wherein the subject experiences improvement of at least one of mood, energy, focus, concentration or sexual desire or a reduction of at least one of anxiety or fatigue, wherein administration of the composition increases one or more of attention, information acquisition, information processing, working memory, short-term memory, long-term memory, anterograde memory, retrograde memory, memory retrieval, discrimination learning, decision-making, inhibitory response control, attentional set-shifting, delayed reinforcement learning, reversal learning, the temporal integration of voluntary behavior, speed of processing, reasoning, problem solving and/or social cognition. copending Application No. 17/965,754 does not teach the use of paraxanthine for increasing video game performance or enhancing mood during electronic gameplay, wherein video game performance is assessed, or wherein the paraxanthine is synthetic or derived from a natural source.
Costentin teaches as discussed in the non-statutory Double Patenting above, page 17.
With regard to using paraxanthine in increasing video game performance, Tartar teaches as discussed in the non-statutory Double Patenting above, pages 17-18.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of instantly claimed invention to use paraxanthine taught by copending Application No. 17/965,754 in increasing vised game performance and enhancing mood during electronic gameplay in view of the teachings of Costentin and Tartar. One of ordinary skill in the art would have been motivated to do so with reasonable expectation of success because Tartar use an agent that offset muscular fatigue, improve cognitive function, learning and memory, decrease stress and anxiety, and enhance mental focus for decrease reaction time, increase energy levels, enhanced cognitive function, mood states, and mental performance in video gamers, and Costentin teaches that paraxanthine stimulates thought, attention and intellectual faculties, increases concentration, stimulates attention and memory, and treat anxiety, fatigue, psychomotor, attention-deficit, cognitive deficits, depression, mood disorder, feeling of intense sadness, loss of enthusiasm, loss of energy, and thus, one of ordinary skill in the art would have been motivated with reasonable expectation of success to use paraxanthine taught by copending Application No. 17/965,754 in increasing video game performance and mood during egame play because paraxanthine provide same positive effects as Tartar’s agent.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Double Patenting Rejection over Copending Application No. 18/070,435
Claims 1-4, and 6-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 8-9, 11 and 19 of copending Application No. 18/070,435 (US PG-PUB 2023/0165868 A1 cited in the previous PTO-892) in view of J. Costentin et al. (US PG-PUB 2009/0325984 A1, 12/21/2009, “Costentin” cited in the previous PTO-892) and J. Tartar et al. (Nutrients. 2019 Oct 1; 11(10):2326. doi: 10.3390/nu11102326, “Tartar” cited in the previous PTO-892). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claims recite A method for increasing video game performance in a subject or enhancing mood of a subject during electronic gameplay, comprising: administering to the subject with a composition comprising from about 2 mg to about 800 mg, about 20 mg to about 600 mg, or about 50 mg to about 400 mg of paraxanthine, wherein video game performance is assessed and is increased from about 10% to about 70% following administration of the composition, wherein the composition further comprises one or more additional active agents, wherein the composition is administered prior to the onset of play, or during video game play for about 1-9 weeks, wherein the paraxanthine is synthetic or derived from a natural source.
Copending Application No. 18/070,435 recites in conflicting claims a method for increasing muscle function in a subject, comprising providing the subject with a composition comprising an effective amount of paraxanthine, wherein paraxanthine is present in the composition in amount from about 25 mg to about 600 mg or from about 50 mg to about 400 mg, wherein the composition further comprises arginine, protein, etc., wherein the muscle function is increased by from about 10% to about 20%, relative to a subject receiving a control composition without paraxanthine. copending Application No. 18/070,435 does not teach the use of paraxanthine for increasing video game performance or enhancing mood during electronic gameplay, wherein video game performance is assessed, or wherein the paraxanthine is synthetic or derived from a natural source.
Costentin teaches as discussed in the non-statutory Double Patenting above, page 17.
With regard to using paraxanthine in increasing video game performance, Tartar teaches as discussed in the non-statutory Double Patenting above, pages 17-18.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of instantly claimed invention to use paraxanthine taught by copending Application No. 18/070,435 in increasing vised game performance and enhancing mood during electronic gameplay in view of the teachings of Costentin and Tartar. One of ordinary skill in the art would have been motivated to do so with reasonable expectation of success because Tartar use an agent that offset muscular fatigue, improve cognitive function, learning and memory, decrease stress and anxiety, and enhance mental focus for decrease reaction time, increase energy levels, enhanced cognitive function, mood states, and mental performance in video gamers, and Costentin teaches that paraxanthine stimulates thought, attention and intellectual faculties, increases concentration, stimulates attention and memory, and treat anxiety, fatigue, psychomotor, attention-deficit, cognitive deficits, depression, mood disorder, feeling of intense sadness, loss of enthusiasm, loss of energy, and thus, one of ordinary skill in the art would have been motivated with reasonable expectation of success to use paraxanthine taught by copending Application No. 18/070,435 in increasing video game performance and mood during egame play because paraxanthine provide same positive effects as Tartar’s agent.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Double Patenting Rejection over Copending Application No. 18/227,808
Claims 1-4, and 6-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 10, 15-16 and 20 of copending Application No. 18/227,808 in view of J. Costentin et al. (US PG-PUB 2009/0325984 A1, 12/21/2009, “Costentin” cited in the previous PTO-892) and J. Tartar et al. (Nutrients. 2019 Oct 1; 11(10):2326. doi: 10.3390/nu11102326, “Tartar” cited in the previous PTO-892). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claims recite A method for increasing video game performance in a subject or enhancing mood of a subject during electronic gameplay, comprising: administering to the subject with a composition comprising from about 2 mg to about 800 mg, about 20 mg to about 600 mg, or about 50 mg to about 400 mg of paraxanthine, wherein video game performance is assessed and is increased from about 10% to about 70% following administration of the composition, wherein the composition further comprises one or more additional active agents, wherein the composition is administered prior to the onset of play, or during video game play for about 1-9 weeks, wherein the paraxanthine is synthetic or derived from a natural source.
Copending Application No. 18/227,808 recites in conflicting claims a method of inhibiting inflammation in a subject in need thereof comprising administering to the subject a composition comprising about 2 mg to about 800 mg of paraxanthine, or from about 50 mg to about 400 mg, wherein the composition further comprises one or more compounds selected from the list consisting of Omega-3 fatty acids, Vitamin C, Vitamin D, etc. copending Application No. 18/227,808 does not teach the use of paraxanthine for increasing video game performance or enhancing mood during electronic gameplay, wherein video game performance is assessed, or wherein the paraxanthine is synthetic or derived from a natural source.
Costentin teaches as discussed in the non-statutory Double Patenting above, page 17.
With regard to using paraxanthine in increasing video game performance, Tartar teaches as discussed in the non-statutory Double Patenting above, pages 17-18.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of instantly claimed invention to use paraxanthine taught by copending Application No. 18/227,808 in increasing vised game performance and enhancing mood during electronic gameplay in view of the teachings of Costentin and Tartar. One of ordinary skill in the art would have been motivated to do so with reasonable expectation of success because Tartar use an agent that offset muscular fatigue, improve cognitive function, learning and memory, decrease stress and anxiety, and enhance mental focus for decrease reaction time, increase energy levels, enhanced cognitive function, mood states, and mental performance in video gamers, and Costentin teaches that paraxanthine stimulates thought, attention and intellectual faculties, increases concentration, stimulates attention and memory, and treat anxiety, fatigue, psychomotor, attention-deficit, cognitive deficits, depression, mood disorder, feeling of intense sadness, loss of enthusiasm, loss of energy, and thus, one of ordinary skill in the art would have been motivated with reasonable expectation of success to use paraxanthine taught by copending Application No. 18/227,808 in increasing video game performance and mood during egame play because paraxanthine provide same positive effects as Tartar’s agent. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant argue:
“Applicant respectfully traverses this rejection, which in light of off Applicants’ arguments distinguishing Tartar and Costentin, Applicant also considers moot. Should any claims be allowed in either application, Applicant will address any remaining rejections at that time. Thus, without admitting the propriety of the rejection and in the interest of furthering prosecution, Applicants hereby notify the Office that a terminal disclaimer, listing the above noted co-pending applications, will be submitted upon allowance of pending claims 1-16, should it be necessary.”
Examiner response:
The argument against Tartar, which is parallel to Lelah, and Costentin is responded to above. Applicant’s request to address the non-statutory double patenting rejections or file Terminal Disclaimer, if any claims be allowed, is acknowledged, however, no claims are allowed. Thus, the non-statutory double patenting rejections are maintained.
Conclusion
Claims 1-4 and 6-16 are rejected. No claim is allowed.
Action Is Final, First Action Following Request for Continued Examination under 37 CFR 1.114
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/M.M.A./Examiner, Art Unit 1622
/JAMES H ALSTRUM-ACEVEDO/Supervisory Patent Examiner, Art Unit 1622