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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/13/2026 has been entered.
DETAILED ACTION
The Amendments and Applicant’s Arguments submitted on 05/13/2026 have been received and
have been carefully considered.
Claims 1, 4, and 14 were amended, and claims 5 and 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]:
[024]:
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[028]:
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[029]:
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Although instant specification does not provide specific definition to the term, and provide alternative description, the term “video game performance” is broadly and reasonably interpreted as described in instant specification, [024], [028] and [029], as accuracy, decision making, reaction time, hand-eye coordination, reducing visual fatigue, increasing visual acuity and point scores, enhancing mood and decreasing tension, depression, anger, fatigue and confusion.
Response to Arguments
Applicant argue:
“Under the Examiner's interpretation, any composition that merely improves mood or reduces tension would satisfy the "increasing video game performance" limitation, even if the subject's actual ability to play video games is entirely unchanged. This reading effectively eliminates the requirement that the claimed method have any nexus to video game playing, which renders the term "video game performance" superfluous and devoid of its ordinary meaning. Applicant's specification at paragraph [024] describes video game performance as "assessed by a measure selected from: accuracy, decision making, reaction time, hand-eye coordination, and game performance." The specification's explicit inclusion of "game performance" as a measure alongside accuracy, decision making, reaction time, and hand-eye coordination confirms that video game performance is ultimately assessed by reference to actual game outcomes-not merely by reference to generalized psychological or physiological states that could exist independently of any video game context. Additionally, the specification at paragraphs [028] and [029] discusses "enhancing
electronic game play endurance" and "mood of a subject during electronic gameplay" as factors that can impact game play performance-not as synonymous definitions of "video game performance" itself. The Examiner improperly collapsed these distinct concepts into the definition of "video game performance" by treating descriptions of what may influence performance as constituting performance itself. A person of ordinary skill in the art, reading the claims in light of the specification, would understand "increasing video game performance" to require that the administered composition actually improves the subject's ability to perform well in a video game-as measured by outcomes such as game scores, accuracy within game tasks, successful decision-making during gameplay, or other indicia of how effectively the subject plays. The broadest reasonable interpretation must preserve this essential nexus to actual gameplay outcomes.”
Examiner response:
Applicant's arguments have been fully considered but they are not persuasive. The instant specification does not provide a definition to the claim 1 term, “increase video game performance”. The specification provides alternative descriptive embodiments for the term as described in paragraphs [024], [028], and [029]. However, the instant specification does not define the term as stated by the applicant above. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). Applicant does not provide factual evidence for the definition of the term. While attorney statement above is not substantially different from what stated in the specification, attorney statement is not supported by factual evidence. While embodiments of the specification cannot be imported into the claims, words of the claim must be consistent with the specification. See MPEP § 2111.01. Although instant specification does not provide a specific definition to the term, and provide alternative description, the term “video game performance” is broadly and reasonably interpreted as described in instant specification, [024], [028] and [029], as accuracy, decision making, reaction time, hand-eye coordination, reducing visual fatigue, increasing visual acuity and point scores, enhancing mood and decreasing tension, depression, anger, fatigue and confusion.
Withdrawn Claim Rejections - 35 USC § 103
Rejection of claims 1-4 and 6-16 under 35 U.S.C. 103 as being unpatentable over J. Costentin et al. (US PG PUB 2009/0325984 A1, 12/21/2009) in view of J. Tartar et al. (Nutrients. 2019 Oct. 1; 11(10):2326), is withdrawn in view of Applicant’s persuasive arguments and factual evidence that Tarter and Costentin’s compositions have different effect in human body, and the two agents have different mechanism and mode of action.
New Rejection
Rejections 35 U.S.C. 112(b)
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.
Claims 1-4 and 6-16 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.
Amended claims 1 and claim 14 recites “… the composition being substantially free of caffeine …”.
The term “substantially free” is a relative term. when a term of degree is used in the claim, the examiner should determine whether the specification provides some standard for measuring that degree. Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1367, 94 USPQ2d 1385, 1391 (Fed. Cir. 2010); Enzo Biochem, Inc., v. Applera Corp., 599 F.3d 1325, 1332, 94 USPQ2d 1321, 1326 (Fed. Cir. 2010); Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir. 1984). However, the instant specification does not provide standard for measuring degree of “substantially free1”, and therefore, one of ordinary skill in the art is not apprised with the scope of the claim. Even if the specification uses the same term of degree as in the claim, a rejection is proper if the scope of the term is not understood when read in light of the specification.
Dependent claims 2-4, 6-13, and 15-16 are indefinite due to their dependence on a rejected claim and lacking any limitations that cure the ambiguities resulting from the parent claim(s).
Rejection Maintained/Slightly Modified in view of the Amendment
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).
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].
While Lelah teaches that the composition for enhancing video game play, Lelah does not teach that composition comprises paraxanthine.
Costentin teaches caffeine stimulating alertness, concentration, attention and intellectual functions and for the treatment of attention-deficit/hyperactivity disorder. However, Caffeine is 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]. 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 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].
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 and have the composition substantially free of caffeine 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.
With regard to the 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]. The amount of 0.5 mg-20 mg per kg equivalent to 30 mg- 1200 mg for an adult human with an average weight of 60 kg. Paraxanthine amount of 30-1200 mg overlapped with the claimed amounts of claims 1-3 and 14-15. As provided in MPEP 2144.05 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). "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005). Moreover, "[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).
Therefore, Lelah and Costentin meet each and every limitations of claims 1-3 and 14-15.
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 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].
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].
Response to argument
Applicant argues:
“Lelah specifically recites a "dietary supplement composition comprising... caffeine, In the disclosure herein, all independent claims recite a composition "substantially free of caffeine." As recited herein, caffeine is known to cause adverse side effects, including jitteriness and/or anxiety, which may be detrimental to gaming performance. In the example recited herein, caffeine was not shown to increase gaming performance, but paraxanthine was. A composition substantially free of caffeine, but containing paraxanthine, is critical to produce the desired effects.
Examiner response:
Applicant's arguments have been fully considered but they are not persuasive for the reasons stated above. That is, 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 and have the composition substantially free of caffeine 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.
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 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) and M. Lelah (US PG-PUB 2021/0169891 A1, 06/10/2021, “Lelah” cited in the previous PTO-892 dated 12/20/2023). 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, the composition being substantially free of caffeine, 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, or wherein the paraxanthine composition is free of caffeine, or wherein the paraxanthine is synthetic or derived from a natural source.
The disclosures set forth above in the 103 rejection over the same Costentin and Lelah references are herein incorporated by reference. See page 8-9.
The obviousness rationale is the same as the obviousness rationale of the 103 rejection above, page 9-10.
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 PTO-892 dated 12/20/2023) and M. Lelah (US PG-PUB 2021/0169891 A1, 06/10/2021, “Lelah” cited in the previous PTO-892 dated 12/20/2023). 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, the composition being substantially free of caffeine, 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, or wherein the paraxanthine composition is free of caffeine, or wherein the paraxanthine is synthetic or derived from a natural source.
The disclosures set forth above in the 103 rejection over the same Costentin and Lelah references are herein incorporated by reference. See page 8-9.
The obviousness rationale is the same as the obviousness rationale of the 103 rejection above, page 9-10.
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 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) and M. Lelah (US PG-PUB 2021/0169891 A1, 06/10/2021, “Lelah” cited in the PTO-892 dated 12/20/2023). 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, the composition being substantially free of caffeine, 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, or wherein the paraxanthine composition is free of caffeine, or wherein the paraxanthine is synthetic or derived from a natural source.
The disclosures set forth above in the 103 rejection over the same Costentin and Lelah references are herein incorporated by reference. See page 8-9.
The obviousness rationale is the same as the obviousness rationale of the 103 rejection above, page 9-10.
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 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) and M. Lelah (US PG-PUB 2021/0169891 A1, 06/10/2021, “Lelah” cited in the previous PTO-892 dated 12/20/2023). 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, the composition being substantially free of caffeine, 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, or wherein the paraxanthine composition is free of caffeine, or wherein the paraxanthine is synthetic or derived from a natural source.
The disclosures set forth above in the 103 rejection over the same Costentin and Lelah references are herein incorporated by reference. See page 8-9.
The obviousness rationale is the same as the obviousness rationale of the 103 rejection above, page 9-10.
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 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) and M. Lelah (US PG-PUB 2021/0169891 A1, 06/10/2021, “Lelah” cited in the previous PTO-892 dated 12/20/2023). 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, the composition being substantially free of caffeine, 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, or wherein the paraxanthine composition is free of caffeine, or wherein the paraxanthine is synthetic or derived from a natural source.
The disclosures set forth above in the 103 rejection over the same Costentin and Lelah references are herein incorporated by reference. See page 8-9.
The obviousness rationale is the same as the obviousness rationale of the 103 rejection above, page 9-10.
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 US PG-PUB 20240033269A1 cited in the 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 M. Lelah (US PG-PUB 2021/0169891 A1, 06/10/2021, “Lelah” cited in the previous PTO-892 dated 12/20/2023). 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, the composition being substantially free of caffeine, 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, or wherein the paraxanthine composition is free of caffeine, or wherein the paraxanthine is synthetic or derived from a natural source.
The disclosures set forth above in the 103 rejection over the same Costentin and Lelah references are herein incorporated by reference. See page 8-9.
The obviousness rationale is the same as the obviousness rationale of the 103 rejection above, page 9-10.
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. 18/601,590
Claims 1-4, and 6-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of copending Application No. 18/601,590 US PG-PUB 20240299484A1 cited in the PTO-892) in view of J. Costentin et al. (US PG-PUB 2009/0325984 A1, 12/21/2009, “Costentin” cited in the PTO-892 dated 12/20/2023) and M. Lelah (US PG-PUB 2021/0169891 A1, 06/10/2021, “Lelah” cited in the previous PTO-892 dated 12/20/2023). 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, the composition being substantially free of caffeine, 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. 18/601,590 recites in conflicting claims A composition and a method of improving muscle strength, muscle size, and/or muscle function, and a method of improving cognitive performance comprising: paraxanthine and dileucine or L-arginine, wherein paraxanthine is present in an amount of from about 2 mg to about 800 mg, about 20-600 mg, and about 50-400 mg, wherein the composition further comprises one or more compounds selected from the list consisting of: isoleucine, leucine, and valine, histidine, lysine, methionine, phenylalanine, threonine, vitamin D, etc.
Copending Application No. 18/601,590 does not teach the use of paraxanthine for increasing video game performance or enhancing mood during electronic gameplay, or wherein the paraxanthine composition is free of caffeine, or wherein the paraxanthine is synthetic or derived from a natural source.
The disclosures set forth above in the 103 rejection over the same Costentin and Lelah references are herein incorporated by reference. See page 8-9.
The obviousness rationale is the same as the obviousness rationale of the 103 rejection above, page 9-10.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant argue:
“In light of Applicants' arguments distinguishing Lelah, and Costentin, Applicant also considers double patenting 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 1-4 and 6-16, should it be necessary.
Examiner response:
The argument against 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.
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/M.M.A./Examiner, Art Unit 1622
/JAMES H ALSTRUM-ACEVEDO/Supervisory Patent Examiner, Art Unit 1622
1 The term “substantially free” is not recited in the specification. However, the specification recites in some embodiment “the composition administered to the subject does not contain caffeine.” e.g., [021]. Ipsis verbis disclosure is not necessary to satisfy the written description requirement, if a skilled artisan would have understood the inventor to be in possession of the claimed invention at the time of filing, even if every nuance of the claims is not explicitly described in the specification, then the adequate description requirement is met. MPEP § 2163(II)(A)(3)(a) (citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d 1111, 1114 (Fed. Cir. 1991). While the term is properly rejected under 112b, the written description is satisfied.
Prosecution Insights