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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Current Status of 17/777,910
This Office Action is responsive to the amended claims of 13 July 2026.
Claims 1, 3-6, 8-10, and 13-18 have been examined on the merits. Claims 1, 6, and 17-18 are currently amended. Claims 3-5, 8-10, and 13-16 are previously presented.
Priority
The effective filing date is 29 November 2019.
Response to Arguments
The Examiner acknowledges receipt of and has reviewed Applicants’ claim amendments and Reply of 13 July 2026.
Applicants revised claim 6 to be independent, therefore negating the underlying rationale behind the indefiniteness rejection of record. Therefore, the indefiniteness rejection is withdrawn.
New Rejections –
All Applicant Amendments, including those, below, offered by the Examiner, Must Still have Support in the Original Disclosure
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 8-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the method claims 8-9 (while containing a stated objective) do not contain a gerund “-ing” ending (active) verb needed to effectuate/carry-out the stated objective. Method claims must contain both an objective (claims 8-9 do contain an objective) and at least one active verb needed to effectuate the objective (which is missing in claims 8-9). The “using the compound” phraseology does not suffice as the needed active verb required by method claims. For example, revising claim 8 to: -- A method of using the compound of formula Ia to provide a cooling effect or sensation by administering the compound of formula Ia to a subject in need thereof -- would be a better revision/solution and help render moot this rejection. Please revise claim 9 in similar manner (Note: all amendments must have support in original disclosure). However, note that this revision won’t resolve the 35 USC 112(d), below, unless and until claims 8-9 are made into independent form (which means formula Ia must be entirely defined within each independent claim).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 8-10 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.
Method claims 8-9 lack active verbs (“gerund”/”-ing” ending verbs) needed to effectuate the stated objectives of providing a cooling sensation (claim 8) and/or being useful as a medicament (claim 9). This renders the metes and bounds of these claims undefined (hence rendering claims 8-9 indefinite under 35 USC 112(b)). The artisan has no idea what the missing/incomplete step(s) required to effectuate the objectives of claims 8-9. Revising to add gerund/active verb(s) (see suggested revision in 35 USC 101 rejection, above) can help render moot this rejection.
Claim 10’s limitation “comprising a cool sensation” renders the metes and bounds of claim 10 undefined hence rendering claim 10 indefinite under 35 USC 112(b). The artisan does not know how a composition can comprise a “cool sensation”. Examiner recommends Applicants strike this limitation to render moot this rejection.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4-5, 8-9, 13, and 15-16 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Dependent claim 13 precedes parent claim 14. Therefore, dependent claim 13 is rejected under 35 USC 112(d) since a dependent claim must follow and refer back to its parent claim.
Dependent claims 4-5 are rejected under 35 USC 112(d): the dependent claims 4-5 are directed to a different scope not reflected in the wording of parent claim 1. Parent claim 1 is silent as to “inducing a cooling sensation” (claim 4) and “achieving a cooling effect” (claim 5). This same problem plagues dependent claims 8-9 and 15-16, which are rejected under 35 USC 112(d) for the same rationale.
Revising claims 4-5, 8-9, and 15-16 to be independent claims which contain the genus formula Ia and all of its definitions would render moot this rejection and avoid future 35 USC 112(b) or (d) rejections.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Conclusion
Claims 4-5, 8-10, 13, and 15-16 are not presently allowable as written.
Claims 1, 3, 6, 14, and 17-18 are presently allowable as written for the rationale stated within the paragraphs 19-22 of the Non-Final Office Action mailed 22 August 2025.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN S KENYON whose telephone number is (571)270-1567. The examiner can normally be reached Monday-Friday 10a-6p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew D Kosar can be reached at (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625
