DETAILED ACTION
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.
Election/Restriction
Applicant's election with traverse of Group 1 and Species A14, corresponding to claims 1-12, in the reply filed on 5/13/2026 is acknowledged. The traversal is on the grounds that the compound in ¶ 1041 of Brito does not include all of the features required by Formula 1 of claim 1. Upon further consideration, the restriction requirement between Groups I-III and between Species A1-A26 is withdrawn, as the shared technical features make a contribution over the prior art.
Status of the Claims
Claims 1-17 are pending. Claims 1 and 16 have been amended.
Specification
The disclosure is objected to because of the following informalities: Reaction Formula 1 on page 22, Reaction Formula 2 on page 24, Reaction Formula 3 on page 25, Reaction Formula 4 on page 27, Reaction Formula 5 on page 29, and Decomposition mechanism on page 32 are all illegible and need to be replaced with legible formulas. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-17 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.
Claim 1 requires that “M is selected from alkali metals and transition metals”, but looking to the specification for the definition of transition metals, “the transition metal may be selected from . . . Mg, Ca” (both on page 3, lines 9-11, and on page 11, lines 8-10). Similarly, claim 5 requires that “the transition metal is selected from . . . Mg, Ca”. The accepted meaning of transition metals does not include Mg and Ca, as Mg and Ca are alkaline earth metals. Therefore, it is unclear to one of ordinary skill in the art what “transition metals” is being redefined to include. For instance, would other alkaline earth metals such as Be or Sr also be considered transition metals for the purpose of claim 1?
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “transition metals” is indefinite because the specification does not clearly redefine the term.
Claims 2-17 are indefinite due to their dependence from claim 1.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 and 14 of U.S. Patent No. US 12,473,692 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of US 12,473,692 B2 anticipate claims 1-15 of the instant application (see mapping below).
18/033,737 (Instant Application)
18/253,133 (US 12,473,692 B2)
Claim 1
A flavoring agent, which is a compound represented by the following Formula 1:
PNG
media_image1.png
348
877
media_image1.png
Greyscale
(M, n, R, A, A’ have the same definition in both claim sets)
Claim 1
A wallpaper composition, comprising: a compound represented by the following Formula 1; and a base material comprising at least one selected from the group consisting of fiber, pulp, cellulose-based resin, and liquid resin,
PNG
media_image2.png
317
748
media_image2.png
Greyscale
(M, n, R, A, A’ have the same definition in both claim sets)
Claim 2
The flavoring agent of claim 1, wherein the flavoring compound is selected from a cyclic monoterpene-based compound having a hydroxyl group, a monoterpene-based acyclic compound having a hydroxyl group, a C6-C10 aromatic compound having a hydroxyl group, and a C5-C6 non-aromatic ring having a hydroxyl group.
Claim 2
The wallpaper composition of claim 1, wherein the flavoring compound is selected from a cyclic monoterpene-based compound having a hydroxyl group, a monoterpene-based acyclic compound having a hydroxyl group, a C6-C10 aromatic compound having a hydroxyl group, and a C5-C6 non-aromatic ring having a hydroxyl group.
Claim 3
The flavoring agent of claim 1, wherein the flavoring compound is selected from the following formulas: (the same 27 chemical formulas are provided in both claim sets)
Claim 3
The wallpaper composition of claim 1, wherein the flavoring compound is selected from the following formulas:
(the same 27 chemical formulas are provided in both claim sets)
Claim 4
The flavoring agent of claim 1, wherein A' is selected from the following formulas: (* is the binding site of oxygen in the carbonate.)
(the same 27 chemical formulas are provided in both claim sets)
Claim 4
The wallpaper composition of claim 1, wherein the A′ is selected from the following formulas: wherein * is the binding site of oxygen in the carbonate.
(the same 27 chemical formulas are provided in both claim sets)
Claim 5
The flavoring agent of claim 1, wherein the transition metal is selected from Zr, Mg, Ca, Co, Rh, Ir, Nb, Pd, Pt, Fe, Ru, Os, Cr, Mo, W, Mn, Tc, Re, Cu, Ag, and Au, and the alkali metal is selected from Li, Na, K, Rb, and Cs.
Claim 5
The wallpaper composition of claim 1, wherein the transition metal is selected from Zr, Co, Rh, Ir, Nb, Pd, Pt, Fe, Ru, Os, Cr, Mo, W, Mn, Tc, Re, Cu, Ag, and Au, and the alkali metal is selected from Li, Na, K, Rb, and Cs.
Claim 6
The flavoring agent of claim 1, wherein the compound is selected from the following formulas 1-1 to 1-26: (where, M and R are as defined in Formula 1 above.)
(the same 26 chemical formulas are provided in both claim sets)
Claim 6
The wallpaper composition of claim 1, wherein the compound is selected from the following formulas 1-1 to 1-28: wherein M and R are as defined in Formula 1 above.
(the same 26 chemical formulas are provided in both claim sets)
Claim 7
The flavoring agent of claim 1, wherein the flavoring agent is a flavoring agent compound that develops flavor upon thermal decomposition.
Claim 7
The wallpaper composition of claim 1, wherein the compound is a flavoring agent compound that expresses flavor upon thermal decomposition.
Claim 8
The flavoring agent of claim 1, wherein the flavoring agent is
decomposed into the flavoring compound, a lactone compound, and carbon dioxide during
thermal decomposition.
Claim 8
The wallpaper composition of claim 1, wherein the compound is decomposed into the flavoring compound, a lactone compound, and carbon dioxide during thermal decomposition.
Claim 9
The flavoring agent of claim 1, wherein the compound is thermally
decomposed at a temperature of 80°C or higher.
Claim 11
The wallpaper composition of claim 1, wherein the compound is thermally decomposed at a temperature of 80° C or higher.
Claim 10
The flavoring agent of claim 8, wherein the lactone compound is gamma lactone of the following Formula 2 or delta lactone of the following Formula 3: (where, R is a straight-chain or branched-chain alkyl group having 1 to 30 carbon atoms.)
(the same Formula 2 and Formula 3 are provided in both claim sets)
Claim 9
The wallpaper composition of claim 8, wherein the lactone compound is gamma lactone of the following Formula 2 or delta lactone of the following Formula 3: wherein R is a straight-chain or branched-chain alkyl group having 1 to 30 carbon atoms.
(the same Formula 2 and Formula 3 are provided in both claim sets)
Claim 11
The flavoring agent of claim 8, wherein the lactone compound is
selected from the following formulas:
(the same 13 chemical formulas are provided in both claim sets)
Claim 10
The wallpaper composition of claim 8, wherein the lactone compound is selected from the following formulas:
(the same 13 chemical formulas are provided in both claim sets)
Claim 12
The flavoring agent of claim 1, wherein the flavoring
agent is a flavoring agent for food or smoking articles.
Claim 3
The wallpaper composition of claim 1, wherein the flavoring compound is selected from the following formulas:
(the chemical formulas provided include flavoring agents for food or smoking articles, e.g., menthol)
Claim 13
A composition comprising the flavoring agent of claim 1.
The flavoring agent of claim 1 is a compound represented by the following Formula 1:
PNG
media_image1.png
348
877
media_image1.png
Greyscale
(M, n, R, A, A’ have the same definition in both claim sets)
Claim 1
A wallpaper composition, comprising: a compound represented by the following Formula 1; and a base material comprising at least one selected from the group consisting of fiber, pulp, cellulose-based resin, and liquid resin,
PNG
media_image2.png
317
748
media_image2.png
Greyscale
(M, n, R, A, A’ have the same definition in both claim sets)
Claim 14
The composition of claim 13, wherein the composition is a solid phase, a slurry, a paste, a gel, a liquid phase, an emulsion, or an aerosol.
Claim 14
The wallpaper composition of claim 1, wherein the wallpaper composition is a solid phase, a slurry, a paste, a gel, a liquid phase, an emulsion, or an aerosol.
Claim 15
The composition of claim 13, wherein the composition further comprises a carrier acceptable for food or smoking articles, additives, or both thereof.
Claim 1
See mapping of claim 13 of the instant application to claim 1 of US 12,473,692 B2 above. The “base material” of claim 13 is an “additive”.
Claims 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 and 16 of copending Application No. 18/035,559 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of 18/035,559 anticipate claims 1-17 of the instant application (see mapping below). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented (the examiner notes that while a Notice of Allowance was mailed for 18/035,559 on 4/8/2026, the patent has not yet been issued; if not addressed, when the patent for 18/035,559 issues, this provisional rejection would become a nonprovisional rejection).
18/033,737 (Instant Application)
18/035,559 (Reference Application)
Claim 1
A flavoring agent, which is a compound represented by the following Formula 1:
PNG
media_image1.png
348
877
media_image1.png
Greyscale
(M, n, R, A, A’ have the same definition in both claim sets)
Claim 1
A smoking article, comprising: a flavoring agent which is a compound represented by the following Formula 1:
PNG
media_image3.png
227
560
media_image3.png
Greyscale
(M, n, R, A, A’ have the same definition in both claim sets)
Claim 2
The flavoring agent of claim 1, wherein the flavoring compound is selected from a cyclic monoterpene-based compound having a hydroxyl group, a monoterpene-based acyclic compound having a hydroxyl group, a C6-C10 aromatic compound having a hydroxyl group, and a C5-C6 non-aromatic ring having a hydroxyl group.
Claim 2
The smoking article of claim 1, wherein the flavoring compound is selected from a cyclic monoterpene-based compound having a hydroxyl group, a monoterpene-based acyclic compound having a hydroxyl group, a C6-C10 aromatic compound having a hydroxyl group, and a C5-C6 non-aromatic ring having a hydroxyl group.
Claim 3
The flavoring agent of claim 1, wherein the flavoring compound is selected from the following formulas: (the same 27 chemical formulas are provided in both claim sets)
Claim 3
The smoking article of claim 1, wherein the flavoring compound is selected from the following formulas:
(the same 27 chemical formulas are provided in both claim sets)
Claim 4
The flavoring agent of claim 1, wherein A' is selected from the following formulas: (* is the binding site of oxygen in the carbonate.)
(the same 27 chemical formulas are provided in both claim sets)
Claim 4
The smoking article of claim 1, wherein the A' is selected from the following formulas: (* is the binding site of oxygen in the carbonate.)
(the same 27 chemical formulas are provided in both claim sets)
Claim 5
The flavoring agent of claim 1, wherein the transition metal is selected from Zr, Mg, Ca, Co, Rh, Ir, Nb, Pd, Pt, Fe, Ru, Os, Cr, Mo, W, Mn, Tc, Re, Cu, Ag, and Au, and the alkali metal is selected from Li, Na, K, Rb, and Cs.
Claim 5
The smoking article of claim 1, wherein the transition metal is selected from Zr, Mg, Ca, Co, Rh, Ir, Nb, Pd, Pt, Fe, Ru, Os, Cr, Mo, W, Mn, Tc, Re, Cu, Ag, and Au, and the alkali metal is selected from Li, Na, K, Rb, and Cs.
Claim 6
The flavoring agent of claim 1, wherein the compound is selected from the following formulas 1-1 to 1-26: (where, M and R are as defined in Formula 1 above.)
(the same 26 chemical formulas are provided in both claim sets)
Claim 6
The smoking article of claim 1, wherein the compound is selected from the following Formulas 1-1 to 1-26: (Here, M and R are as defined in Formula 1 above.)
(the same 26 chemical formulas are provided in both claim sets)
Claim 7
The flavoring agent of claim 1, wherein the flavoring agent is a flavoring agent compound that develops flavor upon thermal decomposition.
Claim 7
The smoking article of claim 1, wherein the flavoring agent is a flavoring agent compound that expresses flavor upon thermal decomposition.
Claim 8
The flavoring agent of claim 1, wherein the flavoring agent is
decomposed into the flavoring compound, a lactone compound, and carbon dioxide during
thermal decomposition.
Claim 8
The smoking article of claim 1, wherein the flavoring agent is decomposed into the flavoring compound, a lactone compound, and carbon dioxide during thermal decomposition.
Claim 9
The flavoring agent of claim 1, wherein the compound is thermally
decomposed at a temperature of 80°C or higher.
Claim 9
The smoking article of claim 1, wherein the compound is thermally decomposed at a temperature of 80°C or higher.
Claim 10
The flavoring agent of claim 8, wherein the lactone compound is gamma lactone of the following Formula 2 or delta lactone of the following Formula 3: (where, R is a straight-chain or branched-chain alkyl group having 1 to 30 carbon atoms.)
(the same Formula 2 and Formula 3 are provided in both claim sets)
Claim 10
The smoking article of claim 8, wherein the lactone compound is gamma lactone of the following Formula 2 or delta lactone of the following Formula 3: (Here, R is a straight-chain or branched-chain alkyl group having 1 to 30 carbon atoms.)
(the same Formula 2 and Formula 3 are provided in both claim sets)
Claim 11
The flavoring agent of claim 8, wherein the lactone compound is
selected from the following formulas:
(the same 13 chemical formulas are provided in both claim sets)
Claim 11
The smoking article of claim 8, wherein the lactone compound is selected from the following formulas:
(the same 13 chemical formulas are provided in both claim sets)
Claim 12
The flavoring agent of claim 1, wherein the flavoring
agent is a flavoring agent for food or smoking articles.
Claim 1
See mapping of claim 1 of the instant application to claim 1 of the reference application 18/035,559 above. The flavoring agent of the reference application is incorporated into a smoking article.
Claim 13
A composition comprising the flavoring agent of claim 1.
The flavoring agent of claim 1 is a compound represented by the following Formula 1:
PNG
media_image1.png
348
877
media_image1.png
Greyscale
(M, n, R, A, A’ have the same definition in both claim sets)
Claim 1
A smoking article, comprising: a flavoring agent which is a compound represented by the following Formula 1:
PNG
media_image3.png
227
560
media_image3.png
Greyscale
(M, n, R, A, A’ have the same definition in both claim sets)
Claim 14
The composition of claim 13, wherein the composition is a solid phase, a slurry, a paste, a gel, a liquid phase, an emulsion, or an aerosol.
Claim 12
The smoking article of claim 1, wherein the smoking article comprises a slurry, a paste, a liquid phase, a gel, a powder, beads, a sheet, a film, a fiber or a molded body containing the compound represented by Formula 1 above.
Claim 15
The composition of claim 13, wherein the composition further comprises a carrier acceptable for food or smoking articles, additives, or both thereof.
Claim 12
The smoking article of claim 1, wherein the smoking article comprises a slurry, a paste, a liquid phase, a gel, a powder, beads, a sheet, a film, a fiber or a molded body containing the compound represented by Formula 1 above.
Claim 16
A smoking article comprising the flavoring agent of claim 1, wherein the smoking article is a cigarette or an electronic cigarette.
The flavoring agent of claim 1 is a compound represented by the following Formula 1:
PNG
media_image1.png
348
877
media_image1.png
Greyscale
(M, n, R, A, A’ have the same definition in both claim sets)
Claim 16
The smoking article of claim 1, wherein the smoking article comprises a filter part and a smoking medium part, and the smoking medium part comprises cigarette paper, smoking medium, or both thereof, containing the compound represented by Formula 1 above.
Where Formula 1 is:
PNG
media_image3.png
227
560
media_image3.png
Greyscale
(M, n, R, A, A’ have the same definition in both claim sets)
Claim 17
The smoking article of claim 16, wherein the smoking article comprises a slurry, paste, liquid phase, gel, powder, beads, sheet, film, fiber, or molded body containing the flavoring agent.
Claim 16
See mapping of claim 16 of the instant application to claim 16 of the reference application 18/035,559 above. The “cigarette paper” is a “sheet”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COURTNEY G CULBERT whose telephone number is (571)270-0874. The examiner can normally be reached Monday-Friday 9am-4pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached at (571)270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/COURTNEY G CULBERT/Examiner, Art Unit 1747
Prosecution Insights