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 .
Applicants' arguments, filed October 22, 2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims
Obvious-Type Double Patenting
1) Claims 1 and 3-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 18-19 of copending Application No. 17/769,198 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are coextensive insofar as both sets of claims recites compounds of formula I. The instant claims differ from the copending claims insofar as the instant claims recite a composition whereas the copending claims recite a method of using formula I. However it would have been obvious to one of ordinary skill in the art to have used the composition of the instant claims in the method of the copending claims because they comprise the same active agent, compounds of formula 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
The Examiner submits that the copending claims do not appear to recite amounts and therefore would encompass any amount. Therefore the amount is encompassed by the copending claims. In regards to the mint, both sets of claims use open language and copending claims do not exclude a mint flavor. Therefore the instant claims are obvious over the copending claims.
2) Claims 1 and 3-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9-16 of copending Application No. 18/276,412 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are coextensive insofar as both sets of claims recites compounds of formula I. The instant claims differ from the copending claims insofar as the instant claims recite a composition and the compound of formula I are species of the compounds of the copending claims. Further, the copending claims recite a method of using formula I and a composition. However it would have been obvious to one of ordinary skill in the art to have used the composition of the instant claims in the method of the copending claims because they comprise active agents encompassed by the formula of the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
The Examiner submits that the copending claims do not appear to recite amounts and therefore would encompass any amount. Therefore the amount is encompassed by the copending claims. In regards to the mint, both sets of claims use open language and the copending claims do not exclude a mint flavor. Therefore the instant claims are obvious over the copending claims.
3) Claims 1 and 3-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/005,404 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are coextensive insofar as both sets of claims recites compounds of formula I. The instant claims differ from the copending claims insofar as the compositions of the instant claims comprise an additional flavor agent whereas the copending claims recite a solvent.
Menthol is also a cooling compound. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. See MPEP 2144.06. Therefore it would have been obvious to one of ordinary skill in the art to have added menthol to the composition of the copending claims because it is also a cooling agent.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
The Examiner submits that the copending claims do not appear to recite amounts and therefore would encompass any amount. Therefore the amount is encompassed by the copending claims. In regards to the mint, both sets of claims use open language and the copending claims do not exclude a mint flavor. Therefore the instant claims are obvious over the copending claims.
4) Claims 1 and 3-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 19 of copending Application No. 18/005,425 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are coextensive insofar as both sets of claims recites compounds of formula I. The instant claims differ from the copending claims insofar as the compositions of the instant claims comprise an additional flavor agent whereas the copending claims recite a solvent.
Menthol is also a cooling compound. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. See MPEP 2144.06. Therefore it would have been obvious to one of ordinary skill in the art to have added menthol to the composition of the copending claims because it is also a cooling agent.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
The Examiner submits that the copending claims do not appear to recite amounts and therefore would encompass any amount. Therefore the amount is encompassed by the copending claims. In regards to the mint, both sets of claims use open language and the copending claims do not exclude a mint flavor. Therefore the instant claims are obvious over the copending claims.
Conclusion
Claims 1 and 3-7 are rejected.
No claims allowed.
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEZAH ROBERTS whose telephone number is (571)272-1071. The examiner can normally be reached Monday-Friday 11:00-7:30.
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, Sahana Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LEZAH ROBERTS/Primary Examiner, Art Unit 1612
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