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 .
Response to Restriction Requirement
Applicant’s election of Group II and 2-methyl-1-(2-(5-(p-toyl)-1H-imidazol-2-yl)piperidin-1-yl)butan-1-one in the reply filed on November 12, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-6 and 13-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on November 12, 2025.
Claims
Claim Rejections - 35 USC § 102 - Anticipation
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 7-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Galopin et al. (7,414,152) as evidenced by Lachenmeier et al. (2013).
Galopin et al. disclose N-substituted P-menthane carboxamides as cooling compounds. The compounds have the following formula:
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The formula encompasses N-(4-cyanomethylphenyl) p-menthanecarboxamide (Example 1), meeting N-[4-(cyanomethyl)phenyl]-(1S,2S,5R)-2-isopropyl-5-methylcyclohexane-carboxamide of instant claim 9.The compounds are added to mouthwash compositions comprising alcohol. A mouthwash composition comprises a 1% solution of the compound of Example 1 in alcohol, meeting instant claim 7.
Ethanol is the common alcohol used in mouthwash compositions (as evidenced by Lachenmeier et al.). Therefore it is reasonable to conclude that the alcohol of Galopin et al. is ethanol.
Galopin et al. anticipate the instant claims.
Obvious Type 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.
1) Claims 7-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6-12 of copending Application No. 18/286,525 (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 they recite a chemical compound of substantially the same formula comprising the same three ring structure as the core and a functional group R that encompasses a group having optionally one S atom. The instant claims differ from the copending claims insofar as the instant claims are broader insofar as the instant claims recite a second compound with a different formula.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
2) Claims 7-12 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 they recite a chemical compound of substantially the same formula encompassing the same piperidine ring structure as the core and a functional group R that encompasses a group having optionally one S atom. The instant claims differ from the copending claims insofar as the copending claims are broader in scope insofar as the copending claims encompass more compounds with different ring structures attached to the piperidine ring.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
3) Claims 7-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-19 of copending Application No. 18/005425 (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 they recite a chemical compound of substantially the same formula encompassing the same piperidine ring structure as the core and a functional group R that encompasses a group having optionally one S atom. The instant claims differ from the copending claims insofar as the copending claims are narrower in scope insofar as the copending claims encompass specific compounds in the independent claim. However, the compounds are recited in the dependent claims of the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
4) Claims 7-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/005404 (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 they recite a chemical compound of substantially the same formula encompassing the same piperidine ring structure as the core and a functional group R that encompasses a group having optionally one S atom. The instant claims differ from the copending claims insofar as the instant claims are narrower in scope insofar as the copending claims encompass recites a smaller core in the independent claim. However, the core of the instant claims are recited in the dependent claims of the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
5) Claims 7-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-7 of copending Application No. 18/275,055 (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 they recite a chemical compound of substantially the same formula encompassing the same piperidine ring structure as the core and a functional group R that encompasses a group having optionally one S atom. The instant claims differ from the copending claims insofar as the instant claims are narrower in scope insofar as the they further define the sulfur containing functional group.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 7-12 are rejected.
Claim 1-6 and 13-14 are withdrawn.
No claims allowed.
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.
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/LEZAH ROBERTS/Primary Examiner, Art Unit 1612