DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 29, 2025 has been entered.
Claims 26-37, 57-60 and 62-66 are currently pending and are examined on the merits herein.
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 12/13/2023 is a continuation of PAT 11931326 filed on 07/08/2022 which is a continuation of PCT/GB2021/050050 filed 01/08/2021 which claims priority to UNITED KINGDOM 2000396.8 filed 01/10/2020 and UNITED KINGDOM 2000397.6 filed 01/10/2020.
Information Disclosure Statement
No new information disclosure statement(s) (IDS) has been filed.
Response to Arguments
Applicant’s arguments over the 35 U.S.C. 103 rejection over Bernstein et al. (US20160067237A1), in view of Goldman et al. (US 20110271473 A1) of claims 26-37 and 56-60 are withdrawn.
The Examiner was unable to reach the attorney in order to have an electronic filing of a T.D. filing over CON of 17/861,054 07/08/2022 PAT 11931326.
The rejection is as below:
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 26-37, 57-60 and 62-66 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 35 of US Pat No. 11931326.
The reference claim 1 of ‘326 are to:
A method for reducing a habitual urge to smoke tobacco or vape nicotine in an individual subject, the method comprising applying a composition to a dermal layer of the lips of the individual subject when the individual subject senses the urge to smoke or vape, wherein the composition comprises at least one sanshool while the claims herein are drawn to a method for reducing a habitual urge to consume food between regular mealtimes in an individual subject, the method comprising applying a composition to a dermal layer of the lips of the individual subject when the individual subject senses the urge to consume food, and wherein: the composition comprises at least one sanshool, the composition comprises an amount of the at least one sanshool sufficient to induce a somatosensory sensation in the dermal layer of the lips, and the composition is formulated as at least one of a lip balm, a lip salve, a lip gloss or a lipstick. Both are used in treatment of habitual urges.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAYLA SOROUSH whose telephone number is (571)272-5008. The examiner can normally be reached on Monday thru Friday; 8:30 AM to 5:00 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, James Henry Alstrum-Acevedo, can be reached on (571)272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAYLA SOROUSH/ Primary Examiner, Art Unit 1622