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 .
DETAILED ACTION
This office action is in response to applicant’s filing dated on May 24, 2024.
. Status of Claims
Claims 1-26 are currently pending and are the subject of this office action.
Claims 1-26 are presently under examination.
Priority
This application is a continuation of United States Patent Application serial number 17/701,160, filed March 22, 2022, now U.S. Patent 11,992,470, which is a continuation of United States Patent Application serial number 17/018,148, filed September 11, 2020, now U.S. Patent 11,344,516, which is a continuation of United States Patent Application serial number 16/695,824, filed November 26, 2019, now U.S. Patent 10,772,853, which is a continuation of United States Patent Application serial number 16/400,278, filed May 1, 2019, now U.S. Patent 10,493,047, which is a continuation of International (PCT) Patent Application Serial No. PCT/US2017/059628, filed November 2, 2017, which claims the benefit of and priority to United States Provisional Patent Application serial number 62/416,345, filed November 2, 2016
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 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.
1) Claims 1-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 10,765,649. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims and the ‘649 patent claim very similar capsaicin formulations.
2) Claims 1-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-32 of U.S. Patent No. 11,344,516. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims and the ‘649 patent claim very similar capsaicin formulations.
3) Claims 1-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 10,772,853. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims and the ‘649 patent claim very similar capsaicin formulations.
4) Claims 1-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 10,493,047. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims and the ‘649 patent claim very similar capsaicin formulations.
5) Claims 1-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,992,470. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims and the ‘649 patent claim very similar capsaicin formulations.
Conclusion
No claims are allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCOS L SZNAIDMAN whose telephone number is (571)270-3498. The examiner can normally be reached Flexing M-F 7 AM-7 PM.
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, Amy L. Clark can be reached on 571 272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARCOS L SZNAIDMAN/
Primary Examiner, Art Unit 1628
April 15, 2026.
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