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`Remarks
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`ATWAL et al.
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`Appl. No. 11/797,082
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`Reconsideration of this application is respectfully requested. Upon entry of this
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`Amendment, claims 1, 3, 9-13, 15, 17, 18, 27, 28, 54, 56, 62—73 and 214 are pending in the
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`application, with claims 1 and 54 being the independent claims. Claims 2, 6, 55, and 59
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`are sought to be cancelled without prejudice to or disclaimer of the subject matter therein.
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`Claims 1, 9, 12, 17, 27, 28, 54, 62, 65, 67, 69, 70, and 214 are sought to be amended, and
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`new claims 215 and 216 are sought to be added. These changes are believed to introduce
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`no new matter, and their entry is respectfully requested. Applicants assert the right to file
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`one or more continuing applications for the canceled subject matter. Support for the
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`amendments can be found in the original specification and claims as filed.
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`New claims 215 and 216 have been added to provide a proper antecedent basis for
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`the term "administered" recited in claims 17, 18, 27, 28, 67, 68, 69, 70, and 21.4. Support
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`for new claim 215 can be found at paragraph [0078], at page 18 of the specification as
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`filed. Support for new claim 216 can be found at paragraph [0122], at page 29 of the
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`specification as filed.
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`Claim 1 has been amended by adding the term "TRPMS" after "a taste modulating
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`protein" to specify that
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`the taste modulating protein is TRPMS.
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`Support
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`for this
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`amendment can be found at paragraph [0084] of the specification as filed. Claim 1 has
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`also been amended by deleting the possibility of Arl, Ar2 and Ar3 for being an optionally
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`substituted heteroaryl.
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`Claims 9 and 62 have been amended by deleting the heteroaryl groups, i.e., C-
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`attached pyridyl, C-attached pyrimidyl, and C-attached pyridazinyl.
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`Atty. Dkt. No. 2305.033000l/TJS/THN
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`ATWAL er al.
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`Appl. No. 11/797,082
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`Claims 12 and 65 have been amended by correctly reciting the chemical names of
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`the 1St and 5th compounds.
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`Claim 17 has been amended by replacing the term "hygeinic" with "hygienic" to
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`correct a typographical error.
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`Claims 17, 27, and 28 have been amended to depend from new claim 215.
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`Claim 54 has been amended by adding the phrase "expressing TRPMS" after "a
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`taste receptor cell". Support for this amendment can be found at paragraphs [0122] and
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`[0084] of the specification as filed. Additionally, claim 54 has been amended by deleting
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`the possibility of Arl, Ar2 and Ar3 for being an optionally substituted heteroaryl.
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`Claims 67, 69, 70, and 214 have been amended to depend from new claim 216.
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`Applicants submit that no new matter has been introduced by amendments to
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`claims 1, 9, 54, and 62 since deletion of individual members of Markush expression does
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`not constitute new matter. See, In re Johnson and Farnham, 194 U.S.P.Q. 187 (CCPA
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`1977).
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`Rejections Under 35 US. C. 1 12, first paragraph
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`Claims 1-3, 6, 9-12, 17, 18, 27, 28, 54—56, 59, 62-73, and 214 have been rejected
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`under 35 U.S.C. § 112, first paragraph, because the specification, while being enabling for
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`inhibition of some taste modulating proteins, such as TRPMS, allegedly does not
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`reasonable provide enablement for inhibition of all taste modulating proteins, or inhibition
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`of the depolarization of all taste receptor cells. Applicants respectfully traverse this
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`rejection. $01er in an effort to expedite prosecution, and without acquiescing to the
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`propriety of the rejection, claim 1 has been amended to replace "taste modulating protein"
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`with "taste modulating protein TRPMS", and claim 54 has been amended by replacing the
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`Atty. Dkt. No. 2305.0330001/TJS/THN
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`- 12 «
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`ATWAL et al.
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`Appl. No. 11/797,082
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`phrase "a taste receptor cell" with "a taste receptor cell expressing TRPMS”, as discussed
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`above. Applicants respectfully submit that this rejection of claims 1—3, 6, 9—12, 17, 18, 27,
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`28, 54—56, 59, 62-73, and 214 has been rendered moot, and request that this rejection be
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`reconsidered and withdrawn. Claims 2, 6, 55 and 59 have been canceled.
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`Further, claims 1—3, 6, 9, 13, 15, 17, 18, 27, 28, 54-56, 59, 62, 66—73, and 214 have
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`been rejected under 35 U.S.C. § 112, first paragraph, because the specification, while
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`being enabling for inhibition of the taste modulating protein TRPMS and inhibition of the
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`depolarization of a taste receptor cell expressing TRPMS with some compounds of
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`Formula I, in which Arl, Ar2, and Ar3 are optionally substituted phenyl, allegedly does not
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`provide enablement for all claimed compounds of Formula I, in which Arl, Arz, and Ar3
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`may be heteroaryl. Applicants respectfully traverse this rejection. $01er in an effort to
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`expedite prosecutéon, and without acquiescing to the propréety of the rejection, claims 1, 2,
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`9, 54, and 62 have been amended by deleting the possibility for any of Arl, Ar2 and Ar3 be
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`an optionally substituted heteroaryl, as discussed above. Applicants respectfully submit
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`that this rejection of claims 1-3, 6, 9, 13, 15, 17, 18, 27, 28, 54-56, 59, 62, 66-73, and 214
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`has been rendered moot, and request that this rejection be reconsidered and withdrawn.
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`Claims 2, 6, 55 and 59 have been canceled.
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`Provisional Obviousness Type Double Patenting Rejection
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`Claims 1-3, 6, 9-13, 15, 17, 18, 27, 28, 54—56, 59, 62-73, and 214 have been
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`provisionally rejected on the ground of nonstatutory obviousness-type double patenting as
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`allegedly being unpatentable over claims 1-7 of copending Application No. 12/212,508
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`("the '508 application"). Applicants respectfully traverse this rejection and request that
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`this provisional rejection be held in abeyance until
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`the claims are found allowable.
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`Atty. Dkt. No. 2305.0330001/TJS/THN
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`ATWAL et al.
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`Appl. No. 11/797,082
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`Applicants further note that the present application has an earlier effective filing date than
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`the ‘508 application. Applicants submit
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`that
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`the present application is otherwise
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`allowable, and any potential obviousness-type double-patenting issues can be considered
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`in the later-filed ‘508 application. See MPEP 804 LB. 1.
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`Conclusion
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`All of the stated grounds of objection and rejection have been properly traversed,
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`accommodated, or rendered moot. Applicants therefore respectfully request that the
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`Examiner reconsider all presently outstanding objections and rejections and that they be
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`withdrawn. Applicants believe that a full and complete reply has been made to the
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`outstanding Office Action and, as such,
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`the present application is in condition for
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`allowance.
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`If the Examiner believes, for any reason, that personal communication will
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`expedite prosecution of this application,
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`the Examiner is invited to telephone the
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`undersigned at the number provided.
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`Atty. Dkt. No. 2305.0330001/TJS/T’Hl\l
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`- 14 —
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`ATWAL et al.
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`Appl. No. 11/797,082
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`Prompt and favorable consideration of this Amendment and Reply is respectfully
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`requested.
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`Respectfully submitted,
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`/
`STEmE, KESS
`i
`ff
`W
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`Uta, QQLDSW‘N & on P.L.L.c.
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`TimothyJ. ‘1 fiaJ/r.
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`
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`Attorney for‘Applicants
`Registration No. 41,306
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`Date:
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`
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`25-
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`1100 New York Avenue, NW.
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`Washington, DC. 20005-3934
`(202) 371-2600
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`1262787_l .DOC
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`Atty. Dkt. No. 2305.0330001/TJS/THN
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`
