CTFR 18/254,901 CTFR 89235 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 The Applicant’s reply filed on 2/26/26 is acknowledged. Claims 1-8 are pending. Claims 7 and 8 have been withdrawn. Claim 1 has been amended. Claims 1-6 are under consideration. Objections Withdrawn The objection to the Drawings is withdrawn in view of the amended Drawings. The objection to the Specification is withdrawn in view of the amended Specification. Rejections Withdrawn The rejection of Claims 1-6 under 35 U.S.C. 102(a)(1) as being anticipated by Lezer (US 2006/0057085; cited in IDS) is withdrawn in view of the amended claim(s). Rejections Maintained and New Grounds of Rejections Claim Rejections - 35 USC § 112 07-36 AIA The following is a quotation of 35 U.S.C. 112(d): (d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph: Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. 07-36-01 AIA Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 5 recites “further comprising a component (C) a liquid material selected from the group consisting of water and nonvolatile oils that are liquid at 20°C”, however, claim 1 has been amended to recite “(C) 10 mass % or more of water relative to the total mass of the film-forming composition”. Claim 5 broadens claim 1 by allowing for (C) to be other than water . Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 1-6 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Collin (US 2002/0192251) . Collin teaches a composition such as a mascara containing a physiologically acceptable aqueous medium, cellulose fibrils and a second fiber other than cellulose fibrils (e.g. abstract). Regarding Claims 1, and 3-6, Collin exemplifies a composition (mascara) (e.g. Example 1 [0143]) comprising: 7 wt% powders (Black iron oxide); and 1 wt% Polyamide 0.9 Dtex fibers, 0.3 mm long and 6 µm diameter (calculated to have an aspect ratio of 50); and Around 62.25 wt% water; which results in a mass ratio of (B/A) of 0.14, which is within the claimed range of 0.02-0.4. Regarding Claim 2, as evidenced by the instant Specification, polyamide is a water-insoluble fiber material (e.g. Specification [0029]) . Double Patenting 08-33 AIA 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. 08-37 AIA Claim s 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-4, 6, 7, and 13-16 of copending Application No. 18/254,895 in view of Collin (US 2002/0192251). Both the instant and copending claims recite a film-forming composition for skin, comprising (B) a fiber having an average fiber diameter of 0.1 µm or more and 7 µm or less and an aspect ratio (average fiber length/average fiber diameter) of 20 or more and 300 or less in overlapping amounts relative to the whole film-forming composition; and (C) water. Regarding Claim 1, copending ‘895 does not include (A) powder, wherein a mass ratio of the component (B) to the component (A), (B/A), is 0.02 or more and 0.4 or less. This is made up for by the teachings of Collin. Collin teaches a composition such as a mascara containing a physiologically acceptable aqueous medium, cellulose fibrils and a second fiber other than cellulose fibrils (e.g. abstract). Collin exemplifies a composition (mascara) (e.g. Example 1 [0143]) comprising: 7 wt% powders (Black iron oxide); and 1 wt% Polyamide 0.9 Dtex fibers, 0.3 mm long and 6 µm diameter (calculated to have an aspect ratio of 50); and Around 62.25 wt% water; which results in a mass ratio of (B/A) of 0.14, which is within the claimed range of 0.02-0.4; Regarding Claims 1, and 3-6, it would have been obvious to one of ordinary skill in the art at the time of filing to include the (A) powder of Collin for use in the compositions of ‘895. One of ordinary skill in the art would predicted success as both compositions are film-forming compositions for skin comprising fibers, and would have been motivated to obtain the benefits of coloring the composition with the addition of pigments (e.g. paragraphs 0056-0059). In addition, it would have been obvious to have combined the compositions of ‘895 and Collin. "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.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Claim 2 is met by copending Claim 2 . This is a provisional nonstatutory double patenting rejection. 08-28 AIA 08-28-fti 08-28-aia Claim s 1-6 are directed to an invention not patentably distinct from claim s 1-4, 6, 7, and 13-16 of commonly assigned 18/254,895 . Specifically, see above . 08-28-01-aia The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned 18/254,895, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention. In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement. A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions. 08-37 AIA Claim s 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-11 of copending Application No. 18/253,941 in view of Collin (US 2002/0192251). Both the instant and copending claims recite a film-forming composition, comprising (B) a fiber having an average fiber diameter of 0.1 µm or more and 7 µm or less in overlapping amounts relative to the whole film-forming composition. Regarding Claim 1, copending ‘941 does not include (A) powder, wherein a mass ratio of the component (B) to the component (A), (B/A), is 0.02 or more and 0.4 or less; or (C) water. This is made up for by the teachings of Collin. Collin teaches a composition such as a mascara containing a physiologically acceptable aqueous medium, cellulose fibrils and a second fiber other than cellulose fibrils (e.g. abstract). Collin exemplifies a composition (mascara) (e.g. Example 1 [0143]) comprising: 7 wt% powders (Black iron oxide); and 1 wt% Polyamide 0.9 Dtex fibers, 0.3 mm long and 6 µm diameter (calculated to have an aspect ratio of 50); and Around 62.25 wt% water; which results in a mass ratio of (B/A) of 0.14, which is within the claimed range of 0.02-0.4; Regarding Claims 1, and 3-6, it would have been obvious to one of ordinary skill in the art at the time of filing to include the (A) powder of Collin for use in the compositions of ‘941. One of ordinary skill in the art would predicted success as both compositions are film-forming compositions for skin comprising fibers, and would have been motivated to obtain the benefits of coloring the composition with the addition of pigments (e.g. paragraphs 0056-0059). In addition, it would have been obvious to have combined the compositions of ‘941 and Collin. "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.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Claim 2 is met by copending Claim 3 . This is a provisional nonstatutory double patenting rejection. 08-28 AIA 08-28-fti 08-28-aia Claim s 1-6 are directed to an invention not patentably distinct from claim s 1-11 of commonly assigned 18/253,941 . Specifically, see above . 08-28-01-aia The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned 18/253,941, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention. In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement. A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions. Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 and 17-20 of 12,280,127 in view of Collin (US 2002/0192251). Both the instant and patented claims recite a film-forming composition for skin, comprising (B) a fiber having an average fiber diameter of 0.1 µm or more and 7 µm or less and an aspect ratio (average fiber length/average fiber diameter) of 20 or more and 300 or less in overlapping amounts relative to the whole film-forming composition (claims 1 and 4); and (C) water. Regarding Claim 1, patent ‘127 does not include (A) powder, wherein a mass ratio of the component (B) to the component (A), (B/A), is 0.02 or more and 0.4 or less. This is made up for by the teachings of Collin. Collin teaches a composition such as a mascara containing a physiologically acceptable aqueous medium, cellulose fibrils and a second fiber other than cellulose fibrils (e.g. abstract). Collin exemplifies a composition (mascara) (e.g. Example 1 [0143]) comprising: 7 wt% powders (Black iron oxide); and 1 wt% Polyamide 0.9 Dtex fibers, 0.3 mm long and 6 µm diameter (calculated to have an aspect ratio of 50); and Around 62.25 wt% water; which results in a mass ratio of (B/A) of 0.14, which is within the claimed range of 0.02-0.4; Regarding Claims 1 and 3- 6, it would have been obvious to one of ordinary skill in the art at the time of filing to include the (A) powder of Collin for use in the compositions of ‘127. One of ordinary skill in the art would predicted success as both compositions are film-forming compositions for skin comprising fibers, and would have been motivated to obtain the benefits of coloring the composition with the addition of pigments (e.g. paragraphs 0056-0059). In addition, it would have been obvious to have combined the compositions of ‘895 and Collin. "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.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Claim 2 is met by patented Claim 11. 08-28 AIA 08-28-fti 08-28-aia Claim s 1-6 are directed to an invention not patentably distinct from claim s 1-15 and 17-20 of commonly assigned 12,280,127 . Specifically, see above . 08-28-01-aia The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned 12,280,127, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention. In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement. A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions. Response to Arguments Applicant’s arguments with respect to claim(s) 1-6 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Conclusion No claim is allowed. 07-40 AIA Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL . See MPEP § 706.07(a). 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 extension fee 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 date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30. 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, David Blanchard can be reached on 571-272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /NICOLE P BABSON/ Primary Examiner, Art Unit 1619 Application/Control Number: 18/254,901 Page 2 Art Unit: 1619 Application/Control Number: 18/254,901 Page 3 Art Unit: 1619 Application/Control Number: 18/254,901 Page 4 Art Unit: 1619 Application/Control Number: 18/254,901 Page 5 Art Unit: 1619 Application/Control Number: 18/254,901 Page 6 Art Unit: 1619 Application/Control Number: 18/254,901 Page 7 Art Unit: 1619 Application/Control Number: 18/254,901 Page 8 Art Unit: 1619 Application/Control Number: 18/254,901 Page 9 Art Unit: 1619 Application/Control Number: 18/254,901 Page 10 Art Unit: 1619 Application/Control Number: 18/254,901 Page 11 Art Unit: 1619 Application/Control Number: 18/254,901 Page 12 Art Unit: 1619 Application/Control Number: 18/254,901 Page 13 Art Unit: 1619 Application/Control Number: 18/254,901 Page 14 Art Unit: 1619
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