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 .
The examiner acknowledges receipt of amendment and remarks filed 09/04/2026 and IDS filed 09/10/2026.
Claim 1 is amended.
Claims 2-3 are canceled.
New claims 16-21 are added.
Claims 1, 4-21 are pending.
Election/Restrictions
In response to the election requirement, applicant elected with traverse, a) hair cosmetic composition, b) trimethylsiloxysilicate as specific disclosed component A, polypropylesilsesquioxane as specific disclosed component B1, and (acrylates/dimethicone) as specific disclosed component B2. Applicant identifies claims 1-7 to read on the elected species. The traversal is on the grounds that HERRLEIN et al. (WO 20161333806 A1) the special technical feature identified by the examiner makes contribution over the art.
Response: The examiner respectfully disagreed Because the special technical feature of MQ silicone resins are known in the art, this technical feature does not make contribution over the prior art.
Therefore, the requirement is still deemed proper and is therefore made FINAL.
Claims 8-15 stand withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventive species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 03/19/2026.
Claims 1, 4-7 and 16-21 are under consideration.
Priority
This application is a 371 of PCT/JP2022/028789 filed 07/26/2022 and which claims benefit of Japanese application 2021-126803 filed 08/02/2021.
Response to Arguments
Applicant's arguments filed 09/04/2026 have been fully considered but they are not persuasive.
Applicant argues that METTEN DIANE does not teach or suggest any of the components for (B) now recited in amended claim 1 and that in METTEN DIANE, polyalkylsilsesquioxane is a required component and there is nothing in METTEN DIANE that the a person of skill in the art would replace the polyalkylsilsesquioxane with the component (B) now in amended claim 1. Thus, in this regard, new claims 17, 18 and 21 are allowable as is claim 1.
Response: The examiner disagrees because there is nothing in METTEN DIANE that specifically teaches that the now recited (B) components, acryl silicone polymer (B2), silicone-modified alicyclic structure-containing polymer (B3), silicone-modified pullulan (B4), and polyurea/urethane silicone (B5) cannot be used in its composition. Furthermore, amended claim 1 states that acryl silicone polymer (B2), silicone-modified alicyclic structure-containing polymer (B3), silicone-modified pullulan (B4), and polyurea/urethane silicone (B5) can be used in the alternative of each. Therefore, one functionally equivalent film forming polymer can be used in place of the other to achieve desired effect of film forming.
Regarding the obviousness-type double patenting rejection, applicant argues that there is nothing in US 12144883 B2 and US 12064505 B2 that makes obvious the current claims.
Response: The examiner disagrees because the issued claims render the examined claims obvious for the reasons stated in the rejection of record.
The amendment necessitates the new rejections below.
New Rejections
Necessitated by Amendment
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 7, 16, 17 and 18 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Baldaro et al. (US 20110189248 A1).
For claim 1, Baldaro teaches hair composition comprising trimethylsiloxysilicate (paragraph [0042]) which meets the limitation of elected component A, Acrylates/Polytrimethylsiloxymethacrylate Copolymer (paragraph [0062]) which is acrylate silicone polymer (component B2), and water (see the whole document with emphasis on paragraph [0082]) meeting component (C).
For claim 7, the hair composition comprises dyes (paragraph [0079]).
For claim 16, the Acrylates/Polytrimethylsiloxymethacrylate Copolymer (paragraph [0062]) is acryl silicone polymer (component B2).
From claims 17 and 18, the composition of Baldaro does not contain polysilsesquioxane, polymethylsilsesquioxane and polypropylsilsesquioxane.
Therefore, Baldaro teaches the elements of claims 1, 7 and 16-18.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 4-7, 16 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over METTEN DIANE et al., (DE102013225761 A1, using the Eng. Trans, Espacenet) in view of BONVALLET et al. (US 20190374458 A1)
METTEN DIANE teaches hair treatment composition comprising 0.001-10 wt% trimethylsiloxysilicate, 0.001-10 wt% polyalkylsilsesquioxane and 10.1-98% silicone (see the Abstract in English) and claim 3 is directed to polypropylsilsesquioxane, the elected component B. See also claims 1-5.
In one embodiment, the water content 33-75 wt% and in particular 40-55 wt% (paragraphs [0057], [0061] or [0172] of the Eng. Trans). The disclosed content of water in the range disclosed is less than 80% as required by claim 6.
Trimethylsiloxysilicate meets the limitation of component (A) which is the elected species, polypropylsilsesquioxane meets the limitation of component B which is the elected species, and water meets the limitation of component C in the amount recited, that is, an amount that is less than 80%. However, the amendment to claim 1 now requires component (B) to be , acryl silicone polymer (B2), silicone-modified alicyclic structure-containing polymer (B3), silicone-modified pullulan (B4), or polyurea/urethane silicone (B5). The comprising language of the claims is open.
METTEN DIANE differs from claim 1 as amended because METTEN DIANE does not teach component (B) as now recited, that is METTEN DIANE does not teach acryl silicone polymer (B2), silicone-modified alicyclic structure-containing polymer (B3), silicone-modified pullulan (B4), or polyurea/urethane silicone (B5) that would meet the requirement for component (B). However, BONVALLET teaches that polypropylsilsesquioxane and Acrylates/Polytrimethylsiloxymethacrylate Copolymer are film forming polymers (paragraph [0017]) for use in hair care compositions (paragraph [0084]). Thus, polypropylsilsesquioxane and Acrylates/Polytrimethylsiloxymethacrylate Copolymer are functionally equivalent and one functionally equivalent film forming polymer can be used in place of the other for predictable film forming effect on hair. Acrylates/Polytrimethylsiloxymethacrylate Copolymer is an acryl silicone polymer.
For claim 4, the A/(A + B) would be (0.001-10 wt%)/(0.001-10 wt%) +(0.001-10 wt%) or (0.001-10 wt%)/(0.002-20 wt%). Thus, when A is 10, and A+B is 1, the ratio is 10, or when A is 10, and A + B is 0.5, the ratio is 20. Thus, at certain concentrations of A and B, the ratio of A/(A+B), is 10 or greater than 10 and less than 90%. The disclosed ratio allows for the claimed ration rendering the requirement of claim 4 obvious.
For claim 5, the total content of A+B is (0.001-10 wt%) +(0.001-10 wt%) = (0.002-20 wt%) and which allows form total content of 1% or greater and less than 40% by mass rendering claim 5 obvious.
For claim 7, the composition of METTEN DIANE comprises dyes (paragraph [0011], [0253], [0254], [0258]).
For claims 16 and 19, Acrylates/Polytrimethylsiloxymethacrylate Copolymer which is an acryl silicone polymer meeting the requirement of claims. 16 and 19
Therefore, METTEN DIANE in combination with BONVALLET renders claims 1, 4-7, 16 and 19 prima facie obvious.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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.
Claims 1, 4-7 and 16-21 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-12; and 1-15 of U.S. Patent Nos. 12144883 B2 and 12064505 B2 respectfully. Although the claims at issue are not identical, they are not patentably distinct from each other because the issued claims teach compositions containing acryl silicone film forming agent, organopolysiloxane and water at 10% or less. The 10% or less of water is less than the 80% water of the examined claims. The issued compositions do not contain polysilsesquioxane, polymethylsilsesquioxane and polypropylsilsesquioxane. Thus, the issued claims render the examined claims prima facie obvious.
Prior art of Interest: Bernet et al. (US 20120171264 A1), hair composition comprising hair dye (paragraph [0051]), Trimethylsiloxysilicate (paragraph [0018]), Acrylates/Polytrimethylsiloxymethacrylate Copolymer (paragraph [0034]) which is an acryl silicone polymer of claims 1, 16 and 18; and water (paragraphs [0044], [0067]).
No claim is allowed.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BLESSING M FUBARA whose telephone number is (571)272-0594. The examiner can normally be reached 7:30 am-6 pm (M-T).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Yong Kwon can be reached at 5712720581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLESSING M FUBARA/Primary Examiner, Art Unit 1613
