CTNF 18/293,235 CTNF 77687 DETAILED ACTION 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. The examiner acknowledges receipt of response to restriction requirement filed 03/19/2026, preliminary amendment filed 01/29/2024, and IDS filed 05/29/2026, 09/18/2025, 07/08/2025, and 04/16/2024. Claims 4-9 are amended, New claims 11-15 are added. Claims 1-15 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 disagrees. 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 Therefore, the requirement is still deemed proper and is therefore made FINAL. 08-05 AIA Claim s 8-15 stand withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventive species , there being no allowable generic or linking claim.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 1-7 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. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 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 AIA Claim(s) 1-3 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by METTEN DIANE et al., (DE102013225761 A1, using the Eng. Trans, Espacenet) . 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%. 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%. The comprising language of the claims is open. Claim 3 selects component B from B1 and B2 such that the prior art on need to teach B1 or B2 to meet the claim. Thus, for claim 1-3 and 6, the hair treatment composition of METTEN DIANE comprising 0.001-10 wt% trimethylsiloxysilicate (component B), 0.001-10 wt% polyalkylsilsesquioxane (component B) and 10.1-98% silicone and 33-75 wt% or 40-45 wt% water, which are both less than 80%, teaches all the elements of claims 1-3 and 6. The comprising language of the claims is open. For claim 7, the composition of METTEN DIANE comprises dyes (paragraph [0011], [0253], [0254], [0258]). Thus, METTEN DIANE teaches all the elements of claims 1-3 and 6-7 . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-21-aia AIA Claim (s) 1, 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over METTEN DIANE et al., (DE102013225761 A1, using the Eng. Trans, Espacenet) as applied to claim 1 . Claims 4 and 5 depend form claim 1. METTEN DIANE has been described above to anticipate claim 1. 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. Therefore, METTEN DIANE renders claims 4 and 5 prima facie obvious . Double Patenting 08-33 AIA 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. 08-34 AIA Claim s 1-7 are rejected on the ground of non-statutory double patenting as being unpatentable over claim s 1-12; and1-15 of U.S. Patent No s. 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 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. Thus the issued claims render the examined claims prima facie obvious . Prior art of Interest : Yamada et al. (US 20120251603 A1, teaches Sunscreen Emulsified Cosmetic Composition comprising 5% polymethylsilsesquioxane, 0.5% trimethylsiloxysilicate, 54.39% purified water (calculated). The comprising language of the claims is open. This composition is capable of being used as hair cosmetic composition because same compositions must have the same effect. In this case the claimed composition in claim 1 and that in the formulation example 2 of Yamada are the same. No claim is allowed. 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). 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, 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. 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. /BLESSING M FUBARA/Primary Examiner, Art Unit 1613 Application/Control Number: 18/293,235 Page 2 Art Unit: 1613 Application/Control Number: 18/293,235 Page 3 Art Unit: 1613 Application/Control Number: 18/293,235 Page 4 Art Unit: 1613 Application/Control Number: 18/293,235 Page 5 Art Unit: 1613 Application/Control Number: 18/293,235 Page 6 Art Unit: 1613 Application/Control Number: 18/293,235 Page 7 Art Unit: 1613 Application/Control Number: 18/293,235 Page 8 Art Unit: 1613 Application/Control Number: 18/293,235 Page 9 Art Unit: 1613
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