CTNF 18/692,095 CTNF 86860 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 This action is in response to papers filed March 16, 2026. Applicant’s reply to the restriction/election requirement of January 15, 2026 has been entered. Claims 1 and 3-20 have been amended. Claims 1-20 are pending in the application. Priority Applicant’s claim for the benefit of prior-filed WIPO International Application No. PCT/EP2022/074346, filed September 1, 2022 under 35 U.S.C. 365(c), is hereby acknowledged. Acknowledgment is also made of Applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of French Patent Application No. 2109681, filed in the French Republic on September 15, 2021, has been received as required by 37 CFR 1.55. Election/Restrictions Applicant's election with traverse of Group I, claims 1-19, is acknowledged. Applicant’s elections of i) “ hexyl/succinyl dimethicone crosspolymer ” as the species of silicone elastomer containing carboxylic acid functions, ii) “ trimethylsiloxysilicate dimethiconol crosspolymer ” as the species of copolymer based on silicone resin and on silicone of dimethiconol, iii) “ isododecane ” as the species of oil, iv) “ isopropanol ” as the species of further constituent, and v) “ perfluoroalkyl trialkoxysilane ” as the species of compound which coats the pigment are all also acknowledged. The Examiner has determined that claims 1-5, 7-10, and 12-16 read on the elected subject matter. The traversal is on the following grounds: 1. “claim 20 depends from claim 1” and “sufficient overlap of subject matter exists” that the “search and examination for both groups would not be overly burdensome”; and 2. there is “no extra burden related to search and examination” of all species. This is not found persuasive because: 1. Groups I and II are directed to statutorily distinct classes of invention (i.e. product and process) and have acquired a separate status in the art in view of the different classification. 2. The identified species are mutually exclusive. Accordingly, claims 6, 11, and 17-20 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected subject matter, there being no allowable generic or linking claim. The restriction/election requirement is still deemed proper, maintained, and is therefore made FINAL. Applicant timely traversed the restriction (election) requirement in the reply filed on March 16, 2026. Claims 1-5, 7-10, and 12-16 are under examination. Claim Objections Claims 1-5, 7-10, and 12-16 are objected to because of the following: i). The preamble for independent claim 1 should be “A composition for caring for and/or making up keratin materials”. ii). The preamble for dependent claims 2-5, 7-10, and 12-16 should state “The composition according to…”. iii). In claims 4, 5, 7-10, 13, 14, and 16, the term “where” appears to be a typographical error for the intended term “wherein”. iv). In claim 5, the chemical compounds recited should be separated by commas. There should be an “and” between the recitation of compound 11 and of compound 12. v). In claim 7, the term “Hexyl/Succinyl Dimethicone Crosspolymer” should not be in all caps. Since this term appears to be an INCI name, the first letter of the name starts with a capital letter; subsequent letters are lowercase. vi). In claim 9, there is an extraneous “by weight” between “active material” and “relative to”. vii). In claim 12, the term “Hexyl/Succinyl Dimethicone Crosspolymer” should not be in all caps. Since this term appears to be an INCI name, the first letter of the name starts with a capital letter; subsequent letters are lowercase. viii) In claim 14, the term “Trimethylsiloxysilicate Dimethiconol Crosspolymer” should not be in all caps. Since this term appears to be an INCI name, the first letter of the name starts with a capital letter; subsequent letters are lowercase. Appropriate correction is required. Obviousness-Type 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 § 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 nonstatutory 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 1-5, 7-10, and 12-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of copending Application No. 18/434,567. Applicant’s elected subject matter is directed to a composition comprising Hexyl/Succinyl Dimethicone Crosspolymer (i.e. silicone elastomer); Trimethylsiloxysilicate Dimethiconol Crosspolymer; isododecane (i.e. oil); and a C2-C6 mono alcohol; wherein the composition is anhydrous; wherein the silicone elastomer is in dispersion with the oil and is present in the composition in the amount of 2-25 wt%; wherein the Trimethylsiloxysilicate Dimethiconol Crosspolymer is present in the composition in the amount of 1-40 wt%; and wherein the mono alcohol is present in the composition in the amount of 1-20 wt%. Claims 1-30 of copending Application No. 18/434,567 provide for a composition that can comprise Hexyl/Succinyl Dimethicone Crosspolymer (i.e. silicone elastomer); Trimethylsiloxysilicate Dimethiconol Crosspolymer; isododecane (i.e. oil); and a C2-C6 mono alcohol; wherein the composition is anhydrous; wherein the silicone elastomer is in dispersion with the oil and is present in the composition in the amount of 2-25 wt%; and wherein the mono alcohol is present in the composition in the amount of 0.1-10 wt%. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims place no limits on whether the composition is solid or non-solid. Moreover, the disclosure of U.S. Appl. No. 18/434,567 discloses that the preferable amount of Trimethylsiloxysilicate Dimethiconol Crosspolymer in the composition is about 1-30 wt% (see e.g. paragraph 0234). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claim Rejections - 35 USC § 112(b) 07-30-02 AIA The following is a quotation of 35 U.S.C. 112(b): (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 07-34-01 Claims 1-5, 7-10, and 12-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 stipulates that the composition comprises “at least one copolymer based on silicone resin and on silicone of dimethiconol type”. One of ordinary skill in the art cannot definitively ascertain what copolymer is “based on silicone resin and on silicone of dimethiconol type”, or even the metes and bounds of such an expression. Claim 2, which depends from claim 1, stipulates in a wherein clause that “it is anhydrous”. One of ordinary skill in the art cannot definitively ascertain the metes and bounds of “it”. For example, is “it” the composition as a whole? Or is “it” the medium? Or is “it” the polymer? Or what? Claim 3, which depends from claim 1, stipulates in a wherein clause that the composition comprises “a content of active material of the at least one silicone elastomer containing carboxylic acid functions” in the range recited. Claim 1 provides that the composition comprises element a) and element b), and element a) is “a silicone elastomer containing carboxylic acid functions”. Claim 1 says nothing about “an active material”. One of ordinary skill in the art thus cannot definitively ascertain if the amount stipulated in claim 3 is for element a), or something else, e.g. some sort of active material somehow related to element a). In the latter case, one of ordinary skill in the art cannot make heads or tails out of the metes and bounds of the “active material”. Claim 9, which depends from claim 8, and ultimately from claim 1, also makes reference to “silicone elastomer active material” and is indefinite for the same reasons just discussed for claim 3. Claims 2-5, 7-10, and 12-16 are indefinite for depending from an indefinite claim. 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. 07-23-aia AIA The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. 07-20-02-aia AIA This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. 07-21-aia AIA Claim s 1-5, 7-10, and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Colaco et al. (U.S. Patent Application Pub. No. 2015/0175751), in view of Kadlec et al. (U.S. Patent Application Pub. No. 2016/0200876) . Applicant Claims Applicant’s elected subject matter is directed to a composition comprising Hexyl/Succinyl Dimethicone Crosspolymer (i.e. silicone elastomer); Trimethylsiloxysilicate Dimethiconol Crosspolymer; isododecane (i.e. oil); and a C2-C6 mono alcohol; wherein the composition is anhydrous; wherein the silicone elastomer is in dispersion with the oil and is present in the composition in the amount of 2-25 wt%; wherein the Trimethylsiloxysilicate Dimethiconol Crosspolymer is present in the composition in the amount of 1-40 wt%; and wherein the mono alcohol is present in the composition in the amount of 0.1-10 wt%. Determination of the Scope and Content of the Prior Art (MPEP §2141.01) Colaco et al. disclose a cosmetic composition comprising a gelling silicone elastomer; Trimethylsiloxysilicate Dimethiconol Crosspolymer; isododecane (i.e. oil); and ethanol; wherein the composition can be anhydrous; wherein the silicone elastomer is present in the composition in the amount of e.g. 0.1-15 wt%; wherein the Trimethylsiloxysilicate Dimethiconol Crosspolymer is present in the composition in the amount of e.g. about 13 wt%; and wherein the composition exhibits improved transfer resistance and comfort (abstract; paragraphs 0002, 0005, 0007, 0015, 0019, 0027, 0030, 0032-0034, 0039, 0040, 0042; examples). Kadlec et al. disclose a composition comprising e.g. Hexyl/Succinyl Dimethicone Crosspolymer (i.e. silicone elastomer; i.e. the product formed by the reaction between dimethicone and a combination of allyl succinic anhydride and hexene, followed by crosslinking with Hexanediol) is a film former and gelling agent with applications in cosmetic compositions, and, compared to conventional silicone elastomer gels, provides significantly improved dispersivity; enhanced substantivity, durability, and long lasting wear; and improved sensory profile/comfort (abstract; paragraphs 0003, 0004, 0007-0010, 0013, 0064-0096; examples). Ascertainment of the Difference Between the Scope of the Prior Art and the Claims (MPEP §2141.02) Colaco et al. do not explicitly disclose that the gelling silicone elastomer is Hexyl/Succinyl Dimethicone Crosspolymer. This deficiency is cured by the teachings of Kadlec et al. Finding of Prima Facie Obviousness Rationale and Motivation (MPEP §2142-2143) It would have been prima facie obvious for one of ordinary skill in the art at the time the present application was filed to combine the respective teachings of Colaco et al. and Kadlec et al., outlined supra , to devise Applicant’s claimed composition. Colaco et al. disclose a cosmetic composition comprising a gelling silicone elastomer; Trimethylsiloxysilicate Dimethiconol Crosspolymer; isododecane (i.e. oil); and ethanol; wherein the composition can be anhydrous; wherein the silicone elastomer is present in the composition in the amount of e.g. 0.1-15 wt%; wherein the Trimethylsiloxysilicate Dimethiconol Crosspolymer is present in the composition in the amount of e.g. about 13 wt%; and wherein the composition exhibits improved transfer resistance and comfort. Since Kadlec et al. disclose a composition comprising e.g. Hexyl/Succinyl Dimethicone Crosspolymer (i.e. silicone elastomer; i.e. the product formed by the reaction between dimethicone and a combination of allyl succinic anhydride and hexene, followed by crosslinking with Hexanediol) is a film former and gelling agent with applications in cosmetic compositions, and, compared to conventional silicone elastomer gels, provides significantly improved dispersivity; enhanced substantivity, durability, and long lasting wear; and improved sensory profile/comfort; one of ordinary skill in the art would thus be motivated to employ Hexyl/Succinyl Dimethicone Crosspolymer as the gelling silicone elastomer in the Colaco et al. composition, the reasonable expectation that the resulting composition will exhibit improved transfer resistance and comfort. Colaco et al. disclose that the vehicle may comprise e.g. isododecane and ethanol and is present in the amount of e.g. 25-99 wt% of the composition (see e.g. paragraph 0040). Colaco et al. also provide that isododecane may comprise e.g. 10-20 wt% of the composition (see e.g. paragraph 0034). Hence, Colaco et al. provide that ethanol may be present in the amount of e.g. about 5-15 wt% to achieve about 25 wt% vehicle. In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a). From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary. Conclusion No claims are allowed. Inquiries Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID BROWE whose telephone number is (571)270-1320. The examiner can normally be reached Monday - Friday, 9:30 AM to 6 PM EST. 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, Sue Liu can be reached at 571-272-5539. 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. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /DAVID BROWE/Primary Examiner, Art Unit 1617 Application/Control Number: 18/692,095 Page 2 Art Unit: 1617 Application/Control Number: 18/692,095 Page 3 Art Unit: 1617 Application/Control Number: 18/692,095 Page 4 Art Unit: 1617 Application/Control Number: 18/692,095 Page 5 Art Unit: 1617 Application/Control Number: 18/692,095 Page 6 Art Unit: 1617 Application/Control Number: 18/692,095 Page 7 Art Unit: 1617 Application/Control Number: 18/692,095 Page 8 Art Unit: 1617 Application/Control Number: 18/692,095 Page 9 Art Unit: 1617 Application/Control Number: 18/692,095 Page 10 Art Unit: 1617 Application/Control Number: 18/692,095 Page 11 Art Unit: 1617 Application/Control Number: 18/692,095 Page 12 Art Unit: 1617 Application/Control Number: 18/692,095 Page 13 Art Unit: 1617 Application/Control Number: 18/692,095 Page 14 Art Unit: 1617
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