DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 11/4/2025 has been entered.
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 .
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 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.
Response to Amendment
In the amendment dated 11/04/2025, the following has occurred: Claims 1, 9, and 22 have been amended.
Claims 17 – 19 have been previously canceled.
Claims 1 – 16, and 20 – 22 are pending.
Priority
The instant invention was filed on 5/13/2016 with a provisional application 62/160,934 filed on 5/13/2015.
The Examiner notes the following roughly dated comment within “Photon Shakes up Medical Communications Industry, Announces Aggressive Pricing Structure to Become the Most Accessible Collaborative Medical Care Platform in the Country” (Emphasis added)
Already making a difference for health care professionals across the U.S., Photon has been hailed a “game-changer” by IASIS Healthcare’s Chief Clinical Officer Tedd Adair, who partnered with Photon in 2014 to integrate the platform across the network’s three Metro Phoenix-based hospitals. Following a wildly successful trial period which netted an increase in positive outcomes, reduced ER wait times and increased patient satisfaction, IASIS implemented the platform across its hospitals in Utah and Texas, as well.
Claim Rejections - 35 USC § 101
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 – 16 and 20 – 22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. As stated in the Specification, paragraph 4, the invention is, “In an aspect, provided are methods and systems for managing data and transmitting information. The system and methods of the present disclosure can be used to communication diagnostic information and response to and from remote users, such as physicians and care providers.” The invention is not an improvement of communication tools but rather a communication application.
The claims, understood as a whole and in light of the Specification, recite subject matter within a statutory category as a process (claims 1 -16, and 20 – 22) which recite steps of
Claim 1:
generating, in response to occurrence of a patient event, a standardized patient profile comprising a patient identifier and information relating to a particular patient, wherein the patient event is one or more of a visit to a medical facility by the particular patient, admission to a medical facility of the particular patient, treatment of the particular patient at a medical facility, or transfer of the particular patient to or from a medical facility, wherein generating the standardized patient profile comprises determining profile information relating to the health of the particular patient and populating at least a portion of the standardized patient profile with the profile information, wherein the profile information comprises at least diagnostic information;
linking one or more medical professionals of the plurality of medical professionals to the generated standardized patient profile, wherein the one or more linked medical professionals are capable of accessing the standardized patient profile over a secure network connection and communicating with each other over the secure network connection whether or not the one or more linked medical professionals have access to the proprietary EMR system of the medical facility:
establishing, in response to occurrence of the patient event, a patient-centric communication session, wherein each of the linked medical professionals has secure access to the communication session for reading and posting information and wherein the communication session allows secure access to the standardized patient profile whether or not a user accessing the standardized patient profile has access to the proprietary EMR system associated with the medical facility;
receiving, via the communication session and from a medical professional located at the medical facility with the particular patient at the time of the receiving, a request for consultation relating to the standardized patient profile and the patient event, wherein the request for consultation is received in real-time relative to the patient event;
automatically transmitting, via the communication session and by one or more processors, a notice to the one or more linked medical professionals, wherein the notice indicates that the request for consultation has been received relating to the standardized patient profile and the patient event, wherein the notice is transmitted in real-time relative to the patient event;
receiving, via the communication session and by one or more processors, a request to access the standardized patient profile from the one or more linked medical professionals in response to the notice;
granting access, via the communication session and, to the standardized patient profile including the request for consultation, via the secure network connection, wherein granting access comprises allowing one or more linked medical professionals to view at least the diagnostic information in the standardized patient profile and to view and write communications in the communication session, wherein the access may be granted whether or not a recipient has access to the proprietary EMR system of the medical facility;
receiving, via the communication session and from one or more linked medical professionals, diagnostic consultation information comprising a diagnosis or disposition relating to the patient event;
automatically transmitting, via the communication session and by one or more processors, a second notice to the one or more linked medical professionals, wherein the second notice indicates that the diagnostic consultation information has been received relating to the standardized patient profile and the patient event, and wherein presentation of the diagnostic consultation information to the one or more of the linked medical professionals is customized based on one or more rules associated with the one or more linked medical professionals;
closing the communication session in response to one or more of expiration of a time period or conclusion of the patient event; and
storing an electronic record of the communication session comprising the communications between the linked medical professionals that participated in the communication session, wherein the electronic record is capable of being transmitted or outputted in one or more electronic formats, and wherein the electronic record is automatically stored in the EMR associated with the particular patient.
Claim 9:
generating or accessing, in response to occurrence of a patient event, a patient profile comprising a patient identifier and information relating to a particular patient, wherein the patient event is one or more of a visit to a medical facility by the particular patient, admission to a medical facility of the particular patient, treatment of the particular patient at a medical facility, or transfer of the particular patient to or from a medical facility,, wherein the standardized patient profile comprises at least diagnostic information, and wherein the standardized patient profile is at least partially populated from an electronic medical record (EMR) associated with a proprietary EMR system of the medical facility;
linking one or more service providers of the plurality of service providers to the generated standardized patient profile, wherein the one or more linked service providers are capable of accessing the standardized patient profile whether or not the one or more linked service providers have access to the proprietary EMR system of the medical facility;
establishing, in response to occurrence of the patient event, a patient-centric communication session, wherein each of the linked service providers has secure access to the communication session and wherein the communication session allows secure access to the standardized patient profile whether or not a recipient has access to the proprietary EMR system of the medical facility;
receiving a role selection of a first service provider of the one or more linked service provider, wherein the role selection indicates a role of the first service provider and one or more rules defining information presented to the first service provider via the communication session;
receiving, via the communication session and from the first service provider, a request for consultation relating to the standardized patient profile and the patient event;
automatically transmitting, via the communication session and by one or more processors, a notice to the one or more linked service providers, wherein the notice indicates that an update has been received relating to the standardized patient profile and the patient event, and wherein the notice comprises at least a portion of the diagnostic information associated with the standardized patient profile;
receiving, via the communication session and from one or more linked medical professionals and in response to the notice, diagnostic consultation information comprising a diagnosis or disposition relating to the patient event;
automatically transmitting, via the communication session and by one or more processors, a second notice to the one or more linked service providers, wherein the second notice indicates that the diagnostic consultation information has been received relating to the standardized patient profile and the patient event, and wherein presentation of the diagnostic consultation information to the first service provider is customized based on the one or more rules associated with the role selection of the first service provider;
closing the communication session in response to one or more of expiration of a time period or an action associated with the patient or patient event; and
storing an electronic record of the communication session comprising the communications between the linked medical professionals that participated in the communication session, wherein the electronic record may be is capable of being transmitted or outputted in one or more electronic formats.
Claim 22:
establishing, in response to occurrence of a patient event, a patient-centric communication session, wherein each of a plurality of linked medical professionals has secure access to the communication session for reading and posting information, wherein the communication session allows secure access to a patient profile comprising a patient identifier and information relating to a particular patient, wherein the patient event is one or more of a visit to a medical facility by the particular patient, admission to a medical facility of the particular patient, treatment of the particular patient at a medical facility, or transfer of the particular patient to or from a medical facility, wherein the standardized patient profile is at least partially populated from an electronic medical record (EMR) associated with a proprietary EMR system of the medical facility, and wherein the standardized patient profile is agnostic to the proprietary EMR system such that the linked medical professionals have secure access to the patent profile whether or not they have access to the proprietary EMR system associated with the medical facility;
receiving, via the communication session and from one of the linked medical professionals located at the medical facility with the particular patient at the time of the receiving, a request for consultation relating to the standardized patient profile and the patient event, wherein the request for consultation is received in real-time relative to the patient event;
automatically transmitting, via the communication session and by one or more processors, a first notice to the one or more linked medical professionals, wherein the first notice indicates that the request for consultation has been received relating to the standardized patient profile and the patient event, wherein the notice is transmitted in real-time relative to the patient event;
receiving, via the communication session, from one or more linked medical professionals, and based on the request for consultation, diagnostic consultation information comprising a diagnosis or disposition relating to the patient event; and
automatically transmitting, via the communication session and by one or more processors, a second notice to the one or more linked medical professionals, wherein the second notice indicates that the diagnostic consultation information has been received relating to the standardized patient profile and the patient event.
In interpreting these claims, the Examiner uses the plain meaning of “proprietary.” Full citations are included within the PTO-892. Using the adjective definition:
Cambridge Dictionary: owned and legally controlled by a particular company
Merriam-Webster:
1: of, relating to, or characteristic of an owner or title holder
proprietary rights
2: used, made, or marketed by one having the exclusive legal right
a proprietary process
proprietary software
3: privately owned and managed and run as a profit-making organization
a proprietary clinic
Dictionary.com:
1.belonging to a proprietor
2.being a proprietor; holding property
It should be emphasized here that “proprietary” is a legal definition and not a technological one. The claimed “proprietary” of “proprietary EMR system” is descriptive only. The Specification uses the word “proprietary only one time in paragraph 5, found within the Summary (the Entire paragraph included here and emphasis added)
[0005] In an aspect, the systems and methods of the present disclosure minimize the communication inefficiencies and reduce the amount of wasted time that the emergency room physician and the patient have to deal with during their encounter. As an example, using the disclosed system and methods, an emergency room provider can determine that an orthopedist is necessary for consultation. The emergency room physician can chart like normal, but the data that is inputted into an electronic medical record (EMR) can be transmitted to a non-proprietary server, in which this information can be shared with any provider whether or not they have access to the proprietary system The information inputted can be transmitted to the non-proprietary system with a single click of a mouse.
It should be emphasized that the Specification only describes transmitting information to a “proprietary server” or a “non-proprietary server.” This only appears within paragraph 5. The Specification never discusses accessing data from a proprietary/ non-proprietary server. The question of whether this is new matter or not has not yet been discussed.
The Applicant has added the word “closed” into the independent claims. The word closed appears within the Specification under two uses. The first only appears in paragraph 124 as (emphasis added)
[00124] The patient profile may comprises medical information relating to a particular patient. The medical information may be compiled internally to a closed system (e.g., EMR service or hospital) or may be compiled from at least two discrete healthcare systems.
Notice that there is no description as to what “closed” means in this context. Closed only describes a system but does not provide function. The other usage is found in multiple paragraphs (160 – 162, 164) and describes a communication channel being available or not. For example
[00162] Continuing the illustrative ED example above, instead of being admitted to the hospital, the ED physician treats the patient in the ED and discharges the patient. When the patient is discharged, the communication session associated with the patient can be closed. As a further example, the communication session may remain open until a follow-up appointment with the PCP is scheduled. Other circumstances can be used to close a communication session.
In the instant invention, a closed system is not defined. However, in 1997 the Food and Drug Agency (FDA) made a request for an electronic signature. That requirement was codified in 21 CFR 11 as, “Closed system: "An environment in which system access is controlled by persons who are responsible for the content of electronic records that are on the system" (21 CFR 11.3(b)(4)). This can include systems that permit dial-in access over public phone lines. FDA has cautioned, however, that where an organization's electronic records are stored on systems operated by third parties, such as commercial on-line services, access is under control of the third party, and FDA regards this system as open (62 FR: 13441).” Note that the Examiner understands “closed” as who is able to control access.
The claims have been amended to includes, “are stored in the EMR database in a structured format that associates subsets of medical information with predefined specialty templates..”
The Specification does not use the term “structured format.” However, paragraph 159 includes, “The record can be stored on any storage medium as an example, the record can be stored in the database 114 of the computing device 104. In addition, the record can be stored in any format and in any storage medium connected to the computing device 104.” Paragraph 163 includes, “In step 3110, a file is created that contains all of the communications of the communication session. In an embodiment, the format of the file is portable document format (pdf). The file can include, in addition to the communications, ancillary information to form an audit trail of the communication session.” Therefor a structured format could be any format including pdf.
The Specification also does not limit what is meant by “associates.” Paragraph 112 includes, “ The patient profile can be linked to one or more users (e.g., physicians, nurses, service providers, entities, etc.) based upon preset rules, identified relationships, or associations identified by the patient information.” The same paragraph continues with, “Other information can be stored in the database 114 and/or associated with a particular patient profile. For example, a patient record 119 can be linked to the patient profile and the profile can be populated with information from the linked patient record 119.”
Regarding “specialty template,” the Specification does not create limits upon what makes them special or the utility of these templates. For example, paragraph 73 begins with, “In an aspect, computing device 104 and/or database 114 can comprise specialty templates for the messages. The specialty templates can be specifically created for each specialty in a particular profession, such as medicine/healthcare.” However, that same paragraph later states, “The specialty templates can be created prior to implementation of the specific specialty message generation. Templates can be changed as needed.” The specification further does not define what a template must be or the limits on potential changes.
As such, the Examiner understands the limitation as storing data.
The claim now includes, “applying user-specific settings that retrieve a subset of the stored medical information based on medical relevance and specialty template associations.” The breadth of these setting is shown in paragraph 36
[0036] In an aspect, one or more user records 115 can comprise user settings 118 relating to one or more users, physicians, consultants, healthcare providers, professionals, message recipients, and the like. As an example, the user settings 118 can comprise demographic information, contact information, user credentials or login credentials, a unique identifier or password, and preferences (e.g. message preferences, including predefined information fields to be populated and included in diagnostic messages).
These user settings may be about the transmission of data, from paragraph 71, “For example, a particular user setting 118 may include pre-defined information fields that should be included in the messages that are sent to the user/recipient associated with the particular user setting 118.” This is further repeated in the next paragraph 72, “For example, a particular user setting 118 may include pre-defined information fields to be included in the messages that are sent to the user/recipient associated with the particular user setting 118.”
Since “user settings” are broadly disclosed the Examiner understands these as display format information such as message introduction and message signature.
These steps of 1 – 16, and 20 – 22, as drafted, under the broadest reasonable interpretation, includes methods of organizing human activity. The invention is directed toward communication between individuals. Therefore, on its face, the invention regards organizing human activities.
Dependent claims recite additional subject matter which further narrows or defines the abstract idea embodied in the claims (such as claim 2 – 8, 10 – 16, and 20 – 21, reciting particular aspects of how the invention may be performed in the mind but for recitation of generic computer components).
This judicial exception is not integrated into a practical application. In particular, the additional elements do not integrate the abstract idea into a practical application, other than the abstract idea per se, because the additional elements amount to no more than limitations which:
add insignificant extra-solution activity to the abstract idea (such as recitation of “comprises medical information relating to,” or “is compiled from,” or “receiving from” amounts to mere data gathering, recitation of “providing credentials” amounts to selecting a particular data source or type of data to be manipulated, recitation of “storing” amounts to insignificant application, see MPEP 2106.05(g))
Dependent claims recite additional subject matter which amount to limitations consistent with the additional elements in the independent claims (such as claims 2 – 8, 10 – 16, and 20 – 21, additional limitations which amount to invoking computers as a tool to perform the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation and do not impose a meaningful limit to integrate the abstract idea into a practical application.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to discussion of integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply an exception, add insignificant extra-solution activity to the abstract idea, and generally link the abstract idea to a particular technological environment or field of use. Additionally, the additional limitations, other than the abstract idea per se, amount to no more than limitations which:
amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields (such as claims 1 and 9; transmitting, receiving, e.g., receiving or transmitting data over a network, Symantec, MPEP 2106.05(d)(II)(i))
Dependent claims recite additional subject matter, which, as discussed above with respect to integration of the abstract idea into a practical application, amount to invoking computers as a tool to perform the abstract idea. Dependent claims recite additional subject matter which amount to limitations consistent with the additional elements in the independent claims (such as claims 2 – 8, 10 – 16, and 20 – 21, additional limitations which amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
[0045] The present methods and systems can be operational with numerous other general purpose or special purpose computing system environments or configurations. Examples of well-known computing systems, environments, and/or configurations that can be suitable for use with the systems and methods comprise, but are not limited to, personal computers, server computers, laptop devices, and multiprocessor systems. Additional examples comprise set top boxes, programmable consumer electronics, network PCs, minicomputers, mainframe computers, distributed computing environments that comprise any of the above systems or devices, and the like.
[0054] Optionally, any number of program modules can be stored on the mass storage device 204, including by way of example, an operating system 205 and financial software 206. Each of the operating system 205 and financial software 206 (or some combination thereof) can comprise elements of the programming and the financial software 206. Financial data 207 can also be stored on the mass storage device 204. Financial data 207 can be stored in any of one or more databases known in the art. Examples of such databases comprise, DB2®, Microsoft® Access, Microsoft® SQL Server, Oracle®, mySQL, PostgreSQL, and the like. The databases can be centralized or distributed across multiple systems.
[0055] In another aspect, the user can enter commands and information into the computer 201 via an input device (not shown). Examples of such input devices comprise, but are not limited to, a keyboard, pointing device (e.g., a "mouse"), a microphone, a joystick, a scanner, tactile input devices such as gloves, and other body coverings, and the like. These and other input devices can be connected to the processing unit 203 via a human machine interface 202 that is coupled to the system bus 213, but can be connected by other interface and bus structures, such as a parallel port, game port, an IEEE 1394 Port (also known as a Firewire port), a serial port, or a universal serial bus (USB).
[0048] The present methods and systems can be operational with numerous other general purpose or special purpose computing system environments or configurations. Examples of well-known computing systems, environments, and/or configurations that can be suitable for use with the systems and methods comprise, but are not limited to, personal computers, server computers, laptop devices, and multiprocessor systems. Additional examples comprise set top boxes, programmable consumer electronics, network PCs, minicomputers, mainframe computers, distributed computing environments that comprise any of the above systems or devices, and the like.
Response to Arguments
The invention status is a Request for Continuation after Appeal. In the Appeal, the Examiner was affirmed regarding 35 U.S.C. §101. This rejection is essentially the same. The Examiner quotes the PTAB decision dated 4/18/2023, “We have considered all of Appellant's arguments in support of the eligibility of claim 1. However, we find them unavailing. Accordingly, we sustain the Examiner's rejection of claim 1 as being directed to an abstract idea without significantly more. Claims 2-16 and 20-22 fall with claim 1.”
The Applicant again appealed the similar claim set. In the decision dated 9/4/2025, the PTAB stated, “We are not persuaded, on the present record, that the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 101.” The instant claims, as noted above, are similar to those affirmed within the first PTAB decision.
Applicant's arguments filed 11/4/2025 have been fully considered but they are not persuasive.
Claim Rejections-35 U.S.C §101
The Applicant states, “This is a particular data organization and retrieval technique that improves computer operation in a multi-user, multi-system EMR environment: the system itself returns targeted records (not bulk records) in a manner dictated by template associations and per-user rules, reducing superfluous data movement and enabling role-appropriate, latency-reduced presentation in real time.” The Examiner points the Applicant to the 9/4/2025 PTAB Decision, page 17
To the extent claim 1 provides an improvement at all, that improvement, in our view, is, instead, at best, an improvement to the abstract idea of "communicating patient diagnostic and consultation information between individuals," which is not enough for patent eligibility. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018) ("[P]atent law does not protect such claims[, i.e., claims to an asserted advance in the realm of abstract ideas], without more, no matter how groundbreaking the advance."). This is particularly so here, where we find no indication in the Specification, nor does Appellant direct us to any indication, that the operations recited in claim 1 require any specialized computer hardware or other inventive computer components, invoke any allegedly inventive programming, or that the claimed invention is implemented using other than generic computer components as tools operating in their ordinary capacity.
The Applicant’s opinion is noted however the Specification does not describe the invention as a technical improvement or a technological improvement to overcome a problem of technology. The instant invention applies technology to the abstract idea to obtain all the benefits of applying that technology to the abstract idea.
The Applicant states, “As in Enfish, where the claims were found eligible because they focused on a specific, assertedly improved data structure and retrieval technique, the present claims focus on a defined storage schema and retrieval logic implemented by the computer-not on the content of the information or a human workflow.” The Examiner cannot find the within the specification a “defined storage schema and retrieval logic” that would be a technical improvement. The Enfish case used the Specification for guidance that the Examiner cannot find.
The Applicant states, “Even assuming, arguendo, that the Examiner views the claims as "involving" an abstract idea, the claims are still patent eligible under Step 2B because the ordered combinations they recite are significantly more…” Here, the PTAB 9/4/2025 Decision, page 23 states
It could not be clearer from Alice, that under step two of the Mayo/Alice framework, the elements of each claim are considered both individually and "as an ordered combination" to determine whether the additional elements, i.e., the elements other than the abstract idea itself, "transform the nature of the claim" into a patent-eligible application. Alice Corp., 573 U.S. at 217 (citation omitted); see Mayo, 566 U.S. at 72-73 ( requiring that "a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an 'inventive concept,' sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself' (emphasis added) (citation omitted)). In other words, the inventive concept under step two of the Mayo/Alice test cannot be the abstract idea itself:
The Applicant’s opinion that there is significantly more is not found within the Specification.
The Applicant states, “The non-generic arrangement, centralized storage and rule processing that still customizes per participant and gates access to data from closed EMR systems, constitutes a technology-based solution to a network/EMR interoperability problem.” Yet, the Applicant does not show where in the Specification the invention is described as a network/ EMR interoperability problem. Here, the PTAB 9/4/2025 Decision, page 23 states
Appellant's argument is not persuasive as least because the features Appellant identifies, i.e., features that allow secure access to a patient profile whether or not a user accessing the patient profile has access to the proprietary EMR system associated with the medical facility, are part of the abstract idea. They are not additional elements to be considered in determining whether claim 1 includes additional elements or a combination of additional elements that adds specific limitations beyond the judicial exception that are not "well understood, routine, conventional activity" in the field.
The Applicant states, “Moreover, as presented in Example 42, the present claims provide a standardized patient profile that allows sharing of updated information across disparate EMR system from remote users in real time, in a standardized format.” Here, the PTAB 9/4/2025 Decision, page 20/21 states, “We are not persuaded that claim 1 at issue here is sufficiently analogous to hypothetical claim 1 in Example 42 such that Example 42 impacts the patent eligibility determination here.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Neal R Sereboff whose telephone number is (571)270-1373. The examiner can normally be reached on M - T, M - F 8AM - 6PM.
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/NEAL SEREBOFF/Primary Examiner, Art Unit 3626