DETAILED ACTION
Response to Amendment
This is a final office action in response to a communication filed on January 27, 2026. Claims 10, 12-14, 21-24, and 26-30 are pending in the application.
Status of Objections and Rejections
All rejections from the previous office action are maintained.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 10, 12, 21-24, and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barton-Sweeney (U.S. Patent Pub. 2019/0049400) in view of Seal (U.S. Patent Pub. 2009/0071848), and further in view of Wu (B. Wu, Noble metal nanoparticles/carbon nanotubes nanohybrids: Synthesis and applications, Nano Today 2011(6), pp. 75-90).
Regarding claim 10, Barton-Sweeney teaches a sensor (¶8: a sensor) comprising:
an electrode (¶ 8: a working electrode);
a carbon-based substrate on the electrode (¶8: having a surface comprising a nanocomposite comprising carbon nanoparticles and noble metal nanoparticles); and
metal oxide nanoparticles (¶8: having a surface comprising a nanocomposite comprising carbon nanoparticles and noble metal nanoparticles; ¶49: the metal nanoparticles can include titanium oxide, zinc oxide, silicon oxide, europium oxide, or iron oxide; ¶20: the carbon nanoparticles can be of any suitable form, for example, carbon nanotubes (single-wall or multi-wall), graphene, fullerenes, diamond, carbon quantum dots, graphene quantum dots, or carbon nanofibers or a combination);
wherein the carbon-based substrate comprises a conductive amorphous carbon and does not include graphene oxide (¶20: the carbon nanoparticles can be graphitic in structure, such as flat, disk-shaped, or irregularly shaped; here the irregularly shaped graphitic structure of carbon nanoparticles is amorphous, and the graphitic carbon nanoparticles are conductive, which does not include graphene oxide).
Barton-Sweeney does not explicitly disclose the metal nanoparticles are cerium oxide nanoparticles, wherein the cerium oxide nanoparticles comprise a ratio of cerium (III) to cerium (IV) of at least 0.4.
However, Seal teaches a working electrode having a coating layer comprising a plurality of cerium oxide nanoparticles ([0012] lines 3-5). Cerium oxide includes both ceric oxide and cerous oxide ([0024] line 3). Cerium of valence +3 is generally referred to as cerous, while with valence +4 is generally referred to as ceric ([0024] lines 1-2). An average cerium oxide nanoparticle size in the range <20 nm provides an unexpected and highly beneficial result which is believed to be based on an increased percentage of +3 valence states (relative to the generally more numerous +4 states) on the cerium oxide nanoparticles surface ([0025] lines 4-9). The presence of a relative high percentage of +3 valence states has been found to significantly improve performance of sensors ([0025] lines 11-13), rendering the ratio of cerium (III) to cerium (IV), i.e., the percentage of +3 valence states (relative to the generally more numerous +4 states), a result-effective variable.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Barton-Sweeney by substituting its metal oxide nanoparticles with the cerium oxide nanoparticles having cerium of valence +3 and valence +4 as taught by Seal. The suggestion for doing so would have been that cerium oxide nanoparticles having cerium of valence +3 and valence +4 is a suitable material for electrode coating and the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. MPEP § 2144.07. Also, one of ordinary skill in the art would be motivated to this substitution because an increased percentage of +3 valence states (relative to the generally more numerous +4 states) on the cerium oxide nanoparticles surface has been found to significantly improve performance of sensors ([0025] lines 6-9, 11-13). Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Barton-Sweeney and Seal by adjusting the ratio of cerium (III) to cerium (IV) of the cerium oxide nanoparticles within the claimed range because the ratio of cerium (III) to cerium (IV) is a result-effective variable and can be optimized through routine experimentation to improve performance of sensors. MPEP 2144.05 (II)(B).
Barton-Sweeney and Seal do not explicitly disclose the cerium oxide nanoparticles directly anchored to the carbon-based substrate through carboxylic groups.
However, Wu teaches synthesis of noble metal nanoparticles/carbon nanotubes nanohybrids for biosensors ([Summary]). The most common covalent functionalization involves the addition of carbonyl and carboxyl groups onto the CNT surface, providing nucleation sites for the deposition of noble metal NPs on the surface of CNTs and dispersion of noble metal NPs on the surface of carbonyl and carboxyl functionalized CNTs (p. 80, col. 1, para. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Barton-Sweeney by incorporating carboxylic groups to directly anchor the cerium oxide nanoparticles to the carbon-based substrate as taught by Wu because it is a well-known method in the art and applying a known technique to a known device ready for improvement to yield predictable results is prima facie obvious. MPEP 2141(III)(D).
Regarding claim 12, Barton-Sweeney, Seal, and Wu disclose all limitations of claim 10 as applied to claim 10. Barton-Sweeney, Seal, and Wu do not explicitly disclose wherein the cerium oxide nanoparticles have an average size of about 3 nm.
However, Seal teaches a working electrode having a coating layer comprising a plurality of cerium oxide nanoparticles ([0012] lines 3-5). The cerium oxide nanoparticles have an average particle size <20 nm, for example 3 to 7 nm ([0025] lines 1-3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Barton-Sweeney, Seal, and Wu by adjusting the average size of the cerium oxide nanoparticles as claimed as suggested by Seal because it is a suitable average size of cerium oxide nanoparticles for modifying electrochemical electrode. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). MPEP 2144.05(I).
Regarding claim 21, Barton-Sweeney teaches wherein the conductive amorphous carbon comprises a functionalized surface, the functionalized surface comprising the carboxyl groups (¶21: the carbon nanoparticles can be modified with a hydrophobic compound containing a carboxylic group). Examiner notes here that the amorphous carbon nanoparticles can be functionalized with carboxylic group and thus would be capable of anchoring the cerium oxide nanoparticles on the carbon-based substrate.
Regarding claims 22-24, Barton-Sweeney, Seal, and Wu disclose all limitations of claim 10 as applied to claim 10. Barton-Sweeney, Seal, and Wu do not disclose wherein the ratio of cerium (III) to cerium (IV) is 43.42:56.58 (claim 22) or wherein the ratio of cerium (III) to cerium (IV) is 42.52:57.48 (claim 23) or wherein the ratio of cerium (III) to cerium (IV) is 28.96:71.04 (claim 24).
However, Seal teaches a working electrode having a coating layer comprising a plurality of cerium oxide nanoparticles ([0012] lines 3-5). Cerium oxide includes both ceric oxide and cerous oxide ([0024] line 3). Cerium of valence +3 is generally referred to as cerous, while with valence +4 is generally referred to as ceric ([0024] lines 1-2). An average cerium oxide nanoparticle size in the range <20 nm provides an unexpected and highly beneficial result which is believed to be based on an increased percentage of +3 valence states (relative to the generally more numerous +4 states) on the cerium oxide nanoparticles surface ([0025] lines 4-9). The presence of a relative high percentage of +3 valence states has been found to significantly improve performance of sensors ([0025] lines 11-13), rendering the ratio of cerium (III) to cerium (IV), i.e., the percentage of +3 valence states (relative to the generally more numerous +4 states), a result-effective variable.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Barton-Sweeney and Seal by adjusting the ratio of cerium (III) to cerium (IV) within the claimed ranges in claims 22-24 because the ratio of cerium (III) to cerium (IV) is a result-effective variable and can be optimized through routine experimentation to improve performance of sensors. MPEP 2144.05 (II)(B).
Regarding claim 29, Barton-Sweeney teaches wherein the carbon-based substrate does not include graphene (¶20: the carbon nanoparticles can be graphitic in structure, such as flat, disk-shaped, or irregularly shaped, which does not include graphene).
Claim(s) 13 and 26-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barton-Sweeney in view of Seal and Wu, and further in view of Chen (U.S. 2018/0096801), or, alternatively, further in view of Dezfuli (A. Dezfuli, Facile sonochemical synthesis and electrochemical investigation of ceria/graphene nanocomposites, J. Mater. Chem. B, 2015(3), page 2362-70), supported by Electrochemistry Basics as an evidence.
Regarding claim 13, Barton-Sweeney, Seal, and Wu disclose all limitations of claim 10 as applied to claim 10. Barton-Sweeney, Seal, and Wu do not disclose a weight ratio of the cerium oxide nanoparticles to the carbon-based substrate ranging from about 10:90 to about 90:10.
However, Chen teaches a supercapacitor 100 including at least two electrodes layers, which include an activated carbon fiber (ACF) fibric (Fig. 1; ¶39). The activated carbon fiber fabric further includes nanoparticles (¶43), which include transition metals such as cerium (¶46). The nanoparticles confer certain desirable properties to the activated carbon fiber fabric, for example, enabling a redox reaction for the purpose of enhancing supercapacitor performance (¶46). The amount of nanoparticle in the activated carbon fiber can range from 5% to 55% by weight, based on the weight of the activated carbon fiber (¶47), which overlaps the claimed range from about 10:90 to about 90:10. Here, Examiner notes that Barton-Sweeney discloses the sensor is used for electrochemical detection (¶2), which is based on a oxidation-reduction (“redox”) reaction to move electrons and generate current, as evidenced by Electrochemistry Basics.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Barton-Sweeney, Seal, and Wu by adjusting the weight ratio of the cerium oxide nanoparticles to the carbon-based substrate within the claimed range because they are suitable ratio for loaded cerium oxide nanoparticles to the amorphous carbon-based substrate for electrochemical working electrode. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
Alternatively, Dezfuli teaches a GC electrode (page 2363, Col. 2, para. 3, line 7), a carbon-based substrate on the electrode (Fig. 1; page 2363, Col. 1, para. 3, line 1: graphene oxide; page 2363, Col. 1, para. 4, line 5: reduction of decorated GO); and cerium oxide nanoparticles directly on the carbon-based substrate (Fig. 1; page 2363, Col. 1, para. 4, lines 4-5: anchoring as-synthesized CeO2 nanoparticles on GO, and reduction of decorated GO). The weight ratio of cerium oxide nanoparticles to carbon-based substrate ranges from about 10:90 to about 90:10 (page 2364, Table 1, theoretical mass ratio CeO2/GO is 1:2 for CG2 nanocomposite). Although the carbon-based substrate of Dezfuli includes graphene oxide, it still provides a suitable guidance on the weight ratio of cerium oxide nanoparticles to carbon-based substrate.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Barton-Sweeney and Seal by adjusting the weight ratio of the cerium oxide nanoparticles to the carbon-based substrate within the claimed range because they are suitable ratio for loaded metal nanoparticles to the amorphous carbon-based substrate for electrochemical working electrode. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
Regarding claims 26-28, Barton-Sweeney, Seal, and Wu disclose all limitations of claim 10 as applied to claim 10. Barton-Sweeney, Seal, and Wu do not disclose a loading of 2.5 wt% of the cerium oxide nanoparticles on the carbon-based substrate (claim 26) or a loading of 18.4 wt% of the cerium oxide nanoparticles on the carbon-based substrate (claim 27) or a loading of 36.9 wt% of the cerium oxide nanoparticles on the carbon-based substrate (claim 28).
However, Chen teaches a supercapacitor 100 including at least two electrodes layers, which include an activated carbon fiber (ACF) fibric (Fig. 1; ¶39). The activated carbon fiber fabric further includes nanoparticles (¶43), which include transition metals such as cerium (¶46). The nanoparticles confer certain desirable properties to the activated carbon fiber fabric, for example, enabling a redox reaction for the purpose of enhancing supercapacitor performance (¶46). The amount of nanoparticle in the activated carbon fiber can range from 5% to 55% by weight, based on the weight of the activated carbon fiber (¶47), which is close to the claimed value in claim 26 and overlaps the claimed values in claims 27-28. Further, since the nanoparticles confer the certain desirable properties to the activated carbon fiber fabric, for example, enabling a redox reaction for the purpose of enhancing supercapacitor performance (¶46), and thus render the weight ratio is a result-effective variable to the supercapacitor performance with enabled redox reaction. Here, Examiner notes that Barton-Sweeney discloses the sensor is used for electrochemical detection (¶2), which is based on a oxidation-reduction (“redox”) reaction to move electrons and generate current, as evidenced by Electrochemistry Basics.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Barton-Sweeney, Seal, and Wu by adjusting the loading of the cerium oxide nanoparticles on the carbon-based substrate within the claimed values of claims 27-28 because they are suitable ratio for loaded metal nanoparticles to the amorphous carbon-based substrate for electrochemical working electrode. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I). Further, the loading of the cerium oxide nanoparticles on the carbon-based substrate, as a result-effective variable, can be optimized through routine experimentation to enable redox reaction leading to desired supercapacitor performance to arrive the claimed value in claim 26.
Alternatively, Dezfuli teaches a GC electrode (page 2363, Col. 2, para. 3, line 7), a carbon-based substrate on the electrode (Fig. 1; page 2363, Col. 1, para. 3, line 1: graphene oxide; page 2363, Col. 1, para. 4, line 5: reduction of decorated GO); and cerium oxide nanoparticles directly on the carbon-based substrate (Fig. 1; page 2363, Col. 1, para. 4, lines 4-5: anchoring as-synthesized CeO2 nanoparticles on GO, and reduction of decorated GO). Dezfuli teaches the mass ratio of CeO2/GO for various CeO2-RGO nanocomposites is from 5% (1/20) to 500% (5/1) (page 2364, Col. 1, Table 1), which is close to the claimed value in claim 26 and overlaps the claimed values in claims 27-28. Examiner notes that although the carbon-based substrate of Dezfuli includes graphene oxide, it still provide a suitable guidance on the weight ratio of cerium oxide nanoparticles to carbon-based substrate.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Barton-Sweeney, Seal, and Wu by adjusting the loading of the cerium oxide nanoparticles with the claimed ratios because they are suitable loading of the cerium oxide nanoparticles on the carbon-based substrate for electrochemical working electrode. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). MPEP 2144.05(I).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barton-Sweeney in view of Seal and Wu, and further in view of Vu (U.S. Patent Pub. 2019/0004004).
Regarding claim 14, Barton-Sweeney, Seal, and Wu disclose all limitations of claim 10 as applied to claim 10, including the electrode is a working electrode (¶8: a working electrode), and the sensor further comprising a counter electrode (¶31: the two-electrode system may utilize additional electrodes, such as a counter electrode to monitor fluctuations in current).
Barton-Sweeney, Seal, and Wu do not disclose wherein the sensor has an elongated body with a proximal end and a distal end, and a sensing area at the distal end, the sensor further comprising: at least two curved ridges extending a distance beyond the elongated body to at least partially encircle the sensing area; and an opening between the at least two curved ridges, wherein the opening is configured to permit a fluid to flow into the sensing area while the curved ridges are contacting a surface.
However, Vu teaches a solid-state electrodes comprising redox active surface areas for use in analyte sensing devices ([Abstract] lines 1-2). The sensor (Fig. 8A; [0085] line 2: an analyte sensing device 80) has an elongated body with a proximal end and a distal end (Fig. 8A: indicating the handle of the analyte sensing device 80 is an elongated body; here the right side is deemed to be the distal end and the left side is deemed to be the proximal end), and a sensing area at the distal end (Fig. 8A: the distal end, i.e., the right side, having a sensing area that all electrodes are located), and the sensor further comprising:
at least two curved ridges extending a distance beyond the elongated body to at least partially encircle the sensing area (Fig. 8A: indicating two curved ridges, i.e., WE 82 and IE 83, extending a distance beyond the body of the analyte sensing device and partially encircle the sensing area); and
an opening between the at least two curved ridges (Fig. 8A: indicating openings between WE 82 and IE 83).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Barton-Sweeney, Seal, and Wu by adopting the electrode configuration having an elongated body, a sensing area at the distal end, at least two curved ridges and an opening between the curved ridges as taught by Vu because it is a suitable electrode configuration having a redox active surface area for analyte sensing. Here, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP 2143(I)(A).
The designations “configured to permit a fluid to flow into the sensing area while the curved ridges are contacting a surface” for the opening are deemed to be functional limitation in apparatus claims. MPEP 2114 (II). "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Here, Barton-Sweeney in view of Seal and Vu teaches all structural limitations of the presently claimed sensor including the sensing composition on the working electrode and the opening between two curved ridges extending from the sensor body, and thus the sensing composition is capable of detecting free radicals and the opening is capable of permitting a fluid to flow into the sensing area while the curved ridges are contacting a surface.
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barton-Sweeney in view of Seal and Wu, and further in view of Levaray (US 2019/0285570).
Regarding claim 30, Barton-Sweeney, Seal, and Wu disclose all limitations of claim 10 as applied to claim 10, but fails to teach wherein the carbon-based substrate is carbon black.
However, Levaray teaches chemical sensors having a composite thin film that comprises (e.g., is made of) chemically-modified carbon black with grafted gold nanoparticles ([Abstract]). In some embodiment, it may comprises carbon black onto which one or more species are, directly and/or indirectly grated (¶36), and the sensing element comprises a plurality of gold nanoparticles grated onto carbon black (¶66).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Barton-Sweeney, Seal, and Wu by substituting its carbon-based substrate with carbon black as taught by Levaray. The suggestion for doing so would have been that carbon black is a suitable material for carbon-based substrate of chemical sensors and the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. MPEP § 2144.07.
Response to Arguments
Applicant’s arguments have been considered but are unpersuasive.
Applicant argues Wu does not mention amorphous carbon nanotubes and does not indicate that amorphous carbon nanotubes can be functionalized in the same manner (Response, p. 4, para. 3). This argument is unpersuasive because the primary reference, Barton-Sweeney, teaches the carbon-based substrate on the electrode, which does not required in the secondary reference, Wu. As disclosed by Barton-Sweeney, the carbon nanoparticles can be any suitable form, for example, carbon nanotubes (single-wall or multi-wall), or can be graphitic in structure, such as flat, disk-shaped, or irregularly shaped (¶20). Barton-Sweeney further discloses the carbon nanoparticles (here, including CNTs, single-wall or multi-wall, graphitic in structure, etc.) can be modified with a hydrophobic compound containing a carboxylic group using conventional methods (¶21).
Applicant cites multiple places that Wu specifically describes single walled and multiwalled carbon nanotubes, which are crystalline structures (p. 4, para. 3). Here, Examiner notes that Wu discloses carbon nanotubes (CNTs), including single-walled CNTs (SWCNTs) and multiple-walled CNTs (p. 75, col. 1, para. 1), and presents a new kind of composite materials, noble metal nanoparticles (NPs) and CNTs, to successfully integrate the unique properties of both, CNTs and noble metal NPs (p. 75, col. 2, para. 2). Thus, Wu discloses CNTs, but not only SWCNTs and MWCNTs, which can be amorphous or crystalline. Applicant also admits that certain types of carbon nanotubes can be amorphous (p. 4, para. 3). Further, Wu is relied on to teach the nanoparticles can be anchored to the carbon-based substrate through carboxylic groups, which is chemical modification of the carbon surface, and nowhere in Wu exclude the surface of an amorphous carbon. Without teaching away by prior art, it would have been obvious to one of ordinary skill in the art to use the common covalent functionalization, e.g., addition of carboxyl group on the surface of Barton-Sweeney’s amorphous carbon-based substrate.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Jha (A. Jha, Improved field emission from amorphous carbon nanotubes by surface functionalization with stearic acid, Carbon 2011(49), pp. 1272-78).
THIS ACTION IS MADE FINAL. 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 mailing date of this final action.
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/C. SUN/Primary Examiner, Art Unit 1795