DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/24/2025 has been entered.
Status of the Applications, Amendments and/or Claims
This action is written in response to applicant's correspondence(s) submitted on 12/24/2025. In the paper of 12/24/2025, Applicant amended claims 1, 3 and 7-9. Accordingly, claims 1-9 are still pending and are under review.
This paper contains new rejections.
Priority
This application is a 371 of PCT/JP2020/034398 filed 09/11/2020 and claims foreign priority to Japanese Application No. JP2019-166510 filed on 09/12/2019.
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file. It is noted foreign priority has not been perfected. An English language translation of the foreign application has not been filed. Should Applicant choose to file an English translation, the English language translation should be accompanied with a statement that the translation of the certified copy is accurate. See 37 CFR 1.55 and MPEP §§ 215 and 216. The effective filing date of the instant application is 11 September 2020.
Response to Arguments
Withdrawn Objection(s) and/or Rejection(s)
The objection to claim 7 for failing to clarify the abbreviations TRECs, KRECs and SMN1 (T-cell receptor excision circles, Kappa-deleting recombination excision circles, and Survival Motor Neuron 1, respectively) is withdrawn based on claim amendments.
The rejections of claims 8-9 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite are withdrawn. The new rejections of claims 8-9 that are provided below were necessitated by claim amendments.
The rejection of claims 1-2, 4-5 and 7 under 35 U.S.C. 103 as being unpatentable over Nishio Hisahide et al. (WO2019/074004A1, Japanese, published 04/18/2019 and filed October 10, 2018: English Translation is attached and cited) in view of Taylor et al. (2011, Malaria Journal 2011, 10 (244): pp.1-8) is withdrawn based on Applicant’s arguments that were found to be persuasive.
Applicant argues that Nishio does NOT teach real-time PCR "directly" on DBS as asserted by the Office (see Remarks of 12/24/2025, all text of pg 8).
Applicant argues that Nishio discloses a two-step process:
1. a direct PCR step from a DBS punch used solely for pre-amplification; and
2. a separate real-time PCR step performed on the pre-amplified DNA after removal of the DBS and filter paper.
Applicant argues that while Nishio detects SMN1 "from a DBS”, the real-time PCR analysis is expressly conducted in a second reaction that does not include the DBS matrix. Nishio's reliance on preamplification to address low signal quality and nonspecific amplification effectively teaches away from Applicant's claimed single-step, direct real-time PCR method performed directly on an intact dried blood spot (DBS) in filter paper, with optical detection occurring simultaneously during amplification. The filter paper remains intact throughout the PCR reaction, and no preamplification or transfer step is performed.
Furthermore, Applicant state that in paragraph [0035] of the specification, the claimed diameter range of 1.5 mm to 2.0 mm and corresponding whole-blood content of 1.4 v/v% to 6.6 v/v% provide excellent reproducibility and recovery. In contrast, smaller diameters (e.g., 1.2 mm) result in amplification failures. These advantageous and unexpected results demonstrate that the claimed parameters are not routine optimizations, but instead represent a carefully balanced system enabling reliable direct real-time PCR from DBS.
Applicant argues that with respect to punched-piece diameter, Nishio discloses only a 3 mm diameter punch and a corresponding blood volume (see paragraph [0045]). Nishio does not identify punch diameter as a result-effective variable, nor does it suggest that smaller diameters would be suitable for direct real-time PCR.
Applicant argues that the Office’s reliance on Taylor to modify Nishio's 3 mm punch to 1.5 mm is based on hindsight reconstruction. Taylor is directed to detection of malaria parasite DNA, not human genes of a newborn infant as recited in amended claim 1. A person of ordinary skill in the art would not reasonably apply Taylor's teachings concerning pathogen DNA detection to Nishio's neonatal genetic screening context.
The rejection of claim 3 under 35 U.S.C. 103 as being unpatentable over Nishio Hisahide et al. (WO2019/074004A1, Japanese, published 04/18/2019 and filed October 10, 2018: English Translation is attached and cited) in view of Inoue et al. (2011, BMJOpen pg.1-93) is withdrawn for the same reason indicated above as for the withdrawal of the rejection of claim 1 under 35 U.S.C. 103.
The rejection of claim 6 under 35 U.S.C. 103 as being unpatentable over Nishio Hisahide et al. (WO2019/074004A1, Japanese, published 04/18/2019 and filed October 10, 2018: English Translation is attached and cited) in view of Atkinson et al. (2014, Journal of virological methods, 196, pp.40-44) is withdrawn for the same reason indicated above as for the withdrawal of the rejection of claim 1 under 35 U.S.C. 103.
Maintained Rejection(s)
The rejections of claims 8-9 under 35 U.S.C. 103 as being unpatentable over Nishio Hisahide et al. (WO2019/074004A1, Japanese, published 04/18/2019 and filed October 10, 2018: English Translation is attached and cited) further in view of Tran (2014, Malaria Journal 13:393) and Polansky (US 2004/0023207) are maintained. The scope and claim dependency of both claims 8 and 9 are unclear and still in question. Claims 8-9 are rejected based on the interpretation(s) as provided in the section entitled “Claim Interpretation”.
Claim Interpretation
Prior to analysis of the art, the claims must be construed. As noted in MPEP 2111, citing Phillips v. AWH Corp., 415 F.3d l303, 75 USPQ2d l321 (Fed. Cir. 2005), "During patent examination, the pending claims must be 'given their broadest reasonable interpretation consistent with the specification.' ".
Claim 1 recites the limitation “optically detecting the amplified target nucleic acid of the gene of the newborn infant in the tube simultaneously during the PCR step”.
The phrase “simultaneously during the PCR step” within this limitation of claim 1 is construed to mean optically detecting of the amplified target nucleic acids simultaneously with amplification.
Claim 8 is directed to a method for quantifying a target nucleic acid contained in a dried blood spot in a filter paper comprising:
detecting the target nucleic acid by real-time PCR according to claim 1, and
quantifying the target nucleic acid is quantified using a standard below;
(1) a standard which contains an artificial nucleic acid including the sequence of the target nucleic acid and which is not contained in the dried blood spot in a filter paper, wherein the standard is dissolved directly in a reaction container and used.
For the purpose of search and examination and based on the specification disclosures in paragraphs [0021], [0023]-[0026], [0034], [0035], the instant claim 8 is construed as being directed to the method of claim 1, further comprising a step of quantifying the amplified target nucleic acids contained in a dried blood spot in a filter paper using a standard that is a target nucleic acid that is not contained in the dried blood spot in a filter paper;
or to a method for quantifying a target nucleic acid contained in a dried blood spot in a filter paper comprising:
detecting the target nucleic acid by real-time PCR, and
quantifying the target nucleic acid using a standard that is an artificial nucleic acid comprising a target nucleic acid that is not contained in the dried blood spot in a filter paper.
Claim 9 is directed to a quantification kit for quantifying a target nucleic acid by the method of claim 8, comprising:
1) a standard which contains an artificial nucleic acid including the sequence of the target nucleic acid and which is not contained in the dried blood spot in a filter paper, wherein the standard is dissolved directly in a reaction container and used.
For the purpose of search and examination and based on the specification disclosures in paragraphs [0021], [0023]-[0026], [0034]-[0035], and of RNAse P as a calibrator, the instant claim 9 is construed as being directed to a kit, said kit comprises:
a standard for quantifying a target nucleic acid of a gene of a newborn infant contained in a dried blood spot in a filter paper, wherein the standard is a target nucleic acid that is not contained in the dried blood spot in a filter paper; or
said kit comprises a standard that is a target nucleic acid that is not contained in the dried blood spot in a filter paper.
Claim Rejections - 35 USC § 112
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.
Claims 8-9 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 8 recites the limitation “method for quantifying a target nucleic acid contained in a dried blood spot in a filter paper comprising detecting the target nucleic acid by real-time PCR according to claim 1 and quantifying the target nucleic acid using a standard below; (1) a standard” and the limitation “the standard is dissolved directly in a reaction container and used”.
Claim 8 lacks clarity because of the limitations underlined above: Specifically, “by real-time PCR according to claim 1” and “below” and “a standard”.
The limitation “real-time PCR according to claim 1” suggests that claim 8 depend from claim 1.
It is unclear whether or NOT the limitation “by real-time PCR according to claim 1” of claim 8 is requiring the ordinary skilled artisan to practice only the instant step (c) of claim 1.
However, both claims 1 and 8 appear to share different scopes, rendering claim 8 indefinite, as claim 1 recites many more process(es) other than step (c).
Alternatively, it is unclear whether claim 8 is intended instead to be drawn to:
“The method of claim 1, wherein the real-time PCR performed in step (c) further comprises: detecting the target nucleic acid and quantifying the target nucleic acid using a standard, wherein the standard contains an artificial nucleic acid including the sequence of the target nucleic acid and which is not contained in the dried blood spot in a filter paper, wherein the standard is dissolved directly in a reaction container and used.
Claim 8 again is indefinite and lacks clarity because it is unclear whether the “reaction container in which the standard is dissolved directly into” as recited by claim 8, IS identical to the PCR tube containing the intact filter paper containing a dried blood spot; or whether claim 8 intends the standard to be dissolved
Claim 8 is also rendered as lacking in clarity and thus indefinite because the limitation “a standard below” lacks clarity. To obviate the rejection, claim 8 can simply require “a standard”.
Claims 8-9 are also indefinite as the claims each require a standard useful to quantify target nucleic acids contained in dried blood spot in a filter paper. However, the structural features of the claimed standard are unclear.
It is not clear whether claim 8 requires a standard that is directed to an artificial nucleic acid comprising of a sequence of the target nucleic acid, said sequence of the target nucleic acid is not contained in the dried blood spot; or whether claim 8 requires the standard to be directed to an artificial nucleic acid comprising of a sequence of the target nucleic acid, and a nucleotide sequence that is not contained in the dried blood spot; or whether the standard is an artificial nucleic acid comprising a target sequence that is not contained in the dried blood spot.
Finally, it is not clear whether or NOT the standard is a nucleic acid within the dried blood spot sample on the filter paper; or whether the standard is a nucleic acid in the PCR tube but not on the filter paper, wherein the standard is also amplified and detected during the PCR.
Claim 9 is indefinite as it is unclear to which statutory classification claim 9 truly belongs since the preamble of claim 9 requires both a kit and the method of claim 8.
For the purpose of search and examination, claim 9 is construed as being drawn to a kit comprising a standard that is a target nucleic acid that is not contained in the dried blood spot in a filter paper.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 8 is rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Kinoshita (WO2018/181850 A1, published October 04, 2018 and filed March 30, 2018, cited on the IDS: the English Translation is attached and cited as WO2018/181850_Description, pp. 1-25).
Regarding claim 8, Kinoshita teach a method for quantifying a target nucleic acid contained in a dried blood spot in a filter paper (page 6 of WO2018/181850_Description, 1st paragraph, disclosures of the legends of Figs. 22, 28 and 29; and pg 10, paragraph 1), the method comprising:
detecting the target nucleic acid by real-time PCR (see Taqman noted by page 6 of WO2018/181850_Description, 1st paragraph, disclosures of the legends of Figs. 22, 28 and 29), and
quantifying the target nucleic acid using a standard that is an artificial nucleic acid comprising a target nucleic acid not contained in the dried blood spot in a filter paper (see RnaseP mentioned as standard in Taqman assay of page 6 of WO2018/181850_Description, 1st paragraph, disclosures of the legends of Figs. 22, 28 and 29 and page 10 of WO2018/181850_Description, 1st paragraph).
Accordingly, the instant claim 8 is taught by Kinoshita (WO2018/181850 A1).
Claim 9 is rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Kinoshita (WO2018/181850 A1, published October 04, 2018 and filed March 30, 2018: the English Translation is attached and cited as WO2018/181850_Description, pp. 1-25).
Regarding claim 9, Kinoshita teach a kit that comprises of a standard, the standard being an artificial nucleic acid comprising a target nucleic acid that is not contained in the dried blood spot (see page 4 of WO2018/181850_Description, see item 53: (wherein Kinoshita discloses “a kit according to any one of the above items, wherein the test of the copy number polymorphism is performed using human RNase P as a standard”; see also pg 6, disclosure for Figs. 22, 28 and 29; and 1st para of page 10; and finally page 2, 2nd paragraph through sixth paragraph).
Accordingly, the instant claim 9 is taught by Kinoshita (WO2018/181850 A1).
Claim 8 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Czibere et al. (Epub July 30, 2019, European Journal of Human Genetics, 2020, 28(1), pp.23-30).
Prior to the effective filing date of 09/11/2020 of the instant invention, Czibere et al. teach a method for quantifying a target nucleic acid contained in a dried blood spot in a filter paper (see pg 25).
Czibere et al. teach acquiring 3.2-mm punches from (dried blood spot) DBS cards (see pg 25, left col., 1st para, section of Materials and Methods entitled Samples and preparation of DBS) and extracting DNA from DBS in a rapid way that can be used for testing in multiplex quantitative (q)PCR assays, and screening up to 2000 samples a day with one person operating the molecular genetic screening procedure and the least possible time occupying quantitative polymerase chain reaction (qPCR) cyclers (see disclosures of the abstract and pg 24, 1st and 2nd paragraphs of right col, below the legend of Fig. 1; see also pg 25, text of sections entitled “Washing of DBS punches and DNA elution (CXCE-buffer cleanup)” and “Primers and probes” and “qPCR setup”).
The method of Czibere et al. comprises:
detecting the target nucleic acid by real-time PCR (see pg 25, text of sections entitled “Primers and probes” and “qPCR setup”), and
quantifying the target nucleic acid using a standard that is an artificial nucleic acid comprising a target nucleic acid not contained in the dried blood spot in a filter paper (see pg 25, text of sections entitled “Primers and probes” and “qPCR setup”: Czibere et al. teach the instant standard is cystinosin (CTNS, OMIM# 606272)).
Accordingly, the instant claim 8 is taught by Czibere et al.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Nishio Hisahide et al. (WO2019/074004A1, Japanese, published 04/18/2019 and filed October 10, 2018: English Translation is attached and cited: previously cited) and further in view of Tran (2014, Malaria Journal 13:393: previously cited) and Polansky (US 2004/0023207: previously cited).
Prior to the effective filing date of 09/11/2020 of the instant invention, Nishio Hisahide et al. teach a method for detecting the SMN1 gene in a dried blood spot in a filter paper by real-time PCR, comprising:
(A) a step of adding the dried blood spot in a filter paper to a PCR reaction tube (see pg 9, 2nd para: wherein Nishio Hisahide et al. teach 4 circles, each circle having a 3-mm diameter of a dry blood spot on the filter paper, are punched out and added to a 48 µl PCR mix in a tube, the mix comprising 2 × PCR Buffer for KOD FX Neo (25 µl), ), ddH2O (9 µl), KOD FX Neo (1 µl), dNTPs (10 µl), forward and reverse primers (3 µl) to detect SMN1 and/or SMN2 gene, at least one of this primer is specific for SMN1 gene relative to the SMN2 homolog (see also “SNP discrimination primers” on pg 9, 5th para); see also pg 9, 4th para for disclosure of direct PCR without nucleic acid extraction from the filter paper).
Nishio Hisahide et al. teach (B) a step of adding 20 to 50 µL of a PCR reagent to the PCR reaction tube (pg 9, 2nd para : 48 µl total PCR volume).
Nishio Hisahide et al. teach (C) a step of performing PCR reaction in the tube which contains the PCR reagent and the dried blood spot in a filter paper and which is sealed with a cap (pg 3 and 3rd para and pg 11, section entitled “Drawing Description” or last para of pg 11); and
(D) a step of sequentially and optically detecting a target nucleic acid in the SMN1 gene amplified by the PCR reaction (pg 5, last two paragraphs, pg 10, paragraphs 2nd para: wherein the real-time PCR disclosed uses EvaGreen dye).
Omitted from Nishio Hisahide et al. (claims 8-9)
Nishio Hisahide et al. do not fully meet the limitations of claims 8-9.
Regarding claim 8, Nishio Hisahide et al. do NOT teach a standard that is an artificial nucleic acid comprising a target nucleic acid which is not contained in the dried blood spot in a filter paper.
Regarding claim 9, Nishio Hisahide et al. do NOT teach a kit comprising a standard that is a target nucleic acid that is not contained in the dried blood spot in a filter paper.
Tran (2014) (claims 8-9)
Tran disclosed a dried blood spot assay for detection of the malaria parasite P. falciparum. See title. Tran made two different types of standards. One was based on a plasmid containing a single copy of P. falciparum 18S rRNA. A 10-fold serial dilution of this plasmid in PCR-grade water was performed. The second standard was made from genomic DNA (gDNA) extracted from a dried blood spot (DBS) sample from a P. falciparum-infected patient with a known blood parasite density. The extracted gDNA was serially diluted in water containing gDNA from an uninfected donor. See page 2, right column, first paragraph. This rejection is based on the first (plasmid-based) standard.
Tran used these standards as direct templates in qPCR reactions (page 3, left column, first paragraph). Tran disclosed (page 5, right column, first paragraph): “Notably, the results here indicate that a P. falciparum 18S rRNA plasmid-based standard curve can be a reliable option in cases where high-parasitaemia clinical samples are not available, as parasite density estimates from Ct values are remarkably similar irrespective of whether the standards were prepared from plasmid DNA or gDNA extracted from a clinical DBS sample.”
Polansky (2004/0023207) (claim 9)
Polansky disclosed (paragraph [0919]): “Well known advantages of commercial kits include convenience and reproducibility due to manufacturing standardization, quality control and validation procedures.”
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the application to incorporate the materials for performing the method suggested by the combined disclosures of Nishio Hisahide et al. and Tran into a “kit” to obtain the advantages of kits espoused by Polansky.
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the application to modify the method suggested by the disclosure of Nishio Hisahide et al. by employing an artificial standard as disclosed by Tran (for the relevant target being analyzed) in order to allow for accurate quantitation of the target. Based on Tran’s disclosure, one of ordinary skill in the art would have had a reasonable expectation of success in using an artificial standard directly in a PCR reaction, as Tran showed this was just as reliable as using a “natural” sequence of the target extracted from dried blood spots as a standard.
In view of the combined teachings and suggestions of all of the cited prior art references, the instant claims 8-9 are prima facie obvious.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Czibere et al. (Epub July 30, 2019, European Journal of Human Genetics, 2020, 28(1), pp.23-30) in view of Polansky (US 2004/0023207: previously cited).
The teachings of Czibere et al as it applies to claim 8 are provided above.
Regarding claim 9, while Czibere et al. teach providing cystinosin (CTNS, OMIM# 606272) as the instant standard in a method for quantifying target nucleic acid(s) contained in a dried blood spot in a filter paper, wherein the standard is an artificial nucleic acid comprising a target nucleic acid not contained in the dried blood spot in a filter paper, Czibere et al. do NOT teach a kit for practicing the method of claim 8.
Polansky (2004/0023207) (claim 9)
Polansky disclosed (paragraph [0919]): “Well known advantages of commercial kits include convenience and reproducibility due to manufacturing standardization, quality control and validation procedures.”
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the application to incorporate the materials for performing the method taught by Czibere et al. into a “kit” to obtain the advantages of kits espoused by Polansky.
In view of the combined teachings and suggestions of all of the cited prior art references, the instant claim 9 is prima facie obvious.
Conclusion
No claims are allowed because of the outstanding rejection(s) above.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLAYINKA A OYEYEMI whose telephone number is (571)270-5956. The examiner can normally be reached Monday -Thursday: 9:00 am - 5:00 pm, EST.
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OLAYINKA A. OYEYEMI
Examiner
Art Unit 1681
/OLAYINKA A OYEYEMI/Examiner, Art Unit 1681
/GARY BENZION/Supervisory Patent Examiner, Art Unit 1681