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 .
Priority
This application is a national stage entry of PCT/CN2020/123641 filed on 10/26/2020. Acknowledgment is made of applicant's claim for foreign priority based on an application filed in CHINA on 12/20/2019. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
Applicant’s amendment filed on October 22, 2025 canceling claim 12, and amending claims 1, 2, 4, 6-7, 11, 16, 18-22 has been entered. Claim 8 was previously canceled. Claims 1-7, 8-11 and 13-22 are currently pending.
Response to Arguments
Due to Applicant’s amendments to the claims, the previous rejection of claims 1-7, 9-11 and 13-22 under 35 U.S.C. 112(b) is hereby withdrawn.
Due to Applicant’s amendments to the claims, the previous rejection of claims 4-7 and 13-22 under 35 U.S.C. 112(d) is hereby withdrawn.
Applicant's arguments filed October 22, 2025 with respect to the remaining rejections have been fully considered but they are not persuasive.
Applicant argues that Zouharova et al. teaches that only compounds I and VI have inhibitory activity against PRV, while compounds II to V do not have any inhibitory activity against PRV and compound VI is 10-fold more effective than compound I. Applicant argues that these results demonstrate that the inhibitory activity of 2,6-diaminopurine-based acyclic nucleosides is easily influenced by the modification of the chemical structure, both of the modification to the substitution on the purine ring and the modification to the side chain (-CH₂-CH₂-O-CH₂-) and thus a person skilled in the art would not have reasonably expected and predicted whether it would have led to better inhibitory activity against PRV by modifying or removing a functional group on the compound and therefore a person skilled in the art would not have modified or removed a functional group on the compound, especially a functional group in the core structure.
Applicant further argues that De Clercq et al. and De Clercq describe that HPMPA has an antiviral activity against pseudorabies virus, however, one of the structural differences between adefovir and HPMPA is that HPMPA has a substituent (-CH₂-OH) on the side chain (-CH₂-CH₂-O-CH₂-) of the adenine ring. Applicant argues that De Clercq et al. or De Clercq do/does not describe any other compound's activity against PRV, and a person skilled in the art would not have any motivation to modify HPMPA by removing the substituent (-CH₂-OH) to obtain an anti-PRV drug. Applicant argues that De Clercq does not disclose any activity data of PMEA or PMADAP against PRV.
Applicant further argues that neither Angarano nor Armilli teach adefovir dipivoxil has inhibitory activity against PRV.
Applicant further argues that a drug has different activities for different types of viruses and one drug is not active against every virus. Applicant provides several examples wherein one drug may treat one virus but not another virus. Applicant argues that there are no broad-spectrum antiviral drugs. Applicant further argues that the Office has not provided any reasonable explanation as to why a skilled artisan would have selected to do specific claimed modifications of the prior art compound(s) and why such modifications would have been reasonably expected to be successful, i.e. the Office has not provided any reasonable explanation as to why a skilled artisan would have selected to do specific claimed modifications and why such modifications would have been reasonably expected to be successful (e.g., in the claimed method of treatment).
These arguments are found not persuasive since as detailed in the rejection of record, a reasonable expectation of success exists in view of the prior art because the claimed compounds have similar structures as compared to the prior art compounds that have inhibitory effects against pseudorabies virus. Zouharova et al. and De Clercq et al. teach that compounds having similar structures as adefovir are effective against PRV. Adefovir having the following structure:
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has a similar structure as compound I
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of Zouharova et al. except that is lacks the 2-amino group; and adefovir has a similar structure as (S)-HPMPA
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of De Clercq et al. except that it lacks the CH2OH group on the side chain.
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and/or similar utilities. “An obviousness rejection based on similarity in chemical structure and/or function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991).
In the instant case, the compounds as claimed are not novel compounds, rather they are known in the art, and moreover they are known antiviral compounds. Thus a person of ordinary skill in the art would merely need to substitute adefovir as an obvious alternative for the prior art compounds based on structural similarities and functional similarities as antiviral agents. Based on their similar structures, a person of ordinary skill in the art would have been motivated to try adefovir for the inhibition of PRV based on the prior art teachings which teach compounds having similar structures as adefovir have antiviral activity against PRV. Thus based on similarities in structures, a person of ordinary skill in the art would have had a reasonable expectation of success in inhibiting PRV activity by administering adefovir.
An "obvious to try" rationale may support a conclusion that a claim would have been obvious where one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. " [A] person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 421, 82 USPQ2d 1385, 1397 (2007).
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In addition, the teachings of DeClerq et al. which teach that (S)-HPMPA has antiviral activity against pseudorabies, wherein said (S)-HPMPA compound lacks the 2-amino group on the adenine core structure, demonstrate that the 2-amino position on the adenine core structure is not necessary for antiviral activity against PRV. Thus based on the combination of both Zouharova et al. and De Clercq et al., a person of ordinary skill in the art would reasonably expect adefovir, which lacks the 2-amino group like the (S)-HPMPA compound of DeClerq et al., to have antiviral activity against PRV like compound I of Zouharova et al. since the 2-amino group is not necessary for the antiviral activity against PRV.
With regard to Applicant’s argument that Zouharova et al. teaches that compound VI is 10-fold more effective than compound I, it is noted that Zouharova et al. further states that “It cannot be determined for now whether higher hydrophobicity or lower inhibitory constant, or both are responsible for higher antiviral activity of compound VI in comparison with compound I. Therefore we would suggest that both analogue I and VI are in fact likely to have equivalent levels of efficacy once at target.” (page 91). Thus the teachings of Zouharova et al. clearly suggest equivalent activity of compound I and VI motivating an ordinary skilled artisan to consider compound I and modifications thereof in the search for new and effective compounds for the inhibition of pseudorabies virus.
Obviousness does not require absolute predictability, only a reasonable expectation of success, i.e., a reasonable expectation of obtaining similar properties. See, e.g., In re O ’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988). Par Pharm., Inc. v. TWi Pharms., Inc., 773 F.3d 1186, 1198 (Fed. Cir. 2014). Proof sufficient “to obtain approval” for a drug by a regulatory agency, such as by a randomized, placebo-controlled, double-blinded design is not necessary to establish obviousness. Hoffmann-La Roche Inc. v. Apotex Inc., 748 F.3d 1326, 1331 (Fed. Cir. 2014) (“[c]onclusive proof of efficacy is not necessary to show obviousness.”). “Scientific confirmation of what was already believed to be true may be a valuable contribution, but it does not give rise to a patentable invention.” PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1363-64 (Fed. Cir. 2007).
In the instant case, based on the reasons detailed above, a person of ordinary skill in the art would have had a reasonable expectation of success in the use of adefovir for inhibiting pseudorabies virus and treating pseudorabies viral infection and thus the cited claims of the instant application are rendered obvious over the cited prior art teachings.
Applicant’s arguments with respect to the remaining rejections are found not persuasive for the same reasons as detailed above.
Accordingly, the previous rejection under 35 USC 103 is hereby maintained and reproduced below. This action is FINAL.
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.
Claims 1-7, 8-11 and 13-22 are rejected under 35 U.S.C. 103 as being unpatentable over Zouharova et al. (Veterinary Microbiology, 2016, Vol.184, pages 84-93 Provided on IDS) and De Clercq et al. herein referred to as De Clercq et al. (Nature Vol. 323, October 1986, pages 464-467 Provided on IDS) in view of De Clercq herein referred to as De Clercq (Nucleosides and Nucleotides, 1991, 10(1-3), pages 167-180 Provided on IDS); Angarano (IJCP Supplement 103, June 1999 pages 39-41 Provided on IDS) and Armilli et al. U.S. Patent No. 6,451,340 B1.
The cited claims of the instant application claim a method for treating pseudorabies virus infection or a disease related to pseudorabies virus infection comprising administering to a subject in need thereof a therapeutically effective dose of a compound of formula (I), a stereoisomer, solvate or pharmaceutically acceptable salt of the compound, or a solvate of the pharmaceutically acceptable salt of the compound, wherein the compound of formula (I) has the following structure:
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such as adefovir
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or adefovir dipivoxil
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.
Zouharova et al. teaches that pseudorabies, also known as “Aujeszky’s disease”, is an acute, frequently fatal disease caused by Pseudorabies virus (PrV), also known as suid herpesvirus 1 (SuHV-1), which belongs to the genus Varicellovirus, in the Alphaherpesvirinae subfamily of the family Herpesviridae (page 84). Zouharova et al. teaches that PrV is a pathogen spread mostly among swine and is lethal for almost all mammals except for higher primates and humans (page 84). Zouharova et al. teaches that Aujeszky’s disease, is deadly to most mammals with the exception of higher primates and men and this disease causes serious economic loses among farm animals, especially pigs, and even though wild boar are able to survive infection, they spread the disease to other animals (abstract and page 84). Zouharova et al. further teaches that dogs, especially hunting dogs, can be infected with this virus by close contact with the blood or saliva of shot and wounded wild boar, and consumption of contaminated raw pork or offal is another source of fatal infection in farm and companion dogs (pages 84-85).
Zouharova et al. teaches that in vitro inhibition of PrV replication was demonstrated for combination of Acyclovir and Ribavirin and several nucleotide based drugs like bromovinyl deoxyuridine, acyclovir and 2’-nor-2’-deoxyguanosine have been studied as in vitro inhibitors and in mice models in vivo (page 85).
Zouharova et al. teaches that compound I having the following structure
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demonstrated considerable antiviral activity against PrV (page 92 and Figure 4 page 89). Thus Zouharova et al. teaches that compound I is a promising compound for the development of a drug with antiviral activity against PrV (page 92).
De Clercq et al. teaches a new compound has been found, (S)-9-(3-hydroxy-2-phosphonylmethoxypropyl)adenine ((S)-HPMPA), that has potent and selective activity against a broad spectrum of DNA viruses (abstract). The novel (S)-HPMPA has the following structure:
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(page 464). The novel acyclic adenosine analogue (S)-HPMPA is inhibitory to a broad spectrum of DNA viruses, including HSV-1 and -2, TK- HSV-1, VZV, TK- YZV, human CMV, phocid herpesvirus type 1 (seal herpesvirus, SeHV), the simian herpesvirus platyrrhinae (HVP), suid herpesvirus type 1 (SHV-1, or pseudorabies virus or Aujeszky's disease virus), bovid herpesvirus type 1 (infectious bovine rhinotracheitis virus, BHV-1 ), equid herpesvirus type 1 (equine abortion virus, EHV-1), African swine fever (ASF) virus, vaccinia virus, human adenoviruses, and retroviruses such as murine sarcoma virus (MSY) at concentrations far less than those required to affect the metabolism (DNA, RNA or protein synthesis) of the uninfected host cells (page 464). De Clercq et al. specifically demonstrates that (S)-HPMPA has antiviral activity against pseudorabies virus (page 465 Table 1). De Clercq et al. further teaches that 9-(2-phosphonylmethoxyethyl)adenine (PMEA) (adefovir) is closely related to (S)-HPMPA and PMEA is about as active as (S)-HPMPA against TK+ HSV and TK- HSV (pages 465 and 466).
Thus both Zouharova et al. and De Clercq et al. specifically teach that antiviral compounds similar in structure to adefovir (PMEA) have antiviral activity against the pseudorabies virus.
However, neither reference specifically demonstrates that adefovir or adefovir dipivoxil has antiviral activity against pseudorabies virus. Moreover, neither reference teaches pharmaceutically acceptable salts, solvates or hydrates of adefovir or adefovir dipivoxil.
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and/or similar utilities. “An obviousness rejection based on similarity in chemical structure and/or function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991).
In the instant case, De Clercq et al. specifically teaches that 9-(2-phosphonylmethoxyethyl)adenine (PMEA) (adefovir) is closely related to the compound taught therein, (S)-HPMPA which is inhibitory against pseudorabies virus since PMEA is about as active as (S)-HPMPA against TK+ and TK- herpes virus (pages 465 and 466).
In addition, De Clercq teaches HPMPA
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which is the same compound as taught in De Clercq et al. which inhibits pseudorabies virus; PMEA
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which is adefovir; and PMEDAP
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which is the same compound as taught in Zouharova et al. which inhibits pseudorabies virus (page 169).
De Clercq teaches that the HPMP and PME derivatives that have been most intensively studied are HPMPA, HPMPC, PMEA and PMEDAP and HPMPA has been the lead compound of this series and its activity has been demonstrated against various adenovirus (AV) serotypes, herpesviruses (HSV-1, HSV-2 and thymidine kinase (TK)-deficient (TK-) HSV-1 mutants, varicella- zoster virus (VZV) and TK- VZV mutants, cytomegalovirus (CMV), Epstein-Barr virus (EBV), phocid herpesvirus type 1 (seal herpesvirus, SeMV), suid herpesvirus type 1 (SHV-1, pseudorabies virus or Aujeszky's disease virus), bovid herpesvirus type 1 (BHV-1, infectious bovine rhinotracheitis virus), equid herpesvirus type 1 (EHV-1, equine abortion virus), hepadnaviruses (duck hepatitis B virus (DHBV), human hepatitis B virus); iridoviruses (African swine fever virus (ASEV); poxviruses (vaccinia virus (VV)) (page 168). De Clercq teaches that like HPMPA, PMEA and PMEDAP are active against herpes-, hepaDNA-, and iridoviruses (page 169 and Table 1 page 170).
Accordingly, prior to the effective filing data it would have been obvious to a person of ordinary skill in the art that adefovir (PMEA) which has been shown to have antiviral activity against herpesvirus by De Clercq, would have similar properties as HPMPA and PMEDAP as taught in De Clercq et al. and Zouharova et al. since as detailed above PMEA, PMDAP and HPMPA have similar structures and all have been shown to have antiviral activity against herpesviruses as taught by De Clercq. Therefore, since pseudorabies virus is a species of herpesvirus and both PMEDAP and HPMPA have been shown to inhibit pseudorabies virus as taught in De Clercq et al. and Zouharova et al., a person of ordinary skill in the art would reasonably expect that the structurally and functionally similar PMEA (adefovir) compound would also inhibit pseudorabies virus and be useful in the treatment of pseudorabies virus infection. As such, based on the aforementioned teachings, it would have been obvious to a person of ordinary skill in the art to administer a therapeutically effective amount of adefovir for the treatment of pseudorabies virus infection with a reasonable expectation of success.
Although the cited references do not teach adefovir dipivoxil, a person of ordinary skill in the art would have expected similar results as detailed above for adefovir for adefovir dipivoxil because Angarano teaches that adefovir dipivoxil is a prodrug of adefovir available in oral form (page 39). Angarano teaches that adefovir (PMEA) is active against a wide spectrum of retroviruses, herpesviruses, and hepadnaviruses, however oral availability of adefovir was reported to be low and thus adefovir dipivoxil with a higher oral availability was developed (page 39). Angarano teaches that adefovir dipivoxil, an acyclic nucleotide phosphonate analogue, demonstrates a potent and sustained antiviral activity and its long half-life allows once daily administration (abstract). Angarano teaches that adefovir dipivoxil is rapidly metabolized to adefovir and pivalic acid and the compound resulting from the esterification of pivalic acid and carnitine is excreted by the kidney (page 39).
Accordingly, prior to the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to use adefovir dipivoxil as an obvious substitute for adefovir in the treatment of pseudorabies virus infection since adefovir dipivoxil is a prodrug of adefovir with improved availability that releases the active component, adefovir in vivo. Thus an ordinary skilled artisan would have been motivated to use the oral dosage form of adefovir dipivoxil as an obvious alternative for adefovir with a reasonable expectation of success in treating pseudorabies virus infection.
Although the cited prior art does not teach pharmaceutically acceptable salts, solvates or hydrates of adefovir or adefovir dipivoxil, prior to the effective filing date of the claimed invention, salts, solvates or hydrates of adefovir or adefovir dipivoxil were known in the art. Armilli et al. teaches the nucleotide analog 9-[2-[[bis[(pivaloyloxy)methoxy]phosphinyl]methoxy]ethyl]adenine ("adefovir dipivoxil" or "AD") is the bis-pivaloyloxymethyl ester of the parent compound 9-[2-(phosphonomethoxy)ethyl]adenine ("PMEA"), which has antiviral activity in animals and in humans (column 1 lines 10-19). Armilli et al. teaches compositions comprising novel AD forms: having desirable properties for large scale synthesis or for formulation into therapeutic dosages, having a good melting point, and/or flow or bulk density properties, which facilitates manufacturing and formulation of compositions containing AD, as well as being storage-stable forms of AD (column 1 lines 40-49). Armilli et al. specifically teaches the invention accomplishes its primary objects by providing crystalline AD, in particular, a hydrated form ("Form 2"), a methanol solvate form, ("Form 3"), a fumaric acid salt or complex, ("Form 4"), a hemisulfate salt or complex, a hydrobromide salt or complex, a hydrochloride salt or complex, a nitrate salt or complex, a mesylate salt or complex, an ethyl sulfonate salt or complex, a b-naphthylene sulfonic acid salt or complex, an a-naphthylene sulfonic acid salt or complex, an (S)-camphor sulfonic acid salt or complex, a succinic acid salt or complex, a maleic acid salt or complex, an ascorbic acid salt or complex and a nicotinic acid salt or complex (column 1 line 62-column 2 line 10). These forms of AD can be used to prepare oral formulations such as sachets, cachets or tablets each containing a predetermined amount of the active ingredient; as a powder or granules; as solution or a suspension in an aqueous liquid or a non-aqueous liquid; or as an oil-in-water liquid emulsion or a water-in-oil liquid emulsion (column 23 lines 8-15).
Accordingly, prior to the effective filing date, it would have been obvious to a person of ordinary skill in the art to use suitable forms of AD known in the art including the hydrate form as well as salt forms such as the hydrochloride salt such as those taught by Armilli et al. One would have been motivated to use said forms due to the benefits as taught by Armilli et al. including having desirable properties for large scale synthesis or for formulation into therapeutic dosages, having a good melting point, and/or flow or bulk density properties, which facilitates manufacturing and formulation of compositions containing AD, as well as being storage-stable forms of AD. Thus the use of AD hydrates and salts is rendered obvious in view of the cited prior art teachings.
With respect to the use of a combination of a compound of formula (I) and a second therapeutic agent, HPMPA and PMEDAP as taught in De Clercq et al. and Zouharova et al. are useful to inhibit pseudorabies virus and thus treat pseudorabies virus. In addition, Zouharova et al. teaches that in vitro inhibition of PrV replication was demonstrated for the combination of Acyclovir and Ribavirin and several nucleotide based drugs like bromovinyl deoxyuridine, acyclovir and 2’-nor-2’-deoxyguanosine have been studied as in vitro inhibitors and in mice models in vivo (page 85). Accordingly, prior to the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to use combinations of at least two or more of adefovir, HPMPA, PMEDAP, Acyclovir and Ribavirin for the treatment of pseudorabies virus infection with a reasonable expectation of improved results as compared to each compound individually. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose ....[T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850,205 USPQ 1069, 1072 (CCPA 1980). Thus combining multiple therapeutic agents for treatment pseudorabies virus infection is rendered obvious.
With respect to claims 19-22 which claims the compounds are administered simultaneously, separately, in the same preparation or in different preparation units, it is within the skill of an ordinary artisan practicing the invention to determine an appropriate treatment regimen including how the compounds are administered. Thus in the absence of secondary considerations such as unexpected results claims 19-22 are rendered obvious in view of the cited prior art teachings.
Thus the cited claims of the instant application are rendered obvious in view of the cited prior art teachings.
Conclusion
Claims 1-7, 8-11 and 13-22 are rejected. Claim 8 and 12 are canceled. No claims are allowed.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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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/KARA R. MCMILLIAN/Primary Examiner, Art Unit 1623
KRM