DETAILED ACTION
This Office Action is in response to Applicant’s Amendment and Remarks filed on 27 January 2026 in which claims 1, 24, 66 and 67 were amended to change the scope and breadth of the claims, and claims 86-91 were newly added.
Claims 1, 4, 7-9, 19-21, 24, 28, 40, 42, 44, 45, 66-68, 70, 78, 80 and 86-91 are pending in the current application. Claims 70, 78, 80, 87 and 89 are withdrawn as being drawn to a non-elected species. Claims 1, 4, 7-9, 19-21, 24, 28, 40, 42, 44, 45, 66-68, 86, 88, 90, and 91 are examined on the merits herein.
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 .
Election/Restrictions
In accordance with the MPEP 803.02, if upon examination of the elected species, prior art is found that would anticipate or render obvious the instant invention based on the elected species, the search of the Markush-type claim will not be extended (see MPEP 803.02).
In the instant case, the elected species has been cancelled as a result of a prior art rejection. As per MPEP 803.02, the search will be extended to encompass non-elected species.
If prior art is then found that anticipates or renders obvious the non-elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim again, the amended claim will be examined. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. In the event prior art is found during examination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final.
A second action on the rejected claims can be made final unless the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP § 706.07(a). The following new rejection was necessitated by applicant’s amendment of the claims to eliminate unpatentable alternatives.
The species where R9 is a substituted heteroaliphatic has been canceled from the instant claims. Thus, the Examiner has selected
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, which reads on Formula (I), wherein each P is hydrogen; R1 is -SRA; R2 is halogen; R3 is hydrogen; R7 is hydrogen; R8 is hydrogen; R9 is an unsubstituted alkenyl as the species for examination.
Withdrawn Rejections
Applicant’s amendment, filed 27 January 2026, with respect to the rejection of claims 1, 4, 7-9, 19-21, 45 and 68 under 35 U.S.C. § 102(a)(1)/(a)(2) as being anticipated by Myers et al., has been fully considered and is persuasive, because claim 1 has been amended to delete “substituted or unsubstituted heteroaliphatic”. The rejection is hereby withdrawn.
Response to Arguments
Applicant's arguments filed 27 January 2026 have been fully considered but they are not persuasive to overcome all of the rejections of record.
Applicant contends one of ordinary skill in the art would not have selected FSA-22091 as a lead compound, because Myers discloses more than seventy other compounds, many of which are more potent towards inhibiting Gram-positive or Gram-negative bacterial strains. Applicant argues Myers does not teach or suggest FSA-22091 as a “most promising” compound or a “best performing” antibiotic.
The above arguments have been carefully considered, but are not found persuasive when Myers et al. is considered as a whole.
Myers et al. expressly prefers a compound of formula (I-h):
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, and expressly prefers where A is of the formula
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(see claim 4 of Myers et al.).
The definition of R1 of Myers et al. is the same as the present claims.
The definition of R2 of Myers et al. is the same as the present claims.
The definition of R3 of Myers et al. is the same as the present claims.
The definition of R7 is the same as present claim 1.
The definition of R4 of Myers et al. includes methyl: Myers et al. defines R4 as hydrogen, halogen, substituted or unsubstituted alkyl, substituted or unsubstituted alkenyl, substituted or unsubstituted alkynyl, substituted or unsubstituted carbocyclyl, substituted or unsubstituted heterocyclyl, substituted or unsubstituted aryl, substituted or unsubstituted heteroaryl, or substituted or unsubstituted heteroaliphatic.
The definition of R8 of Myers et al. substantially overlaps with the present claims. Myers et al. defines R8 as “hydrogen, substituted or unsubstituted alkyl, substituted or unsubstituted alkenyl, substituted or unsubstituted alkynl, substituted or unsubstituted carbocyclyl, substituted or unsubstituted heterocylyl, substituted or unsubstituted heteroaliphatic, -C(=NRA)RA, -C(=NRA)ORA, -C(=NRA)N(RA)2, -C(=O)RA, -C(=O)ORA, -C(=O)N(RA)2, -S(O)2RA, or a nitrogen protecting group (those groups in bold are the same as the present claims).
The definition of R9 of Myers et al. overlaps with the present claims. Myers et al. defines R9 as “halogen, substituted or unsubstituted alkyl, substituted or unsubstituted alkenyl, substituted or unsubstituted alkynyl, substituted or unsubstituted carboycyclyl, substituted or unsubstituted heterocyclyl, substituted or unsubstituted aryl, substituted or unsubstituted aralkyl, substituted or unsubstituted heteroaryl, substituted or unsubstituted heteroalkyl, substituted or unsubstituted heteroaliphatic, -ORA, -N(RA)2, -SRA, -CN, -SCN, -C(=NRA)RA, -C(=NRA)ORA, -C(=NRA)N(RA)2, -C(=O)RA, -C(=O)ORA, -C(=O)N(RA)2, -NO2, -NRAC(=O)RA, -NRAC(=O)ORA, -NRAC(=O)N(RA)2, -NRAC(=NRA)N(RA)2, -OC(=O)RA, -OC(=O)ORA, -OC(=O)N(RA)2, -NRAS(O)2RA, -OS(O)2RA, or -S(O)2RA.
Thus, so far, the main differences between the compounds of Myers et al. and the present claims is the definitions of R4, R8 and R9. Furthermore, Myers et al. teach definitions of R4, R8 and R9 which overlap with the definitions of R4, R8 and R9
Turning back to R4 and the definition of A, it is noted Myers et al. expressly prefers one of three definitions, including
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(see claim 13). Myers et al. also expressly prefers R1 is -SCH3 (claim 21). Myers et al. teach fifteen definitions for R8, of which ten out of the fifteen are the same as the present claims. Myers et al. expressly prefers R9 is substituted or unsubstituted alkyl, substituted or unsubstituted aryl, or substituted or unsubstituted aralkyl (claim 30). Thus, in a preferred embodiment of R9, Myers et al. teach three alternatives, of which one out of the three is the same as the present claims. Thus, there is significant overlap between the compounds preferred by Myers et al. and the present claims.
According to Table 3, compound FSA-24036
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had one of the highest antibacterial activity against both Gram positive and Gram negative strains. Thus, one of ordinary skill in the art would consider
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as a lead compound, since it had strong antibacterial activity against most of the bacteria tested.
FSA-22091, cited in the office action as a compound close in structure to the elected species has the following structure:
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. One of ordinary skill in the art would note both FSA-24036 and FSA-22091 are structurally similar to the presently claimed compounds. FSA-24036 differs from FSA-22091 in that it is substituted at the position corresponding to R9 of the presently claimed compound (circled).
The comparison between these two compounds alone provides motivation to optimize the above compounds with different substitutions at the position corresponding to R9 of the presently claimed compound, because substitution at R9 resulted in a compound having the highest antibacterial activity.
And as noted in the previous Office Action, compounds FSA-507041, 507031, 507056, 511019, 511071, 511072, 511073, 511074, and 507052, contained substitutions at the R9 position, and also possessed very strong antibacterial activity. Additional compounds substituted at R9 position that demonstrated strong antibacterial activity, include FSA-507060, FSA-509019, FSA-507061, FSA-510001, FSA-510002, FSA-510003, FSA-510006, FSA-510011, FSA-510012, FSA-511033, FSA-510021, FSA-510022, FSA-510065, FSA-510073.
Compound FSA-507041
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with a C2 alkenyl substitution at R9 had better antibacterial activity towards S. pneumoniae, C. difficile, B. fragilis, one strain of E. coli, and P. aeruginosa than FSA-22091, which had no substitutions at the position corresponding to R9 of the presently claimed compound. Additionally, previously noted FSA-507031 and FSA-50756 also had higher activity against P.aeruginosa while having similar activity as FSA-24036 towards the other bacteria tested. In addition to the compounds above, FSA-510065 which had an N-methyl group at R9 possessed antibacterial activity.
Thus, there is motivation to start with
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, where one of ordinary skill in the art would have been motivated to make substitutions at R9, because these derivatives had similar or better antibacterial activity than when there were no substitutions at R9.
Alternatively, one could have started with
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as the “lead compound” because of its high antibacterial activity, and known different substitutions at the R9 position could have been made while maintaining similar activity with a reasonable expectation of success.
Additionally, the ordinary artisan would have been motivated to modify
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at the position indicated (corresponding to R9 in Formula I-h): because FSA-503003 which had a propyl group at the circled position had higher antibacterial activity than FSA-503002, which had a methyl group at the circled position (corresponding to present R9).
Compared to
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,
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also had strong antibacterial action against S. aureus BAA 977iErmA, S. aureus MP-549 msr(a) USA 300, and MP-513 clinical cErm.
Compared to FSA-24036, compound FSA-507041
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with a C2 alkenyl substitution at R9, had better antibacterial activity towards S. pneumoniae, C. difficile, B. fragilis, one strain of E. coli, and P. aeruginosa.
The ordinary artisan would have been motivated to modify
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or
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at the position indicated (corresponding to R9 in Formula I-h): because Myers et al. expressly teach the indicated position can be substituted with alkyl groups including iso-butyl groups, and describes a preferred embodiment wherein the indicated position is substituted with methyl or propyl. The ordinary artisan would have been motivated to vary the substituent at the R9 position in order to identify similar or better antimicrobial compounds. The ordinary artisan would have had a reasonable expectation of success because Myers et al. exemplified numerous compounds substituted at the indicated R9 position with good antibacterial activity.
For the above stated reasons, said claims are properly rejected under 35 U.S.C. 103(a). Thus, the rejection is hereby maintained.
Modified Rejections
The following are new ground(s) or modified rejections necessitated by Applicant's amendment, filed on 27 January 2026, where the limitations in pending claims 1, 24, 66 and 67 as amended now have been changed and claims 86, 88, 90, and 91 have been newly added. Therefore, rejections from the previous Office Action, dated 17 October 2025, have been modified and are listed below.
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.
Claim(s) 1, 4, 7-9, 19-21, 24, 28, 40, 42, 44, 45, 66-68, 86, 88, 90, and 91 are rejected under 35 U.S.C. 103 as being unpatentable over Myers et al. (WO 2019/032936, cited in previous Office Action)
Myers et al. teach a compound having the structure:
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, which reads on Formula (I), wherein each P is hydrogen; R1 is -SRA; R2 is halogen; R3 is hydrogen; R7 is hydrogen; R8 is hydrogen; R9 is an unsubstituted alkenyl, differing only by the presence of a double bond indicated above.
Myers et al. teach
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and
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as species of formula (I-h)
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(claims 1, 41 and 60).
The compound of Formula I-h, is a compound of Formula I, where R9 is defined as a substituted or unsubstituted alkyl, substituted or unsubstituted alkenyl, substituted or unsubstituted alkynyl, substituted or unsubstituted carbocyclyl, substituted or unsubstituted heteroaliphatic (claim 1). The term “alkyl” includes C4 alkyls, e.g. n-butyl, t-butyl, sec-butyl, iso-butyl (para [00285]). Myers et al. disclose a narrower embodiment of alternatives for R9, which includes methyl and propyl (para [00133]). Myers et al. exemplify multiple compounds substituted at the R9 position (table 1).
Compound FSA-507041 had strong antibacterial activity against almost every species tested. FSA-24036, which has a saturated bond at the carbons indicated:
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, had the strongest antibacterial activity of the compounds tested.
Compound FSA-22091, which has a saturated bond at the carbons indicated:
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had activity against S. aureus (genotype ATCC 29213); S. pneumoniae; S. pyogenes, K. pneumoniae and H. influenzae (Table 2, p.205-206).
Compounds FSA-507041, FSA-507031, FSA-507056, FSA-511019, FSA-511071, FSA-511072, FSA-511073, FSA-511074 and FSA-507052 also possessed antibacterial activity, all of which contained substitutions at the R9 position. Myers et al. teach compounds having the same stereocenter as the presently elected species: FSA-512079c, FSA-512080c, and FSA-512081b (claim 60). Myers et al. teach a pharmaceutical composition comprising a compound of any of claims 1-60, or a pharmaceutically acceptable salt thereof (claim 61).
Myers et al. teach the use of these compounds to treat an infectious disease (claims 63-69).
Compounds FSA-507041
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, FSA-22091
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, and FSA-24036
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are some of the closest exemplified compounds disclosed by Myers et al. as the claimed and elected species:
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, as well as the expanded species
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.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify
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to be saturated single bond; and to modify FSA-22091 to contain an isobutyl group.
The ordinary artisan would have been motivated to modify
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to be a saturated single bond because Myers et al. expressly teach a compound of formula I-h
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which has a saturated bond at the indicated position. Additionally, Myers et al. exemplify compounds with a saturated single bond having high and/or broad antibacterial activity, including for example FSA-24036. Thus, the ordinary artisan would have had a reasonable expectation of success in modifying the compound of Myers et al. to contain a saturated bond, and have the same/or similar antibacterial activity.
The ordinary artisan would have been motivated to modify FSA-22091 at the position indicated (corresponding to R9 in Formula I-h):
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because Myers et al. expressly teach the indicated position can be substituted with alkyl groups including iso-butyl groups, and describes a preferred embodiment wherein the indicated position is substituted with methyl or propyl. The ordinary artisan would have been motivated to vary the substituent at the R9 position in order to identify similar or better antimicrobial compounds. The ordinary artisan would have had a reasonable expectation of success because Myers et al. exemplified numerous compounds substituted at the indicated R9 position with antibacterial activity.
Thus, the claimed invention as a whole is prima facie obvious over the combined teaching of the prior art.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4, 7-9, 19-21, 24, 28, 40, 42, 44, 45, 66-68, 86, 88, 90, and 91 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,124,534 in view of Myers et al. (cited above). Although the claims at issue are not identical, they are not patentably distinct from each other because they encompass the claimed and elected species. Claim 14 exemplifies compound FSA-22091:
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, which differs from the presently elected species at the indicated position. Claim 12 specifies a compound of formula I-h, which includes substitutions at the indicated position:
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. The compound of Formula I-h, is a compound of Formula I, where R9 is defined as a substituted or unsubstituted alkyl, substituted or unsubstituted alkenyl, substituted or unsubstituted alkynyl, substituted or unsubstituted carbocyclyl, substituted or unsubstituted heteroaliphatic (claims 1 and 9). Claim 14 describes multiple compounds substituted at the indicated R9 position.
The claims of the reference Patent do not expressly disclose wherein R9 is isobutyl (presently elected species).
Myers et al. teach as discussed above.
The compounds of the reference Patent encompass the compounds presently claimed, including the elected species.
The ordinary artisan would have been motivated to modify FSA-22091 at the position indicated (corresponding to R9 in Formula I-h):
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because Myers et al. expressly teach the indicated position can be substituted with alkyl groups including iso-butyl groups, and describes a preferred embodiment wherein the indicated position is substituted with methyl or propyl. The ordinary artisan would have been motivated to vary the substituent at the R9 position in order to identify similar or better antimicrobial compounds. The ordinary artisan would have had a reasonable expectation of success because Myers et al. exemplified numerous compounds substituted at the indicated R9 position with antibacterial activity.
The claims are prima facie obvious over the claims of the reference Patent.
Claims 1, 4, 7-9, 19-21, 24, 28, 40, 42, 44, 45, 66-68, 86, 88, 90, and 91 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 11,767,341 in view of Myers et al. (cited above). Although the claims at issue are not identical, they are not patentably distinct from each other because they encompass the claimed and elected species. Claim 1 is directed towards a compound of Formula I-h
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, where R9 is defined as a substituted or unsubstituted alkyl, substituted or unsubstituted alkenyl, substituted or unsubstituted alkynyl, substituted or unsubstituted carbocyclyl, substituted or unsubstituted heteroaliphatic. Claim 11 exemplify multiple compounds substituted at R9.
The claims of the reference Patent do not expressly disclose wherein R9 is isobutyl (presently elected species).
Myers et al. teach as discussed above.
The ordinary artisan would have been motivated to modify FSA-22091 at the position indicated (corresponding to R9 in Formula I-h):
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because Myers et al. expressly teach the indicated position can be substituted with alkyl groups including iso-butyl groups, and describes a preferred embodiment wherein the indicated position is substituted with methyl or propyl. The ordinary artisan would have been motivated to vary the substituent at the R9 position in order to identify similar or better antimicrobial compounds. The ordinary artisan would have had a reasonable expectation of success because Myers et al. exemplified numerous compounds substituted at the indicated R9 position with antibacterial activity.
The claims are prima facie obvious over the claims of the reference Patent.
Conclusion
In view of the rejections to the pending claims set forth above, no claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BAHAR A CRAIGO whose telephone number is (571)270-1326. The examiner can normally be reached M-F: Noon-8pm ET.
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/BAHAR CRAIGO/
Primary Examiner
Art Unit 1699