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 .
Status of Claims
Amendment filed on 11/17/2025 is acknowledged.
Claims 1, 7, 14, 16, and 19 are amended. Claims 6, 9 and 13 are cancelled.
Claims 1-5, 7-8, 10-12 and 14-21 are pending and being examined on merits herein.
Priority
This instant application 18001831, filed on 12/14/2022, is a 371 of PCT/EP2021/065641, filed on 06/10/2021, which claims domestic benefit of 63039135, filed on 06/15/2020, and also claims foreign priority to European Patent Office 20188107.5, filed on 07/28/2020.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 09/18/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Examiner.
Withdrawn Objections/Rejections
All previous claim Objection(s) / Rejection(s) as set forth in the previous Office action (mailed 06/17/2025) that are not repeated and/or maintained in the instant Office action are withdrawn, in light of applicant’s amendment and remark filed on 11/17/2025.
Claim Objections
Claims 1, 14 and 16 are objected to because of the following informalities:
Claims 1, 14 and 16 each recites “unsubstituted C8 to C8 alkyl or C8 to C8 alkenyl”, while it is supposed to be “C8 to C18” based on applicant’s remarks filed on 11/17/2025.
Appropriate correction is required.
Claim Interpretation
Claims 1, 14, 16 and 19-21 are interpreted as following.
Claim 1 is interpreted as a concentrate composition comprising:
at least one biocide, and
at least one ethoxylated fatty acid alkyl ester of general formula (I) as shown, wherein R1 is selected from the group consisting of linear, acyclic, unsubstituted C8 to C18 alkyl or C8 to C18 alkenyl, m is an integer in the range of 2 to 30, and R2 is selected from the group consisting of linear, acyclic, unsubstituted C1 to C10 alkyl, wherein the amount of the at least one ethoxylated fatty acid alkyl ester of general formula (I) is in the range of 80.0 to 99.80 %, by weight based on the final weight of the concentrate.
The phrase “self-emulsifiable” is interpreted as property or “intended use” of the concentrate, because it does not provide structural contribution to the concentrate.
Claim 14 is interpreted as the concentrate according to claim 1 comprising:
at least one pyrethroid, and
at least one ethoxylated fatty acid alkyl ester of general formula (I) as shown, wherein R1 is a linear, acyclic, unsubstituted C8 to C18 alkyl or C8 to C18 alkenyl, m is an integer in the range of 3 to 13, and R2 is a linear, acyclic, unsubstituted C1 to C10 alkyl.
Claim 16 is interpreted as the concentrate according to claim 1 comprising:
at least one sterol biosynthesis inhibitor, and
at least one ethoxylated fatty acid alkyl ester of general formula (I) as shown, wherein R1 is a linear, acyclic, unsubstituted C8 to C18 alkyl or C8 to C18 alkenyl, m is an integer in the range of 3 to 13, and R2 is a linear, acyclic, unsubstituted C1 to C10 alkyl.
Claim 19 is interpreted as “process of making” limitation.
Claims 20-21 are interpreted as method of using or “intended use” of the composition.
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 1-5, 7-8, 10-12 and 14-21 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.
Claims 1, 14 and 16 each recites “unsubstituted C8 to C8 alkyl or C8 to C8 alkenyl”, it is unclear how a range can be itself to itself. The claims scopes are indefinite. For the purpose of compact prosecution, the ranges are interpreted as C8 to C18 in light of applicant’s remarks.
Claims 2-5, 7-8, 10-12, 15, and 17-21 are rejected accordingly because they are directly or indirectly depending on claim 1 and they do not clarify further of the issue addressed above regarding claim 1.
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.
Claims 1-5, 7-8, 10-12 and 14-21 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being unpatentable over Ingo et al. (WO2012055810, 05/03/2012, IDS of 12/14/2022).
Ingo throughout the refence teaches self-emulsifiable composition with better biological performance, using ethoxylated fatty acid esters as new adjuvants or additives for biocide compositions (Pg.1, Lines 34-39).
Regarding instant claims 1, 7-8, 10-12, 14 b and 16 b, Ingo teaches a biocide composition comprising (e.g. Claims 1-2 of the reference):
(a) esters of ethoxylated alcohols according to formula (I) R1CO(OCH2CH2)nOR2 (e.g., Pg. 2 Lines 10, 28; Claim 1) (which represents the compound with general formula (I) as instant claims 1, 14 and 16), wherein R1CO stands for an saturated or unsaturated acyl radical having 8 to 22 carbon atoms (overlapping with carbon numbers C8 to C18 as interpreted for R1 in instant claims 1, 7, 14b, 16b), R2 represents an alkyl radical having 1 to 10 carbon atoms (same as R2 in instant claims 1, 10-11, 14b, 16b), n denominates an integer of from 1 to 100 or 2 to 25 (Claim 2 of reference), which overlaps with integer m range of 2 to 30 in instant claim 1, or range of 3 to 13 in instant claim 8, or an integer range of 3 to 13 in instant claims 14b and 16b), on condition that said esters exhibit an HLB value within a range of 1 o to 17,
(b) biocides (claim 1 of reference; corresponding to instant claim 1a), and optionally
(c) oil components or co-solvents and/or,
(d) emulsifiers (Claim 1) (corresponding to emulsifiable in instant claim 1).
Ingo exemplifies the ethoxylated ester in examples 4-5, showing the esters as (decyl+10EO-C8/10 Ester) and (decyl+20EO-C8/10 Ester) respectively (Table 1, Pg. 20), corresponding to decyl group (10 carbons), which is linear, acyclic, and unsubstituted C10 alkyl of R1, integer m as 10 or 20, R2 as C8 or C10 linear, acyclic, unsubstituted C8 or C10 alkyl. Thus, the exemplified numbers falling within the ranges as recited C8 to C18 of R1, m as 2 to 30, C1 to C10 of R2 in instant claim 1, or falling within the ranges of C8-C18 of R1, m range as 3 to 13, C1 to C10 of R2 in instant claims 8, 14b, and 16b, and reading into species of R1 in instant claim 7, R2 species in instant claim 10.
Ingo teaches biocide compositions comprising (a) about 0.1 % b.w. to about 99 % b.w., esters of ethoxylated alcohols according to formula (I); (b) about 1 % b.w. to about 99.1 % b.w., preferably about 5 % b.w. to about 75 % b.w., and most preferably about 15 % b.w. to about 40 % b.w. biocides (Pg. 17, Lines 30-35) (the ester high end amount about 99% falling within the range of 80.0 to 99.8% in instant claim 1, and the low end amounts, e.g., about 1%, about 5%, about 15%, of biocide falling within range of 0.20 to 20% in instant claim 12).
Ingo specifies that the compositions represent concentrates to be diluted with water to give aqueous formulations for end-users (Pg. 17, Lines 39-42), corresponding to “concentrate” in instant claims. Because Ingo indicates the composition ingredients of oil components, co-solvents, emulsifiers are optional, Ingo teaches a composition can be self-emulsifier composition. Moreover, in light of claim interpretation, the self-emulsifiable is interpreted as the property or intended use of the concentrate, which has been taught by prior art, and the property or intended use is inherent.
MPEP 2131.03.I states that "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023). For this instance, prior art exemplifies carbon numbers within R1 or R2 carbon ranges, integer numbers within m range, and prior art also teaches high end of amount range of the ethoxylated fatty acid alkyl ester within the instantly claimed range, and the low end amounts of the biocide ranges falling within the instantly claimed range. Therefore, all the ranges are anticipated by prior art.
Regarding instant claim 2-5, 14 a, 15, 16 a and 17-18, Ingo teaches biocide agents in the composition including pesticides and antimicrobials, and pesticides can be selected from herbicides, insecticides, fungicides and many others (Pg. 3, Lines 20-25; Claim 5) (corresponding to instant claim 2), herbicides can be selected from aryloxyphenoxyproponates, cyclohexanediones, dinitroanilines, diphenyl ethers, hydroxybenzonitriles, imidazolinones, pyrimidinyloxybenzoics, ureas, sulfonyureas, triazines, and many others (Pg. 6-7, c) Herbicides) (corresponding to instant claim 3), insecticides can select carbamates, juvenile hormone for insect growth regulation, organophosphorus compounds, plant toxin like nicotine or caffeine, pyrethroids like bifenthrin, and many others (Pg. 7-8, d) Insecticides; Claim 6-7) ( corresponding to instant claims 4, 14a, 15 ), fungicide can use sterol biosynthesis inhibitors like triazole fungicides including azaconazole, bitertanol, diniconazole, penconazole, myclobutanil, tebuconazole, and many others (Pg. 4-6, b)Fungicides) (corresponding to instant claims 5, 16a and 17-18).
Even though Ingo does not explicitly teach fungicide selected from groups of sterol biosynthesis inhibitors, it teaches triazole and tebuconazole, species of sterol biosynthesis inhibitors. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable, as indicated in MPEP 2112.01.II. For this instance, triazole and tebuconazole carries the inherent property of sterol biosynthesis inhibitors.
Regarding instant claims 19-21, as mentioned above, Ingo teaches self-emulsifiable composition with better biological performance, using ethoxylated fatty acid esters as new adjuvants or additives for biocide compositions (Pg.1, Lines 34-39). In light of claim interpretation, instant claim 19 is interpreted as a process of making the composition. The composition in Ingo having the components as instantly claimed, which would necessarily be composed or mixed together to form the final product. Moreover, MPEP 2113. I. states "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Ingo indicates that industrial application encompasses spray solutions comprising at least one pesticide and esters of ethoxylated alcohols according to formula (I), and the ester compound can be used as adjuvants or additives, for example green solvents, dispersants, carrier oils and the like, for enhancing the biological efficacy of biocides (Pg. 18, Lines 1-6). Ingo points out that the invention is for crop protection with enhancement of biological efficacy (Pg. 2, Lines 1-5). Ingo therefore teaches preparing the concentrate comprising the separate components a) and b) as biocide and ethoxylated fatty acid alkyl ester of general formula (I), which can be considered as a kit with these components.
In light of claim interpretation, claims 20-21 are interpreted as “intended use” limitations, which do not create structural difference over the prior art teaching. MPEP 0700.707.07(f) states “a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.” MPEP 2144.01 points out "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
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 1-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-2, 11, 42, 46, and 54 of copending Application No. 18003380, filed on 12/27/2022, in view of Ingo et al. (WO2012055810, 05/03/2012, IDS of 12/14/2022).
Application No. 18003380: Claims 1 and 42 recite a composition comprising at least one biocide selected from the group consisting of fungicide, insecticide, acaricide, rodenticide, nematicide, herbicide, and miticide, and a solvent system that comprises a first and a second component wherein the second component can be an ester (A2c). Claim 2 recites at least one biocide amount of >=15.0 to <=50.0% and solvent, which can be ester A2c, at amount 30.0 to 85.0% by weight of the composition. Claims 11 and 54 recite organic ester A2c is selected from the group consisting of alkyl and aryl esters of substituted or unsubstituted, linear or branched C1-C24 alkyl carboxylic acid, alkyl and aryl esters of substituted or unsubstituted, linear or branched C2-C24 alkenyl carboxylic acid, alkyl and aryl esters of substituted or unsubstituted Cs-C24 cycloalkyl carboxylic acid, alkyl and aryl esters of substituted or unsubstituted Cs-C24 cycloalkenyl carboxylic acid, alkyl and aryl esters of substituted or unsubstituted C6-C24 aryl carboxylic acid, and alkyl or aryl esters of substituted or unsubstituted C7-C24 arylalkyl carboxylic acid. Claim 46 recites at least one biocide is present at an amount of 15.0 to 85.0 % by weight. Claim 66 recites a method of treating soil and plants comprising the step of applying the emulsion composition that comprises the composition in claim 1.
The above pending application does not recite the ester solvent structure and species, or the biocide species.
Ingo teaches the ester solvent structure and species, as well as the biocide species including specific fungicides, herbicides, insecticides as discussed above in great detail and incorporated herein.
It would be prima facie obvious for one with ordinary skills in the art to incorporate the teaching of a composition comprising biocide and ester in pending application into Ingo composition to arrive at current invention. Since pending application recite ester as a solvent with biocide in the composition while Ingo teaches biocide with ester composition, it provides reasonable expectation of success to combine them with mutual components of same intended use. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
This is a provisional nonstatutory double patenting rejection.
Claims 1-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1, 4, 10, 12, 18, and 21 of copending Application No. 18711649, filed on 05/20/2024, in view of Ingo et al. (WO2012055810, 05/03/2012, IDS of 12/14/2022).
Application No. 18711649: Claim 1 recites a composition comprising i) a solvent system from 15.0 to 95.0% that can comprise an ester A2c and ii) at least one biocide in an amount of 5.0 to 60.0%. Claim 2 recites the at least one biocide is selected from fungicide, insecticide, acaricide, rodenticide, nematicide, herbicide, and miticide. Claim 10 recites organic ester A2c is selected from butyl lactate, n-butyl salicylate, ethyl lactate, methyl salicylate, and methyl benzoate. Claim 12 recites a method for preparing an emulsifier concentrate comprising at least one biocide and a solvent system that can comprise an ester A2c. Claim 15 recites a method of preparing the composition comprising the steps of providing adding at least one biocide to the solvent system to obtain a mixture. Claim 18 recites an emulsion composition comprising the biocide composition. Claim 21 recites a method of treating soil and plants by applying the composition comprising a biocide and a solvent system that comprises ester A2c.
The above pending application does not recite the ester solvent structure and species, or the biocide species.
Ingo teaches the ester solvent structure and species, as well as the biocide species including specific fungicides, herbicides, insecticides as discussed above in great detail and incorporated herein.
It would be prima facie obvious for one with ordinary skills in the art to incorporate the teaching of a composition comprising biocide and ester in pending application into Ingo composition to arrive at current invention. Since pending application recite ester as a solvent with biocide in the composition while Ingo teaches biocide with ester composition, it provides reasonable expectation of success to combine them with mutual components of same intended use. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments/remarks filed on 11/17/2025 have been fully considered, but they are not persuasive.
Regarding art rejections under 35 U.S.C. 102 in office action mailed 06/17/2025, applicant asserts that current pending claims are not anticipated by Ingo.
Applicant’s remark/argument is found not persuasive, and previous rejections under 35 U.S.C. 102 are remained, because the exemplified ester species in Ingo still anticipates the R1 and R2 features and carbon ranges. Also, as presented in the office action above, the ester amount range of 80.0 to 99.80% is anticipated by prior art because the end points of the ranges taught by prior art falling within the instantly claimed range. The most relevant paragraphs are copied below for reference:
Ingo exemplifies the ethoxylated ester in examples 4-5, showing the esters as (decyl+10EO-C8/10 Ester) and (decyl+20EO-C8/10 Ester) respectively (Table 1, Pg. 20), corresponding to decyl group (10 carbons), which is linear, acyclic, and unsubstituted C10 alkyl of R1, integer m as 10 or 20, R2 as C8 or C10 linear, acyclic, unsubstituted C8 or C10 alkyl. Thus, the exemplified numbers falling within the ranges as recited C8 to C18 of R1, m as 2 to 30, C1 to C10 of R2 in instant claim 1, or falling within the ranges of C8-C18 of R1, m range as 3 to 13, C1 to C10 of R2 in instant claims 8, 14b, and 16b, and reading into species of R1 in instant claim 7, R2 species in instant claim 10.
Ingo teaches biocide compositions comprising (a) about 0.1 % b.w. to about 99 % b.w., esters of ethoxylated alcohols according to formula (I); (b) about 1 % b.w. to about 99.1 % b.w., preferably about 5 % b.w. to about 75 % b.w., and most preferably about 15 % b.w. to about 40 % b.w. biocides (Pg. 17, Lines 30-35) (the high end ester amount about 99% falling within the range of 80.0 to 99.8% in instant claim 1, and the low end amounts, e.g., about 1%, about 5%, about 15%, of biocide falling within range of 0.20 to 20% in instant claim 12).
Regarding nonstatutory double patenting rejections over copending applications 18/003,380 and 18/711,649, applicant requested that the rejections be held in abeyance until the pending claims or the copending claims are allowed.
A request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP §714.02 and 37 CFR 1.111(b)). Thus, the double patenting rejection(s) of record has/have been maintained as no action regarding these rejections has been taken by Applicants at this time.
Please refer to the entire office action presented above as a complete response to remarks/arguments.
Conclusion
No claim is 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DONGXIU ZHANG SPIERING whose telephone number is (703)756-4796. The examiner can normally be reached 7:30am-5:00pm (Except for Fridays).
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/DX.Z./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616