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 the Claims
Claims 1-14, 17, 20-22, 24, and 26-31 are pending in this application. Claims 15-16, 18-19, 23, and 25 have been cancelled by applicant. Claims 1-14, 17, 20-21, and 27-31 are under examination herein. Claims 22, 24, and 26 have been withdrawn from consideration.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5 and 28 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 5 and 28 are rejected for failing to further limit claim 3, from which they depend. Amended claim 3 has no groups containing Rb-c variables, thus claim 5 is broader than claim 3.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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 1-14, 17, 20-21, and 27-31 are rejected under 35 U.S.C. 103 as being unpatentable over Cheng et al. (WO 2018/177403 A1 – previously cited).
Regarding claims 1, 11-12, 14, 17, and 20, Cheng discloses the compounds of Formula I (page 3), which render the instant compounds obvious when: A3 is -CR3, wherein R3 (corresponding to instant X) can be can be -ORa, -SRa, -NRbRc, etc., wherein Ra, b, c (corresponding to instant Ra, b, c) can be H, alkyl, haloalkyl, etc.; A1 (corresponding to instant Y) can be N or -CR3, wherein R3 (corresponding to instant R6) can be H, -ORa, -SRa, -NRbRc, etc.; A2 can be -CH; R1-2 (corresponding to instant R1-2) can be H, -ORa, -SRa, -NRbRc, etc.; R4 (corresponding to instant R3) can be C1-6 alkyl/ haloalkyl, C3-7 cycloalkyl, etc.; and R5 (corresponding to instant R4) can be H, -ORa, -SRa, -NRbRc, etc.
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Cheng also discloses the compounds I-2, I-3, and I-30 as preferred embodiments, which render the instant compounds obvious – particularly instant I-1 and I-4 (shown in instant claim 20) (pages 63-64 of Cheng’s original document). While Cheng’s compounds below lack the alkoxy substituents in the position corresponding to instant group X, Cheng teaches their A3 can be -CR3, wherein R3 (corresponding to instant X) can be can be -ORa, and Ra (corresponding to instant Ra) can be alkyl, haloalkyl, etc. Thus, Cheng discloses a fairly broad genus of compounds, which encompass the compounds of the instant invention.
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Therefore, regarding claims 1, 11-12, 14, 17, and 20, one having ordinary skill in the art would have found the claimed compounds prima facie obvious, since they are generically embraced by Cheng’s disclosed formula and preferred embodiments; In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See MPEP 2144.08. The requisite motivation for arriving at the claimed compounds stems from the fact that they fall within the generic class of compounds disclosed by Cheng et al. Accordingly, one having ordinary skill in the art would have been motivated to prepare any of the compounds embraced by the disclosed generic formula, including those encompassed by the claims.
Applicant is further advised that similar properties may normally be presumed when compounds are very close in structure. Dillon, 919 F.2d at 693, 696, 16 USPQ2d at 1901, 1904. See also In re Grabiak, 769 F.2d 729, 731, 226 USPQ 870, 871 (Fed. Cir. 1985) (“When chemical compounds have very close structural similarities and similar utilities, without more a prima facie case may be made.”). Thus, evidence of similar properties or evidence of any useful properties disclosed in the prior art that would be expected to be shared by the claimed invention weighs in favor of a conclusion that the claimed invention would have been obvious. Dillon, 919 F.2d at 697-98, 16 USPQ2d at 1905; In re Wilder, 563 F.2d 457, 461, 195 USPQ 426, 430 (CCPA 1977); In re Linter, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972) (see MPEP 2144.08(d)).
Regarding claim 2, Cheng discloses their compounds I-2, I-3, and I-30 above, wherein the group corresponding to instant Y are N.
Regarding claims 3-4 and 27, Cheng discloses their compounds of Formula I, wherein the group corresponding to instant X can be -ORa, and Ra (corresponding to instant Ra) can be C1-6 alkyl/ haloalkyl, etc.
Regarding claims 5 and 28, Cheng discloses their compounds of Formula I, wherein the group corresponding to instant X can be -NRbRc, wherein Rb, c (corresponding to instant Rb, c) can be H, alkyl, haloalkyl, etc.
Regarding claims 6 and 29-30, Cheng discloses their compounds I-2, I-3, and I-30 above, wherein the group corresponding to instant ring A are 6-membered heterocycles substituted with C1 alkyl (corresponding to instant R5) (in I-2 and I-3); and substituted 4-membered heterocycle (in I-30). Specifically, the group corresponding to instant ring A in I-2 and I-3 is
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, reading on
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when Z is N and R5 is C1 alkyl, and anticipating
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Regarding claim 7, Cheng discloses their compounds I-2, I-3, and I-30 above, wherein the group corresponding to instant R1 is H.
Regarding claim 8, Cheng discloses their compounds I-2, I-3, and I-30 above, wherein the group corresponding to instant R2 is H.
Regarding claim 9, Cheng discloses their compounds I-2, I-3, and I-30 above, wherein the group corresponding to instant R3 is iPr.
Regarding claim 10, Cheng discloses their compounds I-2, I-3, and I-30 above, wherein the group corresponding to instant R4 is H.
Regarding claims 13 and 31, Cheng discloses their compounds I-2, I-3, and I-30 above, wherein the group corresponding to instant: Y is N; X can be -ORa, and Ra (corresponding to instant Ra) can be C1-6 alkyl (reading on methyl, ethyl, etc.); ring A is
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or
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; R1-2, 4 are H; and R3 is iPr.
Regarding claim 21, Cheng discloses pharmaceutical compositions of their compounds comprising pharmaceutically acceptable excipients (pages 22-23 of translated document).
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 1-14, 17, 20-21, and 27-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-32 of U.S. Patent No. 11,993,604 B2 (US ‘604); in view of Morita et al. (Obtained From gousei.f.u-tokyo.ac.jp [Retrieved on September 11th, 2025] <URL: https://gousei.f.u-tokyo.ac.jp/seminar/index.html#2012> - Published May 2012).
Regarding instant claims 1-14, 17, 20-21, and 27-31, US ‘604 claims methods of inhibiting CDK activity comprising administration of the compounds of Formula I below, which render the instant compounds obvious when A1 (corresponding to instant Y) is N; A2 is CH; A3 is CR3, wherein R3 (corresponding to instant X) can be a halogen or C1 alkyl (methyl); R1-3 can be H, C1-6 alkyl, etc.; and R4 can be C1-6 alkyl, etc. (US ‘604’s claim 1).
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US ‘604 specifically claims the compounds below (US ‘604’s claim 30).
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While US ‘604 does not claim their compounds wherein the group corresponding to instant X is, for example -ORa, wherein Ra can be H; the teachings of Morita et al. are relied upon for these disclosures.
Morita teaches the applications of bioisosterism in drug design (title), and teaches that the the study of bioisosteres introduces structural changes in lead compounds which may be beneficial for improving potency, selectivity, altering physical properties, etc. (page 3). Morita specifically teaches that -F, -CH3, and -OH are monovalent classical bioisosteres (page 4, top, point 1).
Therefore, it would have been prima facie obvious to one of ordinary skill prior to the effective filing date of the instant application to prepare the instantly claimed compounds in view of US ‘604, further in view of Morita. One of ordinary skill would have been motivated to do so with a reasonable expectation of success in view of US ‘604’s disclosure of their compounds of Formula I; and Morita’s teachings that the study of different bioisosteres of lead compounds can lead to an improvement in potency, selectivity, and physical properties of drug targets; further in view of Morita’s disclosure that hydroxyl (-OH) is a classical bioisostere, which can replace methyl (-CH3) and halo (-F) substituents in US ‘604’s compounds to arrive at the instant invention.
Applicant is reminded that similar properties may normally be presumed when compounds are very close in structure. (“When chemical compounds have very close structural similarities and similar utilities, without more a prima facie case may be made.”). Thus, evidence of similar properties or evidence of any useful properties disclosed in the prior art that would be expected to be shared by the claimed invention weighs in favor of a conclusion that the claimed invention would have been obvious.
Furthermore, Applicant is advised that a novel useful compound that is isomeric with the prior art compound is unpatentable unless it possesses some unobvious or unexpected beneficial property not possessed by the prior art compound. In re Norris, 179 F.2d. 970, 84 USPQ 458 (CCPA 1970). Therefore, it would have been obvious to one of ordinary skill to expect similar properties of structurally similar compounds since they are suggestive of one another. It has been held that a compound, which is structurally isomeric with a compound of the prior art, is prima facie obvious absent unexpected results. In re Finely, 81 USPQ 383 (CCPA 1949); 84 USPQ 458 (CCPA 1950).
Claims 1-14, 17, 20-21, and 27-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,319,323 B2 (US ‘323); in view of Morita et al. (Obtained From gousei.f.u-tokyo.ac.jp [Retrieved on September 11th, 2025] <URL: https://gousei.f.u-tokyo.ac.jp/seminar/index.html#2012> - Published May 2012).
Regarding instant claims 1-14, 17, 20-21, and 27-31, US ‘323 claims the compounds of Formula I below, which render the instant compounds obvious when A1 (corresponding to instant Y) is N; A2 is CH; A3 is CR3, wherein R3 (corresponding to instant X) can be a halogen or C1 alkyl (methyl); R1-3 can be H, C1-6 alkyl, etc.; R4 can be C1-6 alkyl, etc.; and R3 (corresponding to ring A) can be heterocyclyl (US ‘323’s claim 1).
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US ‘323 specifically claims the compounds below (US ‘323’s claim 19).
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While US ‘323 does not claim their compounds wherein the group corresponding to instant X is, for example -ORa, wherein Ra can be H; the teachings of Morita et al. are relied upon for these disclosures.
Morita teaches the applications of bioisosterism in drug design (title), and teaches that the the study of bioisosteres introduces structural changes in lead compounds which may be beneficial for improving potency, selectivity, altering physical properties, etc. (page 3). Morita specifically teaches that -F, -CH3, and -OH are monovalent classical bioisosteres (page 4, top, point 1).
Therefore, it would have been prima facie obvious to one of ordinary skill prior to the effective filing date of the instant application to prepare the instantly claimed compounds in view of US ‘323, further in view of Morita. One of ordinary skill would have been motivated to do so with a reasonable expectation of success in view of US ‘323’s disclosure of their compounds of Formula I; and Morita’s teachings that the study of different bioisosteres of lead compounds can lead to an improvement in potency, selectivity, and physical properties of drug targets; further in view of Morita’s disclosure that hydroxyl (-OH) is a classical bioisostere, which can replace methyl (-CH3) and halo (-F) substituents in US ‘323’s compounds to arrive at the instant invention.
Applicant is reminded that similar properties may normally be presumed when compounds are very close in structure. (“When chemical compounds have very close structural similarities and similar utilities, without more a prima facie case may be made.”). Thus, evidence of similar properties or evidence of any useful properties disclosed in the prior art that would be expected to be shared by the claimed invention weighs in favor of a conclusion that the claimed invention would have been obvious.
Furthermore, Applicant is reminded that a novel useful compound that is isomeric with the prior art compound is unpatentable unless it possesses some unobvious or unexpected beneficial property not possessed by the prior art compound. Therefore, it would have been obvious to one of ordinary skill to expect similar properties of structurally similar compounds since they are suggestive of one another. It has been held that a compound, which is structurally isomeric with a compound of the prior art, is prima facie obvious absent unexpected results.
Claims 1-14, 17, 20-21, and 27-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,428,423 B2 (US ‘423); in view of Morita et al. (Obtained From gousei.f.u-tokyo.ac.jp [Retrieved on September 11th, 2025] <URL: https://gousei.f.u-tokyo.ac.jp/seminar/index.html#2012> - Published May 2012).
Regarding instant claims 1-14, 17, 20-21, and 27-31, US ‘423 claims the compounds of Formula I below, which render the instant compounds obvious when A1 (corresponding to instant Y) is N; A2 is CH; A3 is C-halogen or C-alkyl; R1-2, 5 can be H, C1-6 alkyl, etc.; R4 can be C1-6 alkyl, etc.; and R3 (corresponding to ring A) can be heterocyclyl (US ‘423’s claim 1).
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US ‘423 specifically claims the compounds below (US ‘423’s claim 17).
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While US ‘423 does not claim their compounds wherein the group corresponding to instant X is, for example -ORa, wherein Ra can be H; the teachings of Morita et al. are relied upon for these disclosures.
Morita teaches the applications of bioisosterism in drug design (title), and teaches that the the study of bioisosteres introduces structural changes in lead compounds which may be beneficial for improving potency, selectivity, altering physical properties, etc. (page 3). Morita specifically teaches that -F, -CH3, and -OH are monovalent classical bioisosteres (page 4, top, point 1).
Therefore, it would have been prima facie obvious to one of ordinary skill prior to the effective filing date of the instant application to prepare the instantly claimed compounds in view of US ‘423, further in view of Morita. One of ordinary skill would have been motivated to do so with a reasonable expectation of success in view of US ‘423’s disclosure of their compounds of Formula I; and Morita’s teachings that the study of different bioisosteres of lead compounds can lead to an improvement in potency, selectivity, and physical properties of drug targets; further in view of Morita’s disclosure that hydroxyl (-OH) is a classical bioisostere, which can replace methyl (-CH3) and halo (-F) substituents in US ‘423’s compounds to arrive at the instant invention.
Applicant is reminded that similar properties may normally be presumed when compounds are very close in structure. (“When chemical compounds have very close structural similarities and similar utilities, without more a prima facie case may be made.”). Thus, evidence of similar properties or evidence of any useful properties disclosed in the prior art that would be expected to be shared by the claimed invention weighs in favor of a conclusion that the claimed invention would have been obvious.
Furthermore, Applicant is reminded that a novel useful compound that is isomeric with the prior art compound is unpatentable unless it possesses some unobvious or unexpected beneficial property not possessed by the prior art compound. Therefore, it would have been obvious to one of ordinary skill to expect similar properties of structurally similar compounds since they are suggestive of one another. It has been held that a compound, which is structurally isomeric with a compound of the prior art, is prima facie obvious absent unexpected results.
Response to Arguments
Claims
Claim amendments are acknowledged and have been entered. No new matter has been introduced.
Claim Rejections - 35 USC § 112(b)
Applicant’s arguments, see page 18, filed 01/23/2026, with respect to 35 USC § 112(b) rejections have been fully considered and are persuasive. The 35 USC § 112(b) rejection of the claims has been withdrawn.
Claim Rejections - 35 USC § 103
Applicant's arguments filed 01/23/2026 have been fully considered but they are not persuasive.
Applicant argues that the claimed compounds show “unexpected distinct properties” over the prior art of record, declaring that the instant compounds show a significant FLT3 selectivity over CDK4 and CDK6; and states Cheng’s compounds do not share this selectivity and supplies the results below to back up arguments:
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However, as pointed out in the Election/Restriction section (pages 2-4) of non-final office action mailed 10/24/2025; Applicant has failed to provide comparative data of Cheng’s compounds as it pertains to relative FLT3 inhibition. In order for Applicant’s arguments to overcome the obviousness rejections presented herein, Applicant is required to demonstrate that the special ability to inhibit FLT3 over CDK4/ 6 stems from the alkoxy substitution claimed. While Cheng’s compounds may be more potent for CDK4/6 inhibition compared to the instant compounds, as shown in the tables above, Applicant has not demonstrated that Cheng’s compounds do not also show even higher potency in the context of FLT3 inhibition.
Double Patenting
Applicant's arguments filed 01/23/2026 have been fully considered but they are not persuasive.
Applicant argues that the cores of the compounds claimed by US ‘604, US ‘323, and US ‘423 differ from the instant cores. Applicant argues that Morita does not teach or suggest replacing the pyrazole and imidazole cores, and that introduction of instant group X would result in significantly reduced CDK4/6 inhibition, as discussed above.
As an initial matter, Patent US ‘423 claims the same imidazole cores as the instant compounds - while structures provided in the Non-final action mailed 10/24/2025 (pages 14-15) were cited incorrectly, Applicant is advised that “[A] prior art reference must be considered in its entirety, i.e., as a whole” W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983) (see MPEP 2141.02 VI). Thus, while the rejections listed above or in past actions present a modified interpretation of the teachings of the previously cited prior solely for the purpose of clarity, the claims remain rejected over the prior art of record. Thus, it was Applicant’s burden to review the cited art for everything taught therein.
As it pertains to US ‘604 and US ‘323, Applicant is reminded the courts have found that a novel useful compound that is isomeric with the prior art compound is unpatentable unless it possesses some unobvious or unexpected beneficial property not possessed by the prior art compound. Therefore, it would have been obvious to one of ordinary skill to expect similar properties of structurally similar compounds since they are suggestive of one another. It has been held that a compound, which is structurally isomeric with a compound of the prior art, is prima facie obvious absent unexpected results. Thus, in the absence of persuasive comparative unexpected results, the instant compounds are obvious in view of the compounds cited by US ‘604, US ‘323, and US ‘423, all in view of Morita et al. as cited herein.
In response to Applicant’s arguments that introduction of the instant X group leads to unexpected results – Applicant fails to provide specific relevant data to corroborate this statement, as discussed above.
Conclusion
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 JACKSON J HERNANDEZ whose telephone number is (571)272-5382. The examiner can normally be reached Mon - Thurs 7:30 to 5.
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/JACKSON J HERNANDEZ/Examiner, Art Unit 1627
/SARAH PIHONAK/Primary Examiner, Art Unit 1627