Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
The amendment filed December 3, 2025 has been received and entered. With the entry of the amendment, claims 9 and 12-14 are canceled, and claims 1-8, 10-11 and 15-21 are pending for examination.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-11 and 15-18, in the reply filed on April 29, 2024 is acknowledged.
It is noted that non-elected claims 12-14 were canceled in the amendment of February 19, 2025.
Claim Rejections - 35 USC § 112
The rejection of claims 1-8, 10-11 and 15-21 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn due to applicant’s arguments provided December 3, 2025.
Claim Objections
The objection to claim 20 because at claim 20, line 4, the second comma in the phrase “polyurethane,,” should be removed for proper grammar is withdrawn due to the amendment of December 3, 2025 providing this correction.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-8, 10-11 and 15-21 are rejected under 35 U.S.C. 103 as being unpatentable over Okada et al (US 2018/0030600) in view of Yoshida (US 2010/0120962), Maubru et al (US 6303110) and WO 2015/118907 (hereinafter ‘907), as evidenced by Kolics (US 2012/0104331), EITHER alone OR further in view of Lindsay et al (US 4820547).
Claim 1, 3, 15, 17, 20-21: Okada teaches a method for treating a surface of a non-conductive containing substrate (note 0012), the method comprising: providing a selector treatment of the surface of the non-conductive substrate, where the selector treatment comprises providing the substrate, providing a selector composition which can comprise a nitrogen containing compound and has a pH of at least 8 or 10, for example, overlapping the claimed range, and contacting the substrate with the selector composition (note 0012, 0038, 0040, step (e) where the substrate is treated with an alkaline solution that can contain a nitrogen containing compound such as ammonia or organic amine, such as 2-aminoethanol (monoethanolamine), where this can be considered a selector composition as an alkaline, nitrogen-containing compound composition, including materials described by applicant in the specification as filed as nitrogen compounds for such compositions, where the composition acts to etch the exposed substrate with the contact (step (I)(c)), noting the forming of the fine unevenness giving what can be considered a microetch, which improves catalyst attachment quality (makes surface receptive to activation) at 0038, and where the substrate is not required to be heated after the selector treatment, note 0045, 0046, Table 1 possible temperatures include room temperature ). Thereafter, Okada provides activating the surface of the non-conductive substrate for metallization, where the activating can be by contacting the substrate with a catalyst solution (activation composition) where tin/palladium colloids can be present or copper (as desired by claims 3, 17), for example, can also be used as the catalyst, such that a transition metal (such as copper) is deposited on the surface of the substrate (due to the contact with the catalyst solution) and an activated surface for metallization is obtained (note 0012, 0043-0045).
(A) As to providing the conditioning step claimed before the selector treatment, with a first application of a conditioner containing a quaternary nitrogen atoms, such as from a polymer such as a polyamide (claim 20) and as a cationic polymer (claim 21), and the selector containing nitrogen compounds, such as monoethanolamine, as noted above Okada describes how the selector composition can be considered as providing microetching, and the composition can also contain 2-aminoethanol (monoethanolamine) or ammonia (note 0038), such as desired for the selector composition.
Yoshida further describes preparing a substrate to be electrolessly plated, where the substrate can be a resin substrate (so nonconductive) (note 0001, 0024), where a first treatment with a conditioner composition can be provided that contacts the substrate, where the conditioner contains a nitrogen containing compound with quaternary nitrogen atoms in the form of a cationic polymer (as desired by claim 21) where the polymer can be a polyamide (polyacrylamide) (as desired by claim 20) (note 0018-0019, 0025, 0034), where it is indicated that after the conditioner treatment there can be a etching treatment (note 0034, 0027), and thereafter activating the surface with catalyst can be provided (note 0025, 0027), and thereafter electroless plating provided (note 0025, 0027).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Okada to provide a conditioning treatment that contacts the substrate with a conditioning composition using a cationic polymer such as a polyamide containing quaternary nitrogen atoms before the selector treatment as suggested by Yoshida, with an expectation of providing a desirable plating pretreatment process, where Okada provides a process that provides an alkaline pretreatment that can contain monoethanolamine or ammonia, for example, that provides microetching before applying catalyst activation, and Yoshida indicates that it is desirable to provide a conditioning pretreatment to the non-conductive substrate that contacts the substrate with a condition composition containing a cationic polymer such as a polyamide containing quaternary nitrogen atoms to be followed by an etching treatment and then application of catalyst activation.
(B) As to the selector composition comprising a first nitrogen containing compound of ammonia, monoethanolamine, triethanolamine or mixtures thereof and a second nitrogen containing compound of guanidine, guanidine compounds or mixture thereof, and has a pH of from 9-12 (claim 15) or 9-14 (claim 1), Okada notes how the alkaline selector (step (e)) composition can be an alkaline liquid with a compound that alkalifies a solution, giving examples of ammonia and also an organic amine such as 2-aminoethanol (monoethanolamine) (note 0038), materials as listed for the first nitrogen containing compound of the selector. Additionally, Okada notes the pH as at least 8 or at least 10, giving ranges overlapping the claimed range (note 0040), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize from this range, giving a value in the claimed range. Note In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Additionally, Maubru indicates how pH of a composition can be adjusted by adding basifying (alkalifying) agents such as ammonia, monoethanolamine, and also guanidine carbonate (a guanidine compound), for example, alone or as mixtures (note column 5, lines 50-65).
Kolics further evidences that guanidine and guanidine derivatives as known pH adjustors that can be used in electroless plating processes to raise the pH (note 0011-0013m 0016).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Okada in view of Yoshida to use ammonia and/or monoethanolamine in the selector composition along with guanidine carbonate (guanidine compound, derivative) to provide the desired alkaline solution as suggested by Maubru and evidenced by Kolics with an expectation of predictably acceptable results, since Okada indicates the selector/step(e) alkaline composition is made with a compound that alkalifies a solution, giving examples such as ammonia and monoethanolamine, and Maubru teaches that along with ammonia and/or monoethanolamine, guanidine carbonate can also be used for alkalifying a solution, where Kolics evidences how guanidine and guanidine derivatives are known to be used for pH adjustment for alkalifying a solution in the electroless art.
(C) As to the specific aqueous, palladium free activation composition as claimed, as noted above Okada indicates that a catalyst solution with copper can be used instead of that with palladium (so palladium free) (note 0043).
‘907 indicates a method for providing an aqueous, palladium free activation composition for activation of a non-conductive substrate for metallization, where the method includes providing an aqueous starting composition comprising a first species of dissolved transition metal (copper, as desired by present claims 3 and 17) ions and one or more complexing agents (stabilizer which has complexing action (but does not say that this prevents agglomeration of the metal particles), and can be citric acid, described in the present specification as a complexing agent), and then adding continually or semi-continually reducing agent (such as borohydrides) such that particles of the copper would be formed continually or semi-continually, so giving a composition with dissolved copper ions, and additionally copper particles, complexing agent and reducing agent (note translation, pages 3-4, where the reducing agent is slowly dropped in the solution with the soluble copper salt (which would form dissolved ions) over time to form the metal particles, so continuous or semi-continuous formation reduction of the copper ions through the reducing agent). ‘907 indicates the use of this catalyst composition provides for improving stability of the catalyst solution, for example (note translation, page 3). As to the dissolved copper ions and the copper particles present in a reversable equilibrium, where the copper particles are formed through reduction with the reducing agent, and the dissolved copper ions are also formed from the copper particles through continuous or semi-continuous oxidation of the particles, and the copper ions and copper particles thereof, respectively, are repeatedly involved in the reduction and oxidation such that no precipitating agglomerates of the metal particles are formed, it is understood that the same composition materials are provided with the same process steps that give this reversible equilibrium as discussed above, and as a result this same reversible equilibrium activity described above would occur. Note Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Okada in view of Yoshida and Maubru, as evidenced by Kolics to activate the substrate using an activation liquid as claimed with copper ions and metal particles, complexing agent, and reducing agent, and provided in the reversable equilibrium with the features claimed as suggested by ‘907 to provide a desirably stable copper activation/catalyst composition for use, since Okada indicates that copper catalyst composition can be used for providing the activation, and ‘907 indicates using a copper catalyst composition that provides an activation liquid as claimed with copper ions and metal particles, complexing agent, and reducing agent, and provided in the reversable equilibrium with the features claimed to use for activating a non-conductive surface as discussed above, and where the ‘907 composition provides a desirably stable activation/catalyst composition. Furthermore the composition can be considered to be not containing a “compound to stabilize the metal particles” to the extent claimed, because ‘907 would indicate that only materials listed as materials for the composition for claim 1 (copper ions/copper, complexing agent such as citric acid, reducing agent such as borohydride), so as substantially free of a compound preventing oxidation (note translation, Example 1, page 6), where applicant describes the use of citric acid as a claimed “complexing agent” in the disclosure as filed, and therefore this is considered a “complexing agent” as claimed and not a stabilizer and which does not prevent agglomeration of the metal particles or oxidizes the particles.
Furthermore, as to the continual addition of the reducing agent, ‘907 as discussed above indicates that the reducing agent is slowly dropped in over time. At the least, it would have been obvious to one of ordinary skill in the art when providing Okada in view of Yoshida, Maubru, ‘907, and as evidenced by Kolics to provide the reducing agent continuously with an expectation of predictably acceptable results, since ‘907 provides the reducing agent slowly over time, and as discussed in MPEP 2144.04(V)(E), making a process continuous would have been obvious, and would allow the slow addition over time desired. As a result, the reversible equilibrium maintained by continual addition of reducing agent such that the metal particles would be continually formed from the equilibrium of the dissolved transition metal ions of the first species would occur since the same steps for such a feature are provided.
(C) Optionally, further using Lindsay, Lindsay further teaches that when providing a colloidal copper catalyst composition that would be applied to a non-conductive substrate to act as an activator/catalyst for electroless plating (abstract), it is known for oxidation of the copper colloids to conventionally occur due to air oxidation, and reducing agents can be added to reduce the oxidized copper to a lower oxidation state (note column 2, lines 50-65, column 3, lines 1-10, column 4, lines 15-45).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Okada in view of Yoshida, Maubru and ‘907, as evidenced by Kolics to specifically provide that the catalyst composition is subject to exposure to air giving further oxidation of the copper particles and that the additional adding of reducing agent from over time further acts to reduce oxidized copper that would have formed with using a copper activation composition and process as described by ‘907 as suggested by Lindsay as the conventional air oxidation of copper particles in a copper catalyst composition is well known, and also known that additional reducing agent can reduce such oxidation back to copper particles, and as a result there would be a process such that copper particles are formed through at least continuous reduction with the continual addition of the reducing agent (as discussed above), and the dissolved copper ions are also formed from the copper particles through continuous or semi-continuous air oxidation of the particles, since the same material is there for the process, and the copper ions and copper particles thereof, respectively, would be repeatedly involved in the reduction and oxidation with the continuous reducing agent addition occurring, such that no precipitating agglomerates of the metal particles are formed, and give this reversible equilibrium as discussed above, and as a result, the reversible equilibrium maintained by continual addition of reducing agent such that the metal particles would be continually formed from the equilibrium of the dissolved transition metal ions of the first species would occur since the same steps for such a feature are provided. Note Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Claim 2: As to the majority of the particles subjected to oxidation during step (III)(c) or after, this would be understood to occur as the same materials and process is provided for such results as described by applicant as discussed for claim 1 above.
Claim 4: as to the metal particles of the first species (copper) in the activation composition are colloidal metal/copper particles, ‘907 provides that the copper particles are colloidal (translation, page 3).
Claim 5: the process with the in part (III)(c) having the copper particles continually formed in situ by reduction after and/or during one or more than one step (III)(c), and the metal particles being continually oxidized (so forming ions of the first species) would be understood to occur noting the discussion for claim 1 above.
Claim 6: ‘907 would suggest that the reducing agent comprises a boron containing reducing agent, such as borohydrides, amine boranes (note translation, page 4, Example 1, page 6).
Claim 7: Okada does not require tin ions in the activation solution, as tin is optional and copper can be used instead (note 0043), and ‘907 does not require tin ions either (note translation, Example 1, page 6).
Claim 8: it would be understood that the reducing agent is not present in a total amount to prevent to oxidation of the metal particles as claimed would be understood to be at least suggested to be provided, since as discussed for claim 1, the oxidation of the particles would be provided.
Claim 10: Oxidation by ambient air would be understood to occur due to no requirement as to sealing from the air (as described in Okada and ‘907), as evidenced by Kolics, and when using Lindsay, it indicates oxidation by air as discussed for claim 1 above.
Claim 11: Okada further provides that the non-conductive substrate with the activated surface for metallization is further metallized by contacting the activated surface with a first metallizing solution such that a first metallization layer is deposited on the activated surface (note 0012, 0046, 0058).
Claim 16: as to the amount of the first nitrogen containing compound and the second nitrogen containing compound, Okada indicates the amount would depend on the type of liquid to use, noting a range for sodium hydroxide for example, and that the pH range can also vary (note 0040), and therefore, it would have been obvious to optimize each of the alkalifying agents used for the specific solution used and pH desired, and as a result, the amount of the first and second nitrogen containing compounds would be in the claimed range. Note MPEP 2144.05(II)(A): “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”.
Claim 18: Okada does not require tin ions in the activation solution, as tin is optional and copper can be used instead, and lead, germanium, gallium, antimony, bismuth and aluminum ions are also not indicated as present (note 0043), and ‘907 does not require tin ions or ions of any of the other listed materials either (note translation, Example 1, page 6).
Claim 19: All steps of claim 19 are suggested by Okada in view of Yoshia, Maubru and ‘907, as evidenced by Kolics, EITHER alone OR further in view of Lindsay, as discussed for claim 1 above, where all steps are the same as in claim 1 except the “semi-continuous” reduction forming particles and oxidation of the particles and “semi-continual” addition of the reducing agent, where as discussed for claim 1 above, ‘907 would suggest the semi-continuous action as well, with the slow addition of drops of the reducing agent, so “semi-continual” addition understood to give the semi-continuous reduction and oxidation due to the semi-continual addition of the reducing agent.
Response to Arguments
The arguments filed December 3, 2025 have been fully considered.
As to the 35 USC 112 rejections as to what is what is meant by “complexing agent which does not stabilize metal particles in solution”, this rejection is withdrawn due to the statements as to what is intended at pages 9-12 of the amendment of December 3, 2025. It is understood from these statements that what is excluded is a stabilizer compound that would prevent agglomeration of the metal particles. The Examiner remains of the position that the complexing agents described for use in the present specification such as citric acid, would be understood to “not stabilize metal particles in solution by preventing agglomeration of the metal particles” and also “does not prevent oxidation” since these are explicit complexing agents described as meeting the requirements of the invention.
As to the 35 USC 103 rejections, it is argued that the references alone or in combination due to provide the all the features claimed. As to Okada, it is argued that the Examiner seemingly applied the catalyst solution of Okada as if it was equivalent to the claimed activation composition, but applicant argues that this is incorrect, with Okada at 0044 not providing the same metal particles of the same species simultaneously present, or reduction step in the catalyst bath for providing the particles, etc. with Okada using dissolved ion or colloid catalyst, which is distinct from the claimed invention, etc. (noting the arguments by applicant at pages 12-15 of the amendment). The Examiner notes this argument, however, the rejection was not using Okada as to providing all the features of the catalyst treatment. Rather, in the rejection of claim 1, part (C) above, the Examiner cited ‘907 and optionally Lindsay, as to the suggestion to use the specific catalyst composition treatment as claimed. It is noted that Okada did indicate that a variety of possible catalyst materials could be used, including copper (at 0044) and therefore was not limited to Pd or Pd/Sn catalysts. Also as to the use of a colloid catalyst in general, applicant also wants colloidal metal particles (note present claim 4).
As to the use of Yoshida, this reference was cited, note the discussion of claim 1, part (A) in the rejection above, as to the suggestion to provide the specific conditioner treatment claimed. It is argued that Yoshida’s conditioner is fundamentally different than that of the claimed activation composition, with Yoshida requiring Sn/Pd catalyst, which is incompatible with the activation claimed and the conditions for activation. The Examiner notes this argument, however, Yoshida was cited as to the suggestion of what would be used for a conditioner treatment before a selector treatment, which would apply to Okada, as Yoshida indicates a conditioning to apply before etching before activation, and Okada also has etching before activation (as a selector treatment). Further the conditioner treatment is indicated as helping adhesion between the substrate and metal film (note 0004, 0008), and thus while Yoshida describes using Pd/Sn catalyst, it is understood to be not limited to the catalyst (note claim 1 of Yoshida, for example, with no limit as to the catalyst), where Okada indicates how a variety of catalysts can be used. Yoshida is understood to be a pertinent and analogous reference as to pretreatments to use before plating.
As to the use of the Maubru and Kolics as to the features of the selector composition to use, it is the Examiner’s position that Maubru is pertinent and relevant as to suggested use of a guanidine derivative for use in the selector composition. While Maubru is providing a cosmetic composition, the art is still analogous even if not in the same field of invention as pertinent to the problem faced by the inventor, as Okada shows the use of material that alkalifies a solution in the present field (note 0038), and Maubru at column 5 describes the further conventional materials used for basifying (alkalifying) a solution (including materials claimed) that overlap that taught by Okada, so pertinent as to materials to use for alkalifying, since regardless of the use the materials will still have the pH effect. Additionally, the examiner has cited Kolics as evidencing that along with the materials listed by Okada, guanidine and quinidine derivatives are well known in the electroless plating art for pH adjusting/alkalifying use, further indicating that in the art such guanidine materials would be understood to be acceptable for the pH adjusting, and thus the arguments, position that Maubru is non-analogous is incorrect. While Maubru does not teach features of the activation solution, all of the references in combination suggest all the features of the claims.
As to the use of ‘907 as to the specific features of the activation solution, it is argued that this reference uses colloid stabilizers, which is not required/allowed by the present claims. It is further argued that ‘907 does not provide the forming of dissolved transition metal ions through continuous or semicontinuous reduction, and the dissolved ions formed from the metal particles, etc. with a one time addition of reducing agent. However, the Examiner is of the position that the cited references would suggest the same process with addition of reducing agent that would give such an equilibrium and therefore the same results expected. Not the citation of In re Best in the rejection above. While ‘907 may have a citric acid “stabilizer”, this is also an acceptable complexing agent according to applicant, and such a complexing agent is required, and therefore, this would not be understood to prevent the equilibrium as claimed, and would not be “stabilizer” that meets the requirements of the present claims even though indicated as having a stabilizing activity in ‘907. Note The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). As to a one time addition of reducing agent, the reducing agent is added over time, which gives the required features of the present claims. Note further that when used, Lindsay further suggests the reversible equilibrium – noting the oxidation and use of reducing agent.
As to Lindsay, it is argued that it is directed to extending the lifetime of colloidal tin/palladium catalyst using activators such as hydrazine, and does not teach the activation composition claimed. The Examiner notes these arguments, however, this is not the case. Lindsay notes extending the lifetime of colloidal dispersions/activators with treatment of copper ions (note column 2, lines 50-65), where catalytic material is specifically colloids of non-precious catalytic metals such as copper (note column 3, lines 45-55). In both Example 1 and 2, copper was used in the colloidal solution. Lindsay is cited for teaching providing a colloidal copper catalyst composition that would be applied to a non-conductive substrate to act as an activator/catalyst for electroless plating, where it is known for oxidation of the copper colloids to conventionally occur due to air oxidation, and reducing agents can be added to reduce the oxidized copper to a lower oxidation state, thus giving a copper particle with oxidation and also reduction action to return the copper oxide to copper.
Therefore, the rejections above are maintained.
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 KATHERINE A BAREFORD whose telephone number is (571)272-1413. The examiner can normally be reached M-Th 6:00 am -3:30 pm, 2nd F 6:00 am -2:30 pm.
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718
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