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 .
Response to Amendment
This Office Action is in response to amendment filed on 12/01/2025; after entry of this amendment, claims 1-3, 5, 7-23, and 25-41 are currently pending in this Application.
Any rejection and/or objection made in the previous Office action and not repeated below is hereby withdrawn.
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.
Claim 13 is 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. Claim 13 depends from claim 12 which depends from claim 1; according to the amended claim 1, the carboxylic acid option, is specifically “monocarboxylic acids, dicarboxylic acids, salts of monocarboxylic acids, salts of dicarboxylic acids” but not any other types of carboxylic acids. However, claim 13 recites “said second component is at least one carboxylic acid and/or salts thereof” which is broader than now amended claim 1. 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
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.
Claim(s) 1-3, 9-12, 14-15, 23, 28-30, and 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2022/0049109 to Su et al. (hereinafter Su).
With respect to claim 1, Su discloses anti-corrosion pigment for use in an
aqueous-based coating composition, wherein the anti-corrosion pigment comprises at least one non-volatile organic hydroxyl amine and at least one organic dispersant
deposited on the surfaces of titanium dioxide particles (Abstract, [0011]). Su,
additionally, teaches the use of polyhydric alcohol, such as glycerol or mannitol, in the material used in the coating of the titanium dioxide particles ([0036]-[0038]) which reads on the claimed “first component” of the claimed “organic treating agent”. Moreover, Su teaches triethanolamine, triisopropanolamine, and a few more as examples of the at least one non-volatile organic hydroxyl amine ([0028]-[0029]) which are taken to read on the claimed "second component". Thus, the reference teaches what would read on the claimed “organic treating agent”.
Su teaches an embodiment for the process of forming the anti-corrosion pigment, which comprises providing a mixture of the components of the material being deposited onto the titanium dioxide particles, then depositing them onto the surfaces of the particles ([0059]).
With respect to claim 2, Su teaches about 0.1-0.8 wt% of non-volatile organic hydroxyl amine, such as triethanolamine, triisopropanolamine, etc. ([0028]-[0029]) and about 0.001-1 wt% of polyhydric alcohol such as mannitol, glycerol, etc. ([0036]-[0038]). Thus, the reference teaches an overlapping range of concentration of the cumulative contents for what would read on the claimed “first component” and “second component” with what are claimed.
MPEP 2144.05 states "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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 3, Su teaches about 0.001-1 wt% of polyhydric alcohol such as mannitol, glycerol, etc. ([0036]-[0038]) and about 0.1-0.8 wt% of non-volatile organic hydroxyl amine, such as triethanolamine, triisopropanolamine, etc. ([0028]-[0029]). A ratio of the content of the polyhydric alcohol, i.e. claimed “first component”, to the content of the non-volatile organic hydroxyl amine such as triethanolamine or triisopropanolamine, i.e. claimed “second component”, is a range of about 0.00125 to 10, which overlaps with the claimed range of 1 to 20.
MPEP 2144.05 states "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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 9, Su teaches the use of non-volatile organic hydroxyl amine such as triethanolamine, triisopropanolamine and a few more ([0028]-[0029]) which read on the claimed “second component”, in particular, read on some of the compound claimed in cl aim 9.
With respect to claims 10 and 11, as noted above, Su teaches the use of non-volatile organic hydroxyl amine such as triisopropanolamine ([0029]).
With respect to claim 12, Su teaches about 0.1-0.8 wt% of non-volatile organic hydroxyl amine, such as triethanolamine, triisopropanolamine, etc. ([0028]-[0029]) which read on the claimed “second component”, and about 0.001-1 wt% of polyhydric alcohol such as mannitol, glycerol, etc. ([0036]-[0038]) which read on the claimed “first component”. Thus, the reference teaches an overlapping range of concentration of the cumulative contents for what would read on the claimed “first component” and “second component” with what are claimed.
MPEP 2144.05 states "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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 14, Su teaches about 0.1-0.8 wt% of non-volatile organic hydroxyl amine, such as triethanolamine, triisopropanolamine, etc. ([0028]-[0029]). MPEP 2144.05 states "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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 15, Su teaches depositing at least one inorganic coating on the surfaces of titanium dioxide particles in order to improve the wetting and dispersing properties of the pigment particles as well as the opacity, light stability, and durability of the pigment ([0024]-[0025]). Su teaches that where disclosed "deposited on the surface of the titanium dioxide particles" means deposited directly or indirectly ([0022]). Thus, the reference encompasses having inorganic coating deposited directly on the surfaces of the titanium dioxide particles followed by depositing a mixture of polyhydric alcohol, and either at least one non-volatile organic hydroxyl amine or at least one organic dispersant or both, on the inorganic coating which would be indirectly on the titanium dioxide particles.
Also, the reference not only is open to production processes involving the
application of the materials together onto the surface of titanium dioxide particles but
also depositing them successively ([0057]-[0059]). Thus, even though the deposition of inorganic coating may not have been literally disclosed in the embodiments directed to the process of production of the anti-corrosion pigment, it is inevitable that upon using an inorganic coating, which is explicitly taught by Su, and because of the disclosure that any of the materials may be deposited directly or indirectly onto the surfaces of titanium dioxide pigment, the reference renders a process during which the inorganic coating is first applied, followed by applying the organic materials. Thus, the reference is seen to render the claim obvious.
With respect to claim 23, Su discloses anti-corrosion pigment for use in an
aqueous-based coating composition, wherein the anti-corrosion pigment comprises at least one non-volatile organic hydroxyl amine and at least one organic dispersant
deposited on the surfaces of titanium dioxide particles (Abstract, [0011]). Su, additionally, teaches the use of polyhydric alcohol, such as glycerol or mannitol, in the material used in the coating of the titanium dioxide particles ([0036]-[0038]) which reads on the claimed “first component” of the claimed “organic treating agent”. Moreover, Su teaches triethanolamine, triisopropanolamine, and a few more as examples of the at least one non-volatile organic hydroxyl amine ([0028]-[0029]) which are taken to read on the claimed "second component". Thus, the reference teaches what would read on the claimed “organic treating agent”.
With respect to claims 28-29, as noted above, Su teaches triethanolamine, triisopropanolamine, and a few more as examples of the at least one non-volatile organic hydroxyl amine ([0028]-[0029]) which are taken to read on the claimed "second component".
With respect to claim 30, Su teaches triisopropanolamine as an example of the at least one non-volatile organic hydroxyl amine ([0029]) which is taken to read on the claimed "second component".
With respect to claim 39, Su teaches polyhydric alcohol such as glycerol ([0038]) which reads on the claimed “first component”.
Claim(s) 1-2, 5, 7-9, 15-17, 23, 25-29, 31-32, 38, 40, and 41 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2005/0239921 to Birmingham et al. (hereinafter Birmingham).
With respect to claim 1, Birmingham discloses titanium dioxide particles having a substantially encapsulating layer on their surfaces wherein the substantially encapsulating layer comprises a pyrogenically-deposited metal oxide, and wherein said substantially encapsulating layer has on its surface at least one organic surface treatment material, i.e. claimed "an organic treating agent", selected from a group including materials such as hydrocarbon-based carboxylic acid such as benzoic acid, which reads on the claimed “second component”, an alkanolamine such as triethanolamine, which also reads on the claimed “second component”, a few more materials and mixtures thereof (Abstract, [0007], [0017], [0062]-[0063], [0097]). The reference, additionally, discloses the use of other components such as citric acid ([0098]). Birmingham, also, discloses the use of compounds such as erythritol, mannitol and glycerol and a few more ([0093] and [0097]) in the organic surface treatment material, which read on the claimed “first component”. It is noted that the materials disclosed as used in the organic surface treatment may be used in mixtures (Abstract, [0007], [0017]).
The reference discloses a method of adding the organic surface treatment to the titanium dioxide particles substantially encapsulated with pyrogenically-deposited metal oxide is not especially critical, and that TiO2 particles may be treated with “at least” one organic surface treatment material in a number of ways, for example, the organic surface treatment material may be added via solution, or other ways such as by adding them during different processing steps ([0062]).
With respect to claim 2, Birmingham discloses the concentration of the organic surface treatment, i.e. claimed "organic treating agent", is typically about 0.05 to about 5 wt% based on total TiO₂ ([0101]) which substantially overlaps the claimed range of "from about 0.1% to about 1% by weight" based on the weight of the titanium dioxide particles.
MPEP 2144.05 states "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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 5, as noted above, Birmingham discloses hydrocarbon-
based carboxylic acid such as benzoic acid as one components of the organic surface treatment (Abstract, [0007], [0092]) as well as other compounds such as citric acid ([0097]).
With respect to claims 7 and 8, as noted above, Birmingham discloses the use of benzoic acid ([0092]) and citric acid ([0097] as part of the organic surface treatment.
With respect to claim 9, Birmingham discloses the use of alkanolamine such as triethanolamine as components of the organic surface treatment ([0007] and [0097]).
With respect to claim 15, Birmingham teaches application of a metal oxide, in
particular, a pyrogenically-deposited metal oxide, onto the surfaces of titanium dioxide particles prior to the application of an organic surface treatment ([0007], [0017], [0062]). This is taken to read on the claimed "inorganic treating agent".
With respect to claim 16, Birmingham teaches the different embodiments of the process of producing the surface treated titanium dioxide particles, one of which
includes a process which includes adding the organic surface treatment at different
processing stages, and discloses an example during which one half of the organic
surface treatment is added during the drying step, and the remaining half is added
during the deagglomration step such as during micronizing (end of [0062]). It is
inevitably expected of the organic surface treatment to form two layers, both of which contain the same material. As such, one of those layers is taken to read on the claimed "organic treating agent" or claimed "second organic treating agent", and the other one is taken to read on the claimed "first organic treating agent".
With respect to claim 17, the layer whose materials is applied during the drying step as disclosed in the example is taken to read on the "first organic treating agent" which is applied and deposited prior to the application of the other layer which is taken to read on the claimed "second treating agent".
With respect to claim 23, Birmingham discloses titanium dioxide particles having a substantially encapsulating layer on their surfaces wherein the substantially encapsulating layer comprises a pyrogenically-deposited metal oxide, and wherein said substantially encapsulating layer has on its surface at least one organic surface treatment material, i.e. claimed "an organic treating agent", selected from a group including materials such as hydrocarbon-based carboxylic acid such as benzoic acid, an alkanolamine such as triethanolamine, a few more materials and mixtures thereof (Abstract, [0007], [0017], [0062], [0097]). The reference, additionally, discloses the use of other components such as citric acid ([0098]). These components render the claimed "second component selected from the group consisting of carboxylic acids and salts thereof, alkanolamine, and combination thereof" obvious. Birmingham, also, discloses the use or compounds such as erythritol, mannitol and glycerol and a few more ([0093] and [0097]) which are taken to read on the claimed "first component consisting of at least one polyhydric alcohol". It is noted that the materials disclosed as used in the organic surface treatment may be used in mixtures (Abstract, [0007], [0017]).
With respect to claims 25-27, Birmingham discloses the use of hydrocarbon-
based carboxylic acids such as benzoic acid ([0092]) and citric acid ([0097]) in the
organic surface treatment ([0063]) as part of the organic surface treatment.
With respect to claims 28 and 29, Birmingham discloses the use of alkanolamine such as triethanolamine as components of the organic surface treatment ([0007] and [0097]).
With respect to claim 31, Birmingham teaches the different embodiments of the process of producing the surface treated titanium dioxide particles, one of which
includes a process which includes adding the organic surface treatment at different
processing stages, and discloses an example during which one half of the organic
surface treatment is added during the drying step, and the remaining half is added
during the deagglomration step such as during micronizing (end of [0062]). It is
inevitably expected of the organic surface treatment to form two layers, both of which contain the same material. As such, one of those layers is taken to read on the claimed "organic treating agent" or claimed "second organic treating agent", and the other one is taken to read on the claimed "first organic treating agent".
With respect to claim 32, the layer whose materials is applied during the drying step as disclosed in the example is taken to read on the "first organic treating agent" which is applied and deposited prior to the application of the other layer which is taken to read on the claimed "second treating agent".
With respect to claims 38, 40, and 41, Birmingham discloses the use of compounds such as glycerol ([0093] and [0097]) in the organic surface treatment material, which read on the claimed “first component”.
Response to Arguments
Applicant's arguments filed 12/01/2025 have been fully considered but they are not persuasive.
Applicant has asserted the independent claims 1 and 23 do not call for an anti-corrosive titanium dioxide pigment composition, and do not call for at least one organic dispersant deposited on the surfaces of the titanium dioxide particle, wherein the organic dispersant is selected from the group consisting of low molecular weight organic dispersants, organic polymeric dispersants, and combinations thereof (Remarks, page 22). Applicant has, additionally, asserted hydroxyl carboxylic acids are no longer called for by independent claims 1 and 23 (Remarks, page 22). Furthermore, Applicant has asserted the present Application is not directed to an anti-corrosive pigment, and Su is not directed to treated titanium dioxide pigment that can serve as a substitute for TMP in connection with the production of titanium dioxide pigments (Remarks, pages 22 and 23). Applicant has asserted TMP is used in the pigment slurries/mixtures in all the examples of Su (Remarks, page 23).
The examiner, respectfully, submits that the claimed treated titanium dioxide pigment is rendered obvious by the reference; it is important to note that the claims utilize the open phrase “comprising” which include any other steps and/or components not recited in the language of the claims. Irrespective of how the treated titanium dioxide pigment is used, i.e. whether as anti-corrosive or to substitute TMP, Su teaches the claimed first and second components in an organic treating material used in application to the surfaces of titanium dioxide particles. Also, the second component may be selected from a group consisting of carboxylic acids and salts thereof, alkanolamines, and combination thereof; therefore, the reference needs not to disclose both the specifically claimed examples of carboxylic acids as well as the alkanolamines recited in the claims, to read on the claims but that the disclosure of one of them is sufficient. When the reference teaches the claimed components and/or process, any characteristics such as being effective as a replacement for TMP is expected to follow from the reference. Nevertheless, it is noted that such a feature is not part of the current claimed language.
Applicant has asserted the focus of Birmingham invention is pyrogenically deposited silica on titanium dioxide in combination with a siloxane organic treatment to obtain better lacing resistance, less yellowness, and a durable product for polymer applications (Remarks, page 24). Applicant, then, asserted the focus of the treated titanium dioxide pigment called for by the present claims is to provide a treated titanium dioxide pigments (Remarks, page 24). Applicant has concluded the technical problems in the art addressed by Birmingham and the present invention are completely different (Remarks, page 24). Applicant has asserted it is not sufficient that some of the organic additive-treated pyrogenic silica-encapsulated titanium dioxide pigment of Birmingham and the components of the organic treating agent called for by the present claims may overlap in some respects, but that the question is whether the claimed invention as a whole would have been obvious to the skilled artisan (Remarks, page 24). Applicant has referred to the examples of Birmingham and asserted the only organic used is octyltriethoxy silane, and the present claims 1 and 23 do not include a pyrogenically deposited metal oxide (Remarks, page 24). Applicant has asserted the examiner has not provide a sufficient reason why a person of ordinary skill in the art would have been led by Birmingham to use the organic treating agent called for by independent claims 1 and 23 or serve as an effective replacement for TMP (Remarks, page 24).
The examiner, respectfully, submits that the claimed recitations of independent claims 1 and 23 have been properly addressed by Birmingham in the rejection, and that the claims recite the open transitional phrase “comprising” which can include other components or steps not recited in the claimed language. When the reference teaches the claimed components or process, any characteristics such as being effective as a replacement for TMP is expected to follow from the reference. Nevertheless, it is noted that such a feature is not part of the current claimed language.
Allowable Subject Matter
Claim 13 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(d) or 35 U.S.C. 112 (pre-AIA ), 4th paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Su teaches phosphonate-based carboxylic acids and salts thereof, but such acids are not monocarboxylic or dicarboxylic, and for this reason, Su does not teach the specifically claimed carboxylic acids recited in amended claim 1. However, claim 13 broadens the scope of claim 1 by reciting “the second component is at least one carboxylic acid and/or salts thereof” without specifying the specific carboxylic acids recited in amended claim 1. Claim 13 would be allowable once the 112 rejection presented above is properly addressed.
Claims 18-22 and 33-37 are allowed.
The following is an examiner’s statement of reasons for allowance: The prior art do not disclose or suggest a process for producing a treated, titanium dioxide pigment, comprising:
providing a plurality of titanium dioxide pigment particles; and
depositing a first organic treating agent on the surfaces of said pigment particles to form a
coating of said first organic treating agent thereon, wherein said first organic treating agent is selected from the group consisting of alkyl phosphinic acids, derivatives of alkyl phosphinic acids, phosphonic acids, derivatives of phosphonic acids, siloxanes, and combinations thereof; and
after depositing said first organic treating agent on the surfaces of said pigment particles, depositing a second organic treating agent on the surfaces of said pigment particles to form a coating of said second organic treating agent thereon, wherein said organic treating agent includes:
a first component consisting of at least one polyhydric alcohol; and
a second component selected from the group consisting of carboxylic acids and salts thereof, alkanolamines, and combinations thereof.
Moreover, the prior art do not disclose or suggest a treated titanium dioxide pigment, comprising:
a plurality of titanium dioxide particles;
a first organic treating agent deposited on the surfaces of said titanium dioxide particles and forming a coating of said first organic treating agent thereon, wherein said first organic treating agent is selected from the group consisting of alkyl phosphinic acids, derivatives of alkyl phosphinic acids, phosphonic acids, derivatives of phosphonic acids, siloxanes, and combinations thereof; and
a second organic treating agent deposited on the surfaces of said titanium dioxide particles and forming a coating of said second organic treating agent thereon, wherein said second organic treating agent includes:
a first component consisting of at least one polyhydric alcohol; and
a second component selected from the group consisting of carboxylic acids and salts thereof, alkanolamines, and combinations thereof.
Furthermore, the prior art do not disclose or suggest A treated titanium dioxide
pigment, comprising:
a plurality of titanium dioxide particles;
a first organic treating agent deposited on the surfaces of said titanium dioxide particles and forming a coating of said organic treating agent thereon, wherein said first organic treating agent is deposited on said surfaces of said pigment particles in an amount in the range of from about 0.05% to about 1.0% by weight, based on the weight of said pigment particles; and
a second organic treating agent deposited on the surfaces of said titanium dioxide particles and forming a coating of said second organic treating agent thereon, wherein said second organic treating agent includes:
a first component consisting of at least one polyhydric alcohol; and
a second component selected from the group consisting of carboxylic acids and salts thereof, alkanolamines, and combinations thereof.
Su and Birmingham do not disclose or suggest a first organic treating agent being selected from the group consisting of alky phosphinic acids, derivatives of alkyl phosphinic acids, phosphonic acids, derivatives of phosphonic acids, siloxanes, and combination thereof, combined with the existence of a second organic treating agents comprising the claimed first and second components. Additionally, the references do not disclose the steps of, first, depositing a first organic treating agent of the above cited material, then followed by depositing a second organic treating agent comprising the claimed first and second components.
Further search did not result in any other references anticipating or rendering any of claims 18, 33, or 37 obvious.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
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.
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/PEGAH PARVINI/Primary Examiner, Art Unit 1731