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
In response to the amendment filed on November 11, 2025:
Claims 1-3 and 10-18 are pending;
The specification objection is withdrawn in light of the amendment;
The claim objection is withdrawn in light of the amendment;
The 112 rejections are withdrawn in light of the amendment;
The 102 rejections to Buhrmester et al. Mao et al. and Kubota are withdrawn in light of the amendment as the claims have been amended to remove certain species from the claims and no longer encompasses 1,2-dimethoxybenzene as taught in each of Buhrmester, Mao and Kubota;
The remaining prior art rejection(s) to Richardson stand as modified in light of the amendment.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 10-15, and 17-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite a range which was not held to be reasonably disclosed by the invention as originally filed. Notably, the claim states “a concentration of the organic compound is about 0.5% or less”. This language appears to introduce new matter to an range that was not sufficiently disclosed as originally filed.
First, it is noted that the disclosure does not expressly define this range at any point in the disclosure.
Second, the disclosure does not teach or support the concentration being everything/anything less than about 0.5%.
Thirdly, the original disclosure does not define a concentration range in conjunction with the term “about” and while the specification teaches of what the term “about” may mean, the disclosure does not apply this term to the concentration and cannot be applied to the range after the filing of the original application as appears to be the pattern in this case.
Lastly, the disclosure only appears to teach of specific concentrations to specific compounds. With respect to Compound A, the only disclosed concentration for Compound A is specifically 0.5% (see paras. [0016]-[0019]). With respect to Compound B, the only disclosed concentration for Compound B is specifically 0.1% (see paras. [0020]-[0023]). With respect to Compound C, the only disclosed concentration for Compound C is specifically 0.1% (see paras. [0024]-[0026]). With respect to Compound D, the only disclosed concentration for Compound D is specifically 0.1% (see paras. [0027]-[0029]). Not only is the disclosed invention void of the teaching of a range of “about 0.5% or less” to any reasonable degree, it only teaches of each Compound A-D at only a specific concentration 0f 0.5% or 0.1% as shown in paras. [0016]-[0029]). With respect to each compound there is no other sufficient teaching of any other concentrations other than those specific amounts disclosed with respect to each specific compound A-D, much less the concentration range of claim 1 applicable to all compounds.
Claims 2-3, 10-15 and 17-18 are dependent upon claim 1 and do not remedy this issue. Therefore, claims 2-3, 10-15 and 17-18 are rejected for the same reasons above.
Therefore, for at least these reasons, the concentration range of claim 1 is held to introduce new matter into the application and does not comply with the written description requirement.
Claim 16 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 16 has been presented to recite a range which was not held to be reasonably disclosed by the invention as originally filed.
Notably, the claim states “a concentration of Compound B is about 0.5% or less”. This language appears to introduce new matter to an range that was not sufficiently disclosed as originally filed.
First, it is noted that the disclosure does not expressly define this range at any point in the disclosure.
Second, it is noted that the disclosure does not teach or support the concentration being everything less than about 0.5%.
Thirdly, the original disclosure does not define a concentration range in conjunction with the term “about” and while the specification teaches of what the term “about” may mean, the disclosure does not apply this term to the concentration and cannot be applied to the range after the filing of the original application as appears to be the pattern in this case.
Lastly, the disclosure only appears to teach of specific concentrations to specific compounds. With respect to Compound B, the only disclosed concentration for Compound B is specifically 0.1% (see paras. [0020]-[[23]). Not only is the disclosed invention void of the teaching of a range of “about 0.5% or less” to any reasonable degree, it only teaches of a concentration of 0.1% for Compound B and no other sufficient teaching of any other concentrations other than those specific amounts disclosed with respect to each specific compound A-D, much less the concentration range of claim 16.
Therefore, for at least these reasons, the concentration range of claim 16 is held to introduce new matter into the application and does not comply with the written description requirement.
Claim 13 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 13 recites that an operation voltage of the Li-ion battery is below a degradation voltage of the organic molecule. The originally filed application makes no clear mention of an operation voltage, degradation voltage and relationship to such as recited in claim 13. Therefore, the limitations of claim 13 do not appear to have clear and sufficient support in the context of the original disclosure and appears to introduce new matter into the application.
Claims 17-18 are dependent upon claim 13 and do not remedy this issue. Therefore, claims 17-18 are rejected for the same reasons above.
Claim 14 recites that an operation voltage of the Li-ion battery is below a 4.5V. The originally filed application makes no clear mention of this threshold value for the operation voltage and while the disclosure may teach of certain voltages, this is not sufficient support for the broader recitation of voltages recited in new claim 14. Therefore, the limitations of claim 14 do not appear to have clear and sufficient support in the context of the original disclosure and appears to introduce new matter into the application.
Claim 16 recites that an operation voltage of the Li-ion battery is below a 4.5V. The originally filed application makes no clear mention of this threshold value for the operation voltage and while the disclosure may teach of certain voltages, this is not sufficient support for the broader recitation of voltages recited in new claim 16. The disclosure even less teaches of such a parameter with respect to the specific Compound B of claim 16. For example, according to the disclosure for the Compound B additive, the specification teaches of this compound present only at 0.1% (as discussed above) and not for other amounts, much less the newly cited range of about 0.5% or less in claim 16. Even further, while the disclosure may teach of Compound B in a certain amount (0.1%) and at a given operating voltage, it does not appear to be sufficiently disclosed for Compound B present in the broader range of claim 16 along with the broader operation voltage of claim 16.
Claim 18 recites that an operation voltage of the Li-ion battery is about 3.5V. The originally filed application makes no clear mention of this operation voltage with respect to additive compounds and while the disclosure may teach of certain voltage values (particularly to some extent in the drawings), this is not sufficient support for the particular recitation of voltage recited in new claim 18. In addition, it would appear and be readily understood that the operating voltage during cycling is not a static voltage but a range of voltages that a battery is cycled through during charge/discharge cycles. The voltage of a lithium-ion battery system always fluctuates during charging or discharging it is not held to be a static voltage or approximate static voltage. For example, see para [0184] of Onuki et al. (JP2012-195223) which states that a battery was charged at a constant current and constant voltage (hereinafter referred to as "CCCV charging") to 4.2V at a current equivalent to 0.2C, and then discharged at 0.2C to 3V. This was repeated three times to form the initial formation. Next, the battery was CCCV charged at 0.2 C to 4.2 V, and then discharged again at 0.5 C to 3 V to determine the initial discharge capacity. Therefore it can be seen that the operating voltage of the battery is a range rather than being just a single voltage or approximate single voltage (i.e., not “about 3.5V”) as recited in claim 18. There is no teaching of cycling the inventive batteries at a constant voltage of about 3.5V as claim 18 would thus limit to as it attempts to define an operating voltage at an approximate static voltage. The disclosed invention itself teaches in each instance and example of a variable operating voltage range and not “about 3.5V” as in claim 18. Therefore, the limitations of claim 18 do not appear to have clear and sufficient support in the context of the original disclosure and appears to introduce new matter into the application.
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 13, 17 and 18 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.
The term “degradation voltage of the organic molecule” in claim 13 is a relative term which renders the claim indefinite. The term “degradation voltage of the organic molecule” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. New claim 13 introduces the term “degradation voltage of the organic molecule” where the term has not been previously presented and there is no clear disclosure as to what the term is limiting to.
Claims 17-18 are dependent upon claim 13 and do not remedy this issue. Therefore, claims 17-18 are rejected for the same reasons above.
Claim 17 recites the limitation "the concentration of Compound B" in line 1. There is insufficient antecedent basis for this limitation in the claim as neither claims 17, 13, nor 1 recite any Compound B therein. It may be that claim 17 should be dependent upon either claim 10 or 16 which do recite Compound B therein. However, the dependency of claim 17 is not to these claims, therefore the rejection noted herein applies to claim 17.
Claim Interpretation
While it is held that the term “about” is not held to have been sufficiently applied to the concentrations of the instant invention, it is noted that the application defines the term “about” as follows:
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The 112 rejection above aside, for examination purposes, the range “about 0.5% or less” is not explicitly bound to 0.5% in accordance with the definition of the term about in para. [0042]). For example, the number 0.5% includes 1 significant figure and applying ordinary rounding techniques would be understood to be rounded to 1%. 0.5 rounded to 1 significant figure is 1. Therefore the claimed range of “about 0.5% or less”, having one significant digit and applying ordinary rounding techniques is interpreted to be “1% or less”.
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.
Claims 1-3 and 10-18 are rejected under 35 U.S.C. 103 as being unpatentable over Richardson et al. (WO 0129920A1) in view of Onuki et al. (JP2012-195223).
As to claim 1, Richardson discloses a method of adding a small organic compound to the electrolyte of a lithium ion battery comprising metal-based cathode material, lithium manganese oxide (page 7), which produces Mn2+ metal ions, the method comprising adding an organic compound to the electrolyte. The organic compound is 3,4 dimethoxybenzonitrile (see chemical formula LBNL3, Table II). By providing this additive, the invention to Richardson effectively inherently prevents metal ion dissolution.
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As to claim 2, as noted above the batteries are lithium manganese oxide cells which produces metal ions are Mn2+.
As to claim 3, the metal based cathode material is LiMn2O4, thus Mn-based.
As to claim 10, 3,4 dimethoxybenzonitrile is identical to compound B of claim 10.
As to claim 11, the disclosure above in claim 4, defines the electrolyte therein, thus anticipating claim 11.
As to claim 12, the electrolyte of claim 11 is employed in a battery (Abstract, Experimental, Results).
As to claims 13 and 14, Richardson teaches of operating voltage, such as 4.2V (page 7, ll. 3-11) which as best that the term “degradation voltage” of claim 13 is understood, is at a threshold operating voltage below the voltage where the compound of Richardson would degrade.
As to claim 16, Richardson discloses a method of adding a small organic compound to the electrolyte of a lithium ion battery comprising metal-based cathode material, lithium manganese oxide (page 7), which produces Mn2+ metal ions, the method comprising adding an organic compound to the electrolyte. The organic compound is 3,4 dimethoxybenzonitrile (see chemical formula LBNL3, Table II). By providing this additive, the invention to Richardson effectively inherently prevents metal ion dissolution.
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Richardson does not teach of the additive ranging from about 0.5% or less (claims 1 and 13) further about 0.1% (claims 15 and 17; noting the claim interpretation above to the range is held to be 1% or less with respect to the term about).
Richardson teaches of the additive minimum of about 1% by weight (page 14), more particularly that the minimum is probably about 1% weight while the additive in general can vary widely. Thus additives of about 1% include amounts of less than 1% with reasonable predictability that any relative additive amount provides the effective benefit necessitated by Richardson (page 14).
As discussed above about 0.5% is held to be as much as 1.0% based on the instant invention’s definition of the term about. Thus the range of Richardson, the minimum about 1 and the range of the instant invention, about 0.5% are held to at least partially overlap (with the approximation of 0.5% in claims 1 and 13), else be minor differences in amount (with respect to 0.5% or less claims 1 and 13, and about 0.1% of claims 15 and 17. There is no clear showing of practical significance for the instant invention amount to that of Richardson. 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 USPQ 2d 1934 (Fed. Cir. 1990). It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
In addition, Onuki teaches of various similar methoxybenzonitriles as an electrolyte additive, analogous to Richardson as directed to such additives for improved safety and storage characteristics (abstract, examples). Onuki teaches that amounts less than 1% additives, as low as 0.001% or more (para. [0059]) can effectively provide for sufficient amount of methoxybenzonitrile additives in the electrolyte.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the amount of 3,4 dimethoxybenzonitrile to be about 1%, including amounts less than 1% such as 0.5% or further 0.1% as suggested by Richardson and further taught by Onuki with respect to methoxybenzonitrile additive with the reasonable expectation that amounts less than 1%, as low as 0.001% would have provided a sufficient amount of methoxybenzonitrile additive to provide improved safety and storage characteristics. 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 USPQ 2d 1934 (Fed. Cir. 1990;The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.). It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Richardson does not teach explicitly of the operating voltage of the lithium ion battery being about 3.5V (noting that the use of the term about is read in light of the disclosed definition by the specification as stated above under Claim Interpretation).
As to claim 18, while Richardson teaches that the LBNL additives have redox shuttle onset potentials of about 4.25 V or higher. Lithium manganese oxide cells containing these additives can be charged to their full normal capacity at 4.2 V. These cells are protected from overcharging and maintain their original discharge capacities for at least five cycles under conditions of severe overcharging. Therefore, the maximum charging voltage is at most 4.2V and can be effectively below that voltage maximum in terms of operating voltage.
As to the operating voltage being about 3.5V, the battery of Richardson is sufficiently capable of operating at any voltage in commonly known voltage ranges for lithium manganese oxide cells, with the caveat, that the operating voltage does not reach voltages above 4.2V (as discussed above).
As discussed above in the 112 rejection to claim 18, there is some issue with the attempt to claim the operating voltage in the manner recited therein.
Onuki et al. (JP2012-195223) which states that a battery was charged at a constant current and constant voltage (hereinafter referred to as "CCCV charging") to 4.2V at a current equivalent to 0.2C, and then discharged at 0.2C to 3V. This was repeated three times to form the initial formation. Next, the battery was CCCV charged at 0.2 C to 4.2 V, and then discharged again at 0.5 C to 3 V to determine the initial discharge capacity.
The same cycling approach in Onuki would have been reasonably and suitably applied in Richardson as the cycling range from 3-4.2V for lithium ion cells is a highly conventional voltage range for this battery chemistry. In cycling, at certain times in cycling the cell is at an operation voltage of about 3.5V.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to operate the battery cell of Richardson in the range taught by Onuki, including operating at certain voltages during charge and discharge at about 3.5V since lithium ion battery cycling, conventionally operated in the range of 3-4.2V as shown by Onuki would have been a sufficient operating voltage for the cells of Richardson. Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Response to Arguments
Applicant's arguments filed November 10, 2025 have been fully considered but they are not persuasive.
With respect to Richardson, Applicant argues that Richardson does not disclose “a concentration of the organic compound in the electrolyte is about 0.5% or less.” In the present claims, the method involves addition of Compound B”.
The Examiner does not find Applicant’s argument persuasive for the following reasons.
First, as discussed above, the range of claim 1 is held to define a new range not sufficiently disclosed in the originally filed Application, therefore introducing new matter into the application.
Second, as discussed above, the claim interpretation to the range of claim 1 to “about 0.5% or less”, when read in light of the definition of the term “about” set forth in the disclosure, the range can be higher than 0.5% and still read on the claimed range, such as 1% being “about 0.5%”.
With that interpretation, as further discussed above, Richardson partially overlaps with the claimed range, and further is held to be a minor and obvious difference in ranges given that there is no showing that the particular range of the instant invention is of practical and patentable significance to that of Richardson.
As also discussed above about 0.5% is held to be as much as 1.0% based on the instant invention’s definition of the term about. Thus the range of Richardson, the minimum about 1 and the range of the instant invention, about 0.5% are held to at least partially overlap (with the approximation of 0.5% in claims 1 and 13), else be minor differences in amount (with respect to 0.5% or less claims 1 and 13, and about 0.1% of claim 15. There is no clear showing of practical significance for the instant invention amount to that of Richardson. 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 USPQ 2d 1934 (Fed. Cir. 1990). It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
In addition to the teachings of Richardson, Onuki teaches of various similar methoxybenzonitriles as an electrolyte additive, analogous to Richardson as both being directed to methoxybenzonitriles additives for improved safety and storage characteristics (abstract, examples). Onuki teaches that amounts less than 1% additives, as low as 0.001% or more (para. [0059]) can effectively provide for sufficient amount of methoxybenzonitrile additives in the electrolyte.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the amount of 3,4 dimethoxybenzonitrile to be about 1%, including amounts less than 1% such as 0.5% or further 0.1% as suggested by Richardson and further taught by Onuki with respect to methoxybenzonitrile additive with the reasonable expectation that amounts less than 1%, as low as 0.001% would have provided a sufficient amount of methoxybenzonitrile additive to provide improved safety and storage characteristics.
While the claims recite certain amount of additive, what is not clear is how the certain claimed additive amount is of significant and practical distinction from the amounts noted in Richardson and Onuki. Review of the invention and disclosure appears to teach of the various examples against an undisclosed reference. Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
Given the lack of sufficient evidence to the particular disclosed/claimed amounts being critical or unexpected, then it stands that an overlap or minor difference in the range or portion of the range of Richardson compared to the instant claimed amounts is held to be obvious as discussed above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGG CANTELMO whose telephone number is (571)272-1283. The examiner can normally be reached Mon-Thurs 7am to 5pm.
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/GREGG CANTELMO/Primary Examiner, Art Unit 1725 GVF