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 .
DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of the Species of “hydrochloric acid” reactive acid in the reply filed on 26 September 2025 is acknowledged. The traversal is on the ground(s) that “Applicant notes that claim 9, if deemed to read on different species, should be examined with the subject matter of claims 1-8 and 11-19 because of the "reasonable number of species" exception under 37 CFR § 1.146. See also, MPEP § 806.04” (p.6). This is not found persuasive because 37 CFR § 1.146 states “However, if such application contains claims directed to more than a reasonable number of species, the examiner may require restriction of the claims to not more than a reasonable number of species before taking further action in the application.” This does not appear to support Applicant’s stance that a reasonable number of species is an exception to Species Election, but rather a different situation entirely. Moreover, Applicant should note that 37 CFR § 1.146 also states “In the first action on an application containing a generic claim to a generic invention (genus) and claims to more than one patentably distinct species embraced thereby, the examiner may require the applicant in the reply to that action to elect a species of his or her invention to which his or her claim will be restricted if no claim to the genus is found to be allowable.” In this case, this is the first action on an application containing a generic claim to a generic invention (genus) (e.g., independent claim 1 and claim 9) and claims to more than one patentably distinct species embraced thereby (e.g., claims 11-15 “slurry” vs. claims 16-19 “emulsion” vs. claim 9 “solution concentrate”). Accordingly, the examiner may require the applicant in the reply to that action to elect a species of his or her invention to which his or her claim will be restricted if no claim to the genus is found to be allowable. Accordingly, the Species Election requirement is proper.
The requirement is still deemed proper and is therefore made FINAL.
Applicant failed to elect one of the Species of type of oil-soluble DRA. Nevertheless, as in the attached Interview Summary, Applicant on 17 October 2025 provisionally elected the Species of “slurry” type of oil-soluble DRA.
Claims 16-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Species, there being no allowable generic or linking claim.
Allowable Subject Matter
Claims 13 and 14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claims 9 and 16-19 should be canceled accordingly.
Specification
The disclosure is objected to because of the following informalities:
In [0023], “kerosin” should recite “kerosene” (correcting the typo; in line with the same in [0052] and [0063]).
Appropriate correction is required.
It is unclear if the “drag reducing agent XK30” ([0067]) is a trade name or a mark used in commerce. If so, the term should be accompanied by the generic terminology (the specific chemicals); furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claims 3, 7, and 11-15 are objected to because of the following informalities:
Claim 3 should recite “a[[n]] hydrophobic phase” (correcting the typo).
Claim 7 should recite “kerosene” instead of “kerosin” (correcting the typo).
Claim 11 should depend from claim 1, instead of canceled claim 10 (correcting the typo). Claims 12-15 are objected to by dependency.
Claim 11 should also recite “wherein the polyalpholefin polymer is delivered” (correcting the typo by removing “product”; in line with “a polyalphaolefin polymer” in claim 1).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
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 8 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 8 is also 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.
Claim 8 recites “wherein the oil-soluble DRA has a molecular weight between 100,000 and 20 million” but depends from independent claim 1, which has been Amended to now recite “wherein the oil soluble DRA is a polyalphaolefin polymer with an average molecular weight (Mw) of 500,000 to 3 million.”
Just on its face, 100,000-20,000,000 is a broader range than 500,000-3,000,000. Accordingly, claim 8 now fails to include all the limitations of the claim upon which it depends, and claim 8 is an improper dependent claim.
Additionally, it is unclear if claim 8 is intended to instead present an alternate invention wherein the molecular weight is between 100,000-20,000,000 instead of 500,000-3,000,000. Accordingly, the claim scope is also rendered Indefinite.
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.
In this case, it appears Applicant may simply cancel claim 8.
Claim 15 is also 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.
Claim 15 recites “wherein the polyalphaolefin polymer has an average diameter of about 1.0 micrometer to about 1,000 micrometer. A preferred range is between 10 um and 100 uM.”
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 15 recites the broad recitation “an average diameter of about 1.0 micrometer to about 1,000 micrometer,” and the claim also recites “A preferred range is between 10 um and 100 uM” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
For examination purposes, claim 15 will be read as though removing the preferred range (i.e. “wherein the polyalphaolefin polymer has an average diameter of about 1.0 micrometer to about 1,000 micrometer. ”).
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 1-9, 11, 12, and 15 are rejected under 35 U.S.C. 103 as obvious over Grainger (2003/0060375) in view of Vittur (2020/0392425).
Regarding independent claim 1 (and claim 8), Grainger discloses A treatment fluid for downhole operations (abstract “Stimulation, particularly fracturing or acidising, of hydrocarbon wells having bores leading to hydrocarbon bearing uses a fluid including a continuous phase” and [0024] “Where water sensitive formations are treated, it is desirable to provide the acidisation materials as an emulsion in a non-aqueous base fluid”), comprising:
1 ppm to 10 wt%, based on the total weight of the treatment fluid, of “friction reducers--certain high molecular weight linear polymers are used as friction reducers to reduce the pressure drop in the tubing while pumping fracturing fluid at very high rate (e.g. polyisobutylene, polyisobutyl methacrylate). The amount of friction reducer used is typically from 0.1 to 1% by weight of the fracturing fluid” ([0036]) (0.1-1 wt% clearly anticipates 0.0001-10 wt%);
one or more hydrocarbons ([0024] “a continuous non-aqueous phase”; presumably, [0033] “oil based (e.g. kerosene, a gas oil, diesel oil, or the like)”);
water ([0024] “an aqueous solution of at least one acidising material”; e.g., [0049]-[0050] “water demineralised water brine synthetic sea water”); and
one or more reactive acids with a pH of less than 4 ([0024] “an aqueous solution of at least one acidising material” such as “hydrochloric acid,” “a mixture of hydrochloric and hydrofluoric acids,” or “organic acids”),
wherein the treatment fluid is a two-phase fluid with a hydrophobic continuous phase and a dispersed water phase, the hydrophobic continuous phase comprising the DRA and the hydrocarbon, and the water phase comprising the water and the one or more reactive acids ([0024] “Accordingly this invention includes an oil or gas well acidisation fluid which is an emulsion of an aqueous solution of at least one acidising material in a continuous non-aqueous phase”).
Regarding the oil-soluble DRA that is a polyalphaolefin (PAO) with a MW of 500,000-3,000,000, Grainger as above discloses including friction reducers ([0036]).
However, Grainger fails to specify using a PAO of MW 500,000-3,000,000.
Vittur teaches “A drag reducing composition comprises a sealed temporary container; and a drag reducing agent and up to 20 weight percent of a dispersing fluid disposed in the sealed temporary container” (abstract) wherein the packaging “can be conveniently and economically manufactured, stored, shipped, and applied” “without agglomeration issues associated with typical micron-sized ground drag reducing agent particulates” ([0015]) and “the drag reducing compositions according to the disclosure can have consistent drag reducing performance” by avoiding “non-uniform distribution of the DRA particles” ([0016]) and “Drag reducing agents (DRAs) have been used to reduce the drag of hydrocarbon fluids” ([0002]) wherein “The container material can be dissolved … when the drag reducing agents are introduced into a hydrocarbon fluid” ([0049]). Vittur further teaches that the drag reducing composition may use “a polyolefin homopolymer” of “alpha olefin monomers” ([0033]) i.e. “polyalpha-olefins” ([0003]) wherein “The drag reducing agents can have a weight average molecular weight of greater than or equal to about 1,000,000 Daltons” ([0032]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Grainger to include Vittur’s drag reducing composition including polyalpha-olefins of MW ≥1,000,000 in a sealed temporary container, with a reasonable expectation of success, in order to provide a “friction reducer” (as desired by Grainger) which is known to “reduce the drag of hydrocarbon fluids” and “can be conveniently and economically manufactured, stored, shipped, and applied” “without agglomeration issues associated with typical micron-sized ground drag reducing agent particulates” and “can have consistent drag reducing performance” by avoiding “non-uniform distribution of the DRA particles” (as taught by Vittur) (thereby including:
“1 ppm to 10 wt%, based on the total weight of the treatment fluid, of one or more types of oil-soluble DRAs, wherein the oil soluble DRA is a polyalphaolefin polymer with an average molecular weight (Mw) of 500,000 to 3 million;”).
Second, the modification is obvious as no more than the use of familiar elements (known friction/drag reducers; emulsified acids in oil-external emulsions) according to known techniques (packaging a friction/drag reducer in a sealed temporary container) in a manner that achieves predictable results (reducing drag/friction in an oil-based fluid). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). See MPEP 2143 Examples of Basic Requirements of a Prima Facie Case of Obviousness.
Regarding claim 2, Grainger discloses wherein the treatment fluid is introduced into the formation using one of the following operations: scale removal, fracturing acidizing, matrix acidizing, filter cake removal, or combinations thereof ([0023] “The compounds of the formula (I) are particularly useful as, or as components of, fluids for use in oil or gas well stimulation. Oil and gas wells may initially flow sluggishly, or after producing at a satisfactory rate over a period of time, then flow sluggishly. Such wells are often subjected to stimulation treatment to increase the flow of oil and/or gas particularly by acidisation and/or fracturing, particularly hydraulic fracturing”).
Regarding claim 3, Grainger discloses wherein the two-phase fluid contains a hydrophobic phase with a volume fraction between 5% to 60%, balanced with a water dispersed phase containing reactive acid (e.g., [0052] “An invert emulsion acidising fluid was made up by the emulsification method described in Example 1, but using 70 parts by weight 15% w/v aqueous hydrochloric acid” = 30 parts by weight hydrophobic phase, or 30%, which clearly anticipates 5-60 vol%).
Although not required to render obvious the limitation as claimed, it would have been further obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Grainger to provide e.g. other amounts withing 5-60 vol% hydrophobic phase, with a reasonable expectation of success, in order to provide suitable amounts of the continuous non-aqueous phase for forming an emulsion of the acidization materials as in Grainger. Applicant may note that, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
Regarding claims 4 and 5, Grainger discloses “Acidisation typically involves injecting into the production zone of an oil or gas well an acidic fluid including acidic materials such as hydrochloric acid, typically aqueous HCl at a concentration usually from 2 to 30% by weight (based on the total weight of the acidising fluid), "mud acid", a mixture of hydrochloric and hydrofluoric acids, typically in aqueous solution at a concentration usually from 2 to 30% by weight and a weight ratio of HCl to HF typically about 5:1, or, particularly if slower reaction is desired, "organic acids", a mixture of acetic and formic acids, typically in aqueous solution at a concentration usually from 1 to 40% by weight and a weight ratio of acetic to formic typically about 1:2” ([0024]). Accordingly, Grainger discloses:
(claim 4) wherein the reactive acids are selected from the group consisting of: hydrochloric acid; hydrofluoric acid; acetic acid; formic acid; citric acid; chelating agents; glycolic acid; and sulfamic acid; and further
(claim 5) wherein the reactive acid is an HCl solution with a concentration between 1% and 38%.
Regarding claim 6, Grainger discloses further comprising at least one of the following: fresh water, brine, inorganic salt, corrosion inhibitor, organic salt, iron control agent, H2S scavenger, surfactant, breaker, fluid loss control additive, scale inhibitor, asphaltene inhibitor, paraffin inhibitor, defoamer, solvent, mutual solvent, particulate diverter, and chelating agent (e.g., [0049]-[0050] “water demineralised water brine synthetic sea water”; [0026] “acid corrosion inhibitors”; [0027] “surfactants”; [0030] "diverting agents”; [0039] “Other additives can be included in the fluids of the invention in accordance with common practice. Examples of such additives include fluid loss agents particularly such as synthetic polymers such as polyacrylamides, polyacrylates, polyamides and similar polymers (some of which can also function as viscosity improving agents); corrosion inhibitors; scale inhibitors oxygen scavengers; and other similar additive materials”).
Regarding claim 7, Grainger discloses “a continuous non-aqueous phase” ([0024]).
Although Grainger does not specify the materials of the continuous non-aqueous phase, Grainger discloses the fluids may be “oil based (e.g. kerosene, a gas oil, diesel oil, or the like)” ([0033]).
Accordingly, presumably, the continuous non-aqueous phase may include kerosene, gas oil, or diesel, thereby providing “wherein the hydrophobic phase is derived from one of the following: diesel, kerosene, crude oil condensates, petroleum distills, mineral oils, crude oil, and liquid paraffin.”
Alternatively, even if it were found that Grainger fails to disclose this per se, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Grainger to include a continuous non-aqueous phase comprising kerosene, gas oil, or diesel, with a reasonable expectation of success, in order to provide a continuous non-aqueous phase of the materials disclosed by Grainger for oil-based fluid.
Regarding claims 9, 11, 12, and 15, as in claim 1, Vittur teaches “A drag reducing composition comprises a sealed temporary container; and a drag reducing agent and up to 20 weight percent of a dispersing fluid disposed in the sealed temporary container” (abstract) wherein the packaging “can be conveniently and economically manufactured, stored, shipped, and applied” “without agglomeration issues associated with typical micron-sized ground drag reducing agent particulates” ([0015]) and “the drag reducing compositions according to the disclosure can have consistent drag reducing performance” by avoiding “non-uniform distribution of the DRA particles” ([0016]) and “Drag reducing agents (DRAs) have been used to reduce the drag of hydrocarbon fluids” ([0002]) wherein “The container material can be dissolved … when the drag reducing agents are introduced into a hydrocarbon fluid” ([0049]). Vittur further teaches that the drag reducing composition may use “a polyolefin homopolymer” of “alpha olefin monomers” ([0033]) i.e. “polyalpha-olefins” ([0003]) wherein “The drag reducing agents can have a weight average molecular weight of greater than or equal to about 1,000,000 Daltons” ([0032]). Vittur also teaches “The drag reducing compositions include a drag reducing agent encapsulated in the sealed temporary container. The drag reducing agents include a plurality of polyolefin particles. The polyolefin particles can have a particle size of about 10 to about 2,000 microns, about 50 to about 2,000 microns, about 50 to about 1,500 microns, about 75 to about 1,000 microns, or about 75 to about 750 microns” ([0029]) in a dispersing fluid which “does not dissolve the drag reducing agents” ([0042]) i.e. provided as a slurry ([0003]), wherein “Exemplary dispersing fluids include water, alcohols, and hydrocarbon or a combination comprising at least one of the foregoing. Exemplary dispersing fluid alcohols include methanol, ethanol, propanol, butanol, pentanol, hexanol, glycerol, ethylene glycol, propylene glycol, diethylene glycol, dipropylene glycol, or a methyl ether of a glycol, or a combination comprising at least one of the foregoing. Exemplary hydrocarbon include n-pentane, isopentane, hexane, heptane, or a combination comprising at least one of the foregoing” ([0042]) and “In the drag reducing compositions, the drag reducing agent can be present in an amount of about 50 wt % to about 99.99 wt %” ([0046])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Grainger to include Vittur’s drag reducing composition including ~50 wt% polyalpha-olefins of MW ≥1,000,000 and particle size of ~100-1000 µm in a sealed temporary container with dispersing liquid such as water, alcohol, or hydrocarbons, with a reasonable expectation of success, in order to provide a “friction reducer” (as desired by Grainger) which is known to “reduce the drag of hydrocarbon fluids” and “can be conveniently and economically manufactured, stored, shipped, and applied” “without agglomeration issues associated with typical micron-sized ground drag reducing agent particulates” and “can have consistent drag reducing performance” by avoiding “non-uniform distribution of the DRA particles” (as taught by Vittur) (thereby including:
(claim 9) wherein the types of the oil-soluble DRA is a slurry, emulsion, or solution concentrate; and/or
(claim 11) wherein the polyalphaolefin polymer product is delivered in a slurry form with at least one of the following: one or more straight alcohols, one or more branched alcohols, one or more glycols, water, one or more surfactants, one or more dispersant agents, one or more weighting agents, one or more inorganic salts, one or more organic salts, brine, one or more saturated hydrocarbons, one or more unsaturated hydrocarbons, one or more aromatic hydrocarbons, one or more viscosifiers, and one or more biocides; and/or
(claim 12) wherein the slurry form has a solids content of about 10 wt% to about 70 wt%; and/or
(claim 15) wherein the polyalphaolefin polymer has an average diameter of about 1.0 micrometer to about 1,000 micrometer).
See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
The reference to Kommareddi (6,126,872) discloses “drag reducing agents” (abstract) but only discloses “Polyalpha-olefins, which in one embodiment are preferred herein, are polymerized from the monomers or comonomers by conventional techniques and will have molecular weights above 10 million per analysis by gel permeation chromatography (GPC)” (4:19-23).
The reference to Milligan (2008/0149530) discloses a drag reducing polymer (abstract) what may be polyalphaolefins ([0056]) having a molecular weight of at least 1,000,000 ([0043]). However, this reference discloses the drag reducing polymer only in an emulsion with an aqueous continuous phase ([0026]) and does not provide a hydrochloric acid or the like.
The reference to Mirzaei (2011/0160097) discloses fluids comprising polyalpholefins in an oil-based hydrocarbon solvent (abstract) which may be an emulsion with an oil continuous phase ([0043]) and which use polyalpholefins of molecular weight 1,000,000-50,000,000 ([0045]). However, this reference fails to provide acid.
The reference to Burden (2013/0203891) teaches an aqueous drag reducer comprising a poly(alpha olefin), a winterizing agent, and water (abstract) wherein the winterizing agent may be propylene glycol ([0016]) and may be present in 20-70 wt% of the aqueous drag reducer ([0017]). However, this reference fails to teach the drag reducer in slurry form with the propylene glycol.
The reference to Nasr-El-Din (2015/0141302) discloses “a composition containing a dispersed phase emulsified in a continuous phase, wherein at least 5 wt % on total weight of the dispersed phase of the composition is a chelating agent” (abstract) that has a hydrocarbon liquid as the continuous phase ([0053]) which may include acids such as “hydrochloric acid” ([0116]) and “Friction reducers” up to 0.2 vol% ([0166]). However, this reference fails to disclose a polyalphaolefin friction reducer of MW 500,000-3,000,000.
The reference to Reyes (2024/0384161) (effectively filed May 15, 2023) discloses “acidizing a subterranean formation” with “a water-in-oil emulsion comprising a non-polar phase, a polar phase, an emulsifier, an acid, and a drag reducing agent” (abstract) wherein the acid may be hydrochloric acid ([0014]) and the drag reducing agent may comprise “Mega-Supra-Molecules (MSM), Emulsion Shear-thinning Enhancers (ESE), or any high or ultra-high molecular weight polymers capable of recovering from the high shear rates typically experienced in fracture acidizing and reform their associative bonds” ([0019]), such as “polyolefins” ([0023]). However, this reference fails to disclose including polyalphaolefins of 500,000-3,000,000 molecular weight.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW SUE-AKO whose telephone number is (571)272-9455. The examiner can normally be reached M-F 9AM-5PM EST.
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/ANDREW SUE-AKO/Primary Examiner, Art Unit 3674