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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on December 20, 2024 is noted. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 14 is objected to because of the following informalities: On line 4 of the claims “the orthodontic bracket an at least” is believed to be in error for -the orthodontic bracket and at least-. 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.
Claims 3-6 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.
With respect to claim 3, the applicant claims that a first width across the first clip arm “at the U-shaped portion” is less than a second width of the first clip arm at the first, second and third arms. However, it is noted that the U-shaped portion is claims are connected the first clip arm with the second clip arm and not part of the first clip arm. Therefore, the claimed dimension of the first clip arm at the U-shaped portion is unclear. It is noted that for examination purposes, it is being interpreted as the portion of the first clip arm that is connected to the u-shaped portion, however, the applicant should amend the claim to clarify.
With respect to claim 4, the applicant claims “a second end” of the second arm clip, however, a first end has not been claimed, therefore, the limitation of a second end is unclear as to how there is a second end without a first.
With respect to claim 5, the limitation of the second end of the second clip arm “is a gingival end” is unclear. It is noted that the applicant has claimed the location of elements in anatomical directions such as relating the directions of the part of the claimed clip to how it would be arranged in the mouth, however, the limitation of “a gingival end” is unclear as it is not being claimed functionally and therefore, unclear as to what the applicant is trying to claim. It is noted that for examination purposes, the limitation is being interpreted as the second end is configured to be located in the gingival direction when placed in the mouth, however, the applicant should amend the claim to clarify what is being claimed.
Claim 6 is rejected for depending from claim 5.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Voudouris (2003/0031975) in view of Opin et al. (2004/0166458).
Voudouris teaches with respect to claim 1, a clip 6 for an orthodontic self-ligating bracket, the clip comprising a first clip arm, the first clip arm comprising a transition portion and terminates in first, second, and third arms that extend away from the transition portion, wherein the second arm is spaced apart from the first arm and the third arm is located between and spaced apart from the first arm and the second arm (see annotated figure below), and a second clip arm connected to the first clip arm and spaced apart from the first clip arm in a lingual-labial dimension, the second clip arm extending past the first, second and third arms of the first clip arm in an occlusal-gingival dimension. Voudouris teaches the invention as substantially claimed and discussed above, however, does not specifically teach the transition portion widens in a mesial-distal dimension.
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Opin teaches a clip 20 for an orthodontic self-ligating bracket, the clip comprising a first clip arm, the first clip arm comprising a transition portion that widens in a mesial-distal dimension and terminates in first and second arms 21 that extend away from the transition portion, wherein the second arm is spaced apart form the first arm, a second clip arm connected to the first clip arm and spaced apart from the first clip arm in a lingual-labial dimension, the second clip arm extending past the first and second clip arm in an occlusal-gingival dimension (see annaoted figure below, figs. 1 and 8 which show the second clip arm extending past the first and second arms). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the transition portion taught by Voudouris to widen in a mesial-distal direction as taught by Opin in order to provide a gradual transition between the different dimensioned parts of the clip in order to prevent sharp corners on the clip to provide a more comfortable clip for the patient. The modification would prevent sharp corners from poking the patient during use.
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Voudouris/Opin teaches the invention as substantially claimed and discussed above, Voudouris further teaches with respect to claim 2, the clip further comprising a U-shaped portion connecting the first arm to a first end of the second clip arm (see annaoted figure below).
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Voudouris/Opin teaches the invention as substantially claimed and discussed above, Opin further teaches with respect to claim 3, wherein a first width across the first clip arm in the mesial-distal dimension at the U-shaped portion is less than a second width across the first clip arm in the mesial-distal dimension at the first and second arms (see annotated figure below).
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Voudouris/Opin teaches the invention as substantially claimed and discussed above, Voudouris further teaches with respect to claim 4, wherein the second clip arm comprises a projection 18 at a second end of the second clip arm.
Voudouris/Opin teaches the invention as substantially claimed and discussed above, Voudouris further teaches with respect to claim 5, wherein the second end of the second clip arm is a gingival end (such that when positioned in the mouth, it can be positioned next to the gingival) and the projection is gingival in the occlusal-gingival dimension of the third arm of the first clip arm (see annotated figure below, such that the second end with the projection projects in a more gingival direction then the third arm of the first clip arm).
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Voudouris/Opin teaches the invention as substantially claimed and discussed above, Voudouris further teaches with respect to claim 6, wherein the projection extends labially form the second clip arm (see annaoted figure below).
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Voudouris/Opin teaches the invention as substantially claimed and discussed above, Opin further teaches with respect to claim 7, wherein the transition portion comprises a cut out or detent 25 configured for engagement by an orthodontic tool (par 82). It would have been obvious to one having ordinary skill in the art before the effective filling date of the invention to modify the clip of Voudouris with the detent taught by Opin in order to assist in removing the clip.
Voudouris/Opin teaches the invention as substantially claimed and discussed above, Voudouris further teaches with respect to claim 8, wherein the second arm is spaced apart from the first arm in the mesial-distal dimension and the third arm is located between and spaced apart from the first arm and the second arm in the mesial-distal dimension (see annotated figure below).
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Voudouris/Opin teaches the invention as substantially claimed and discussed above, Voudouris further teaches with respect to claim 9, wherein sides of the second clip arm are interior in the mesial-distal dimension of an extent of the first clip arm in the mesial-distal dimension form the first arm to the second arm (see annotated figure below). Further see fig. 1 which shows in cross sectional view, the second clip arm and the u-shaped portion having the same dimension in the mesial-distal dimension direction as the second clip arm is not hatched along with the u-shaped portion showing that they would have the same extent while the first clip arm is hatched showing it has the larger dimension in the mesial-distal dimension direction.
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Voudouris/Opin teaches the invention as substantially claimed and discussed above, Voudouris further teaches with respect to claim 10, the clip further comprising a u-shaped portion connecting the first arm to the first end of the second clip arm, wherein ethe u-shaped portion is interior in the mesial-distal dimension, of the first arm and the second arm of the first clip arm (see annotated figure below, such that the u-shaped portion is interior, i.e. between the ends of the first and second arms of the first clip arm in the mesial-distal dimension).
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Voudouris/Opin teaches the invention as substantially claimed and discussed above, Voudouris further teaches with respect to claim 11, a first cut out defined between the first arm and the third arm and a second cut out defined between the second arm and the third arm (see annaoted figure below).
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Voudouris/Opin teaches the invention as substantially claimed and discussed above, Voudouris further teaches with respect to claim 12, wherein the first and second cut outs are each configured to receive respective walls of the self-ligating bracket therein respectively between the first arm and the third arm and the second arm and the third arm, wherein the first clip arm is in a closed position relative to the orthodontic self-ligating bracket. It is noted that with respect to claim 12, the applicant is NOT claiming the orthodontic bracket and is only claiming the clip. Therefore, the limitations of claim 12 are functional and are met by the prior art if the structure of the prior art is capable of functioning as claimed. It is noted that since the prior art teaches the cut outs as claimed, they are capable of being positioned in a bracket as claimed, such that the bracket would have walls that would be capable of being positioned in the cut-outs. Therefore, since the prior art teaches the claimed clip capable of functioning with a bracket as claimed, the claimed functional limitations are met by the prior art.
Voudouris/Opin teaches the invention as substantially claimed and discussed above, Voudouris further teaches with respect to claim 13, wherein the first arm is configured to contact a first ledge of the orthodontic self-ligating bracket and the second arm is configured to contact a second ledge of the orthodontic self-ligating bracket when the first clip arm is in the closed position. It is noted that, as discussed above in detail, the claimed limitations of claim 13 are functional. It is noted that with respect to claim 13, the applicant is NOT claiming the orthodontic bracket and is only claiming the clip. Therefore, the limitations of claim 13 are functional and are met by the prior art if the structure of the prior art is capable of functioning as claimed. Since the prior art teaches the structure of the clip as claimed, it is noted that the claimed arms are capable of contacting a first and second ledge of a bracket as claimed, such that the bracket would have the structure of the ledges as functionally claimed. Therefore, since the prior art teaches the claimed clip capable of functioning with a bracket as claimed, the claimed functional limitations are met by the prior art.
Voudouris/Opin teaches the invention as substantially claimed and discussed above, Voudouris further teaches with respect to claim 14, wherein the first arm is configured to be at least partially positioned within a first recess extending into the orthodontic bracket and at least partially defining the first ledge and the first wall, and wherein the second arm is configured to be at least partially positioned within a second recess extending into the orthodontic bracket and at least partially defining the second ledge and the second wall. It is noted that, as discussed above in detail, the claimed limitations of claim 14 are functional. It is noted that with respect to claim 14 the applicant is NOT claiming the orthodontic bracket and is only claiming the clip. Therefore, the limitations of claim 14 are functional and are met by the prior art if the structure of the prior art is capable of functioning as claimed. Since the prior art teaches the structure of the clip as claimed, it is noted that the claimed arms are capable of contacting a first and second ledge with the claimed first and second walls of a bracket as claimed, such that the bracket would have the structure of the ledges and walls as functionally claimed. Therefore, since the prior art teaches the claimed clip capable of functioning with a bracket as claimed, the claimed functional limitations are met by the prior art.
Voudouris/Opin teaches the invention as substantially claimed and discussed above, Voudouris further teaches with respect to claim 15, wherein the third arm is configured to contact a central ridge between the first wall and the second wall when the first clip is in the closed position. It is noted that the limitations are functional. See above detailed explanation regarding the functional limitations of how the clip interacts with a bracket, such that the bracket is NOT being claimed. It is noted, since the prior art teaches the claimed clip capable of functioning with a bracket as claimed, the claimed functional limitations are met by the prior art.
Voudouris/Opin teaches the invention as substantially claimed and discussed above, Voudouris further teaches with respect to claim 16, wherein the third arm is configured to contact the first wall and the second wall when the first clip arm is in the closed position. It is noted that the limitations are functional. See above detailed explanation regarding the functional limitations of how the clip interacts with a bracket, such that the bracket is NOT being claimed. It is noted, since the prior art teaches the claimed clip capable of functioning with a bracket as claimed, the claimed functional limitations are met by the prior art.
Voudouris/Opin teaches the invention as substantially claimed and discussed above, Voudouris further teaches with respect to claim 17, wherein the clip is configured to move between the closed position wherein an arch wire slot is occluded and an open position wherein the arch wire slot is accessible. See above detailed explanation regarding the functional limitations of how the clip interacts with a bracket, such that the bracket is NOT being claimed. It is noted, since the prior art teaches the claimed clip capable of functioning with a bracket as claimed, the claimed functional limitations are met by the prior art. Further it is noted that Voudouris teaches the bracket having an open and closed position as functionally claimed (see fig. 1, pars. 10-11).
Voudouris/Opin teaches the invention as substantially claimed and discussed above, Voudouris further teaches with respect to claim 18, wherein the second clip arm comprises a projection 18 at a gingival end of the second clip arm (see fig. 1, annotated figure above with respect to claim 5), wherein the projection extends labially from the second clip arm, and the projection is gingival in the occlusal gingival dimension of the third arm of the first clip arm (see annaoted figures above with respect to claims 5-6 and detailed explanation of claim 5-6).
Voudouris/Opin teaches the invention as substantially claimed and discussed above, Voudouris further teaches with respect to claim 19, wherein the second clip arm is configured to translate lingually of an archwire slot within a gap in the orthodontic self-ligating bracket in the closed position and in an open position. See above detailed explanation regarding the functional limitations of how the clip interacts with a bracket, such that the bracket is NOT being claimed. It is noted, since the prior art teaches the claimed clip capable of functioning with a bracket as claimed, the claimed functional limitations are met by the prior art. Further it is noted that Voudouris teaches the bracket having an open and closed position as functionally claimed (see fig. 1).
Voudouris/Opin teaches the invention as substantially claimed and discussed above, Voudouris further teaches with respect to claim 20, wherein a labial surface of the second clip arm is configured to engage a mesial lip and a distal lip at the gap in the orthodontic self-ligating bracket. It is noted that the limitations are functional. See above detailed explanation regarding the functional limitations of how the clip interacts with a bracket, such that the bracket is NOT being claimed. It is noted, since the prior art teaches the claimed clip capable of functioning with a bracket as claimed, the claimed functional limitations are met by the prior art.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 9-12 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8 and 11 of U.S. Patent No. 12, 207,988. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of ‘988 teaches claimed limitations of claim 1 of the current application including: a self-ligating bracket, comprising: a bracket body with an arch wire slot defined there through, the arch wire slot extending from a first side of the bracket body to a second side of the bracket body in the mesial-distal dimension and first and second walls defining a central ridge and first and second lateral ledges; and a clip comprising: a first clip arm, the first clip arm comprising a transition portion that widens in the mesial-distal dimension along an occlusal-gingival dimension and terminates in first, second, and third arms that extend away from the transition portion, wherein the second arm is spaced apart from the first arm and the third arm is located between and spaced apart from the first arm and the second arm, a first cut out defined between the first arm and the third arm and a second cut out defined between the second arm and the third arm; and a second clip arm connected to the first clip arm and spaced apart from the first clip arm in a lingual-labial dimension, the second clip arm extending past the first, second, and third arms of the first clip arm in the occlusal-gingival dimension; wherein, the clip is movable relative to the bracket body between an open position wherein the arch wire slot is accessible and a closed position wherein the first wall is received within the first cut out and the second wall is received within the second cut out and the arch wire slot is occluded by the clip and at least some of the arch wire slot is occluded by a portion of the transition portion that widens in the mesial-distal dimension along the occlusal-gingival dimension.
It is noted that the limitations in bold above are the limitations of claim 1 of the current invention taught by claim 1 of ‘988. It is noted that all of the limitations of the claimed clip are taught by ‘988 and therefore rejected under double patenting. Further it is noted that any limitations in bold below correspond to the claimed limitations of the current application.
Claim 11 of ‘988 teaches the claimed limitations of claims 2 and 3 of the current application including: The self-ligating bracket of claim 1 wherein the clip further comprises a U-shaped portion connecting the first arm to the second arm, wherein a first width across the first clip arm in the mesial-distal dimension at the U-shaped portion is less than a second width across the first clip arm in the mesial-distal dimension at the first, second, and third arms.
Claim 8 of ‘988 teaches the claimed limitations of claim 9 of the current application including: The self-ligating bracket of claim 1, wherein the second clip arm is interior in the mesial-distal dimension of the first arm and the second arm of the first clip arm.
Claim 11 of ‘988 teaches the claimed limitations of claim 10 of the current application including: The self-ligating bracket of claim 1 wherein the clip further comprises a U-shaped portion connecting the first arm to the second arm, wherein a first width across the first clip arm in the mesial-distal dimension at the U-shaped portion is less than a second width across the first clip arm in the mesial-distal dimension at the first, second, and third arms.
Claim 1 of ‘988 teaches the limitations of claim 11 of the current application including: A self-ligating bracket, comprising: a bracket body with an arch wire slot defined there through, the arch wire slot extending from a first side of the bracket body to a second side of the bracket body in the mesial-distal dimension and first and second walls defining a central ridge and first and second lateral ledges; and a clip comprising: a first clip arm, the first clip arm comprising a transition portion that widens in the mesial-distal dimension along an occlusal-gingival dimension and terminates in first, second, and third arms that extend away from the transition portion, wherein the second arm is spaced apart from the first arm and the third arm is located between and spaced apart from the first arm and the second arm, a first cut out defined between the first arm and the third arm and a second cut out defined between the second arm and the third arm; and a second clip arm connected to the first clip arm and spaced apart from the first clip arm in a lingual-labial dimension, the second clip arm extending past the first, second, and third arms of the first clip arm in the occlusal-gingival dimension; wherein, the clip is movable relative to the bracket body between an open position wherein the arch wire slot is accessible and a closed position wherein the first wall is received within the first cut out and the second wall is received within the second cut out and the arch wire slot is occluded by the clip and at least some of the arch wire slot is occluded by a portion of the transition portion that widens in the mesial-distal dimension along the occlusal-gingival dimension.
Claim 1 of ‘988 teaches the limitations of claim 12 of the current application including: A self-ligating bracket, comprising: a bracket body with an arch wire slot defined there through, the arch wire slot extending from a first side of the bracket body to a second side of the bracket body in the mesial-distal dimension and first and second walls defining a central ridge and first and second lateral ledges; and a clip comprising: a first clip arm, the first clip arm comprising a transition portion that widens in the mesial-distal dimension along an occlusal-gingival dimension and terminates in first, second, and third arms that extend away from the transition portion, wherein the second arm is spaced apart from the first arm and the third arm is located between and spaced apart from the first arm and the second arm, a first cut out defined between the first arm and the third arm and a second cut out defined between the second arm and the third arm; and a second clip arm connected to the first clip arm and spaced apart from the first clip arm in a lingual-labial dimension, the second clip arm extending past the first, second, and third arms of the first clip arm in the occlusal-gingival dimension; wherein, the clip is movable relative to the bracket body between an open position wherein the arch wire slot is accessible and a closed position wherein the first wall is received within the first cut out and the second wall is received within the second cut out and the arch wire slot is occluded by the clip and at least some of the arch wire slot is occluded by a portion of the transition portion that widens in the mesial-distal dimension along the occlusal-gingival dimension. It is noted that as claimed the cut outs are between the first and third arm and the second and third arm, therefore the clip functioning as claimed is taught by claim 1 of ‘988.
Claim 1 of ‘988 teaches the limitations of claim 17 of the current application including: A self-ligating bracket, comprising: a bracket body with an arch wire slot defined there through, the arch wire slot extending from a first side of the bracket body to a second side of the bracket body in the mesial-distal dimension and first and second walls defining a central ridge and first and second lateral ledges; and a clip comprising: a first clip arm, the first clip arm comprising a transition portion that widens in the mesial-distal dimension along an occlusal-gingival dimension and terminates in first, second, and third arms that extend away from the transition portion, wherein the second arm is spaced apart from the first arm and the third arm is located between and spaced apart from the first arm and the second arm, a first cut out defined between the first arm and the third arm and a second cut out defined between the second arm and the third arm; and a second clip arm connected to the first clip arm and spaced apart from the first clip arm in a lingual-labial dimension, the second clip arm extending past the first, second, and third arms of the first clip arm in the occlusal-gingival dimension; wherein, the clip is movable relative to the bracket body between an open position wherein the arch wire slot is accessible and a closed position wherein the first wall is received within the first cut out and the second wall is received within the second cut out and the arch wire slot is occluded by the clip and at least some of the arch wire slot is occluded by a portion of the transition portion that widens in the mesial-distal dimension along the occlusal-gingival dimension. It is noted that as claimed the cut outs are between the first and third arm and the second and third arm, therefore the clip functioning as claimed is taught by claim 1 of ‘988
Conclusion
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/HEIDI M EIDE/Primary Examiner, Art Unit 3772 2/10/2026