DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 1, 3--7, 9, 10, 13-15, and 17-24 are rejected under 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.
In claim 1, lines 6-7, the phrase, “an expandable polymeric material at least partially associated with the elongated base reinforcing portion” is vague and indefinite. The term "partially associated" provides no clear structural relationship between the expandable polymeric material and the elongated base reinforcing portion.
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, 4, 5, 6, 7, 9, 10, 13, 14, 15, 17, 18, 21, 22, 23, and 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 12, 13, 14, 16, and 17 of U.S. Patent No. 12,240,215, respectively. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 12, 13, 14, 16, and 17 of the patent recite all the structure recited in claims 1, 3, 4, 5, 6, 7, 9, 10, 13, 14, 15, 17, 18, 21, 22, 23, and 24 of the instant application, respectively, as outlined in the below table:
Instant Application
U.S. Patent No. 12,240,215
Claim 1: A structural reinforcement for an automotive vehicle, the structural reinforcement comprising:
i) an elongated base reinforcing portion having;
a) a longitudinal axis and
b) a network of ribs;
1. A structural reinforcement for insertion into a cavity of an automotive vehicle, the structural reinforcement comprising:
i) an elongated base reinforcing portion having: a) a longitudinal axis, b) a network of ribs,
ii) an expandable polymeric material at least partially associated with the elongated base reinforcing portion; and
ii) an expandable polymeric material located at least partially on the elongated base reinforcing portion; and
iii) a localized reinforcement aligned generally parallel with the longitudinal axis and located within the structural reinforcement;
wherein the ductility of the elongated base reinforcing portion is less than the ductility of the localized reinforcement.
iii) a localized reinforcement aligned generally parallel with the longitudinal axis and located within the notches of the elongated base reinforcing portion; and wherein the ductility of the elongated base reinforcing portion is less than the ductility of the localized reinforcement.
Claim 3: The structural reinforcement of claim 1, wherein the localized reinforcement includes a fastening means that fastens the localized reinforcement to a vehicle structure or to the base reinforcing portion.
2. The structural reinforcement of claim 1, wherein the localized reinforcement includes a fastening means that fastens the localized reinforcement to a vehicle structure or to the base reinforcing portion.
Claim 4: The structural reinforcement of claim 3, wherein the fastening means attaches to any mounting bracket, a seat belt mechanism or retractor, a pull handle bracket, a roof rack, a mirror bracket, a sunroof bracket, a bumper bracket, a hinge component, a chassis mount bracket, an engine bracket, a suspension component or a radiator bracket.
3. The structural reinforcement of claim 2, wherein the fastening means attaches to any mounting bracket, a seat belt mechanism or retractor, a pull handle bracket, a roof rack, a mirror bracket, a sunroof bracket, a bumper bracket, a hinge component, a chassis mount bracket, an engine bracket, a suspension component, or a radiator bracket.
Claim 5: The structural reinforcement of claim 1, wherein the localized reinforcement is made of a metallic material selected from steel, aluminum, titanium, nickel, magnesium, an alloy, a transition metal or any combination thereof.
4. The structural reinforcement of claim 1, wherein the localized reinforcement is made of a metallic material selected from steel, aluminum, titanium, nickel, magnesium, an alloy, a transition metal, or any combination thereof.
Claim 6: The structural reinforcement of claim 1,wherein the localized reinforcement is made of polyurethanes, polyurethane composites, or any combination thereof.
5. The structural reinforcement of claim 1, wherein the localized reinforcement is made of polyurethanes, polyurethane composites, or any combination thereof.
Claim 7: The structural reinforcement of claim 1, wherein the localized reinforcement is substantially completely covered by the elongated base reinforcing portion, the expandable polymeric material, or both.
6. The structural reinforcement of claim 1, wherein the localized reinforcement is substantially covered by the elongated base reinforcing portion, the expandable polymeric material, or both.
Claim 9: The structural reinforcement of claim 1, wherein the localized reinforcement is a composite material.
7. The structural reinforcement of claim 1, wherein the localized reinforcement is a composite material.
Claim 10: The structural reinforcement of claim 1, wherein the localized reinforcement has an outer surface and at least a portion of the outer surface is in contact with the expandable polymeric material after expansion.
8. The structural reinforcement of claim 1, wherein the localized reinforcement has an outer surface and at least a portion of the outer surface is in contact with the expandable polymeric material after expansion.
Claim 13: The structural reinforcement of claim 1,wherein the expandable material has a ductility ratio of about 2.5.
9. The structural reinforcement of claim 1, wherein the expandable polymeric material has a ductility ratio of about 2.5.
Claim 14: The structural reinforcement of claim 1,wherein the localized reinforcement has a generally curved or U-shaped profile.
10. The structural reinforcement of claim 1, wherein the localized reinforcement has a generally curved or U-shaped profile.
Claim 15: The structural reinforcement of claim 1,wherein the elongated base reinforcing portion is a metal part, a composite part, a polymeric part, or any combination thereof.
11. The structural reinforcement of claim 1, wherein the elongated base reinforcing portion is a metal part, a composite part, a polymeric part, or any combination thereof.
Claim 17: The structural reinforcement of claim1,wherein the localized reinforcement has one or more visible exposed surfaces after expansion of the expandable polymeric material.
12. The structural reinforcement of claim 1, wherein the localized reinforcement has one or more visible exposed surfaces after expansion of the expandable polymeric material.
Claim 18: The structural reinforcement of claim 1,wherein the structural reinforcement includes a top portion, a middle portion and a bottom portion so that the localized reinforcement is only in contact with the middle portion.
13. The structural reinforcement of claim 1, wherein the structural reinforcement includes a top portion, a middle portion, and a bottom portion so that the localized reinforcement is only in contact with the middle portion.
Claim 21: The structural reinforcement of claim 1, wherein the expandable polymeric material is an epoxy-based material.
Claim 22 (New): The structural reinforcement of claim 1, wherein the localized reinforcement is made of a material that is dissimilar from and has a higher tensile strength than the material of the elongated base reinforcing portion so that upon impact in the impact deformation region, the severity of deformation is reduced as compared to a part without the localized reinforcement.
14. The structural reinforcement of claim 1, wherein the expandable polymeric material is an epoxy-based material.
Claim 23: The structural reinforcement of claim 1, wherein the network of ribs is disposed outward from the localized reinforcement.
16. The structural reinforcement of claim 1, wherein the network of ribs is disposed outward from the localized reinforcement.
Claim 24: The structural reinforcement of claim 1, wherein the network of ribs is disposed over the localized reinforcement.
17. The structural reinforcement of claim 1, wherein the network of ribs is disposed over the localized reinforcement.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 3, 4, 5, 15, 17, 18, and 21-24 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Belpaire et al. (US 2011/0206890) in view of Czaplicki et al. (US 2004/0124553).
With respect to claim 1, Belpaire et al. disclose the structural reinforcement except that they are silent on whether the expandable material is polymeric. Belpaire et al. disclose a structural reinforcement for an automotive vehicle, the structural reinforcement comprising:
i) an elongated base reinforcing portion 22 having;
a) a longitudinal axis, as shown in Fig. 2 of Belpaire et al., and
b) a network of ribs 24/26; and
ii) an expandable material (“expandable foam,” paragraph [0025]) at least partially associated with the elongated base reinforcing portion; and
iii) a localized reinforcement 30 aligned generally parallel with the longitudinal axis and located within the structural reinforcement (as shown in Fig. 2 of Belpaire et al.).
Czaplicki et al. teach a similar structural reinforcement including an expandable polymeric material 30 at least partially associated with an elongated base reinforcing portion 10 (as shown in Fig. 1 of Czaplicki et al.).
It would have been obvious to one of ordinary skill in the art, at the time of invention, to combine the teaching of Czaplicki et al. with the structural reinforcement disclosed by Belpaire et al. because the material provides acoustic, sealing, strength and stiffness when combined with a structural reinforcement that is similar to a solid structural reinforcement but with less weight (Czaplicki et al. paragraph [0026]).
With respect to claim 3, Belpaire et al. disclose that the localized reinforcement 30 includes a fastening means that fastens the localized reinforcement 30 to a vehicle structure of to the base reinforcing portion 22 (“Carrier 22 may be a two-piece construction where two-halves are each attached to insert 30 using glue, adhesive, or a mechanical fastener,” Belpaire et al., paragraph [0028]).
With respect to claim 4, Applicant has not recited any further structure of the invention in claim 4. Instead, Applicant has only recited an intended use of the previously recited structure. The structure disclosed by Belpaire et al., as modified, is capable of being used as recited in claim 4.
With respect to claim 5, Belpaire et al. disclose that the localized reinforcement 30 is made of a metallic material selected from steel, aluminum, titanium, nickel, magnesium, an alloy, a transition metal or any combination thereof (“steel or aluminum,” Belpaire et al., paragraph [0025]).
With respect to claim 15, Belpaire et al. disclose that the elongated base reinforcing portion 22 is a polymeric part ( “plastics, composites, and the like, including various polyamides,” Belpaire et al., paragraph [0019]).
With respect to claim 17, Belpaire et al., as modified, disclose that, the expandable polymeric material would be placed inside cavities of the ribbed structure 22 (Belpaire et al., paragraph [0025]). It can be seen from Fig. 2 of Belpaire et al. that the localized reinforcement 30 would have one or more visible exposed surface (top and bottom surfaces extending away from structure 22) after expansion of the expandable polymeric material.
[AltContent: ]With respect to claim 18, Belpaire et al. disclose an embodiment in which the structural reinforcement includes a top portion, a middle portion and a bottom portion so that the localized reinforcement is only in contact with the middle portion as shown below in the image taken from Fig. 9 of Belpaire et al.:
[AltContent: textbox (middle portion)][AltContent: textbox (bottom portion)][AltContent: textbox (top portion)][AltContent: ][AltContent: ]
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With respect to claim 21, Czaplicki et al. disclose that the expandable polymeric material 30 is an epoxy-based material (Czaplicki et al., paragraph [0030]).
With respect to claim 22, Belpaire et al. disclose that the localized reinforcement 30 is made of a material that is dissimilar from and has a higher tensile strength than the material of the elongated base reinforcing portion 22 so that upon impact in the impact deformation region, the severity of deformation is reduced as compared to a part without the localized reinforcement (“the insert is made of a material that is dissimilar from and has a higher tensile strength than the material of the rigid carrier so that upon impact in the impact deformation region the severity of deformation is reduced as compared to a part without the insert,” Belpaire et al., claim 23).
With respect to claim 23, Belpaire et al. disclose that the network of ribs 24/26 is disposed outward from the localized reinforcement 30 (as shown in Fig. 7 of Belpaire et al.).
With respect to claim 24, Belpaire et al. disclose that the network of ribs 24/26 is disposed over the localized reinforcement 30 (as shown in Fig. 7 of Belpaire et al.).
Claim 6 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Belpaire et al. (US 2011/0206890) in view of Czaplicki et al. (US 2004/0124553), as applied to claim 1 above, and further in view of Cooper et al. (US 6,688,680).
With respect to claim 6, Belpaire et al., as modified, disclose the claimed structural reinforcement except for the localized reinforcement being made of polyurethane, polyurethane composites or any combination thereof. However, Cooper et al. teach a similar structural reinforcement 15 including a localized reinforcement 12 made of polyurethane.
It would have been obvious to one of ordinary skill in the art, at the time of invention, to replace the metal disclosed by Belpaire et al., as modified, with the teaching of Cooper et al. because it is a simple substitution of one known element for another to obtain predictable results. That is, replacing the metal disclosed by Belpaire et al. with the reinforcing polyurethane member taught by Cooper et al. provides the predictable result of reinforcing whatever elongate structure it is being used with.
Claim 7 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Belpaire et al. (US 2011/0206890) in view of Czaplicki et al. (US 2004/0124553), as applied to claim 1 above, and further in view of Wardill (GB 2196584).
With respect to claim 7, Belpaire et al., as modified, disclose the claimed structural reinforcement except for the localized reinforcement being substantially completely covered by the elongated base reinforcing portion, the expandable polymeric material or both. However, Wardill teaches a similar structural reinforcement with an elongated base reinforcing portion 2,3 substantially completely covering a localized reinforcement 4 (as shown in Fig. 1 of Wardill).
It would have been obvious to a person of ordinary skill in the art, at the time of the invention, to combine the teaching of Wardill with the structural reinforcement disclosed by Belpaire et al., as modified, for the advantage of completely encapsulating the metal in urethane, thereby preventing corrosion of the metal (Wardill, abstract).
Claim 9 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Belpaire et al. (US 2011/0206890) in view of Czaplicki et al. (US 2004/0124553), as applied to claim 1 above, and further in view of Wohletz et al. (DE 102006058601).
With respect to claim 9, Belpaire et al., as modified, disclose the claimed structural reinforcement except for the localized reinforcement being made a composite material. However, Wohletz et al. teach a similar structural reinforcement with an elongated base reinforcing portion 2 and a localized reinforcement 4 wherein the localized reinforcement is a composite material (see abstract, and claim 1 of Wohletz et al.).
It would have been obvious to one of ordinary skill in the art, at the time of invention, to replace the metal disclosed by Belpaire et al., as modified, with the teaching of Wohletz et al. because it is a simple substitution of one known element for another to obtain predictable results. That is, replacing the metal disclosed by Belpaire et al. with the reinforcing composite member taught by Wohletz et al. provides the predictable result of reinforcing whatever elongate structure it is being used with.
Claims 1, 10, and 14 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Belpaire et al. (US 2011/0206890) in view of Hopton et al. (US 6,253,524)
With respect to claim 1, Belpaire et al. disclose the claimed structural reinforcement except that they are silent on whether the foam is polymeric material. Belpaire et al. disclose a structural reinforcement capable of insertion into a cavity of an automotive vehicle, the structural reinforcement comprising:
i) an elongated base reinforcing portion 22 having
a) a longitudinal axis as shown in Fig. 2 of Belpaire et al., and
b) a network of ribs 24/26,
ii) an expandable material (“expandable foam,” paragraph [0025]) at least partially associated with the elongated base reinforcing portion; and
iii) a localized reinforcement 30 aligned generally parallel with the longitudinal axis and located within the notches of the elongated base reinforcing portion (as shown in Fig. 2 of Belpaire et al.).
Hopton et al. teach a similar structural reinforcement including an expandable polymeric material 30 at least partially associated with an elongated base reinforcing portion 28 and a localized reinforcement 40 (as shown in Figs. 1 and 3 of Hopton et al.).
It would have been obvious to one of ordinary skill in the art, at the time of invention, to combine the teaching of Hopton et al. with the structural reinforcement disclosed by Belpaire et al. for the advantage of providing stiffening and reinforcement to a structural member in a vehicle (Hopton et al., col. 1, lines 40-44) as well as reducing the of rattling of parts in a vehicle.
With respect to claim 10, Hopton et al. teach that the localized reinforcement 40 has an outer surface as shown below in the image taken from Fig. 3 of Hopton et al.:
[AltContent: textbox (outer surface)][AltContent: ]
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and at least a portion of the outer surface is in contact with the expandable polymeric material 30 after expansion (as shown above).
With respect to claim 14, Hopton et al. disclose that the localized reinforcement 40 has a generally curved or U-shaped profile as shown in Fig. 1 of Hopton et al.
Allowable Subject Matter
Claim 13 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Claim 13 has been indicated as containing allowable subject matter primarily for the expandable material has a ductility ratio of about 2.5.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wagenblast et al. is cited to show another example of a structural reinforcement with an elongated base reinforcing portion having less ductility than a localized reinforcement.
While Santini et al. is not prior art, it is cited to show another example of a structural reinforcement with an elongated base reinforcing portion having less ductility than a localized reinforcement.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL J COLILLA whose telephone number is (571)272-2157. The examiner can normally be reached M-F 7:30 - 4:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy Weisberg can be reached at 571-270-5500. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Daniel J Colilla/Primary Examiner, Art Unit 3612