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 .
Withdrawn Rejections:
Applicant's amendments and arguments filed on 02/25/2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below is herein withdrawn.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
The application is examined I view of macrogol-40-glycerol hydroxystearate as specific non-ionic surfactant. Claims 1-10, 12-21 and 25-30 read on the elected species and are under examination, claim 11 does not read on the elected species and are withdrawn from consideration.
Claims 1-30 are pending, claims 1-10, 12-21 and 25-30 are under examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/19/2025 is being considered by the examiner.
Terminal Disclaimer
The terminal disclaimer filed on 02/24/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US patent 11951241 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-10, 12-21 and 25-30 are rejected under 35 U.S.C. 103 as being unpatentable over Fan et al. (US20170114017) in view of Gorissen (US20110086844) and Liepold et al. (US20110312973).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Fan et al. teaches Compounds are provided that are modulators of the C5a are substituted piperidines and are useful in pharmaceutical compositions, methods for the treatment of diseases and disorders involving the pathologic activation of C5a receptors (abstract). Among those compounds, compound 1.172 is the applicant’s claimed compound 1 (Fig.1V). Formulations for oral use may also be presented as hard gelatin capsules (this teaches applicant’s claim 21). wherein the active ingredient is mixed with an inert Solid diluent, for example, calcium carbonate, calcium phosphate or kaolin, polyethylene glycol (PEG) of various average sizes (e.g., PEG400, PEG4000) and certain surfactants such as cremophor or solutol, or as soft gelatin capsules wherein the active ingredient is mixed with water or an oil medium, for example peanut oil, liquid paraffin, or olive oil (page 15, [0093]). 140 mg per kilogram of body weight per day are useful in the treatment or preventions of conditions involving pathogenic C5a activity (about 0.5 mg to about 7 g per human patient per day). The amount of active ingredient that may be combined with the carrier materials to produce a single dosage form will vary depending upon the host treated and the particular mode of administration. Dosage unit forms will generally contain between from about 1 mg to about 500 mg of an active ingredient (page 17, [0126]).
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Gorissen teaches a solid homogeneous and thermodynamically stable solution of a poorly water-soluble biologically active substance, characterised in that the solid
solution comprises a) the active substance in an amount of up to 50% of the total weight of the formulation, b) a non-ionic hydrophilic surfactant ingredient, which is in the liquid form between 15° and 30° C., in an amount of between 20% and 70% of the total weight of the formulation and c) a pharmaceutically acceptable organic polymer or mixture of polymers, which polymer or mixture of polymers is in a liquid form above 60° C. and in a solid form below 30° C., in an amount of between 5% and 70% of the total weight of the formulation, and d) optionally comprises a disintegrating agent in an amount of between 1% and10% of the total weight of the formulation. These and other objects are achieved in accordance with the present invention by providing an oral immediate release formulation with enhanced bio-availability of a poorly water-soluble biologically active substance, wherein said formulation is a homogeneous and thermodynamically stable solid solution (page 1, [0008-0023]). The non-ionic hydrophilic surfactant is preferably selected from the group consisting of polyoxyethylene glycol sorbitan fatty acid esters (polysorbates) and non hydrogenated polyoxyethylene castor oil derivatives, said surfactants having a hydrophilic-lipophilic balance (HLB) value of between 14 and 16. The most preferred compound for the present invention is Cremophor ® EL. In one embodiment of the invention, the pharmaceutically acceptable organic polymer or mixture of polymers is comprised primarily of polyethylene glycol (PEG) or a mixture of polyethylene glycols. More preferred are PEG's having a molecular weight between 4,000 and 6,000 Daltons (page 2, [0030-0032]). An especially preferred dosage form for the above formulation is a hard gelatin capsule into which the homogeneous melt mixture is filled and allowed to solidify in situ. Another dosage form composition is made by filling the melt mixture into soft, elastic gelatin capsules (page 2, [0036-0037]). The active substances that can be formulated according to the present invention make up a virtually limitless list. As already stated above, the active substances to be formulated are poorly soluble in water, and the invention provides an enhancement of the dissolution properties of the active substances, so that they become more soluble in the substantially aqueous system of the human digestive tract. The active substance is normally used in an amount between about 0.1 and 50% by weight, preferably in an amount between 1 and 50% by weight and more preferably in an amount between about 10 and 50% by weight (page 2, [0038]).
Liepold et al. teaches solid compositions comprising amorphous Compound I (or a pharmaceutically acceptable salt thereof), a pharmaceutically acceptable hydrophilic polymer, and a pharmaceutically acceptable surfactant. Compound I has low aqueous solubility, and its in vivo absorption is expected to be dissolution-rate limited.
Formulating Compound I in an amorphous form can increase the inherent drug solubility and dissolution rate, thereby enhancing the bioavailability of the compound. As used herein, the term "solid dispersion" defines a system in a solid state ( as opposed to a liquid or gaseous state) comprising at least two components, wherein one component is dispersed throughout the other component or components. For example, an active ingredient or a combination of active ingredients can be dispersed in a matrix comprised of a pharmaceutically acceptable hydrophilic polymer(s) and a pharmaceutically acceptable surfactant(s). The term "solid dispersion" encompasses systems having small particles of one phase dispersed in another phase. These particles are often of less than 400 μm in size, such as less than 100, 10, or 1 μm in size. When a solid dispersion of the components is such that the system is chemically and physically uniform or homogenous throughout or consists of one phase (as defined in thermodynamics), such a solid dispersion is called a "solid solution." (page 2, [0022-0024]). Non-limiting examples of preferred hydrophilic polymers for the invention include PEG-4000, PEG-6000 (page 4, [0040]). A pharmaceutically acceptable surfactant employed in the present invention is preferably a non-ionic surfactant. More preferably, a solid composition of the present invention comprises a pharmaceutically acceptable surfactant having an HLB value of at least 10. Non-limiting examples of pharmaceutically acceptable surfactants that are suitable for the present invention
include polyoxyethylene castor oil derivates, e.g. polyoxyethyleneglycerol triricinoleate or polyoxyl 35 castor oil (Cremophor ® EL; BASF Corp.) or polyoxyethyleneglycerol
oxystearate such as polyethylenglycol 40 hydrogenated castor oil (Cremophor® RH 40, also known as polyoxyl 40 hydrogenated castor oil or macrogolglycerol hydroxystearate (page 4, [0042-0043]).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Fan et al. is that Fan et al. do not expressly teach solid solution and macrogol-40-glycerol hydroxystearate. This deficiency in Fan et al. is cured by the teachings of Gorissen and Liepold et al.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Fan et al., as suggested by Gorissen and Liepold et al., and produce the instant invention.
One of ordinary skill in the art would have been motivated to prepare a solid solution comprising compound 1, 20% to 70% of a surfactant such as Cremophor ® EL and 5% to 70% of PEG-4000 because solid solution formulation provides enhanced bio-availability of an active substance in a homogeneous and thermodynamically stable solid solution as suggested by Gorissen. Since it is advantage to have enhanced bio-availability and a homogeneous and thermodynamically stable formulation, it is obvious for one of ordinary skill in the art to prepare a solid solution comprising compound 1, 20%-70% of a surfactant such as Cremophor ® EL and 5%-70% of PEG-4000.
One of ordinary skill in the art would have been motivated to replace Cremophor® RH 40 (macrogol-40-glycerol hydroxystearate) for Cremophor ® EL as surfactant in solid solution because this is simple substitute of one known surfactant for another in solid solution formulation and produce predictable results. MPEP 2143, it is prima facie obvious for simple substitution of one known element for another yields predictable results. Since Liepold et al. teaches Cremophor® RH 40 is alternative to Cremophor ® EL and suitable surfactant in solid solution, it is obvious for one of ordinary skill in the art to replace Cremophor® RH 40 (macrogol-40-glycerol hydroxystearate) for Cremophor ® EL as surfactant in solid solution and produce instant claimed invention with reasonable expectation of success.
Regarding the amount of active ingredient (compound 1), since prior art teaches active ingredient form 0.1-50%, 2% of active compound 1 is obvious, then 98% of vehicle comprising surfactant macrogol-40-glycerol hydroxystearate and polymer PEG-4000 is obtained from simple calculation.
Regarding the amount of macrogol-40-glycerol hydroxystearate and PEG-4000, since prior art teaches 20%-70% of macrogol-40-glycerol hydroxystearate and 5%-70% of PEG-4000, their ratio of about 50:50 is obvious.
Regarding the amount of active ingredient (compound 1), since Fan et al. teaches Dosage unit forms will generally contain between from about 1 mg to about 500 mg of an active ingredient, for 10 mg of compound 1, when is at 2% of solid solution, the total amount of solid solution is 500mg, which is the amount to fill capsule size#0 (capsule size #0 is known to hold about 500mg).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Declaration
The Declaration under 37 CFR 1.132 filed 02/25/2026 is insufficient to overcome the rejection of claims 1-10, 12-21 and 25-30 based upon Fan et al. (US20170114017) in view of Gorissen (US20110086844) and Liepold et al. (US20110312973), as set forth in the last Office action because:
Applicants argue about better drug absorption of solid solution over tablet or suspension.
In response to this argument: this is not persuasive. Applicant's data are not
sufficient to overcome the 103 rejection at least for the following reasons. Firstly, MPEP 716.02(b), Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Applicants failed to compare with closest prior art active ingredient is mixed with an inert
solid diluent as taught by Fan et al., tablet or suspension is not closest prior art. Secondly, each of solution, tablet and suspension have different surfactant /polymer,
and it unclear whether it is solid solution formulation that contributes to better absorption
or it is those surfactants / polymer that contributes to better absorption, thus, applicants
failed to make proper comparison. Thirdly, better drug absorption from solid solution is
expected because Gorissen teaches solid solution with enhanced bio-availability of a
poorly water-soluble biologically active substance which results in better drug
absorption. Therefore, no unexpected results has been established, and the 103 rejection is still proper
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Response to Argument:
Applicants argue that Fan et al. teaches compound 1.172 among many other compound, solid formulations among many other formulations, and failed to provide guidance to pick compound 1.172 and solid formulation in capsule. This is hindsight.
In response to this argument; This is not persuasive. In response to applicant's
argument that the examiner's conclusion of obviousness is based upon improper
hindsight reasoning, it must be recognized that any judgment on obviousness is in a
sense necessarily a reconstruction based upon hindsight reasoning. But so long as it
takes into account only knowledge which was within the level of ordinary skill at the time
the claimed invention was made, and does not include knowledge gleaned only from the
applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d
1392, 170 USPQ 209 (CCPA 1971). Fan et al. teaches compound 1.172 and solid formulation among many other compounds and formulation. Each compound including compound 1.172 and each formulation including solid formulation in capsule are obvious because the recitation of other compounds and formulations do not make any particular compound and formulation including compound 1.172 and solid formulation in capsule less obvious. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As discussed in the above 103 rejections, Fan et al. relied on for teaching solid formulation of compound 1 in capsule, Gorissen is relied on for teaching solid solution of poorly water-soluble biologically active substance for enhanced bio-availability that motivates one artisan in the art to prepare solid solution of
compound 1 (extremely poor solubility, as admitted by applicants on 07/27/2023 in application 17545878), Gorissen teaching is not limited to a particular structure; Liepold is relied on for teaching Cremophor® RH 40 is alternative to Cremophor ® EL and suitable surfactant in solid solution, it is obvious for one of ordinary skill in the art to replace Cremophor® RH 40 (macrogol-40-glycerol hydroxystearate) for Cremophor ® EL as surfactant in solid solution and produce instant claimed invention with reasonable expectation of success. Therefore, the 103 rejection is still proper.
Applicants argue about Fan et al. does not teach compound 1.172 as poor water solubility, Gorissen and Liepold et al. teaches compound structure different from compound 1.172.
In response to this argument: this is not persuasive. Firstly, compound 1.172 (compound 1, has extremely poor solubility, as admitted by applicants on 07/27/2023 in application 17545878). Furthermore, it is also within skill of one artisan to determine compound 1.172 as hydrophobic with poor aqueous solubility from its chemical structure and or simple measurement of its aqueous solubility (Hormann et al., US20090163592, [0727-0729]). As discussed in the above 103 rejections, Fan et al. relied on for teaching solid formulation of compound 1 in capsule, Gorissen is relied on for teaching solid solution of poorly water-soluble biologically active substance for enhanced bio-availability that motivates one artisan in the art to prepare solid solution of
compound 1, Gorissen teaching is not limited to a particular structure but all compound with poor aqueous solubility; Liepold is relied on for teaching Cremophor® RH 40 is alternative to Cremophor ® EL and suitable surfactant in solid solution, it is obvious for one of ordinary skill in the art to replace Cremophor® RH 40 (macrogol-40-glycerol hydroxystearate) for Cremophor ® EL as surfactant in solid solution and produce instant claimed invention with reasonable expectation of success. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Therefore, the 103 rejection is still proper.
Applicants argue unexpected results from declaration.
In response to this argument: this is not persuasive. Since declaration is not sufficient to overcome the 103 rejection, the argument based on declaration is not sufficient to overcome the 103 rejection either.
MPEP 2141 III states: “The proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts.” Respectfully, after weighing all the evidence, the Examiner has reached a determination that the instant claims are not patentable in view of the preponderance of evidence and consideration of all the facts which is more convincing than the evidence which has been offered in opposition to it.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-10, 12-21 and 25-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 8445515 in view of Fan et al. (US20170114017), Gorissen (US20110086844) and Liepold et al. (US20110312973). The reference patent teaches a compound of formula encompassing applicant’s claimed compound 1 with a compound close to compound 1 with just additional methyl group at cyclopentyl ring (claim 24), in view of Fan et al. teaching applicant’s claimed compound 1 and solid solution from Fan et al., Gorissen and Liepold et al. according to the same rational as the above 103 rejections, one artisan in the art would immediately recognize the obvious variant of instant claimed invention over reference patent.
Claims 1-10, 12-21 and 25-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 10660897 in view of Fan et al. (US20170114017), Gorissen (US20110086844) and Liepold et al. (US20110312973). The reference patent teaches a compound of formula encompassing applicant’s claimed compound 1, in view of Fan et al. teaching applicant’s claimed compound 1 and solid solution from Fan et al., Gorissen and Liepold et al. according to the same rational as the above 103 rejections, one artisan in the art would immediately recognize the obvious variant of instant claimed invention over reference patent.
Claims 1-10, 12-21 and 25-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-31 of U.S. Patent No. 9745268 in view of Fan et al. (US20170114017), Gorissen (US20110086844) and Liepold et al. (US20110312973). The reference patent teaches a compound of compound 1 (claims 3 and 15), in view of solid solution from Fan et al., Gorissen and Liepold et al. according to the same rational as the above 103 rejections, one artisan in the art would immediately recognize the obvious variant of instant claimed invention over reference patent.
Claims 1-10, 12-21 and 25-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 10266492 in view of Fan et al. (US20170114017), Gorissen (US20110086844) and Liepold et al. (US20110312973). The reference patent teaches a compound of compound 1, in view of solid solution from Fan et al., Gorissen and Liepold et al. according to the same rational as the above 103 rejections, one artisan in the art would immediately recognize the obvious variant of instant claimed invention over reference patent.
Claims 1-10, 12-21 and 25-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10532982 in view of Fan et al. (US20170114017), Gorissen (US20110086844) and Liepold et al. (US20110312973). The reference patent teaches a compound of compound 1, in view of solid solution from Fan et al., Gorissen and Liepold et al. according to the same rational as the above 103 rejections, one artisan in the art would immediately recognize the obvious variant of instant claimed invention over reference patent.
Claims 1-10, 12-21 and 25-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11845729 in view of Fan et al. (US20170114017), Gorissen (US20110086844) and Liepold et al. (US20110312973). The reference patent teaches a compound of compound 1, in view of solid solution from Fan et al., Gorissen and Liepold et al. according to the same rational as the above 103 rejections, one artisan in the art would immediately recognize the obvious variant of instant claimed invention over reference patent.
Claims 1-10, 12-21 and 25-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-39 of copending Application No. 19279734 in view of Fan et al. (US20170114017), Gorissen (US20110086844) and Liepold et al. (US20110312973). The reference patent teaches a compound of formula (claims 1 and 29) which is applicant’s claimed compound 1, in view of Fan et al. teaching applicant’s claimed compound 1 and solid solution from Fan et al., Gorissen and Liepold et al. according to the same rational as the above 103 rejections, one artisan in the art would immediately recognize the obvious variant of instant claimed invention over reference patent.
This is a provisional nonstatutory double patenting rejection.
Response to Argument:
Applicants argued the same as 103 rejection.
In response to this argument: this is not persuasive. Since those arguments are not sufficient to overcome the 103 rejection, they are not sufficient to overcome the double patenting rejections either.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. 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 JIANFENG SONG, Ph.D. whose telephone number is (571)270-1978. The examiner can normally be reached on M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian-Yong Kwon can be reached on (571)272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANFENG SONG/Primary Examiner, Art Unit 1613