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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
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`
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`14/281,943
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`05/20/2014
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`TOSihikO WADA
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`MTS-3687US
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`9611
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`0104/2017 —RATNERPRESTIA m
`7590
`52473
`2200 RENAISSANCE BLVD
`NGUYEN, THUKHANH T
`SUITE 350
`KING OF PRUSSIA, PA 19406
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`PAPER NUMBER
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`1743
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`NOTIFICATION DATE
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`DELIVERY MODE
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`04/04/2017
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
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`pcorrespondence @ratnerprestia.c0m
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`PTOL—90A (Rev. 04/07)
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`

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`
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`Applicant(s)
`Application No.
` 14/281,943 WADA, TOSIHIKO
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
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`THU KHANH T. NGUYEN $2215 1743
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1 .704(b).
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`In no event, however, may a reply be timely filed
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`Status
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`1)IZI Responsive to communication(s) filed on 3/20/17.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|:l This action is non-final.
`2a)|Z| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)IZI C|aim(s)1-_12is/are pending in the application.
`5a) Of the above claim(s) fl) is/are withdrawn from consideration.
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`is/are allowed.
`6 El Claim s)
`s L12 is/are rejected.
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`3) D Interview Summary (PTO-413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) I] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
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`Paper No(s)/Mai| Date .
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20170324A
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`) )
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`_
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`is/are objected to.
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`are subject to restriction and/or election requirement.
`9)I:I C|aim(s
`)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`
`
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`hit
`:i/wwwusnto. ov/ atentS/init events/
`iindex.‘s orsend an inquiry to PPI-iieedback{®usgtc.00v.
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`Application Papers
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`10)I:l The specification is objected to by the Examiner.
`11)I:l The drawing(s) filed on
`is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
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`12)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)I:l All
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`b)|:l Some” c)I:l None of the:
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`1.I:I Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`

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`Application/Control Number: 14/281,943
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`Page 2
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`Art Unit: 1743
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
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`DETAILED ACTION
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`Claim Rejections - 35 USC § 103
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`1.
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`In the event the determination of the status of the application as subject to AIA 35 USC.
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`102 and 103 (or as subject to pre—AIA 35 USC. 102 and 103) is incorrect, any correction of the
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`statutory basis for the rejection will not be considered a new ground of rejection if the prior art
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`relied upon, and the rationale supporting the rejection, would be the same under either status.
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`2.
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`The following is a quotation of 35 USC. 103 which forms the basis for all obviousness
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`rejections set forth in this Office action:
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`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.
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`3.
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`The factual inquiries set forth in Graham v. John Deere C0., 383 US. l, 148 USPQ 459
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`(1966), that are applied for establishing a background for determining obviousness under 35
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`USC. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
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`

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`Application/Control Number: 14/281,943
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`Page 3
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`Art Unit: 1743
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`4.
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`This application currently names joint inventors. In considering patentability of the
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`claims the examiner presumes that the subject matter of the various claims was commonly
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`owned as of the effective filing date of the claimed invention(s) absent any evidence to the
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`contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
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`effective filing dates of each claim that was not commonly owned as of the effective filing date
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`of the later invention in order for the examiner to consider the applicability of 35 U.S.C.
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`102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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`5.
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`Claims 11—12 are again rejected under 35 U.S.C. 103 as being unpatentable over Mori et
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`al. (8,535,035) in view of Shiraishi et al. (2012/0319326).
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`Regarding claim 11, Mori et al. teaches a fine—structure transfer apparatus, comprising a
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`substrate or a transfer element (100, 100’, 102), a support stand or a base and a stage (3, 5, 36,
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`38), a stamper or a sheet—like deformable thin—plate mold (7) with fine patterns (8), a pivoting
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`arm (11) or a holding member pivotable to allow the stamper (7) to curve upward to provide a
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`wide enough space to allow the transfer element (100) to be attached to or detached from the
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`upper surface of the stage (5), a first pressing roll (13) movable above the stamper (Fig. 1(b),
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`13), a UV light source located either above or below the substrate to cure the resin material (42a—
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`b).
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`However, Mori et al fails to disclose that the support stand is laterally movable relative to
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`the pressing roll.
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`Application/Control Number: 14/281,943
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`Page 4
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`Art Unit: 1743
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`Shiraishi et al. discloses a fine structure transfer apparatus, comprising a pressurizing
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`station (20) with a lower stage (20—2) laterally movable (Fig. 1, 20—2) for supporting and aligning
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`a substrate (3; para. [0062]—[0063]).
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`It would have been obvious to one of ordinary skilled in the art before the applicant's
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`invention was filed to have replaced Mori et al.'s support stand with a laterally movable support
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`stage as taught by Shiraishi et al. so that the same support stage can be used to support, transport
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`and align the substrate with the imprinting mold during the imprinting process.
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`Regarding to the newly added limitations, such as a position, how and when a molding
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`material is pressed at which angle by the first and second pressing rolls, these are functional
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`limitations. The functional limitations do not further define the structure of the apparatus and
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`cannot be used to determine the patentability of an apparatus claim. Since the combination of
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`Mori and Shiraishi et al. taught all structure limitations of the claims, it would be able to operate
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`in the claimed manner.
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`Regarding claim 12, Mori et al. further discloses that more than one pressing rolls can be
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`used (Fig. 4, 13) and wherein the lower UV light irradiating unit (42a) is located below the
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`substrate support stand for hardening the resin material.
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`Response to Arguments
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`6.
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`Applicant's arguments filed 3/20/17 have been fully considered but they are not
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`persuasive. The amended limitations of claim 11 have been reviewed, however this are
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`functional limitations which are not further define or limit the apparatus structures and cannot be
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`used to determine the patentability of an apparatus claim. “[A]pparatus claims cover what a
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`Application/Control Number: 14/281,943
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`Page 5
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`Art Unit: 1743
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`device is, not What a device does”. Hewlett-Packard C0. v. Bausch & Lamb Inc, 909 F.2d 1464,
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`1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
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`7.
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
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`policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action. In the event a first reply is filed Within TWO
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`MONTHS of the mailing date of this final action and the advisory action is not mailed until after
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`the end of the THREE—MONTH shortened statutory period, then the shortened statutory period
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`Will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
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`CFR 1.136(a) Will be calculated from the mailing date of the advisory action. In no event,
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`however, Will the statutory period for reply expire later than SIX MONTHS from the mailing
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`date of this final action.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to THU KHANH T. NGUYEN Whose telephone number is
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`(571)272—1136. The examiner can normally be reached on Monday—Friday, 7:30—3:00.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Joseph Del Sole can be reached on 571—272—1 130. The fax phone number for the
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`organization Where this application or proceeding is assigned is 571—273—8300.
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`

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`Application/Control Number: 14/281,943
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`Page 6
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`Art Unit: 1743
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`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR
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`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private PAIR
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`system, contact the Electronic Business Center (EBC) at 866—217—9197 (toll—free). If you would
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`like assistance from a USPTO Customer Service Representative or access to the automated
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`information system, call 800—786—9199 (IN USA OR CANADA) or 571—272—1000.
`
`/Thu Khanh T. Nguyen/
`Patent Examiner, 1743
`
`/JOSEPH S. DEL SOLE/
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`Supervisory Patent Examiner, Art Unit 1743
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`