UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/788,722
`
`10/19/2017
`
`TAKAKO HORI
`
`731456.450C1
`
`7123
`
`Seed IP Law Group LLP/Panason1e (PIPCA)
`701 5th Avenue, Suite 5400
`Seattle, WA 98104
`
`LEE” ANDREW CHUNG CHEUNG
`
`ART UNIT
`
`2411
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/15/2020
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`
`following e—mail address(es):
`US PTOeACtion @ SeedIP .Com
`
`pairlinkdktg @ seedip .eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`017/09 A0170” Summary
`
`Application No.
`15/788,722
`Examiner
`ANDREWC LEE
`
`Applicant(s)
`HORI et al.
`Art Unit
`2411
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`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 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f 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).
`
`Status
`
`1). Responsive to communication(s) filed on 04/22/2020.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a)[:] This action is FINAL.
`
`2b)
`
`This action is non-final.
`
`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`
`4):] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)
`
`Claim(s)
`
`1—3 and 11 is/are pending in the application.
`
`5a) Of the above claim(s) 4—10 and 12 is/are withdrawn from consideration.
`
`
`
`E] Claim(ss)
`
`is/are allowed.
`
`Claim(ss) 1 —3 and 11 is/are rejected.
`
`1:] Claim(ss_) is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`C] Claim(s
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`httpfiwww.”smogovmatentsflnit_events[pph[index.'§p or send an inquiry to PPeredhack@gsptg.ggv.
`
`Application Papers
`
`10):] The specification is objected to by the Examiner.
`
`is/are: a)[:| accepted or b)D objected to by the Examiner.
`11):] The drawing(s) filed on
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`
`12):] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)i:i All
`
`b)C] Some**
`
`c)C] None of the:
`
`1.1:] Certified copies of the priority documents have been received.
`
`2.[:] Certified copies of the priority documents have been received in Application No.
`
`SD Copies of the certified copies of the priority documents have been received in this National Stage
`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.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) C] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20200602
`
`

`

`Application/Control Number: 15/788,722
`Art Unit: 2411
`
`Page 2
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`DETAILED ACTION
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`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.
`
`Continued Examination Under 37 CFR 1. 1 14
`
`1.
`
`A request for continued examination under 37 CFR 1.114, including the fee set
`
`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
`
`application is eligible for continued examination under 37 CFR 1.114, and the fee set
`
`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
`
`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on
`
`04/22/2020 has been entered.
`
`Response to Amendment
`
`Claims 4, 5, 6, 7, 8, 9, 10, 12 have been cancelled.
`
`Claims 1, 11 have been amended.
`
`Claims 1, 2, 3, 11 are pending.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Claim 11 is objected to because of the following informalities:
`
`Claim Objections
`
`Regarding Claim 11, for clarity, the claimed subject matter “wherein the second
`
`signaling requests the second terminal to communicate using the codec and codec
`
`mode determined by the determining” in the last paragraph should be amended
`
`

`

`Application/Control Number: 15/788,722
`Art Unit: 2411
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`Page 3
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`“wherein the second signaling requests the second terminal to communicate using the
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`codec and codec mode determined by the determining to be used by the first terminal.
`
`Appropriate correction is required.
`
`Claim Rejections - 35 USC § 103
`
`6.
`
`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.
`
`7.
`
`Claims 1, 2, 3, 11 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Hori et al. (US 20140099966 A1) in view of Zhang et al. (US 20140328323 A1 ).
`
`Regarding Claim 1, Hori et al. disclose a communication node comprising: a
`
`determiner which, in operation, determines a codec and a codec mode to be used by
`
`both a first terminal and by a second terminal while the first terminal and the
`
`second terminal perform communication in a first network, before the first terminal
`
`performs a handover from the first network to a second network that is different from the
`
`first network (“,...That is, it is assumed that a VoLTE call is made between UE 100
`
`and UE 102. Here, it is assumed that UE 100 is handed over (HO) to the CS
`
`network during the call,...”, Fig. 1, Fig. 2, paras. [0006] — [0010], “,...UE 100 and
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`UE 102 are initially connected to the PS network (e-UTRAN), respectively. In a
`
`system in which the eSRVCC handover is realized,...”, “,....As a voice codec
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`used in the CS network, an adaptive multi-rate (AMR) codec that is a narrowband
`
`

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`Application/Control Number: 15/788,722
`Art Unit: 2411
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`Page 4
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`(NB) codec, an AMR-WB codec that is a wideband (WB) codec, or the like is
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`widely used. AMR and AMR-WB is usable in a packet exchanging technique, and
`
`thus, may also be considered to be used in the PS network,....”, Fig. 3, Fig. 4,
`
`paras. [0014] — [0023] ; “,...codec detection section 604 detects the codecs that
`
`are used by UE 100 and UE 102, respectively. Further, codec detection section
`
`604 outputs information (detection result) that indicates the detected codecs to
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`change determination section 608,...”, Fig. 5, Fig. 6, paras. [0069] — [0074]),
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`the determiner determining the codec and codec mode based on a common part among
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`(Fig. 7, Fig. 8, paras. [0076] — [0083]; Fig. 9, Fig. 10):
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`information indicating codecs and codec modes used for communication in the
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`first network from which the handover is performed (“,...When UE 100 and UE 102 use
`
`different codecs respectively, transcoding section 612 performs transcoding for
`
`communication data to UE 102 from UE 100 and communication data to UE 100
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`from UE,....”, Fig. 7, paras. [0077] — [0083]; “,...Codec negotiation section 704
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`negotiates the codec to be used in communication between terminals (here, UE
`
`100 and UE 102). ,...”, Fig. 8, paras. [0086] — [0089]; “,...the calling party UE
`
`designates only a sampling frequency with respect to the codec A, and generates
`
`the SDP offer without bandwidth designation,...”, Fig. 9, paras. [0090] — [0091]),
`
`information indicating codecs and codec modes supported by the first terminal
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`(“,...When UE 100 and UE 102 use different codecs respectively, transcoding
`
`section 612 performs transcoding for communication data to UE 102 from UE 100
`
`and communication data to UE 100 from UE,....”, Fig. 7, paras. [0077] — [0083];
`
`“,...Codec negotiation section 704 negotiates the codec to be used in
`
`

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`Application/Control Number: 15/788,722
`Art Unit: 2411
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`Page 5
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`communication between terminals (here, UE 100 and UE 102). ,...”, Fig. 8, paras.
`
`[0086] — [0089]; “,...the calling party UE designates only a sampling frequency
`
`with respect to the codec A, and generates the SDP offer without bandwidth
`
`designation,...”, Fig. 9, paras. [0090] — [0091]), and
`
`information indicating codecs and codec modes supported by the second
`
`network to which the handover is performed (“,...When UE 100 and UE 102 use
`
`different codecs respectively, transcoding section 612 performs transcoding for
`
`communication data to UE 102 from UE 100 and communication data to UE 100
`
`from UE,....”, Fig. 7, paras. [0077] — [0083]; “,...Codec negotiation section 704
`
`negotiates the codec to be used in communication between terminals (here, UE
`
`100 and UE 102). ,...”, Fig. 8, paras. [0086] — [0089]; “,...in a case where a
`
`receiving party UE itself supports codec A, the receiving party UE receives a
`
`condition in which only the sampling frequency of codec A is designated (selects
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`codec A shown in FIG. 9), and generates the SDP answer without bandwidth
`
`designation,...”, Fig. 9, paras. [0090] — [0091]); and
`
`Hori et al. disclose
`
`implicitly a generator which, in operation, generates first signaling before the first
`
`terminal performs the handover from the first network to the second network, wherein
`
`the first signaling indicates the codec and codec mode determined by the determiner to
`
`be used by the first terminal (“,..if the band width of the changed codec of UE 100 is
`
`equal to wider than the maximum bandwidth of the codec that is currently used
`
`by UE 102 (ST804: No), in ST808, change determination section 608 determines
`
`not to perform the band limitation to UE 102,...”, Fig. 7, paras. [0079 — [0084] ) and
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`generates second signaling after the first terminal performs the handover from the first
`
`

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`Application/Control Number: 15/788,722
`Art Unit: 2411
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`Page 6
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`network to the second network, wherein the second signaling requests the second
`
`terminal to communicate using the codec and codec mode determined by
`
`the determiner (“,...if codec mode change section 712 determines the encoding bit
`
`rate, codec mode change section 712 notifies bandwidth determination section
`
`708 of the determined encoding bit rate. Then, bandwidth determination section
`
`708 determines the bandwidth according to the determined encoding bit rate,...”,
`
`paras. [0093] — [0096]; “,...UE 100 uses the bandwidth (NB) of the changed codec,
`
`and UE 102 uses the bandwidth (NB) in which the band of codec A is limited.
`
`Thus, both of UE 100 and UE 102 use the same NB as the codec bandwidth,...”,
`
`Fig. 10, paras. [0105] — [0108]).
`
`Hori et al. do not disclose explicitly a generator which, in operation, generates
`
`first signaling before the first terminal performs the handover from the first network to
`
`the second network, wherein the first signaling indicates the codec and codec mode
`
`determined by the determiner to be used by the first terminal and generates second
`
`signaling after the first terminal performs the handover from the first network to the
`
`second network, wherein the second signaling requests the second terminal to
`
`communicate using the codec and codec mode determined by the determiner.
`
`Zhang et al. in the same and/or in the similar field of endeavor teach a
`
`generator which, in operation, generates first signaling before the first terminal performs
`
`the handover from the first network to the second network, wherein the first signaling
`
`indicates the codec and codec mode determined by the determiner to be used by the
`
`first terminal (“,....performing communication based on a media codec type
`
`negotiated by calling and called parties in a process of handing over a voice
`
`

`

`Application/Control Number: 15/788,722
`Art Unit: 2411
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`Page 7
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`service from a first network to a second network,...”, Abstract, “,...In step $15,
`
`the ATCF adjusts the list of codec types supported by the calling party which is
`
`carried by the Offer SDP in the INVITE request according to the codec types
`
`supported by the MGW,..”, “,..In step $18, the called party feeds back a response
`
`message (200 OK or 18x etc.), which carries an Answer SDP carrying at least one
`
`codec type supported by the MGW selected from the adjusted list of codec types
`
`supported by the calling party,...”, Fig. 1, paras. [0038] — [0053]) and generates
`
`second signaling after the first terminal performs the handover from the first network to
`
`the second network, wherein the second signaling requests the second terminal to
`
`communicate using the codec and codec mode determined by the determiner (“,....In
`
`step $18, the called party feeds back a response message (200 OK or 18x etc.),
`
`which carries an Answer SDP carrying at least one codec type supported by the
`
`MGW selected from the adjusted list of codec types supported by the calling
`
`party,..”, “,..In step $112, the ATCF anchors the media of the calling party and the
`
`called party at the ATGW through a control media, and determines the media
`
`codec types selected by the called party in step $18 as a media codec type
`
`negotiated by the calling party and the called party through the control on the
`
`codec,...”, Fig. 1, paras. [0038] — [0053]; performing communication based on a
`
`media codec type negotiated by calling and called parties in a process of handing
`
`over a voice service from a first network to a second network,...”, Abstract). At
`
`time the invention was made it would have been obvious to a person of ordinary skill in
`
`the art to modify the teachings of Hori et al. to include the features of a generator
`
`which, in operation, generates first signaling before the first terminal performs the
`
`

`

`Application/Control Number: 15/788,722
`Art Unit: 2411
`
`Page 8
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`handover from the first network to the second network, wherein the first signaling
`
`indicates the codec and codec mode determined by the determiner to be used by the
`
`first terminal and generates second signaling after the first terminal performs the
`
`handover from the first network to the second network, wherein the second signaling
`
`requests the second terminal to communicate using the codec and codec mode
`
`determined by the determiner as taught by Zhang et al. One of ordinary skill in the art
`
`would be motivated to do so for providing a method and system for single radio voice
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`continuity handover (as suggested by Zhang et al., see para. [0002]).
`
`Regarding Claim 2, the combined system of Hori et al. and Zhang et al.
`
`discloses wherein, when the common part does not exist, the codec used for the
`
`communication in the first network has a compatible mode with another codec, and the
`
`codecs supported by the one terminal and the codecs supported by the second network
`
`include the other codec, the determiner sets the other codec or the compatible mode
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`with the other codec for the codec and codec mode to be used by the two terminals
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`(Hori et al. : “,...where a calling party UE supports the codec in which bandwidth
`
`designation is not always necessary (hereinafter, referred to as codec A), the
`
`calling party UE designates only a sampling frequency with respect to the codec
`
`A, and generates the SDP offer without bandwidth designation,...”, Fig. 9, paras.
`
`[0090] — [0095];
`
`Zhang et al. : “,...the ATCF only carries the media types which
`
`are also supported by the MGW in the list of codec types supported by the calling
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`party in the forwarded Offer SDP, that is, only carrying a codec type which is the
`
`

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`Application/Control Number: 15/788,722
`Art Unit: 2411
`
`Page 9
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`same in the above both lists. There are many modes for knowing the codec types
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`supported by the called party, for example, a number segment may be analyzed
`
`according to a number of the called party, to know the codec types supported by
`
`the called party,...”, Fig. 1, paras. [0039] — [0051]).
`
`Regarding Claim 3, the combined system of Hori et al. and Zhang et al.
`
`discloses wherein, when a policy of a service operator exists, the determiner sets the
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`codec and codec mode to be used by the two terminals, in accordance with the policy,
`
`and when the policy does not exist, the determiner sets the common part for the codec
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`and codec mode to be used by the two terminals ( Hori et al. : “,....if codecs used by
`
`UEs in communication are different from each other, transcoding is performed in
`
`MGW (MSG/MGW 300). On the other hand, according to NPL 3, in the eSRVCC
`
`method, ATGW instead of MGW may perform transcoding,....”, paras. [0114] —
`
`[0117]; Hurtta et al
`
`: “,...In step $112, the ATCF anchors the media of the
`
`calling party and the called party at the ATGW through a control media, and
`
`determines the media codec types selected by the called party in step $18 as a
`
`media codec type negotiated by the calling party and the called party through the
`
`control on the codec, and stores the media codec types, to facilitate continuously
`
`using the media codec type subsequently in the process of handing over the
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`voice service from the first network to the second network,...,
`
`In step $113, the
`
`calling party and the called party establish a call., ...... ”, Fig. 1, paras. [0039] —
`
`[0053]).
`
`

`

`Application/Control Number: 15/788,722
`Art Unit: 2411
`
`Page 10
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`Regarding Claim 11, Hori et al. disclose a communication control method
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`(“,...A modification determination unit, in the case of detecting a modification of a
`
`codec used by one terminal of two terminals, determines whether or not to
`
`constrain the bandwidth of the first codec using a first codec of the other terminal
`
`and a second codec after modification by the first-mentioned one of the
`
`terminals,...”, Abstract, “,...A bandwidth change determination method,..”, paras.
`
`[0001], [0041], [0042]) comprising: determining a codec and a codec mode to be used
`
`by both a first terminal and by a second terminal- while the first terminal and the second
`
`perform communication in a first network, when before the first terminal performs a
`
`handover from the first network to a second network that is different from the first
`
`network, the determining being based on a common part among:
`
`information indicating codecs and codec modes used for communication in the
`
`first network from which the handover is performed,
`
`information indicating codecs and codec modes supported by the first terminal,
`
`and
`
`information indicating codecs and codec modes supported by the second
`
`network to which the handover is performed;
`
`generating first signaling before the first terminal performs the handover from the
`
`first network to the second network, wherein the first signaling indicates the codec and
`
`codec mode determined by the determining to be used by the first terminal: and
`
`generating second signaling after the first terminal performs the handover from
`
`the first network to the second network, wherein the second signaling requests the
`
`

`

`Application/Control Number: 15/788,722
`Art Unit: 2411
`
`Page 11
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`second terminal to communicate using the codec and codec mode determined by
`
`the determining.
`
`(The claim subject matters in main body of the Claim 11 are the same
`
`and/or are similar to the limitations as disclosed in Claim 1, same rationale
`
`addressed in Claim 1 for rejection adapts for the rejection of Claim 11.)
`
`Response to Arguments
`
`8.
`
`Applicant’s arguments filed on 04/22/2020 with respect to Claims 1 — 12 have
`
`been considered but are moot because the arguments do not apply to any of the
`
`references being used in the current rejection.
`
`Conclusion
`
`9.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Andrew Chung Cheung Lee whose telephone number is
`
`(571)272-3131. The examiner can normally be reached on 8:30am--6:00pm.
`
`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, ANDREW LAI can be reached on 571-272-9741. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571 -273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see https://ppair-
`
`my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private
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`

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`Application/Control Number: 15/788,722
`Art Unit: 2411
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`Page 12
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`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
`
`If you would like assistance from a USPTO Customer Service Representative or access
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`272-1000.
`
`/ANDREW C LEE/
`
`/ANDREW LAI/
`
`<OBQ20::06_06_20>
`
`Examiner, Art Unit 2411
`
`Supervisory Patent Examiner, Art Unit 2411
`
`