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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/249,000
`
`01/16/2019
`
`Tasuku Ishiguro
`
`P161190US01
`
`5462
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`BERNIER, LINDSEY A
`
`ART UNIT
`1726
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/19/2020
`
`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):
`
`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-6 and 8-11 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`CC) Claim(s)
`is/are allowed.
`Claim(s) 1-6 and 8-11 is/are rejected.
`S)
`) O Claim(s)___is/are objected to.
`C) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)) accepted or b)() 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).
`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)0) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)X None ofthe:
`b)L) Some**
`a)L) All
`1... Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) 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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 8/20/2020.
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20201012
`
`Application No.
`Applicant(s)
`16/249 000
`Ishiguro etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`LINDSEY A BERNIER
`1726
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom 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) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 9/11/2020.
`LC} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)(J This action is FINAL. 2b))This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\(Z 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 Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/249,000
`Art Unit: 1726
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013,
`
`is being examined
`
`under the first inventor to file provisions of the AIA.
`
`2.
`
`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 for the rejection will not be considered a new groundof
`
`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
`
`the same under either status.
`
`Claim Rejections - 35 USC § 103
`
`3.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis forall
`
`obviousness rejections setforth in this Office action:
`
`A patent for a claimed invention maynotbe obtained, notwithstanding thatthe claimed
`invention is not identicallydisclosed as set forth insection 102, if the differences between the
`claimed invention and the prior art are such thatthe claimed invention as a whole would have
`been obvious before the effective filing date of the claimed invention to a person having
`ordinaryskill inthe art to which the claimed invention pertains. Patentabilityshall notbe
`negated by the manner in whichthe invention was made.
`
`4.
`
`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.
`
`

`

`Application/Control Number: 16/249,000
`Art Unit: 1726
`
`Page 3
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`4. Considering objective evidence present in the application indicating
`
`obviousness or nonobviousness.
`
`5.
`
`This application currently namesjoint inventors.
`
`In considering patentability of the
`
`claims the examiner presumesthat the subject matter of the various claims was
`
`commonly ownedasofthe effective filing date of the claimed invention(s) absent any
`
`evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
`
`point out the inventor and effective filing dates of each claim that was not commonly
`
`ownedasof the effective filing date of the later invention in order for the examiner to
`
`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
`
`prior art against the later invention.
`
`6.
`
`Claims 1-3, 5-6 and 8-11 are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Kardauskas (US 5,994,641) in view of Zhang et al. (US
`
`2013/0139868, on IDS)in further view of Morgan etal. (US 2014/0319377).
`
`Regarding claim 1, Kardauskas discloses a solar cell module comprising a panel
`
`in Figures 3-5 comprising:
`
`a solar cell (4) (column 5 lines 34-35);
`
`a first protection member (cover member 10) provided onalight receiving
`
`surface side of the solar cell (column 5 line 65-column 6 line 6);
`
`a second protection member (back protector sheet 6) (column 5 lines 45-51)
`
`provided on a rear surface side of the solar cell (Figure 5);
`
`

`

`Application/Control Number: 16/249,000
`Art Unit: 1726
`
`Page 4
`
`an encapsulant layer (14) that includesafirst encapsulant layer (front
`
`encapsulant layer) disposed between the solarcell (4) and thefirst protection member
`
`(10), and a second encapsulant layer (back encapsulant layer) disposed between the
`
`solar cell (4) and the second protection member(6), and seals the solar cell (column 6
`
`lines 7-28).
`
`Kardauskas does not disclose a wavelength conversion substance thatis
`
`contained in at least the first encapsulant layer, wherein concentration of the
`
`wavelength conversion substance in the first encapsulant layer is higher than
`
`concentration of the wavelength conversion substance in the second encapsulantlayer.
`
`Zhang discloses a solar cell module in Figure 6 and [117] comprising:
`
`a solar cell (100);
`
`a first protection member (103 on front) provided onalight receiving surface side
`
`of the solar cell (100);
`
`a second protection member (103 on rear) provided on a rear surface side of the
`
`solar cell (100);
`
`an encapsulant layer (105 and 101) that includes a first encapsulant layer (101)
`
`(see polymer matrix for wavelength conversion material discussed in [117]) disposed
`
`between the solar cell (100) and the first protection member (103 on front), and a
`
`second encapsulant layer (105 on rear of cells) disposed between the solar cell (100)
`
`and the second protection member (103 on rear), and that seals the solar cell ([117]);
`
`and
`
`

`

`Application/Control Number: 16/249,000
`Art Unit: 1726
`
`Page 5
`
`a wavelength conversion substance (chromophore 102) that is contained in at
`
`least the first encapsulant layer (101) of the encapsulant layers ((117] and [30]), and
`
`that absorbslight having a specified wavelength, and converts the wavelength ([30]),
`
`wherein concentration of the wavelength conversion substance (chromophore
`
`102) in the first encapsulant layer (101) is higher than concentration of the wavelength
`
`conversion substance in the second encapsulant layer (105 on rear) (No wavelength
`
`conversion substance in second encapsulant layer, see Figure 6).
`
`It would have been obvious to one having ordinary skill in the art at the time of
`
`the invention to add a wavelength conversion substance to the first encapsulant layer of
`
`Kardauskas, such that concentration of the wavelength conversion substancein the first
`
`encapsulant layer is higher than concentration of the wavelength conversion substance
`
`in the second encapsulant layer, as taught by Zhang, because the wavelength
`
`conversion substance improvesthe light absorption of the cells and the efficiency of the
`
`module (Zhang, [24], [26] and [31]).
`
`Kardauskas further discloses a diffusion inhibiting layer (24) constituted from a
`
`material having a smaller diffusion coefficient of the wavelength conversion substance
`
`than the diffusion coefficient of resin constituting the first encapsulant layer provided
`
`between the first encapsulant layer and the second encapsulant layer (Figures 3-5 and
`
`column 6 lines 49-66. The diffusion inhibiting layer is a metal which can be aluminum or
`
`silver, column 7 lines 47-64, and the encapsulant layer is EVA, column6lines 7-12. The
`
`

`

`Application/Control Number: 16/249,000
`Art Unit: 1726
`
`Page 6
`
`aluminum or silver material necessarily has a smaller diffusion coefficient of the
`
`wavelength conversion substance than the EVA material.).
`
`Modified Kardauskas does notdisclose that the concentration of the wavelength
`
`conversion substance inafirst region of the first encapsulant layer closer to the first
`
`protection memberis higher than in a second region of the first encapsulant layer closer
`
`to the solarcell.
`
`Morgan discloses a luminescent photovoltaic solar concentrator in Figure 2
`
`comprising a wavelength conversion substance (luminescentdye) in a first encapsulant
`
`layer (124) wherein the concentration of the wavelength conversion substance inafirst
`
`region of the first encapsulant layer (124) closerto the light source (126) is higher than
`
`in a second region of the first encapsulant layer closer to the solar cell (128, [105])
`
`([97]).
`
`It would have been obvious to one having ordinary skill in the art at the time of
`
`the invention to modify the device of modified Kardauskas such that the concentration of
`
`the wavelength conversion substanceinafirst region of the first encapsulant layer
`
`closer to the first protection member is higher than in a second region ofthefirst
`
`encapsulant layer closerto the solar cell, as taught by Morgan, because sucha
`
`configuration allows for efficient wavelength conversion of incident light and efficient
`
`solar cell light absorption.
`
`

`

`Application/Control Number: 16/249,000
`Art Unit: 1726
`
`Page 7
`
`Modified Kardauskas additionally discloses that the first protection member
`
`‘cover member 10) (Kardauskas, column 5 line 65-column6line 6); the first region
`
`(region closest to light source which is top of first encapsulant layer} in the first
`
`encapsulant layer in which a concentration of the wavelength conversion substance is
`
`high, the second region (region closest to solar cell which is bottom of first encapsulant
`
`layer} in the first encapsulant layer in which the concentration of the wavelength
`
`conversion substance is lower than that in the first region, and the solar cell (4) are
`
`layered in this order in a thickness direction of the panel fromalight receiving surface
`
`side of the panel (Kardauskas, Figure 5, as modified by Zhang and Morgan).
`
`Regarding claim 2, modified Kardauskas disclosesall of the claim limitations as
`
`set forth above. Kardauskas additionally discloses that the material constituting the
`
`diffusion inhibiting layer has a higher storage elastic modulus at 25°C to 90°C than that
`
`of the resin constituting the first encapsulant layer (The diffusion inhibiting layer is a
`
`metal which can be aluminum or silver, column 7 lines 47-64, and the encapsulant layer
`
`is EVA, column 6 lines 7-12. The aluminum or silver material necessarily has a higher
`
`storage elastic modulus at 25°C to 90°C than the EVA material.).
`
`Regarding claim 3, modified Kardauskas disclosesall of the claim limitations as
`
`set forth above. Kardauskas additionally discloses that the material constituting the
`
`diffusion inhibiting layer has a smaller intermolecular void size at 25°C to 90°C than that
`
`of the resin constituting the first encapsulant layer (The diffusion inhibiting layer is a
`
`metal which can be aluminum or silver, column 7 lines 47-64, and the encapsulant layer
`
`

`

`Application/Control Number: 16/249,000
`Art Unit: 1726
`
`Page 8
`
`is EVA, column 6 lines 7-12. The aluminum or silver material necessarily has a smaller
`
`intermolecular void size at 25°C to 90°C than the EVA material.).
`
`Regarding claims 5 and 6, modified Kardauskas disclosesall of the claim
`
`limitations as set forth above. Zhang additionally discloses that the wavelength
`
`conversion substance is a luminescent metal complex ([32], see dyes with rare earth
`
`materials which are luminescent metal complexes) and that the wavelength conversion
`
`substanceis a fluorescence dye ([30]).
`
`Regarding claim 8, modified Kardauskas disclosesall of the claim limitations as
`
`set forth above. Kardauskas additionally discloses that a front surface side of the
`
`diffusion inhibiting layer has a concave-convex pattern arranged in a width direction of
`
`the diffusion inhibiting layer, and the front surface side facesthe first encapsulant layer
`
`(Figures 3-5 and column 6 lines 49-66).
`
`Regarding claim 9, modified Kardauskas disclosesall of the claim limitations as
`
`set forth above. Kardauskas additionally discloses that the diffusion inhibiting layer
`
`comprises a metal layer (24) at a front surface side of the diffusion inhibiting layer
`
`(Figures 3-5 and column 4 lines 11-53 and column 6 lines 49-66), and the front surface
`
`side faces the first encapsulant layer (Figures 3-5 and column 6 lines 49-66).
`
`Regarding claim 10, modified Kardauskas discloses all of the claim limitations as
`
`set forth above. Kardauskas additionally discloses that a resin layer (22) of the diffusion
`
`

`

`Application/Control Number: 16/249,000
`Art Unit: 1726
`
`Page 9
`
`inhibiting layer is arranged between the metal layer (24) and the solar cell (4), and the
`
`metal layer (24) and the solar cell (4) are insulated from each other (Figures 3-5,
`
`column6lines 49-66, column 7 lines 34-45 and column 9 lines 18-48).
`
`Regarding claim 11, modified Kardauskas disclosesall of the claim limitations as
`
`set forth above. Kardauskas additionally discloses that the diffusion inhibiting layer
`
`comprising an inorganic compound layer at the front surface side of the diffusion
`
`inhibiting layer (column 11 lines 9-17, the reflective coating can be a dielectric stack
`
`including inorganic compoundlayers).
`
`7.
`
`Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kardauskas
`
`(US 5,994,641) in view of Zhang et al. (US 2013/0139868, on IDS) and Morgan etal.
`
`(US 2014/0319377), as applied to claim 1 above, in further view of Bourke,Jr. et al. (US
`
`201 1/0126889).
`
`Regarding claim 4, modified Kardauskas disclosesall of the claim limitations
`
`thereof. Zhang additionally discloses that the wavelength conversion substance can be
`
`a luminescent metal complex ([32], see dyes with rare earth materials which are
`
`luminescent metal complexes) and a fluorescence dye ([30]), but modified Kardauskas
`
`does not disclose that the wavelength conversion substanceis an inorganic
`
`semiconductor nanoparticle.
`
`

`

`Application/Control Number: 16/249,000
`Art Unit: 1726
`
`Page 10
`
`Bourke teaches that inorganic semiconductor nanoparticles are alternative
`
`equivalent wavelength conversion substances to luminescent metal complexes and
`
`fluorescent dyes in photovoltaic devices ([61]-[70]).
`
`Since Bourke recognizes the equivalency of luminescent metal complexes,
`
`fluorescent dyes and inorganic semiconductor nanoparticles as wavelength conversion
`
`substances in photovoltaic devices as discussed above, it would have been obvious to
`
`one of ordinary skill in the art at the time the invention wasfiled to replace the
`
`luminescent metal complex and fluorescent dye of modified Kardauskas with an
`
`inorganic semiconductor nanoparticle, as taught by Bourke, sinceit is merely the
`
`selection of functionally equivalent wavelength conversion substances recognized in the
`
`art and one of ordinary skill in the art would have a reasonable expectation of success
`
`in doing so. A substitution of known equivalent materials is generally recognized as
`
`being within the level of ordinary skill
`
`in the art.
`
`8.
`
`Applicant's arguments filed 8/11/2020 have been fully considered but they are
`
`Response to Arguments
`
`not persuasive.
`
`Applicant argues that the combination of Kardauskas, 4hang and Morgan does
`
`not result in the claimed lmitations thal the first protection member, the first region in
`
`the first encapsulant layer in which a concentration of the wavelength conversion
`
`substance is high, the second region in the first encapsulant layer in which the
`
`concentration of the wavelength conversion substance is lower than that in the first
`
`region, and the solar cell are layered in this order in a thickness direction of the panel
`
`

`

`Application/Control Number: 16/249,000
`Art Unit: 1726
`
`Page 11
`
`from a light receiving surface side of the panel. Agplicart argues that in the encapsulant
`
`of Morgan a layer containing a larger ammount of the wavelength conversion substance is
`
`provided on 4 Surface on the lef side. In this configuration, the light source 126 is below
`
`the encapsulant iZ4 ard the cell 128 is above the encansulani 124.
`
`Applicant argues that claim 1 requires a high-concentration layer having a high
`
`concentration of the wavelengih conversion substance is provided between the first
`
`protection member and the cell which is not disclosed in the prior art. Applicant further
`
`arques that there is no rationale based on the cited references and/or the general skill in
`
`the art promoting the skilled artisan to mocdHy Kardauskas so as to incorporate al least
`
`this missing aspect.
`
`Examiner respectfully disagrees. First, in response to applicant's arguments
`
`against the referencesindividually, one cannot show nonobviousness byattacking
`
`referencesindividually 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).
`
`In this case, Kardauskas discloses a firsi
`
`protection member (cover member 10), a first encapsulant layer Gront encapsulant layer
`
`14}, and a solar cell (4) layered in that order in a thickness direction of the panel from a
`
`light receiving surface side of the panel (Figure 5). Zhang discloses a first protection
`
`layer (103 on from, a first encapsulant layer (107) cormprising a wavelength conversion
`
`substance (102) and a solar cell (100) layered in that order in a thickness direction of
`
`the panel from a light receiving surface side of the panel (Figure 6 and fP17}}.
`
`

`

`Application/Control Number: 16/249,000
`Art Unit: 1726
`
`Page 12
`
`Morgan ciscloses a luminescent photovoltaic solar concentrator in Figure 2
`
`comprising a wavelength conversion substance (luminescent dye)in a first encapsulant
`
`layer (124) wherein the concentration of the wavelength conversion substance inafirst
`
`region of the first encapsulant layer (124) closerto the light source (126) is higher than
`
`in asecond region ofthe first encapsulant layer closer to the solar cell (128, [105])
`
`([97]).
`
`Morgan additionally discloses in [97] that “The light-transmissive material of the
`
`luminescent layer 124 has a luminescent dye (containing luminescent particles 130)
`
`impregnated, evenly or unevenly, throughout the layer 124. Exemplary uneven
`
`distributions of luminescent particles in a layer include a distribution with a concentration
`
`gradient, for example, a gradient with the concentration of luminescent particles
`
`increasing (or decreasing) from the end near the light source 126 towards the end near
`
`the exit surface 106. Alternately, or additionally,
`
`the concentration gradient of
`
`luminescent particles in the luminescent layer 124 can also vary in a direction
`
`perpendicular to the first surface 107.”
`
`Morgan teaches a concentration gradient of a wavelength conversion substance
`
`that is higher near a light source than near the solar cell and also teaches a
`
`concentration gradient of a wavelength conversion substance that can vary in a
`
`direction perpendicular to the top surface (107) of the encapsulant layer which receives
`
`incident sunlight (116) (Figure 2).
`
`Based on the teachings of Morgan, one having ordinary skill in the art at the time
`
`the invention wasfiled would have found it obvious to modify the concertration of the
`
`wavelength corversion substance in the first encapsulant layer of modified Kardauskas
`
`

`

`Application/Control Number: 16/249,000
`Art Unit: 1726
`
`Page 13
`
`such thal the concentration is higher near the light source (op sudace af first
`
`encapsulant layer in modified Kardauskas} than near the solar cell (ear surface of first
`
`encapsulant layer in modified Kardauskas) which would result in the claimed order of
`
`“the first pratection member, the first region:
`
`in the first ericapsulant layer in which a
`
`concentration of the wavelengih conversion substance is high, the second region in the
`
`frst encapsulant layer in which the concentration of the wavelength conversion
`
`substance is lower than that in the first region, and the solar cell are layered in this arcler
`
`in a thickness direction of the panel from a light receiving surface side of the panel’.
`
`As discussed in MPEP 2141.03: “A person of ordinary ski in the artis also a
`
`person of ordinary creativily, not an automaton.” KSA Intl Co. v. Teleflex inc., 520 US.
`
`398, 421, 82 USPQ2d 1585, 1397 (2007). "in many cases a person of ordinary skin wil
`
`be able to ft the teachings of muliiple paterits together like oleces ofa puzzle.” io. at
`
`420, 82 USPQead 1397. Office personnel may also take into account “ihe inferences and
`
`creative steos that a person of ordinary ski in the ari would employ.” io. at 418, 82
`
`USPOQed at 1396.
`
`Morgan does not need to explicitly teach the order of the first protection layer,
`
`frst encapsulant layer containing ihe wavelength conversion substance and the solar
`
`cell since this order is already disclosed by Kardauskas anc Zhang.
`
`Conclusion
`
`1.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to LNDSEY A BERNIER whosetelephone numberis
`
`

`

`Application/Control Number: 16/249,000
`Art Unit: 1726
`
`Page 14
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`
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`If you would like assistance from a USPTO Customer Service Representative or access
`
`to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-
`
`272-1000.
`
`/LINDSEY A BERNIER/
`Primary Examiner, Art Unit 1726
`
`

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