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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
`
`16/634,383
`
`01/27/2020
`
`Takeshi Enomoto
`
`P20003 1US00
`
`6421
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`EGGERDING, ALIX ECHELMEYER
`
`ART UNIT
`1729
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`08/23/2021
`
`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)
`
`

`

`Application No.
`Applicant(s)
`16/634 383
`Enomoto etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`ALIX E EGGERDING
`1729
`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 8/11/21.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)¥) This action is FINAL.
`2b) (J This action is non-final.
`3)02 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\0) 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.
`
`Disposition of Claims*
`1-12 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C] Claim(s)__ is/are allowed.
`Claim(s) 1-12 is/are rejected.
`(1 Claim(s)__is/are objectedto.
`C} Claim(s)
`are subjectto restriction and/or election requirement
`* 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)(J 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)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1.2 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 receivedin 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) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`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 20210818
`
`

`

`Application/Control Number: 16/634,383
`Art Unit: 1729
`
`Page 2
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`DETAILED ACTION
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`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.
`
`Response to Amendment
`
`2.
`
`This Office Action is in response to the amendmentfiled 8/11/21. Claim 1 is amended. The
`
`rejection of claim 1 over Kim is withdrawnin light of the amendment; however, a new rejection is made
`
`over Kim in view of Song, below. Claims 10-12 are added. Claims 1-12 are pending and are rejected
`
`finally for the reasons provided below.
`
`3.
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`Claim Rejections - 35 USC § 112
`
`(a) IN GENERAL.—The specification shall contain a written description of the invention, and
`of the manner and process of making and using it, in suchfull, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with whichit is most nearly connected, to
`makeand use the same,and shall set forth the best mode contemplated by the inventor or joint
`inventor of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre-AlA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the manner and
`process of making and using it, in such full, clear, concise, and exact terms as to enable any person
`skilled in the art to which it pertains, or with whichit is most nearly connected, to make and use the
`same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
`
`4.
`
`Claim 10 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AlA), first paragraph,as failing
`
`to comply with the written description requirement. The claim(s) contains subject matter which was not
`
`described in the specification in such a way as to reasonably conveyto one skilled in the relevant art
`
`

`

`Application/Control Number: 16/634,383
`Art Unit: 1729
`
`Page 3
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`that the inventor or a joint inventor, or for applications subject to pre-AlA 35 U.S.C. 112, the inventor(s),
`
`at the time the application was filed, had possession of the claimed invention.
`
`Specifically, the specification as filed does not provide supportfor the limitation of claim 10
`
`wherein the insulating member includesa first hole located at the center and a second hole which
`
`surrounds the first hole. This limitation requires only one second hole, and neither the specification nor
`
`the figures describes a single second hole which surrounds the first, central hole. Instead, the
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`specification and figures describe and show multiple second holes (14b) ([0022] of the published
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`specification; Figures 4 and 5).
`
`Additionally, claim 10 recites the limitation "the holes of the metal plate"in the last line of the
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`claim. It is unclear from the prior limitation “wherein the metal plate and the insulating member have
`
`respective holes” whether the metal plate is meant to have a single hole or multiple holes. It is also
`
`unclear what the location of the hole or holes is meant to be in the metal plate.
`
`For the purpose of expediting prosecution, the limitation will be interpreted as requiring that
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`“the insulating member includes a first hole located at the center and amultiple second holes which
`
`surroundsthe first hole”. Additionally, in the last line of the claim, “the second hole” will be interpreted
`
`as “the second holes”.
`
`Further, the metal plate will be interpreted as having holes which communicate with the second
`
`holes of the insulating plate, as shownin Figures 2-4.
`
`Claim Rejections - 35 USC § 102
`
`5.
`
`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-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory
`
`

`

`Application/Control Number: 16/634,383
`Art Unit: 1729
`
`Page 4
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`basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and
`
`the rationale supporting the rejection, would be the same under eitherstatus.
`
`6.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis
`
`for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale,
`or otherwise available to the public before the effectivefiling date of the claimed invention.
`
`7.
`
`Claim 11 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (US
`
`2009/0061310).
`
`Kim teaches a cylindrical battery comprising an electrode group, or electrode assembly (110), an
`
`electrolyte, battery can, or case (120), and an opening sealing body, or cap assembly (200) (Figure 1A,
`
`[0006], [0007], [0042]).
`
`The opening sealing body, or cap assembly (200), includes a valve member, or vent plate (150), a
`
`metal plate, or lower cap member (130), and an annular insulating member, or insulator (140) disposed
`
`between the valve member (150) and the metal plate (130) (Figures 1A and 1B). The valve member
`
`(150) and metal plate (130) are connected by a weld (A) at respective central portions ([0049)).
`
`Kim teaches that the valve member, or vent plate (150) has an annular thin-walled portion, or
`
`vent (151), which is deformable when an internal pressure of the battery increases (see below, [0048]).
`
`Kim further teaches a recessed portion, or insertion portion (152), formed by the thin-walled portion of
`
`the vent, and Kim teachesthat the insulator (140) includesa rib, or first fastening member (142) housed
`
`in the recess portion (152) (Figures 1A and 9A, [0052]).
`
`

`

`Application/Control Number: 16/634,383
`Art Unit: 1729
`
`Page 5
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`
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`It is further seen above that the rib (142) is included in the section of the insulator (140) that
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`covers a surface of the metal plate.
`
`Kim teaches that the metal plate (130) has holes (132). Kim teaches that an area of the insulator
`
`(140) covers part of the holes (132), specifically every part of the holes, in the area where the rib is
`
`provided. See annotated figure:
`
`

`

`Application/Control Number: 16/634,383
`Art Unit: 1729
`
`Page 6
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`|
`
`450 ,
`
`) \
`rib overiaiar' j
`
`Claim Rejections - 35 USC § 103
`
`8.
`
`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-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory
`
`basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and
`
`the rationale supporting the rejection, would be the same under eitherstatus.
`
`9.
`
`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.
`
`

`

`Application/Control Number: 16/634,383
`Art Unit: 1729
`
`Page 7
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`10.
`
`Claims 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of
`
`Song (US 6,207,320).
`
`Regarding claim 1, Kim teaches a cylindrical battery comprising an electrode group, or electrode
`
`assembly (110), an electrolyte, battery can, or case (120), and an opening sealing body, or cap assembly
`
`(200) (Figure 1A, [0006], [0007], [0042)).
`
`The opening sealing body, or cap assembly (200), includes a valve member, or vent plate (150), a
`
`metal plate, or lower cap member (130), and an annular insulating member, or insulator (140) disposed
`
`between the valve member (150) and the metal plate (130) (Figures 1A and 1B). The valve member
`
`(150) and metal plate (130) are connected by a weld (A) at respective central portions ([0049)).
`
`Kim teaches that the valve member, or vent plate (150) has an annular thin-walled portion, or
`
`vent (151), which is deformable when an internal pressure of the battery increases (see below, [0048]).
`
`Kim further teaches a recessed portion, or insertion portion (152), formed by the thin-walled portion of
`
`the vent, and Kim teachesthat the insulator (140) includesa rib, or first fastening member (142) housed
`
`in the recess portion (152) (Figures 1A and 9A, [0052]).
`
`
`
`It is further seen above that the rib (142) is included in the section of the insulator (140) that
`
`covers a surface of the metal plate.
`
`

`

`Application/Control Number: 16/634,383
`Art Unit: 1729
`
`Page 8
`
`Kim fails to teach that the valve member (150) includes a projection portion which overlaps an
`
`outer side surface of the section P1 seen from a direction perpendicular to an axial direction of the
`
`cylindrical battery.
`
`Song teaches a cylindrical battery comprising an opening sealing body, or cap assembly (60),
`
`including a valve member, or plate (62), an insulating member (16), and a metal plate, or support plate
`
`(62) (Figures 1 and 2). Song further teaches that the valve member (62) is provided with a projection
`
`portion which overlaps an outer side surface of the insulating member (16) in order to fixedly hold the
`
`components, thereby increasing air tightness of the battery (column 2 lines 55-64).
`
`It would have been obvious to the skilled artisan at the time of the invention to provide the
`
`valve member of Kim with a projection portion for overlapping an outer side surface of the insulating
`
`member in order to fixedly hold it such as suggested by Songin order to increase air tightness of the
`
`battery.
`
`Regarding claim 2, Kim teaches that the metal plate (130) and insulating member (140) have
`
`respective holes (131, 132 and center of 140) which communicate with each other (Figure 1B).
`
`As for claim 3, Kim teaches that the section of the insulator (140) covers part of the holes (132)
`
`in the area where the rib is provided (see above).
`
`Regarding claim 4, Kim teaches that the insulator (140) covers a lateral side of the holes (132)
`
`(see above, Figures 1B and 9A).
`
`With regard to claim 6, Kim teaches a portion of the insulating member (140) which covers a
`
`circumferential end face of the metal plate (130) (see above).
`
`

`

`Application/Control Number: 16/634,383
`Art Unit: 1729
`
`Page 9
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`11.
`
`Claims 5 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of
`
`Song as applied to claims 1, 4, and 6 above, and further in view of Kim (US 2005/0084752, hereinafter
`
`Kim ‘752).
`
`The teachings of Kim and Song as discussed aboveare incorporatedherein.
`
`Regarding claims 5 and 7, and with regard to claim 9, Kim teaches the battery of claims 4 and 6
`
`butfails to teach that the insulator (140) is provided on a surface, on an inner side of the battery, of the
`
`metal plate (130). Kim fails to teach that the insulating member is integrated with the metal plate by
`
`adhesive bonding.
`
`Kim ‘752 teaches a cylindrical battery having an opening sealing body, or cap assembly, including
`
`an insulating member, or insulating gasket (235), and a metal plate, or safety vent unit (231) (Figure 2).
`
`It is seen in Figure 2 that the insulating gasket (235) covers lateral sides of holes (H) in the metal plate
`
`(231), as well as surfaces of the metal plate on the inner side of the battery.
`
`Kim ‘752 further teaches that the cap assemblyis integrally molded by injection-molding
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`([0025], [0028]). The skilled artisan will easily understand that the method of Kim ‘752 results in
`
`adhesive bonding of the components.
`
`Kim ‘752 teaches thatit is desirable to integrally form the cap assembly by injection molding the
`
`insulating memberin order to enhance the assembling force between the cap lamination and the
`
`insulating gasket ([0014]).
`
`It would have been obvious to the person having ordinaryskill in the art at the time of the
`
`invention to form the insulator (140) of Kim to cover surfaces of the metal plate on the inner side of the
`
`battery by forming the insulator (140) and the cap assembly integrally by injection molding such as
`
`suggested by Kim ‘752 in order to enhance the assembling force between the cap lamination and the
`
`insulator.
`
`

`

`Application/Control Number: 16/634,383
`Art Unit: 1729
`
`Page 10
`
`With regard to claim 8, Kim and Kim ‘752 are silent on the size of the section P5, which covers a
`
`surface of the metal plate on an inner side of the battery. The examiner finds it would have been an
`
`obvious matter of design choice for the skilled artisan to determine a workable size of the section P5,
`
`and workable dimensions for the cap assembly as a whole, in order to ensure that the assembling force
`
`between the cap lamination and the insulator was adequate, and to ensure that the cap assembly were
`
`an appropriate size for the battery and the battery an appropriate size for the intended apparatus for
`
`which it would provide power. A changein size is generally recognize as being within the ordinary level
`
`of skill in the art. MPEP 2144.04 IV. Further, it has been held that it is not inventive to discover workable
`
`ranges by routine experimentation. MPEP 2144.05 IlA
`
`12.
`
`Claims 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of
`
`Meguroetal. (US 2008/0107957).
`
`Kim teaches a cylindrical battery comprising an electrode group, or electrode assembly (110), an
`
`electrolyte, battery can, or case (120), and an opening sealing body, or cap assembly (200) (Figure 1A,
`
`[0006], [0007], [0042]).
`
`The opening sealing body, or cap assembly (200), includes a valve member, or vent plate (150), a
`
`metal plate, or lower cap member (130), and an annular insulating member, or insulator (140) disposed
`
`between the valve member (150) and the metal plate (130) (Figures 1A and 1B). The valve member
`
`(150) and metal plate (130) are connected by a weld (A) at respective central portions ([0049)).
`
`Kim teaches that the valve member, or vent plate (150) has an annular thin-walled portion, or
`
`vent (151), which is deformable when an internal pressure of the battery increases (see below, [0048]).
`
`Kim further teaches a recessed portion, or insertion portion (152), formed by the thin-walled portion of
`
`

`

`Application/Control Number: 16/634,383
`Art Unit: 1729
`
`Page 11
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`the vent, and Kim teachesthat the insulator (140) includesa rib, or first fastening member (142) housed
`
`in the recess portion (152) (Figures 1A and 9A, [0052]).
`
`
`
`It is further seen above that the rib (142) is included in the section of the insulator (140) that
`
`covers a surface of the metal plate.
`
`Kim teaches that the metal plate (130) and insulating member (140) have respective holes (131,
`
`center of 140) which communicate with each other (Figure 1B).
`
`Kim fails to teach second holes in the insulating member which surround the first hole, and
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`further fails to teach holes in the metal plate that communicate with the second holes.
`
`Meguro teaches a cylindrical battery comprising an opening sealing body (Figure 1). The opening
`
`sealing body includes a valve member, or safety valve (30), a metal plate, or support plate (31, 131), and
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`insulating member (32, 71, 171) ([0034], Figures 1-5).
`
`Megurofurther teachesholes, or vent holes (131b), in the metal plate (131) which communicate
`
`with respective holes (171c) in the insulating plate (171), but which are partially covered by an area of
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`the insulating member which covers a surface of the metal plate on the valve member side of the metal
`
`

`

`Application/Control Number: 16/634,383
`Art Unit: 1729
`
`Page 12
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`plate (Figures 1, 3, and 5). It is seen in Figures 5A and 5B that the holes (131b and 171c) communicate
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`with each other and that the holes have a portion which is not covered or filled by the insulating
`
`member.
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`Meguro further teaches that the holes as discussed above are desirable for improving injection
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`characteristics when injecting electrolyte and for passing gas when the internal pressure of the battery is
`
`increased ([0037]).
`
`It would have been obvious to the skilled artisan to provide holes in the metal plate and
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`insulating plate of Kim such as suggested by Meguro in order to improve injection characteristics when
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`injecting electrolyte and to pass gas when the internal pressure of the battery is increased.
`
`Response to Arguments
`
`13.
`
`Applicant’s arguments, see Remarks, filed 8/11/21, with respect to the rejection(s) of claim(s) 1
`
`under Kim have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
`
`However, upon further consideration, a new ground(s) of rejection is made, above.
`
`14.
`
`Claims 10-12 are newly addedclaims and are rejected for the reasons provided above.
`
`Conclusion
`
`15.
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in this Office
`
`action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the
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`extension of time policy as set forth in 37 CFR 1.136(a).
`
`A shortenedstatutory period for reply to this final action is set to expire THREE MONTHS from
`
`the mailing date of this action.
`
`In the eventa first reply is filed within TWO MONTHS ofthe mailing date
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`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 extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing
`
`

`

`Application/Control Number: 16/634,383
`Art Unit: 1729
`
`Page 13
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`date of the advisory action.
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`In no event, however, will the statutory period for reply expire later than
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`SIX MONTHS from the dateof this final action.
`
`16.
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to ALIX ECHELMEYER EGGERDING whosetelephone number is (571)272-1101. The
`
`examiner can normally be reached on 8:00am - 5:00pm.
`
`Examiner interviewsare 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, Ula
`
`Ruddockcan be reached on 571-272-1481. The fax phone number for the organization wherethis
`
`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 accessto the Private PAIR system, contact
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`the Electronic Business Center (EBC) at 866-217-9197(toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information system, call 800-786-
`
`9199 (IN USA OR CANADA)or 571-272-1000.
`
`/ALIX E EGGERDING/
`Primary Examiner, Art Unit 1729
`
`