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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
`
`17/460,398
`
`08/30/2021
`
`SHINYA OKAMOTO
`
`083710-3504
`
`3817
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`MALLEYJR., DANIEL PATRICK
`
`1726
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/26/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-25 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 5-6,11-15 and 21-25 is/are withdrawn from consideration.
`[) Claim(s)__ is/are allowed.
`Claim(s) 1-4,7-10 and 16-20 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:/Awww.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)() The drawing(s) filedon__ is/are: a)C) accepted or b)C) 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). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`cc) None ofthe:
`b)L) Some**
`a)D) 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.
`3.2.) 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)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230919
`
`Application No.
`Applicant(s)
`47/460,398
`OKAMOTOetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`DANIEL P MALLEYJR.
`1726
`Yes
`
`
`
`-- The MAILING DATEof this 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 2 AUGUST 2023.
`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.
`
`

`

`Application/Control Number: 17/460,398
`Art Unit: 1726
`
`Page 2
`
`Notice of Pre-AlA 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.
`
`Response to Amendment
`
`The amendmentfiled August 24, 2023 doesnotplace the application in condition for allowance.
`
`The previous grounds for rejection in the Office Action dated May 24", 2023 has been
`
`withdrawn due to Applicant’s amendment.
`
`New grounds for rejection follow.
`
`Claim Rejections - 35 USC § 103
`
`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 (i.e., changing from AIA to pre-AlA) for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same
`
`under either status.
`
`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: 17/460,398
`Art Unit: 1726
`
`Page 3
`
`The text of those sections of Title 35, U.S. Code not included in this action can be found in a
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`prior Office action.
`
`The factual inquiries for establishing a background for determining obviousness under 35 U.S.C.
`
`103 are summarized as follows:
`
`1. Determining the scope and contentsofthe prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`4. Considering objective evidence presentin the application indicating obviousness or
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`nonobviousness.
`
`Claims 1-4, 7-8, 10, 16-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Souzaet al. (US 2012/0285517 A1) in view of Lu et al. (CN 109473487 A). Lu et al. is mapped to the
`
`English machine translation provided by the EPO website.
`
`In view of Claim 1, Souza et al. teaches an optical device (Figure 8) comprising:
`
`e=analloy layer which comprises an alloy containing a first metal and a second metal that are
`
`different in work function from each other (Figure 8, high Wf & Paragraph 0045-0046 — high
`
`workfunction region can comprise mixtures of metals selected from the group consisting of
`
`nickel, platinum, nickel platinum, titanium, and tungsten that additionally contain aluminum
`
`and gallium);
`
`e
`
`ann-type semiconductor whichis in Schottky contact with the alloy layer (Figure 8, the
`
`substrate isn’t annotated but is located between the high and low work function regions);
`
`=
`
`the substrate is n-type Si (Figure 7 & 14-15 — Paragraph 0056).
`
`

`

`Application/Control Number: 17/460,398
`Art Unit: 1726
`
`Page 4
`
`Souzaet al. does not disclose a nanostructured body which induces surface plasmon resonance
`
`when irradiated with light, an oxide layer which is in contact with the nanostructured body and made of
`
`an insulating material, wherein this configuration results in the alloy layer being sandwiched between
`
`the oxide layer and the n-type semiconductor.
`
`Lu et al. teaches a nanostructured body which induces surface plasmon resonance when
`
`irradiated with light, an oxide layer which is contact with the nanostructured and made ofan insulating
`
`material (Figure 1, #122 - Page 2, 5'* Paragraph & Page 6, 3-4" Paragraph). Lu et al. teaches that the
`
`scattering effect of the metal nanoparticles and the near-field enhancementeffect of the plasmon
`
`resonance greatly increase the absorption of light, and can be applied to the crystalline silicon solar cells
`
`of various structures (Page 2, 5" Paragraph). Accordingly, it would have been obvious to incorporate
`
`the nanostructured body which induces a surface plasmon resonance when irradiated with light and an
`
`oxide layer which is in contact with the nanostructured body and made ofan insulating material as
`
`disclosed by Lu et al. in Souza et al. optical device for the advantagesof greatly increasing the absorption
`
`of light. The incorporating of Lu et al. teachings in Souza etal. optical device results in a configuration
`
`where the alloy layer would be sandwiched between the oxide layer and the n-type semiconductor.
`
`In view of Claim 2, Souza et al. and Lu et al. are relied upon for the reasons given abovein
`
`addressing Claim 1. Souza et al. teaches that the alloy layer can comprise a first and second metal
`
`selected from titanium and tungsten (Paragraph 0045), these materials have a lower work function that
`
`the gold particles in Lu et al. nanostructured body (Page 2, 12° Paragraph).
`
`In view of Claim 3, Souza et al. and Lu et al. are relied upon for the reasons given abovein
`
`addressing Claim 1. Lu et al. teaches that the nanostructure body can comprise platinum (Page 2, 12%
`
`Paragraph). Souza etal. discloses that the first metal may be selected from platinum (Paragraph 0045).
`
`

`

`Application/Control Number: 17/460,398
`Art Unit: 1726
`
`Page 5
`
`In view of Claim 4, Souza et al. and Lu et al. are relied upon for the reasons given abovein
`
`addressing Claim 1. Lu et al. teaches that the nanostructure body can comprisethe first metal alone
`
`(Page 2, 12Paragraph - Platinum). While Souzaet al. discloses that the mixture of metals can comprise
`
`nickel, which has a lower work function that the metal platinum (Figure 8, high Wf & Paragraph 0045 —
`
`high work function region can comprise mixtures of metals selected from the group consisting of nickel,
`
`platinum, nickel platinum, titanium, and tungsten).
`
`In view of Claim 7, Souza et al. and Lu et al. are relied upon for the reasons given abovein
`
`addressing Claim 1. Souza et al. discloses that the alloy layer comprise mixtures of metals selected from
`
`the group consisting of nickel and titanium (Paragraph 0045) that further comprises aluminum
`
`(Paragraph 0046) thus reading on a first metal selected from aluminum and a second metal selected
`
`from nickel or titanium.
`
`In view of Claim 8, Souza et al. and Lu et al. are relied upon for the reasons given abovein
`
`addressing Claim 1. Souza et al. teaches that the n-type semiconductor is an inorganic semiconductor
`
`(Paragraph 0056).
`
`In view of Claim 10, Souza et al. and Lu et al. are relied upon for the reasons given abovein
`
`addressing Claim 1. Lu et al. teaches that the nanostructure body includes at least one nanoparticle
`
`with 1-200 nm diameter (Page 2, 12" Paragraph).
`
`In view of Claim 16, Souza et al. and Lu et al. are relied upon for the reasons given abovein
`
`addressing Claim 10. Souza et al. teaches a light source that emits light having an energy which is lower
`
`

`

`Application/Control Number: 17/460,398
`Art Unit: 1726
`
`Page 6
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`than or equal to a band gap energyof the n-type semiconductor and which corresponds to a surface
`
`plasmon resonance wavelength of the at least one nanoparticle (Paragraph 0001 — The Sun meetsthis
`
`limitation as it emits at virtually all wavelengths of the electromagnetic spectrum).
`
`In view of Claim 17, Souza et al. and Lu et al. are relied upon for the reasons given abovein
`
`addressing Claim 1. Souza et al. teaches that the n-type semiconductor includessilicon (Paragraph
`
`0056). Lu et al. teaches that the nanoparticles can comprise a combination of gold and silver and have
`
`diametersin the range of 1-200 nm (Page 2, 12" Paragraph). Applicant discloses that the nanoparticles
`
`can comprise gold and silver (Instant Specification - Paragraph 0033-0034) and has dimensions less than
`
`200 nm that enables plasmon absorption to be enhanced(Instant Specification - Paragraph 0037) and
`
`that the surface plasmon resonance wavelength of the allow particles is adjusted by particle diameter,
`
`shape, and structure of the nanoparticles (Instant Specification — Paragraph 0036).
`
`Lu et al. discloses the same nanostructure body as disclosed by Applicant. As evidenced by
`
`Applicant’s specification, Lu et al. nanoparticles would have a surface plasmon resonance wavelength of
`
`greater than or equal to 900 nm.
`
`In view of Claim 19, Souza et al. and Lu et al. are relied upon for the reasons given abovein
`
`addressing Claim 1, Modified Souza et al. teaches a photoelectric converter comprising an optical device
`
`of Claim 1 (Figure 8 & Paragraph 0031), wherein Souza et al. teaches that the photoelectric converted
`
`further comprises:
`
`e
`
`e
`
`anelectrode (Figure 8, low Wf);
`
`aconductor that electrically connects the electrode (Figure 8, Contacting Grid);
`
`e wherein the n-type semiconductor has a first surface that is in contact with the allow layer
`
`and a second surface that is opposite to the first surface and the electrode is in contact with
`
`

`

`Application/Control Number: 17/460,398
`Art Unit: 1726
`
`Page 7
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`the second surface of the n-type semiconductor (See Annotated Souzaetal. Figure 8,
`
`below).
`
`AnnotatedSouzaetal. Figure 8
`
`
`tr,aaCanna
`denneegene
`
`hea
`
`Contacting gridTTTaa
`
`ARGoat
`
`Thin silicide,
`high WR
`="
`
`
`
` oS
`ea SE
`
`eeGigs
`Low WF silicide
`
`
`
`In view of Claim 20, Souza et al. and Lu et al. are relied upon for the reasons given abovein
`
`addressing Claim 19. Souza et al. teaches that a transparent conductivefilm can be a part of the
`
`antireflection coating (Figure 8, AR coating & Paragraph 0060 & Claim 13).
`
`Souza et al. discloses the transparent conductivefilm is not in physical contact with the n-type
`
`semiconductor (Figure8, at least the alloy layer is between), and the conductor electrically connects the
`
`electrode and the transparent conductive film (Paragraph 0002 — the device is generating power soall
`
`the conducting layers must be electrically connected).
`
`

`

`Application/Control Number: 17/460,398
`Art Unit: 1726
`
`Page 8
`
`Claims 2, 3, 7-10 and 16-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Juluri
`
`et al. (US 2014/0318596 A1) in view of Brownet al.
`
`(US 2013/0126886 A1).
`
`In view of Claim 1, Juluri et al. discloses an optical device (Figure 5) comprising: a nanostructure
`
`body which induces surface plasmon resonance when irradiated with light (Figure 5, #706 & Paragraph
`
`0067); an oxide layer which is in electrical contact with the nanostructure body and made of an
`
`insulating material (Figure 5, interface insulators SiO, or AlO, & Paragraph 0067); and an n-type
`
`semiconductor whichis in Schottky contact (Figure 5, #702 & Paragraph 0067).
`
`Juluri et al. does not disclose an alloy layer whichis in contact with the oxide layer and which
`
`comprises an alloy containing a first metal and a second metal that are different in work function from
`
`each other, wherein the n-type semiconductor is in Schottky contact with the alloy layer such that the
`
`alloy layer is sandwiched between the oxide layer and the n-type semiconductor.
`
`Brownetal. discloses an alloy layer that contains a first metals and a second metal that are
`
`different in work function from each other that is in Schottky contact with an n-type semiconductor
`
`(Figure 4, #410 is in contact with #120 & Paragraph 0036). Brownetal. teaches that among other
`
`advantagesthis additional layer offers enhanced chemical stability over a single layer and provides a
`
`more durable semiconductor surface capable of withstanding potentially damaging effects from
`
`processing and additionally provides a cleaner interface for Schottky barriers results in better
`
`performance. Accordingly, it would have been obvious to one of ordinary skill in the art at the time the
`
`invention was filed to insert the additional alloy layer of Brownet al. between the oxide layer and n-type
`
`semiconductor of Juluri et al. for the advantage of having enhanced chemical stability over a single layer
`
`that provides a more durable semiconductor surface capable of withstanding potentially damaging
`
`

`

`Application/Control Number: 17/460,398
`Art Unit: 1726
`
`Page 9
`
`effects from processing and additionally provides a cleaner interface for Schottky barriers results in
`
`better performance.
`
`In view of Claim 3, Juluri et al. and Brownetal. are relied upon for the reasons given abovein
`
`addressing Claim 1. Brownet al. was relied upon to disclose why it would be obvious to have an alloy
`
`layer comprising aluminum and gallium (Figure 4, #410 & Paragraph 0036). Juluri et al. teaches that the
`
`nanostructure body can contain aluminum (Paragraph 0067), thus meeting the limitation that the
`
`nanostructure body comprisesat least the first metal alone.
`
`In view of Claim 7, Juluri et al. and Brownetal. are relied upon for the reasons given abovein
`
`addressing Claim 1. Brownet al. teaches that the first metal is aluminum and the second metal is
`
`gallium (Figure 4, #410 & Paragraph 0036).
`
`In view of Claim 8, Juluri et al. and Brownetal. are relied upon for the reasons given abovein
`
`addressing Claim 1. Juluri et al. teaches that the n-type semiconductor is an inorganic semiconductor
`
`(Paragraph 0067).
`
`In view of Claim 9, Juluri et al. and Brownetal. are relied upon for the reasons given abovein
`
`addressing Claim 1. Juluri et al. teaches that the nanostructure body can have a comb-shaped
`
`structure (Figure 2 & 4).
`
`In view of Claim 10, Juluri et al. and Brownetal. are relied upon for the reasons given abovein
`
`addressing Claim 1. Juluri et al. teaches that the nanostructure body includes at least one nanoparticles
`
`and the particle diameter of the at least one nanoparticles can be between 1-200 nm (Paragraph 0067).
`
`

`

`Application/Control Number: 17/460,398
`Art Unit: 1726
`
`Page 10
`
`In view of Claim 16, Juluri et al. and Brownetal. are relied upon for the reasons given abovein
`
`addressing Claim 10. Juluri et al. teaches a light source that emits light having an energy whichis lower
`
`than or equal to a band gap energyof the n-type semiconductor and which corresponds to a surface
`
`plasmon resonance wavelength of the at least one nanoparticle (Paragraph 0034 — “electromagnetic
`
`energy” corresponds to a light source that encompassesall wavelengths of the electromagnetic
`
`spectrum corresponds tothis limitation).
`
`In view of Claims 17-18,Juluri et al. and Brownetal. are relied upon for the reasons given above
`
`in addressing Claim 10. Juluri et al. teaches that the n-type semiconductor includesgallium nitride
`
`(Paragraph 0067). Juluri et al. teaches that the nanostructure body includes at least one nanoparticles
`
`and the particle diameter of the at least one nanoparticles can be between 1-200 nm and can comprise
`
`Au and Ag (Paragraph 0067). Applicant discloses that the nanoparticles can comprise gold and silver
`
`(Instant Specification - Paragraph 0033-0034) and has dimensions less than 200 nm that enables
`
`plasmon absorption to be enhanced(Instant Specification - Paragraph 0037) and that the surface
`
`plasmon resonance wavelength of the allow particles is adjusted by particle diameter, shape, and
`
`structure of the nanoparticles (Instant Specification — Paragraph 0036).
`
`Juluri et al. discloses the same nanostructure body as disclosed by Applicant. As evidenced by
`
`Applicant’s specification, Lu et al. nanoparticles would have a surface plasmon resonance wavelength of
`
`greater than or equal to 900 nm.
`
`In view of Claim 19, Juluri et al. and Brownetal. are relied upon for the reasons given abovein
`
`addressing Claim 1. Modified Juluri et al. teaches that the optical device of Claim 1 is a photoelectric
`
`converter (Paragraph 0043), that further comprises an electrode and a conductor thatelectrically
`
`

`

`Application/Control Number: 17/460,398
`Art Unit: 1726
`
`Page 11
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`connects the electrode and the nanostructure body (Figure 5, see wiring). Brown et al. was relied upon
`
`to disclose why it would be obvious to have the n-type semiconductor top surface(first surface) in
`
`contact with the alloy layer. Juluri et al. teaches that the electrode is in electrical contact with the
`
`second surface of the n-type semiconductor (Figure 5, see wiring, every element is considered in
`
`electrical contact with another).
`
`In view of Claim 20, Juluri et al. and Brownetal. are relied upon for the reasons given abovein
`
`addressing Claim 1. Juluri et al. teaches a transparent conductivefilm that covers the nanostructure
`
`body (Figure 5, #701 — 0063 & 0067). Brownet al. was relied upon to disclose whythe alloy layer would
`
`be in between the nanostructure body and the alloy layer, thus meeting the limitation hat the
`
`transparent conductivefilm would not be in direct contact with the n-type semiconductor. Juluri et al.
`
`teaches that the conductor electrically connects the electrode and the transparent conductivefilm
`
`(Figure 5, see wiring).
`
`Response to Arguments
`
`Applicant’s arguments with respect to the claims have been considered but are moot because
`
`the arguments do not apply to the new grounds for rejection being used in the current rejection.
`
`Conclusion
`
`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
`
`extension of time policy as set forth in 37 CFR 1.136(a).
`
`

`

`Application/Control Number: 17/460,398
`Art Unit: 1726
`
`Page 12
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`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
`
`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
`
`date of the advisory action.
`
`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.
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to DANIEL P MALLEY JR. whose telephone numberis (571)270-1638. The examiner
`
`can normally be reached Monday-Friday 8am-430pm EST.
`
`Examiner interviews are available via telephone, in-person, and video conferencing using a
`
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`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Jeffrey T Barton can be reached on 571-272-1307. The fax phone number for the organization where
`
`this application or proceedingis assigned is 571-273-8300.
`
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`
`

`

`Application/Control Number: 17/460,398
`Art Unit: 1726
`
`Page 13
`
`/DANIEL P MALLEY JR./
`Primary Examiner, Art Unit 1726
`
`