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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/493,912
`
`10/05/2021
`
`KOSUKE NUNOO
`
`083710-353 1
`
`6752
`
`Rimon PC - Panasonic Corporation
`8300 Greensboro Dr
`Suite 500
`McLean, VA 22102
`
`DISNEY, CHRISTINE CONLON
`
`1751
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/15/2024
`
`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):
`USPTOmail @rimonlaw.com
`
`eofficeaction @appcoll.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-11 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 3 and 10-11 is/are withdrawn from consideration.
`[] Claim(s)__ is/are allowed.
`Claim(s) 1-2 and 4-9 is/are rejected.
`[) 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)M The drawing(s) filed on 05 October 2021 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)(¥) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)() None ofthe:
`b)( Some**
`a) 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 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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240328
`
`Application No.
`Applicant(s)
`17/493,912
`NUNOO etal.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`CHRISTINE C DISNEY
`1751
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof 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 15 March 2024.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() 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)(2) 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: 17/493,912
`Art Unit: 1751
`
`Page 2
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`DETAILED ACTION
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`Notice ofPre-AIA orAIA Status
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`The present application, filed on or after March 16, 2013, is being examined underthe
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`first inventor to file provisions of the AIA.
`
`Election/Restrictions
`
`Applicant’s election without traverse of Species I in the reply filed on 15 March 2024is
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`acknowledged.
`
`The species election requirement between SpeciesI, III, and IV is withdrawn.
`
`In the office action mailed 22 February 2024, claim 3 was mistakenly identified as being
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`associated with Species I rather than Species II. This claim corresponds to the modified
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`electrochemical cell described in [0052] - [0057] of the instant specification and is therefore
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`withdrawn as an unelected species.
`
`Claims 3 and 10-11 are withdrawn from further consideration pursuant to 37 CFR
`
`1.142(b) as being drawn to a nonelected species, there being no allowable generic orlinking
`
`claim. Election was made withouttraverse in the reply filed on 15 March 2024.
`
`Claim Rejections - 35 USC§ 102
`
`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(i.e., changing from AIA to pre-AIA) for the rejection will not be
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`considered a new groundofrejection if the prior art relied upon, and the rationale supporting
`
`the rejection, would be the same undereither status.
`
`

`

`Application/Control Number: 17/493,912
`Art Unit: 1751
`
`Page 3
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form
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`the basis for the rejections underthis 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 effective filing date of the claimed
`invention.
`
`(a)(2) the claimed invention was described in a patent issued under section 151, or in an
`application for patent published or deemed published under section 122(b), in which the
`patent or application, as the case may be, names anotherinventor and was effectively filed
`before the effective filing date of the claimed invention.
`
`Claims 1, 4, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
`
`Thorel (US 2008/0213639 A1, cited in the IDS filed 5 October 2021).
`
`Regarding claim 1, Thorel discloses an electrochemical cell (17, Fig. 3, [0028])
`
`comprising: a first electrolyte layer containing an oxide-ion conductor (electrolyte 4 transfers
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`O2-ions, Fig. 3, [0060]); a second electrolyte layer containing a proton conductor(electrolyte
`
`13 transfers protons, Fig. 3, [0059]); a first electrode which is disposed between thefirst
`
`electrolyte layer and the second electrolyte layer and in contact with a first principal surface of
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`the first electrolyte layer andafirst principal surface of the second electrolyte layer (bonding
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`layer 23, Fig. 3, [0058]) and into which a gas flows (water is pumped to 23, [0058]; cell
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`functions in reverse as a high temperature electrolyser, so the water is steam, [0057 ,0062]); a
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`second electrode which is provided on a secondprincipal surface of thefirst electrolyte layer
`
`and which generates oxygen (electrode 2 forms O02, [0060]); and a third electrode which is
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`provided on a second principal surface of the second electrolyte layer and which generates
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`hydrogen (electrode 11 forms hydrogen, Fig. 3, [0058]).
`
`Regarding claim 4, Thorel discloses the invention as discussed in claim 1, wherein the
`
`electrochemical cell further comprises a power supply which is connected to the second
`
`electrode and the third electrode and which supplies power [0057].
`
`

`

`Application/Control Number: 17/493,912
`Art Unit: 1751
`
`Page 4
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`Regarding claim 7, Thorel discloses the invention as discussed in claim 1, wherein the
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`oxide-ion conductor contains yttria-stabilized zirconia (YSZ, [0032]).
`
`Claims 1-2 and 4-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
`
`Delahaye (US 2013/0284591 A1, cited in the IDSfiled 5 October 2021).
`
`Regarding claim 1, Delahaye discloses an electrochemical cell (hydrogen-producing cell,
`
`Fig. 4, [0046]) comprising:
`
`e
`
`a first electrolyte layer containing an oxide-ion conductor (anion-conducting
`
`electrolyte 403, Fig. 4, [0120]);
`
`e
`
`asecond electrolyte layer containing a proton conductor (proton-conducting
`
`electrolyte 407, Fig. 4, [0140]);
`
`e
`
`a first electrode which is disposed betweenthefirst electrolyte layer and the
`
`secondelectrolyte layer and in contact with a first principal surface of the first
`
`electrolyte layer and a first principal surface of the second electrolyte layer and
`
`into which a gas flows (404-406, Fig. 4, [0125]-[0139]; see explanation below);
`
`e
`
`asecond electrode which is provided on a second principal surface ofthe first
`
`electrolyte layer and which generates oxygen (porous anode 402, Fig. 4,
`
`[0123]); and
`
`e
`
`a third electrode which is provided on a second principal surface of the second
`
`electrolyte layer and which generates hydrogen (cathode 408,Fig. 4, [0143]).
`
`The porous cathode ofthe electrolyzer (404, Fig. 4, [0073]), porous collecting area
`
`(405, Fig. 4, [0074]), and porous anode of the electrochemical pump (406, Fig. 4, [0075])
`
`disclosed by Delahaye together form thefirst electrode. Though Delahaye does notdescribe
`
`these componentsas a single electrode, they are considered an integral unit of the
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`

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`Application/Control Number: 17/493,912
`Art Unit: 1751
`
`Page 5
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`electrochemical cell [0100] and together have the samestructure as the first electrode of the
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`instant application, which the instant disclosure states “may be formed ofa plurality of
`
`materials” and “can decomposeinflowing steam into hydrogen and further decompose
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`hydrogen into protons” [0065]. The latter two functions occur in relative locations that
`
`correspond to those described in [0044] of the instant specification. Steam is supplied to the
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`porous collecting area (Fig. 4) and is separated into hydrogen and oxide ions in the vicinity of
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`the interface (electrolyzer cathode 404, Fig. 4, [0098]) between the first electrolyte layer (403)
`
`and the first electrode. As the electrolyzer cathode facilitates the reaction at the electrode and
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`is in contact with the first electrolyte layer, it corresponds to the functional layer of the first
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`electrode described in [0051] of the instant application. The separated oxide ions pass through
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`the first electrolyte layer (403) and the separated hydrogenis oxidized into protons at the
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`interface (anode of the electrochemical pump 406,Fig. 4, [0098]) between the first electrode
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`and the second electrolyte layer (407). The separated protons then pass through the second
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`electrolyte layer to the third electrode (409).
`
`Regarding claim 2, Delahaye discloses the invention as discussed in claim 1, wherein
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`the first electrode contains a cermet containing Ni (electrolyzer cathode 404, [0125]-[0126],
`
`and anodeof the electrochemical pump 406, [134], are each made of cermet containing nickel;
`
`porous collecting area 405 may be madeof a ceramic-nickel cermet, [0165]).
`
`Regarding claim 4, Delahaye discloses the invention as discussed in claim 1. Delahaye
`
`further discloses that the electrochemical cell comprises a power supply which is connected to
`
`the second electrode and the third electrode and which supplies power (depicted on righthand
`
`side of Fig. 4).
`
`

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`Application/Control Number: 17/493,912
`Art Unit: 1751
`
`Page 6
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`Regarding claim 5, Delahaye discloses the invention as discussed in claim 1. Delahaye
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`further discloses that the electrochemical cell comprises a first path which is connected to the
`
`first electrode and which leads steam to thefirst electrode (411, Fig. 4, [0155]).
`
`Regarding claim 6, Delahaye discloses the invention as discussed in claim 5, wherein a
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`gasthatis supplied from thefirst path contains steam and hydrogen (Fig. 4, [0155]).
`
`Regarding claim 7, Delahaye discloses the invention as discussed in claim 1, wherein
`
`the oxide-ion conductorcontains yttria-stabilized zirconia (yttriated zirconia, [(0121]).
`
`Regarding claim 8, Delahaye discloses the invention as discussed in claim 1, wherein
`
`the proton conductor contains at least one selected from the group consisting of BaZro.sYo0.103-s
`
`(BZY91), BaCeo.sY0.103-s (BCY), and BaZro.1C@o.7Y0.203-3 (BCZY) [0141].
`
`Regarding claim 9, Delahaye discloses the invention as discussed in claim 8, wherein
`
`the proton conductor is formed of BaZro.9Y0.103-s [0141].
`
`Claim Rejections - 35 USC§ 103
`
`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.
`
`The factual inquiries for establishing a backgroundfor 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 pertinentart.
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`

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`Application/Control Number: 17/493,912
`Art Unit: 1751
`
`Page 7
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`4. Considering objective evidence present in the application indicating obviousnessor
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`nonobviousness.
`
`This application currently namesjoint inventors. In considering patentability of the
`
`claims the examiner presumesthat the subject matter of the various claims was commonly
`
`owned as ofthe effective filing date of the claimed invention(s) absent any evidence to the
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`contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
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`effective filing dates of each claim that was not commonly owned asofthe effective filing date
`
`of the later invention in order for the examiner to consider the applicability of 35 U.S.C.
`
`102(b)(2)(©for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
`
`Claims 2, 5-6, and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Thorel (US 2008/0213639 A1,cited in the IDS filed 5 October 2021) as applied to
`
`claim 1 above, and further in view of Delahaye (US 2013/0284591 A1,cited in the
`
`IDSfiled 5 October 2021).
`
`Regarding claim 2, Thorel discloses the invention as discussed in claim 1. Thorel does
`
`not disclose wherein the first electrode contains a cermet containing Ni. Delahaye discloses an
`
`electrochemical cell (hydrogen-producing cell, Fig. 4, [0046]) comprising an electrode that
`
`contains a cermet containing Ni (electrolyzer cathode 404, [0125]-[0126], and anode of the
`
`electrochemical pump 406,[134], are each made of cermet containing nickel; porous collecting
`
`area 405 may be made of a ceramic-nickel cermet, [0165]). It would have been obvious toa
`
`person having ordinary skill in the art before the effective filing date of the invention to have
`
`used a cermet containing Ni in the first electrode of Thorel because Delahaye teachesthat this
`
`material is a suitable anion conductor[0125].
`
`Regarding claim 5, Thorel discloses the invention as discussed in claim 1. Thorel does
`
`not disclose wherein the electrochemical cell further comprisesa first path which is connected
`
`

`

`Application/Control Number: 17/493,912
`Art Unit: 1751
`
`Page 8
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`to the first electrode and which leads steam tothefirst electrode. Delahaye teaches the
`
`electrochemical cell discussed above, and further teaches that the electrochemicalcell
`
`comprisesa first path which is connected to the first electrode and which leads steam to the
`
`first electrode (411, Fig. 4, [0155]). It would have been obvious to a person having ordinary
`
`skill in the art before the effective filing date of the invention to have added a steam path to the
`
`electrochemical cell of Thorel because Delahaye teachesthat this configuration allows for the
`
`size of the cell to be smaller, decreasing the cost of the apparatus [0087].
`
`Regarding claim 6, modified Thorel teaches the invention as discussed in claim 5.
`
`Thorel does not teach wherein a gas that is supplied from the first path contains steam and
`
`hydrogen. Delahaye discloses the invention as discussed in claim 5, wherein a gas thatis
`
`supplied from thefirst path contains steam and hydrogen(Fig. 4, [0155]). It would have been
`
`obvious to a person having ordinary skill in the art before the effective filing date of the
`
`invention to have supplied the electrochemical cell of Thorel with a gas containing steam and
`
`hydrogen, as Delahaye teaches thatthis will prevent degradation of the nickel metal cermet
`
`used as the electrode [0032].
`
`Regarding claims 8 and 9, modified Thorel teaches the invention as discussed in claim
`
`1. Thorel does not teach that the proton conductor contains at least one selected from the
`
`group consisting of BaZris4M1,103-5, BaCe1.2M2,203-5, and BaZris3-y3CasM3y303-5, whereM1,
`
`M2, and M3 each contain at least one selected from the group consisting of Pr, Nd, Pm, Sm, Eu,
`
`Gd, Tb, Dy, Ho, Er, Tm, Yb, Y, Sc, In, and Lu. Delahaye teachesthe electrochemicalcell
`
`discussed above, wherein the proton conductorcontains at least one selected from the group
`
`consisting of BaZro.sYo0.103-s (BZY91), BaCeo.sYo.103-5 (BCY), and BaZro.1Ceéo.7Y0.203-s (BCZY)
`
`[0141]. It would have been obvious to a person having ordinary skill in the art before the
`
`effective filing date of the invention to have used one of these materials as the proton
`
`

`

`Application/Control Number: 17/493,912
`Art Unit: 1751
`
`Page 9
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`conductor in the electrochemical cell of Thorel. The disclosure of Delahaye indicates that these
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`materials are knownin thefield to be suitable electrolytes [0141]. The combination of familiar
`
`elementsis likely to be obvious whenit does no more thanyield predictable results. See KSR
`
`International Co. v. Teleflex Inc, 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 — 97 (2007)
`
`and [MPEP § 2143, A].
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to CHRISTINE C. DISNEY whosetelephone numberis (703)756-1076. The
`
`examiner can normally be reached M-F 8:30-5:30.
`
`Examinerinterviewsare available via telephone, in-person, and video conferencing using
`
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`
`encouraged to use the USPTO Automated Interview Request (AIR) at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
`
`supervisor, Jonathan Leong can be reached on (571) 270-1292. The fax phone numberfor the
`
`organization where this application or proceeding is assigned is 571-273-8300.
`
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`
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`
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`
`/C.C.D./
`Examiner, Art Unit 1751
`
`

`

`Application/Control Number: 17/493,912
`Art Unit: 1751
`
`/Haroon S. Sheikh/
`Primary Examiner, Art Unit 1751
`
`Page 10
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`