REMARKS
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`In an Office Action dated December 31, 2012, claims 26, 27, 31, 32, 35-41, 46, 47, and
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`50-54 were rejected. Herein, claims 26, 31, 32, 41, 46, 47, and 51-54 have been amended. No
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`new matter has been added. Additionally, claims 27 and 42 have been cancelled without
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`prejudice or disclaimer to the subject matter therein. Applicant respectfully requests further
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`examination and reconsideration in view of the following remarks.
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`Applicant wishes to thank Examiner Rosenwald for the courtesies extended toward
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`Applicant's representative during the telephone interview conducted on April 16, 2014. During
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`the interview, Applicant's representative provided proposed claim amendments and discussed
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`why it is believed that the proposed claim amendment are allowable over the prior art of record.
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`Based on the results of the interview, the claims have been further amended to clarify the
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`differences between the cited Ikeda and Simpson references and the claimed invention as
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`discussed during the interview.
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`1.
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`Claim Rejections under 35 U.S.C. 112
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`Claim 51 was rejected under 35 U.S.C. 112, second paragraph, as being indefinite.
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`Applicant notes that claim 51 has been amended to address the deficiency identified by the
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`Examiner on page 3 of the Office Action. Accordingly, it is respectfully requested that the
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`objection to claim 51 be withdrawn.
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`II.
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`Claim Rejections under 35 U.S.C. 103
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`Claims 26,27, 31, 35, 39,41, 51, 52, and 54 were rejected under 35 U.S.C. 103(a) as
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`being unpatentable over Davies et al. (US 2005/0109618, hereafter “Davies “618”) in view of
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`Ikeda et al. (US 6,212,417, hereafter “Ikeda”). As noted above, claim 27 has been cancelled
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`without prejudice or disclaimer to the subject matter therein. Additionally, it is noted that claim
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`26 has been amended to incorporate the subject matter of cancelled claim 27 and claim 41 has
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`been amended to incorporate the subject matter of cancelled claim 42, which was rejected under
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`35 U.S.C. 103(a) as being unpatentable over Davies “618 in view of Ikeda, and further in view of
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`Simpson et al. (US 2005/0161346, hereafter “Simpson”). In order to expedite prosecution of the
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`instant application, Applicant respectfillly submits that pending claims 26, 31, 35, 39, 41, 51, 52,
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`

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`and 54 are patentable over any combination of Davies ‘6l8, Ikeda, and Simpson in view of the
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`following.
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`Claim 26 recites the following features:
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`(A) a voltage application component that performs a first voltage application operation
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`and a second application operation, the first voltage application operation including applying a
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`voltage to the first working electrode, the second voltage application operation including
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`applying a first positive voltage to the second working electrode and then applying a second
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`positive voltage to the second working electrode, the second positive voltage having a magnitude
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`greater than the first positive voltage;
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`(B) a concentration acquisition component that acquires the concentration of the target
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`substance on the basis of a current value of the first working electrode when the voltage is
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`applied to the first working electrode; and
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`(C) a correction component that corrects the concentration acquired by the concentration
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`acquisition component on the basis of an amount of change in a current value of the second
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`working electrode between when the first positive voltage is applied to the second working
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`electrode and when the second positive voltage is applied to the second working electrode during
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`the second voltage application operation, the amount of change being an increase in the current
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`value of the second working electrode per unit of time.
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`Applicant respectfully submits that the above-noted features of claim 26 are not
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`disclosed, suggested, or otherwise rendered obvious by any combination of Davies ‘6l8, Ikeda,
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`and Simpson based on the following.
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`In the rejection of previously presented claim 27 on pages 7 and 8 of the Office Action,
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`the Examiner relies on Ikeda as teaching the features of claim 27 related to applying a first
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`positive voltage to the second electrode system and then applying a second positive voltage to
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`the second electrode system. Applicant respectfully submits that Ikeda fails to teach these
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`features of cancelled claim 27 as incorporated into the above-noted features of amended claim
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`26.
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`In this regard, Ikeda teaches (i) the concentration of ascorbic acid is determined from a
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`current value immediately before changing the potential value to -l300mV and the current value
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`is dependent mainly on the concentration of ascorbic acid, (ii) the concentration of dissolved
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`oxygen is determined from a current value 3 seconds after changing the potential value to -
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`l300mV and the current value is dependent mainly on the concentration of dissolved oxygen,
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`and (iii) the result of the measurement is determined based on the determined concentrations of
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`ascorbic acid and oxygen (See col. 10, lines 28-3 8).
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`In other words, Ikeda merely teaches that concentrations of ascorbic acid and oxygen are
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`determined from the two current values at two points, respectively, which are immediately
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`before and 3 seconds after changing the potential value to -1300mV. However, Applicant notes
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`that Ikeda provides no disclosure related to using an amount of change in a current value
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`between two positive voltages, where the amount of change is an increase in the current value
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`per unit of time.
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`Further, it is noted that Ikeda fails to provide any disclosure related to a concentration of
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`a target sample is acquired by applying a positive voltage to a first working electrode, and then
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`the concentration is corrected by applying two positive voltages to a second working electrode
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`that is different from the first working electrode.
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`In contrast, the presently claimed invention requires that a concentration of a target
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`sample is acquired by applying a positive voltage to a first working electrode, and then the
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`concentration is corrected by applying two positive voltages to a second working electrode that is
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`different from the first working electrode, where (i) the correction of the concentration of the
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`target substance is made based on an amount of change in a current value of the second working
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`electrode between when the first positive voltage is applied to the second working electrode and
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`when the second positive voltage is applied to the second working electrode during the second
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`voltage application operation, and (ii) the amount of change being an increase in the current
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`value of the second working electrode per unit of time, as required by the above-noted features
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`of claim 26.
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`10
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`Additionally, it is noted that in the rejection of previously presented claim 42 on pages 21
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`and 22 of the Office Action, the Examiner relies on Simpson as teaching the features of claim 42
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`related to applying a first positive voltage to the second electrode system and then applying a
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`second positive voltage to the second electrode system. Applicant respectfully submits that
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`Simpson fails to teach the similar above-noted features of amended claim 26.
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`In this regard, paragraph [0062] of Simpson discloses the following:
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`“In these equations, Y represents the total current of the signal output of the
`sensor in nanoAmps at each respective bias potential setting, [A] represents the
`concentration of glucose, [B] represents the concentration of acetaminophen, and
`or, B, 8, and y represent constants associated with glucose and acetaminophen at
`each respective bias potential setting. When these constants are known, glucose
`measurements can be taken at 0.4V and 0.6V, after which Equations 1 and 2 can
`be solved to determine the signal concentration due to glucose and acetaminophen
`separately, thereby enabling the reporting of the true glucose signal.”
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`In other words, Simpson teaches that glucose concentration is measured at two voltages
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`and then specif1c equations are solved using the measurement results. However, Applicant notes
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`that Simpson fails to provide any disclosure related to applying two different voltages for
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`correcting a concentration of a target substance, where the application of the two different
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`voltages for correcting the concentration is different than the application of a voltage for
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`acquiring the concentration.
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`In contrast, the presently claimed invention requires that a concentration of a target
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`sample is acquired by applying a positive voltage to a first working electrode, and then the
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`concentration is corrected by applying two positive voltages to a second working electrode that is
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`different from the first working electrode, where (i) the correction of the concentration of the
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`target substance is made based on an amount of change in a current value of the second working
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`electrode between when the first positive voltage is applied to the second working electrode and
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`when the second positive voltage is applied to the second working electrode during the second
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`voltage application operation, and (ii) the amount of change being an increase in the current
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`value of the second working electrode per unit of time, as required by the above-noted features
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`of claim 26.
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`ll
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`Further, Davies “618 discloses applying a first potential to a first working electrode and a
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`second potential to a second working electrode, and correcting a current using a specific
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`algorithm (Abstract, [0038]—[0042]). However, Applicant notes that Davies contains no
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`disclosure related to (i) a concentration of a target sample is acquired by applying a positive
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`voltage to a first working electrode, and then the concentration is corrected by applying two
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`positive voltages to a second working electrode that is different from the first working electrode,
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`and (ii) a correction of the concentration of the target substance is made based on an amount of
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`change in a current value of the second working electrode between when the first positive
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`voltage is applied to the second working electrode and when the second positive voltage is
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`applied to the second working electrode during the second voltage application operation.
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`Accordingly, Davies “618 fails to provide disclosure that would obviate the above-mentioned
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`deficiencies of Ikeda and Simpson.
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`In view of the above, Applicant respectfully submits that any combination of Davies
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`“618, Ikeda, and Simpson fails to disclose, suggest, or otherwise render obvious the above-noted
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`features of claim 26. Accordingly, claim 26 is patentable over any combination of Davies “618,
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`Ikeda, and Simpson.
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`Claims 31, 35, 39, 41, 51, and 52 are patentable over any combination of Davies “618,
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`Ikeda, and Simpson based at least on their dependency from claim 26.
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`Claim 41 recites features generally corresponding to the above-noted features of claim
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`31. Accordingly, Applicant respectfully submits that any combination of Davies “618, Ikeda,
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`and Simpson fails to disclose, suggest, or otherwise render obvious these corresponding features
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`of claim 41 for reasons similar to those discussed above with respect to claim 31, and as such,
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`claim 41 is patentable over any combination of Davies “618, Ikeda, and Simpson.
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`Claim 54 is patentable over any combination of Davies “618, Ikeda, and Simpson based
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`at least on its dependency from claim 41.
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`12
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`

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`Claims 32 and 47 were rejected under 35 U.S.C. lO3(a) as being unpatentable over
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`Davies ‘618 in view of Ikeda, and further in view of Pottgen et al. (US 6,153,069, hereafter
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`“Pottgen”), as evidenced by Bard et al. (Electrochemical Methods, 1980, John Wiley and Sons,
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`pp. 136-141, hereafter “Bard”). Applicant respectfully submits that Pottgen and Bard fail to
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`provide disclosure that would obviate the above-mentioned deficiencies of Davies ‘6l8, Ikeda,
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`and Simpson. Accordingly, claims 32 and 47 are patentable over any combination of Davies
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`‘6l8, Ikeda, Simpson, Pottgen, and Bard based at least on their dependency from claims 26 and
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`4 1, respectively.
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`Claims 36, 37, and 40 were rejected under 35 U.S.C. lO3(a) as being unpatentable over
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`Davies ‘618 in view of Ikeda, and further in view of Davies et al. (US 2005/0139469, hereafter
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`“Davies ‘469”). Applicant respectfully submits that Davies ‘469 fails to provide disclosure that
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`would obviate the above-mentioned deficiencies of Davies ‘6l8, Ikeda, and Simpson.
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`Accordingly, claims 36, 37, and 40 are patentable over any combination of Davies ‘6l8, Ikeda,
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`Simpson, and Davies ‘469 based at least on their dependency from claim 26.
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`Claim 38 was rejected under 35 U.S.C. lO3(a) as being unpatentable over Davies ‘618 in
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`view of Ikeda, and further in view of Miyazaki et al. (US 2003/0159945, hereafter “Miyazaki”).
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`Applicant respectfully submits that Miyazaki fails to provide disclosure that would obviate the
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`above-mentioned deficiencies of Davies ‘6l8, Ikeda, and Simpson. Accordingly, claim 38 is
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`patentable over any combination of Davies ‘6l8, Ikeda, Simpson, and Miyazaki based at least on
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`its dependency from claim 26.
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`Claim 46 was rejected under 35 U.S.C. lO3(a) as being unpatentable over Davies ‘618 in
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`view of Ikeda, and further in view of Gross et al. (WO 98/5 8250, hereafter “Gross”). Applicant
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`respectfully submits that Gross fails to provide disclosure that would obviate the above-
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`mentioned deficiencies of Davies ‘6l8, Ikeda, and Simpson. Accordingly, claim 46 is patentable
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`over any combination of Davies ‘6l8, Ikeda, Simpson, and Gross based at least on its
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`dependency from claim 41.
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`13
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`111.
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`Conclusion
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`In view of the foregoing amendments and remarks, Applicant respectfully submits that
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`claims 26, 31, 32, 35-41, 46, 47, and 50-54 are clearly in condition for allowance. An early
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`notice thereof is earnestly solicited.
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`If, after reviewing this Amendment, the Examiner believes that there are any issues
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`remaining which must be resolved before the application can be passed to issue, it is respectfully
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`requested that the Examiner contact the undersigned by telephone in order to resolve such issues.
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`Respectfully submitted,
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`/Stephen W. Kopchik/
`2014.06.04 14:27:56 -04'00'
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`
`Stephen W. Kopchik
`Registration No. 61 ,215
`Attorney for Applicant
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`SWK
`Washington, DC. 20005-1503
`Telephone (202) 721-8200
`Facsimile (202) 721 -825 0
`June 4, 2014
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