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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 2231371450
`
`15/292,831
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`10/13/2016
`
`Masashi MATSUMORI
`
`PIPMM-56731
`
`4083
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`03/08/2019
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OH 44114-3108
`
`KUE~ KAYING
`
`3729
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
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`03/08/2019
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`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
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`following e—mail address(es):
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`patdoeket@pearne.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0/7709 A0170” Summary
`
`Application No.
`15/292,831
`Examiner
`KAYING KUE
`
`Applicant(s)
`MATSUMORI et al.
`Art Unit
`AIA (FITF) Status
`3729
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from 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, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
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`1). Responsive to communication(s) filed on 13 October 2016.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
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`4)[:] 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 Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s) fl is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`[:1 Claim(s) _ is/are objected to.
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`) ) ) )
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`6 7
`
`8
`
`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabte. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 13 October 2016 is/are: a). accepted or b)[:] objected to by the Examiner.
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`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:
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`a). All
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`b)D Some**
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`C)D None of the:
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`1.. Certified copies of the priority documents have been received.
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`2.[:] Certified copies of the priority documents have been received in Application No.
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`3:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1)
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`Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Datew.
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20190204
`
`

`

`Application/Control Number: 15/292,831
`Art Unit: 3729
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
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`Claim Rejections - 35 USC § 1 12
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`2.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION—The specification shall conclude with one or more claims particularly
`pointing out and distinctly claiming the subject matter which the inventor or a joint inventor
`regards as the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
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`3.
`
`Claims 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph,
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`as being indefinite for failing to particularly point out and distinctly claim the subject matter which the
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`inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
`
`Claim 1, lines 1-3 recite the limitations “which transports a part feeding tape which stores a part in
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`a storage to a part removing position to feed the part stored in the storage to a part mounting apparatus”.
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`The claim is being indefinite and confusing as to “which stores a part in a storage to a part removing
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`position”. The Examiner suggests amending the claim limitations as “which transports a part feeding tape
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`whieh—steres—a—part—in—a—sterage to a part removing position to feed [[the]] a part stored in [[the]] a storage
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`of the feeding tape to a part mounting apparatus”.
`
`Claim 1, lines 7-9 recite the limitations “a conveyor for positioning the storage of the part feeding
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`tape which is inserted from the inserting port to the transporting passage to the part removing position”.
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`The claim is being indefinite as to what is “the part feeding tape which is inserted from the inserting
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`port”. The Examiner suggests amending the limitations as “a conveyor for positioning the storage of the
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`part feeding tape—whieh—is—inserted—frem—the—inserting—pert—te in the transporting passage to the part
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`removing position, wherein the part feeding tape is inserted from the inserting port into the transporting
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`passage”.
`
`Claim 1, lines 10-12 recite the limitations “a part detector for detecting the part stored in the
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`storage in the transporting passage located at a downstream side of the inserting port and at an upstream
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`

`

`Application/Control Number: 15/292,831
`Art Unit: 3729
`
`Page 3
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`side of the part removing position”. The claim is being indefinite and confusing as to “detecting the part
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`stored in the storage in the transporting passage located at a downstream side of the inserting port and at
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`an upstream side of the part removing position”. The Examiner suggests amending the limitations as “a
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`part detector for detecting the part stored in the storage in the transporting passage, wherein the part
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`detector is located at a downstream side of the inserting port and at an upstream side of the part
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`removing position”.
`
`Claim 1, lines 18-20 recite the limitations “a squeezed portion in which a distance between the
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`pair of side guides is gradually reduced from an upstream side of the part detector toward a part detecting
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`position ofthe part detector.” The Examiner suggests amending the limitations as “a squeezed portion in
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`[[which]] a distance between the pair of side guides, m the sgueezed portion [[is]] gradually reduced
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`the side surfaces from an upstream side of the part detector toward a part detecting position of the part
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`detector.”
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`Claim 2, lines 5-6 is being indefinite and confusing as to what is “which is formed in the part
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`feeding tap”. The Examiner suggests amending the claim limitations as “the first side surface is closer to a
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`plurality of feed holes whieh—is—fermed—in—the—part—feeding—tap than the second side surface [[is]], wherein
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`the plurality of feed holes is formed in the part feeding tape”.
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`Claim 2, line 11 recites the limitation “a side surface of a part of the second side guide” and it
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`should be “a side surfaee—ef—a—part of the second side guide”.
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`Claim 3, line 7 recites the limitation “a side surface of a part of the guide member” and it should
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`be “a side surfaee—ef—a—part of the guide member”.
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`Claim 4, line 6 recites the limitation “a side surface of a part of the projection” and it should be “a
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`side surfaee—ef—a—part of the projection”.
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`Claim 5, lines 1-4 recite the limitations “which transports a part feeding tape which stores
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`a part in a storage to a part removing position and removes the part from the storage in the part removing
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`position to mount the part on a substrate”. The claim is being indefinite and confusing as to “which stores
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`a part in a storage to a part removing position”. The Examiner suggests amending the claim limitations as
`
`“which transports a part feeding tape whieh—steres—a—part—in—a—sterage to a part removing position and
`
`

`

`Application/Control Number: 15/292,831
`Art Unit: 3729
`
`Page 4
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`removes [[the]] a part from [[the]] a storage of the part feeding tape in the part removing position to mount
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`the part on a substrate”.
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`Claim 5, lines 8-10 recite the limitations “a conveyor for positioning the storage of the part feeding
`
`tape which is inserted from the inserting port to the transporting passage to the part removing position”.
`
`The claim is being indefinite as to what is “which is inserted from the inserting port”. The Examiner
`
`suggests amending the claim limitations as “a conveyor for positioning the storage of the part feeding
`
`tape—whieh—is—inserted—frem—the—inserting—pert—te in the transporting passage to the part removing position,
`
`wherein the part feeding tape is inserted from the inserting port into the transporting passage”.
`
`Claim 5, lines 11-13 recite the limitations “a part detector for detecting the part stored in the
`
`storage in the transporting passage located at a downstream side of the inserting port and at an upstream
`
`side of the part removing position”. The claim is being indefinite and confusing as to “detecting the part
`
`stored in the storage in the transporting passage located at a downstream side of the inserting port and at
`
`an upstream side of the part removing position”. The Examiner suggests amending the claim limitations
`
`as “a part detector for detecting the part stored in the storage in the transporting passage, wherein the
`
`part detector is located at a downstream side of the inserting port and at an upstream side of the part
`
`removing position”.
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`Claim 5, lines 14-16 recite the limitations “a mounting head which removes the part from the
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`storage which is positioned in the part removing position to mount the removed part on the substrate”,
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`and it should be “a mounting head which removes the part from the storage [[which]] th_at is positioned in
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`the part removing position to mount the [[removed]] part on the substrate”.
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`Claim 6, lines 5-6 is being indefinite and confusing as to what is “which is formed in the part
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`feeding tap”. The Examiner suggests amending the claim limitations as “the first side surface is closer to a
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`plurality of feed holes whieh—is—fermed—in—the—part—feeding—tap than the second side surface [[is]], wherein
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`the plurality of feed holes is formed in the part feeding tape”.
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`Claim 6, line 11 recites the limitation “a side surface of a part of the second side guide” and it
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`should be “a side surfaee—ef—a—part of the second side guide”.
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`Claim 7, line 7 recites the limitation “a side surface of a part of the guide member” and it should
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`be “a side surfaee—ef—a—part of the guide member”.
`
`

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`Application/Control Number: 15/292,831
`Art Unit: 3729
`
`Page 5
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`Claim 8, line 5 recites the limitation “a side surface of a part of the projection” and it should be “a
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`side surface—ef—a—part of the projection”.
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`Allowable Subject Matter
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`4.
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`Claims 1-8 would be allowable if rewritten or amended to overcome the rejection(s) under 35
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`U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), 2nd paragraph, set forth in this Office action.
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`5.
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`6.
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`Claims 1 and 5 are the independent claims.
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`The following is a statement of reasons for the indication of allowable subject matter: a pair of
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`side guides for guiding side surfaces of the part feeding tape, and a squeezed portion in [[which]] a
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`distance between the pair of side guides, m the sgueezed portion [[is]] gradually reducedM
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`surfaces from an upstream side of the part detector toward a part detecting position of the part detector.
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`Conclusion
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`7.
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`Any inquiry concerning this communication or earlier communications from the examiner should
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`be directed to KAYING KUE whose telephone number is (571)270-1502. The examiner can normally be
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`reached on Monday-Thursday 8am-5pm.
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`Examiner interviews are available via telephone, in-person, and video conferencing using a
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`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,
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`Peter Vo can be reached on 571 -272-4690. The fax phone number for the organization where this
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`application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent Application
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`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
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`Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC)
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`at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative
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`

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`Application/Control Number: 15/292,831
`Art Unit: 3729
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`Page 6
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`or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571 -272-
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`1000.
`
`/KAY|NG KUE/
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`Examiner, Art Unit 3729
`
`/PETER DUNGBA VO/
`
`Supervisory Patent Examiner of Art Unit 3729
`
`