UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/428,277
`
`02/09/2017
`
`Hideaki YAMASHITA
`
`PANDP0195US
`
`1032
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`CLEVELAND, OH 44115
`
`WANG HARRY Z
`
`ART UNIT
`2185
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/1 1/2019
`
`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):
`
`ipdoeket@rennerotto.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0,7709 A0170” Summary
`
`Application No.
`15/428,277
`Examiner
`HARRY z WANG
`
`Applicant(s)
`YAMASHITA et al.
`Art Unit
`AIA (FITF) Status
`2185
`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
`
`1). Responsive to communication(s) filed on 01/09/2019.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a)D This action is FINAL.
`
`2b)
`
`This action is non-final.
`
`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.
`
`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.
`
`Disposition of Claims*
`
`5)
`
`Claim(s) fl is/are pending in the application.
`
`5a) Of the above claim(s)
`
`is/are withdrawn from consideration.
`
`E] Claim(s)
`
`is/are allowed.
`
`Claim(s) fl is/are rejected.
`
`[:1 Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabie. you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 02/09/2017 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:
`
`a). All
`
`b)D Some**
`
`C)D None of the:
`
`1.. Certified copies of the priority documents have been received.
`
`2.[:] Certified copies of the priority documents have been received in Application No.
`
`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.
`
`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 DateW.
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20190509
`
`

`

`Application/Control Number: 15/428,277
`Art Unit: 2185
`
`Page 2
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`DETAILED ACTION
`
`Continued Examination Under 37 CFR 1.114
`
`1.
`
`A request for continued examination under 37 CFR 1.114, including the fee set forth in
`
`37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible
`
`for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been
`
`timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR
`
`1.114. Applicant's submission filed on 01/09/2019 has been entered.
`
`Notice of Pre-AIA or AIA Status
`
`2.
`
`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
`
`3.
`
`Claim 1 and 5 have been amended. Claims 1—6 are currently pending.
`
`Response to Arguments
`
`

`

`Application/Control Number: 15/428,277
`Art Unit: 2185
`
`Page 3
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`4.
`
`Applicant's arguments filed 01/09/2019 have been fully considered but they are not
`
`persuasive.
`
`5.
`
`Regarding Applicant’s argument that Freimuth does not teach detecting the insertion of
`
`the recording medium into the digital device, the Examiner respectfully disagrees.
`
`6.
`
`Freimuth teaches a host—storage switching system (See Figure 8) where a host device
`
`manages (Fig. 8, 832, MR-PCIM) the connections and configurations ofthe attached endpoints
`
`(See Fig. 12, 1260, Assign each endpoint a base address). While Applicant argues that the
`
`attached endpoint is not detected upon insertion, Freimuth teaches in Figure 26 that the host
`
`manager is capable of receiving an add event (See Fig. 26, 2610) which triggers the registration
`
`of the attached endpoint device/switch (Paragraph [0209], ”the operation starts by receiving,
`
`in a MR-PCIM, an "Add" event indicating the addition of a component to the PCle fabric (step
`
`2610)”). This means that the endpoint is detected by the host device in order to receive and
`
`transmit signals to/from the device. Furthermore, the claim limitation states that the digital
`
`device is detected after insertion which under broadest reasonable interpretation can read on
`
`any device/endpoint being connected to the host device and transmitting a signal to the host
`
`device, which is what the system of Freimuth performs.
`
`7.
`
`Applicant’s arguments with respect to claim 1 have been considered but are moot
`
`because the arguments do not apply to any ofthe references being used in the current
`
`rejection.
`
`

`

`Application/Control Number: 15/428,277
`Art Unit: 2185
`
`Page 4
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`Claim Rejections - 35 USC § 103
`
`1.
`
`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.
`
`2.
`
`Claim 1 & 2 is rejected under 35 U.S.C.103 as being unpatentable over Cohen (US
`
`2013/0297894) in view of Freimuth (US 2008/0147904) in further view of Nakayama (US
`
`2010/003 6995).
`
`3.
`
`Regarding claim 1, Cohen teaches a recording medium (Fig. 1B, 116, Recording medium
`
`card) which is connectable to a digital device (Fig. 1B, 102, Host), the recording medium
`
`comprising: a local bus (Fig. 1B, 116, Local bus 110/180) having a plurality of switches or
`
`bridges (Fig. 1B, 103, Switch, 110, Bridges); a plurality of recording units connected to the local
`
`bus (Fig. 1B, 199, NVM recording units); an information storage unit (Fig. 1B, 141, Map) which
`
`stores information indicating a bus configuration of the local bus (Paragraph 1100, Map 141
`
`converts between data addressing used on External Interfaces 110 and data addressing used
`
`on Device Interfaces 190, using Table 143 to map external data addresses to locations in NVM
`
`199); and a communication unit for transferring the information to and from the digital device
`
`

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`Application/Control Number: 15/428,277
`Art Unit: 2185
`
`Page 5
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`(Fig. 13, 104, Intermediate l/F), wherein, after the recording medium is inserted into the digital
`
`device (Fig. 10, 1001A, Initialize), the bus configuration of the local bus is reconstructed based
`
`on the information indicating the bus configuration acquired from the information storage unit
`
`via the communication unit by the digital device (Fig. 10, 1031, Update shadow map;
`
`Paragraph 0328, sending the update to the shadow copy of the map from the l/O device to
`
`the l/O space memory of the computing host).
`
`Cohen does not explicitly teach wherein, after insertion ofthe recording medium into
`
`the digital device is detected, a subordinate bus number of each of the plurality of switches or
`
`bridges is set based on the information indicating the bus configuration acquired from the
`
`information storage unit via the communication unit by the digital device.
`
`Freimuth teaches wherein (Fig. 26, 2610, Receive an add event), after insertion ofthe
`
`recording medium into the digital device is detected (Paragraph 0209, The "Add" event may be
`
`received as part of a "Presence Detect Change" interrupt sent by a physical hot-plug
`
`controller of a PCIe switch in response to the detection of the addition of the new
`
`component, for example); information indicating the bus configuration acquired from the
`
`information storage unit via the communication unit by the digital device (Fig. 26, 2620; MR-
`
`PCIM gathers characteristic information for the added component (step 2620). This gathering
`
`may comprise communicating with the component to retrieve the characteristic information,
`
`such as from a VPD storage device associated with the component).
`
`It would have been obvious to one of ordinary skill in the art before date of application
`
`filing to have modified the recording medium to incorporate the teachings of Freimuth and
`
`include a hot—plug detection circuitry to detect adding/removal of the device; an adapter
`
`

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`Application/Control Number: 15/428,277
`Art Unit: 2185
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`Page 6
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`connected to a host root bus and retrieve characteristic bus information (Paragraph 0191, The
`
`MR-PCIM 2562 maintains a fabric configuration data structure 2566 which stores
`
`characteristic information) from the information storage units of Cohen, and allocating the bus
`
`numbers based on the characteristic bus information provided.
`
`One of ordinary skill in the art would be motivated to make these modifications because
`
`Cohen discloses a mapping information storage module (See Cohen: Fig. 1B, 141) used for
`
`translating data between different bus interfaces which is synonymous and related to the
`
`characteristic information ofthe bus system of Freimuth (See Freimuth: Paragraph 0210, The
`
`MR-PCIM gathers characteristic information for the added component (step 2620)), thus it
`
`would have been obvious to make the modifications to yield the obvious result of being able to
`
`hot—plug devices in to configure them quickly (See Freimuth: Paragraph 0209) and allow the
`
`use of the characteristic information to determine the bus numbers thus allowing migration of
`
`bus settings to enable efficient environments (See Freimuth: Paragraph 0020).
`
`Neither Cohen nor Freimuth explicitly teaches a subordinate bus number of each of the
`
`plurality of switches or bridges is set based on the information indicating the bus configuration
`
`acquired from the information storage unit via the communication unit by the digital device.
`
`Nakayama teaches a subordinate bus number of each of the plurality of switches or
`
`bridges is set (Fig. 2; Paragraph 0049, FIG. 2 shows a configuration example of the switch port
`
`table. The switch port table 600 is a table for controlling ports of the switch and is stored
`
`over the registers 341, 342 of the respective switches 301, 302) based on the information
`
`indicating the bus configuration acquired from the information storage unit via the
`
`communication unit by the digital device (Paragraph 0049, Contents of this control table are
`
`

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`Application/Control Number: 15/428,277
`Art Unit: 2185
`
`Page 7
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`set up by the PCI manager 410; Fig. 6; Paragraph 0062, this bus number assignment
`
`management table 630 is realized by a method of directly transferring information to an
`
`EFl/BIOS that practically assigns the IO resource IDs through the registers 341, 342 in the
`
`switches 301, 302).
`
`It would have been obvious to one of ordinary skill in the art before date of application
`
`filing to have modified the recording medium to incorporate the teachings of Nakayama and
`
`allow the assigning of subordinate bus numbers to the switches/bus system of Cohen.
`
`One of ordinary skill in the art would be motivated to make these modifications in order
`
`to utilize device virtualization so that the device can be shared by multiple hosts/guest
`
`operating systems running on a single host efficiently (See Nakayama: Paragraphs 0002/0004).
`
`4.
`
`Regarding claim 2, Cohen in view of Freimuth in further view of Nakayama teaches the
`
`recording medium of claim 1. Cohen further teaches wherein the local bus is a PCI bus or a PCIe
`
`bus (Paragraph 0029, the coupling is via one or more host interfaces including PCle).
`
`5.
`
`Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Cohen (US
`
`2013/0297894) in view of Freimuth (US 2008/0147904) in further view of Nakayama (US
`
`2010/0036995)in further View of Hess (US 2012/0265912).
`
`Regarding claim 3, Cohen in view of Freimuth in further view of Nakayama teaches the
`
`recording medium of claim 2. Cohen does not teach wherein the communication unit is a
`
`sideband bus different from the PCI bus or the PC|e bus.
`
`

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`Application/Control Number: 15/428,277
`Art Unit: 2185
`
`Page 8
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`Hess teaches wherein the communication unit is a sideband bus (Fig. 2, Out-of-band
`
`control path; 291, 293, SCL/SDA sideband) different from the PCI bus or the PCIe bus (Fig. 2,
`
`295, PCle bus).
`
`It would have been obvious to one of ordinary skill in the art before date of application
`
`filing to have modified the recording medium to incorporate the teachings of Hess and include
`
`an out—of—band control path channel in order to configure the bus/card configurations of the
`
`recording medium card of Cohen.
`
`One of ordinary skill in the art would be motivated to make these modifications in order
`
`to prevent the transfer of configuration data over an improperly configured bus (See Hess:
`
`Paragraph 0025, until the functional path conductors are configured and initialized correctly,
`
`the functional path conductors may not be sufficient to carry the functional path signals) thus
`
`reducing the possibility of errors occurring in the data (See Hess: Paragraph 0042).
`
`6.
`
`Claims 4—6 are rejected under 35 U.S.C. 103 as being unpatentable over Cohen (US
`
`2013/0297894) in view of Freimuth (US 2008/0147904) in further view of Nakayama (US
`
`2010/003 6995).
`
`7.
`
`Regarding claim 4, Cohen teaches an adapter (Fig. 13, 107) in which a recording medium
`
`is inserted and removed (Fig. 13, 116, Recording medium card), the recording medium
`
`inciuciing a iocai bus (Fig. 13, 116, Local bus 110/180) having a piuraiity of switches or bridges
`
`(Fig. 13, 103, Switch, 110, Bridges) and an information storage unit which stores information
`
`indicating a bus configuration ofthe iosai bus (Paragraph 1100, Map 141 converts between
`
`

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`Application/Control Number: 15/428,277
`Art Unit: 2185
`
`Page 9
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`data addressing used on External Interfaces 110 and data addressing used on Device
`
`Interfaces 190, using Table 143 to map external data addresses to locations in NVM 199), the
`
`adapter comprising: an information acquisition unit for acquiring the information indicating the
`
`bus configuration from the information storage unit (Fig, 1%, K38, Shadow map), wherein, after
`
`insertion of the recording rnedium is detected by the insertionfremovai detector (Fig. it},
`
`1961A), the bus searcher sets a subordinate bus number of each of the oiuraiity of switches or
`
`bridges based on the information indicating the bus configuration acquired by the information
`
`acquisition unit, and then reconstructs the bus configuration (Fig, it), HEEL Uodate man),
`
`Cohen teaches a PCIe I/O card with multiple recording units within that transmits a map
`
`of the local bus configurations to the host device. Cohen does not explicitly teach the adapter
`
`comprising: a hus searcher for setting a bus number from a root bus for each oithe piuraiity of
`
`switches or bridges to construct a bus configuration; an insertion/removai detector for
`
`detecting insertion and rernovai oithe recording medium to and from the adapter; and an
`
`information acquisition unit for acquiring the information indicating the bus configuration from
`
`the information storage unit, wherein, after insertion otthe recording medium is detected by
`
`the insertionfreniovai detector, the bus searcher sets a subordinate bus number of each of the
`
`piuraiity of switches or bridges based on the information indicating the bus configuration
`
`acquired by the information acquisition unit.
`
`Freimuth teaches an adapter (Fig. 3, $32, MR~P€IEM; 334, Pitt root comeiex}, the
`
`adapter comprising: a bus searcher for setting a bus number from a root bus for each of the
`
`piuraiity of switches or bridges to construct a bus configuration (Fig. 3} 332, MR*?CiM}; an
`
`insertion/removai detector for detecting insertion and removai of the recording medium to anti
`
`

`

`Application/Control Number: 15/428,277
`Art Unit: 2185
`
`Page 10
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`irem the adapter (Fig. 8, 832, MR~PCEM; Paragraph 0209, the eperatien starts by remitting, in
`
`a MRIPCiM, an "Add" event indicating the additien (if a cempenent tea the fitie fabric {step
`
`26103); and an informatien acquisition unit for acquiring the intermatieh indicating the bus
`
`configuration from the information storage unit (Fig. 8, 832, Mibif‘tih’i; Fig. 26, 2620, Gather
`
`tharacteristic infermatinn), wherein, after insertion oi the rewriting medium is detected by
`
`the insertionfremovai detecter (Fig. 26, 261i}, Receive add event), the bus searcher sets a
`
`subordinate bus number 0i each oi the piuraiity 0i switches er bridges based en the
`
`information indicating the bus configuration acquired by the information acquisition unit itig.
`
`26, magnate, Set baits; fig. 18, base aedresses}.
`
`It would have been obvious to one of ordinary skill in the art before date of application
`
`filing to have modified the recording medium to incorporate the teachings of Freimuth and
`
`include a hot—plug detection circuitry to detect adding/removal of the device; an adapter
`
`connected to a host root bus and retrieve characteristic bus information (Paragraph 0191, The
`
`MR-PCIM 2562 maintains a fabric configuration data structure 2566 which stores
`
`characteristic information) from the information storage units of Cohen, and allocating the bus
`
`numbers based on the characteristic bus information provided.
`
`One of ordinary skill in the art would be motivated to make these modifications because
`
`Cohen discloses a mapping information storage module (See Cohen: Fig. 13, 141) used for
`
`translating data between different bus interfaces which is synonymous and related to the
`
`characteristic information ofthe bus system of Freimuth (See Freimuth: Paragraph 0210, The
`
`MR-PCIM gathers characteristic information for the added component (step 2620)), thus it
`
`would have been obvious to make the modifications to yield the obvious result of being able to
`
`

`

`Application/Control Number: 15/428,277
`Art Unit: 2185
`
`Page 11
`
`hot—plug devices in to configure them quickly (See Freimuth: Paragraph 0209) and allow the
`
`use of the characteristic information to determine the bus numbers thus allowing migration of
`
`bus settings to enable efficient environments (See Freimuth: Paragraph 0020).
`
`Neither Cohen nor Freimuth explicitly teaches a subordinate bus number of each of the
`
`plurality of switches or bridges is set based on the information indicating the bus configuration
`
`acquired from the information storage unit via the communication unit by the digital device.
`
`Nakayama teaches a subordinate bus number of each of the plurality of switches or
`
`bridges is set (Fig. 2; Paragraph 0049, FIG. 2 shows a configuration example of the switch port
`
`table. The switch port table 600 is a table for controlling ports of the switch and is stored
`
`over the registers 341, 342 of the respective switches 301, 302) based on the information
`
`indicating the bus configuration acquired from the information storage unit via the
`
`communication unit by the digital device (Paragraph 0049, Contents of this control table are
`
`set up by the PCI manager 410; Fig. 6; Paragraph 0062, this bus number assignment
`
`management table 630 is realized by a method of directly transferring information to an
`
`EFl/BIOS that practically assigns the IO resource IDs through the registers 341, 342 in the
`
`switches 301, 302).
`
`It would have been obvious to one of ordinary skill in the art before date of application
`
`filing to have modified the apparatus to incorporate the teachings of Nakayama and allow the
`
`assigning of subordinate bus numbers to the switches/bus system of Cohen.
`
`One of ordinary skill in the art would be motivated to make these modifications in order
`
`to utilize device virtualization so that the device can be shared by multiple hosts/guest
`
`operating systems running on a single host efficiently (See Nakayama: Paragraphs 0002/0004).
`
`

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`Application/Control Number: 15/428,277
`Art Unit: 2185
`
`Page 12
`
`8.
`
`Regarding claim 5, Cohen in view of Freimuth in further view of Nakayama teaches
`
`adapter & recording medium of claim 4. Cohen further teaches an information processing
`
`apparatus comprising: a host device having an interface (Fig. 13, 102, Host; Paragraph 0066,
`
`using a PCle-based host protocol, such as NVM Express, the updated information is
`
`communicated at least in part by the l/O device writing a region in the memory of the
`
`computing host and informing the computing host with an interrupt; i.e. PCle internal
`
`interface); the adapter (Fig. 13, 107) which is connected to the host device via the interface
`
`(Paragraph 0058, a PCle-addressable memory of the computing host); and the recording
`
`medium (Fig. 13, 104).
`
`9.
`
`Regarding claim 6, Cohen in view of Freimuth in further view of Nakayama teaches the
`
`information processing apparatus of claim 5. Cohen further teaches wherein the digital device
`
`is configured by the host device and the adapter (Fig. 13, Digital device 102).
`
`Conclusion
`
`8.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to HARRY Z WANG whose telephone number is (571)270—1716.
`
`The examiner can normally be reached on 9 am — 3 pm (Monday—Friday).
`
`Examiner interviews are available via telephone, in—person, and video conferencing
`
`using a USPTO supplied web—based collaboration tool. To schedule an interview, applicant is
`
`