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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/636,818
`
`02/05/2020
`
`Hajime Nishino
`
`P200111US00
`
`4012
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`ANTHONY, TULTAN
`
`1722
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
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`07/26/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-10 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C) Claim(s)__ is/are allowed.
`Claim(s) 1-10 is/are rejected.
`1) Claim(s)__is/are objectedto.
`Cj} 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)0) The drawing(s) filedon__ is/are: a)(J 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)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1... Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived 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)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220714
`
`Application No.
`Applicant(s)
`16/636 ,818
`Nishino etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`JULIAN ANTHONY
`1722
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1)() Responsive to communication(s)filed on 11 May 2022.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/636,818
`Art Unit: 1722
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`Page 2
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`DETAILED ACTION
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`Remarks
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`This Office action is responsive to applicant’s amendmentfiled on May 13, 2022.
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
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`rejectionsset forth in this Office action:
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`A patent for a claimed invention may not be obtained, notwithstanding that the claimed inventionis 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 obviousbefore the effective
`filing date of the claimed invention to a person having ordinaryskill in the art to which the claimed
`invention pertains. Patentability shall not be negated by the mannerin which the invention was made.
`
`Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshinoetal.
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`(US 2002/0045094) in view of Barneset al. (US 2002/0197471) and Sugita et al. (US 8,592,076)
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`For claim 1: Yoshino teaches a nonaqueous electrolyte secondary battery comprising a
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`coiled electrode assembly (Yoshino in Fig. 5) and a nonaqueous electrolyte ([0044], the coiled
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`electrode assembly including a positive electrode 21, a negative electrode 12, and a separator 24
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`interposed between the positive electrode and the negative electrode ([0032]), a positive
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`electrode lead 11 ({[0031], [0034]) electrically connected to the positive electrode, a positive
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`electrode insulating tape 42 ([0038]) that covers a portion of the positive electrode (Fig. 7), and
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`the coiled electrode assembly is formed by coiling the positive electrode and the negative
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`electrode with the separator interposed therebetween. (Fig. 5, [0032]) The positive electrode
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`includes a positive electrode current collector 25 ({0033]) that includesa first main surface and a
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`second main surface that is opposedto the first main surface (Fig. 6) and a positive electrode
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`

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`Application/Control Number: 16/636,818
`Art Unit: 1722
`
`Page 3
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`active material layer 26 that is supported by the first main surface and the second main surface
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`(Id.). The first main surface includesa first exposed section which faces the negative electrode
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`(Fig. 5) and on whichthe positive electrode active material layer is not arranged, and the positive
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`electrode lead is connected to the first exposed section. ([0038]) The positive electrode lead
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`includes an extension section that protrudes from the first exposed section and an overlapping
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`section (i.e. non-protruding portion of lead attached to the exposed section) that overlaps the first
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`exposed section. (Id., Fig. 8A)
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`Yoshino discloses covering the positive electrode lead with the positive electrode
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`insulating tape. (Yoshino in [0038]) Yoshino doesnot explicitly disclose covering at least a
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`portion of the first exposed section and a portion of the overlapping section. However, the
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`skilled artisan would find obvious to coverat least a portion of the first exposed section and a
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`portion of the overlapping section in view of both these sections being exposed regions (Id.) and
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`would be motivated by the need and desire to protect these exposed regions from a short circuit
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`and in order to maintain electrical insulation. (Id.) Accordingly, the positive electrode insulating
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`tape includesa first layer 41 that adheresto the first exposed section and to the overlapping
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`section. (Id., Fig. 7)
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`Yoshino does not explicitly teach the positive electrode insulating tape to include a base
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`and a second layer interposed between the base andthefirst layer. However, Barnes in the same
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`field of endeavor teaches a tape with a base layer 12 and a secondlayer 14. (Barnesin ([0054-
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`0055) The skilled artisan would find obvious to modify Yoshino’s “adhesive tape 42” with the
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`tape of Barnes. The motivation for such a modification is for a higher degree of thermal
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`resistance and deformation resistance ([0012]) and noloss of adhesion at elevated temperatures.
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`({0042])
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`

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`Application/Control Number: 16/636,818
`Art Unit: 1722
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`Page 4
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`Yoshino does not explicitly teach the second layer to expand whenheated above a
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`threshold and including a foamingfiller that is in an unexpandedstate and is configured to
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`expand when heated above the threshold. However, Sugita in the same field of endeavor
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`discloses a foamingfiller that is in an unexpandedstate and is configured to expand when heated
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`abovea threshold. (Sugita in col. 2 lines 25-34) The skilled artisan would find obvious to further
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`modify the second layer of Yoshino with a foamingfiller in an unexpandedstate that expands
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`when heated above a threshold. The motivation for such a modification is to allow for heat
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`insulating layers to expand and disperse heat efficiently. (col. 2 lines 38-54)
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`For claim 2:
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`In Barnes, the second layer has a resin (Barnes in ((0042]) so that the
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`second layer of Yoshino would contain the resin and (as already discussed when in view of
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`Sugita) the foamingfiller.
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`For claims 3-4:
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`In Sugita, the foamingfiller contains an alkali metal silicate such as
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`sodiumsilicate, inter alia. (Sugita in col. 5 lines 34-38)
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`For claim 5:
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`In Sugita, the foaming filler contains aluminum hydroxide, inter alia.
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`(Sugita in col. 7 lines 4-8)
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`For claim 6: In Yoshino, the second main surface includes a second exposed section
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`which correspondsto the first exposed section and on whichthe positive electrode active
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`material layer is not arranged. (Yoshino in Fig. 6) Yoshino does not explicitly teach at least a
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`portion of the second main surface being covered with the positive electrode insulating tape.
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`However, as Yoshino discloses this portion being exposed ([0038]), the skilled artisan would
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`find obvious to cover a portion of the second main surface in orderto protect this exposed region
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`from a short circuit and in order to maintain electrical insulation. (Id.)
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`

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`Application/Control Number: 16/636,818
`Art Unit: 1722
`
`Page 5
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`For claim 7: The extension section of the positive electrode lead protrudes from an
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`interior region of the coiled electrode assembly. (Yoshino in [0034], Figs. 4, 6)
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`For claim 8: The battery further comprises a negative electrode lead 12 electrically
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`connected to the negative electrode (Yoshino in [0034]), and the positive electrode lead contains
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`aluminum and the negative electrode lead contains copper. ([0066], [0069])
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`For claim 9: Yoshino does not explicitly teach the mass of the resin with respect to a
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`total amountof the resin and thefiller in the second layer. However,it is asserted that
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`optimization of the relative mass % within the prior art conditions through routine
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`experimentation is within the purview of the skilled artisan. Determining where the optimum
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`combination of percentageslies is prima facie obvious, absent of a showing of evidence or
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`unexpected results indicating that the claimed weight percentage amountsis critical. In re
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`Peterson, 315 F.3d 1325, 1330, 65 USPQ 2d 1379, 1382-83 (Fed. Cir. 2003); see also In re
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`Geisler, 116 F.3d 1465, 1470, 43 USPQ 2d 1362, 1365 (Fed. Cir. 1997) (""[I]t is not inventive to
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`discover the optimum or workable ranges by routine experimentation.” (quoting In re Aller, 220
`
`F.2d 454, 456, 105 USPQ 223, 235 (CCPA 1995)).
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`For claim 10:
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`In Sugita, the thickness on expansionis disclosed as 30 to 600%, and more
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`preferably 50 to 300% (Sugita in col. 6 lines 18-21), which teachesor at least suggests a
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`thickness of the second layer after expansion being 1.5 to 10 times a thickness before expansion.
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`In the case where the claimed ranges “overlap orlie inside ranges disclosed by the priorart” a
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`prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA
`
`1976).
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`

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`Application/Control Number: 16/636,818
`Art Unit: 1722
`
`Page 6
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`Response to Arguments
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`Applicant’s arguments filed with the present amendmentfor Kobe have been considered
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`and are persuasive in overcoming the ground ofrejection relying on this reference.
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`However, a new ground ofrejection citing Sugita to teach or at least suggest a foaming
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`filler that is in an unexpandedstate, and configured to expand whenheated abovethe threshold,
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`is set forth in the present Office action.
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`The examiner notes that arguments for Yoshino and Barnes appear merely to these
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`references not remedying deficiencies in Kobe.
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`Conclusion
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`Applicant's amendment necessitated the new ground(s) of rejection presented in this
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`Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP§ 706.07(a).
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`Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHSfrom the mailing date of this action. In the eventa first reply is filed within TWO
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`MONTHSofthe mailing date of this final action and the advisory action is not mailed until after
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`the end of the THREE-MONTHshortened statutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
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`CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event,
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`however,will the statutory period for reply expire later than SIX MONTHSfrom the date ofthis
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`final action.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to JULIAN ANTHONYwhosetelephone numberis (571)272-1289
`
`

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`Application/Control Number: 16/636,818
`Art Unit: 1722
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`Page 7
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`and email is julian.anthony@uspto.gov. The examiner can normally be reached on Mondayto
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`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
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`supervisor, Cynthia Kelly, can be reached on (571) 272-1526. The fax phone numberfor the
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`organization where this application or proceedingis assigned is 571-273-8300.
`
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`
`/Julian Anthony/
`Examiner, Art Unit 1722
`
`/CYNTHIA H KELLY/
`Supervisory Patent Examiner, Art Unit 1722
`
`