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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
`
`16/925,371
`
`07/10/2020
`
`TAKAYUKI NAKAUE
`
`083710-3065
`
`4566
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`WILKINSIII, HARRY D
`
`1794
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/04/2022
`
`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):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-16 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj] Claim(s)
`is/are allowed.
`Claim(s) 1-2 and 6-14 is/are rejected.
`Claim(s) 3-5 and 15-16 is/are objected to.
`1) Claim(s
`are subject to 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)2) The specification is objected to by the Examiner.
`11) The drawing(s) filed on 10 July 2020 is/are: a)[¥) accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)[¥] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)() None ofthe:
`b)( Some**
`a) All
`1.2 Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.4 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)
`
`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) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220330
`
`Application No.
`Applicant(s)
`16/925,371
`NAKAUE etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`HARRY D WILKINS III
`1794
`Yes
`
`
`
`-- The MAILING DATEofthis 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 3 February 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: 16/925,371
`Art Unit: 1794
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA 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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`inventorto file provisions of the AIA.
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`Response to Arguments
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`2.
`
`Applicant’s amendmentto claim 1 to add the additional limitation that the porous carbon sheet
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`included a sintered material made from carbonparticles is sufficient to overcome the prior grounds of
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`rejection over Lee et al and Blanchet et al. However, further search was conductedby the Office which
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`has resulted in the new grounds of rejection presented below.
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`Claim Rejections - 35 USC § 103
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`3.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
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`set forth in this Office action:
`
`A patent fora claimed invention may not be obtained, notwithstanding that the claimed inventionis
`notidentically disclosed as set forth ins ection 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 ofthe claimed invention to a person having ordinary skillinthe art to which the
`claimed invention pertains. Pa tentability s hall not be negated by the mannerin which the invention
`was made.
`
`4.
`
`Claims 1, 2, and 6-14 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al (US
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`2014/0011118) in view of Blanchetet al (US 2013/0337366) and Jordan et al (“Diffusion layer
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`parametersinfluencing optimal fuel cell performance”).
`
`Lee et al teach (see abstract, paragraph [0112], [0129]) an electrochemical cell (fuel cell)
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`comprising an electrolyte membrane, an anode catalyst in contact with one primary surface of the
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`electrolyte membrane, a cathode catalyst layer in contact with the other primary surface of the
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`electrolyte membrane, an anode gas diffusion layer in contact with the anode catalyst layer, and a
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`cathode gas diffusion layer in contact withthe cathode catalyst layer. The anode gas diffusion layer
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`included plural layers of porous carbon sheets, wherein the layer closest to the anode catalyst layer had
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`

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`Application/Control Number: 16/925,371
`Art Unit: 1794
`
`Page 3
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`a smaller porosity than the other layers (see also figs. 5 and 6). Note the teaching at paragraph [0109]
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`that the gasdiffusion layer was used as either an anode or a cathode of the electrochemical cell. The
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`plural layers of porous carbon sheets formed a porosity gradient which was useful for both reducing
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`water flooding of the electrode (see paragraph [0054]) and increasing the strength of the gas diffusion
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`layer (see paragraphs [0068]-[0069)).
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`Thus, Lee et al differs from the claimed invention in two interrelated ways: first, Lee et al fail to
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`teach using the electrochemical cell as a hydrogen pump; and second, the presence of a voltage
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`applicator toapply voltage between the anodecatalyst layer and the cathode catalyst layer to cause
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`hydrogen gas supplied above the anode catalyst layer to move above the cathode catalyst layer and to
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`be pressurized.
`
`Blanchet et alteach (see abstract, paragraphs [0002]-[0005]) that the broad field of
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`electrochemical cells included fuel cells, water electrolysis cells as well as electrochemical hydrogen
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`compressors(i.e. “pumps”) and that certain basic elements were similar between the three types of
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`cells. Blanchet et al additional teach (see figs. 1, 5B, 10, paragraphs [0029] and [0058]-[0060]) an
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`electrochemical hydrogen compressor(i.e. “pump”) comprising an electrolyte membrane (8), an anode
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`catalyst layer (7A) on one primary surface of the electrolyte membrane, a cathodecatalyst layer (7C) on
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`the other primary surface of the electrolyte membrane, an anodeflow structure (5) on the anode
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`catalyst layer, an anode separator(flow field plate, not numberedin fig. 1, but included passageway fed
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`with hydrogen fuel) on the anode flow structure. Although Blanchetetal fail to expressly teach the
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`presenceof a voltage applicator for applying a voltage between the anode catalyst layer and the
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`cathode catalyst layer, such a power supply is inherently required for the electrochemical hydrogen
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`compressorto function. Fuel cells, the other embodiment of Blanchetet al generates a voltage through
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`an electrochemical reaction, whereas the electrochemical hydrogen compressor embodiment must
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`

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`Application/Control Number: 16/925,371
`Art Unit: 1794
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`Page 4
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`consume electricityto drive the hydrogen gas from one side (anode) of the cell to the other side
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`(cathode) of the cell and to compress(i.e. increase the pressure of) the hydrogen on the cathode side.
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`Therefore, it would have been obvious to one of ordinary skill in the art at the time offiling to
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`have applied the improved multilayer gas diffusion layer of Lee et al to the adjacentfield of
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`electrochemical hydrogen compressors(i.e. pumps) to achieve the improvements of Lee et al (improved
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`mechanical strength of the gas diffusion layer and reduced incidents of gasdiffusion layer flooding)
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`within the electrochemical hydrogen compressor of Blanchet et al because Blanchet et al teach that the
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`basic technology of fuel cells and water electrolyzerscan also be applied to electrochemical hydrogen
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`compressors.
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`Lee et al and Blanchetet al fail to teach that the porous carbon sheetincluded a sintered
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`material made from carbonparticles.
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`Jordan et al teach (see abstract, and the entire documentin general) that gas diffusion layers for
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`electrochemical cells of the type disclosed by Lee et al conventionally used porous carbon layers that
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`were not sintered, but that substitution of porous carbon layers made from sintered carbon particles
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`enhancedthe functioning of the electrochemical cells, such as higher current density.
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`Therefore, it would have been obvious to one of ordinary skill in the art at the time offiling to
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`have substituted a porous carbon layer made from sintered carbon particles as taught by Jordan etal in
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`place of the porous carbon paper taught by Lee et al for the purpose of achieving the enhanced
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`functioning of the electrochemical cell, such as by achieving higher current density. Additionally,
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`Applicant’s specification fails to assert any advantage achieved by using the porous carbon layer made
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`from sintered carbon particles as compared to using porous carbon layers not madefrom sintered
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`carbonparticles.
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`

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`Application/Control Number: 16/925,371
`Art Unit: 1794
`
`Page5S
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`Regarding claim 2, as shown in figs. 1 and 6 of Lee etal, the porosity gradient between layers
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`was achievedbyincreasing density in the layers were less porosity was desired(i.e. the first surface
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`layer adjacent the anode catalyst layer was the least porous and thus most dense).
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`Regarding claim6, Lee et al teach (see paragraph [0058]) that the first surface layer included
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`pore widths of 10-100 um. This pore size may be smaller than the typical thickness of the electrolyte
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`membrane (noted as being 20-50 um in paragraph [0124] of the instant specification).
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`Regarding claims 7-12, Lee et al fails to expressly disclose the porosity value of the plural layers.
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`However, given that Lee et al teach that the layer of carbon in the gas diffusion layer that is adjacent the
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`anode catalyst layer is more porous than the layers away from the anodecatalyst layer, it would have
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`been within the ordinary level of skill to have conducted routine experimentation to have determined
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`optimal or workable rangesfor the porosity of the plural layers to achieve an optimal balance of
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`mechanical properties and to achieve the reduction in gas diffusion layer flooding.
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`Regarding claims 13 and 14, Lee et al teaches (see paragraphs [0066], [0096] -[0097])
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`impregnating the porous carbon layers with a hydrophobic material such as polytetrafluoroethylene,
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`which is a known water-repellent material.
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`Allowable Subject Matter
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`5.
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`Claims 3-5 and 15-16 are objected to as being dependent upon a rejected base claim, but would
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`be allowable if rewritten in independent form including all of the limitations of the base claim and any
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`intervening claims.
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`6.
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`The following is a statement of reasonsfor the indication of allowable subject matter:
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`(Claim 3) Lee et al, and the remainder of the prior art of record,fail to teach including a higher
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`density in the second surface layer of the porous carbon sheet, which second surface layer was opposite
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`the first layer, than in the inside layer deeper than the first surface layer (i.e.-the porous carbon sheet
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`possessed higher density surface layers and a lower densityinterior);
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`

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`Application/Control Number: 16/925,371
`Art Unit: 1794
`
`Page 6
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`(Claims 4 and 5) Lee et al, and the remainder of the prior art of record,fail to teach or suggest
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`making the gasdiffusion layer having smaller porosity on the catalyst facing side from carbon particles
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`that were smaller in the first surface layer or the second surface layer; and,
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`(Claims 15 and 16) Lee et al, and the remainder of the prior art of record,fail to teach or suggest
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`a water-retaining layer in or on the second surface layer; additionally, Nishimura et al is noted as
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`teaching a water-retaining layer adjacent a gas diffusion layer in a fuel cell, however, Nishiumura et al
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`teachthis water-retaining layer being adjacent the cathode gas diffusion layer, not the anode gas
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`diffusion layer as required by the instant claims.
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`Conclusion
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`7.
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`Applicant's amendmentnecessitated the new ground(s) of rejection presented in this Office
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`action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the
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`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 MONTHS from
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`the mailing date of this action.
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`In the event a first reply is filed within TWO MONTHS of the mailing date
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`of this final action and the advisory action is not mailed until after the end of the THREE-MONTH
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`shortened statutory period, then the shortened statutory period will expire on the date the advisory
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`action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing
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`date of the advisory action.
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`In no event, however,will the statutory period for reply expire later than
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`SIX MONTHS from the date ofthis final action.
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`8.
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`Anyinquiry concerning this communication or earlier communications from the examiner
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`should be directed to HARRY D WILKINS III whose telephone number is (571)272-1251. The examiner
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`can normally be reached M-F 9:30am -6:00pm.
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`

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`Application/Control Number: 16/925,371
`Art Unit: 1794
`
`Page 7
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`
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`
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`
`If attempts to reachthe examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`James Lin canbe reached on 571-272-8902. The fax phone number for the organization wherethis
`
`application or proceedingis assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be obtained from
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`Patent Center. Unpublished application information in Patent Center is available to registered users. To
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`file and manage patent submissions in Patent Center,visit: https://patentcenter. uspto.gov.Visit
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`https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
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`571-272-1000.
`
`/HARRY D WILKINS III/
`Primary Examiner, Art Unit 1794
`
`