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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 22313-1450
`
`17/391,051
`
`08/02/2021
`
`MASAHIKO TSUKUDA
`
`083710-3474
`
`3105
`
`Rimon PC - Panasonic Corporation
`8300 Greensboro Dr.
`Suite 500
`McLean, VA 22102
`
`MERLIN,JESSICA M
`
`2871
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/30/2024
`
`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):
`USPTOmail @rimonlaw.com
`
`eofficeaction @appcoll.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Application No.
`Applicant(s)
`17/391,051
`TSUKUDAet al.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`JESSICA M MERLIN
`2871
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof 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 April 16, 2024.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3) 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)(2) 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.
`
`Disposition of Claims*
`1-10 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 9 is/are withdrawn from consideration.
`() Claim(s)__is/are allowed.
`[] Claim(s)
`is/are rejected.
`Claim(s) 1-8 and 10 is/are objected to.
`C) 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)() The specification is objected to by the Examiner.
`11) The drawing(s)filed on August 2, 2021 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.@) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received 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)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`4)
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`
`Paper No(s)/Mail Date4/3/24,8/2/21.
`U.S. Patent and Trademark Office
`
`3)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240722
`
`

`

`Application/Control Number: 17/391,05 1
`Art Unit: 2871
`
`Page 2
`
`DETAILED ACTION
`
`Notice ofPre-AIA or AIA Status
`
`1.
`
`The presentapplication, filed on or after March 16, 2013, is being examined underthe
`
`first inventorto file provisions of the AIA.
`
`2.
`
`In the eventthe determination ofthe status of the application as subject to AIA 35 U.S.C.
`
`102 and 103 (oras subject to pre-AJA 35 U.S.C. 102 and 103) is incorrect, any correction of the
`
`statutory basis (1.e., changing from AJAto pre-AIJA)for the rejection will not be considered a
`
`new groundof rejection if the prior art relied upon, and the rationale supporting the rejection,
`
`would be the same undereitherstatus.
`
`Election/Restrictions
`
`3.
`
`Claim 9 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being
`
`drawn to anonelected species, there being no allowable generic or linking claim. Applicant
`
`timely traversedthe restriction (election) requirementin the reply filedon April 3, 2024.
`
`Claim Rejections - 35 USC § 103
`
`4.
`
`The followingis a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
`
`rejections set forth in this Office action:
`
`A patent fora 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 obviousbefore 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.
`
`5.
`
`Claims 1-4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Weidlich (US 6, 643,054) in view of Donget al. (CN 2783366, of which an English
`
`translation is attached).
`
`

`

`Application/Control Number: 17/391,05 1
`Art Unit: 2871
`
`Page 3
`
`In regardto claim 1, Weidlich discloses an optical device comprising (see e.g. Figure
`
`1):
`
`a first mirror 5 having translucencyandincludingafirst reflecting surface extending
`
`alongafirst direction and a second direction intersecting the first direction (see e.g. Column 6,
`
`lines 39-48);
`
`a second mirror 7 including a secondreflecting surface facing the first reflecting surface
`
`(see e.g. Column6, lines 39-48);
`
`an optical waveguide layer 3 located betweenthe first mirror 5 and the second mirror 7,
`
`the optical waveguide areas 3 containing a liquid crystal material and propagating light along the
`
`first direction (see e.g. Column 2, lines 23-43); and
`
`two electrode layers 19, 25 facing each otheracross the optical waveguidelayer, at least
`
`one of the two electrode layers 19, 25 including a plurality of electrodes 25 laid side-by-side
`
`along the second direction.
`
`Weidlich fails to disclose
`
`the optical waveguide layer including a plurality of non-waveguideareaslaid side-by-
`
`side along the second direction and one or more optical waveguide areas located between the
`
`plurality of non-waveguideareas,
`
`wherein the plurality of electrodes include an electrode overlappingatleast a part of the
`
`plurality of non-waveguide areas when seen from an angle parallel with a direction perpendicular
`
`to the first reflecting surface or the secondreflecting surface.
`
`However, Donget al. discloses (see e.g. Figure 5):
`
`

`

`Application/Control Number: 17/391,05 1
`Art Unit: 2871
`
`Page 4
`
`the optical waveguide layer 1 including a plurality of non-waveguideareas 13 laid side-
`
`by-side along the second direction and one or more optical waveguide areas located between the
`
`plurality of non-waveguideareas,
`
`wherein the plurality of electrodes 3,4, include an electrode overlappingat least a part of
`
`the plurality of non-waveguide areas 13 when seen from an angle parallel with a direction
`
`perpendicular to the upperor lowersurface.
`
`Given the teachings of Dong et al., it would have been obvious to oneof ordinary skill in
`
`the art before the effective filing date of the claimed invention to modify the device of Weidlich
`
`with the optical waveguide layer including a plurality of non-waveguideareaslaid side-by-side
`
`along the second direction and one or more optical waveguide areas located betweenthe plurality
`
`of non-waveguideareas, wherein the plurality of electrodes include an electrode overlapping at
`
`least a part of the plurality of non-waveguide areas when seen from an angle parallel with a
`
`direction perpendicularto the first reflecting surface or the second reflecting surface.
`
`Doing so would provideisolation trenches/sections for separating the waveguide
`
`structures.
`
`In regardto claim 2, Weidlich discloses the limitations as applied to claim 1 above, and
`
`(see e.g. Figures 1-5):
`
`a control circuit connected to each of the plurality of electrodes includedin the two
`
`electrode layers, wherein the control circuit executes, during operation, atleast either a first
`
`operation of providing a potential difference betweenat least a part of the plurality of electrodes
`
`andat least anotherpart of the plurality of electrodes or a second operation of providing a
`
`potential difference between an electrode included in oneofthe two electrode layers and an
`
`electrode included in the other of the two electrode layers (see e.g. Column 9, lines 17-43).
`
`

`

`Application/Control Number: 17/391,05 1
`Art Unit: 2871
`
`Page 5
`
`In regardto claim 3, Weidlich discloses the limitations as applied to claim 1 above, and
`
`wherein one of the two electrode layers 19 is located between the optical waveguide layer
`
`andthe first reflecting surface, inside the first mirror, or on a surface ofthe first mirror 5
`
`opposite to the first reflecting surface, and the other of the two electrode layers 25 is located
`
`betweenthe optical waveguide layer and the secondreflecting surface, inside the second mirror
`
`7, or on a surface of the second mirror opposite to the secondreflecting surface.
`
`In regardto claim 4, Weidlich, in view of Donget al., discloses the limitations as
`
`applied to claim 1 above, butfails to disclose
`
`wherein the one or more optical waveguide areas include an optical waveguide area
`
`whose width in the second direction is less than or equal to 5 um.
`
`However, oneof ordinary skill in the art would recognize utilizing wherein the one or
`
`more optical waveguide areas include an optical waveguide area whose width in the second
`
`direction is less than or equal to 5 um,since it has been held that where the general condition of
`
`a claim are disclosedin the priorart, discovering the optimum or working ranges involves only
`
`routine skill in the art.
`
`It would have been obvious to one of ordinary skill in the art before the effective filing
`
`date of the claimed invention to modify the device of Weidlich, in view of Dong et al., with
`
`wherein the one or more optical waveguide areas include an optical waveguide area whose width
`
`in the second directionis less than or equal to 5 um.
`
`Doing so would provide an optimized waveguidethickness based on the optical
`
`characteristics and wavelength of light used.
`
`In regardto claim 8, Weidlich discloses the limitations of claim 1, as cited above, and
`
`

`

`Application/Control Number: 17/391,05 1
`Art Unit: 2871
`
`Page 6
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`wherein one of the two electrode layers includes the plurality of electrodes 25, and the
`
`other of the two electrode layers includes a single electrode 19.
`
`6.
`
`Claims 5-7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Weidlich (US 6, 643,054) in view of Donget al. (CN 2783366) and further in view of Nagao
`
`et al. (WO 2018/193723 A1, of which an English translation is attached).
`
`In regard to claim 5, Weidlich, in view of Donget al., discloses the limitations as
`
`applied to claim 1, but fails to disclose
`
`a control circuit connected to each electrode included in the two electrode layers, wherein
`
`the plurality of electrodes overlap at least parts of the plurality of non-waveguide areas,
`
`respectively, when seen from an angle parallel with a direction perpendicularto thefirst
`
`reflecting surface or the secondreflecting surface, and
`
`the control circuit executes, during operation,at least either a first operation of providing
`
`a potential difference between any adjacent two of the plurality of electrodes and a second
`
`operation of providing a potential difference between an electrode included in one of the two
`
`electrode layers and an electrode included in the other of the two electrodelayers.
`
`However, Nagaoetal. discloses
`
`acontrol circuit (i.e. drive circuit 110, see Figure 34a-b) connected to each electrode 62
`
`included in the two electrode layers 62, wherein the plurality of electrodes 62b (see Fig. 50)
`
`overlap at least parts of the plurality of non-waveguide areas, respectively, when seen from an
`
`angle parallel with a direction perpendicularto the first reflecting surface or the secondreflecting
`
`surface (see e.g. Figure 40 where non-waveguide areas include SiO2), and
`
`

`

`Application/Control Number: 17/391,05 1
`Art Unit: 2871
`
`Page 7
`
`the control circuit executes, during operation,at least either a first operation of providing
`
`a potential difference between any adjacent two of the plurality of electrodes and a second
`
`operation of providing a potential difference between an electrode included in one of the two
`
`electrode layers and an electrode included in the other of the two electrodelayers(see e.g.
`
`Figures 34a-b andnote that a voltage is applied to the electrodes by the drive circuit 110
`
`between the opposing electrodes).
`
`Given the teachings of Nagaoetal., it would have been obvious to one of ordinary skill
`
`in the art before the effective filing date of the claimed invention to modify the device of
`
`Weidlich, in view of Dong etal., with a control circuit connected to each electrode included in
`
`the two electrode layers, wherein the plurality of electrodes overlap at least parts of the plurality
`
`of non-waveguide areas, respectively, when seen from an angle parallel with a direction
`
`perpendicular to the first reflecting surface or the second reflecting surface, and the control
`
`circuit executes, during operation, at least either a first operation of providing a potential
`
`difference between any adjacent two of the plurality of electrodes and a second operation of
`
`providing a potential difference between an electrode included in one of the two electrode layers
`
`and an electrode included in the otherof the two electrode layers.
`
`Doing so would provide a means for applying voltage to the waveguideregions, thus
`
`allowing the refractive index of the regions to be changed.
`
`In regardto claim 6, Weidlich, in view of Donget al., discloses the limitations as
`
`applied to claim | above, butfails to disclose
`
`wherein the plurality of electrodes include a plurality of first electrodes overlapping at
`
`least parts of the plurality of non-waveguide areas, respectively, when seen from an angle
`
`parallel with a direction perpendicularto the first reflecting surface or the secondreflecting
`
`

`

`Application/Control Number: 17/391,05 1
`Art Unit: 2871
`
`Page 8
`
`surface and one or more second electrodes overlappingat least parts of the one or moreoptical
`
`waveguide areas, respectively, when seen from an angle parallel with the direction perpendicular
`
`to the first reflecting surface or the secondreflecting surface.
`
`However, Nagaoetal. discloses
`
`wherein the plurality of electrodes 62a,b include a plurality of first electrodes
`
`overlappingat least parts of the plurality of non-waveguide areas (see e.g. Figure 40 where non-
`
`waveguide areas include SiO2), respectively, when seen from an angle parallel with a direction
`
`perpendicular to the first reflecting surface 30/40 or the second reflecting surface 30/40 and one
`
`or more secondelectrodes overlappingat least parts of the one or more optical waveguide areas
`
`20, respectively, when seen from an angle parallel with the direction perpendicularto the first
`
`reflecting surface or the secondreflecting surface.
`
`Given the teachings of Nagaoetal., it would have been obvious to one of ordinary skill
`
`in the art before the effective filing date of the claimed invention to modify the device of
`
`Weidlich, in view of Dong etal., with wherein the plurality of electrodes include a plurality of
`
`first electrodes overlappingat least parts of the plurality of non-waveguideareas, respectively,
`
`whenseen from an angle parallel with a direction perpendicularto the first reflecting surface or
`
`the second reflecting surface and one or more second electrodes overlappingat least parts of the
`
`one or more optical waveguide areas, respectively, when seen from an angle parallel with the
`
`direction perpendicularto the first reflecting surface or the second reflecting surface.
`
`Doing so would provide a means for applying voltage to the waveguideregions, thus
`
`allowing the refractive index of the regions to be changed.
`
`In regard to claim 7, Weidlich, in view of Donget al., discloses the limitations as
`
`applied to claim | above, butfails to disclose
`
`

`

`Application/Control Number: 17/391,05 1
`Art Unit: 2871
`
`Page 9
`
`a control circuit connected to each electrode included in the two electrode layers, wherein
`
`the plurality of electrodes include a plurality of first electrodes overlappingat least parts of the
`
`plurality of non-waveguideareas, respectively, when seen from an angle parallel with a direction
`
`perpendicular to the first reflecting surface or the second reflecting surface and one or more
`
`second electrodes overlapping at least parts of the one or more optical waveguide areas,
`
`respectively, when seen from an angle parallel with the direction perpendicular to the first
`
`reflecting surface or the secondreflecting surface, and
`
`the control circuit executes, during operation,at least either a first operation of providing
`
`a potential difference between any adjacent two of the plurality of first electrodes and a second
`
`operation of providing a potential difference between an electrode included in one of the two
`
`electrode layers and an electrode included in the other of the two electrodelayers.
`
`However, Nagaoet al., discloses
`
`acontrol circuit(i.e. drive circuit 110, see Figure 34a-b) connected to each electrode
`
`includedin the two electrode layers 62/62a,b, wherein the plurality of electrodes include a
`
`plurality of first electrodes overlappingat least parts of the plurality of non-waveguide areas (see
`
`e.g. Figure 40 where non-waveguide areas include SiO2), respectively, when seen from an angle
`
`parallel with a direction perpendicularto the first reflecting surface 30/40 or the second
`
`reflecting surface 30/40 and one or more second electrodes 62/62a,b, overlappingat least parts
`
`of the one or more optical waveguide areas 20, respectively, when seen from an angle parallel
`
`with the direction perpendicularto the first reflecting surface or the secondreflecting surface
`
`30/40, and
`
`the control circuit executes, during operation,at least either a first operation of providing
`
`a potential difference between any adjacent two of the plurality of first electrodes and a second
`
`

`

`Application/Control Number: 17/391,05 1
`Art Unit: 2871
`
`Page 10
`
`operation of providing a potential difference between an electrode included in one of the two
`
`electrode layers and an electrode included in the other of the two electrodelayers(see e.g.
`
`Figures 34a-b andnote that a voltage is applied to the electrodes by the drive circuit 110
`
`between the opposing electrodes).
`
`Given the teachings of Nagaoet al., it would have been obvious to one of ordinary skill
`
`in the art before the effective filing date of the claimed invention to modify the device of
`
`Weidlich, in view of Dongetal., with a control circuit connected to each electrode included in
`
`the two electrode layers, wherein the plurality of electrodes include a plurality offirst electrodes
`
`overlappingat least parts of the plurality of non-waveguideareas, respectively, when seen from
`
`an angle parallel with a direction perpendicularto the first reflecting surface or the second
`
`reflecting surface and one or more secondelectrodes overlappingat least parts of the one or more
`
`optical waveguide areas, respectively, when seen from an angle parallel with the direction
`
`perpendicular to the first reflecting surface or the second reflecting surface, and
`
`the control circuit executes, during operation,at least either a first operation of providing a
`
`potential difference between any adjacent two ofthe plurality of first electrodes anda second
`
`operation of providing a potential difference between an electrode included in one of the two
`
`electrode layers and an electrode included in the other of the two electrodelayers.
`
`Doing so would provide a means for applying voltage to the waveguideregions, thus
`
`allowing the refractive index of the regions to be changed.
`
`In regardto claim 10, Weidlich, in view of Dong et al., discloses the limitations as
`
`applied to claim 1 above, butfails to disclose
`
`wherein the plurality of non-waveguideareas include first and second non- waveguide
`
`areas adjacentto each other,the plurality of electrodes include twofirst electrodes adjacentto
`
`

`

`Application/Control Number: 17/391,05 1
`Art Unit: 2871
`
`Page 11
`
`eachother, oneof the twofirst electrodes andthe first non-waveguide areaat least partially
`
`overlap each other when seen from anangle parallel with a direction perpendicularto the first
`
`reflecting surface or the secondreflecting surface, and the other of the two first electrodes and
`
`the second non-waveguidearea atleast partially overlap each other when seen from an angle
`
`parallel with the direction perpendicular to the first reflecting surface or the secondreflecting
`
`surface.
`
`However, Nagaoetal. discloses
`
`wherein the plurality of non-waveguideareas(see e.g. Figure 40 where non-waveguide
`
`areas include SiO2) include first and second non-waveguide areas adjacent to each other, the
`
`plurality of electrodes 62/62a,b include two first electrodes adjacent to each other, one of the two
`
`first electrodes andthe first non-waveguideareaatleast partially overlap each other when seen
`
`from an angle parallel with a direction perpendicularto the first reflecting surface or the second
`
`reflecting surface, and the other of the twofirst electrodes and the second non-waveguidearea at
`
`least partially overlap each other when seen from an angle parallel with the direction
`
`perpendicular to the first reflecting surface or the secondreflecting surface (see e.g. Figure 40).
`
`Given the teachings of Nagaoetal., it would have been obvious to one of ordinary skill
`
`in the art before the effective filing date of the claimed invention to modify the device of
`
`Weidlich, in view of Dong et al. with wherein the plurality of non-waveguide areasincludefirst
`
`and second non- waveguide areas adjacentto each other,the plurality of electrodes include two
`
`first electrodes adjacent to each other, one ofthe twofirst electrodes and the first non-waveguide
`
`area at least partially overlap each other when seen from an angle parallel with a direction
`
`perpendicular to the first reflecting surface or the secondreflecting surface, and the otherof the
`
`twofirst electrodes and the second non-waveguideareaatleast partially overlap each other when
`
`

`

`Application/Control Number: 17/391,05 1
`Art Unit: 2871
`
`Page 12
`
`seen from an angle parallel with the direction perpendicularto the first reflecting surface or the
`
`second reflecting surface.
`
`Doing so would provide a means for applying voltage to the waveguideregions, thus
`
`allowing the refractive index of the regions to be changed.
`
`Conclusion
`
`7.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examinershould be directed to JESSICA M MERLIN whosetelephone numberis (57 1)270-
`
`3207. The examiner can normally be reached Monday-Thursday 7:00AM-5:00PM.
`
`Examinerinterviews are available via telephone, in-person, and video conferencing using
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`encouragedto use the USPTO Automated Interview Request (AIR)at
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`
`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
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`supervisor, Michael Caley can be reached on (571) 272-2286. The fax phone numberfor the
`
`organization where this application or proceedingis assignedis 571-273-8300.
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`Information regarding the status of published or unpublished applications may be
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`obtained from Patent Center. Unpublished application information in Patent Centeris available
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`to registered users. To file and manage patent submissionsin Patent Center,visit:
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`filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC)
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`

`

`Application/Control Number: 17/391,05 1
`Art Unit: 2871
`
`Page 13
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`at 866-217-9197 (toll-free). If you would like assistance from a USPTO CustomerService
`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`JESSICA M MERLIN/
`Primary Examiner, Art Unit 2871
`
`