DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. The Applicant's submission filed on 10/31/2025 has been entered.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
No claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claims 27-28 and 54 are objected to because of the following informalities:
in claim 27, line 15: “match and/or fit” should be “matches and/or fits”;
in claim 28, line 6: “match and/or fit” should be “matches and/or fits”;
in claim 54, line 16: the comma after “program” should be deleted;
in claim 54, line 17: the comma after “thereon” should be deleted; and
in claim 54, line 17: “is improved” should be “are improved”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 27-28 and 54-55 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 27 recites “wherein the evaluating of the pressure values via the computer program is improved via a comparison with data of a known optimal shoe” in lines 16-17, which is clearly a computer-implemented recitation. Under the current guidelines of 35 USC 112, the specification fails to support a claim that defines the invention in functional language specifying a desired result when the specification does not sufficiently identify how the invention achieves the claimed function. For there to be sufficient disclosure for a computer-implemented claim limitation, it is not enough that one skilled in the art could write a program to achieve the claimed function. Rather, the specification must disclose the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that performs the claimed function in sufficient detail such that one of ordinary skill can reasonably conclude that the inventor invented the claimed subject matter. See Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, Fed. Reg. Vol. 76, No. 27, February 9, 2011, p. 7162-7175 (“the Supplementary Examination Guidelines”). With respect to claim 27, this claim is rejected under §112, first paragraph, based on lack of written description because the specification fails to provide the algorithm (e.g., the necessary steps and/or flowcharts) that performs the claimed function of improving the evaluating of the pressure values via the computer program via a comparison with data of a known optimal shoe. It is not shown in the specification what this comparison entails, what metrics are used, how are the metric judged, how does the comparison lead to an improvement, what is the nature of the improvement, and what is the nature of the data of the known optimal shoe. Paragraphs 0035 and 0072 of the specification discuss this limitation, but provide no answers to these issues and provide no specifics as to how the evaluating of the pressure values via the computer program is improved via a comparison with data of a known optimal shoe.
Claim 28 is rejected by virtue of its dependence from claim 27.
Claim 54 recites “wherein the evaluating of the pressure values via the computer program, and the manufacturing of the individual shoe based thereon, is improved via a comparison with data of a known optimal shoe” in lines 16-18, which is clearly a computer-implemented recitation. See the above rejection of claim 27 and the Supplementary Examination Guidelines regarding sufficient disclosure for a computer-implemented claim limitation. With respect to claim 54, this claim is rejected under §112, first paragraph, based on lack of written description because the specification fails to provide the algorithm (e.g., the necessary steps and/or flowcharts) that performs the claimed function of improving the evaluating of the pressure values via the computer program and the manufacturing of the individual shoe based thereon via a comparison with data of a known optimal shoe. It is not shown in the specification what this comparison entails, what metrics are used, how are the metric judged, how does the comparison lead to an improvement, what is the nature of the improvement, and what is the nature of the data of the known optimal shoe. Paragraphs 0035 and 0072 of the specification discuss this limitation, but provide no answers to these issues and provide no specifics as to how the evaluating of the pressure values via the computer program and the manufacturing of the individual shoe based thereon are improved via a comparison with data of a known optimal shoe.
Claim 55 is rejected by virtue of its dependence from claim 54.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 27-28 and 54-55 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 27 recites “wherein the evaluating of the pressure values via the computer program is improved via a comparison with data of a known optimal shoe” in lines 16-17, which renders the claim indefinite. First, it is not clear to what the data of the known optimal shoe is being compared with. Second, “optimal” is a relative term that renders the claim indefinite. The term “optimal” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear what defines an optimal shoe. What metrics are used and how are those metrics judged so that one of ordinary skill in the art could determine a shoe is optimal? These issues render claim 27 indefinite.
Claim 28 is rejected by virtue of its dependence from claim 27.
Claim 54 recites “wherein the evaluating of the pressure values via the computer program, and the manufacturing of the individual shoe based thereon, is improved via a comparison with data of a known optimal shoe” in lines 16-18, which renders the claim indefinite. First, it is not clear to what the data of the known optimal shoe is being compared with. Second, “optimal” is a relative term that renders the claim indefinite. The term “optimal” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear what defines an optimal shoe. What metrics are used and how are those metrics judged so that one of ordinary skill in the art could determine a shoe is optimal? These issues render claim 54 indefinite.
Claim 55 is rejected by virtue of its dependence from claim 54.
Claim Rejections - 35 USC § 103
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.
Claims 27-28 and 54-55 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2014/0182170 (Wawrousek)(previously cited), in view of JP WO 2002-040941 (AIST1). Citations to AIST will refer to the machine English translation that accompanies this Office Action.
With respect to claim 27, Wawrousek teaches a method for measuring and evaluating a shoe for a user, the method comprising:
providing a measuring surface comprising a plurality of pressure sensors (providing a plurality of sensors on the ground in which the area of the ground with the sensors is the measuring surface; paragraph 0185 of Wawrousek);
acquiring pressure values with the plurality of pressure sensors via the user wearing the shoe on the user's foot while at least one of standing on, walking on, and running on the measuring surface so that at least some of the plurality of pressure sensors are touched by an external bottom side of the shoe and thereby subjected to a pressure, wherein the shoe on the user's foot does not comprise any sensors (acquiring the pressure values from the plurality of sensors on the ground via the user wearing the shoe; paragraphs 0178-0185 of Wawrousek);
evaluating the pressure values via a computer program so as to obtain an evaluation on at least one of a shape of a bottom of the shoe, a dimension of the bottom of the shoe, and a material of the bottom of the shoe (evaluating the pressure values so as to obtain performance metrics so as to obtain structural characteristics based on the performances metric, the structural characteristics being, for example, the size, shape, and distribution of the traction elements and/or the size, shape, and material of a portion of the sole so as to better fit the wearer; paragraphs 0015, 0018, 0162, 0178-0185, 0201-0205, 0223, and 0234-0238 of Wawrousek); and
determining, based on the evaluation, whether the at least one of the shape of the bottom of the shoe, the dimension of the bottom of the shoe, and the material of the bottom of the shoe match and/or fit the user (the decision on the customization based on the structural characteristics is the determination of whether the structural characteristics match or fit the user; paragraphs 0015, 0018, 0162, 0201-0205, 0223, and 0234-0238 of Wawrousek).
Wawrousek teaches the evaluation of the pressure values so as to obtain performance metrics. These performance metrics are used to obtain structural characteristics, for example, the size, shape, and distribution of the traction elements and/or the size, shape, and material of a portion of the sole so as to better fit the wearer (paragraphs 0015, 0018, 0162, 0201-0205, 0223, and 0234-0238 of Wawrousek). Wawrousek does not teach that the evaluating of the pressure values via the computer program is improved via a comparison with data of a known optimal shoe. However, AIST discloses the determination of a shoe using a person’s footprint information and the comparison of that information with the ideal footprint information of a series of shoes in a comparison program so as to result in the specifying the ideal footprint information of the optimal shoes and the selection of the shoe (pages 7-8 and 23-24 of AIST). The shoes can be further altered (page 24 of AIST). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine a shoe before modification using a person’s footprint information and to compare that information with the ideal footprint information of a series of shoes in a comparison program so as to result in the specifying the ideal footprint information of the optimal shoes and the selection of the shoe since it provides a better fit to the user. Thus, the combination teaches or suggests that the evaluating of the pressure values via the computer program is improved via a comparison with data of a known optimal shoe (the determination, comparison, specifying, and selection of the shoe before modification, as suggested by AIST).
With respect to claim 28, the combination teaches or suggests further evaluating the pressure values via the computer program to obtain a further evaluation on at least one of a shape of a shoe upper of the shoe and a dimension of the shoe upper of the shoe (evaluating the pressure values so as to obtain performance metrics so as to obtain structural characteristics based on the performance metrics, the structural characteristics being, for example, the size, shape, and material of a portion of the upper so as to better fit the wearer; paragraphs 0018, 0162, 0201-0205, 0223, and 0234-0238 of Wawrousek); and further determining, based on the further evaluation, whether at least one of the shape of the shoe upper of the shoe and the dimension of the shoe upper of the shoe match and/or fit the user (the decision on the customization based on the structural characteristic is the determination of whether the structural characteristics match or fit the user; paragraphs 0018, 0162, 0201-0205, 0223, and 0234-0238 of Wawrousek).
With respect to claim 54, Wawrousek teaches a method for manufacturing an individual shoe for a user, the method comprising:
providing a measuring surface comprising a plurality of pressure sensors (providing a plurality of sensors on the ground in which the area of the ground with the sensors is the measuring surface; paragraph 0185 of Wawrousek);
acquiring pressure values with the plurality of pressure sensors via the user wearing a shoe on the user's foot while at least one of standing on, walking on, and running on the measuring surface so that at least some of the plurality of pressure sensors are touched by an external bottom side of the shoe and thereby subjected to a pressure, wherein the shoe on the user's foot does not comprise any sensors (acquiring the pressure values from the plurality of sensors on the ground via the user wearing the shoe; paragraphs 0178-0185 of Wawrousek);
evaluating the pressure values
manufacturing, based on the evaluation, the individual shoe that is individually adapted to the user based on the at least one of the shape of the bottom of the shoe, the dimension of the bottom of the shoe, and the material of the bottom of the shoe (making the customized shoe based on the structural characteristics; paragraphs 0015, 0018, 0162, 0201-0205, 0223, and 0234-0238 of Wawrousek).
Wawrousek teaches the evaluation of the pressure values so as to obtain performance metrics. These performance metrics are used to obtain structural characteristics, for example, the size, shape, and distribution of the traction elements and/or the size, shape, and material of a portion of the sole so as to better fit the wearer (paragraphs 0015, 0018, 0162, 0201-0205, 0223, and 0234-0238 of Wawrousek). Wawrousek does not teach that the evaluating of the pressure values via the computer program, and the manufacturing of the individual shoe based thereon, is improved via a comparison with data of a known optimal shoe. However, AIST discloses the determination of a shoe using a person’s footprint information and the comparison of that information with the ideal footprint information of a series of shoes in a comparison program so as to result in the specifying the ideal footprint information of the optimal shoes and the selection of the shoe (pages 7-8 and 23-24 of AIST). The shoes can be further altered (page 24 of AIST). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine a shoe before modification using a person’s footprint information and to compare that information with the ideal footprint information of a series of shoes in a comparison program so as to result in the specifying the ideal footprint information of the optimal shoes and the selection of the shoe since it provides a better fit to the user. Thus, the combination teaches or suggests that the evaluating of the pressure values via the computer program, and the manufacturing of the individual shoe based thereon, is improved via a comparison with data of a known optimal shoe (this determination, comparison, specifying, and selection of the shoe before modification, as suggested by AIST).
With respect to claim 55, the combination teaches or suggests further evaluating the pressure values via the computer program to obtain a further evaluation on at least one of a shape of a shoe upper of the shoe and a dimension of the shoe upper of the shoe (evaluating the pressure values so as to obtain performance metrics so as to obtain structural characteristics based on the performance metrics, the structural characteristics being, for example, the size, shape, and material of a portion of the upper to better fit the wearer; paragraphs 0018, 0162, 0201-0205, 0223, and 0234-0238 of Wawrousek); and wherein the manufacturing of the individual shoe is further based on at least one of the shape of the shoe upper of the shoe and the dimension of the shoe upper of the shoe of the further evaluation (making the customized shoe based on the structural characteristics; paragraphs 0018, 0162, 0201-0205, 0223, and 0234-0238 of Wawrousek).
Response to Arguments
The Applicant’s arguments filed 10/31/2025 have been fully considered.
Claim objections
In view of the claim amendments filed on 10/31/2025, the previous claim objections are withdrawn. However, there are new grounds of claim objections.
35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph
There are new grounds of claim rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph.
35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph
In view of the claim amendments filed on 10/31/2025, the previous claim rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, are withdrawn.
There are new grounds of claim rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
Prior art rejections
The Applicant’s arguments with respect to claims 27-28 and 54-55 have been considered but are not persuasive.
The Applicant asserts:
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[Citation of paragraphs 0178-0185 of Wawrousek]
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These arguments are not persuasive. Claim 27 recites “acquiring pressure values with the plurality of pressure sensors via the user wearing the shoe on the user's foot while at least one of standing on, walking on, and running on the measuring surface so that at least some of the plurality of pressure sensors are touched by an external bottom side of the shoe and thereby subjected to a pressure, wherein the shoe on the user's foot does not comprise any sensors [and] evaluating the pressure values” in lines 4-9. The interpretation of the claim, as best understood, by its plain and ordinary language is that (1) the user wears a shoe, (2) the user stands, walks, or runs on the measuring surface, and (3) the pressure sensors on the measuring surface acquire pressure values. Wawrousek teaches that (1) the user wears a shoe, (2) the user stands, walks, or runs on the measuring surface, and (3) the pressure sensors on the measuring surface acquire pressure values. For example, paragraph 0185 of Wawrousek states, “a plurality of pressure sensors may be positioned on the ground rather than be embedded in or attached to a portion of the foot, with the sensors measuring the pressure applied by a foot as it makes contact with the sensor array located on the ground”. Thus, Wawrousek clearly teaches that the pressure sensors on the measuring surface acquire pressure values. The shoe is worn by the user in all permutations of the method of Wawrousek (see paragraph 0172, 0174-0176, 0182, 0223, and 0239 of Wawrousek). That is, Wawrousek does not seem to disclose an embodiment without footwear or a shoe. The Applicant’s assertion that the pressure values of Wawrousek are of the foot when the user’s foot is wearing a shoe and running on a surface with pressure sensors while claims 27 and 54 require pressure values from the shoe when the user’s foot is wearing the shoe and running on a surface with pressure sensors is not a distinction at all. The pressures from the shoe and the foot are being measured since the foot is applying the pressure to the sensor via the shoe. The assertion that Wawrousek teaches pressure values from the foot and not the shoe while the claimed invention uses pressure values from the shoe and not the foot even though the same set up is being used does not comport with the facts or basic physics.
The Applicant asserts:
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This argument is not persuasive. First, claim 27 recites “acquiring pressure values with the plurality of pressure sensors via the user wearing the shoe on the user's foot while at least one of standing on… the measuring surface” in lines 4-6 while claim 54 recites “acquiring pressure values with the plurality of pressure sensors via the user wearing a shoe on the user's foot while at least one of standing on… the measuring surface” in lines 4-6. These recitations make it clear that the evaluation is not necessarily a dynamic functional rolling motion since standing does not involve a dynamic functional rolling motion. Thus, the Applicant’s analysis is not commensurate with the claim language. Second, Wawrousek clearly indicates that running can be performed during measurement (paragraphs 0178-0185 of Wawrousek). Thus, the technical difference asserted by the Applicant does not exist.
The Applicant asserts:
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[Citation of paragraph 0223 of Wawrousek]
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The arguments are not persuasive. First, as articulated in the above rejections, the pressure data is acquired from the plurality of sensors on the ground via the user wearing the shoe (paragraphs 0178-0185 of Wawrousek). Second, the pressure values are evaluated to obtain performance metrics so as to obtain structural characteristics based on the performance metrics, the structural characteristics being, for example, the size, shape, and distribution of the traction elements and/or the size, shape, and material of a portion of the sole so as to better fit the wearer (paragraphs 0015, 0018, 0162, 0178-0185, 0201-0205, 0223, and 0234-0238 of Wawrousek). Also, paragraphs 0202 and 0223 teach that pressure sensors are used to determine the input parameters for the determination of the performance metrics. The rejection must be read in its entirety as well as there should be appreciation for the full implications of the teachings in each cited paragraph of Wawrousek. As to the assertion that only paragraph 0223 of Wawrousek mentions pressure, it is respectfully submitted that the term “pressure” is used 168 times in Wawrousek, including where Wawrousek teaches the acquisition of the pressure values from the plurality of sensors on the ground via the user wearing the shoe (paragraphs 0178-0185 of Wawrousek).
With respect to the assertion that Wawrousek does not teach or suggest “wherein the evaluating of the pressure values via the computer program is improved via a comparison with data of a known optimal shoe” of claim 27 or “wherein the evaluating of the pressure values via the computer program, and the manufacturing of the individual shoe based thereon, is improved via a comparison with data of a known optimal shoe” of claim 54, there are new grounds of rejection based on AIST wherein AIST teaches or suggests these features.
The Applicant asserts:
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This argument is not persuasive since the U.S. Patent and Trademark Office is not bound by decisions by the EPO due to the different patent laws, different patent standards, and the differences in evidence and claim language in the corresponding EPO case.
For at least these reasons, the rejections of claims 27-28 and 54-55 are proper.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW KREMER whose telephone number is (571)270-3394. The examiner can normally be reached Monday - Friday 8 am to 6 pm; every other Friday off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JACQUELINE CHENG can be reached at (571) 272-5596. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW KREMER/Primary Examiner, Art Unit 3791
1 National Institute of Advanced Industrial Science and Technology