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 .
Examiner’s Comments
Applicants’ response filed on 10/9/2025 has been fully considered. Claims 1-32 and 42-64 are cancelled and claims 33-41 and 65-69 are pending.
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 40, 66 and 69 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.
Regarding claim 40, there is no support for having the optically variable effect come from “printing layers”. Original claim 40 disclosed that the optically variable effect came from a printing layer based on effect pigments compositions with viewing angle-dependent effect or with different colors and/or a multilayer structure. However, this does not teach the optically variable effect come from a generic printing layer.
Regarding claim 66, there is no support for broadening of where the “at least one luminescent substance” is located. The original claims and specification set forth the “at least one luminescent substance” is located. However, the claim 66 does not mention where the “at least one luminescent substance” is located which broadens beyond what was originally disclosed.
Dependent claim 69 does not cure the deficiencies of independent claim 65 and is rejected for the same rationale.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 33-41 and 66-69 are rejected under 35 U.S.C. 103 as being unpatentable over Schwenk et al (US 2010/0163747 A1) in view of Heim (US 2011/0114733 A1).
Regarding claim 33, Schwenk discloses a security transfer element for a value document (security element; paragraph [0085]) comprising a security element layer composite (security element; paragraph [0085]) where the security element layer composite
has a functional layer (transparent cover layer; Fig. 1 #4; paragraph [0085])
has an adhesive layer (Fig. 1 #5; paragraph [0055]);
has a lower side configured to connect to the carrier film (bottom surface of the adhesive layer #5; paragraph [0085]) and an upper side opposite the lower side (top surface of transparent cover layer #4; paragraph [0085]),
has at least one luminescent substance (a luminescent substance contained in the paper or plastic layer; Fig. 1 #3; paragraph [0085]), wherein the at least one luminescent substance is arranged in a luminescent substance layer (a paper or plastic layer; Fig. 1 #3; paragraph [0085]), wherein the luminescent substance layer is arranged on a side of the functional layer in the security element layer composite which is opposite the upper side (a luminescent substance contained in the paper or plastic layer; Fig. 1 #3; paragraph [0085]); and
wherein the adhesive layer is arranged on a side of the luminescent substance layer which faces away from lies opposite the upper side (adhesive layer is disposed on bottom surface of paper or plastic layer; paragraph [0085]);
wherein the at least one luminescent substance has a primary emission radiation in the wavelength range between 700 nm and 2100 nm (luminescent substance has emission in the infrared range; paragraph [0010]) and can be excited by an excitation radiation in the wavelength range between 700 nm and 2100 nm (luminescent substance has excitation in the near infrared range; paragraph [0010]).
The near infrared range has a wavelength range from 780 nm to 2500 nm.
Schwenk does not disclose the security transfer element comprising a carrier film detachably connected to the security element layer composite.
However, Heim discloses a security transfer element (security element; paragraph [0019]) comprising a carrier film detachably connected to the security element layer composite (a carrier foil being removed from the remaining layer structure; paragraph [0019]), a liquid crystal layer having a color-shift effect appearing in brilliant colors (paragraph [0060]) and wherein the security element achieves a visual impression (paragraph [0043]).
It would have been obvious to one of ordinary skill in the art to modify the security transfer element of Schwenk to include the carrier foil of Heim on the adhesive layer of Schwenk because doing so would provide protection for the surface of the adhesive layer before transfer to a value document.
Schwenk does not disclose the security transfer element comprising the functional layer developing an optically variable effect for a viewer where the optically variable effect comprises a variable optical impression for a viewer depending on the viewing or illumination angle and the functional layer configured to be opaque such that the primary emission radiation of the at least one luminescent substance does not pass through.
However, Heim discloses a security transfer element (security element; paragraph [0019]) comprising an optically variable effect comprising a variable optical impression for a viewer depending on the viewing or illumination angle (security element achieves a visual impression; paragraph [0043]) and the functional layer configured to be opaque to the primary emission radiation of the at least one luminescent substance such that the primary emission radiation of the at least one luminescent substance does not pass through (a liquid crystal layer having a color-shift effect appearing in brilliant colors; paragraph [0060]).
It would have been obvious to one of ordinary skill in the art to modify the security element of Schwenk to include the liquid crystal layer of Heim between the transparent cover layer and paper or plastic layer of Schwenk because doing so would achieve a desired visual impression (paragraph [0043] of Heim).
Regarding claim 34, Schwenk and Heim discloses the security transfer element of claim 33 as noted above and Schwenk discloses the security transfer element comprising primary emission radiation of the at least one luminescent substance of the security element layer composite lies in a wavelength range between 900 nm and 1300 nm (luminescent substance having emission in the infrared range; paragraph [0010]).
The luminescent substance having emission in the infrared range overlaps the claimed range for the primary emission radiation in a wavelength range between 900 nm and 1300 nm.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to provide protection for a value document (paragraphs [0007]-[0010] of Schwenk). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 35, Schwenk and Heim discloses the security transfer element of claim 33 as noted above and Schwenk discloses the security transfer element comprising no additional emission comprising an anti-Stokes emission in a visible wavelength range (luminescent substance having an Stokes emission; paragraph [0011])
The luminescent substance having an Stokes emission is not considered to be an additional anti-Stokes emission that can be visually recognized by humans.
Regarding claim 36, Schwenk and Heim discloses the security transfer element of claim 33 as noted above and Schwenk discloses the security transfer element comprising the at least one luminescent substance comprising a doped inorganic pigment with the dopant neodymium (luminescent substance having the formula XZO4 where X is Nd; paragraph [0012]).
Regarding claim 37, Schwenk and Heim discloses the security transfer element of claim 33 as noted above.
Schwenk does not disclose the security element comprising the luminescent substance having a grain size less than 15 µm.
However, it would have been obvious to one of ordinary skill in the art to adjust the size of the luminescent substance to be a grain size less than 15 µm because doing so would provide the desired luminescence in a layer while not being too large so as to protrude from the surface of the layer.
Regarding claim 38, Schwenk and Heim discloses the security transfer element of claim 33 as noted above.
Schwenk does not disclose the security transfer element comprising the functional layer configured to be reflective and/or absorbent.
However, Heim discloses the security transfer element comprising the functional layer configured to be reflective and/or absorbent (thin-film element comprises a reflection layer, an absorber layer and a dielectric layer; paragraph [0044]).
It would have been obvious to one of ordinary skill in the art to modify the security element of Schwenk to include the liquid crystal layer and thin-film element of Heim between the transparent cover layer and paper or plastic layer of Schwenk because doing so would achieve a desired visual impression (paragraph [0043] of Heim).
Regarding claim 39, Schwenk and Heim discloses the security transfer element of claim 33 as noted above.
Schwenk does not disclose the security element comprising the functional layer comprising a metallic coating in certain regions and wherein the metallic coating is configured for forming on the side of the functional layer which faces away from the viewer or is configured for forming on the side of the functional layer which faces the viewer.
However, Heim discloses a security element comprising the functional layer comprising a metallic coating in certain regions and wherein the metallic coating is configured for forming on the side of the functional layer which faces away from the viewer or is configured for forming on the side of the functional layer which faces the viewer (thin-film element comprises a reflection layer, an absorber layer and a dielectric layer and wherein the reflection layer comprises a metal layer; paragraph [0044]).
It would have been obvious to one of ordinary skill in the art to modify the security element of Schwenk to include the liquid crystal layer and thin-film element of Heim between the transparent cover layer and paper or plastic layer of Schwenk because doing so would achieve a desired visual impression (paragraph [0043] of Heim).
Regarding claim 40, Schwenk and Heim discloses the security transfer element of claim 33 as noted above.
Schwenk does not disclose the security element comprising the functional layer comprising layers of liquid crystalline material.
However, Heim discloses a security element comprising the functional layer comprising layers of liquid crystalline material (a liquid crystal layer having a color-shift effect appearing in brilliant colors; paragraph [0060]).
It would have been obvious to one of ordinary skill in the art to modify the security element of Schwenk to include the liquid crystal layer of Heim between the transparent cover layer and paper or plastic layer of Schwenk because doing so would achieve a desired visual impression (paragraph [0043] of Heim).
Regarding claim 41, Schwenk and Heim discloses the security transfer element of claim 33 as noted above.
Schwenk does not disclose the security element comprising a scattering layer with light scattering properties and arranged adjacent to the luminescent substance layer.
However, Heim discloses a security element comprising a scattering layer with light scattering properties and arranged adjacent to the luminescent substance layer (carrier foil having an embossed diffraction pattern; paragraph [0080]).
It would have been obvious to one of ordinary skill in the art to modify the security transfer element of Schwenk to include the carrier foil of Heim on the adhesive layer of Schwenk because doing so would provide protection for the surface of the adhesive layer before transfer to a value document.
Regarding claim 66, Schwenk discloses a security transfer element for a value document (security element; paragraph [0085]) comprising a security element layer composite (security element; paragraph [0085]) where the security element layer composite
has a functional layer (transparent cover layer; Fig. 1 #4; paragraph [0085])
has an adhesive layer (Fig. 1 #5; paragraph [0055]);
has a lower side configured to connect to the carrier film (bottom surface of the adhesive layer #5; paragraph [0085]) and an upper side opposite the lower side (top surface of transparent cover layer #4; paragraph [0085]), wherein the adhesive layer is arranged on a side of the luminescent substance layer which faces away from lies opposite the upper side (adhesive layer is disposed on bottom surface of paper or plastic layer; paragraph [0085]); AND
has at least one luminescent substance (a luminescent substance contained in the paper or plastic layer; Fig. 1 #3; paragraph [0085]), and
wherein the at least one luminescent substance has a primary emission radiation in the wavelength range between 700 nm and 2100 nm (luminescent substance has emission in the infrared range; paragraph [0010]) and can be excited by an excitation radiation in the wavelength range between 700 nm and 2100 nm (luminescent substance has excitation in the near infrared range; paragraph [0010]).
The near infrared range has a wavelength range from 780 nm to 2500 nm.
Schwenk does not disclose the security element comprising the luminescent substance having a grain size less than 15 µm.
However, it would have been obvious to one of ordinary skill in the art to adjust the size of the luminescent substance to be a grain size less than 15 µm because doing so would provide the desired luminescence in a layer while not being too large so as to protrude from the surface of the layer.
Schwenk does not disclose the security transfer element comprising a carrier film detachably connected to the security element layer composite.
However, Heim discloses a security transfer element (security element; paragraph [0019]) comprising a carrier film detachably connected to the security element layer composite (a carrier foil being removed from the remaining layer structure; paragraph [0019]), a liquid crystal layer having a color-shift effect appearing in brilliant colors (paragraph [0060]) and wherein the security element achieves a visual impression (paragraph [0043]).
It would have been obvious to one of ordinary skill in the art to modify the security transfer element of Schwenk to include the carrier foil of Heim on the adhesive layer of Schwenk because doing so would provide protection for the surface of the adhesive layer before transfer to a value document.
Schwenk does not disclose the security transfer element comprising the functional layer developing an optically variable effect for a viewer where the optically variable effect comprises a variable optical impression for a viewer depending on the viewing or illumination angle and the functional layer configured to be opaque such that the primary emission radiation of the at least one luminescent substance does not pass through.
However, Heim discloses a security transfer element (security element; paragraph [0019]) comprising an optically variable effect comprising a variable optical impression for a viewer depending on the viewing or illumination angle (security element achieves a visual impression; paragraph [0043]) and the functional layer configured to be opaque to the primary emission radiation of the at least one luminescent substance such that the primary emission radiation of the at least one luminescent substance does not pass through (a liquid crystal layer having a color-shift effect appearing in brilliant colors; paragraph [0060]).
It would have been obvious to one of ordinary skill in the art to modify the security element of Schwenk to include the liquid crystal layer of Heim between the transparent cover layer and paper or plastic layer of Schwenk because doing so would achieve a desired visual impression (paragraph [0043] of Heim).
Regarding claim 67, Schwenk and Heim discloses the security transfer element of claim 33 as noted above.
Schwenk does not disclose the security transfer element comprising the functional layer completely covering the luminescent substance layer.
However, Heim discloses a security element comprising a functional layer completely covering the luminescent substance layer (thin-film element comprises a reflection layer, an absorber layer and a dielectric layer; paragraph [0044 and [0060]).
The thin-film element in Fig. 2 is provided as a continuous layer. This reads on the claimed functional layer completely covering the luminescent substance layer.
Regarding claim 68, Schwenk and Heim discloses the security transfer element of claim 33 as noted above.
Since the structure of the security element of Schwenk and Hein is the same as the structure of the security transfer element as claimed in claim 66, the primary emission radiation after being transferred to a value document would inherently be more recognizable at a lower side opposite the upper side than at the upper side.
Regarding claim 69, Schwenk and Heim discloses the security transfer element of claim 33 as noted above.
Since the structure of the security element of Schwenk and Hein is the same as the structure of the security transfer element as claimed in claim 66, the primary emission radiation of the at least one luminescent substance would inherently not be recognizable at the upper side.
Claim 65 is rejected under 35 U.S.C. 103 as being unpatentable over Schwenk et al (US 2010/0163747 A1) in view of Heim (US 2011/0114733 A1) in further view of Kecht et al (WO 2016/015872 A1).
Regarding claim 65, Schwenk discloses a security transfer element for a value document (security element; paragraph [0085]) comprising a security element layer composite (security element; paragraph [0085]) where the security element layer composite
has a functional layer (transparent cover layer; Fig. 1 #4; paragraph [0085])
has an adhesive layer (Fig. 1 #5; paragraph [0055]);
has a lower side configured to connect to the carrier film (bottom surface of the adhesive layer #5; paragraph [0085]) and an upper side opposite the lower side (top surface of transparent cover layer #4; paragraph [0085]), wherein the adhesive layer is arranged on a side of the luminescent substance layer which faces away from lies opposite the upper side (adhesive layer is disposed on bottom surface of paper or plastic layer; paragraph [0085]);
has at least one luminescent substance (a luminescent substance contained in the paper or plastic layer; Fig. 1 #3; paragraph [0085]),
wherein the at least one luminescent substance has a primary emission radiation in the wavelength range between 700 nm and 2100 nm (luminescent substance has emission in the infrared range; paragraph [0010]) and can be excited by an excitation radiation in the wavelength range between 700 nm and 2100 nm (luminescent substance has excitation in the near infrared range; paragraph [0010]).
The near infrared range has a wavelength range from 780 nm to 2500 nm.
Schwenk does not disclose the security transfer element comprising a carrier film detachably connected to the security element layer composite.
However, Heim discloses a security transfer element (security element; paragraph [0019]) comprising a carrier film detachably connected to the security element layer composite (a carrier foil being removed from the remaining layer structure; paragraph [0019]), a liquid crystal layer having a color-shift effect appearing in brilliant colors (paragraph [0060]) and wherein the security element achieves a visual impression (paragraph [0043]).
It would have been obvious to one of ordinary skill in the art to modify the security transfer element of Schwenk to include the carrier foil of Heim on the adhesive layer of Schwenk because doing so would provide protection for the surface of the adhesive layer before transfer to a value document.
Schwenk does not disclose the security transfer element comprising the functional layer developing an optically variable effect for a viewer where the optically variable effect comprises a variable optical impression for a viewer depending on the viewing or illumination angle and the functional layer configured to be opaque such that the primary emission radiation of the at least one luminescent substance does not pass through.
However, Heim discloses a security transfer element (security element; paragraph [0019]) comprising an optically variable effect comprising a variable optical impression for a viewer depending on the viewing or illumination angle (security element achieves a visual impression; paragraph [0043]) and the functional layer configured to be opaque to the primary emission radiation of the at least one luminescent substance such that the primary emission radiation of the at least one luminescent substance does not pass through (a liquid crystal layer having a color-shift effect appearing in brilliant colors; paragraph [0060]).
It would have been obvious to one of ordinary skill in the art to modify the security element of Schwenk to include the liquid crystal layer of Heim between the transparent cover layer and paper or plastic layer of Schwenk because doing so would achieve a desired visual impression (paragraph [0043] of Heim).
Schwenk does not disclose the security element comprising the at least one luminescent substance homogeneously dispersed in the adhesive layer.
However, Kecht discloses a security transfer element comprising at least one luminescent substance homogeneously dispersed in the adhesive layer (an adhesive layer comprising an inorganic chemically unstable feature, the inorganic chemically unstable feature being luminescent and used in a non-visible wavelength and an infrared spectral luminescent feature substance excited at a wavelength in a range from 900 to 1000 nm and showing an emission at 1610 nm; pgs. 3, 7 and 13-14 of translation).
It would have been obvious to one of ordinary skill in the art having the teachings of Schwenk and Kecht before him or her, to modify the security element of Schwenk to include the luminescent inorganic chemically unstable feature in the adhesive layer of Schwenk because doing so would provide the desired luminescent effect for improved anti-counterfeiting.
Response to Arguments
Applicant’s arguments, see pg. 11, filed 10/9/2025, with respect to the objection to the specification has been fully considered and are persuasive.
The objection to the specification has been withdrawn.
Applicant’s arguments, see pg. 11, filed 10/9/2025, with respect to the claim objection has been fully considered and are persuasive.
The claim objection has been withdrawn.
Applicant’s arguments, see pg. 11, filed 10/9/2025, with respect to the 112(a) rejection of claim 65 has been fully considered and are persuasive.
The 112(a) rejection of claim 65 has been withdrawn.
Applicant’s arguments, see pg. 15, filed 10/9/2025, with respect to the 112(b) rejections have been fully considered and are persuasive.
The 112(b) rejections have been withdrawn.
Applicant's arguments filed 10/9/2025 have been fully considered but they are not persuasive.
Applicants argue that claim 40 is supported by Applicant’s Specification.
This argument is not persuasive as original claim 40 discloses that the optically variable effect came from a printing layer based on effect pigments compositions with viewing angle-dependent effect or with different colors and/or a multilayer structure. However, this does not teach the optically variable effect come from a generic printing layer.
Applicants argue that claim 66 is supported by Applicant’s Specification.
This argument is not persuasive as the original claims and specification set forth the specific location of where “at least one luminescent substance” is located. However, the claim 66 does not mention where the “at least one luminescent substance” is located which broadens beyond what was originally disclosed.
Applicants argue that there is no reference to the arbitrary desired visual impression asserted and no consideration of a luminescent substance at all, let alone of a functional layer configured to be opaque to the primary emission radiation of the at least one luminescent substance, such that the primary emission radiation of the at least one luminescent substance does not pass through the functional layer.
This argument is not persuasive as the thin film element provides a visual impression in Heim. The same thin film element includes a reflection layer of a metal layer which would provide a functional layer configured to be opaque to the primary emission radiation of the at least one luminescent substance such that the primary emission radiation of the at least one luminescent substance does not pass through the functional layer. The visual impression provided by the thin film element can be varied providing angle dependent color impression results in the visible spectral range (see paragraph [0049] of Heim).
Applicants argue that there is no similar combination of a variable optical impression and luminescent emission considered or otherwise derivable from the combination of Schwenk and Heim.
This argument is not persuasive as the thin film element in Heim provides a visual impression that provides angle dependent color impression results in the visible spectrum range and the liquid crystal layer in Heim provides a color shift effect appearing in brilliant colors (paragraph [0062]). Including these layers in Schwenk would provide a similar visual impression in the security element.
Applicants argue that there is no reason provided for locating a luminescent feature opposite a layer that is opaque to a primary emission radiation as in claim 33.
This argument is not persuasive as the liquid crystal layer in Heim provides a color shift effect appearing in brilliant colors (paragraph [0062]). This layer can be provided opposite a thin film element which contains a reflection layer of a metal layer that is opaque to luminescence.
Applicants argue that that Kecht does not cure the deficiencies of Schwenk and Heim.
This argument is not persuasive as Kecht is a teaching reference used to teach a luminescent inorganic chemically unstable feature.
However, note that while Kecht does not disclose all the features of the present claimed invention, Kecht is a teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches certain concepts, namely a luminescent inorganic chemically unstable feature, and in combination with the primary reference, discloses the presently claimed invention.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SATHAVARAM I REDDY whose telephone number is (571)270-7061. The examiner can normally be reached Monday-Friday 9:00 AM-6:00 PM EST.
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/SATHAVARAM I REDDY/Examiner, Art Unit 1785