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 .
Response to Amendment
The present office action is made in response to the amendment filed by applicant on 08/12/2025. It is noted that in the amendment, applicant has made changes to the drawings, the specification and the claims. There is not any change being made to the abstract.
A) Regarding the drawings, applicant has submitted a set of three replacement sheets contained figures 1-3;
B) Regarding the specification, applicant has submitted a substitute specification with its marked-up copy showing the changes to the specification and a statement that the substitute specification does not contain any new matter, see amendment in page 11; and
C) Regarding to the claims, applicant has amended claims 1, 3, 6, and 8-11, canceled claim 7 and added a new claim, i.e., claim 20, into the application.
Response to Arguments
The amendments to the drawings, the specification and the claims as provided in the amendment of 08/12/2025, and applicant's arguments provided in the mentioned amendment, pages 8-22, have been fully considered and yielded the following conclusions.
A) Regarding the claims, the following conclusions are made:
A1) because applicant has canceled claim 7 and added a new claim, i.e., claim 20, into the application, thus as amended and newly-added, the pending claims are claims 1-6 and 8-20;
A2) the newly-added claim 20 has been reviewed and has been grouped into the elected Invention I, because the new claim recites a relationship in geometric shape among the elements constituted the flow chamber, Thus claims 1-6, 8-14 and 20 are examined in the present office action, and claims 15-19 have been withdrawn from further consideration as being directed to a non-elected Invention.
Applicant should note that the non-elected claims 15-19 will be rejoined if the independent claim 15 has all feature of the claim 1 in case that the claim 1 is later found as an allowable claim.
A3) the list of claims as filed in the amendment of 08/12/2025 fails to comply with the requirement of rule 37 CFR 1.121 because applicant has provided the text/content of the canceled claim 7. Applicant should note that the rule 37 CFR 1.121 states that a claim canceled/deleted does not present the text of the canceled claim. A copy of form PTO-324 is attached with the present office action.
In the spirit of co-operation, the list of claims as filed in the amendment of 08/12/2025 has been entered and considered; however, applicant has to delete the text/content of canceled claim 7 in response to the present office action.
B) Regarding the Information Disclosure Statements, hereafter, IDSs, filed by applicant on 08/12/2025 and 02/06/2025, the references listed in the mentioned IDSs have been considered.
It is noted that each of the US Patent Nos. 4,974,952 and 5,414,556 listed in the IDS of 08/12/2025 has been lined-through because each was cited by the examiner in the form PTO-892 which a copy was mailed to applicant in the office action of 08/06/2024.
It is also noted that all references listed in the IDS filed on 02/06/2025 have been lined-through because each was listed in the IDS of 08/12/2025.
Applicant should note that duplicate reference needs to be lined-through to prevent any reference from being printed twice on the face of a patent should the present application pass to be issued.
C) Regarding the objections to the drawings as set forth in the office action of 08/06/2024, the submission of three replacement sheets contained figures 1-3 on 08/12/025, the amendments to the drawings and the specification as provided in the amendment of 08/12/2025, and applicant’s arguments provided in the mentioned amendment, page 11, have been fully considered are sufficient to overcome the objections to the drawings set forth in elements #9 and 10 in the office action of 08/26/2024. The objection to the drawings for the reason number as #8 is repeated in the present office action.
It is noted that while applicant has amended figure 2 to add the reference of “105”; however, the replacement sheets of figures 1-3 do not show the references “5” and “21” as mentioned in the substitute specification filed by applicant on 08/12/2025 in paragraphs [0036] and [0037], respectively.
D) Regarding the objection to the specification as set forth in the office action of 08/06/2024, the submission of a substitute specification contained amendments to the specification as provided in the amendment of 08/12/025, and applicant’s arguments provided in the mentioned amendment, page 11, have been fully considered are sufficient to overcome the objections to the specification as set forth in the mentioned office action.
E) Regarding the objection to claims 1-14 as set forth in the office action of 08/06/2024, the amendments to the claims as provided in the amendment of 08/12/025, and applicant’s arguments provided in the mentioned amendment, page 12, have been fully considered and are sufficient to overcome the objections to the claims as set forth in the mentioned office action.
However, the amendments to the claims raise new objections to the claims as set forth in the present office action.
F) Regarding the rejection of claims 1-14 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as set forth in the office action of 08/06/2024, the amendments to the claims as provided in the amendment of 08/12/2025, and applicant’s arguments provided in the mentioned amendment, pages 12-13, have been fully considered and are sufficient to overcome the rejection of claims 1-14 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph as set forth in the mentioned office action.
G) Regarding the rejection of claims 1-14 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as set forth in the office action of 08/06/2024, the amendments to the claims as provided in the amendment of 08/12/2025, and applicant’s arguments provided in the mentioned amendment, pages 13-15, have been fully considered and are sufficient to overcome the rejections to the claims as set forth in the mentioned office action.
However, the amendments to the claims raise new rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, to the claims as set forth in the present office action.
H) Regarding the objections of claims 5-6, 10 and 13 under 37 CFR 1.75 as being a substantial duplicate of claim 1 as set forth in the office action of 08/06/2024, the amendments to the claims as provided in the amendment of 08/12/2025, and applicant’s arguments provided in the mentioned amendment, page 16, have been fully considered and are sufficient to overcome the objections of claims 5-6, 10 and 13 under 37 CFR 1.75 as being a substantial duplicate of claim 1 as set forth in the mentioned office action.
I) Regarding the rejection of claims 1-14 under 35 U.S.C. 103 as being unpatentable over Focht (US Patent No. 5,414,566) in view of Focht (US Patent No. 4,974,952) as set forth in the office action of 08/06/2024, the amendments to the claims as provided in the amendment of 08/12/2025, and applicant’s arguments provided in the mentioned amendment, pages 17-22, have been fully considered but are not persuasive. The claims are rejected for the similar reasons as set forth in the rejection of the claims based on the prior art of the mentioned office action which is modified to respond to new features added/changed to the claims as provided in the amendment of 08/12/2025.
Regarding applicant’s arguments that the receiver platform receives the distribution/perfusion ring in a non-rotational engineered friction fit which is contrast to the fit provided by Focht (US Patent No. 5,414,556), see amendment in page 19. The examiner offers the following opinions:
First, it is noted that while the disclosure provides/supports for a non-rotational friction fit between the receiver platform and the distribution/perfusion ring; however, the disclosure, as originally filed, does not support for the non-rotational engineered friction fit between the two mentioned elements/components (examiner’s emphasis). Applicant is respectfully invited to review the specification which is submitted on 08/12/2025, in particular, in paragraphs [0024]-[0025] which discloses that the recess of the receiver platform receives the pressure distribution/perfusion ring in a non-rotational friction fit (examiner’s emphasis).
Second, a structure/arrangement between two elements/components wherein one element/component used to support another element/component from movement is a form of an engineered friction fit unless there is a limitation/feature regarding the relationship therebetween being provided/recited. In that aspect, applicant is respectfully invited to review the disclosure, as originally filed, and the amended claim 1 with the claimed language as recited/provided. In particular, while the claim 1 recites a so-called “a non-rotational engineered friction fit”, see claim 1 on lines 27 but there is not any specific limitation/feature of the so-called “engineered friction fit” being provided/recited in the claim.
Third, the relationship/arrangement between the ring (12) and the base (42) as provided by Focht (US Patent No. 5,414,556) is a form of a non-rotational friction fit which in board sense that fit is a form/kind of engineered friction fit.
Fourth, regarding applicant’s arguments about thermal expression, reduction in Z-axis drift, …, see amendment in page 19, it is noted that the features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Fifth, in response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Drawings
The three replacement sheets contained figures 1-3 were received on 08/12/2025. These drawings are objected by the examiner for the following reasons:
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following references “5” and “21”, as mentioned in paragraphs [0034]; [0036] and [0037], respectively, of the substitute specification filed on 08/12/2205. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The substitute specification filed on 08/12/2025 has been entered.
The lengthy specification which was amended by the amendment of 08/12/2025 has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 1-6, 8-14 and 20 are objected to because of the following informalities. Appropriate correction is required.
a)In claim 1: it is unclear how many “coverslip” does the flow chamber have. Applicant is respectfully invited to review the claim on lines 6 and 16 which each recites a coverslip. Should “a coverslip” appeared on line 16 be changed to –the coverslip--?
On the similar manner, it is unclear how many “fluid optical cavity” does the flow chamber have. Applicant is respectfully invited to review the claim on lines 4 and 19 which each recites a fluid optical cavity. Should “a fluid optical cavity” appeared on line 19 be changed to --the fluid optical cavity--?
b) In claim 6: it is unclear how many “receiver platform” does the flow chamber have. Applicant is respectfully invited to review the claim 6 on lines 3-4 and its base claim 1 on line 24 which each recites a receiver platform. Should “a receiver platform” appeared in claim 6 on lines 3-4 be changed to --the receiver platform--?
c) The remaining claims are dependent upon the objected base claim and thus inherit the deficiencies thereof.
Claim Rejections - 35 USC § 112
9. 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.
10. Claims 1-6, 8-14 and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, for the following reasons.
a) Claim 1 is 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.
The claim is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the disclosure, as originally filed, does not provide support for the feature that the recess of the receiver platform receives the pressure distribution/perfusion ring in a non-rotational engineered friction fit as recited in the newly-added material to the claim on lines 26-27. Applicant is respectfully invited to review the specification, in particular, in paragraphs [0024]-[0025] which discloses that the recess of the receiver platform receives the pressure distribution/perfusion ring in a non-rotational friction fit (examiner’s emphasis).
b) Claim 20 is 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.
The claim is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the disclosure, as originally filed, does not provide support for the feature that the coverslip has a geometric shape complementary to the geometric shape of the pressure distribution/perfusion ring as claimed in the newly-added claim 20 on lines 1-3.
c) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiencies thereof.
11. 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.
12. Claims 1-6, 8-14 and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons:
a) Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons:
a1) the structure of the pressure distribution/perfusion ring as recited in the claim on lines 6 and 13-14 is unclear. What is structural relationship(s) between the “geometric shape” (line 6) and “a predetermined geometry” (lines 13-14) of the pressure distribution/perfusion ring?
a2) the feature thereof “the receiver platform” (line 24) lacks a proper antecedent basis; and
a3) the feature thereof “wherein the receiver platform … in a non-rotational engineered friction fit” (lines 24-27) makes the claim indefinite because it is unclear about the so-called “non-rotational engineered friction fit” (line 27). What does applicant mean by “engineered friction fit”?
b) Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite by the feature thereof “the flow chamber is formed between the coverslip, and the microaqueduct slide, by the lower gasket” (lines 1-2).
The mentioned feature makes the claim indefinite because it is unclear about the structure of the flow chamber. Applicant is respectfully invited to review the base claim 1 in which the claim recites a flow chamber having at least two perfusion tubes, a central aperture, a pressure distribution/perfusion ring, an upper gasket, microaqueduct slide, a lower gasket, a coverslip and a receiver platform. However, in claim 8, the claim recites that the flow chamber is defined by the coverslip and the microaqueduct by the lower gasket. Thus, what is the structure of the flow chamber?
c) Claim 14 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because the feature thereof “the base” (line 1) lacks a proper antecedent basis.
d) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiencies thereof.
13. The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
14. Claims 12-13 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, for the following reasons.
a) Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The claim recites that the recess is arranged to receive the distribution/perfusion ring in a non-rotational friction fit, see the claim on lines 1-2; however, its base claim 1 recites that the recess is arranged to receive the distribution/perfusion ring in a non-rotational engineered friction fit (examiner’s emphasis). Thus , claim 12 fails to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
b) Claim 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, for the similar reason as set forth in element a) above.
Claim Rejections - 35 USC § 103
15. 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 (i.e., changing from AIA to pre-AIA ) 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.
16. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
17. Claims 1-6, 8-14 and 20, as best as understood, are rejected under 35 U.S.C. 103 as being unpatentable over Focht (US Patent No. 5,414,566, hereafter, Focht ‘566) in view of Focht (US Patent No. 4,974,952, hereafter, Focht ‘952) (both of record).
Focht ‘566 discloses a flow chamber for use with a light microscope, see column 1.
a)Regarding present claims 1, 4-6, 8-9, 11-13 and 20, the flow chamber as described in columns 3-5 and shown in figs. 1 and 12 comprises the following features:
a1) a prefusion ring (12) having a central aperture (20) therethrough wherein two prefusion tubes (16, 18) are connected to the ring to provide fluids to the central aperture. Thus, the central aperture with fluids, as understood, forms a fluid optical cavity to provide illumination and facilitate observation;
a2) an upper gasket (32), an infusion/profusion unit (34), a lower gasket (36), a coverslip (38) and a base (42) wherein the infusion/profusion unit (34) acting as a microaqueduct slide is disposed between the upper and lower gaskets (32, 36) wherein the infusion/profusion unit (34) comprises a plurality of grooves, see the grooves having T-shape formed on the unit (34) as shown in fig. 1;
a3) the upper gasket (32) operatively engaging and sealing the perfusion ring (12) to an infusion/profusion unit (34) acting as a microaqueduct slide;
a4) the coverslip (38) and the infusion/profusion unit (34) are separated by the lower gasket (36) wherein each of the upper and lower gasket (32, 36) has its correspond aperture.
a5) the coverslip (38), the lower gasket (36) and the infusion/profusion unit (34) in combination defines an optical cavity;
a6) the perfusion ring (12) disposed adjacent to a top potion (19) which ring (12) has a predetermined geometry to facilitate a fluidic transfer through the optical cavity, i.e., fluids from the tube (16) transfers through the central aperture (20) acting as a fluid optical cavity to the tube (18);
a7) the coverslip (38) positioned adjacent to the lower gasket (36) opposite to the infusion/profusion unit (34) acting as a microaqueduct slide and operatively intermediate the set having the microaqueduct slide and the lower gasket and the base (42) which acts as a receiver platform;
a8) the fluid optical cavity. i.e., the central aperture (20) wherein two prefusion tubes (16, 18) are connected to the ring to provide fluids to the central aperture, forms a fluid optical cavity in the perfusion ring (12). It is noted that while the claim 1 recites that the fluid optical cavity in fluid communication in the top portion, see claim 1 on lines 19-20, such feature is understood as “in communication with the at least two perfusion tubes in the pressure distribution/perfusion ring”, see claim 10 on lines 1-2;
a9) the base (42) having raised rim portion (44) defined a peripheral geometric recess complementary to the geometric shape of the perfusion ring (12), the upper gasket, the lower gasket, the coverslip and the profusion unit wherein the recess arranged to receive the ring (12) in a non-rotational friction fit, i.e., the L-shaped fingers (44) engaged with the notches (14) formed on the peripheral surface of the ring (12) so that the ring (12) is fitted inside the base (42) without any rotation. It is noted that while the claims recite the so-called “complementary” in shape among the mentioned elements; however, the claims do not recites any specific feature/limitation for the so-called “complementary”.
The only feature missing from the flow chamber provided by Focht ‘556 with respect to claims 1 and 10 is that while Focht ‘566 discloses that the infusion/profusion unit (34) comprises a plurality of T-shaped grooves; however, Focht ‘566 does not positively disclose that micro-channels formed on the unit and bordered by the lower gasket.
However, an infusion/profusion unit or a microaqueduct slide having a plurality of T-shaped groves wherein micro-channels are formed thereon and bordered by a gasket is known to one skill in the art as can be seen in the flow chamber provided by the same inventor, i.e., Focht ‘952, see column 5 and figs. 9-10. Thus, it would have been obvious to one skill in the art before the effective filing date of the invention to modify the flow chamber as provided by Focht ‘566 by forming micro-channels in the T-shaped grooves on the infusion/profusion unit (or the microaqueduct slide) as suggested by the same inventor, i.e., Focht’ 952, to meet a particular application/design.
b) Regarding present claims 2-3, the perfusion ring (12) applies a uniform pressure to the upper gasket (32), the infusion/profusion unit (34) acting as a microaqueduct slide, the lower gasket (36) and the coverslip (38) due to the circular shape of the ring, see also figs. 1 and 12.
c) Regarding claim 14, it would have been obvious to one skill in the art that the combined product provided by Focht’ 566 and Focht ‘952 is supported by a stage adapter in a microscope for the purpose of observation.
Conclusion
18. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
19. The US Patent No. 10,252,264 is cited as of interest in that it discloses a flow chamber.
20. 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.
21. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THONG Q NGUYEN whose telephone number is (571) 272-2316. The examiner can normally be reached M - Th: 6:00 ~ 17:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, STEPHONE B. ALLEN can be reached on (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THONG Q NGUYEN/Primary Examiner, Art Unit 2872