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 .
Applicant’s Reply
Applicant's response of 10/21/25 has been entered. The examiner will address applicant's remarks at the end of this office action. Currently claims 1-17 are pending with claims 3 and 4 being in a withdrawn status. The withdrawn claims 3 and 4 are not in a withdrawn status in response to a restriction requirement but have been withdrawn based on applicant’s request and affirmation that the claims are to be withdrawn.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 (as a straight continuation) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed application, Application No. 14250593, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
The parent application does not disclose the interface that is recited in claim 1 that includes a physical signature capturer that captures a signature responsive to readable characters on the contract. The claimed interface for direct communication was not disclosed in the parent specification that is relied upon for priority. The parent application does not disclose that there is an interface that includes a physical signature capturer as claimed. The parent application does not disclose a declination choice as is recited in claim 1, where a postulant (a person) makes a selection by signature. There is no disclosure to a postulant making a selection of a declination choice by signature. None of this has been disclosed in the parent application that is relied upon for priority.
The parent application does not teach using a device to transmit the claimed documents on paper, see claim 6 (paper form materials input into a device for transmitting …information to said or any paper…). This limitation recites adding paper to a printer (inputting paper into a device for transmitting) with the printing information on paper, which is not something that was disclosed in the parent application relied upon for priority.
The parent application did not disclose the claimed steps that are currently recited in pending claim 9. The receiving step is claiming subject matter that is not found in the parent application. The obtaining step of obtaining a record based on physical presentation of international travel admittance associated with the second postulant is not disclosed in the parent application. The generating and transmitting step for the package of forms with citizen signatories, residency, forum selection, etc., is not found in the parent application and this extends to the other steps that recites the package of forms and its use. The same is noted for the other recited steps, they include subject matter that is not found in the parent application. Simply put, the applicant is claiming steps and specifics that are not found in the parent application and the claim as a whole is not supported by the parent application. One claim element not being supported in the parent application is reason to deny a priority claim for an earlier filing date for the claimed invention, whereas the claimed steps of claim 9 are simply not found in the parent application and represent numerous instances of claiming subject matter that was not disclosed in the parent application.
For this reason the filing date of the claims 1-17 is considered to be 10/11/21.
The instant applicant is therefore, still considered to be a continuation-in-part of the parent application and the claimed invention is not entitled to the earlier filing date of the parent application for this reason.
Claim Rejections - 35 USC § 112
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 6-8, 9-17 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.
For claim 6, the applicant recites feeding paper or electronic form materials into a device for transmitting the information to paper or electronic form in electronic format. This language appears to be contradictory and is indefinite. What does it mean to feed electronic form materials into a device? What is an electronic form material? The examiner understand that paper can be fed into a printer so that a printout can be obtained, but what is meant by “electronic form materials” being fed into a device? If the electronic form materials are electronic, then what is meant by reciting the transmitting of the information to electronic form in electronic format? It is not clear what it means to have an electronic form material that is fed into a device and is transmitted by a device to be in electronic form in an electronic format. Clarification is required.
For claim 9, the claim recites identifying information from damage claims from a first postulant received as the third postulant. It is not clear what is means to recite “from a first postulant received as the third postulant”. The damage claims are from a first postulant, that much is clear, but what does it mean to recite that the first postulant received as the third postulant? This is not clear and renders the claim indefinite. This is also recited another time when the applicant claims “the signatory action received as the third postulant,”. As the third postulant what? What is this language trying to claim? This is not clear and renders the claim indefinite. The same is noted for the language of “the package of forms with the citizen signatories sent as the third postulant”. Also, claim 9 recites “the record obtained as the third postulant the record, “. This is confusing language that is not clear in scope. The record is obtained as the third postulant does what? “As the third postulant the record”? This portion of the language does not make any sense. The above renders the claim indefinite.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 2, 5-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claims recite a system and a method; therefore, the claims pass step 1 of the eligibility analysis.
For step 2A, the claim(s) recite(s) an abstract idea of generating forms for recovering damages according to a rental contract and an agreement that was signed at the time of renting.
For claim 1, the abstract idea is defined by the elements of:
specific information from stored compilation of for-hire transportation information
specific information from stored compilation of political boundary lines for determining a first international boundary and a second international boundary, wherein the first international boundary is associated with a location of a transportation object for rent and a second international boundary is associated with a renter of the transportation object;
direct communications between a first postulant and a second postulant at a rental agency
a physical contract that displays readable characters to the first postulant within the first international boundary; and
capture a signature generated by the first postulant responsive to the readable characters on said contract when viewed and chosen by the first postulant within said first international boundary; the contact including a generated selection and declination choice and the first postulant makes a selection choice by signature;
receives a subset of the international boundary information and the selection choice by signature from the readable characters on the contract;
store the selection and declination generated choice by signature from said readable characters on the contract
a custom addendum that includes readable characters on a substrate material, wherein the physical custom addendum is based on the subset of the determined first international boundary and second international boundary
and wherein the selection choice by signature chosen by the first postulant within said first international boundary are transmitted on or in the custom addendum to a third postulant within the second international boundary
stores said selection and declination generated choice between or among the first, second, and third postulants
For claim 6, the abstract idea is defined by the elements of:
A method for generating residency data into sequential business forms across political boundaries comprising:
inputting political boundary information into a paper or electronic form while at a fixed location at or adjacent to an international airport;
inputting first postulant international boundary information into said or any paper or electronic form;
inputting second postulant international boundary information into said or any paper or electronic form;
inputting third postulant international boundary information into a paper or electronic form;
inputting paper or electronic form materials into a device for transmitting the first postulant international boundary information to said or any paper or electronic form in electronic format for processing as a document,
controlling said or any paper or electronic form for processing of one or more damage claims from a first postulant who resides within a first international political boundary,
wherein the first postulant rents itemized goods, property or equipment to a second postulant,
wherein the second postulant resides within the second international political boundary, travels to a location within the first international political boundary, and rents the itemized goods, property or equipment, located within the first international political boundary, from the first postulant, and
wherein the itemized goods, property or equipment are damaged while being rented;
generating said or any paper or electronic form for display transmitted from within….the first political boundary by selection of which political boundary the second postulant resides, and
identifying specific information from the inputting of political boundary information from the first, second, and third postulants for use in organization in particular sequences, so that damage claimants may be able to reach reasonable fair and just resolution for recovery of damages
For claim 9, the abstract idea is defined by the elements of:
A method for generating transportation for hire location-of-sale forms comprising:
receiving as a third postulant residing within a second international political boundary, communication of one or more damage claims from a first postulant who resides within a first international political boundary,
wherein the first postulant rents itemized goods, property or equipment to a second postulant,
wherein the second postulant resides within the second international political boundary, travels to a location within the first international political boundary, and rents the itemized goods, property or equipment, located within the first international political boundary, from the first postulant, and
wherein the itemized goods, property or equipment are damaged while being rented;
obtaining as the third postulant, a record that the second postulant resides within the second international political boundary based on a physical presentation of international travel admittance associated with the second postulant;
generating and transmitting a package of forms with citizen signatories, residency, forum selection, and choice of law to the second postulant who, by provision, is subject to legal process, by the third postulant, within the second international political boundary for recovery of damage to the itemized goods, property or equipment,
wherein the second postulant, at a time of choosing the itemized goods, property or equipment, resides within the second international political boundary;
receiving as the third postulant from the second postulant, a signatory action associated with the package of forms, wherein the signatory action received within the first international political boundary is performed by the second postulant;
sending as the third postulant subsequent to receiving the signatory action associated with the package of forms from the second postulant, the package of forms with the citizen signatories, residency, forum selection, and choice of law to the second postulant within the second international political boundary after the second postulant travels back to a location within the second international boundary; and
processing recovery documents, by the third postulant, payment of damages within the second international political boundary after the sending of the package of forms with the citizen signatories, residency, forum selection, and choice of law and the signatory action received from the second postulant within the first international political boundary to the second postulant while in the second international political boundary,
identifying specific information from the damage claims from the first postulant received as the third postulant,
the record obtained as the third postulant the record
the package generated and transmitted the signatory action received as the third postulant, and
the package of forms with citizen signatories sent as the third postulant for use in organization in particular sequences, so that damage claimants may be able to reach reasonable fair and just resolution for recovery of damages via an interface for collection of data
The above limitations are reciting steps that are being performed to recover damages according to a rental contract and an agreement that was signed at the time of renting. The applicant is claiming steps that are legal in nature and that are directed to printing legal forms and recovering of civil damages when a renter has damaged property and has left the country. The concept of having a process by which rental agencies can recover damages across different countries borders, using what the specification refers to as a “Claims Administrator” to assist in handling claims, is reciting a certain method of organizing human activities. The claimed concept is reciting a legal interaction and is reciting steps of using the law and a contractual agreement to recover monetary damages as a result of a renter causing damage to a rented item while traveling abroad. This represents a certain method of organizing human activities per the USPTO eligibility guidance. Note: the subject matter eligibility guidance does not require that the claimed step of “organizing” activity be claimed. The claims are reciting a legal interaction that falls squarely into the category of being a certain method of organizing human activities.
For claim 1, the additional elements of the claim are the recitation to an interface for communication between postulants, the recitation to electronic information, describing the choice as being electronic in nature, the interface having a physical signature capturer, a storage unit, and the electronic communication connection. Also as additional element is the claimed electronically structured claims management system interface.
For claim 6, an additional element claimed is the electronically structured claims management system interface and for the sake of argument, the recitation to electronic in the claims. The inputting of information into a paper form is an element that serves to define part of the abstract idea, and can be done by people. The electronic aspect of the claim is recited using “or” so the Broadest Reasonable Interpretation of the claim allows for paper forms to be used. However, the examiner notes that at most, the additional elements would be the claimed electronic form and the above noted system interface.
For claim 9,one additional element claimed is having the communications be “electronic”. Also claimed is “via an interface for collection of data”.
This judicial exception is not integrated into a practical application (2nd prong of eligibility test for step 2A) because the additional elements of the claim amount to the use of a computing devices (to allow for communication electronically and to have electronic information) and generically recited interfaces that are being used as a tool to execute the abstract idea, see MPEP 2106.05(f). The claim is simply instructing one to practice the abstract idea by using a computing device to perform steps that define the abstract idea such that the information and communication would be electronic and so that information is electronically stored (by the storage unit). This does not amount to more than a mere instruction to implement the abstract idea on a computer connected via a network and that has an interface of some kind, all generically recited. See MPEP 2106.05(f). The claimed element that recites the interface as having a signature capturer is an instruction for one to use a computer interface to capture a signature and does not amount to more than generic computer implementation for the abstract idea. This is the act of allowing a user to sign their name on a screen as they would do when writing their signature on paper. This is just computer implementation for the signing of a document and does not provide for integration into a practical application. Simply executing the abstract idea using generic computer technology does not amount to integration into a practical application, with the rationale being set forth in MPEP 2106.05(f).
The above indicates that the claims has/have not integrated the abstract idea into a practical application and therefore the claim is found to be directed to the abstract idea identified by the examiner.
For step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they do not amount to more than simply instructing one to practice the abstract idea by using a generically recited computing device and using a generically recited user interface to perform steps that define the abstract idea, as was addressed for the 2nd prong above. This does not render the claims as being eligible. See MPEP 2106.05(f). The rationale set forth for the 2nd prong of the eligibility test above is also largely applicable to step 2B in this regard so no further comments are necessary.
The claims 1, 6, 9, do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claim 2, the recitation to the contact including forms generated in bulk and that are periodically delivered on hard paper is a further recitation to the same abstract idea that was found for claim 1. Having forms that are paper is something that can be done by people. As the applicant noted in their previous remarks, the claims can be executed by pony express. This is not providing for any additional elements that would render the claim eligible.
For claim 5, the storing of the residency data, sending the residency data, calculating the claimed information, and the claimed contract are all elements that are considered to be part of the abstract idea. The applicant recites a plurality of rental locations that are geographically and remotely distributed, which is considered to be part of the abstract idea. At most the claim is reciting electronic transmissions and electronic communication as being used. This is claiming the use of connected computers via a network and is again taken as a mere instruction for one to use computers to perform the abstract idea, see MPEP 2106.05(f). The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims is/are not considered to be eligible.
For claim 7, the inputting of the court jurisdiction information onto a paper form is an element that serves to define the abstract idea of the claim. People are the ones that enter data into a paper form, or at least the claim is broad enough to allow for that interpretation. No further additional elements have been claimed for consideration. The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims is/are not considered to be eligible.
For claim 8, the identifying of a non-excluded jurisdiction within said political boundary is a further recitation to the abstract idea of claim 6. A person can be the one performing this step. No further additional elements have been claimed for consideration. The claim does not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims is/are not considered to be eligible.
For claims 10-17, the applicant is claiming further steps or aspects to the abstract idea. Reciting that damage claim information is received regarding damage to rented goods, receiving a contingency fee, the content of the forms that are printed, , etc., are all elements that serve to further define the abstract idea of the claims. There are no additional elements claimed for consideration. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims is/are not considered to be eligible.
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.
Claim(s) 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Purinton (20150294285) in view of Marks et al. (20070271127).
For claims 6-8, Purinton teaches the invention substantially as claimed. Purinton teaches a system for facilitating the recovery of damages that were caused by a renter who rented goods while they were traveling abroad. The invention includes a contract that is agreed upon that sets forth the use of a claims administrator, where the agreement includes information about the renter, their residency (where they live in terms of international boundaries), etc.. The invention is used for rental provides such as rental car providers, see paragraph 022 for disclosure of the invention for vehicle rentals. The invention provides for an agreement that is entered into by the rental agent and the renter, that specifies information such as the home state of the renter and other identifying information, see paragraph 007. The invention uses data representing international boundaries and the residency of the renters in the legal documents that is the assignment agreement or addendum of Purinton. In paragraph 014 and 016 Purinton discloses an addendum to an agreement, and teaches that the forms can be generated in real time and can be delivered on hard paper. The claimed inputting of the data of political boundaries for the first through third postulants, and creating the documents that includes the inputted data is taught by Purinton. This claim is reciting the inputting of the data that is disclosed by Purinton, and is reciting the creation of readable characters from damage claims from a person who resides in one political boundary who rents goods to a 2nd postulant, that resides in a second political boundary, travels, and rents as claimed. This is taught in paragraphs 022-023 of Purinton. This includes jurisdictional data (cl. 7, 8), see paragraph 033 of Purinton. Purinton teaches that when processing a claim, the steps are organized in a particular sequence, which is done to obtain a just, fair, and reasonable outcome as is claimed. See paragraph 004 of Purinton where having an organized particular sequence, to arrive at the claimed outcome is disclosed. This satisfies the claimed organization into a particular sequence that is recited, so that one can arrive at a just, reasonable, fair resolution as claimed.
Not disclosed by Purinton is feeding paper or form materials into a device as claimed. Purinton recognizes that there can be paper documents but never teaches the use of a device and does not teach any printing steps of using a device.
However, Marks teaches a system and method that uses automation to process and print legal documents that are related to claims processing and a claims recovery process, see the Abstract. In paragraph 001 it is disclosed that legal action may be necessary to try to recover damages and that legal representation may be employed. Disclosed is that this requires the storage of documents in a paper file system and manually performing processing of the documents and files. Paragraph 002 teaches the desirability of automating many processes related to a damage recovery process of recovering monetary damages owed. Disclosed by the claims is that the system stores data in a database where the data can be incorporated into legal documents that are printed. Disclosed in the claims of Marks is that data is entered and stored in the database, and has been populated into legal forms, they are printed by a printer. This reference is teaching the desirability of using computers to assist in the process of recovering damages using legal documents by automating the process, and this reference teaches the use of a printer to print documents that are related to the recovery of damages.
It would have been obvious to one of ordinary skill in the art as of the effective filing date of the claimed invention to provide Purinton with the ability to use connected computers that can store the data in a dataset, and that use a printer to print documents. This would have been obvious so that the benefits of modern technology in the form of modern computing and printers, can be realized with the invention of Purinton, and so that the legal documents that are related to the recovery of damages can be printed.
Response to arguments
With respect to the comments about the priority claim and the filing date for claims 1, 6, and 9, they are not persuasive. The applicant argues on page 20 of the reply that the interface for direct communication that includes a physical contract and a signature capturer are supported by disclosure to forms, contract, hard paper, signature lines, etc. as disclosed by the parent application specification. This is not persuasive. The terms forms, contract, hard paper, signature lines, etc. do not provide support for claiming an interface for direct communication that includes a physical signature capturer as is recited in claim 1. The broadly argued forms or hard paper or a contract do not convey possession of an interface that can capture a signature as is claimed. The argument is not persuasive for this reason.
For claim 9, the claimed steps and the claim as a whole is not supported by the parent application and its disclosure. As the applicant has commented on, the entirety of the claimed steps has been found to be claiming subject matter that is not supported by the parent application. While is not a rejection as the applicant has referred to it, it is a finding that the totality of the subject matter for claim 9 has not been disclosed by the parent application. This is not a rejection but is a statement about the earliest filing date that the claims are to be accorded.
For claim 6, in the traversal of the 35 USC 103 rejection the applicant argues that the disclosure to pre-generated in bulk and delivered on hard paper from the parent application is providing support for claiming the inputting of paper form materials into a device to transmit the information on paper, as is claimed in claim 6. Having forms generated in bulk on hard paper does not require the claimed inputting of paper into a device as is recited in claim 6. Pre-generated forms are forms made in advance and having them in bulk is having a lot of them. That does not require a device as is recited in claim 6. The argument is not persuasive.
The 35 USC 112a rejection of claims 6-17 has been overcome by the amendment to the claims.
The 35 USC 112b rejection has been overcome with the exception of claim 6. For claim 6, the language at issue is still found to be indefinite. It is not clear what it means to input electronic form materials into a device as claimed. The comment from the applicant are not addressing the claimed element of the electronic form materials. Inputting paper into a device to print is something that makes sense, but what are electronic form materials that are being inputted into a device, and how does that occur? What is an electronic form material? The claim is still found to be indefinite for this reason.
For the 101 rejection of claim 5, the amendment to the claim and the arguments are persuasive to overcome the rejection.
For the 101 rejection of claims 1, 2, 5-17, and the claims being directed to an abstract idea without significantly more, the arguments are not persuasive to show that the claims are eligible. The applicant argues on page 17 of the reply that the claims are solving a problem that is recovering monetary damage to rented items while traveling abroad. This is not persuasive because what the applicant argues the claims as being directed to is arguing the abstract idea itself. Also, this does not address any additional elements of the claims. This is just arguing that the abstract idea can be used to recover monetary damages. This is not persuasive. The reference to the specification is noted but is not persuasive to show that the claims contain any limitations that render them eligible.
The applicant questions what the “apply it” is applying. The applicant argues the claims are not directed to existing solution of a forced charge and the applicant argues that there is a long felt need for the claimed ability to recover rental damages when traveling abroad. This is not persuasive and is taken as a general allegation. The claims are “applying” the abstract idea by using generic computing technology as a tool to execute the steps that defines the abstract idea. This is the rationale that is set forth in MPEP 2106.05(f) and that the 101 rejection is based on. The applicant is not arguing any particular limitation as an additional element that renders the claims eligible so the comments are taken as a general allegation.
The applicant states that the claims recite a sequence of claim elements that provide “how” and the applicant argues that this makes the claims eligible. This is not persuasive and is not well understood from the standpoint of what is being argued. Claiming “how” something occurs does not automatically impart eligibility to the claimed invention. The argument is not persuasive.
The traversal of the 35 USC 101 rejection is therefore being maintained due to the arguments not being persuasive in view of the amended claims.
The traversal of the 35 USC 103 rejection is not persuasive. The applicant has argued that Purinton is not available as prior art. This is disagreed with for the reasons set forth by the examiner when addressing the claim for priority. Purinton does not teach the inputting of paper into a device as claimed, or the inputting of electronic form materials into a device as claimed. For this reason the filing date of claim 6 is not that of the parent application but is the filing date for the instant application (10/11/21). The prior art rejection is being maintained.
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 DENNIS WILLIAM RUHL whose telephone number is (571)272-6808. The examiner can normally be reached M-F 7am-3:30pm.
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, Jessica Lemieux can be reached at 5712703445. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DENNIS W RUHL/Primary Examiner, Art Unit 3626