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 .
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.
DETAILED ACTION
The preliminary amendments filed on 1/14/2026 is acknowledged. Claims 6, 12, 21, 28, 39-41, and 48 were amended.
Claims 3, 5-6, 11-12, 20, 21, 27-28, 35, 39-41, 45, 48, 50-53, 55, 58, 64, and 69 are pending in the instant application.
Priority
This application is a 371 of PCT/US2020/039466, filed on 6/24/2020 which claims priority to the provisional applications 62951765 filed on 12/20/2019 and 62870633 filed on 7/3/2019.
2019-0703
Election/Restriction
Applicant’s election without traverse of Group I (claims 3, 5-6, 11-12, 20-21, 27-28, 35, 39, 41, 48, 40, 45, and 50-53) in the reply filed on 1/14/2026 is acknowledged.
Applicant further elected agent I-9. However, Agent I-9 was found allowable, thus all species were examined.
Claims 55, 58, 64, and 69 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/14/2026.
Claims 3, 5-6, 11-12, 20, 21, 27-28, 35, 39-41, 45, 48, and 50-53 are examined herein.
Information Disclosure Statement
The information disclosure statements (IDS) dated 4/22/2022, 11/21/2023, 8/16/2024, 2/4/2025, 8/15/2025, and 1/26/2026 comply with the provisions of 27 CFR 1.97, 1.98, and MPEP § 609. Accordingly, they have been placed in the application file and the information therein has been considered as to the merits.
Objections to the Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code on 61, para 0118). Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Correction is required. See MPEP § 608.01(b).
Claim Interpretation
Claims 6, 11-12, 20-21, 27-28, and 39-40 are drawn to a series of acronyms that could not be identified with their corresponding chemical structures as no definition was provided in the instant specification: Ahp, Bph, K(MePEG4c), Hse, MetO2, Ado, Ano, PhNle, PhNva, 4Py2NH2, F3G, hCit, RNdMe, RNMe, RNNdMe, W6N, Har, MeF, MeG, etc. For the purpose of examination, hCit was interpreted as “hydroxyhomocitrulline” and Ahp was interpreted as “aminoheptanoic acid” as guessed by the writer of the ISR written opinion. A meaningful interpretation of the remaining acronyms could not be performed. It was further unclear if “PhNle” is spelled with an “I” or and “L” due to OCR.
See De Faveri (doi: 10.1021/acs.chemrev.4c00181) for a comprehensive list of non-canonical amino acid residues and their acronyms. Notably, applicant elected structure I-9 that includes a BipA residue (see De Faveri’s BipA below), but there is no reference to BipA throughout. Notably the related residue Bph (biphenyl) possesses one less carbon than BipA.
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Claim Rejections – 35 USC § 112(b)
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, 11-12, 20-21, 27-28, and 39-40 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6, 11-12, 20-21, 27-28, 39-40
Claims 6, 11-12, 20-21, 27-28, and 39-40 are drawn to a series of acronyms for unnatural amino acid residues that were not defined in the specification, nor were they able to be clearly identified in the prior art. As a result, one of skill in the art would not definitively know what the chemical structures of Ahp, K(MePEG4c), Hse, MetO2, Ado, Ano, PhNle, or PhNva were referring to. See claim interpretation section above.
Claim 39
Claim 39 is drawn to list of lists wherein it is unclear what is to be selected from because it is structured in the following (assumed) hierarchy, wherein the lists and sub-lists are not clearly delineated:
TBT is SEQ ID NOs: 1-34, or
TBT is SEQ ID NO: 146-151, or 152;
(b)(i) ABT has the structure of DCA WHLGEL VWCT, or
(ii) “ABT is or comprises optionally substituted” [unordered molecule fragments interspersed with “, optionally substituted” SEQ ID NO: 153, 62, 89, or 154;
the linker is [PEG]
(ii) amino acids
(iii) [cyclooctane-triazole], or
(d) combination thereof.
The hierarchy of this claim is impossible to interpret what to select from due to it including multiple conjunctions and not following a regular pattern (e.g. jumps from (b) to (b)(i); and also from (c) to (c)(ii)). It’s not clear how to nest each of these subsections in order to decide what to select from. One artisan could see this as a choice of selecting one from (a), (b), or (c); whereas another artisan would conclude they could satisfy the claim limitation by merely satisfying part (c) being PEG. As a result of these multiple interpretations arising from the inconsistent use of labels, punctuation, and general disorganization, this claim is rendered indefinite.
Claim 40
Claim 40 is drawn to list of lists wherein it is unclear what is to be selected from because it is structured in the following (assumed) hierarchy, wherein the lists and sub-lists are not clearly delineated. Note this claim is similar in structure to claim 39, comprising the same apparent components in a slightly different hierarchy:
TBT is SEQ ID NOs: 1-34, or
(ii) TBT is SEQ ID NO: 146, 147, 148, 149, 150, 151, or 152.
Because of the strange labels and the four recitations of “or”, it is unclear if two TBT’s are being invoked, wherein the first TBT is defined by part (a) and the second is defined by part (ii). Alternatively, Applicant could be claiming all of the recited TBT’s in the alternative. Because of these conflicting interpretations, this claim was rendered indefinite.
Claim Rejections – 35 USC § 112(a)
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 3, 5-6, 11-12, 20-21, 27-28, and 35 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 3, 5-6, 11-12, 20-21, 27-28, 35
Claims 3, 5-6, 11-12, 20-21, 27-28, and 35 are drawn to an agent comprising an antibody binding moiety (ABT) and a target binding moiety (TBT), wherein there is insufficient structure supplied for a person of skill in the art to envisage the members of these genera. Applicant can meet the written description requirement by either (i) describing the core structure responsible for preserving the function or (ii) by supplying a representative number of species. Applicant has supplied 3 exemplary TBT structures and 5 exemplary ABT structures, which are then paired and linked. Furthermore, the supplied TBT structures solely target CD38, as opposed to the claim breadth which encompass targeting anything. Given this narrow list of species, one of skill in the art could not envisage the breadth of structurally unrelated compounds under these broad genera of ABT and TBT. For illustrative purposes of the breadth of the disclosure, instant compound I-5 of claims 39-41, 45, 48, (and the broader claims of 3, 5-6, 11-12, 20-21, 27-28, and 35) is shown below
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,
bears no structural resemblance to a species of conjugate of claim 3 (shown below) comprising tetanus toxin (TT) covalently linked to vasopressin, despite it satisfying all the limitations of claims 3, 5-6, 11-12, 20-21, 27-28, and 35.
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Of this list of rejected claims, the most specific of which (claims 12 and 28) fail to require even a single non-variable residue within the TBT and fail to disclose a single structural requirement of the ABT. Because Applicant has failed to disclose a representative number of species commensurate in scope with the genera claimed that possess the purported function and has also failed to claim the core structure responsible for the ABT and TBT’s function, applicant has failed to meet the written description requirement of antibody binding moieties (ABT) and a target binding moieties (TBT).
Claim 3, 5, 20
Claim 3, 5, 20 are drawn to “or an amino acid analog thereof” wherein applicant did not provide the core structure of the amino acid analogue must retain in order to be identified as an “amino acid analog” nor did applicant provide a representative number of species of amino acid analogs. For example applicant did not provide a single exemplary proline amino analogue (claim 20) and failed to describe the structures of the non-canonical amino acids (e.g. Ahp; see “Claim Interpretation” section). Applicant also failed to provide a definition of “amino acid analog.” As a result, one of skill in the art would not be able to envisage the species of this genus. Dependent claims 6, 11-12, 21, and 27-28 fail to cure these deficiencies, thus also fail to meet the written description requirement.
Claim Rejections – 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 3, 5-6, 11-12, 20, 21, 27-28, 35, 39-41, 45, and 50-53 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Spiegel (WO2019023501).
Claim 3
Regarding claim 3, Spiegel teaches an antibody binding moiety (ABT) linked to a target binding moiety (TBT) via a bivalent linker (L), as shown below in Formula I (pg 8, para 0027).
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Spiegel teaches an optional plurality of ABTs and TBTs being linked together, wherein variables a and b are independently 1-200, as shown below in Formula I-a (pg 10, para 0030).
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Spiegel teaches each TBT is composed of an (Rc)t group that is linked to an (Xaa)z group, wherein (Rc)t is (La-R’)t, wherein t is an integer from 2-50 and (La) is a covalent bond, and R’ is independently -R, -C(O)R, -CO2R, or -SO2R; wherein R is independently -H, or an optionally substituted group selected from C6-30 aliphatic, C6-30 heteroaliphatic having 1-10 heteroatoms independently selected from oxygen,
nitrogen, sulfur, phosphorus and silicon, C6-30 aryl, C6-30 arylaliphatic, C6.30 arylheteroaliphatic
having 1-10 heteroatoms independently selected from oxygen, nitrogen, sulfur, phosphorus and
silicon, 5-30 membered heteroaryl having 1-10 heteroatoms independently selected from oxygen,
nitrogen, sulfur, phosphorus and silicon, and 3-30 membered heterocyclyl having 1-10
heteroatoms independently selected from oxygen, nitrogen, sulfur, phosphorus and silicon, or
two R groups are optionally and independently taken together to form a covalent bond. While Spiegel does not call out variable LT, it is envisaged by (Xaa) being a covalent bond. In sum, Spiegel teaches all the limitations of the formula described by instant claim 3.
Claim 5
Instant claim 5 is drawn to the unlabeled instant formula of -XaaT1-XaaT2-(Xaa)y'-XaaT3-XaaT4-XaaT5-, which requires only that XaaT1 and XaaT5 comprise a C1-C8 aliphatic residue, while y’ is an integer from 0-8. Spiegel teaches (Xaa)z is composed of -X3X4XSX6X7X8X9X10X11X12-, wherein each of X3, X4, X5, X6, X7, X8, X9, X10, X11, and X12 is independently an amino acid residue (pg 218, claim 21). More specifically, Spiegel teaches X7, X10, and X11 are hydrophobic residues (pg 218, claims 21-26). Spiegel teaches Valine is an exemplary hydrophobic residue (pg 42, para 00121). Using Spiegel’s residue of X7 as an exemplary XaaT1, Spiegel’s residue of X11 as exemplary T5, and selecting y’ to be 1, arrives at a peptide sequence that is identical to the one that is claimed.
Claim 6
Claim 6 is drawn to a formula that includes many uninterpretable variables as described in the 112(b) rejection of this claim and the claim interpretation section above. Applicant declares that instant structure I-9 reads on this claim, which includes the cyclic peptide shown below of instant SEQ ID NO: 146, ARXYHDGVLXXDC. It’s unclear what part of this sequence lines up with the instantly claimed formula.
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Spiegel teaches the sequence, SEQ ID NO: 14, GVVRRWSGDCAWHLGELVWCTRSSIAYGGG, which may satisfy the limitation by including the subsequence of HLGEL, which roughly approximates instant subsequence of HDGVL.
instant_175 --------ARXYHDGVLXXDC--------- 13
Spiegel_14 GVVRRWSGDCAWHLGELVWCTRSSIAYGGG 30
:* * *
Again, a meaningful interpretation could not reasonably be performed because (i) the variables are not defined and (ii) the subsequences could not be matched to the examples. Furthermore, because the claim is drawn to “or a combination thereof”, Spiegel satisfies the limitation of the claim by teaching only one of the variables of the 5-amino acid sequence.
Claim 11-12
Claims 11-12 are drawn to an amino acid sequence containing 13 variable residues which applicant claims reads on the species I-9, which does include a 13-amino acid sequence of instant SEQ ID NO: 146, ARXYHDGVLXXDC. To simplify the analysis, the first residue of this sequence was assigned to the 1 position.
instant_175 --------ARXYHDGVLXXDC--------- 13
Spiegel_14 GVVRRWSGDCAWHLGELVWCTRSSIAYGGG 30
:* * *
By virtue of the Applicant claiming “or a combination thereof”, Spiegel satisfies the claim limitation by including residue (Xaa)a5 as being H, (Xaa)a7 being G, and (Xaa)a9 being XaaT3, which is optionally L. This represents a combination of the listed variables of the unnamed formula: -(Xaa)a1-(Xaa)a2-(Xaa)a3-(Xaa)a4-(Xaa)a5-(Xaa)a6-(Xaa)a7-(Xaa)a8-(Xaa)a9-(Xaa)a10-(Xaa)a11-(Xaa)a12-(Xaa)a13-.
Claim 20
Claim 20 is drawn to the formula -XaaT6-(Xaa)y' -XaaT7 -XaaT8-XaaT9-XaaT10-XaaT11- wherein y is an integer from 0-8. Spiegel teaches (Xaa)z is composed of -X3X4XSX6X7X8X9X10X11X12-, wherein each of X3, X4, X5, X6, X7, X8, X9, X10, X11, and X12 is independently an amino acid residue (pg 218, claim 21). More specifically, Spiegel teaches X7, X10, and X11 are hydrophobic residues (pg 218, claims 21-26). Spiegel teaches Valine is an exemplary hydrophobic residue (pg 42, para 00121). Using Spiegel’s residue of X7 as an exemplary XaaT6, and Spiegel’s X10 and X11 as exemplary XaaT9 and XaaT10, respectively, wherein y’ is 0, this satisfies the limitations of XaaT6, XaaT9, and XaaT10 as being aliphatic residues such as Valine which contains 3 carbons. This analogy continues for XaaT7 which matches Spiegel’s X8, which is optionally aliphatic, leaving Spiegel’s X9 to be proline or an analogue thereof to correspond with instant XaaT8 (pg 218, claims 21-26). Spiegel teaches the exemplary species I-13 with XaaT8 being proline, in a sequence of (cy-Pro)(EtPh)KP(cy-Pro)HVGE(Et), which exemplifies the species where XaaT6 is C3 aliphatic (cy-Pro); using y’ is 1, Xaa-Xaa corresponds to (EtPh); XaaT7 is a C3 substituted aliphatic (K); XaaT8 is Proline (P); XaaT9 is C3 aliphatic (cy-Pro); XaaT10 is aromatic; and XaaT11 is C3 aliphatic (pg 121, entry 1). Note: “cy-Pro” refers to a cyclopropane residue; “EtPh” refers to an ethyl phenylene residue; and “Et” refers to an ethyl residue.
Claim 21
Regarding claim 21, Spiegel teaches compound I-13 above which contains XaaT8 as being Proline. By virtue of the language “or a combination thereof” this satisfies the claim limitation.
Claim 27-28
Claim 27-28 are drawn to the unnamed formula -(Xaa)a1-(Xaa)a2-(Xaa)a3-(Xaa)a4-(Xaa)a5-(Xaa)a6-(Xaa)a7-(Xaa)a8-(Xaa)a9-(Xaa)a10-(Xaa)a11-(Xaa)a12- which refers to variables of the subsequence in claim 20. Spiegel teaches the analogous formula, -X2X3X4X5X6X7X8X9X10X11X12- (pg 220, claim 38), wherein X2 and X12 are connected through a linkage Lb (pg 219 claim 34). Thus Lb can be considered analogous to (Xaa)a1 which Spiegel teaches is optionally a bivalent C1 aliphatic residue wherein the bivalent methylene is substituted with -C(O)- and -N(R’)- (claim 34), wherein R’ is R, wherein R is H (pg 217, para 5). Thus satisfying the limitations of claim 28 where (Xaa)a1 comprises Alanine (A). As discussed previously in the rejection of claim 20, Spiegel’s X9 is analogous to claim 21’s XaaT8, which is now claim 27’s (Xaa)a7. Since the conversions to Spiegel’s X# sequences have already been performed in the rejection of claim 20, reference will now be made to the conversion of claim 21’s variables to claim 27’s variables using [brackets]. The exemplary sequence given previously, -(cy-Pro)(EtPh)KP(cy-Pro)HVGE(Et)- satisfies the instant formula of -(Xaa)a1-(Xaa)a2-(Xaa)a3-(Xaa)a4-(Xaa)a5-(Xaa)a6-(Xaa)a7-(Xaa)a8-(Xaa)a9-(Xaa)a10-(Xaa)a11-(Xaa)a12- wherein (Xaa)a1 – (Xaa)a5 are 0, (Xaa)a4 [XaaT6] is C3 aliphatic (cy-Pro); using y’ is 1, (Xaa)a5 [(Xaa)y’] corresponds to (EtPh);
(Xaa)a6 [XaaT7] is a C3 substituted aliphatic (K); (Xaa)a7 [XaaT8] is Proline (P); (Xaa)a8 [XaaT9] is C3 aliphatic (cy-Pro); (Xaa)a9 [XaaT10] is aromatic (H); (Xaa)a10 [XaaT11] is C3 aliphatic (V); (Xaa)a11 is 0; and (Xaa)a12 is 0. Examiner recommends avoiding the unnecessary conversion of variables between claims.
claim 35
Regarding claim 35, Spiegel teaches two Xaa are linked together such as in the formula -X3X4X5X6X7X8X9X10X11X12- (pg 218, claim 21). Alternatively, Spiegel teaches individual Xaa can be linked together to form a bridge as seen in compounds 1-10, 1-12, 1-14, 1-18, 1-
19, 1-22, 1-23, 1-25, etc (pg 11, para 0032). In another embodiment, Spiegel teaches the individual Xaa can form a cycle such as this lysine (K) to a 2-amino-4-phenylbutanoic acid (EtPh) residue, thus satisfying when two Xaa are linked together, shown below (pg 121, entry 1).
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Spiegel also teaches where the amino acids are linked through a CO-CH2 linkage, shown below (pg 130, entry1)
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Claim 39,45
Regarding claims 39 and 45, Spiegel teaches the linker comprises –(CH2CH2O)n-; wherein n is 8 (pg 121, entry 2) thus satisfying part (c). Due to the indefiniteness of claim 39, this was found to be a valid interpretation. See the 112(b) rejection of claim 39.
Claim 41
Regarding claim 41, Spiegel teaches instant SEQ ID NO: 57, DCAWHLGELVWCT (Spiegel’s SEQ ID NO: 12), wherein “the two cysteines in the middle of the sequence, can each independently
form a disulfide bond as in natural proteins” (pg 39, para 00117). Thus satisfying the limitation of forming an -S-S- linkage.
Claim 50-51
Regarding claim 50-51, Spiegel teaches a composition where the therapeutic agent may be combined with neutrophil medicines and made into a mixture (pg 161, para 00440). Spiegel teaches the agent may be combined with tumor-specific T cells, such as tumor-infiltrating lymphocytes (TILs) (pg 162, para 00441) or NK cells (pg 163, para 0042).
Claim 52
Regarding claim 52, Spiegel teaches the composition can comprise the agent and a pharmaceutically acceptable carrier (pg 158, para 00433).
Claim 53
Regarding claim 53, Spiegel teaches the agent can be combined with a monoclonal antibody (pg 146, para 00401), wherein both components are mixed together in a single composition prior to administration (pg 146, para 00402).
Relevant Prior Art
The reference of Kadiyala (WO2018222987) teaches linking an ABT (“protein-binding moiety”) to a TBT (“targeting moiety”). Kadiyala teaches the targeting moiety targets proteins active in cancer cells, such as CTLA4, VEGF, VCAM-1 (pg 72, para 0285), alternatively Kadiyala teaches the targeting moiety can be an antibody component that recruits NK cells (pg 72, para 0291).
The reference of Qi (US20180346543) teaches a method of inducing cell death in a cancer cell via enhancing the cytotoxicity of a lymphocyte (claims 1-3) via contacting the lymphocyte with a chimeric transmembrane receptor that comprises an antigen-interacting domain that targets CD38 (para 0010) and/or an Fc-binding peptide of SEQ ID NO: 21, DCAWHLGELVWCT (para 0179).
Allowable Subject Matter
Claim 48
Claim 48 was found to be allowable. The structures of the specific CD38-targeting TBT moieties linked to the specific ABT moieties were not found in the prior art. The closest prior art is that of Spiegel which was discussed in detail in the above 102/103 rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA ANN ESSEX whose telephone number is 571-272-1103. The examiner can normally be reached Mon - Fri 8:30-5:00.
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/L.A.E./
Examiner, Art Unit 1675
/JEFFREY STUCKER/
Supervisory Patent Examiner, Art Unit 1675