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 .
The instant application having Application No. 17/773,669 filed on 5/2/2022 is presented for examination by the examiner.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/9/2026 has been entered.
Response to Amendment
This Office Action is in response to the communication filed 1/6/2026.
The amendments to claims 16 and 24, filed 12/10/2025, are acknowledged and accepted.
The cancellation of claim 27, filed 12/10/2025, is acknowledged and accepted.
Claims 16-26 and 28-34 remain pending in the application.
Response to Arguments
Applicant's arguments regarding claim 16, filed 12/10/2025, have been fully considered but they are not persuasive.
Applicant argues that neither Melli nor Nikoonahad teach the limitation “wherein the surface structure is generated without etching the material of the substrate, of the layer or of the layer system”. Applicant states that Nikoonahad does not imply any hint that a surface structure of an optical element may be produced by means of ion implantation and without etching. Examiner argues that column 91, paragraphs 1 and 2 and column 98, paragraph 1 of Nikoonahad state “An ion implantation process typically involves producing a beam of ions and driving at least some of the ions into a semiconductor substrate” and “the measured thickness of the lower portion of the masking material may also vary depending upon ion implantation energy”, which do not mention etching as a means of ion implantation. Additionally, “a person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418, 82 USPQ2d at 1396. See MPEP §2141.03(I).
Applicant’s arguments with respect to claim 24 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 (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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 16, 17, 19-22, 33, and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Melli (US 20180095201 A1), in view of Nikoonahad (US 6919957 B2).
Regarding claim 16, Melli discloses a method for producing a diffractive optical element, in at least Figure 2, comprising:
generating a surface structure (see examiner’s first markup of Figure 2) implanting ions (204 “ions”, Figure 2) into an implantation region of a material of a substrate (202 “substrate”, paragraph 0035 states “FIG. 2 shows a substrate 202 with a linear profile of ion density 204 after ion implantation, where the ions 204 implanted into the substrate 202 have linearly increasing densities (or depths) from a surface of the substrate 202 along a direction of the substrate 202”), a layer or a layer system, the surface structure (see examiner’s first markup of Figure 2) comprising a structure height of less than 10 nm (paragraph 0030 states "This technology can be applied to a substrate with a large area, e.g., more than 1 mm in size, and/or with a high speed, and achieve a high depth resolution, e.g., about 5 to 10 nm, with a large depth range, e.g., from 5 nm to 1000 nm").
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. The range disclosed by Melli is 5 to 10 nm which overlaps with the claimed range of less than 10 nm. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Below is an examiner’s first markup of Figure 2 of Melli pointing out a surface structure.
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However, Melli does not disclose wherein the implanted ions cause a volume change in the implantation region leading to an elevation of a surface and wherein the surface structure is generated without etching the material of the substrate, of the layer or of the layer system.
Nikoonahad teaches wherein the implanted ions cause a volume change in the implantation region leading to an elevation of a surface (column 96, lines 49-51 state “As the implant dose of the ion implantation process increases, the thickness of the amorphous layer may also increase”) and wherein the surface structure is generated without etching the material of the substrate (column 91, paragraphs 1 and 2 and column 98, paragraph 1), of the layer or of the layer system.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the method for producing a diffractive optical element of Melli modified by wherein the implanted ions cause a volume change in the implantation region leading to an elevation of a surface and wherein the surface structure is generated without etching the material of the substrate, of the layer or of the layer system, as taught by Nikoonahad, in order to reduce displacement damage (column 96, lines 32-57) and in order to be able to vary the concentration of implanted ions (column 91, paragraphs 1 and 2 and column 98, paragraph 1).
Regarding claim 17, the combination of Melli and Nikoonahad discloses all the limitations of claim 16 and Melli further discloses wherein the surface structure (see examiner’s first markup of Figure 2) is generated with the structure height varying in lateral direction (paragraph 0045 states "As an example, (IV) in FIG. 2 shows a diffraction grating having linearly varying depths 208 along a direction of the grating", see examiner’s first markup of Figure 2 which shows the structure height varying in lateral direction).
Regarding claim 19, the combination of Melli and Nikoonahad discloses all the limitations of claim 16 and Melli further discloses wherein implanting the ions (204 “ions”) comprises implanting the ions (204 “ions”) by a laterally confined ion beam (paragraph 0012 states "implanting different densities of ions into corresponding areas of the substrate includes: using a focused ion beam to locally implant the different densities of ions into the corresponding areas of the substrate"), and wherein an ion fluence of an ion beam is varied during the ion implantation (paragraphs 0012, 0015, 0035, and paragraph 0030 states “This technology adopts implantation of spatially different densities of ions into corresponding areas of a substrate. The ion implantation can change an etch sensitivity of the substrate, such that the etch sensitivities of the ion-implanted areas and the non-implanted (or non-doped) areas are different. Then, by combining with patterning technology, e.g., lithography or nanoimprinting, to selectively pattern a protective resist layer on the substrate, the technology can make the substrate have different etching depths/heights in the ion-implanted areas and the non-implanted areas, thus to get non-uniform micro/nanostructures”).
Regarding claim 20, the combination of Melli and Nikoonahad discloses all the limitations of claim 16 and Melli further discloses wherein the ions (204 “ions”) are implanted to an implantation depth between 10 nm and 500 nm, inclusive (paragraph 0042 states "With same etching time, the areas with varying (or different) densities of ions can be etched to have varied (or different) depths corresponding to the varying (or different) densities of ions" and paragraph 0043 states "The etching depths can be within a large range, e.g., from 5 nm to 200 nm", See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range)).
Regarding claim 21, the combination of Melli and Nikoonahad discloses all the limitations of claim 16 and Melli further discloses wherein an ion energy during the ion implantation is between 2 keV and 100 keV (paragraph 0043 states "a diffusion radius is 12 nm for an acceleration voltage of 30 KeV, and 45 nm for an acceleration voltage of 100 KeV").
Regarding claim 22, the combination of Melli and Nikoonahad discloses all the limitations of claim 16, however Melli does not disclose wherein the structure height of the surface structure is a non-integer multiple of a lattice plane spacing of the material.
It would have been obvious to one of ordinary skill in the art before the effective filing date to use a material with lattice plane spacing such that the structure height of the surface structure is a non-integer multiple of a lattice plane spacing of the material, since such a modification would involve only a mere change in size of a component. Scaling up or down of an element which merely requires a change in size is generally considered as being within the ordinary skill in the art. In re Rinehart, 189 USPQ 143 (CCAP 1976).
Regarding claim 33, the combination of Melli and Nikoonahad discloses all the limitations of claim 16 and Melli further discloses wherein the structure height of the surface structure (see examiner’s second markup of Figure 2) is a non-integer multiple of a thickness of a single layer (see examiner’s second markup of Figure 2) of the layer system of the diffractive optical element (examiner’s second markup of Figure 2 shows that a thickness of the surface structure is greater than a thickness of a single layer, therefore being a non-integer multiple).
Regarding claim 34, the combination of Melli and Nikoonahad discloses all the limitations of claim 16 however Melli does not disclose wherein the surface structure comprises the structure height of less than 1 nm.
Melli does teach the surface structure comprises the structure height of less than 10 nm (paragraph 0030 states "This technology can be applied to a substrate with a large area, e.g., more than 1 mm in size, and/or with a high speed, and achieve a high depth resolution, e.g., about 5 to 10 nm, with a large depth range, e.g., from 5 nm to 1000 nm").
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the structure height such that the surface structure comprises the structure height of less than 1 nm, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Antonie 195 USPQ 6 (CCPA 1977); In re Boesch 205 USPQ 215 (CCPA 1980).
Claims 24, 26, 29, 31, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Melli (US 20180095201 A1), in view of Nikoonahad (US 6919957 B2), and further in view of Lo (TW 200523377 A)(see attached machine translation).
Regarding claim 24, Melli discloses a diffractive optical element, in at least Figure 2, comprising:
a surface structure (see examiner’s first markup of Figure 2) in a material of a substrate (202 “substrate”), a layer or a layer system,
wherein the substrate (202 “substrate”), the layer or the layer system comprises an ion implantation region below the surface structure (see examiner’s first markup of Figure 2 which shows that the ions 204 can be implanted below the surface structure),
wherein the surface structure (see examiner’s first markup of Figure 2) comprises the elevation of the surface having a structure height of less than 10 nm (paragraph 0030 states "This technology can be applied to a substrate with a large area, e.g., more than 1 mm in size, and/or with a high speed, and achieve a high depth resolution, e.g., about 5 to 10 nm, with a large depth range, e.g., from 5 nm to 1000 nm").
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. The range disclosed by Melli is 5 to 10 nm which overlaps with the claimed range of less than 10 nm. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Below is an examiner’s first markup of Figure 2 of Melli pointing out a surface structure.
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However, Melli does not disclose wherein a changed volume in the ion implantation region is based on an ion implantation, wherein the changed volume provides an elevation of a surface of the ion implantation region, and wherein the structure height of the surface structure is a non-integer multiple of a lattice plane spacing of the material, wherein the lattice plane spacing is a spacing in a direction perpendicular to the substrate.
Nikoonahad teaches wherein a changed volume in the ion implantation region is based on an ion implantation (column 96, lines 49-51 state “As the implant dose of the ion implantation process increases, the thickness of the amorphous layer may also increase”) and wherein the changed volume provides an elevation of a surface of the ion implantation region (column 96, lines 49-51 state “As the implant dose of the ion implantation process increases, the thickness of the amorphous layer may also increase”).
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the diffractive optical element of Melli modified by wherein a changed volume in the ion implantation region is based on an ion implantation and wherein the changed volume provides an elevation of a surface of the ion implantation region, as taught by Nikoonahad, in order to reduce displacement damage (column 96, lines 32-57).
It would have been obvious to one of ordinary skill in the art before the effective filing date to utilize a structure height of the surface structure and a lattice plane spacing of the material such that the structure height of the surface structure is a non-integer multiple of a lattice plane spacing of the material, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Antonie 195 USPQ 6 (CCPA 1977); In re Boesch 205 USPQ 215 (CCPA 1980).
Lo teaches wherein the lattice plane spacing is a spacing in a direction perpendicular to the substrate (see examiner’s markup of Figure 2 which shows that the lattice plane spacing is a spacing in a direction perpendicular to the substrate).
Below is an examiner’s markup of Figure 2 of Lo pointing out a lattice plane spacing and a direction of the substrate.
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Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the diffractive optical element of Melli modified by wherein the lattice plane spacing is a spacing in a direction perpendicular to the substrate, as taught by Lo, in order to meet the definition of a lattice plane spacing.
Regarding claim 26, the combination of Melli, Nikoonahad, and Lo discloses all the limitations of claim 24 and Melli further discloses wherein an ion implantation depth is between 10 nm and 500 nm, inclusive (paragraph 0042 states "With same etching time, the areas with varying (or different) densities of ions can be etched to have varied (or different) depths corresponding to the varying (or different) densities of ions" and paragraph 0043 states "The etching depths can be within a large range, e.g., from 5 nm to 200 nm", See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range)).
Regarding claim 29, the combination of Melli, Nikoonahad, and Lo discloses all the limitations of claim 24 and Melli further discloses wherein the substrate (202 “substrate”) is a single crystal or an amorphous substrate (paragraph 0014 states "The substrate can be a silicon substrate").
Regarding claim 31, the combination of Melli, Nikoonahad, and Lo discloses all the limitations of claim 24 and Melli further discloses wherein the structure height of the surface structure (see examiner’s second markup of Figure 2) is a non-integer multiple of a thickness of a single layer (see examiner’s second markup of Figure 2) of the layer system of the diffractive optical element (examiner’s second markup of Figure 2 shows that a thickness of the surface structure is greater than a thickness of a single layer, therefore being a non-integer multiple).
Below is an examiner’s second markup of Figure 2 of Melli pointing out a single layer and a surface structure.
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Regarding claim 32, the combination of Melli, Nikoonahad, and Lo discloses all the limitations of claim 24, however Melli does not disclose wherein the elevation of the surface has the structure height of less than 1 nm.
Melli does teach the elevation of the surface has structure height of less than 10 nm (paragraph 0030 states "This technology can be applied to a substrate with a large area, e.g., more than 1 mm in size, and/or with a high speed, and achieve a high depth resolution, e.g., about 5 to 10 nm, with a large depth range, e.g., from 5 nm to 1000 nm").
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the structure height such that the elevation of the surface has the structure height of less than 1 nm, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Antonie 195 USPQ 6 (CCPA 1977); In re Boesch 205 USPQ 215 (CCPA 1980).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Melli (US 20180095201 A1), in view of Nikoonahad (US 6919957 B2), and further in view of Pyo (US 20090154871 A1).
Regarding claim 18, the combination of Melli and Nikoonahad discloses all the limitations of claim 16 and Melli further discloses wherein implanting the ions comprises implanting the ions through a patterned mask layer.
Pyo teaches wherein implanting ions comprises implanting ions through a patterned mask layer (118 “mask pattern”, paragraph 0086 states “Using the mask pattern 118 as an ion implantation mask, an element ion implantation process is performed”).
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the method for producing a diffractive optical element of Melli modified by implanting ions through a patterned mask layer, as taught by Pyo, in order to allow a plurality of ion implantation processes with different implantation energies in a predetermined region (paragraphs 0030, 0086).
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Melli (US 20180095201 A1), in view of Nikoonahad (US 6919957 B2), and further in view of Akune (US 5363238 A).
Regarding claim 23, the combination of Melli and Nikoonahad discloses all the limitations of claim 16, however Melli does not disclose wherein the structure height of the surface structure is smaller than a grating plane spacing of the material at the surface or is smaller than a thickness of a single layer of the layer system of the diffractive optical element.
Akune teaches wherein the structure height of the surface structure (column 4, lines 20-24 state “the laminar type diffraction grating 1 is obtained with …, and groove depth "d"=75 .ANG.” where 75 Angstroms = 7.5 nm) is smaller than a grating plane spacing of the material at the surface (column 4, lines 20-24 state “the laminar type diffraction grating 1 is obtained with… groove spacing "a"=1/1200 mm, …” where 1/1200 mm = 830 nm, so therefore 7.5 nm < 830 nm and the structure height is smaller than a grating plane spacing) or is smaller than a thickness of a single layer of the layer system of the diffractive optical element
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the method for producing a diffractive optical element of Melli modified by the structure height of the surface structure is smaller than a grating plane spacing of the material at the surface, as taught by Akune, in order to reflect a broader spectrum of light.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Melli (US 20180095201 A1), in view of Nikoonahad (US 6919957 B2), Lo (TW 200523377 A)(see attached machine translation), and further in view of Sugiyama (US 20140043686 A1).
Regarding claim 25, the combination of Melli, Nikoonahad, and Lo discloses all the limitations of claim 24, however Melli does not disclose wherein the diffractive optical element is a reflection diffraction grating.
Sugiyama teaches wherein the diffractive optical element is a reflection diffraction grating (10 “reflection type diffraction element”, paragraph 0046 states “a measured value of the diffraction efficiency of the reflection type diffraction element manufactured to have a grating vertex angle of .alpha.=90.degree.”).
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the diffractive optical element of Melli modified by the diffractive optical element being a reflection diffraction grating, as taught by Sugiyama, in order to satisfy optical performance by suppressing decrease of diffraction efficiency clue to a defect at a vertex of grating (paragraph 0014).
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Melli (US 20180095201 A1), in view of Nikoonahad (US 6919957 B2), Lo (TW 200523377 A)(see attached machine translation), and further in view of Akune (US 5363238 A).
Regarding claim 28, the combination of Melli, Nikoonahad, and Lo discloses all the limitations of claim 24, however Melli does not disclose wherein the structure height of the surface structure is less than a grating plane spacing of the substrate or is less than a thickness of a single layer of the layer system.
Akune teaches wherein the structure height of the surface structure (column 4, lines 20-24 state “the laminar type diffraction grating 1 is obtained with …, and groove depth "d"=75 .ANG.” where 75 Angstroms = 7.5 nm) is less than a grating plane spacing of the substrate (column 4, lines 20-24 state “the laminar type diffraction grating 1 is obtained with… groove spacing "a"=1/1200 mm, …” where 1/1200 mm = 830 nm, so therefore 7.5 nm < 830 nm and the structure height is less than a grating plane spacing) or is less than a thickness of a single layer of the layer system.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the diffractive optical element of Melli modified by the structure height of the surface structure is less than a grating plane spacing of the substrate, as taught by Akune, in order to reflect a broader spectrum of light.
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Melli (US 20180095201 A1), in view of Nikoonahad (US 6919957 B2), Lo (TW 200523377 A)(see attached machine translation), and further in view of Weiser (US 20080149858 A1).
Regarding claim 30, the combination of Melli, Nikoonahad, and Lo discloses all the limitations of claim 24, however Melli does not disclose wherein the layer or the layer system is a mirror for EUV radiation or X-rays.
Weiser teaches wherein the layer or the layer system (“mirror”) is a mirror for EUV radiation or X-rays (paragraph 0021 states "every material, which can particularly be applied as refractive or diffractive material at wavelengths of 365 nm, 248 nm, 193 nm or 158 nm or as reflective material for EUV (extreme ultraviolet) radiation with wavelengths at 13.5 nm, may be used as material to be processed. Accordingly, reflective optical elements like mirrors and the materials correspondingly used therefor can also be processed").
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the diffractive optical element of Melli modified by the layer or the layer system is a mirror for EUV radiation or X-rays, as taught by Weiser, in order to reflect extreme UV and avoid damage (paragraph 0021).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAINA M SWANSON whose telephone number is (703)756-5809. The examiner can normally be reached Mon-Fri, 7:30am-4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pinping Sun can be reached at 571-270-1284. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALAINA MARIE SWANSON/Examiner, Art Unit 2872
/WILLIAM R ALEXANDER/Primary Examiner, Art Unit 2872