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 .
Status of the Claims
Claims 1, 3-7 and 19-20 are pending.
Claims 1, 3-7, and 19 are newly amended.
Claims 1, 3-7 and 19-20 have been examined on their merits.
Withdrawn Objections & Rejections
The objections and rejections presented herein represent the full set of objections and rejections currently pending in the application. Any objections or rejections not specifically reiterated are hereby withdrawn.
The rejection of claims 1, 3-7 and 19-20 under 35 U.S.C. 103 as being unpatentable over Mahmoud et al. (Japanese Journal of Joint Disease, 2015, on IDS 06/21/2022, hereafter “Mahmoud”, previously cited) in view of Dezawa et al. (US 20120244129 A1, 2012, on IDS 06/21/2022, previously cited) and Jo et al. (Stem Cells, 2014) as evidence by Mahmoud et al. (The Japanese Journal of Orthopaedic Association, 2016, on IDS 06/21/2022, hereafter “Mahmoud 2016”, previously cited) is withdrawn in order to address the claimed and in order to incorporate of Yoshida et al. (US 20150196600 A1, 2015, previously cited) and Paronis et al. (Laboratory Animals, 2015, previously cited).
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 19 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 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 19 recites the limitation “the external stress stimulation” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim, as the claim it depends on (claim 1) does not require an external stress stimulation.
It is noted that previously claim 19 depended on claim 2 which was a step of concentrating cells by an external stress stimulation. Therefore, for compact prosecution, the limitation of claim 19 has been interpreted as a method for concentrating Muse cells (claim 1 as amended recites “concentrated” Muse cells).
Claim 20 is rejected under 35 USC 112(b) for its dependence on claim 19.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-7 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Mahmoud et al. (Japanese Journal of Joint Disease, 2015, on IDS 06/21/2022, hereafter “Mahmoud”, previously cited) in view of Dezawa et al. (US 20120244129 A1, 2012, on IDS 06/21/2022, previously cited), Jo et al. (Stem Cells, 2014, previously cited), and Yoshida et al. (US 20150196600 A1, 2015, previously cited) as evidence by Mahmoud et al. (The Japanese Journal of Orthopaedic Association, 2016, on IDS 06/21/2022, hereafter “Mahmoud 2016”, previously cited) and Paronis et al. (Laboratory Animals, 2015, previously cited).
In regards to claims 1 and 19-20, Mahmoud teaches methods for repairing osteochondral damage (specifically in the patellar groove of rats, thus in a subject) (Abstract, 1-5-6, p347). Mahmoud teaches that reconstruction of damaged osteochondral (bone and cartilage) tissues was observed (Abstract, 1-5-6, P347), which since it occurs in the patellar groove (which is an anatomical feature of the knee comprising articular cartilage overlaying bone) suggests integration of repair tissue (bone) and articular cartilage.
Additionally, as evidenced by Mahmoud 2016, which carries out a similar experiment, both bone and fibrocartilage (articular cartilage) formed in treated groups (Abstract, 3-7-EW-2, pS532).
Therefore, repair of articular cartilage in addition to bone would have been the expected result of Mahmoud, and the method of Mahmoud appears to in fact repair both subchondral bone covered by fibrous tissue and fibrous tissue in a site of osteochondral damage.
Methodologically, Mahmoud further teaches Muse cells were administered (thus, at least one time) to rats (subjects) sites of osteochondral defects (again, as above in the patellar grooves) with an effective dose of “5 x 104” (which a person of ordinary skill in the art would have recognized refers to 5 x 104) Muse cells (Abstract, 1-5-6, P347).
In regards to the Muse cells, as taught by Dezawa, Muse cells are SSEA-3 positive pluripotent stem cells isolated from mesenchymal body tissue (Abstract, claims 1, 14); are positive for CD105 (claim 2); have low or no telomerase activity (claim 6); have the ability to differentiate into the three germ layers (claim 7); do not exhibit tumorigenic proliferation (claim 8); and have self-renewal capability (claim 9).
As these are properties of Muse cells themselves, the Muse cells of Mahmoud would have these properties.
In regards to whether the Muse cells are “cultured and concentrated”, as above, Dezawa teaches that Muse cells are isolated from mesenchymal body tissue (Abstract, claims 1, 14), and a person of ordinary skill in the art would have recognized that this requires culturing these cells ex vivo. Moreover, a person of ordinary skill in the art would have been motivated to culture these cells to ensure their survivability ex vivo, and because Dezawa teaches that these cells can be readily cultured (paragraph [0016]), it could have been done with predictable results and a reasonable expectation of success.
In regards to concentrating, while Mahmoud does not explicitly teach that the Muse cells are concentrated, Dezawa teaches that Muse cells can be enriched (concentrated) by subjecting mesenchymal to external stress or trauma including the protease trypsin (paragraphs, [0115, 0118 - 0119]). A person of ordinary skill in the art would have been motivated to concentrate Muse cells because Dezawa teaches that “cell fractions containing many Muse cells” can be obtained this way (paragraph 0129]). Furthermore, because Dezawa teaches methods for concentrating Muse cells including with the protease trypsin (paragraphs, [0115, 0118-0119]), it could have been done with predictable results and a reasonable expectation of success so as to increase the number of Muse cells for the method of Mahmoud.
In regards to “intraarticularly injecting” Muse cells, specifically, Mahmoud teaches that “An osteochondral defect (2 mm) was created in the patellar groove of immunodeficient rat knees. Rats were divided into three groups: Control group- PBS injection. Non-Muse group (5 x 104) and Muse group (5 x 104)” (Abstract, p347).
Thus, Mahmoud is silent on whether Muse cells are specifically injected into the intraarticular space (the patellar groove).
However, a person ordinary skill in the art would have been motivated to inject Muse cells in order to maintain methodological conformity with controls (PBS injection group), and not introduce extraneous variables. They would be motivated to intraarticularly inject Muse cells because it is most proximal to site of damage (as above, osteochondral defects were created in the patellar groove) and it would ensure maximal exposure of Muse cell damaged tissues.
They would have been further motivated to intraarticularly in Muse cells because Jo teaches that direct intraarticular injection of mesenchymal stem cells (of which Muse cells are a type) offers great advantages as it avoids surgeries and associated side effects, such as hypertrophy and ossification of periosteal coverage, immune reaction and disease transmission caused by xenograft coverage, and provides a better treatment opportunities for the elderly with comorbidities (Introduction, p1254-1255).
They would also have been motivated to intraarticularly inject Muse cells because Jo teaches that intraarticular injection of mesenchymal stem cells (which again, Muse cells are a type) improves function and pain of the knee joint without causing adverse events, and reduces cartilage defects by regeneration of hyaline-like articular cartilage (Abstract, p1255).
Furthermore, because Jo demonstrates that stem cells can be intraarticularly injected and that intraarticular injection of stem cells promotes regeneration of tissues in the intraarticular space (Abstract, p1255; Arthroscopy and Stem Cell Injection, p 1255; Fig. 4, p1260-1261), because Mahmoud and Jo are in the same technical field of using mesenchymal cells to treat articular damage, and because Dezawa teaches that Muse cells can be administered directly to or to an area in the vicinity of injured or damaged tissue so that these cells can differentiate into cells unique to the relevant tissue (paragraph [0158]), it could have been done with predictable results and a reasonable expectation of success.
In regards to the concentration of the effective dose, as above, Mahmoud teaches an effective dose of “5 x 104” (which a person of ordinary skill in the art would have recognized refers to 5 x 104) Muse cells (Abstract, 1-5-6, P347).
While Mahmoud is silent as to the mass of these rats, as evidenced by Paronis, adult Winstar rats have a mean body weight of 238.22 ± 34.9 g (Abstract, p188), which comports with what is well-known in the art that lab rats typically have a weight range of about 200 to 300 g (with males being heavier than females). When normalized to a cells/kg per individual rat, this corresponds to a concentration of about 1.6 to 2.5 x 105 cells/kg per individual, which overlaps with the range as in claim 8.
Additionally, a person of ordinary skill in the art could have arrived at a concentration of 1.6 to 2.5 x 105 cells/kg per individual based on body weight by routine optimization, and the disclosure does not point to a criticality in this range.
In regards to routine optimization, MPEP 2144.05(II)(A) states, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.")
In the instant case because a Jo teaches that different doses of cells can be administered to patients (low-dose (1.0 x 107 cells), mid-dose (5.0 x 107), and high-dose (1.0 x 108) (Abstract, p1254; Table 1, p1258; which when adjusted to cells/kg (see weights in Table 1) is a wide range of 1.56 x 105 cells/kg to 1.56 x 106 cells/kg, and which overlaps with the range as in claim 8), and because Yoshida teaches that superior effects can be obtained by administering concentrations of Muse cells of 1.7 x 105 to 2.5 x 105 cells per kg per individual (paragraph [0070], which also overlaps with the claimed ranges) a person of ordinary skill in the art could have arrived at the concentration 1.6 to 2.5 x 105 cells/kg by routine optimization with predictable results and a reasonable expectation of success.
In regards to the clause wherein the subject develops 50% of new subchondral bone and cartilage in the subject 4 weeks after injection, Applicant should note that this is a natural property or consequence of the method step. The claim does not require specific method steps in regards to the timing, but only states that subjects show this level of new subchondral bone and cartilage at 4 weeks.
In the instant case, because Mahmoud as modified teaches the same method it would naturally produce these results. Indeed, Mahmoud also teaches that 70-90% of new subchondral bone was formed (Abstract, 1-5-6, P347) and therefore, appears to in fact produce the same results.
In regards to claim 3, as taught by Dezawa, Muse cells are CD117-negative and CD146-negative (claim 3).
In regards to claim 4, as taught by Dezawa, Muse cells are CD117-negative, CD146-negative, NG2- negative, CD34-negative, vWF-negative and CD271-negative (claim 4).
In regards to claim 5, as taught by Dezawa, Muse cells are CD34-negative, CD117-negative, CD146- negative, CD271-negative, NG2-negative, vWF-negative, Sox10-negative, Snail-negative, Slug-negative, Tyrpl-negative and Dct-negative (claim 5).
In regards to claims 6, Mahmoud teaches that at sites of osteochondral damage, histological scoring was significantly better in Muse-treated groups than non-treated groups who exhibited defects replaced with fibrous tissue, and that in 70-90% of the Muse-treated groups new subchondral bone was formed (Abstract, p347). Therefore, a person of ordinary skill in the art would recognize that these cells would accumulate at these sites. Additionally, the injection of Muse cells into the intraarticular space would result in their accumulation at that site.
In regards to claim 7, as discussed above, as taught by Dezawa Muse cells can differentiate into chondrocytes (paragraph [0164]).
Therefore, the combined teachings of Mahmoud, Dezawa, and Jo renders the invention unpatentable as claimed.
Response to Arguments
Applicant argues that the claims as amended do not require an assessing step and are cultured and concentrated Muse cells specifically and therefore, the rejection under 35 USC 101 should be withdrawn because the claims are not drawn to a judicial exception (Remarks, p5-6).
Applicant’s arguments, see Remarks, p5-6, filed 04/22/2026, with respect to the rejection under 35 USC 101 have been fully considered and are persuasive. The rejection of the claims under 35 USC 101 has been withdrawn.
Applicant argues that Mahmoud 2015 is an abstract with a limited description and questionable enabling disclosure because there is no explanation of how the cells described were obtained (Remarks, p3). In particular, Applicant argues that Mahmoud fails to teach that the Muse cells are SSEA-3 positive, concentrated, etc. (Remarks, p6-7; repeated p10 in regards to claims 2 and 19-20). In particular, Applicant argues that there is insufficient information on how to even obtain the claimed cells (Remarks, p7).
Applicant’s arguments filed 04/22/2026 have been fully considered but are not found persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., how the Muse cells are acquired) 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).
In regards to whether Muse cells are SSEA-3 positive, concentrated, etc. (see Remarks, p6-7), these are all known properties of Muse cells, methods for enriching them, or natural properties of subjects after the method steps.
As discussed above, as taught by Dezawa, Muse cells are SSEA-3 positive pluripotent stem cells isolated from mesenchymal body tissue (Abstract, claims 1, 14); are positive for CD105 (claim 2); have low or no telomerase activity (claim 6); have the ability to differentiate into the three germ layers (claim 7); do not exhibit tumorigenic proliferation (claim 8); and have self-renewal capability (claim 9).
As these are properties of Muse cells themselves, the Muse cells of Mahmoud would have these properties.
In regards to whether the Muse cells are “cultured and concentrated”, as above, Dezawa teaches that Muse cells are isolated from mesenchymal body tissue (Abstract, claims 1, 14), and a person of ordinary skill in the art would have recognized that this requires culturing these cells ex vivo. Moreover, a person of ordinary skill in the art would have been motivated to culture these cells to ensure their survivability ex vivo, and because Dezawa teaches that these cells can be readily cultured (paragraph [0016]), it could have been done with predictable results and a reasonable expectation of success.
In regards to concentrating, while Mahmoud does not explicitly teach that the Muse cells are concentrated, Dezawa teaches that Muse cells can be enriched (concentrated) by subjecting mesenchymal to external stress or trauma including the protease trypsin (paragraphs, [0115, 0118 - 0119]). A person of ordinary skill in the art would have been motivated to concentrate Muse cells because Dezawa teaches that “cell fractions containing many Muse cells” can be obtained this way (paragraph 0129]). Furthermore, because Dezawa teaches methods for concentrating Muse cells including with the protease trypsin (paragraphs, [0115, 0118-0119]), it could have been done with predictable results and a reasonable expectation of success so as to increase the number of Muse cells for the method of Mahmoud.
In regards to Dezawa, Applicant argues that this is a secondary references and does not teach that both osteochondral bone and cartilage can be regenerated using such Muse cells, etc. (Remarks, p8).
Continuing, Applicant argues that the suggestion that Muse cells may differentiate into various cell types including chondrocytes is, at best, an opportunity for the skilled artisan to experiment (Remarks, p8).
Therefore, Applicant concludes that there is no explicit teaching of the substitution, nor can they be inferred, and that there is no reasonable expectation of success (Remarks, p8). Furthermore, Applicant argues that there is no suggestion that the unexpected result of 50% bone and cartilage restoration in the subject at 4 weeks would occur (Remarks, p8; repeated p10).
Applicant’s arguments filed 04/22/2026 have been fully considered but are not found persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Specifically, in regards to differentiating Muse cells (and thus, repairing a site of osteochondral damage), this feature is specifically taught by Mahmoud as discussed above.
Specifically, as above, teaches methods for repairing osteochondral damage (specifically in the patellar groove of rats, thus in a subject) (Abstract, 1-5-6, p347). Mahmoud teaches that reconstruction of damaged osteochondral (bone and cartilage) tissues was observed (Abstract, 1-5-6, P347), which since it occurs in the patellar groove (which is an anatomical feature of the knee comprising articular cartilage overlaying bone) suggests integration of repair tissue (bone) and articular cartilage.
Additionally, as evidenced by Mahmoud 2016, which carries out a similar experiment, both bone and fibrocartilage (articular cartilage) formed in treated groups (Abstract, 3-7-EW-2, pS532).
Therefore, repair of articular cartilage in addition to bone would have been the expected result of Mahmoud, and the method of Mahmoud appears to in fact repair both subchondral bone covered by fibrous tissue and fibrous tissue in a site of osteochondral damage.
Therefore, the fact that Dezawa teaches that Muse cells can differentiated into cells including chondrocytes (and also at least osteoblasts, see Dezawa paragraph [0164]) supports the conclusion that the method of Mahmoud has this effect.
In regards to Applicant’s argument that Dezawa cannot be substituted, it has not has not been argued that Dezawa provides a substitution to the method of Mahmoud.
Instead, as above, Dezawa teaches that Muse cells have specific properties (SSEA-3 positivity, etc.) and provides predictable motivation to concentrate and culture Muse cells.
In regards to Applicant’s arguments regarding unexpected results, as above, in regards to the clause wherein the subject develops 50% of new subchondral bone and cartilage in the subject 4 weeks after injection, Applicant should note that this is a natural property or consequence of the method step. The claim does not require specific method steps in regards to the timing, but only states that subjects show this level of new subchondral bone and cartilage at 4 weeks.
In the instant case, because Mahmoud as modified teaches the same method it would naturally produce these results. Indeed, Mahmoud also teaches that 70-90% of new subchondral bone was formed (Abstract, 1-5-6, P347) and therefore, appears to in fact produce the same results.
In regards to Jo, Applicant argues that Jo is silent regarding Muse cells specifically and their characteristics (Remarks, p8). Continuing, Applicant argues that the differences in Jo’s cells undermines the arguments and questions whether Jo’s suggestions can even be applied to the reference combination (Remarks, p8). Applicant asserts that Jo is not properly combinable (Remarks, p8-9).
Applicant’s arguments filed 04/22/2026 have been fully considered but are not found persuasive.
As discussed above, Mahmoud explicitly teaches that Muse cells are capable of repairing osteochondral defects at sites of articular damage.
While Mahmoud is silent on whether Muse cells are specifically injected into the intraarticular space (the patellar groove), Mahmoud also explicitly teaches that “An osteochondral defect (2 mm) was created in the patellar groove of immunodeficient rat knees. Rats were divided into three groups: Control group- PBS injection. Non-Muse group (5 x 104) and Muse group (5 x 104)” (Abstract, p347).
Thus, injection is an embodiment envisioned by Mahmoud.
As discussed above, a person ordinary skill in the art would have been motivated to inject Muse cells in order to maintain methodological conformity with controls (PBS injection group), and not introduce extraneous variables. They would be motivated to intraarticularly inject Muse cells because it is most proximal to site of damage (as above, osteochondral defects were created in the patellar groove) and it would ensure maximal exposure of Muse cell damaged tissues.
Jo only provides further motivation to intraarticularly inject cells at sites of osteochondral damage.
As discussed above, a person of ordinary skill in the art would have been further motivated to intraarticularly in Muse cells because Jo teaches that direct intraarticular injection of mesenchymal stem cells (of which Muse cells are a type) offers great advantages as it avoids surgeries and associated side effects, such as hypertrophy and ossification of periosteal coverage, immune reaction and disease transmission caused by xenograft coverage, and provides a better treatment opportunities for the elderly with comorbidities (Introduction, p1254-1255).
Furthermore, because Jo demonstrates that stem cells can be intraarticularly injected and that intraarticular injection of stem cells promotes regeneration of tissues in the intraarticular space (Abstract, p1255; Arthroscopy and Stem Cell Injection, p 1255; Fig. 4, p1260-1261), because Mahmoud and Jo are in the same technical field of using mesenchymal cells to treat articular damage, and because Dezawa teaches that Muse cells can be administered directly to or to an area in the vicinity of injured or damaged tissue so that these cells can differentiate into cells unique to the relevant tissue (paragraph [0158]), it could have been done with predictable results and a reasonable expectation of success.
In regards to the differences between the Muse cells as taught by Mahmoud and the stem cells as taught by Jo, they are both species of MSCs, the teachings of Jo are generic to intraarticular injection of stem cells, and Jo does not indicate that the specific phenotypes (e.g., expression of CD34) has any effect on the physical process of intraarticular injection of cells.
Applicant argues that Yoshida and Paronis are deficient because they are not directed to bone and cartilage repair or fail to remedy the deficiencies discussed above (Remarks, p11).
Applicant’s arguments filed 04/22/2026 have been fully considered but are not found persuasive.
None of Mahmoud, Dezawa, or Jo is deficient as discussed above.
In regards to Yoshida and Paronis, these references are not replied upon to teach bone and cartilage repair.
Instead, as above, Paronis is relied upon to show the average mass of rats, while Yoshida is relied upon to demonstrate that a person of ordinary skill in the art could have arrived at the claimed dosage concentration by routine optimization with predictable results and a reasonable expectation of success.
Conclusion
No claims are allowed.
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.
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/JOSEPH PAUL MIANO/Examiner, Art Unit 1631