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 .
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 14 – 16, 18 – 27, and 29 – 35 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.
Claims 14 and 20 sets forth a polyol composition (PZ-1) comprising at least one polyol (P1) and now also subsequently sets forth the at least one polyol (P1) is polypropylene glycol. These limitations appear to conflict in scope, as “at least one” would allow for (P1) to correspond to multiple polyols while the limitation that “at least one polyol (P1) is polypropylene glycol” sets forth this component corresponds to a single polyol. For the purposes of further examination, Claims 14 and 20 will be interpreted as simply setting forth a polyol composition (PZ-1) comprising polypropylene glycol having the claimed primary hydroxyl group content. The [at least one] polyol (P1) recited in Claims 32, 34, and 35 will also be interpreted as referring to this polypropylene glycol.
As all other pending claims ultimately depend on Claim 14, they incorporate its subject matter and are also consequently rejected on this statute.
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 14 – 16, 18, 21 – 24, 26, 27, 29 – 32, 34, and 35 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/016313 to Jaehnigen et al. (hereinafter Jaehnigen) in view of JP 2018062588 to Hayashi et al. (hereinafter Hayashi) and CN 106674475 to Ding et al. (hereinafter Ding), as evidenced by US 6,531,556 to Satake.
For the purposes of examination, citations for Hayashi are taken are taken from a machine translation of the document obtained from the European Patent Office website in May 2025. Citations for Jaehnigen are taken from an English language equivalent of the document, US 2020/0231739. Citations for Ding are taken are taken from a machine translation of the document obtained from the European Patent Office website in May 2025.
Regarding Claims 14 – 16, 27, 31, and 34. Jaehnigen teaches foamed beads/pellets comprising a thermoplastic polyurethane [0001] – [0002]. The foamed pellets are obtained by a process comprising:
reacting a polyol composition comprising a polyether diol with a polyisocyanate and a chain extender [0012] – [0017]. The polyether diol may specifically be polypropylene glycol [0052]. The chain extender has a molecular weight of less than 300 g/mol [0049]. The diameter of the obtained foamed pellets is 0.2 to 20 mm [0181]. Jaehnigen teaches its foamed pellets generally have a bulk density of 50 to 200 g/l [0182].
Jaehnigen is silent regarding the quantity of primary hydroxyl groups in the polypropylene glycol. However, Hayashi teaches the concept of using a commercially available polypropylene glycol, SANNIX® PP-2000, in the preparation of a polyurethane foam. Hayashi teaches SANNIX® PP-2000 has a molecular weight of 2,000 g/mol [0060]. Satake provides evidence that SANNIX® PP-2000 has a proportion of primary hydroxyl groups of 2% (Column 14, Line 65 – Column 15, Line 1). The remaining 98% of the hydroxyl groups in SANNIX® PP-2000 are thus non-primary/secondary hydroxyl groups. Jaehnigen and Hayashi are analogous art as they are from the same field of endeavor, namely polyurethane foams. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide SANNIX® PP-2000 as the polypropylene glycol in Jaehnigen. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Hayashi shows that SANNIX® PP-2000 is known in the art to be a suitable, commercially available polypropylene glycol for the preparation of polyurethane foams [0060].
Jaehnigen teaches the polyurethane may be formed by a prepolymer process in which some of the OH components are reacting with isocyanate in a first step and then the remaining OH components are reacted with the prepolymer in a second step [0054], corresponding to a two-step process. Jaehnigen does not expressly teach the remaining OH components correspond to the chain extender, i.e. that the polyol composition containing the prepolymer is reacted with the chain extender. However, Ding teaches the concept of preparing polyurethane granules/pellets by a prepolymer process in which the polyol and isocyanate component are reacted in a first step to form a prepolymer. The obtained prepolymer is then reacted with a chain extender is a second step [0024]. Jaehnigen and Ding are analogous art as they are from the same field of endeavor, namely polyurethane pellets. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to prepare the polyurethane of Jaehnigen by providing reacting the polyol with the isocyanate in the first step and then reacting the prepolymer formed with the chain extender in the second step, as taught by Ding which corresponds to a process in which the at least one polyol is employed and reacted only in the first step and the chain extender (CE) is employed and reacted only in the second step. As the obtained prepolymer is isocyanate-terminated, it would also be reasonably expected that a stochiometric excess of isocyanate is used such that all terminal hydroxyl groups of the polypropylene glycol are reacted. The motivation would have been that Ding shows this is a suitable sequence for adding the isocyanate-reactive components when forming polyurethane pellets by a prepolymer process [0024].
Regarding Claim 18. Jaehnigen teaches the foamed pellets of Claim 14 wherein the chain extender is preferably butane-1,4-diol [0049].
Regarding Claims 21 and 22. Jaehnigen teaches a method comprising producing a foam molding/molded body in which the foamed pellets of Claim 14 are introduced into a mold and fused together [0232] – [0234].
Regarding Claim 23. Jaehnigen teaches the method of Claim 21 in which the molded body is a shoe insole [0251].
Regarding Claim 24. Jaehnigen teaches sports equipment comprising the foamed pellets of Claim 14 [0251].
Regarding Claim 26. Jaehnigen teaches a sports surface comprising the foamed pellets of Claim 14 [0251].
Regarding Claim 29. Jaehnigen teaches the foamed pellets of Claim 14. As detailed in the rejection of Claim 14 above, it is the Office’s position that it would have been obvious to a person of ordinary skill in the art to provide SANNIX® PP-2000 as the polypropylene glycol in Jaehnigen, in light of Hayashi [0060].
Satake provides evidence that SANNIX® PP-2000 has a proportion of primary hydroxyl groups of 2% (Column 14, Line 65 – Column 15, Line 1). The remaining 98% of the hydroxyl groups in SANNIX® PP-2000 are thus non-primary/secondary hydroxyl groups. Although this range is not identical to the claimed range of greater than 98% non-primary hydroxyl groups, it is the Office’s position that the values are close enough that one of ordinary skill in the art would have expected similar properties. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05.
Regarding Claim 30. Jaehnigen teaches the foamed pellets of Claim 14 wherein the chain extender is preferably butane-1,4-diol [0049] and diphenylmethane-4,4’-diioscyanate is described as a preferred polyisocyanate [0056].
Regarding Claim 32. Jaehnigen teaches the foamed pellets of Claim 14. As detailed in the rejection of Claim 14 above, it is the Office’s position that it would have been obvious to a person of ordinary skill in the art to provide SANNIX® PP-2000 as the polypropylene glycol in Jaehnigen, in light of Hayashi [0060], corresponding to a polyol composition “consisting of” polypropylene glycol.
Regarding Claim 35. Jaehnigen teaches the foamed pellets of Claim 14 wherein the polyol composition contains (ii.1) at least one polyether diol, which may correspond to polypropylene glycol (P1); and (ii.2) at least one polysiloxane [0015] – [0016], which may be present in an amount of as low as 0.1 to 50% by weight [0044].
(P1) will then correspond to 50 to 99.9% by weight of the polyol composition. While this range is not identical to the claimed range of greater than 95% by weight (P1), it has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/016313 to Jaehnigen et al. (hereinafter Jaehnigen) in view of JP 2018062588 to Hayashi et al. (hereinafter Hayashi) and CN 106674475 to Ding et al. (hereinafter Ding), as evidenced by US 6,531,556 to Satake - as applied to Claim 14 above - and further in view of WO 2010/010010 to Schips et al. (hereinafter Schips).
For the purposes of examination, citations for Schips are taken from a machine translation of the document filed by applicant with United States Patent and Trademark Office on November 9, 2022.
Regarding Claim 19. Jaehnigen teaches the foamed pellets of Claim 14 but does not expressly teach the foamed pellets further comprise at least one thermoplastic resin. However, Schips teaches the concept of combining a styrene polymer with a thermoplastic polyurethane to prepare foamed particles/pellets [0068] – [0076]. Jaehnigen and Schips are analogous art as they are from the same field of endeavor, namely foamed pellets based on thermoplastic polyurethane. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to further include a polystyrene polymer in the foamed pellets of Jaehnigen, as taught by Schips. The motivation would have been that Schips teaches the combination of thermoplastic polyurethane and polystyrene polymers provides particles having high expansion capacity, low storage volume, and high elasticity [0008].
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/016313 to Jaehnigen et al. (hereinafter Jaehnigen) in view of JP 2018062588 to Hayashi et al. (hereinafter Hayashi) and CN 106674475 to Ding et al. (hereinafter Ding), as evidenced by US 6,531,556 to Satake - as applied to Claim 14 above - and further in view of US 2010/0047550 to Prissok et al. (hereinafter Prissok).
Regarding Claim 25. Jaehnigen teaches the foamed pellets of Claim 14 but does not expressly teach the foamed pellets are further combined with a matrix composed of a polymer to provide a hybrid material. However, Prissok teaches the concept of preparing a hybrid material comprising a matrix of polyurethane and foamed particles of a thermoplastic polyurethane [0001]. Jaehnigen and Prissok are analogous art as they are from the same field of endeavor, namely foamed pellets based on thermoplastic polyurethane. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to prepare a hybrid material comprising a matrix of polyurethane and the foamed pellets of Jaehnigen. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Prissok shows that foamed particles of thermoplastic polyurethane are known in the art to be suitable for the preparation of hybrid materials comprising a matrix of polyurethane [0001]. Prissok further teaches this combination of materials is useful in the production of hybrid materials having reduced density, particular/targeted properties, and/or in which material costs are reduced [0004].
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/016313 to Jaehnigen et al. (hereinafter Jaehnigen) in view of JP 2018062588 to Hayashi et al. (hereinafter Hayashi) and CN 106674475 to Ding et al. (hereinafter Ding), as evidenced by US 6,531,556 to Satake.
For the purposes of examination, citations for Hayashi are taken are taken from a machine translation of the document obtained from the European Patent Office website in May 2025. Citations for Jaehnigen are taken from an English language equivalent of the document, US 2020/0231739. Citations for Ding are taken are taken from a machine translation of the document obtained from the European Patent Office website in May 2025.
Regarding Claim 20. Jaehnigen teaches a process for the production of foamed beads/pellets comprising a thermoplastic polyurethane [0001] – [0002]. The process comprises:
reacting a polyol composition comprising a polyether diol with a polyisocyanate and a chain extender [0012] – [0017]. The polyether diol may specifically be polypropylene glycol [0052]. The chain extender has a molecular weight of less than 300 g/mol [0049]. The diameter of the obtained foamed pellets is 0.2 to 20 mm [0181]. Jaehnigen teaches its foamed pellets generally have a bulk density of 50 to 200 g/l [0182].
Jaehnigen is silent regarding the quantity of primary hydroxyl groups in the polypropylene glycol. However, Hayashi teaches the concept of using a commercially available polypropylene glycol, SANNIX® PP-2000, in the preparation of a polyurethane foam [0060]. Satake provides evidence that SANNIX® PP-2000 has a proportion of primary hydroxyl groups of 2% (Column 14, Line 65 – Column 15, Line 1). Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide SANNIX® PP-2000 as the polypropylene glycol in Jaehnigen. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Hayashi shows that SANNIX® PP-2000 is known in the art to be a suitable, commercially available polypropylene glycol for the preparation of polyurethane foams [0060].
Jaehnigen teaches the polyurethane may be formed by a prepolymer process in which some of the OH components are reacting with isocyanate in a first step and then the remaining OH components are reacted with the prepolymer in a second step [0054], corresponding to a two-step process. Jaehnigen does not expressly teach the remaining OH components correspond to the chain extender, i.e. the polyol composition containing the prepolymer is reacted with the chain extender. However, Ding teaches the concept of preparing polyurethane granules/pellets by a prepolymer process in which the polyol and isocyanate component are reacted in a first step to form a prepolymer. The obtained prepolymer is then reacted with a chain extender is a second step [0024]. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to prepare the polyurethane of Jaehnigen by providing reacting the polyol with the isocyanate in the first step and then reacting the prepolymer formed with the chain extender in the second step, as taught by Ding. The motivation would have been that Ding shows this is a suitable sequence for adding the isocyanate-reactive components when forming polyurethane pellets by a prepolymer process [0024].
Claims 14 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/016313 to Jaehnigen et al. (hereinafter Jaehnigen) in view of JP 2018062588 to Hayashi et al. (hereinafter Hayashi) and CN 106674475 to Ding et al. (hereinafter Ding), as evidenced by US 6,531,556 to Satake. Note: this is an alternative rejection provided specifically to address the subject matter of new Claim 33.
For the purposes of examination, citations for Hayashi are taken are taken from a machine translation of the document obtained from the European Patent Office website in May 2025. Citations for Jaehnigen are taken from an English language equivalent of the document, US 2020/0231739. Citations for Ding are taken are taken from a machine translation of the document obtained from the European Patent Office website in May 2025.
Regarding Claims 14 and 33. Jaehnigen teaches foamed beads/pellets comprising a thermoplastic polyurethane [0001] – [0002]. The foamed pellets are obtained by a process comprising:
reacting a polyol composition comprising a polyether diol with a polyisocyanate and a chain extender [0012] – [0017]. The polyether diol may specifically be polypropylene glycol [0052]. The chain extender has a molecular weight of less than 300 g/mol [0049]. The diameter of the obtained foamed pellets is 0.2 to 20 mm [0181]. Jaehnigen teaches its foamed pellets generally have a bulk density of 50 to 200 g/l [0182].
Jaehnigen is silent regarding the quantity of primary hydroxyl groups in the polypropylene glycol. However, Hayashi teaches the concept of using a commercially available polypropylene glycol, SANNIX® PP-2000, in the preparation of a polyurethane foam. Satake provides evidence that SANNIX® PP-2000 has a proportion of primary hydroxyl groups of 2% (Column 14, Line 65 – Column 15, Line 1). The remaining 98% of the hydroxyl groups in SANNIX® PP-2000 are thus non-primary/secondary hydroxyl groups. Jaehnigen and Hayashi are analogous art as they are from the same field of endeavor, namely polyurethane foams. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide a polypropylene glycol in Jaehnigen with a primary hydroxyl group content of 2%. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Hayashi shows that polypropylene glycols having this primary hydroxyl content are known in the art to be suitable for the preparation of polyurethane foams [0060].
Jaehnigen teaches the polyurethane may be formed by a prepolymer process in which some of the OH components are reacting with isocyanate in a first step and then the remaining OH components are reacted with the prepolymer in a second step [0054], corresponding to a two-step process. Jaehnigen does not expressly teach the remaining OH components correspond to the chain extender, i.e. that the polyol composition containing the prepolymer is reacted with the chain extender. However, Ding teaches the concept of preparing polyurethane granules/pellets by a prepolymer process in which the polyol and isocyanate component are reacted in a first step to form a prepolymer. The obtained prepolymer is then reacted with a chain extender is a second step [0024]. Jaehnigen and Ding are analogous art as they are from the same field of endeavor, namely polyurethane pellets. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to prepare the polyurethane of Jaehnigen by providing reacting the polyol with the isocyanate in the first step and then reacting the prepolymer formed with the chain extender in the second step, as taught by Ding which corresponds to a process in which the at least one polyol is employed and reacted only in the first step and the chain extender (CE) is employed and reacted only in the second step. As the obtained prepolymer is isocyanate-terminated, it would then be reasonably expected that a stochiometric excess of isocyanate is used such that all terminal hydroxyl groups of the polypropylene glycol are reacted. The motivation would have been that Ding shows this is a suitable sequence for adding the isocyanate-reactive components when forming polyurethane pellets by a prepolymer process [0024].
Response to Arguments
Applicant's arguments filed June 29, 2026 have been fully considered. The Office responds as follows:
Interview
Applicant indicates that new Claim 32 recite the polyol composition (PZ-1) “consists of” the at least one polyol (P1), which excludes the polysiloxane of the reference by use of the closed “consists of” language. However, it has been held that the "consisting of" phrase limits only the element set forth in that clause; other elements are not excluded from the claim as a whole. Mannesmann Demag Corp. v. Engineered Metal Products Co., 793 F.2d 1279, 230 USPQ 45 (Fed. Cir. 1986). See also In re Crish, 393 F.3d 1253, 73 USPQ2d 1364 (Fed. Cir. 2004) (MPEP 2111.03(II))
As detailed in the rejection of Claim 14 above, it is the Office’s position that it would have been obvious to a person of ordinary skill in the art to provide SANNIX® PP-2000 as the polypropylene glycol in Jaehnigen, in light of Hayashi [0060]. The proposed combination of reference thus provides a polyol composition “consisting of” polypropylene glycol. It is consequently the Office’s position that the subject matter of Claim 32 is still properly met by the proposed combination of references. To effectively exclude the polysiloxane of Jaehnigen, it is suggested claim language such as “wherein polypropylene glycol is the sole polyol provided in step (i)” or “wherein polypropylene glycol is the sole polyol reacted with polyisocyanate (I1) to obtain polyol composition (PZ-2) containing a prepolymer (PP-1)” be set forth.
With respect to new Claim 35, Jaehnigen teaches the at least one polysiloxane may be present in an amount of as low as 0.1 to 50% by weight [0044]. (P1) will then correspond to 50 to 99.9% by weight of the polyol composition. While this range is not identical to the claimed range of greater than 95% by weight (P1), it has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
With respect to new Claim 34, Jaehnigen teaches the polyurethane may be formed by a prepolymer process in which some of the OH components are reacted with isocyanate in a first step and then the remaining OH components are reacted with the prepolymer in a second step [0054], corresponding to a two-step process. The Office does recognize that Jaehnigen does not expressly teach the remaining OH components correspond to the chain extender, i.e. that the polyol composition containing the prepolymer is reacted with the chain extender. However, Ding teaches the concept of preparing polyurethane granules/pellets by a prepolymer process in which the polyol and isocyanate component are reacted in a first step to form a prepolymer. The obtained prepolymer is then reacted with a chain extender is a second step [0024]. The process of Ding thus corresponds to a process in which the at least one polyol is employed and reacted only in the first step and the chain extender (CE) is employed and reacted only in the second step. Thus, it is the Office’s position that new Claim 34 is rendered obvious by the combination of Jaehnigen with Ding.
Obviousness Rejection
Applicant argues that the independent claims have been amended to recite the polyol (P1) is polypropylene glycol. However, as detailed in the outstanding and present rejection of Claim 14 under 35 U.S.C. 103, primary reference Jaehnigen teaches its polyether diol may specifically be polypropylene glycol [0052].
Applicant additionally argues that examples of record demonstrate the prepolymer two-step process using polypropylene glycol provides processable TPU and foamed/molded articles, whereas the one-shot examples using polypropylene glycol did not provide formed bodies. However, the evidence provided must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). The Office respectfully submits that the comparative, one-shot examples of instant application are not representative of the closest prior art. Both the instantly claimed invention and applied primary reference Jaehnigen teach two-step processes of preparing thermoplastic polyurethanes. The outstanding rejection under 35 U.S.C. 103 has consequently been 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.
Correspondence
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764