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 .
DETAILED ACTION
This office action is in response to the application filed on or reply to the remarks of 12/22/2025. The instant application has claims 1-20 pending. The method and medium for using age criteria allowing an data transaction and requiring valid consent. There a total of 20 claims.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/22/2025 has been entered.
Response to Arguments
Applicant's arguments filed 12/22/2025 have been fully considered but they are not persuasive.
The applicant argued the last limitation of claim 1, which relates to modifying the access to functionality based on invalid consent states to allow status based on receiving an valid status. That is, the software is allow status and changed to prevent after invalid consent. The applicant argues that Spires software is already allowed and not changed to prevent status.
The examiner argues that Spires discloses the proprietary software that has parameters that allow or disable functionality see Par. 0013-0015. The examiner further argues that valid consent is given and the software access including access to contact and chat is enabled see Par. 006 & Par. 0025.
The applicant argues regarding claim 8, that questions relating to logic questions are not taught by Spires.
Spires discloses the questions being presented to user and an review of age is determined by the representative, as an minor, e.g. ten year old, would not be able to file out the questions correctly see Fig. 5.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 10846433 Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are an broader version of claims of ‘433 patent, i.e. the instant claims are anticipated by ‘433 patent claims.
US App # 17963012
US Patent # 10846433
Comments
1. A method comprising :receiving a request to initiate a transaction between an entity and a data subject; responsive to the request to initiate the transaction between the entity and the data subject, generating, by computing hardware, a consent receipt set comprising a consent receipt identifier, a transaction identifier based on the transaction, and a subject identifier based on the data subject; prompting, by the computing hardware, the data subject to provide at least one piece of data; receiving, by the computing hardware, the at least one piece of data from the data subject; using, by the computing hardware, the at least one piece of data and an artificial intelligence system to determine, based on one or more jurisdictional
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of a data_subject Iocation, whether the data subject meets one or more age criteria for processing personal data under the transaction; in response to determining the data subject does not meet the one or more age criteria for the processing of the personal data under the transaction, modifying, by the computing hardware, a consent parameter of the request to initiate the transaction to reflect an invalid consent status for the transaction; and modifying, by the computing hardware and based on the invalid consent status, the consent receipt set to prevent a computing system from providing the data subject with access to functionality requiring valid consent.
1. A computer-implemented data processing method for managing a consent receipt under a transaction, the method comprising: providing, by one or more computer processors, at a consent capture point, a user interface for initiating the transaction between an entity and a data subject, the transaction involving processing personal data of the data subject by the entity; receiving, by one or more computer processors, a request to initiate the transaction between the entity and the data subject; in response to receiving the request, generating, by one or more computer processors, by a consent receipt management system, a unique consent receipt key; receiving, by one or more computer processors, from the data subject, a unique subject identifier; requesting, by one or more computer processors, from the data subject, at least one piece of identifying information; receiving, by one or more computer processors, the at least one piece of identifying information from the data subject; determining, by one or more computer processors, based at least in part on the at least one piece of identifying information, an age of the data subject; identifying, by one or more computer processors, a capture point identifier associated with the capture point; electronically storing, by one or more computer processors, the unique subject identifier, the unique consent receipt key, the capture point identifier, the age of the data subject, and a unique transaction identifier associated with the transaction in a consent record; electronically associating, by one or more computer processors, the unique subject identifier, the unique consent receipt key, the consent capture point identifier, the age of the data subject, and the unique transaction identifier in computer memory; determining, by one or more computer processors, based on the age of the data subject and the transaction, whether the data subject meets one or more age criteria for the processing of personal data under the transaction; in response to determining the data subject meets the one or more age criteria for the processing of personal data under the transaction, modifying, by one or more computer processors, the consent record to electronically store an indication that the data subject has provided valid consent for the transaction; in response to determining the data subject does not meet the one or more age criteria for the processing of personal data under the transaction: prompting the data subject to provide one or more contact details for a guardian of the data subject; accessing an electronic guardian registry for one or more data subjects; determining, based at least in part on the one or more contact details for the guardian of the data subject using the electronic guardian registry, that the data subject has an identified registered guardian; and communicating with the identified guardian, via the one or more contact details, to receive the valid consent to fulfill the transaction on behalf of the data subject by: transmitting an electronic message to the identified guardian; and prompting the identified guardian to provide the valid consent via the electronic message.
The patent (US 10846433) anticipates claims (1-20) of instant application, because the patent claims (1-16, genus) teaches all the elements/features of the examined claim (a-b, sub-genus, e.g. has less of the same limitations than the patent). Claims of instant application are effectively a subset of the claims in the patent. Thus, the entire scope of the patent reference claim falls within the scope of the examined claim. Therefore, a patent to the instant applicant would improperly extend the right to exclude granted by a patent to the sub-genus should it issue after the genus (conflicting patent).
Claim 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10762236. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are an broader version of claims of ‘236 patent, i.e. the instant claims are anticipated by ‘236 patent claims.
US App # 17963012
US Patent # 10762236
Comments
1. A method comprising :receiving a request to initiate a transaction between an entity and a data subject; responsive to the request to initiate the transaction between the entity and the data subject, generating, by computing hardware, a consent receipt set comprising a consent receipt identifier, a transaction identifier based on the transaction, and a subject identifier based on the data subject; prompting, by the computing hardware, the data subject to provide at least one piece of data; receiving, by the computing hardware, the at least one piece of data from the data subject; using, by the computing hardware, the at least one piece of data and an artificial intelligence system to determine, based on one or more jurisdictional
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of a data_subject Iocation, whether the data subject meets one or more age criteria for processing personal data under the transaction; in response to determining the data subject does not meet the one or more age criteria for the processing of the personal data under the transaction, modifying, by the computing hardware, a consent parameter of the request to initiate the transaction to reflect an invalid consent status for the transaction; and modifying, by the computing hardware and based on the invalid consent status, the consent receipt set to prevent a computing system from providing the data subject with access to functionality requiring valid consent.
1. A computer-implemented data processing method for managing a consent receipt under a transaction, the method comprising: providing, by one or more computer processors, at the consent capture point, a user interface for initiating a transaction between an entity and a data subject, the transaction involving processing personal data of the data subject by the entity; receiving, by one or more computer processors, a request to initiate the transaction between the entity and the data subject; in response to receiving the request, generating, by one or more computer processors, by a consent receipt management system, a unique consent receipt key; receiving, by one or more computer processors, from the data subject, a unique subject identifier; requesting, by one or more computer processors, from the data subject, at least one piece of identifying information; receiving, by one or more computer processors, the at least one piece of identifying information from the data subject; determining, by one or more computer processors, based at least in part on the at least one piece of identifying information, an age of the data subject; identifying, by one or more computer processors, a capture point identifier associated with the capture point; electronically storing, by one or more computer processors, the unique subject identifier, the unique consent receipt key, the capture point identifier, the age of the data subject, and a unique transaction identifier associated with the transaction in a consent record; electronically associating, by one or more computer processors, the unique subject identifier, the unique consent receipt key, the consent capture point identifier, the age of the data subject, and the unique transaction identifier in computer memory; determining, by one or more computer processors, based on the age of the data subject and the transaction, whether the data subject meets one or more age criteria for the processing of personal data under the transaction; in response to determining the data subject meets the one or more age criteria for the processing of personal data under the transaction, modifying, by one or more computer processors, the consent record to electronically store an indication that the data subject has provided valid consent for the transaction; and in response to determining the data subject does not meet the one or more age criteria for the processing of personal data under the transaction, modifying, by one or more computer processors, the consent record to include an indication that the data subject has provided invalid consent.
The patent (US 10762236) anticipates claims (1-20) of instant application, because the patent claims (1-20, genus) teaches all the elements/features of the examined claim (a-b, sub-genus, e.g. has less of the same limitations than the patent). Claims of instant application are effectively a subset of the claims in the patent. Thus, the entire scope of the patent reference claim falls within the scope of the examined claim. Therefore, a patent to the instant applicant would improperly extend the right to exclude granted by a patent to the sub-genus should it issue after the genus (conflicting patent).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Pub 2008/0222271 to Spires in view of US Patent 7571466 to Mitchell and further in view of US Patent Pub 2011/0222724 to Yang and further in view of WO 2007/142796 to Nguyen.
Regarding claim 1, 15, Spires discloses A method comprising: receiving a request to initiate a transaction between an entity and a data subject(Par. 0016, new account is created for new member and website); responsive to a request to initiate a transaction between an entity and a data subject, generating, by computing hardware prompting, by the computing hardware, the data subject to provide a at least one piece of data; receiving, by the computing hardware, the at least one piece of data from the data subject and one or more age verification techniques (Abstract & Par. 0025-0027, the new account is created and receipt is generated & Par. 0017, the annual parent authorization is needed); data subject(Par. 0025, the new member); and in response to determining the data subject does not meet the one or more age criteria for the processing of personal data under the transaction, modifying, by the computing hardware, a consent parameter of the request to initiate the transaction to reflect an invalid consent status for the transaction(Par. 0017, websites not authorized is prevented from user & Par. 0029, revoked authorization also prevents access given & Fig. 1 item 70 & Par. 0031-32 & Par. 0016-0017); and modifying, by the computing hardware and based on the invalid consent status, the the consent receipt set to prevent a computing system from providing the data subject with access to functionality requiring valid consent(Par. 0017, the not authorized is checked with parent or guardian).
Spires does not disclose the a consent receipt set comprising a consent receipt identifier, a transaction identifier based on the transaction, and a subject identifier based on the data subject.
In the same field of endeavor as the claimed invention, Mitchell discloses a consent receipt set comprising a consent receipt identifier, a transaction identifier based on the transaction, and a subject identifier based on the data subject(Fig. 4 item 310, 320 & Col 2 Ln 30-46, the consent information is stored with user profile & Fig. 5 item 530).
It would have been obvious to one of ordinary skill in the art before the effective filing date of claimed invention to modify Spires invention to incorporate a consent receipt set comprising a consent receipt identifier, a transaction identifier based on the transaction, and a subject identifier based on the data subject.for the advantage of stored information in user profile as taught in Mitchell see Col 2 Ln 56-61
Mitchell nor Spire disclose using, by the computing hardware, the at least one piece of data and an artificial intelligence system to determine whether the data subject meets one or more age criteria for processing personal data under the transaction.
In the same field of endeavor as the claimed invention, Yang discloses using, by the computing hardware, the at least one piece of data and an artificial intelligence system to determine whether the data subject meets one or more age criteria for processing personal data under the transaction(Abstract & Par. 005-008, the age estimation using training models & Par. 005 & Par. 0016-0019).
It would have been obvious to one of ordinary skill in the art before the effective filing date of claimed invention to modify Mitchell invention to incorporate AI models for age determination for the advantage of fast and easy model for video analysis of faces as taught in Yang see Par. 0017-0019.
Spires nor Mitchell nor Yang disclose the jurisdictional requirements of the data subject location.
However, Nguyen discloses the gaming system GUI considers the age and the jurisdiction of the user see Page 5 Ln 1-12 & Page 13 Ln 19-28 & Page 9 Ln 1-13..
It would have been obvious to one of ordinary skill in the art before the effective filing date of claimed invention to modify Mitchell invention to incorporate the jurisdiction of the user in order to comply the laws of the jurisdiction as taught in Nguyen see Page 9 Ln 1-13.
Regarding claim 2, 16, The combined method/system/medium of Spires, Mitchell, Yang and Nguyen , mutatis mutandis, Spires discloses the method of Claim 1, wherein the at least one piece of data comprises at least one of: a response to a challenge question subject (Par. 0016-0017, question is asked about age on form); an image of the data subject; or a piece of identifying information associated with the data subject subject (Par. 0016-0017, the question is asked about name and parental name).
Regarding claim 3, 17, The combined method/system/medium of Spires, Mitchell, Yang and Nguyen , mutatis mutandis, Spires discloses the method of Claim 1, wherein: prompting the data subject to provide the at least one piece of data comprises generating a challenge question and prompting the data subject for a response to the challenge question subject (Par. 0016-0017, the parent is consented); receiving the at least one piece of data comprises receiving the response subject (Par. 0016-0017, the parent is consented); and using the at least one piece of data to determine whether the data subject meets the one or more age criteria comprises determining an accuracy of the response subject (Par. 0016-0017, the parent is consented).
Regarding claim 4. The combined method/system/medium of Spires, Mitchell, Yang and Nguyen , mutatis mutandis, Spires discloses the method of Claim 3, wherein generating the challenge question comprises customizing the challenge question based on the data subject(Par. 0016, the user inputs the age as answer to question).
Regarding claim 5, 19, The combined method/system/medium of Spires, Mitchell, Yang and Nguyen , mutatis mutandis, Spires discloses the method of Claim 1, further comprising: responsive to determining the data subject does not meet the one or more age criteria for the processing of personal data under the transaction, identifying, by the computing hardware, a guardian associated with the data subject(Par. 0016, the parent receives the email or card for approval); receiving, by the computing hardware, valid consent from the guardian to the processing of the personal data as part of the transaction; responsive to receiving the valid consent from the guardian, modifying, by the computing hardware, the consent receipt set to allow the computing system to provide the data subject with access to functionality requiring the valid consent(Par. 0016, the parent approve the postal card).
Regarding claim 6, 20, The combined method/system/medium of Spires, Mitchell, Yang and Nguyen , mutatis mutandis, Spires discloses the method of Claim 1, wherein: the at least one piece of data comprises an image of the data subject; using the at least one piece of data to determine whether the data subject meets the one or more age criteria comprises: causing an artificial intelligence image system to generate a prediction usable for determining the age of the data subject by providing the image of the data subject to the artificial intelligence image system for analysis(Par. 0017, the proper age is discerned and allowed access to website); receiving, from the artificial intelligence image system, the prediction(Par. 0017, the proper age is discerned and allowed access to website); and determining, based on the prediction, whether the data subject meets the one or more age criteria (Par. 0017, the proper age is discerned and allowed access to website).
Regarding claim 7. Spires discloses A system comprising: a non-transitory computer-readable medium storing instructions; and processing hardware communicatively coupled to the non-transitory computer-readable medium, wherein the processing hardware is configured to execute the instructions and thereby perform operations comprising: receiving, from a computing device, a request to initiate a transaction, the request comprising a transaction parameter and a consent parameter indicating consent by a data subject to processing of personal data received via a computer network(Par. 0014, the new account is created); configuring a graphical user interface including a prompt soliciting a response to a challenge question and an input element configured to receive the response(Par. 0014-0016, the form asks questions about age, name and parent name); transmitting an instruction to the computing device to display the graphical user interface(Par. 0025, browser); receiving, from the computing device via the input element, the response(Par. 0025-0026 & Par. 0015, the user signs up and receives response); responsive to determining that the data subject does not meet the age criterion, modifying the consent parameter to reflect an invalid consent status for the transaction(Par. 0027, the age range for new member is not met); generating a consent receipt set indicating a lack of consent to the processing of the personal data, wherein the consent receipt set comprises a consent receipt identifier, a transaction identifier based on the transaction parameter, the invalid consent status, and a subject identifier based on the data subject parameter(Par. 0027, the parent is contacted); and preventing access by the computing device to computer-specific functionality requiring valid consent based on the invalid consent status(Par. 0031, The annual authorization and denial for users).
Mitchell nor Spire disclose determining, utilizing an artificial intelligence system and the response, that the data subject does not meet an age criterion for the processing of the personal data under the transaction
In the same field of endeavor as the claimed invention, Yang discloses determining, utilizing an artificial intelligence system and the response, that the data subject does not meet an age criterion for the processing of the personal data under the transaction; (Abstract & Par. 005-008, the age estimation using training models).
It would have been obvious to one of ordinary skill in the art before the effective filing date of claimed invention to modify Mitchell invention to incorporate AI models for age determination for the advantage of fast and easy model for video analysis of faces as taught in Yang see Par. 0017-0019.
Regarding claim 8. The combined method/system/medium of Spires, Mitchell, Yang and Nguyen , mutatis mutandis, Spires discloses the system of Claim 7, wherein the challenge question comprises at least one of a logic problem, a math problem, and a reading comprehension problem (Fig. 5 the application form has questions).
Regarding claim 9. The combined method/system/medium of Spires, Mitchell, Yang and Nguyen , mutatis mutandis, Yang discloses the system of Claim7, the response comprises an image(Par. 005-007 & Par. 0017-0019 & Abstract). ; and determining, utilizing the artificial intelligence system and the response, that the data subject does not meet the age criterion comprises: generating, utilizing the artificial intelligence system, an age prediction from the image; and determining, based on the age prediction, whether the data subject meets the age criterion(Par. 005-007 & par. 0017-0019 & Abstract).
Regarding claim 10. The combined method/system/medium of Spires, Mitchell, Yang and Nguyen , mutatis mutandis, Spires discloses the system of Claim 7, wherein the operations further comprise: responsive to determining that the data subject does not meet the age criterion, identifying a guardian associated with the data subject (Par. 0016-0017, the parent is consented); receiving the valid consent from the guardian to the processing of the personal data as part of the transaction (Par. 0016-0017, the parent is consented); modifying the consent parameter to reflect the valid consent from the guardian; and initiating the transaction based on the consent receipt set, wherein initiating the transaction enables access to the computer-specific functionality by the computing device(Par. 0016-0017, the parent is consented).
Regarding claim 11. The combined method/system/medium of Spires, Mitchell, Yang and Nguyen , mutatis mutandis, Spires discloses the system of Claim 10, wherein identifying the guardian associated with the data subject comprises: identifying a prior transaction involving the data subject based on the data subject parameter(Par. 0016-0017, the parent is consented);; determining an individual that provided consent on behalf of the data subject for the prior transaction(Par. 0016-0017, the parent is consented);; and identifying the guardian as the individual(Par. 0016-0017, the parent is consented);.
Regarding claim 12. The combined method/system/medium of Spires, Mitchell, Yang and Nguyen , mutatis mutandis, Spires discloses the system of Claim 10, wherein identifying the guardian associated with the data subject comprises accessing an electronic guardian registry and identifying the guardian in the electronic guardian registry based on the data subject parameter(Par. 0016-0017, the parent is consented & Fig. 5 check against list);.
Regarding claim 13. The combined method/system/medium of Spires, Mitchell, Yang and Nguyen , mutatis mutandis, Spires discloses the system of Claim 7, wherein the operations further comprise: initiating electronic communication with the guardian(Par. 0016-0017, the parent is consented); and modifying the consent parameter based on the electronic communication(Par. 0016-0017, the parent is consented);.
Regarding claim 14. The combined method/system/medium of Spires, Mitchell, Yang and Nguyen , mutatis mutandis, Spires discloses the system of Claim 13, wherein: the electronic communication comprises a unique code; and receiving the valid consent from the guardian comprises receiving the unique code from the computing device(Par. 0016-0017, the parent is consented);.
Regarding claim 17. The combined method/system/medium of Spires, Mitchell, Yang and Nguyen , mutatis mutandis, Spires discloses medium of Claim 15, wherein: prompting the data subject to provide the at least one piece of data comprises generating a challenge question and prompting the data subject for a response to the challenge question (Fig. 5 item Application form contains questions); receiving the at least one piece of data comprises receiving the response Fig. 5 item Tarsmits the completed application form); and determining whether the data subject meets the one or more age criteria comprises determining an accuracy of the response(Fig. 5 item Application form contains questions).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Venkat Perungavoor whose telephone number is (571)272-7213. The examiner can normally be reached 9-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rupal Dharia can be reached on 571-272-3880. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VENKAT PERUNGAVOOR/Primary Examiner, Art Unit 2492 Email: venkatanarayan.perungavoor@uspto.gov