DETAILED ACTION
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 1-5 and 9-16 are pending. Claims 6-8 are cancelled. Examiner previously required a restriction (dated September 16, 2025). In response, Applicant elected, without traverse, Group I which encompasses claims 1-5, 9, 10, 15, and 16. Accordingly, claims 11-14 are withdrawn.
Status of Priority
The present application is a 35 U.S.C. § 371 national stage patent application of International patent application PCT/CN2021/115172, filed on August 27, 2021. This application also claims the benefits of foreign priority to CN202011228233.9, filed on November 6, 2020.
Election/Restrictions
As a reminder, Applicant elected, without traverse, Group I which corresponds to claims 1-5, 9, 10, 15, and 16. Applicant also elected the following species without traverse:
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and indicated that all pending claims read on the elected species. The elected species was not found in the prior art and, thus, the search was expanded.
Specification - Abstract
The abstract of the disclosure is objected to because of the following informalities:
Abstract references a “formula I”, but no formula I structure is provided. Please ensure that the formula I structure is included in the abstract.
Appropriate correction is required.
Specification - Disclosure
The disclosure is objected to because of the following informalities:
On pg. 2, 4th to last line, to be consistent with the instant claim set:“Loops A and B are independently aromatic or aromatic” should read
“Loops A and B are independently aromatic or heteroaromatic”
Appropriate correction is required.
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 1, 10, and 16 are objected to because of the following informalities:
In claim 1:
“photoisomers” should be in singular form and read “photoisomer”
“loops A and B are independently aromatic or heteroaromatic” should read
“wherein:
loops A and B are independently aromatic or heteroaromatic”
“each R2 independent is” should read “each R2 independently is”
“R3 independent is” should read “R3 independently is”
In claims 10 and 16:
For consistency, “drug composition” should read “pharmaceutical composition”
Appropriate correction is required.
Claim Rejections – Improper Markush Grouping
Claims 1-5, 9, 10, 15, and 16 are rejected on the judicially-created basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). The improper Markush grouping includes species of the claimed invention that do not share both a substantial structural feature and a common use that flows from the substantial structural feature.
A Markush claim contains an “improper Markush grouping” if: (1) the species of the Markush group do not share a single structural similarity,” or (2) the species do not share a common use. Members of a Markush group share a "single structural similarity” when they belong to the same recognized physical or chemical class or to the same art-recognized class. Members of a Markush group share a common use when they are disclosed in the Specification or known in the art to be functionally equivalent (see Federal Register, Vol. 76, No. 27, Wednesday, February 9, 2011, p. 7166, left and middle columns, bridging paragraph).
The members of the improper Markush grouping do not share a substantial feature and/or a common use that flows from the substantial structural feature for the following reasons:
Depicted below are some examples of different core structures that the instantly claimed heterocyclic compounds can possess:
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,
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,
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, or
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.
However, these core structures exhibit no discernible structural similarity. The 5-membered and 6-membered rings within each of the fused ring systems displayed above are all structurally different. Furthermore, the claims permit substitution at these 5- and 6- membered rings with any aromatic or any heteroaromatic moiety. Such moieties may encompass an extensive and structurally diverse set of aromatic and heteroaromatic groups, thereby introducing even greater structural variability.
For example:
The following compound is from Connor et al. (Connor) (WO9806703A1; published February 19, 1998) (herein, referred to as Connor-compound):
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(pg. 22, 4th compound) which is a compound of claim 1 wherein:
Z1 = Z2 = Z3 = X1 = X2 = C
Y1 = Y2 = N
Loop A is a phenyl ring (i.e., aromatic); R1 = substituted amino; m = 1
Loop B is a phenyl ring (i.e., aromatic); R2 = H; n = 1
R3 = H
The following compound is from Otake et al. (Otake) (WO2004002986A2; published January 8, 2004) (herein, referred to as Otake-example-23):
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(see Otake, pg. 114, example 23).
Otake-example-23 is a compound of claim 1 wherein:
Z1 = Z3 = N
Z2 = X1 = X2 = C
Y1 = Y2 = N
Loop A is a spiro [cyclohexane-1,1’ (3’H)-isobenzofuran]-3’-one moiety (i.e., heteroaromatic); R1 = hydrogen; m = 1
Note: The instant specification does not define the term “heteroaromatic.” Hence, Examiner interprets this term to encompass any ring system that contains heteroatoms and an aromatic ring. Thus, the spiro [cyclohexane-1,1’ (3’H)-isobenzofuran]-3’-one moiety can be considered heteroaromatic.
Loop B is a pyridyl ring (i.e., heteroaromatic); R2 = F; n = 1
R3 = H
Comparing Otake-example-23 with Connor-compound, one can see that there is no structural similarity between the two compounds, yet both are encompassed by instant claim 1. In the absence of a unifying structural feature across the alternatives, the Markush grouping is considered improper.
Claims 2-5, 9, 10, 15, and 16, which are dependent on claim 1, are also rejected for further requiring and/or reciting the improper Markush grouping of claim 1.
In response to this rejection, Applicant should either amend the claim(s) to recite only individual species or grouping of species that share a substantial structural feature as well as a common use that flows from the substantial structural feature, or present a sufficient showing that the species recited in the alternative of the claims(s) in fact share a substantial structural feature as well as a common use that flows from the substantial structural feature. This is a rejection on the merits and may be appealed to the Board of Patent Appeals and Interferences in accordance with 35 U.S.C. § 134 and 37 CFR41.31 (a) (1) (emphasis provided).
Claim Rejections - 35 USC § 112(a) – Scope of enablement
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5, 9, 10, 15, and 16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the following elements:
a heterocyclic compound shown in formula I, a pharmaceutically acceptable salt, racemic, photoisomer or solvent compound:
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wherein
Loop A is phenyl
Loop B is phenyl, furanyl, or 2,3-dihydro-1,4-benzodioxinyl
X1, X2, Z1, Z2, Z3, Y1, and Y2 are as recited in instant claim 1
Each R1 is independently selected from:
Hydrogen, deuterium, -COOH, -CH2OCH2CH2NH2, -CH2NHCH2CH2NH2,
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,
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,
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OR
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Optionally substituted with a =O
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Optionally substituted with a =O, -CH2OH, and/or -OH
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Substituted with a -COOH, -OH, or both
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Optionally substituted with one of the following: phenyl, pyridyl, or -NHCH2CH2OH
R2 is hydrogen or deuterium (n is 1 or 2)
R3 is as defined in instant claim 1 EXCEPT vinyl
m is 1, 2, or 3
does not reasonably provide enablement for elements that are outside the scope of the enabling elements listed above. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
As stated in the MPEP 2164.01(a), “There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.”
In evaluating the enablement question, several factors are to be considered. According to In re Wands, 8 USPQ2d 1400 (Fed. Cir. 1988), these factors include:
1) The nature of the invention,
2) the state of the prior art,
3) the predictability or lack thereof in the art,
4) the amount of direction or guidance present,
5) the presence or absence of working examples,
6) the breadth of the claims, and
7) the quantity of experimentation needed, and
8) the level of the skill in the art.
In the instant case, the Wands factors are relevant for the following reasons:
The nature of the invention
The nature of the invention claims a heterocyclic compound for an immune checkpoint inhibitor capable of blocking a VISTA signaling pathway, and a preparation method therefor and a use thereof. The compound is as represented by formula I. The compound has a novel structure, can be formulated for oral administration, overcomes the treatment defects and drug resistance of monoclonal antibody-based immune checkpoint inhibitors, can be used to prepare a small molecule inhibitor easily, and is convenient for industrial production
State of the prior art
See “Claim Rejections - 35 USC § 102” section below.
The level of the skill in the art
The level of ordinary skill in the art is relatively high. A person of ordinary skill would typically have formal training in medicinal chemistry and organic synthesis and would be familiar with standard methods for evaluating therapeutic efficacy of compounds.
The presence or absence of working examples
While the instant application does provide working examples of VISTA inhibitors having a structure represented by Formula I (structures provided on pg. 4-6; data on the instant compounds’ VISTA inhibitory activity provided in the Table on pg. 38-40), there are no working examples of VISTA inhibitors with structural elements that are outside the scope of the enabling elements listed above.
According to MPEP § 2163:
“Satisfactory disclosure of a ‘representative number’ depends on whether one of skill in the art would recognize that the inventor was in possession of the necessary common attributes or features possessed by the members of the genus in view of the species disclosed. For inventions in an unpredictable art, adequate written description of a genus which embraces widely variant species cannot be achieved by disclosing only one species within the genus. See, e.g., Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406. Instead, the disclosure must adequately reflect the structural diversity of the claimed genus, either through the disclosure of sufficient species that are ‘representative of the full variety or scope of the genus,’ or by the establishment of ‘a reasonable structure-function correlation.’ Such correlations may be established ‘by the inventor as described in the specification,’ or they may be ‘known in the art at the time of the filing date.’ See AbbVie, 759 F.3d at 1300-01, 111 USPQ2d 1780, 1790-91 (Fed. Cir. 2014).
In the instant case, even though the specification provides data on the VISTA inhibitory activity of compounds of diverse structures (see Table on pg. 38-40), it does not include any data on the VISTA inhibitory activity of compounds of Formula I with structural elements that are outside the scope of the enabling elements listed above. For example, there are no working examples of a compound of Formula I wherein loop B is substituted with an R2 substituent that is NOT hydrogen (i.e., all working examples provided comprise an unsubstituted loop B) or wherein loop A or B take the form of other heteroaromatics like a quinoline, thiophene, pyrazine, or oxazole moiety. Thus, the specification is not adequately reflecting the structural diversity of the claimed genus
The amount of direction or guidance present and quantity of experimentation necessary
As stated previously, the instant specification does not provide any working examples of a compound of Formula I wherein loop B is substituted with an R2 substituent that is NOT hydrogen (i.e., all working examples provided comprise an unsubstituted loop B) or wherein loop A or B take the form of other heteroaromatics like a quinoline, thiophene, pyrazine, or oxazole moiety. In the absence of clear guidance, a person of ordinary skill in the art would require undue experimentation to:
make all compounds comprising structural elements that are outside the scope of the enabling elements listed above and
determine which of those compounds are VISTA inhibitors.
The breadth of the claims
The claims are broad insofar as the instant claims recite a heterocyclic compound of formula I wherein the compound can possess a structurally diverse range of chemical groups.
Claims 2-5, 9, 10, 15, and 16, which are dependent on claim 1, are also rejected for further requiring and/or reciting elements that are outside the scope of the enabling elements listed above.
Claim Rejections - 35 USC § 112(a) continued – Written description
Claims 1-5, 9, 10, 15, and 16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “loops A and B are independently aromatic or heteroaromatic.” This limitation is not stated in the instant specification which recites “Loops A and B are independently aromatic or aromatic” (see pg. 2, the line after the formula I structure). Thus, claim 1 fails to comply with the written description requirement.
Claims 2-5, 9, 10, 15, and 16, which are dependent on claim 1, are also rejected for further requiring and/or reciting the element that fails to comply with the written description requirement.
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 2-4, 15, and 16 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 2 and 3 recite “the substituted alkyl or substituted alkoxy group can be one or more of the following groups: halogen, C1-4 alkyl, hydroxyl groups, and C1-4 alkoxy, cyanide, trifluoromethyl, C1-4 carboxyl, C1-4 ester group or C1-4 amide group…” Currently, claims 2 and 3 are stating that a substituted alkyl can be a halogen, for example, which cannot be true since an alkyl (made up of only C’s and H’s) and a halogen (i.e., F, Cl, Br, and I) are two completely different groups. It is unclear whether Applicant intended to state:
“the substituted alkyl or substituted alkoxy group can be substituted with one or more of the following groups: halogen, C1-4 alkyl, hydroxyl groups, and C1-4 alkoxy, cyanide, trifluoromethyl, C1-4 carboxyl, C1-4 ester group or C1-4 amide group”
OR
“the substituted alkyl or substituted alkoxy group can be one or more of the following groups: trifluoromethyl, C1-4 carboxyl, C1-4 ester group, or C1-4 amide group OR the substituted alkyl or substituted alkoxy can be substituted with one or more of the following groups: halogen, C1-4 alkyl, hydroxyl groups, and C1-4 alkoxy, cyanide, trifluoromethyl, C1-4 carboxyl, C1-4 ester group or C1-4 amide group…”
or other interpretations different from interpretations (A) and (B).
Accordingly, the metes and bounds of the claimed invention cannot be ascertained and the claims are rendered indefinite. For the purposes of this action, Examiner interprets claims 2 and 3 as interpretation (B).
Claim 3 also recites the limitation “wherein each R2… the substituted hydroxyl.” There is insufficient antecedent basis for this limitation in the claim. Claim 3 is dependent on claim 1 which recites “each R2 independent is selected from… unsubstituted hydroxyl.” There is no option for R2 to be a substituted hydroxyl group. Hence, there is insufficient antecedent basis for R2 to be a substituted hydroxyl in claim 3.
Claim 4 recites specific compounds of claim 1. There is insufficient antecedent basis for the following compounds as explained below:
Compound no. and/or structure
Reasoning
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Claim 4 is dependent on claim 1 which recites a heterocyclic compound represented by formula I. According to claim 1, the instantly claimed heterocyclic compounds must have a “loop B” bonded to the 6-membered ring of the 5,6-fused cyclic ring core. However, compound 28 does not have a “loop B” moiety. Thus, there is insufficient antecedent basis for this limitation (i.e., compound 28) of the claim.
29, 34, 35, 43, 45, 46, 61, 63, and 64
Same as the reasoning for compound 28.
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Claim 4 is dependent on claim 1. R1 is defined in claim 1 and does not include a sulfonyl group. Thus, there is insufficient antecedent basis for compound 41 in the claim.
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Claim 4 is dependent on claim 1.
According to claim 1, the instantly claimed heterocyclic compounds must have a “loop B” bonded to the 6-membered ring of the 5,6-fused cyclic ring core. However, compound 49 does not have a “loop B” moiety.
Additionally, R3 is defined in claim 1 and does not include a -CH2OH group. Thus, there is insufficient antecedent basis for compound 49 in the claim.
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Claim 4 is dependent on claim 1. R3 is defined in claim 1 and does not include a -CH2OH group. Thus, there is insufficient antecedent basis for compound 49 in the claim.
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Claim 4 is dependent on claim 1. R3 is defined in claim 1 and does not include an -OH group. Thus, there is insufficient antecedent basis for compound 54 in the claim.
59 and 60
Same as the reasoning for compound 28 AND
same as the reasoning for compound 54.
Claims 15 and 16, which are dependent on claim 4, are also rejected for further requiring and/or reciting the indefinite limitations of claim 4.
Note on 35 USC § 102 and § 103 Rejections
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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
102 rejection part 1:
Claims 1, 2, and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by:
Connor et al. (Connor) (WO9806703A1; published February 19, 1998)
Connor teaches the following compound (herein, referred to as Connor-compound):
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(see pg. 22, 4th compound)
which is a compound of claims 1, 2, and 5 wherein:
Z1 = Z2 = Z3 = X1 = X2 = C
Y1 = Y2 = N
Loop A is a phenyl ring (i.e., aromatic)
R1 = substituted amino; m = 1
Specifically, the substituent in the substituted amino group is a C1 alkyl and a C2 alkyl that is substituted with a piperidinyl group (i.e., a heterocyclic group)
Loop B is a phenyl ring (i.e., aromatic)
R2 = H; n = 1
R3 = H
According to MPEP 2113:
I. PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
Therefore, even though Connor-compound was made via a process that is different than the one listed in claim 5, the compound still reads on claim 5. This is because the patentability of the compound does not depend on its method of production since claim 5 is a product claim, not a process claim.
102 rejection part 2:
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by:
Otake et al. (Otake) (WO2004002986A2; published January 8, 2004)
Otake teaches the following compound (herein, referred to as Otake-example-143-1):
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(see Otake, pg. 143, 1st compound).
Otake-example-143-1 is a compound of claims 1 and 3 wherein:
Z1 = Z3 = N
Z2 = X1 = X2 = C
Y1 = Y2 = N
Loop A is a spiro [cyclohexane-1,1’ (3’H)-isobenzofuran]-3’-one moiety (i.e., heteroaromatic); R1 = hydrogen; m = 1
Note: The instant specification does not define the term “heteroaromatic.” Hence, Examiner interprets this term to encompass any ring system that contains heteroatoms and an aromatic ring. Thus, the spiro [cyclohexane-1,1’ (3’H)-isobenzofuran]-3’-one moiety can be considered heteroaromatic.
Loop B is a phenyl ring (i.e., aromatic)
R2 = CF3; n = 1
R3 = H
102 rejection part 3:
Claims 1, 9, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by:
Otake et al. (Otake) (WO2004002986A2; published January 8, 2004).
Otake teaches the following compound (herein, referred to as Otake-example-6):
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(see pg. 100, example 6).
Otake-example-6 is a compound of claim 1 wherein:
Z1 = Z3 = N
Z2 = X1 = X2 = C
Y1 = Y2 = N
Loop A is a spiro [cyclohexane-1,1’ (3’H)-isobenzofuran]-3’-one moiety (i.e., heteroaromatic); R1 = hydrogen; m = 1
Loop B is a phenyl ring (i.e., aromatic); R2 = H; n = 1
Otake further teaches a pharmaceutical composition comprising Otake-example-6 and a pharmaceutically acceptable carrier in the form of a tablet (see pg. 131, Formulation example 1; reads on instant claims 9 and 10).
Conclusion
No claims are allowed. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTEN ROMERO whose telephone number is (571)272-6478. The examiner can normally be reached M-F 9:30 AM - 6:00 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JEFFREY H. MURRAY can be reached at (571) 272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISTEN W ROMERO/Examiner, Art Unit 1624
/JEFFREY H MURRAY/Supervisory Patent Examiner, Art Unit 1624