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 .
Priority
Claim 1, 9-20 have support going back to parent application 15/265,083 and thus these claims have an effective filing date of September 14, 2016.
Claims 2-4 have support going back to parent application 15/368,797 and thus these claims have an effective filing date of December 5, 2016.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/28/2025 has been entered.
Response to Arguments
Applicant's arguments filed 4/28/2025 have been fully considered but they are not persuasive. Applicant argues that the handle #3 rotates relative to the receiver and does not rotate that the handle #3 is able to be rotated relative to the receiver. However, rotation of the handle #3 relative to the receiver occurs when one is simultaneously gripping the manipulator rod #1 in order to thread the handle relative to the manipulator rod (paragraph 53, 56, Figs 1, 2, 6). When handle #3 is secured to manipulator rod #1 and when one is capable of only gripping handle #3 (not manipulator rod #1), rotation of handle #3 would also rotate manipulator rod #1 as well as the receiver. As such, the handle #3 of Onge is capable of “rotating the receiver about the body axis” as claimed. The examiner notes that applicant is not claiming method steps.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 9-10 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 9 is dependent off canceled Claim 5. As such, Claim 9 fails to further limit the parent claim. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. For examination purposes, the examiner will treat claim 9 as being dependent off claim 1.
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.
Claims 1-4, 9-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,547,455 (hereinafter ‘455) in view of Onge US 2004/0034350.
Regarding Claim 1, ‘455 discloses the limitations of Claim 1 (see claim 1 in ‘455, where claim 1 of ‘455 includes all the limitation of current claim 1 but includes a second opening). Likewise, the claims were amended to now recite “shaft” where ‘455 uses the term ‘second post’ instead (as recited in claim 1 in ‘455). ‘455 also discloses the newly added/amended limitation of claim 1 in regards to the handle “transversely attached near the first end of the manipulator rod and adapted to be gripped by a surgeon for rotating..” (see Claim 1, Col 8 lines 52-55).
‘455 also discloses the limitations of Claims 2-4 (see claims 2-4, respectively), 9--10 (see claims 5, 9-10), Claim 11 (see claim 20), and Claims 12-20 (see claims 11-19 respectively).
‘455 discloses the elongate joint rod (“elongate joint rod” in claim 1) but does not specifically disclose the elongate joint rod is configured to clamp the first and second coupling clamps together.
Onge discloses a similar assembly (see Fig below) with an elongate joint rod (#8) extending along a joint rod axis (Fig 1-2, 10, axis extending along rod #8);
a first coupling clamp (see Fig below) disposed along the joint rod, the first coupling clamp configured to releasably clamp to the first post (see Fig below, paragraph 60, able to be released or clamped via manipulation of #8); and
a second coupling clamp (see Fig below) disposed along the joint rod adjacent to and rotatable about the joint rod relative to the first coupling clamp (able to rotate via opening #52, Fig 8, paragraph 58), the second coupling clamp releasably connectable to the shaft (Fig 1-2), wherein the elongate joint rod is configured to clamp the first and second coupling clamps together to fix the relative positions of the first and second coupling clamps (paragraph 60, via threads #60 engaging thread #58 in first clamp #6).
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It would have been obvious to one having ordinary skill in the art at a time before the effective filing date of the claimed invention to modify ‘455 to have the elongate joint rod includes threads, where the first clamp has corresponding threads in view of Onge above so that the elongate joint rod is configured to clamp the first and second coupling clamps together to fix the relative positions of the first and second coupling clamps.
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.
Claims 1, 17, 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Onge US 2004/0034350.
Regarding Claim 1, Onge discloses a rod link reducer assembly (Fig 1) comprising:
a manipulator rod (#1, Fig 1-2) having a body axis between a first end and a second end (Fig 1-2 an axis extends between opposing ends of the rod #1), wherein the second end of the manipulator rod comprises a receiver (see Fig below) including a channel configured to receive a rod (see Fig below) and an opening (#13) in fluid communication with the channel (see Fig below where the opening receives securing member #4 that is also received in the channel, Fig 1);
a handle (see Fig below) transversely (see Fig below, also Fig 7, where the handle is a knob in the form of a disc that extends generally perpendicular to the axis, see also Response to Arguments section above) attached near the first end of the manipulator rod (see Fig below) and adapted to be gripped by a surgeon (paragraph 57, Fig below, Fig 7 where one a surgeon is able to grip the handle) for rotating the receiver about the body axis (see Response to Arguments above where when one is capable of gripping/grasping the handle only [not grasping manipulator rod #1] and only rotating the handle which would also rotate the receiver about to the body axis);
a first post (#14) extending outwardly from the manipulator rod (Fig 1-2);
a shaft (#7, Fig 1-2); and
a rod manipulating joint (see Fig below) including:
an elongate joint rod (#8) extending along a joint rod axis (Fig 1-2, 10, axis extending along rod #8);
a first coupling clamp (see Fig below) disposed along the joint rod, the first coupling clamp configured to releasably clamp to the first post (see Fig below, paragraph 60, able to be released or clamped via manipulation of #8); and
a second coupling clamp (see Fig below) disposed along the joint rod adjacent to and rotatable about the joint rod relative to the first coupling clamp (able to rotate via opening #52, Fig 8, paragraph 58), the second coupling clamp releasably connectable to the shaft (Fig 1-2), wherein the elongate joint rod is configured to clamp the first and second coupling clamps together (paragraph 60).
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The examiner notes that in an alternative interpretation, the first post can be post (#7) while the shaft can be post (#14) such that the first coupling clamp is clamp (#5) and the second coupling clamp is clamp (#6).
Regarding Claim 17, Onge discloses the first post has a cylindrical cross-section (Figs 1-2, the first post is both cylindrical).
Regarding Claim 19, Onge discloses each of the first coupling clamp and the second coupling clamp comprises a superior clamp portion and an inferior clamp portion (see Fig below) movable along the joint rod relative to the superior clamp portion (Fig 1 , paragraph 60 when the elongate joint rod is not fully tightened, the first and second coupling portions are moveable along the joint rod such that the first coupling clamp #5 is moveable relative to the superior clamp portion of the second clamp #6, likewise, the second coupling clamp is moveable relative to the superior clamp portion of the first clamp #5).
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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 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.
Claims 2-4, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Onge US 2004/0034350 in view of Brown US 2007/0038217.
Onge discloses the claimed invention as discussed above where the first and second coupling clamps each have a superior clamp portion and an inferior clamp portion (see Fig below) but does not disclose, wherein inner teeth are formed on a superior clamp portion of the first coupling clamp and/or the second coupling clamp, wherein inner teeth are formed on an inferior clamp portion of the first coupling clamp and/or the second coupling clamp; and wherein inner teeth are formed on both a superior clamp portion and an inferior clamp portion of the first coupling clamp and/or the second coupling clamp.
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Brown, in the same field of endeavor of rod manipulating joints, discloses a similar rod manipulating joint (Fig 3) including: an elongate joint rod (#102) extending along a joint rod axis (axis along #102);
a first coupling clamp disposed along the joint rod (see Fig below), the first coupling clamp configured to releasably clamp to a first post (paragraph 21); and a second coupling clamp disposed along the joint rod adjacent to (see Fig below, Fig 4) and rotatable about the joint rod relative to the first coupling clamp (paragraph 23, 25 rotatable via opening #168), the second coupling clamp releasably connectable to a shaft (paragraph 21),
each clamp having a superior clamp portion and inferior clamp portion (see Fig below), the superior clamp portions and inferior clamp portions each include inner teeth (#159, #189, see Fig below, paragraph 21) to improve their grip on rod/post (paragraph 21).
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It would have been obvious to one having ordinary skill in the art at a time before the effective filing date of the claimed invention to modify Onge to include teeth on the superior and inferior clamp portions of each of the first and second coupling clamps in view of Brown above because the help improve their grip on their respective post.
Regarding Claim 20, Onge as modified discloses the claimed invention as discussed above where the superior clamp portion of the first coupling clamp comprises a first clamping surface extending at a first angle oblique to the joint rod axis (with the modification to include the teeth, a side surface of one of the teeth of the superior clamp portion of the first coupling clamp defines a first clamping surface at an oblique angle, see Fig 4 of Brown below) and a second clamping surface extending at a second angle oblique to the joint rod axis (with the modification to include the teeth, a side surface of one of the teeth of the superior clamp portion of the second coupling clamp defines a second clamping surface at an oblique angle, see Fig 4 of Brown below).
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Claim 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Onge US 2004/0034350 in view of Philips US 2005/0224668 .
Onge discloses the claimed invention as discussed above but does not disclose a biasing member in the form of a clamp, wherein the biasing member includes a lever having a free end and a cam distal from the free end, wherein the biasing member is configured to be rotatably connected to the joint rod.
Philips, in the same field of endeavor as rod manipulating joints and clamps, discloses a rod manipulating joint (Fig 1) having an elongate joint rod (#20) extending along a joint rod axis (Fig 1); a first coupling clamp (#14) disposed along the joint rod (Fig 1-2), the first coupling clamp configured to releasably clamp to a post (paragraph 5, 24); and a second coupling clamp (#12) disposed along the joint rod adjacent to and rotatable about the joint rod relative to the first coupling clamp (paragraph 12, 23), the second coupling clamp releasably connectable to a shaft (paragraph 26), a biasing member (#54) configured to releasably secure and bias the second coupling clamp against the first coupling clamp (paragraph 23), the biasing member includes a lever having a free end and a cam distal from the free end ( see below), wherein the biasing member is configured to be rotatably connected to the joint rod (see below, paragraph 23).
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It would have also been obvious to one having ordinary skill in the art at a time before the effective filing date of the claimed invention to modify the rod manipulating joint of Onge to include the biasing member in view of Philips above because this provides a known alternative configuration for locking and unlocking the rod manipulating joint. It is noted that with the modification, one need only rotate/pivot the first biasing member in a single action to lock and unlock, as opposed to the knob (#61 in Onge) of Onge which may require more than one revolution.
Regarding Claim 10, Onge as modified discloses wherein the second end comprises a receiver axis extending orthogonally to the body axis (as seen in Fig 1-2 in Onge, Fig below).
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Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Onge US 2004/0034350 in view of Philips US 2005/0224668.
Onge discloses the claimed invention as discussed above but does not disclose a first biasing member adapted to bias the second clamp against the first clamp.
Philips, in the same field of endeavor as rod manipulating joints and clamps, discloses a rod manipulating joint (Fig 1) having an elongate joint rod (#20) extending along a joint rod axis (Fig 1); a first coupling clamp (#14) disposed along the joint rod (Fig 1-2), the first coupling clamp configured to releasably clamp to a post (paragraph 5, 24); and a second coupling clamp (#12) disposed along the joint rod adjacent to and rotatable about the joint rod relative to the first coupling clamp (paragraph 12, 23), the second coupling clamp releasably connectable to a shaft (paragraph 26), a biasing member (#54) configured to releasably secure and bias the second coupling clamp against the first coupling clamp (paragraph 23), the biasing member includes a lever having a free end and a cam distal from the free end ( see below), wherein the biasing member is configured to be rotatably connected to the joint rod (see below, paragraph 23).
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It would have also been obvious to one having ordinary skill in the art at a time before the effective filing date of the claimed invention to modify the rod manipulating joint of Onge as modified to include the biasing member in view of Philips above because this provides a known alternative configuration for locking and unlocking the rod manipulating joint. It is noted that with the modification, one need only rotate/pivot the first biasing member in a single action to lock and unlock, as opposed to the knob (#61 in Onge) of Onge which may require more than one revolution.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Onge US 2004/0034350 in view of Murner US 2011/0087226.
Onge discloses the claimed invention as discussed above in the alternative interpretation of claim 1, where the first post can be post (#7) while the shaft can be post (#14) such that the first coupling clamp is clamp (#5) and the second coupling clamp is clamp (#6), where the second coupling clamp (#6 in Onge) has an upper surface (upper surface of #6, see Fig 9 in Onge) that engages with a lower surface of the first coupling clamp (lower surface of #5 in Onge) but does not disclose the upper surface of the second coupling clamp comprises a star grind.
Murner, in the same field of endeavor as manipulating joints further discloses first and second coupling clamps (#20, #30), an upper surface of the second coupling clamp comprises a star grind (#45, Fig 1), the first coupling clamp having a lower surface that comprises a star grind (having the same configuration as the star grind of the upper surface, paragraph 25), the star grinds engage each other to help prevent the first and second coupling clamps from rotating relative to each other (paragraph 25).
It would have been obvious to one having ordinary skill in the art at a time before the effective filing date of the claimed invention to modify Onge as modified to include a star grind on the upper surface of the second coupling clamp and on the lower surface of the first coupling clamp in view of additional teachings of Murner above because this helps prevent the first and second coupling clamps from rotating relative to each other.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Onge US 2004/0034350 in view of Salley US 5,076,319.
Onge discloses the claimed invention as discussed above, where the handle is coupled to the first end (see Fig below) and in the form of a knob (paragraph 56 in Onge, see Fig below) but does not disclose the handle configured to be removably attached to the manipulator rod and has a faceted receiver adapted to receive a faceted interface of the first end.
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Salley, pertinent to the problem how a handle/knob is attached to a device, discloses a handle in the form of a knob (#3, Fig 18a-18b), the handle configured to be removably attached to a rod (#25) and has a faceted receiver (hexagonal hole #32, Col 4 lines 45-62) adapted to receive a faceted interface (hexagonal interface #29) of a first end of the rod (Fig 1), the faceted interface (#29) also has a faceted receiver that receives a faceted interface (#34) of the handle/knob (#3)(Col 4 lines 45-62) where this configuration provides a tight mount of the knob/handle to the rod (#25) and if desired, the knob/handle (#3) may be removed by applying an upward force to it (Col 4 lines 45-62).
It would have been obvious to one having ordinary skill in the art at a time before the effective filing date of the claimed invention to modify the handle/knob of Onge as modified to have the handle/knob have a faceted receiver and a faceted interface, the first end to also a corresponding faceted interface and faceted receiver in view of Salley above because this configuration provides a tight mount of the knob/handle to the manipulating rod and if desired, the knob/handle may be removed by applying an upward force to it.
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Onge US 2004/0034350 in view of Philips US 2005/0224668 .
Onge discloses the claimed invention as discussed above but does not disclose a biasing member in the form of a clamp, wherein the biasing member includes a lever having a free end and a cam distal from the free end, wherein the biasing member is configured to be rotatably connected to the joint rod.
Philips, in the same field of endeavor as rod manipulating joints and clamps, discloses a rod manipulating joint (Fig 1) having an elongate joint rod (#20) extending along a joint rod axis (Fig 1); a first coupling clamp (#14) disposed along the joint rod (Fig 1-2), the first coupling clamp configured to releasably clamp to a post (paragraph 5, 24); and a second coupling clamp (#12) disposed along the joint rod adjacent to and rotatable about the joint rod relative to the first coupling clamp (paragraph 12, 23), the second coupling clamp releasably connectable to a shaft (paragraph 26), a biasing member (#54) configured to releasably secure and bias the second coupling clamp against the first coupling clamp (paragraph 23), the biasing member includes a lever having a free end and a cam distal from the free end ( see below), wherein the biasing member is configured to be rotatably connected to the joint rod (see below, paragraph 23).
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It would have also been obvious to one having ordinary skill in the art at a time before the effective filing date of the claimed invention to modify the rod manipulating joint of Onge to include the biasing member in view of Philips above because this provides a known alternative configuration for locking and unlocking the rod manipulating joint. It is noted that with the modification, one need only rotate/pivot the first biasing member in a single action to lock and unlock, as opposed to the knob (#61 in Onge) of Onge which may require more than one revolution.
Regarding Claim 15, Onge as modified discloses wherein the second end comprises a receiver axis extending orthogonally to the body axis (as seen in Fig 1-2 in Onge, Fig below).
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Regarding Claim 16, Onge as modified discloses the receiver further comprises a securing member (Onge: #4) extending at an angle oblique to the receiver axis (see Fig above, Fig 1, 16 in Onge).
Claim 18 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Onge US 2004/0034350 in view of Bridwell US 2007/0213715.
Onge discloses the claimed invention as discussed above where the first post (#14) has a connected end connected to the manipulator rod (as best seen in Fig 3 in Onge below) such that the second coupling clamp can move along the post until it abuts the manipulator rod (Fig 1) in Onge), the post (#14 in Onge) having a free end (Fig 3 in Onge) but does not disclose the free end having a larger cross-section than the connected end.
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Bridwell, pertinent to the problem of retaining clamps on a post, discloses a post (#202) having free ends (#208 and #206) in the form of flanges (Fig 20) such that it has a larger cross section than that of the rest of the post (Fig 20) to prevent clamps (#220) from sliding off the free ends (paragraph 75).
It would have been obvious to one having ordinary skill in the art at a time before the effective filing date of the claimed invention to modify Onge to have the free end include a flange in view of Bridwell above because it will prevent the second coupling clamp from sliding off. It is noted that with the modification, the flange would be greater diameter than the rest of the post and thus have a larger cross section than the connected end.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAN CHRISTOPHER L MERENE whose telephone number is (571)270-5032. The examiner can normally be reached Mon-Fri 8:30 am - 6pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eduardo Robert can be reached at 571-272-4719. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAN CHRISTOPHER L MERENE/Primary Examiner, Art Unit 3773