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 .
Response to Amendment
Applicant’s Amendments, filed 12/30/2025, to claims 1, 3, 4, 14, 15-25 acknowledged by Examiner.
Claims 1-25 are now pending.
Previous objections to the abstract, specification, and claims withdrawn as the present amendments to the application fix the issues therein.
Response to Arguments
Applicant's arguments filed 12/30/2025 have been fully considered but they are not persuasive. Applicant asserts that the present references do not provide for the amended language of the present claims. See the updated rejection as necessitated by the amendments and interpretation of the references below, wherein Examiner finds that the present references actually provide for the amended language.
Examiner’s Notes
All references relied up on and not cited in the current Form 892 may be found in previous 892's or IDS'.
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.
Claim 15, 17-20 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 15 recites the limitation "the elongate length" and “the access opening”. There is insufficient antecedent basis for these limitation in the claim.
Claim 15 recites the limitation "the length of the minor axis". There is insufficient antecedent basis for these limitation in the claim.
Claim 17 recites “the eye patch of claim 17”, thus referring to itself, thus making the claim indefinite. For interpretation purposes, will be read as -of claim 16-. Examiner provides notice that the other dependencies of claims 18-20 are also now listed as depending from claims 17 which as written refers to itself making those claims also indefinite.
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.
Claim(s) 1-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Leonardi (US5183059A) in view of Goffman (US4862902A).
Regarding claim 1, Leonardi discloses an eye patch for use by a patient (Fig. 1-6; wherein the examiner is interpreting the eye patch as a piece of material fit over the eye socket area), comprising:
a headband 22 having a longitudinal axis (Fig. 1 and 4; the two part band 22 is the headband therein, as seen in the annotated figure 1 the longitudinal axis of each strap 22a and 22b is drawn when worn, wherein the flexible straps may be manipulated therein when non-worn to be in such a position as well), wherein at least a portion of the headband 22 is formed of elastic material (Col. 6, lines 57-61);
a mount assembly 12 having first sheet of material positioned in opposition to a second sheet of material (Fig. 6, the mount assembly 12 as shown has a bottom and top sheet on the shell 11), the first and second sheets being connected about a portion of the respective circumferential edges of the first and second sheets and define a circumferentially extending pocket between the respective inner surfaces of the first and second sheets (Fig. 5-6, wherein the two sheets as shown are joined at their circumferential edges therein to form the structure as a whole, wherein a pocket is formed between the two sheets to hold the shell 11 therein);
wherein the opposed first and second sheets define a central opening in the mount assembly 12 (Fig. 4-6, a central opening is formed wherein the shell 11 is placed and covering said central opening) wherein the mount assembly 12 is coupled to a portion of an exterior surface of the headband 22 (Fig. 4-6, headband 22 is connected to the mount assembly 12 thus so is its surfaces including its exterior surfaces therein) such that a major axis of the central opening is positioned at an acute angle ß with respect to the longitudinal axis of the headband 22 (See Annotated Fig. 1 below, wherein the longitudinal axis and major axis of the central opening are easily seen to make an acute angle ß); and
a strap 14 mounted to and extending outwardly from a portion of the circumferential edges of the first and second sheets of the mount assembly 12 (Fig. 4, strap 14 mounted to and extending from the circumferential edges of assembly 12 therein), in a non-worn position, the strap 14 extends along an axis generally coaxial to the major axis of the central opening (See Annotated Fig. 1, which shows the strap 14 in a worn configuration having the same axis as the major axis of the central opening, thus being co-axial therein, wherein while Fig. 1 shows this configuration in a worn state, the straps can be in this position in a non-worn state as the straps are flexible as shown, for an example one may lay out the device on a table and place the flexible straps in the positions as shown in a worn state, thus also being present in a non-worn state);
wherein at least a portion of the strap 14 is formed of elastic material (Col. 6, lines 57-61) and wherein a distal end portion 28 of the strap 14 is configured to be selectively and releasably coupled to a rear portion 26 of the headband 22 to ensure a desired degree of tension is placed on the strap 14 and the coupled mount assembly 12 to assure the seated secure non-adhesive positioning of the mount assembly 12 to the patient is achieved in a mounted position (Fig. 1-3 shows the mounted positions of the device; Col. 3 lines 15-27, the ends 28 and 26 are releasable and selectively attached therein, wherein as the attachment is performed on a head of a user there will be a formed tension formed within the elastic straps therein).
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Leonardi fails to explicitly disclose the opening being elliptically shaped therein.
However, Goffman teaches an analogous mount assembly having an analogous first sheet of material positioned in opposition to an analogous second sheet of material, the first (See Annotated Fig. 2 below; fabric cover 58) and second sheets (See Annotated Fig. 2 below; interior surfaces 61) being connected about a portion of the respective circumferential edges (See Annotated Fig. 2 below; elastic means 59) of the first and second sheets and define a circumferentially extending pocket between the respective inner surfaces of the first and second sheets (See Annotated Fig. 2 below); wherein the opposed first and second sheets define an elliptically shaped central opening in the mount assembly (See Annotated Fig. 2 below; wherein the examiner notes the central opening is capable of taking an elliptical shape).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the invention, to modify the pocket of the mount assembly 12 of Leonardi to have the central opening being elliptically shaped therein as taught by Goffman to provide an improved pocket with a purpose of removably receiving an eye shield, would improve post-surgical care as it would allow for periodic cleaning and inspection of the eye and allows users to interchange the eye shields as needed.
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Regarding Claim 2, Leonardi in view of Goffman discloses the invention of claim 1 above.
Leonardi further discloses wherein the headband 22 has an upper edge 22b and a lower edge 22a (Fig. 1 and 4).
Regarding Claim 3, Leonardi in view of Goffman discloses the invention of claim 2 above.
Leonardi further discloses wherein a portion of the circumferential edges of the first and second sheets 12 is positioned proximate the upper edge 22b of the headband 22 (Fig. 4, the upper edge 22b is proximate near the circumferential edge of the sheets 12).
Regarding Claim 4, Leonardi in view of Goffman discloses the invention of claim 2 above.
Leonardi in view of Goffman further discloses wherein a focus of the elliptically shaped central opening (as modified) is positioned proximate the lower edge 22a of the headband 22 (Annotated Fig. 1, wherein the instant application appears to define the focus to be the major axis of the central opening, as such the focus as indicated is proximate to the lower edge 22a).
Regarding Claim 5, Leonardi in view of Goffman discloses the invention of claim 2 above.
Leonardi in view of Goffman further discloses wherein a focus of the elliptically shaped central opening is positioned between the longitudinal axis of the headband 22 and the lower edge 22a of the headband 22 (See Annotated Fig. 1, wherein the focus is positioned between longitudinal axis of headband portion 22a and the lower edge 22a).
Regarding Claim 6, Leonardi in view of Goffman discloses the invention of claim 1 above.
Leonardi discloses wherein the headband 22 is continuous (Fig. 1-6; strap 22 is continuous between its ends therein).
Regarding Claim 7, Leonardi in view of Goffman discloses the invention of claim 1 above.
Leonardi discloses the eye patch is reversible and can be configured to be worn on either the left or right eye of the patient (Fig. 1-6; wherein the eye patch is capable of being reversible as it can be configured to the user by simply flipping the eye patch).
Regarding Claim 8, Leonardi in view of Goffman discloses the invention of claim 1 above.
Leonardi in view of Goffman does not disclose wherein the acute angle ß ranges from about 30 degrees to about 60 degrees.
However, one of ordinary skill in the art would see Figure 1 of Leonardi, and firstly be able to know that the straps 22a/22b are placed into acute angles relative the major axis of the eye patch, wherein acute angles are known in the art to be less than ninety degrees including 30 to 60 degrees.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have provided wherein the acute angle ß ranges from about 30 degrees to about 60 degrees as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP § 2144.05; wherein the Figure 1 of Leonardi may be optimized to have the acute angles as claimed herein.
Regarding Claim 9, Leonardi in view of Goffman discloses the invention of claim 1 above.
Leonardi further discloses an eye shield 11, having a generally ovoid shape and a peripheral edge (Fig. 1-6; ovate shell 11), wherein the eye shield 11 is configured to be selectably seated within the pocket of the mount assembly 12 (Fig. 6; wherein the shell 11 is placed within the pocket formed by the mount assembly 12).
Regarding Claim 10, Leonardi in view of Goffman discloses the invention of claim 9 above.
Leonardi further discloses wherein the generally ovoid shape is a generally teardrop shape (Fig. 1-6; ovate shell 11 is a teardrop shape).
Regarding Claim 11, Leonardi in view of Goffman discloses the invention of claim 9 above.
Leonardi further discloses wherein the eye shield 11 is rigid (Col. 2 lines 40-53, shell 11 is plastic or a metal such as aluminum thus is rigid) and the peripheral edge is shaped to conform to the facial contours of the patient (Fig. 1-6, wherein the shell 11 and its edges is concave on the interior thus matching an external convex curve of a face, as shown in Fig. 1-3 the shell conforms to area around the eye; the present application provides for aluminum as a preferred material having these characteristics).
Regarding Claim 12, Leonardi in view of Goffman discloses the invention of claim 9 above.
Leonardi further discloses wherein at least a portion of the eye shield 11 is deformable to allow the peripheral edge of the eye shield 11 to deform to the facial contours of the patient (Col. 2 lines 40-53, shell 11 is plastic or a metal such as aluminum, wherein these materials are deformable under with enough mechanical pressure or addition of heat thus being able to deform to the facial contours of the patient; the present application provides for aluminum as a preferred material having these characteristics).
Regarding Claim 13, Leonardi in view of Goffman discloses the invention of claim 9 above.
Leonardi fails to disclose an annular cover member configured to be mounted about the periphery of the eye shield and overlie the peripheral edge of the eye shield.
However, Goffman teaches an annular cover member configured to be mounted about the periphery of the eye shield and overlie the peripheral edge of the eye shield (Fig. 2 and 3, Col. 3, lines 54-56; annular cover member 57).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the invention, to incorporate the annular cover member 57 of Goffman such that it overlies the eye shield of Leonardi to provide an improved eye patch as the annular cover member protects the user from the rigid edges of the eye shield.
Regarding Claim 14, Leonardi in view of Goffman discloses the invention of claim 9 above.
Leonardi discloses wherein a portion of respective circumferential edges of the first and second sheets of the mount assembly 12 defines an access opening thereto the circumferentially extending pocket (See Annotated Fig. 6 below, wherein the cushion 12 formed by the defined first and second “sheets”, has an access opening into the pocket that the shell 11 resides), wherein the access opening has an elongate length that is configured to allow passage of the eye shield 11 into the circumferentially extending pocket (Fig. 1-6 and Annotated Fig. 6, the access opening implicitly would have an elongated length therein for receiving the shell 11); and
wherein the access opening is configured to be selectively opened or sealed by the patient to selectively seat the eye shield 11 therein the circumferentially extending pocket (Annotated Fig. 6, the access opening is implicitly capable of being opened as the cushion 12 is elastomeric, Col. 2 lines 40-53, thus able to opened to place or remove the shell 11 therein).
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Regarding Claim 15, Leonardi in view of Goffman discloses the invention of claim 9 above.
Leonardi in view of Goffman discloses wherein the elongate length of the access opening (Annotated Fig 6) has a length that is at least the length of the minor axis of the elliptically shaped central opening (Fig. 1-6 of Leonardi as modified by Goffman, the elongate length of the access opening is clearly as long as the minor axis of an ellipse, being at least the length of a major axis of an ellipse).
Regarding claim 16, Leonardi discloses a reversible eye patch configured to be worn on either the left or right eye of the patient (Fig. 1-6; wherein the examiner is interpreting the eye patch as a piece of material fit over the eye socket area, the patch clearly reversible in position on the user for the right or left eye), comprising:
a continuous headband 22 having a longitudinal axis (Fig. 1 and 4; the two part band 22 is the headband therein, as seen in the annotated figure 1 the longitudinal axis of each strap 22a and 22b is drawn when worn, wherein the flexible straps may be manipulated therein when non-worn to be in such a position as well, being continuous between its two ends therein), wherein at least a portion of the headband 22 is formed of elastic material (Col. 6, lines 57-61);
a mount assembly 12 having first sheet of material positioned in opposition to a second sheet of material (Fig. 6, the mount assembly 12 as shown has a bottom and top sheet on the shell 11), the first and second sheets being connected about a portion of the respective circumferential edges of the first and second sheets and define a circumferentially extending pocket between the respective inner surfaces of the first and second sheets (Fig. 5-6, wherein the two sheets as shown are joined at their circumferential edges therein to form the structure as a whole, wherein a pocket is formed between the two sheets to hold the shell 11 therein);
wherein the opposed first and second sheets define a central opening in the mount assembly 12 (Fig. 4-6, a central opening is formed wherein the shell 11 is placed and covering said central opening) wherein the mount assembly 12 is coupled to a portion of an exterior surface of the headband 22 (Fig. 4-6, headband 22 is connected to the mount assembly 12 thus so is its surfaces including its exterior surfaces therein) such that a major axis of the central opening is positioned at an acute angle ß with respect to the longitudinal axis of the headband 22 (See Annotated Fig. 1 below, wherein the longitudinal axis and major axis of the central opening are easily seen to make an acute angle ß);
an eye shield 11, having a generally ovoid shape and a peripheral edge (Fig. 1-6; ovate shell 11), wherein the eye shield 11 is configured to be selectably seated within the pocket of the mount assembly 12 (Fig. 6; wherein the shell 11 is placed within the pocket formed by the mount assembly 12),
a portion of respective circumferential edges of the first and second sheets of the mount assembly 12 defines an access opening thereto the circumferentially extending pocket (See Annotated Fig. 6 below, wherein the cushion 12 formed by the defined first and second “sheets”, has an access opening into the pocket that the shell 11 resides), wherein the access opening has an elongate length that is configured to allow passage of the eye shield 11 into the circumferentially extending pocket (Fig. 1-6 and Annotated Fig. 6, the access opening implicitly would have an elongated length therein for receiving the shell 11); and
wherein the access opening is configured to be selectively opened or sealed by the patient to selectively seat the eye shield 11 therein the circumferentially extending pocket (Annotated Fig. 6, the access opening is implicitly capable of being opened as the cushion 12 is elastomeric, Col. 2 lines 40-53, thus able to opened to place or remove the shell 11 therein),
a strap 14 mounted to and extending outwardly from a portion of the circumferential edges of the first and second sheets of the mount assembly 12 (Fig. 4, strap 14 mounted to and extending from the circumferential edges of assembly 12 therein), in a non-worn position, the strap 14 extends along an axis generally coaxial to the major axis of the central opening (See Annotated Fig. 1, which shows the strap 14 in a worn configuration having the same axis as the major axis of the central opening, thus being co-axial therein, wherein while Fig. 1 shows this configuration in a worn state, the straps can be in this position in a non-worn state as the straps are flexible as shown, for an example one may lay out the device on a table and place the flexible straps in the positions as shown in a worn state, thus also being present in a non-worn state);
wherein at least a portion of the strap 14 is formed of elastic material (Col. 6, lines 57-61) and wherein a distal end portion 28 of the strap 14 is configured to be selectively and releasably coupled to a rear portion 26 of the headband 22 to ensure a desired degree of tension is placed on the strap 14 and the coupled mount assembly 12 to assure the seated secure non-adhesive positioning of the mount assembly 12 to the patient is achieved in a mounted position (Fig. 1-3 shows the mounted positions of the device; Col. 3 lines 15-27, the ends 28 and 26 are releasable and selectively attached therein, wherein as the attachment is performed on a head of a user there will be a formed tension formed within the elastic straps therein).
Leonardi fails to explicitly disclose the opening being elliptically shaped therein.
However, Goffman teaches an analogous mount assembly having an analogous first sheet of material positioned in opposition to an analogous second sheet of material, the first (See Annotated Fig. 2 below; fabric cover 58) and second sheets (See Annotated Fig. 2 below; interior surfaces 61) being connected about a portion of the respective circumferential edges (See Annotated Fig. 2 below; elastic means 59) of the first and second sheets and define a circumferentially extending pocket between the respective inner surfaces of the first and second sheets (See Annotated Fig. 2 below); wherein the opposed first and second sheets define an elliptically shaped central opening in the mount assembly (See Annotated Fig. 2 below; wherein the examiner notes the central opening is capable of taking an elliptical shape).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the invention, to modify the pocket of the mount assembly 12 of Leonardi to have the central opening being elliptically shaped therein as taught by Goffman to provide an improved pocket with a purpose of removably receiving an eye shield, would improve post-surgical care as it would allow for periodic cleaning and inspection of the eye and allows users to interchange the eye shields as needed.
Regarding Claim 17, Leonardi in view of Goffman discloses the invention of claim 17 (see 112b above, reading as from claim 16) above.
Leonardi further discloses wherein the headband 22 has an upper edge 22b and a lower edge 22a (Fig. 1 and 4).
Regarding Claim 18, Leonardi in view of Goffman discloses the invention of claim 17 above (see 112b above).
Leonardi further discloses wherein a portion of the circumferential edges of the first and second sheets 12 is positioned proximate the upper edge 22b of the headband 22 (Fig. 4, the upper edge 22b is proximate near the circumferential edge of the sheets 12).
Regarding Claim 19, Leonardi in view of Goffman discloses the invention of claim 17 above (see 112b above).
Leonardi in view of Goffman further discloses wherein a focus of the elliptically shaped central opening (as modified) is positioned proximate the lower edge 22a of the headband 22 (Annotated Fig. 1, wherein the instant application appears to define the focus to be the major axis of the central opening, as such the focus as indicated is proximate to the lower edge 22a).
Regarding Claim 20, Leonardi in view of Goffman discloses the invention of claim 17 above (see 112b above).
Leonardi in view of Goffman further discloses wherein a focus of the elliptically shaped central opening is positioned between the longitudinal axis of the headband 22 and the lower edge 22a of the headband 22 (See Annotated Fig. 1, wherein the focus is positioned between longitudinal axis of headband portion 22a and the lower edge 22a).
Regarding Claim 21, Leonardi in view of Goffman discloses the invention of claim 16 above.
Leonardi in view of Goffman does not disclose wherein the acute angle ß ranges from about 30 degrees to about 60 degrees.
However, one of ordinary skill in the art would see Figure 1 of Leonardi, and firstly be able to know that the straps 22a/22b are placed into acute angles relative the major axis of the eye patch, wherein acute angles are known in the art to be less than ninety degrees including 30 to 60 degrees.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have provided wherein the acute angle ß ranges from about 30 degrees to about 60 degrees as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP § 2144.05; wherein the Figure 1 of Leonardi may be optimized to have the acute angles as claimed herein.
Regarding Claim 22, Leonardi in view of Goffman discloses the invention of claim 16 above.
Leonardi further discloses wherein the eye shield 11 is rigid (Col. 2 lines 40-53, shell 11 is plastic or a metal such as aluminum thus is rigid) and the peripheral edge is shaped to conform to the facial contours of the patient (Fig. 1-6, wherein the shell 11 and its edges is concave on the interior thus matching an external convex curve of a face, as shown in Fig. 1-3 the shell conforms to area around the eye; the present application provides for aluminum as a preferred material having these characteristics).
Regarding Claim 23, Leonardi in view of Goffman discloses the invention of claim 16 above.
Leonardi further discloses wherein at least a portion of the eye shield 11 is deformable to allow the peripheral edge of the eye shield 11 to deform to the facial contours of the patient (Col. 2 lines 40-53, shell 11 is plastic or a metal such as aluminum, wherein these materials are deformable under with enough mechanical pressure or addition of heat thus being able to deform to the facial contours of the patient; the present application provides for aluminum as a preferred material having these characteristics).
Regarding Claim 24, Leonardi in view of Goffman discloses the invention of claim 16 above.
Leonardi fails to disclose an annular cover member configured to be mounted about the periphery of the eye shield and overlie the peripheral edge of the eye shield.
However, Goffman teaches an annular cover member configured to be mounted about the periphery of the eye shield and overlie the peripheral edge of the eye shield (Fig. 2 and 3, Col. 3, lines 54-56; annular cover member 57).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the invention, to incorporate the annular cover member 57 of Goffman such that it overlies the eye shield of Leonardi to provide an improved eye patch as the annular cover member protects the user from the rigid edges of the eye shield.
Regarding Claim 25, Leonardi in view of Goffman discloses the invention of claim 16 above.
Leonardi in view of Goffman discloses wherein the elongate length of the access opening (Annotated Fig 6) has a length that is at least the length of the minor axis of the elliptically shaped central opening (Fig. 1-6 of Leonardi as modified by Goffman, the elongate length of the access opening is clearly as long as the minor axis of an ellipse, being at least the length of a major axis of an ellipse).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN S ALBERS whose telephone number is (571)272-0139. The examiner can normally be reached Monday-Friday 7:30 am to 5:00 pm.
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, Rachael Bredefeld can be reached at (571) 270-5237. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN S ALBERS/Patent Examiner, Art Unit 3786
/RACHAEL E BREDEFELD/Supervisory Patent Examiner, Art Unit 3786