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
Claims 1-12 are pending. Claims 1, 4, 8, 9, 10 are currently amended.
Drawings
The drawings are objected to because the drawings are not line drawings. See 37 CFR 1.84(b).
The examiner notes the requirement to be a line drawing as provided in 37 CFR 1.84(a) - “(1) Black ink. Black and white drawings are normally required. India ink, or its equivalent that secures solid black lines, must be used for drawings”, and that photographs are not normally acceptable - “(1) Black and white. Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention.”
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
In claim 1, consider --that is positioned along the first longitudinal axis and at [[the]] a deepest portion […] the first and second side portions that extend from the first and second sides of the crown portion, to [[the]] respective edges of the first filing slot--.
In claim 12, consider --regions are [[or]] of predetermined widths--.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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)(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.
Claim(s) 1, 2, 9 ,10 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ertl (US 20250058423 A1; a machine translation of the foreign priority document DE 10 2021 215 021.7, dated 12/23/2021 is attached which supports the disclosure and claims of the reference)
With respect to claim 1, Ertl discloses: A file for use in filing a strip of metal (intended use; file disclosed by Ertl in [0002] can be used on strip of metal), comprising: an elongated body having a first filing edge that extends along a first longitudinal axis (base body 2, fig. 1, has longitudinal axis perpendicular to figure, and is understood to be elongated, has slot/recessed filing edge formed by filing elements 5 and 6, forming a slot between as described in [0080-0081]) ; and a first filing slot formed in the first filing edge and comprising a pair of edges that extend along the intersection of the first filing slot and the elongated body (slot formed by filing elements 5 and 6 as in [0080-0081], forming a pair of edges, and extend along first filing slot and elongated body as a slot along longitudinal axis; there are also edges at AF and BF, fig. 1, at the periphery of the two filing elements 5 and 6), a crown portion having first and second sides and that is positioned along the longitudinal axis and at the deepest portion of the first filing slot (crown portion 9, figs. 1 and 2; has two sides around centerline E; and is at the deepest portion of filing slot as shown in fig. 1; [0088]), wherein the crown portion does not extend beyond the respective edges of the first filing slot (see position of crown portion 9, fig. 1, relative to edges at AF and BF, fig. 1, the dimensions t of the crown portion are discussed in [0088], and the abrasive begins at CF and DF, fig. 1) and first and second side portions that extend from the first and second sides of the crown portion, respectively, to the respective edges of the first filing slot (first/second side portions 8, fig. 1, extend to edges at AF and BF, fig. 1); wherein the first and second side portions contain an abrasive material adapted for filing the strip of metal and the crown portion does not include abrasive material thereon (first/second side surfaces 8 are abrasive, and surface 9 of crown is nonabrasive, figs. 1-2; [0088]).
With respect to claim 2, Ertl discloses the limitations of claim 1 above, and further discloses wherein the first filing slot is concave in shape (see shape of slot/sides 8 in fig. 1, [0086]).
With respect to claim 9, Ertl discloses: A file for filing a strip of metal (intended use; file disclosed by Ertl in [0002] can be used on strip of metal), comprising: a body (base body 2, fig. 1; [0080-0081]) with a first slotted filing region of predetermined depth formed therein (slot/recessed filing edge formed by filing elements 5 and 6, fig. 1, forming a slot between as described in [0080-0081]; the depth is predetermined by nature of being a physical tool) and having a first crown portion at its deepest part (crown portion 9, figs. 1 and 2; is at the deepest portion of filing slot as shown in fig. 1; [0088]) and first and second radiused side regions extending outwardly from the first crown portion (side regions, 8, fig. 1, extend to edges at AF and BF, fig. 1; [0088]) and abrasive material formed on each of the first and second radiused side regions and non-abrasive material forming the first crown portion (first/second side regions 8 are abrasive, and surface 9 of crown region is nonabrasive, figs. 1-2; [0088]), wherein the first crown portion does not extend beyond edges of the second radiused side regions (see position of crown portion 9, fig. 1, relative to edges [of the radiused side regions] at AF and BF, fig. 1, the dimensions t of the crown portion are discussed in [0088], and the abrasive begins at CF and DF, fig. 1).
With respect to claim 10, Ertl discloses the limitations of claim 9 above, and further discloses wherein the first filing slot is concave in shape (see shape of slot/sides 8 in fig. 1, [0086]).
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.
Claim(s) 1-4, 6-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tusko (US 20230162710 A1) in view of Ertl (US 20250058423 A1; a machine translation of the foreign priority document DE 10 2021 215 021.7, dated 12/23/2021 is attached which supports the disclosure and claims of the reference)
With respect to claim 1, Tusko discloses: A file for use in filing a strip of metal (intended use; however [0004] discloses that Frets are metal strips), comprising: an elongated body having a first filing edge that extends along a first longitudinal axis (405 and 410 together formed a continuous elongated body, fig. 4; with a first edge at top left side 420, fig. 4, [0074]; it is noted that there are 4 filing edges); and
a first filing slot formed in the first filing edge (420, fig. 4 is disclosed to be a groove in [0074]) and comprising a pair of edges that extend along the intersection of the first filing slot and the elongated body (as in [0074], aspects from figs 2 and 3 can be incorporated into the embodiment of fig. 4; and fig. 3a describes how a slot can be formed with two side surfaces 305 [with edges that extend along intersection of slot and body], as described in [0064]),
wherein the first and second side portions contain an abrasive material adapted for filing the strip of metal (filing surface 250 has an abrasive surface as in fig. 2c, [0061]; fig. 3a describes the profiles of filing surface 250, including the first/second side portions 305 as in [0064])
however, does not explicitly disclose a crown portion having first and second sides and that is positioned along the longitudinal axis and at the deepest portion of the first filing slot, and first and second side portions that extend from the first and second sides of the crown portion, respectively, to the respective edges of the first filing slot; wherein the crown portion does not extend beyond the respective edges of the first filing slot and the crown portion does not include abrasive material thereon. Tusko, however, discloses that it is important not to over file the crown of a fret ([0008] discloses how it is important to preserve the level plane of the top of the fret; [0064] provides that the top of the fret should not be touched by the tool, which is achieved through a point or crease 310, fig. 3a)
Ertl, in the same field of endeavor, related to files, teaches of providing a fret filing tool with crown portion having first and second sides and that is positioned along the longitudinal axis and at the deepest portion of the first filing slot (crown portion 9, figs. 1 and 2; has two sides around centerline E; and is at the deepest portion of filing slot as shown in fig. 1, and when applied to Tusko would be positioned along the longitudinal axis of the tool, given that the filing slot extends long that axis), and first and second side portions that extend from the first and second sides of the crown portion (portions of 8, fig. 1 on both sides, respectively, around the center of the crown at 9, fig. 1; [0088], it is noted that the crown 9 has no abrading material, while the surfaces 8 are provided with such as in [0088]) to the respective edges of the first filing slot (first and second sides 8 extend to edge of filing slot; fig. 1; [0086,0088]); wherein the crown portion does not extend beyond the respective edges of the first filing slot (see position of crown portion 9, fig. 1, relative to edges at AF and BF, fig. 1, the dimensions t of the crown portion are discussed in [0088], and the abrasive begins at CF and DF, fig. 1) and the crown portion does not include abrasive material thereon ([0088]). Ertl teaches that this arrangement with a protruding crown [depth stop at 9] prevents unwanted abrading of the fret ([0007-0009]), and simplifies filing of the fret ([0017])
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the slot of Tusko, to provide for a non-abrasive crown region, in place of a point or crease, for the same purpose of preventing the top of the fret from being filed. This arrangement would also provide the advantage of simplifying filling of the fret ([0017]).
With respect to claim 2, Tusko, as modified, teaches the limitations of claim 1 above, and further teaches wherein the first filing slot is concave in shape (Tusko, filing surface 250 has a concave shape as in fig. 2c, [0061]; fig. 3a describes the profiles of filing surface 250, including the first/second side portions 305 as in [0064]; Ertl, see shape of slot/sides 8 in fig. 1, [0086]).
With respect to claim 3, Tusko, as modified, teaches the limitations of claim 1 above, and further teaches wherein the first filing slot extends at a first oblique angle outwardly from the first longitudinal axis and terminates in a first rounded nose (Tusko, slot 220 in fig. 2C terminates in rounded nose; the slot, by being of a concave shape as shown in fig. 2c, extends at a first oblique angle relative to the axis of the slot; as in [0074], aspects from figs 2 and 3 can be incorporated into the embodiment of fig. 4).
With respect to claim 4, Tusko, as modified, teaches the limitations of claim 1 above, and further teaches wherein the elongated body further comprises: a second filing edge that extends along a second longitudinal axis (Tusko, lower right corner; 415, fig. 4; [0074]; it is noted that there are 4 filing edges), and a second filing slot formed in the second filing edge (Tusko, 420, fig. 4 is disclosed to be a groove in [0074]) and comprising a second pair of edges that extend along the intersection of the second filing slot and the elongated body the groove (as in Tusko, [0074], aspects from figs 2 and 3 can be incorporated into the embodiment of fig. 4; and fig. 3a describes how a slot can be formed with two side surfaces 305 [with edges that extend along intersection of slot and body], as described in [0064]), however does not explicitly teach a second crown portion having first and second sides and that is positioned along the second longitudinal axis and at the deepest portion of the second filing slot, and wherein the third and fourth side portions are coated with abrasive material adapted for filing the strip of metal and the crown portion does not include abrasive material thereon. As explained in the 103 rejection of claim 1 above, these elements of a crown portion having first and second sides and that is positioned along the second longitudinal axis and at the deepest portion of the second filing slot, and wherein the first and second side portions [or third and fourth side portions, when applied to a second filing slot] are coated with abrasive material adapted for filing the strip of metal and the crown portion does not include abrasive material thereon, found with respect to the first filing slot in the first filing edge are obvious over Tusko in view of Ertl. For the same reasons as in the 103 rejection of claim 1 above, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have applied the teachings of Ertl with a non-abrasive crown portion and abrasive third and fourth side portions to the second filing slot of Tusko. This would have resulted in the claimed limitations.
With respect to claim 6, Tusko, as modified, teaches the limitations of claim 4 above, and further teaches wherein the first filing slot and second filing slot are of predetermined widths that are different from one another (Tusko; [0074], each of the edges can have different groove sizes to accommodate different fret sizes; [0069-0072] describe the groove sizes/widths [or radiuses, which ultimately determines the width of the groove] and calculation thereof).
With respect to claim 7, Tusko, as modified, teaches the limitations of claim 4 above, and further teaches wherein the second filing slot extends at a second oblique angle from the second longitudinal axis and terminates in a second rounded nose (Tusko, slot 220 in fig. 2C terminates in rounded nose; the slot, by being of a concave shape as shown in fig. 2c, extends at a first oblique angle relative to the axis of the slot; as in [0074], aspects from figs 2 and 3 can be incorporated into the embodiment of fig. 4).
With respect to claim 8, Tusko discloses: A method for using a file to file a strip of metal (the apparatus is used to file frets made of metal, [0002,0004]) , comprising the steps of: providing a file having a filing slot that includes two sides of filing material coating formed thereon (file with slot 220, fig. 2c, with abrasive material formed on surface 250; [0061], the surface 250 is segmented by a crease 310, as in [0064], and therefore has two sides or halves), sliding the file back and forth across the strip of metal (the apparatus is used to file frets made of metal, [0002,0004]; the file is operated drawing the tool across frets [strip of metal] in [0005]) however does not explicitly disclose a central, crown portion that does not have an abrasive material thereon, and wherein the crown portion does not extend beyond respective edges of the first filing slot; and stopping the sliding movement once the central, crown portion touches the strip of metal. Tusko, however, discloses that that the top part of the fret should only be touch at the last stroke, otherwise not touching the top part, and at most leaving the finest silver to be filed ([0053]; therefore, the central top portion 310, fig. 3a, analogous to a crown (but not uncoated, as recited in the claim) does not touch the top part of the fret; [0072]).
Ertl, in the same field of endeavor, related to files, teaches of providing a fret filing tool with a crown portion (crown portion 9, figs. 1 and 2; has two sides around centerline E; and is at the deepest portion of filing slot as shown in fig. 1; Etrl refers to this as a depth stop which is further described in [0007-0008], which provides the understanding that once the depth [the fret touching the stop] has been reached, abrading is stopped) with side portions (side portions of 8, fig. 1); where the crown has no abrading material, while the side portions are provided with abrading material ([0088]) and wherein the crown portion does not extend beyond respective edges of the first filing slot (see position of crown portion 9, fig. 1, relative to edges at AF and BF, fig. 1, the dimensions t of the crown portion are discussed in [0088], and the abrasive begins at CF and DF, fig. 1). Etrl provides that Ertl teaches that this arrangement with a protruding crown [depth stop at 9] prevents unwanted abrading of the fret ([0007-0009]), and simplifies filing of the fret ([0017])
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the slot of Tusko, to provide for a non-abrasive crown region, in place of the point or crease, for the same purpose of preventing the top of the fret from being filed, and to stop abrading when the fret/metal strip reaches the stop. This arrangement would also provide the advantage of simplifying filling of the fret (Ertl, [0017]).
With respect to claim 9, Tusko discloses: A file for filing a strip of metal (intended use; however [0004] discloses that Frets are metal strips), comprising: a body (body 405 and 410 together formed a continuous body, fig. 4; [0074]) with a first slotted filing region of predetermined depth formed therein (420, fig. 4 is disclosed to be a groove in [0074]; it is noted that there are 4 filing edges, for the purposes of examination the first slotted region is the top left one; the depth is predetermined as part of the physical structure of the tool) and having a first crown portion at its deepest part (310, fig. 3a; [0064], as in [0074], aspects from figs 2 and 3 can be incorporated into the embodiment of fig. 4) and first and second radiused side regions extending outwardly from the first crown portion (fig. 3a describes how a slot can be formed with two side surfaces 305 [extend outwardly/to bottom of figure from crown 310 in fig. 4, as described in [0064]); and abrasive material formed on each of the first and second radiused side regions (filing surface 250 has an abrasive surface as in fig. 2c, [0061]; fig. 3a describes the profiles of filing surface 250, including the first/second side portions 305 as in [0064]) however does not explicitly disclose non-abrasive material forming the first crown portion, wherein the crown portion does not extend beyond respective edges of the second radiused side region.
Ertl, in the same field of endeavor, related to files, teaches of providing a fret filing tool with a crown portion (crown portion 9, figs. 1 and 2; has two sides around centerline E; and is at the deepest portion of filing slot as shown in fig. 1) with side portions (side portions of 8, fig. 1); where the crown has no abrading material, while the side portions are provided with abrading material ([0088]), wherein the crown portion does not extend respective edges of the second radiused side region (see position of crown portion 9, fig. 1, relative to edges at AF and BF, fig. 1, [ends of radiused regions], the dimensions t of the crown portion are discussed in [0088], and the abrasive begins at CF and DF, fig. 1). Etrl provides that Ertl teaches that this arrangement with a protruding crown [depth stop at 9] prevents unwanted abrading of the fret ([0007-0009]), and simplifies filing of the fret ([0017]). Tusko, however, discloses that it is important not to over file the crown of a fret ([0008] discloses how it is important to preserve the level plane of the top of the fret; [0064] provides that the top of the fret should not be touched by the tool, which is achieved through a point or crease 310, fig. 3a).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the slot of Tusko, to provide for a non-abrasive crown region, in place of the point or crease, for the same purpose of preventing the top of the fret from being filed, and to stop abrading when the fret/metal strip reaches the stop. This arrangement would also provide the advantage of simplifying filling of the fret (Ertl, [0017]).
With respect to claim 10, Tusko, as modified, teaches the limitations of claim 9 above, and further teaches wherein the first slotted filing region is concave in shape (Tusko, filing surface 250 has a concave shape as in fig. 2c, [0061]; fig. 3a describes the profiles of filing surface 250, including the first/second side portions 305 as in [0064]; Ertl, see shape of slot/sides 8 in fig. 1, [0086]).’
With respect to claim 11, Tusko, as modified, teaches the limitations of claim 9 above, and further teaches a second slotted filing region of predetermined depth formed in the body (Tusko, 420, fig. 4 is disclosed to be a groove in [0074]; it is noted that there are 4 filing edges, for the purposes of examination the first slotted region is the lower right one; the depth is predetermined as part of the physical structure of the tool) and having a second crown portion at its deepest part (Tusko, 310, fig. 3a; [0064], as in [0074], aspects from figs 2 and 3 can be incorporated into the embodiment of fig. 4) and third and fourth radiused side regions extending outwardly from the second crown region (Tusko, fig. 3a describes how a slot can be formed with two side surfaces 305 [extend outwardly/to bottom of figure from crown 310 in fig. 4, as described in [0064]); and abrasive material formed on each of the third and fourth radiused side regions (Tusko, filing surface 250 has an abrasive surface as in fig. 2c, [0061]; fig. 3a describes the profiles of filing surface 250, including the first/second side portions 305 as in [0064]) however does not explicitly disclose non-abrasive material forming the second crown portion. As explained in the 103 rejection of claim 9 above, these elements of non-abrasive material forming the second crown portion are obvious over Tusko in view of Ertl. For the same reasons as in the 103 rejection of claim 9 above, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have applied the teachings of Ertl with a non-abrasive crown portion to the second filing region of Tusko. This would have resulted in the claimed limitations.
With respect to claim 12, Tusko, as modified, teaches the limitations of claim 11 above, and further teaches wherein the first and second slotted filing regions are or predetermined width that are different from one another (Tusko; [0074], each of the edges can have different groove sizes to accommodate different fret sizes; [0069-0072] describe the groove sizes/widths [or radiuses, which ultimately determines the width of the groove] and calculation thereof).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tusko (US 20230162710 A1) in view of Ertl (US 20250058423 A1) and further in view of Lin (US 20070178816 A1).
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Ann. fig. 4 (Tusko)
With respect to claim 5, Tusko, as modified, teaches the limitations of claim 4 above, and further teaches wherein the first longitudinal axis and second longitudinal axis are in spaced parallel relation to one another (ann. fig .4, above, Tusko, comparing the top left and lower right edges where the first and second longitudinal axes are).
Alternativity, Lin, in the same filed of endeavor, as related to abrading tools, teaches of placing two opposite abrading edges (corresponding to longitudinal axes), of a parallel arrangement (see edges at 21 and 30, fig. 1, [0025]). MPEP 2144.04 provides that changes in shape are obvious absent evidence that a particular shape is significant. In this instant application, it was not demonstrated how the particular arrangement/shape of having opposite parallel edges are of significance, with the particular angle of the two axes relative to each other being parallel would not have affected the functionality of the filing edge to file a fret. Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Tusko such that the first longitudinal axis and second longitudinal axis are in spaced parallel relation to one another, as an insignificant change in shape. Lin demonstrates how this change would have been done with a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 10/15/2025 have been fully considered but they are not persuasive.
Regarding the drawing objection, the applicant is respectfully reminded that the objection to the drawings will not be held in abeyance.
Regarding the rejection over Ertl (responses pages 6-7), the applicant takes the position, referencing fig. 2 of Ertl, that the nonabrasive crown portion extends past edges of the filing slot, and that the instant claims distinguish over that. The examiner respectfully submits that Ertl, fig. 2 is a detail view of the circled area in fig. 1 (see an annotation of fig. 1 below):
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As shown in ann. fig. 1 above, the crown portion of the filing tool does not extend past the edges of the tool, and extending it past the edge of the tool would not serve the purpose, as in Ertl [0008-0009], to prevent unwanted material removal of the fret and a reduction in height of the fret. This purpose is analogous to that in the instant disclosure (preventing over-filing), and is done through an analogous non-abrasive protruding crown. In the case of having a crown that protrudes past the edge, as argued by the applicant, the examiner submits that this would not reasonably be able to file a fret, in the manner shown by Ertl, in that the abrasive sides of the tool would not be able to effectively reach the fret.
The applicant argued that similar limitations were amended into independent claims 8 and 9, and the examiner believes that they were addressed with respect to Ertl above, and no specific arguments were directed towards the dependent claims and the other applied references.
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 Steven Huang whose telephone number is (571)272-6750. The examiner can normally be reached Monday to Thursday 6:30 am to 2:30 pm, Friday 6:30 am to 11:00 am (Eastern Time).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Posigian can be reached at 313-446-6546. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Steven Huang/Examiner, Art Unit 3723
/DAVID S POSIGIAN/Supervisory Patent Examiner, Art Unit 3723