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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/23/2025 has been entered.
Claim Status
As of the Final Office Action mailed 5/6/2025, claims 32-37 were pending.
In Applicant's Response filed on 9/23/2025, claims 32-33 and 35 were amended and claims 38 were newly added.
As such, claims 32-38 are pending and have been examined herein.
Withdrawn Objections/Rejections
The rejection of record of claims 32-37 under 35 USC § 103 as being unpatentable over Edinger et al (US 20080226595, 12 Feb 2008) in view of Ichim et al (US 20170296588 A1, 18 April 2017) have been withdrawn in view of Applicant’s amendments to claim 32.
New Grounds of Rejections Necessitated by Amendments
Claim Objections
Claim 32 is objected to because of the following informalities:
Claim 32 recites “CD73+ positive” which is redundant. The examiner suggests removing either the “+” or “positive” from the claim.
Appropriate correction is required.
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 32-38 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 32 recites the broad recitation of “cultured perinatal tissue”, and the claim also recites umbilical cord tissue which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Claims 33-38 are included in this rejection for being dependent on indefinite claim 32.
Claim Rejections - 35 USC § 103
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 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) 32-33 and 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hu et al (Exp Ther Med, 20 Sep 2016; 12(5):2983-2989) in view of Patel (WO 2013102219 A1, 31 Dec 2012; Published 4 July 2013) and Lavrentieva et al (Cell Comm and Signal ing 2019; 8:18) as evidenced by Kang et al (Mater Today Bio. 2024 Sep 19;29:101258).
Hu teaches a clinical trial to investigate the efficacy and safety of umbilical cord mesenchymal stem cell treatment for moderate to severe ulcerative colitis (abstract). Thirty-four patients with UC were included in group I and treated with MSC infusion in addition to the base treatment (abstract) (“A method of treating colitis, comprising: identifying a mammal suffering from colitis; obtaining a cultured population of mesenchymal stem cells from umbilical cord tissue comprising: extracting umbilical cord tissue from a donor . . . and intravenously injecting said purified MSC cells into the mammal suffering from colitis” as in instant claim 32 in-part). MSCs were cultured and expanded in a laminar flow laboratory for four passages to prepare stable final cell products (Materials and Methods, para 4). These cells highly expressed CD90 (89.37%), CD105 (82.26%), CD73 (90.63%) and did not express CD34, CD45, and HLA-D (same para) (“extracting CD73+ cells from the . . . perinatal tissue and expanding said cells; purifying a population of cells from said expanded cells that is at least 90% MSCs based on the following surface markers: CD90+, C105+, CD73+ . . . and . . . CD34-, CD45-” as in instant claim 32 in-part). Three months after therapy, the ratio of clinical responses (≥3 point decrease in the Mayo score) or remission (Mayo score 0 or 1) was significantly higher in group I compared with control group II (85.3 vs. 15.7%) (“Change in Mayo scores” para 1; Fig. 3A). MSCs can reduce colonic inflammation by downregulating the production of inflammatory mediators by mucosal immune cells, and by increasing the levels of the anti-inflammatory cytokines (Discussion, para 4). In UC, the immunologic response is reflected by the imbalance in Th1 and Th2 cells, and thus the cytokine production at different stages of disease (same para). Intravenous treatment with MSCs could increase the levels of the anti-inflammatory cytokines IL-10 and IL-4, and decrease the levels of the pro-inflammatory cytokine IL-6 (same para).
The difference between Hu and the instant invention is that it does not teach culturing the umbilical cord tissue in hypoxic conditions of less than 5% oxygen for at least 24 hours or that the cells are also CD44+, CD29+, CD56+, CD117-, and CD14- (instant claim 32 in-part).
Patel teaches an isolated stem cell obtained from mammalian umbilical cord tissue that is capable of self-renewal and expansion, wherein the cell expresses CD73, CD90, CD29, CD44, CD105 and does not express CD45, CD34, CD14, and CD117 (i.e., mesenchymal stem cell) (see claim 1 of Patel) (“based on the following surface markers: CD90+, CD105+, CD73+, CD44+, CD29+, and CD117-, CD34-, CD45- and CD 14-” as in instant claim 32 in-part). The cell is isolated from umbilical cord tissue by dissecting the subepithelial layer from the umbilical cord, placing the dissected layer in contact with a substrate, and culturing the layer on the substrate (see claim 16 of Patel). The isolated cell is expanded into a cell culture (see claim 13 of Patel). The culture conditions can vary depending on the desired results (Summary para 7). The subepithelial layer is cultured in a hypoxic environment for a period of time sufficient to establish primary culture (e.g., 3-7 days in some cases) (see claim 25 of Patel) (“culturing said umbilical cord tissue in hypoxic conditions . . . for at least 24 hours” as in instant claim 32 in-part). The isolated cells can then be introduced into an individual having a medical condition such as autoimmune diseases (Summary, para 8).
Lavrentieva teaches the effects of hypoxic culture conditions on umbilical cord MSCs (title). The reference teaches preculturing MSCs under hypoxic conditions before transplantation improves their tissue regenerative potential (p. 1, bottom of second column). They tested the effects of hypoxic conditions (1.5%, 2.5% and 5% O2) on a 72 hour cultivation of 4 different individual UC-derived MSC populations to examine the proliferative and metabolic activities in these human stem cells (p. 2, col 1, para 2) (“hypoxic conditions of less than 5% oxygen” as in instant claim 32 in-part; “wherein the hypoxic conditions are between 2% to 4% oxygen” as in instant claim 33; “wherein the hypoxic conditions are between 1% and 4.8%” as in instant claim 38). Cell growth analysis revealed a marked increase in cell proliferation at 2.5% O2 as compared to normoxic 21% O2 (Fig. 3A). The hypoxic conditions were evaluated by HIF-1a expression and Western blot analysis revealed significant protein levels of HIF-1a in the hypoxic MSC cultures at 2.5% and 5% O2 in contrast to little if any detectable HIF-1a protein in the normoxic (21% O2) MSC population (Fig. 3B). A markedly decreased cell damage or necrosis in all MSC populations became detectable under hypoxic conditions as evaluated by a significantly reduced LDH release in two of the four MSC donors (Fig. 4B).
Finally, Kang evidences that umbilical cord mesenchymal stem cells express CD56 (abstract). Umbilical cords were washed three times with phosphate-buffered saline (PBS) containing 1 % penicillin-streptomycin (CD56+ UCSC isolation, para 1). The reference teaches that mesenchymal stem cells in umbilical cord are heterogeneous and that endothelial cells, red blood cells, and immune cells were eliminated by identifying negative expressions of CD31, CD235, and CD45 respectively. Furthermore, positive expressions of CD73 and CD29 were screened to identify MSCs. Finally, our target cell subpopulation was identified as CD56+ UCSCs (Fig. 1A). The obtained CD56+ UCSCs exhibited a long spindle shape and were cultured to the P3 generation for adipogenic, chondrogenic, and osteogenic differentiation (Fig. 1B). Flow analysis results demonstrated that cells exhibited negative expression of hematopoietic markers including CD34, CD11b, and CD45, while positive expression of MSCs markers such as CD29 and CD73 (Fig. 1C). Notably, the positive rate of CD56 was shown to be more than 90%, indicating that the stable characteristics of these isolated CD56+UCSCs were maintained during subsequent culture (Isolation and characterization of CD56+ UCSCs, para 1). This evidences that umbilical cord mesenchymal stem cells that also express CD56 can be isolated (“CD56+” as in instant claim 32 in-part). Please note that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (see MPEP 2112.01(I)).
Therefore, it would have been obvious prior to the effective filing date of the instantly claimed invention to administer umbilical cord mesenchymal stem cells to treat ulcerative colitis as taught by Hu et al, where the umbilical cord tissue is cultured in hypoxic conditions as taught by Patel, to arrive at the instantly claimed invention. Patel shows that umbilical cord tissue can be cultured under hypoxic conditions before isolating mesenchymal stem cells, a known technique applicable to the umbilical cord mesenchymal stem cells obtained and utilized in Hu. One of ordinary skill would have been motivated to modify the method of Hu to include culturing the umbilical cord tissue in hypoxic conditions as taught by Patel with a reasonable expectation of advantageously obtaining umbilical cord mesenchymal stem cells that are able to be further expanded in culture and used to treat autoimmune disorders as taught by the prior art.
It also would have been obvious prior to the effective filing date of the instantly claimed invention to obtain UCMSCs and administer them to treat ulcerative colitis as taught by Hu and Patel in combination, where the hypoxic conditions are less than 5% O2 as taught by Lavrentieva, to arrive at the instantly claimed invention. Lavrentieva shows the positive effects of culturing umbilical cord MSCs in sub-5% oxygen. One of ordinary skill would have been motivated to modify the method of Hu and Patel in combination to include 1.5% or 2.5% oxygen conditions as taught by Lavrentieva with a reasonable expectation of advantageously improving the cells’ tissue regenerative potential, decreased cell damage or necrosis, and significantly increase HIF-1a expression as taught by the prior art.
Response to Arguments
Applicant’s arguments and the Declaration by Dr. Patel (“Patel Declaration”; specifically Appendix B) with respect to the previous rejections of claim(s) 32-38 have been fully considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The response to arguments will focus on Applicant’s arguments (and Appendix A of the Patel Declaration) of unexpected results.
On p. 5-10 of Remarks, Applicant argues that the use of less than 5% oxygen for at least 24 hours, as well as the claimed cell marker profile, lead to unexpected results. Specifically, Applicant argues that 3% oxygen for 24 hours resulted in approx. 97% MSC marker expression and approx. 1% (minimal) hematopoietic marker expression. Applicant further argues that the hypoxic cells exhibited significantly elevated secretion levels of immunomodulatory cytokines IL-10, IL-35, and HLA-G, which purportedly emphasizes their superior functional immunomodulatory capacity. Applicant also argues that hypoxic cells demonstrated greater MSC marker expression and greater T-cell immunosuppressive effects greater than cells under normoxia. Finally, Applicant argues that hypoxic conditions resulted in rapid and strong HIF-1a,, sustained HIF-2a, higher VEGF-a and CXCL12 secretion, and greater CXCR4-dependent migration.
In response, the examiner disagrees. As per MPEP § 716.02, [a]ny differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicant’s arguments and Declaration regarding the technical solution the instant claims purportedly improve upon are appreciated. However, the claimed method step requires purifying and selecting for cells that express the markers in question. The prior art already recognizes that less than 3% hypoxic conditions can be utilized for more than 24 hours in umbilical cord mesenchymal stem cell culture (see rejection above). The prior art references above teaches that these markers are inherently seen in mesenchymal stem cells derived from umbilical cord tissue and it also teaches that you can successfully culture the tissue and select for cells having a particular expression profile. The resulting marker expression after hypoxic conditions would be a result of the active selection steps being claimed. Even if, arguendo, the hypoxic conditions are the reason for the improved marker expression profile, the prior art recognized before the effective filing date of the instantly claimed invention that hypoxic conditions improve MSC marker expression compared to normoxia. Solely to rebut Applicant’s argument, the examiner directs Applicant’s attention to Kwon et al (Tissue Eng Regen Med. 2017 Jul 31; 14(5):595-604). Specifically, the reference teaches that mesenchymal stem cells cultured under 5% hypoxic conditions for 5 days expressed higher levels of Oct4, C-Myc, Nanog, Nestin and HIF-1α (abstract). In immunophenotype analysis, MSCs cultured under hypoxia maintained higher level of the MSC surface markers, and lower hematopoietic markers. Senescence was inhibited under hypoxia. Hypoxia enhances osteogenic differentiation efficiency compared to normoxia. Hypoxia showed enhanced cell proliferation rate, retention of stem cell properties, inhibition of senescence, and increased differentiation ability compared to normoxia. In surface immunophenotype analysis, CD44, CD73, CD90 and CD105 were chosen as MSC positive markers, and CD31, CD34, CD45, and HLA-DR were chosen as negative markers (Comparison of stem cell markers and senescence, para 1). MSC positive markers on various MSCs were shown more than 90%, and MSC negative markers were shown less than 1.5%. All of the cells revealed enhanced expression of positive markers and reduced expression of negative markers in hypoxic condition (same para).
Regarding the argument that hypoxia significantly elevated secretion levels of immunomodulatory cytokines IL-10, IL-35, and HLA-G and enhances suppression of T-cells, the examiner directs Applicant to Kim et al (Leukemia. 2018 Dec; 32(12):2672-2684; cited solely to rebut Applicant’s arguments), which states that MSCs primed with hypoxia exhibit enhanced stemness and immunomodulatory functions for treating allogeneic conflicts (abstract). Compared with naïve cultured human umbilical cord blood-derived MSCs, SHC-MSCs were resistant to passage-dependent senescence mediated via the monocyte chemoattractant protein-1 and p53/p21 cascade and secreted large amounts of pro-angiogenic and immunomodulatory factors, resulting in suppression of T-cell proliferation (same para). MSCs inhibit the activation, proliferation, and function of immune cells, including T-cells, B-cells, natural killer cells, and antigen-presenting cells (Introduction, para 2). MSCs induce immunosuppression via cell contact-dependent mechanisms involving B7-H1 and soluble factors such as interleukin (IL)-10, transforming growth factor-β, nitric oxide, prostaglandin E2 (PGE2), and indoleamine 2,3-dioxygenase (same para). Exposure to even mild hypoxia (∼5% O2) during the isolation and ex vivo expansion of human UCB-derived MSCs (UCB-MSCs) enriches highly primitive SCs and improves the therapeutic efficacy and enhances the proliferation and differentiation capacities (Introduction para 6).
Finally, regarding Applicant’s argument related to HIF-1a,, sustained HIF-2a, higher VEGF-a and CXCL12 secretion, and greater CXCR4-dependent migration, the examiner notes that theses differences are the result of having comparing low O2 (3%) versus 8% O2 and 21% O2. The 8% and 21% O2 of the Appendix are outside of the scope of the claimed invention and the 5% taught by the previously cited references. Furthermore, newly cited reference Lavrentieva shows that 1.5% and 2.5% O2 significantly increased at least HIF-1a expression compared to normoxia (21%). Applicant must provide empirical evidence that the purported unexpected results would not occur at less than 3% O2 in light of the provided references.
"A greater than expected result is an evidentiary factor pertinent to the legal conclusion of obviousness ... of the claims at issue." In re Corkill, 771 F.2d 1496, 226 USPQ 1005 (Fed. Cir. 1985). However, a greater than additive effect is not necessarily sufficient to overcome a prima facie case of obviousness because such an effect can either be expected or unexpected. Applicants must further show that the results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage. Ex parte The NutraSweet Co., 19 USPQ2d 1586 (Bd. Pat. App. & Inter. 1991) (see MPEP § 716.02(a)). Thus, neither the arguments posited nor the Patel Declaration provide any evidence that the instantly claimed method provides any benefits/unexpected results not previously contemplated by the prior art. The combination of the applied references render the claims prima facie obvious in light of their disclosures.
Claim(s) 34 and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hu et al (Exp Ther Med, 20 Sep 2016; 12(5):2983-2989) in view of Patel (WO 2013102219 A1, 31 Dec 2012; Published 4 July 2013) and Lavrentieva et al (Cell Comm and Signal ing 2019; 8:18) as applied to claims 32-33 and 38 above, and further in view of Herzberg et al (US 11090339 B2, 5 Aug 2019; Published 17 Aug 2021).
The teachings of Hu, Patel, and Lavrentieva in combination were recited in the above 35 U.S.C. 103 rejection as applied to claim 32 of which claim 34 and 37 depend. The teachings will not be repeated here.
The difference between the combined teachings and the invention as instantly claimed is that they do not teach that the cells expressing CD73 are selected using magnetic activated cell sorting.
Herzberg teaches isolated placental stem cells (title). The reference teaches that the cells can be isolated from umbilical cord (“Pharmaceutical Compositions” para 1). The number and type of cells collected can be monitored, for example, by measuring changes in morphology and cell surface markers using standard cell detection techniques such as flow cytometry, cell sorting, immunocytochemistry (e.g., staining with tissue specific or cell-marker specific antibodies) fluorescence activated cell sorting (FACS), magnetic activated cell sorting (MACS), by examination of the morphology of cells using light or confocal microscopy, and/or by measuring changes in gene expression using techniques well known in the art, such as PCR and gene expression profiling (section 5.5.5, para 6). The cells can be sorted on the basis of expression, or lack thereof, of the markers CD34, CD38, CD44, CD45, CD73, CD105, OCT-4 and/or HLA-G, or any of the other markers (section 5.5.5, para 8) (“wherein the cells expressing CD73 are selected using magnetic activated cell sorting” as in instant claim 34). Furthermore, the reference teaches that the stem cells can be cryopreserved and stored in liquid nitrogen for later use in a form that is easily administrable to an individual (section 5.8.1.1, para 1). This shows that mesenchymal stem cells obtained from umbilical cord can be cryopreserved before administration and reads on “wherein the MSCs are cryopreserved prior to administration” as in instant claim 37.
Therefore, it would have been obvious prior to the effective filing date of the instantly claimed invention to treat ulcerative colitis using umbilical cord mesenchymal stem cells as taught by Hu, Patel, and Lavrentieva in combination, where MACS is used to sort the CD73 cells as taught by Herzberg, to arrive at the instantly claimed invention. As Herzberg shows umbilical cord cells can be selected using MACS, one of ordinary skill would have been motivated to modify the method of Hu, Patel, and Lavrentieva in combination with a reasonable expectation because cell sorting based on expression of markers such as CD73 is a standard technique well known in the art to select for cells.
Claim(s) 35-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hu et al (Exp Ther Med, 20 Sep 2016; 12(5):2983-2989) in view of Patel (WO 2013102219 A1, 31 Dec 2012; Published 4 July 2013) and Lavrentieva et al (Cell Comm and Signal ing 2019; 8:18) as applied to claims 32-33 and 38 above, and further in view of Goyal et al (Bio Protoc. 2018 Feb 20; 8(4):e2735).
The teachings of Hu, Patel, and Lavrentieva in combination were recited in the above 35 U.S.C. 103 rejection as applied to claim 32 of which claim 34 and 37 depend. The teachings will not be repeated here.
The difference between the combined teachings and the invention as instantly claimed is that they do not teach that antibiotics such as penicillin and streptomycin are added to the culture (instant claims 35 and 36).
Goyal teaches a simple protocol for isolation of MSCs from human umbilical cord that is reproducible and cost effective (abstract). To isolate mesenchymal stem cells from Wharton’s jelly of human umbilical cord, collect fresh human umbilical cord after full-term birth (normal or cesarean) with informed consent (Figure 1) and transport it to the lab in an empty sterile 50 ml centrifuge tube on ice. Rinse off the blood and blood clots using normal saline. Cut the cord into 2-3 cm pieces and incubate the pieces in normal saline containing 1x antibiotic-antimycotic (100 U/ml of penicillin, 100 μg/ml of streptomycin and 250 ng/ml of amphotericin B) at 4 °C for about 2 h (“wherein antibiotics are added to the cultured umbilical cord tissue” as in instant claim 35; “wherein the antibiotics are selected from the group consisting of penicillin and streptomycin” as in instant claim 36). The isolated WJ-MSCs expressed MSC-characteristic surface antigens and were positive for the expression of CD73, CD90 and CD105 and negative for CD34 (Background, para 2).
Therefore, it would have been obvious prior to the effective filing date of the instantly claimed invention to treat ulcerative colitis using umbilical cord mesenchymal stem cells as taught by Hu, Patel, and Lavrentieva in combination, where the culture contains penicillin and streptomycin as taught by Goyal, to arrive at the instantly claimed invention. As Goyal shows that umbilical cord tissue can be cultured in penicillin and streptomycin, one of ordinary skill would have been motivated to modify the method of Hu, Patel, and Lavrentieva in combination to include penicillin and streptomycin with a reasonable expectation of advantageously isolation of MSCs from human umbilical cord that is reproducible and cost effective as taught by the prior art.
Conclusion
No claim is allowed.
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 GILLIAN C REGLAS whose telephone number is (571)270-0320. The examiner can normally be reached M-F 7-3.
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/G.R./Examiner, Art Unit 1632
/KARA D JOHNSON/Primary Examiner, Art Unit 1632