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 .
Election/Restrictions
Applicant’s election without traverse of an atomizing assembly/device (Invention I, Claims 1-16) in the reply filed on 11/19/2025 is acknowledged.
Claims 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/19/2025.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 11/18/2025 has been considered by the Examiner.
Claim Objections
Claims 11 and 14 are objected to because of the following informalities:
Claim 11 cites three separate limitations, wherein the phrase “and/or” is located between each of them. However, it appears that instead of “and/or”, this should read “or”, as there does not appear to be any way or mechanism (as detailed in the figures or instant specification) that all three limitations could be satisfied at once. For example, it is not clear how the conductive portion would be clamped between each of the first blocking portion and the liquid conducting member, AND the second blocking portion and the liquid conducting member, AND the inserting portions and the inner wall.
Claim 14 has the same issue as above, wherein it appears that each instance of “and/or” should be replaced with “or”, as it is not possible for all of these alternatives to be satisfied in a single embodiment.
Appropriate correction is required.
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 and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12, respectively, of copending Application No. 18/224577. Although the claims at issue are not identical, they are not patentably distinct from each other because
the instant independent claims 1 and 16 are merely broader than copending independent claims 1 and 12. It is clear that all of the elements of claims 1 and 16 are found in claims 1 and 12 of the copending application. The difference lies in the fact that the copending claims include many more elements and is thus much more specific. Thus the invention of the copending claims 1 and 12 are in effect a "species" of the "generic" invention of the instant claims 1 and 16. It has been held that the generic invention is "anticipated” by the “species". See MPEP 804 Section II(B). The only difference lies in the instant claims containing “at least two installation positions” of the electrodes, but as the copending claims claim electrodes connected to the heating assembly, the installation positions would inherently be present on the heating assembly within the broadest reasonable interpretation of the claim. Since claims 1 and 16 are anticipated by copending claims 1 and 12, they are not patentably distinct from the copending claims.
Claims 2-6 are similarly provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of copending Application No. 18/224577, for the same rationale as listed above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-7, 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Butenkemper (WO2021151935).
Regarding claim 1, Butenkemper teaches an atomizing assembly (heater assembly “100” as in Fig. 4 is used in an aerosol-generating system [pg. 1], such that it is clearly an atomizing assembly), comprising:
A liquid conducting member configured for adsorbing an atomizable medium (transport material “102” may be a porous ceramic or similar material, which is arranged to convey a liquid aerosol-forming substrate to the mesh heating element [pg. 23]), and provided with at least two installation positions (the installation positions are considered the left and right portions of “102”, as in Fig. 4);
A heating assembly sewn to the liquid conducting member (the heating element “10” comprises an interwoven mesh comprising first filaments 16 and second filaments 18 [see Figs. 3-4]. The heating element may be sewn directly into the transport material [see Fig. 6], such that the heating element filaments are considered to be “sewn” to the member within the broadest reasonable interpretation of the claim),
Electrodes, including at least two conductive electrodes respectively arranged on the at least two installation positions and electrically connected to the heating assembly to enable the heating assembly to heat and atomize the atomizable medium on the liquid conducting member when electrified (electrodes “104” are formed at the installation positions of the liquid conducting member [see Fig. 4]. “104” each provide electrical power to the heating element “10”, such that during heating vaporized aerosol-forming substrate is released from the heater to generate an aerosol [pg. 22-24]. The electrodes “104” would necessarily be conductive because they are supplying the electrical power to the heater).
Regarding claim 2, Butenkemper teaches an atomizing assembly wherein the heating assembly comprises at least two conductive portions respectively located at the at least two installation positions (the heating assembly comprising the filaments 16 and 18 each extend to the electrode position and thus the installation portions [see Figs. 4-5]. The filaments are made from electrically conductive material [pg. 4]),
And the at least two conductive electrodes respectively fix the at least two conductive portions at the at least two installation positions and are respectively conductive to the at least two conductive portions (the electrodes “104” supply power to the heating element and thus the filaments and are conductive to each other [pg. 22-24], and the electrodes “104” may be bonded to the heating element, such that this would clearly fix the conductive portions in place [pg. 22-23]).
Regarding claim 3, Butenkemper teaches an atomizing assembly wherein the heating assembly comprises a first wire sewn to the liquid conducting member and wherein the first wire is electrically conductive and connected to the at least two conductive electrodes (the first wire may be considered to be the first filaments 16 for example [see Fig. 3]. As above, the filaments which make up the heating assembly may be sewn to the liquid conducting member [see Figs. 4 and 6], and the filament may be made of an electrically conductive material [pg. 4], and as in Figs. 4-5, the heating element ‘10” and thus the first filament 16 would clearly be electrically connected to the electrodes “104”).
Regarding claim 4, Butenkemper teaches an atomizing assembly wherein the first wire forms the at least two conductive portions at the at least two installation positions (as above, the first wire of filaments 16 clearly may extend to the electrodes [Figs. 4-5] and thus may be considered to be the conductive portions wherein electrical connection is made between the heating element and the electrodes).
Regarding claim 5, Butenkemper teaches an atomizing assembly wherein the first wire is made of one or more of a conductive metal allow, conductive metal fiber, conductive carbon fiber, conductive graphite wire (the filaments may be made of a conductive metal, conductive carbon, conductive graphite [pg. 4]).
Regarding claim 6, Butenkemper teaches an atomizing assembly wherein the heating assembly further comprises a second wire sewn to the liquid conductive member (the second wire is considered to be the second filament 18, as in Fig. 3), wherein the first and second wire are sewn to the liquid conducting member from two opposite sides of the liquid conducting member and interwoven with each other (as in Fig. 3, the first and second filaments are clearly interwoven with each other. An in Fig. 6 and Fig. 4, the filaments may clearly be sewn to the liquid conducting member. Regarding the “two opposite sides” of the liquid conducting member, this may be considered to be any of a left/right side as in Fig. 4, and front/back side as in Fig. 4, or an up/down direction as in Fig. 4 or 6, as the filaments are interwoven such that they approach from two opposite sides form each of all directions of the liquid conducting member).
Regarding claim 7, Butenkemper teaches an atomizing assembly wherein the installation positions is a hole or a groove arranged on the liquid conducting member (as in Fig. 4, the installation positions may be considered to be a groove arranged on the liquid conducting member that the electrodes are placed on, within the broadest reasonable interpretation of the claim).
Regarding claim 15, Butenkemper teaches an atomizing assembly wherein the conductive electrodes each comprise an extension portion extending away from the installation positions, and it is arranged along the surface or at an angle (the extension portion extending away form the installation position may be broadly considered to be any position on the surface of the electrode “104”. For example, in Fig. 4, the portion of “104” extending upwards may be considered an extension portion extending away at an angle from the installation position, while a top surface of the electrode may be considered to be extending along the surface of the liquid conducting member, under the broadest reasonable interpretation of the claim).
Regarding claim 16, Butenkemper teaches an atomizing device with the atomizing assembly of claim 1 (see rejection of claim 1 above regarding the atomizing assembly. This assembly may be in an atomizing assembly as shown in Fig. 7).
Claims 1-5, 7-9, 13-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li (US2019/0246692A1).
Regarding claim 1, Li teaches an atomizing assembly (heating assembly “12”, as in Figs. 1-3, which may be applied in an atomizer in an electronic cigarette to heat and atomize e-liquid [0063]), comprising:
A liquid conducting member configured for adsorbing an atomizable medium (body “121” for adsorbing the e-liquid from a liquid storage cavity [0063]),
A heating assembly sewn to the liquid conducting member (the heating assembly, as shown in Fig. 1-3 for example, includes a heater “122” which is sewn into the body “122” [0063]. The heater “122” is embedded in the body, and weaves in and out around the body with flat parts and bending sections, Figs. 1-3, such that it would reasonably be considered that the heater is “sewn” to the liquid conducting member under the broadest reasonable interpretation of the claim),
Electrodes, including at least two conductive electrodes respectively arranged on the at least two installation positions, with the installation position formed on the liquid conducting member, and electrically connected to the heating assembly to enable the heating assembly to heat and atomize the atomizable medium on the liquid conducting member when electrified (Li necessarily has electrode portions located to provide power to power the heater. Li teaches that the heater has two electrical connecting units [Fig. 18, which is a schematic view of the heater of Fig. 1, 0043], units 1223p and 1224p [0089], wherein each of these units are connected to two ends of the heating unit. These electrical connecting units are considered to be the two electrodes arranged at the ends of the heater assembly. These electrodes clearly protrude above and below from the assembly [Fig. 18, 0089], and the electrodes may be integrated with the sheet heating unit [0089]. The electrodes 1223p and 1224p engage with the porous body to “avoid the loosening of the sheet heating unit” [0089], such that the arrangement of the electrodes locks the heating wires into place. The location where these electrodes are located in the porous body “122” are considered to be the two “installation positions” of the liquid conducting member. And these electrodes are clearly electrically connected to the heating assembly so as to heat the heater to cause atomization [0089, 0063]).
Regarding claim 2, Li teaches an atomizing assembly wherein the heating assembly comprises at least two conductive portions respectively located at the at least two installation positions (the heating assembly “122” is made of conductive material [0064], such that the ends of the heating wire “122” as in Figs. 1-3 would clearly be conductive portions. As the electrodes 1223p and 1224p are connected to the heater as in Fig. 18 and are located at ends thereof, the conductive portions would necessarily be located at least partially at the installation positions)
And the at least two conductive electrodes respectively fix the at least two conductive portions at the at least two installation positions and are respectively conductive to the at least two conductive portions (the electrodes 1223p and 1224p engage with the porous body to “avoid the loosening of the sheet heating unit” [0089], such that the electrodes clearly fix the conductive portions in place at the installation positions. And the electrodes would necessarily be conductive so as to supply electricity to the heating wire).
Regarding claim 3, Li teaches an atomizing assembly wherein the heating assembly comprises a first wire sewn to the liquid conducting member and wherein the first wire is electrically conductive and connected to the at least two conductive electrodes (the heater “122” as in Figs. 1-3 may be considered to be a first wire, wherein this is “sewn” to the body “121” as it is embedded therein and weaves in and out through straight and curved portions 1221 and 1222. This material may be conductive [0064], and this would necessarily be connected to the electrodes so as to apply power to the heater [see Fig. 18 wherein the electrodes 122p and 1224p are connected to the heater and at ends thereof).
Regarding claim 4, Li teaches an atomizing assembly wherein the first wire forms the at least two conductive portions at the at least two installation positions (as above, the first wire of the heat clearly extends and is connected to the electrode, and thus may be considered to be the conductive portions wherein electrical connection is made between the heating element and the electrodes).
Regarding claim 5, Li teaches an atomizing assembly wherein the first wire is made of one or more of a conductive metal allow, conductive metal fiber, conductive carbon fiber, conductive graphite wire (the material of the heater may be a conductive metal [0064]).
Regarding claim 7, Li teaches an atomizing assembly wherein the installation positions is a hole or a groove arranged on the liquid conducting member (as in Fig. 18, the installation positions may be considered to be a groove/hole arranged on the body that the electrodes are placed within, as there would clearly be a groove/hole such that the electrodes are installed as shown in Fig. 18., within the broadest reasonable interpretation of the claim).
Regarding claim 8, Li teaches an atomizing assembly wherein each of the two electrodes comprises a first conductive component and a second conductive component (as in Fig. 18, in each of 1223p and 1224p, the top portion may be considered a first conductive component while the bottom may be considered a second conductive component), wherein the first conductive component and the second conductive component are arranged from two sides of the liquid conducting member (as in Fig. 18, the electrode protrudes both above and below the heater/body [0089, Fig. 18], such that the first/second conductive components as defined would clearly be arranged on two sides thereof the liquid conducting member), fix one of the at least two conductive portions and are conductive with the one of the at least two conductive portions (the electrodes 1223p and 1224p are stated to engage with the porous body firmly to keep the sheet heating unit in place [0089], such that the electrode and the portions thereof clearly would “fix” the portions of the heating wire in place. And as these are electrodes which supply electricity to the heating assembly, the electrodes would clearly be conductive with these portions so as to pass the electricity).
Regarding claim 9, Li teaches an atomizing assembly wherein the first and second conductive components are interconnected and fixed to the installation positions (as defined above, the first/second conductive components may be considered top/bottom portions of the protruding electrode from the heating element/porous body. These portions would clearly be interconnected [Fig. 18], and would be fixed to the installation position as they are formed in and integral to the porous body thereof so as to hold the heating assembly in place [0089]).
Regarding claims 13-14, Li teaches an atomizing assembly wherein the conductive electrodes comprise a third inserting portion, and third/fourth blocking portions arranged at two ends of the third inserting portion, with the third inserting portion inserted in one of the installation positions, and the blocking portions abut against two sides of the liquid conducting member (as in Fig. 18 of Li, the electrodes are considered to be 1223p and 1224p as above. The inserting portion may therefore be considered to be the middle portion of 1223p/1224p which is located at the end of the porous body and which extends therethrough, such that the inserting portion would necessarily be inserted in one of the “installation positions” as defined in the rejection of claim 1 above. The third/fourth blocking portions therefore may be considered to be top/bottom portions of 1223p/1224p which protrude from the body/heater, and which would necessarily at least “abut” the sides of the porous body. Wherein “abut” is given its broadest reasonable interpretation, meaning to be next to. And as stated above, the electrodes hold the heating wires in place [0089], such that the electrodes as defined would clearly be “clamping” onto the body/heater so as to keep it in contact with it. The wires would necessarily be clamped down by the electrode structure thereof so as to maintain conductive contact so as to power the heater and to atomize the atomizable liquid. Given the structure as considered above therefore, the condutive portion of the heating wire would necessarily be located at least partially between one of the alternative clamping locations as required in claim 14).
Regarding claim 15, Li teaches an atomizing assembly wherein the conductive electrodes each comprise an extension portion extending away from the installation positions, and it is arranged along the surface or at an angle (the extension portion extending away form the installation position may be considered to be either a top or bottom position of 1223p and 1224p as in Fig. 18. As in Fig. 18, it would clearly be extending away at an angle form the liquid conducting member).
Regarding claim 16, Li teaches an atomizing device with the atomizing assembly of claim 1 (see rejection of claim 1 above regarding the atomizing assembly. This assembly may be in an atomizing device as in Fig. 26-32).
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 6 is rejected under 35 U.S.C. 103 as being unpatentable over Li (US2019/0246692A1) in view of Zhou (US2025/0185713A1).
Regarding claim 6, Li does not explicitly show a second wire sewn to the liquid conducting member from an opposite side of the first wire and interwoven. Zhou, directed to atomizing assemblies [0001], teaches an atomizing assembly comprising an atomizer wicking element 932 and a mesh heating element 931 which is wrapped around the outer peripheral surface of the atomizer wicking element 932 [0148, Fig. 1]. The mesh heating element 931 is formed by weaving or cross-winding one or more resistance wires 9311 (a first and second wire) [0154, Figs. 1, 3-10]. The wires are electrically conductive [0152]. As in Fig. 5, the mesh heating element 931 comprises two left-handed resistance wires 9311a and two right-handed resistance wires 9311b, wherein the spiral upwards and intersect each other. As in Figs. 1 and 5, the different wires are provided on opposite sides of the wicking element and are interwoven with each other.
One of ordinary skill in the art would have found it obvious to modify the heating wires of Li to have multiple wires interwoven on opposite sides as in Zhou. One would have been motivated as Zhou demonstrates that this configuration increases the surface area thereby lowering the resistance of the assembly [0318], and that weaving the wires improves the overall strength, shape retention, and atomization efficiency [0161].
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Li (US2019/0246692A1) in view of Liu (US20160044964A1).
Regarding claim 10, Li clearly teaches electrodes that are formed to pass through a porous body, which protrude from a top and bottom surface of the liquid conducting body, and which supply electricity to the heating wire which extends throughout the body. Li further teaches that the arrangement of the electrode helps to clamp the heater wire into place to stop it from moving/shifting and to maintain contact for electrical purposes [0089]. The wires would necessarily be clamped down by the electrode structure thereof so as to maintain conductive contact so as to power the heater and to atomize the atomizable liquid. Li does not explicitly define the different inserting portion/blocking portion on two separate components which insert and connect together. However, such a structure is just conventional means of “clamping” structures together (within the field of both aerosol generating devices and within the greater field of clamping structures), such that the design cannot be considered inventive. Liu, for example, teaches a conventional atomizer/electronic cigarette. Liu has an electrode “1002” and “1003” which are each respectively formed with a blocking portion and an inserting portion [see Fig. 4], such that the pieces are designed to fit together and be inserted into one another. When the pieces are pressed together, they would abut against opposite sides of the medium formed between them (1003), such that this would be akin to abutting opposite sides of the liquid conducting member. The designs may be such as a “snap fit”, and other detachable connections [0072].
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the electrode of Li to have a two-part design with blocking/inserting portions that are designed to be fit in together. One would have been motivated so as to provide a insertion/mounting method for the electrode to fixedly attach [0134, Fig. 4, 0072]. And as Li already details an electrode which is concerned with connecting the portions with the heating wire for security and electrical connection [0089, 0100], it would have been an obvious modification for the person of ordinary skill in the art to utilize an alternative well known clamping mechanism with an expectation of success if holding the wire in place and ensuring good electrical contact. Additionally, courts have held that rearrangement of parts of the prior art is unpatentable. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) and MPEP 2144.04, VI., part C. And additionally, the courts have ruled that making parts separable would be obvious if the separation were desirable for any reasons, See MPEP 2144.04 V., part C. With this modification, Li would have an electrode which contained separate conductive components each with an inserting and blocking portion which may be inserted and connected to each other, so as to abut the two sides of the liquid conducting member (porous body).
Regarding claim 11, modified Li makes obvious the atomizing assembly wherein conductive portion is clamped between the first/second blocking portion and the liquid member or the inserting portions and an inner wall of the installation portions (as in the rejection of claim 10 above, it would have been obvious to modify the electrode to any other known clamping electrode structure, including the blocking/inserting shapes as in Liu. Given the Li’s electrode clamps and makes contact with the heating wire so as to keep it in place and to provide the electrical connection to it [0089], the conductive portions would necessarily be located between the blocking portion and the liquid conductive member. In the case where the heater is at a top surface of the liquid conducting member (as in Fig. 3 of Liu), the conductive portion would therefore be located between a first blocking portion and the liquid conducting member, for example).
Regarding claim 12, modified Li makes obvious the atomizing assembly wherein the first and second inserting portions are connected in a sleeved, inserted, or snap-fit manner (as in Fig. 4 of Liu for example, the electrodes with these shapes may be described to be in either of a sleeved/inserted/or snap-fit manner within the broadest reasonable interpretation of the terms. And additionally, Liu suggests that snap-fit connections, or any other connections may be utilized [0072]).
Conclusion
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/T.F.S./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749