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 .
Status of the Claims
This office action is in response to Applicant’s remarks filed on 27 January 2026:
Claims 16-30 are pending
Claim 30 is withdrawn
Claims 1-15 are cancelled
Response to Arguments
Applicant’s arguments filed 27 January 2026, with respect to the Drawings have been fully considered and are persuasive.
On Page 2-3 of Applicants Remarks, Applicant argues that Applicant’s Specification describes a "pair of mounting regions" which would indicate a "first" and "second" mounting region. Applicant also notes that Claim 20 recites the mounting regions comprise a “first and second mounting regions”. Applicant appears to be arguing that since there is mention of a “first and second mounting region” for a “pair of mounting regions”, that is sufficient support for labelling with only one element number (i.e., element 22).
Examiner agrees with Applicant’s arguments and therefore withdraws the objections to the drawings.
Applicant's arguments filed 27 January 2026 have been fully considered but they are not persuasive.
On Page 3-7 of Applicant’s Remarks, Applicant appears to be arguing that Potter cannot be modified using Fraser’s disclosure to have the wick as a susceptor element as Fraser’s disclosed design would cause increased heating at the ends of the susceptor element instead of at the central region due to having the end/mounting regions being enlarged in Potter's disclosure. This would be counter to the Applicant's design which has smaller dimensions along the end portions in comparison to the central region to minimize heat loss from the susceptor element to the susceptor holder.
Examiner respectfully disagrees, noting that as previously stated in the Office Action dated 27 October 2025, Potter disclosure notes that while their detailed embodiments show enlarged end portions, the wick design is not limited to just this specific dimensional embodiment. Potter explicitly states that the width can be varied in accordance to whatever dimension that is convenient, giving examples of one where the end-to-end width is the same or wherein the third/central portion has a greater relative width like that in the wick and susceptor design [0060].
Therefore, based on Potter’s disclosure, it would be an obvious engineering design to construct the third/central portion to have a greater width relative to the end portions and still expect an operable wick/susceptor design. Thus, it would be reasonable for one ordinarily skilled in the art to modify Potter’s wick/heating element design into a fully integrated wick/susceptor element design with reduced heat loss at the end portions due to the smaller width relative to the central region’s width.
On Pages 7-11 of Applicant’s Remarks, Applicant argues that Examiner’s rejection is based on improper benefit of hindsight knowledge of Applicant’s claimed invention and therefore lack clear motivation from the prior art.
Examiner respectfully disagrees, noting that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ 2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Here, the prior office action takes into consideration the knowledge available to one of
ordinary skill in the art of susceptor and wick/heating element designs for an aerosol-generating system, as evidenced by the prior art, to conclude that one would be motivated to modify an aerosol-generating system’s wick/heating element susceptor with other wick/heating element susceptor designs for an aerosol-generating system from another prior art.
Moreover, it must be recognized that any judgment on obviousness is in a sense
necessarily a reconstruction based upon hindsight reasoning. However, so long as any judgment
on obviousness takes into account only knowledge which was within the level of ordinary skill
at the time the claimed invention was made, and does not include knowledge gleaned only
from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d
1392, 170 USPQ 209 (CCPA 1971). Here, the prior office action takes into consideration the
knowledge which was available to one of ordinary skill in the art of wick/heating element susceptor designs for aerosol-generating systems, clearly exemplified by the disclosed prior art, at the time of the claimed invention to conclude that the claimed invention would have been obvious.
Where a claimed improvement on a device or apparatus is no more than "the simple
substitution of one known element for another or the mere application of a known technique
to a piece of prior art ready for improvement," the claim is unpatentable under 35 U.S.C.
103(a). Ex Parte Smith, 83 USPQ.2d 1509, 1518-19 (BPAI, 2007) (citing KSR v. Teleflex, 127 S.Ct.
1727, 1740, 82 USPQ2d 1385, 1396 (2007)).
Applicant claims a combination that only unites old elements with no change in the
respective functions of those old elements, and the combination of those elements’ yields
predictable results; absent evidence that the modifications necessary to affect the combination of elements is uniquely challenging or difficult for one of ordinary skill in the art, the claim is unpatentable as obvious under 35 U.S.C. 103(a). Ex Parte Smith, 83 USPQ.2d at 1518-19 (BPAI,
2007) (citing KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1396).
Accordingly, since the applicants have submitted no persuasive evidence that the combination of the above elements is uniquely challenging or difficult for one of ordinary skill in the art, the claims are unpatentable as obvious under 35 U.S.C. 103(a) because they are no more than the predictable use of prior art elements according to their established functions resulting in the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement.
The following rejections are maintained.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 16-29 are rejected under 35 U.S.C. 103 as being unpatentable over Potter et al (Publication No. US20210093005A1) in view of Fraser et al (Publication No. US20180192700A1).
Regarding Claim 16, Potter discloses an aerosol-generating system cartridge (30) comprising:
a liquid reservoir (3) configured to hold a liquid aerosol-forming substrate (i.e., source liquid) (Fig. 1; [0031]);
a susceptor assembly in fluid communication with the liquid reservoir;
the susceptor assembly (i.e., atomizing assembly) comprising a susceptor element (Heater 4) heatable by penetration with a varying magnetic field (Fig. 1; [0032]; disclosed that heater can be an inductive heating element which implies heating through magnetic means; considered equivalent to heating via varying magnetic fields);
Potter does not explicitly disclose the susceptor element further comprising:
a heating region having a length and a width;
and at least one mounting region having a length and a width;
the at least one mounting region being located adjacent a periphery of the heating region;
and a susceptor holder in contact with the at least one mounting region of the susceptor element;
wherein the length of the at least one mounting region is less than the length of the heating region;
and the width of the at least one mounting region is less than the width of the heating region.
Regarding (I-VI), it should be noted that the combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143.A). In this case, Potter further discloses a wick element with a similar structure as the claimed susceptor element; specifically, the wick element comprises:
a heating region (Central part 6a) having a length and a width (see Fig. 3; [0042-0043]; region where the heater wraps around the wick is considered equivalent to a heating region);
and at least one mounting region (End part 6b/62) having a length and a width (see Figs. 3-4, 7; [0042-0043, 0047, 0052]; Portions 6b and 62 are shown to both be end parts; end parts are inserted into cavities which is considered equivalent to mounting);
the at least one mounting region being located adjacent a periphery of the heating region (see Fig. 3; end parts are located adjacent to the peripheral ends of the central/heating region);
and a susceptor holder (Body 50) in contact with the at least one mounting region of the susceptor element (see Figs. 3-4; [0042-0043, 0047, 0052]; end/mounting portions are held and compressed into place within the cavity walls of the body/holder);
wherein the length of the at least one mounting region is less than the length of the heating region (see Fig. 7; [0052]; discloses another wick embodiment similar/equivalent to Figs. 3-4 where the central/heating/third parts 63/6a is illustrated to have a longer length than the end/mounting/first part 61/6b);
and the width of the at least one mounting region is less than the width of the heating region ([0060]; though most embodiments illustrate the end/mounting portions with larger widths than the third/central portion, it is disclosed that other width variations such as a constant end-to-end width, or one where the relative width of the third portion is greater; this implies that the width of the heating portion can be more than the width of the mounting portion).
Though, Potter discloses the wick element as separate from that of the heating element, Potter does note that the heater can be configured to have a wicking function. This would imply that it would be possible to construct the wick as an inductive/magnetic heating element.
In fact, Fraser, directed to an inductive heating (i.e., susceptor) assembly, discloses the assembly comprises a susceptor and drive coil which produces a varying magnetic field to induce heating within the heating element [0042]. The heating element can be designed such that it can act as both a susceptor and a wick to control liquid flow from a reservoir [0059].
Therefore, one ordinarily skilled in the art could modify the wick (6) disclosed by Potter and construct it to double as a wick and susceptor heating element (4/6) as taught by Fraser, and predictably yield a susceptor element with a heating and mounting region that is also capable of acting as a wicking component to draw liquid from a reservoir.
Regarding Claim 17, Potter discloses an aerosol-generating system cartridge (30) comprising:
a liquid reservoir (3) configured to hold a liquid aerosol-forming substrate (i.e., source liquid) (Fig. 1; [0031]);
a susceptor assembly in fluid communication with the liquid reservoir;
the susceptor assembly (i.e., atomizing assembly) comprising a susceptor element (Heater 4) heatable by penetration with a varying magnetic field (Fig. 1; [0032]; disclosed that heater can be an inductive heating element which implies heating through magnetic means; considered equivalent to heating via varying magnetic fields);
Potter does not explicitly disclose the susceptor element further comprising:
a heating region having a length in a longitudinal direction, and a width in a lateral direction perpendicular to the longitudinal direction;
and at least one mounting region having a length in a longitudinal direction, and a width in a lateral direction perpendicular to the longitudinal direction;
the at least one mounting region being located adjacent a periphery of the heating region;
and extending from the heating region in the lateral direction;
and a susceptor holder in contact with the at least one mounting region of the susceptor element;
wherein the length of the at least one mounting region is less than the length of the heating region;
Regarding (I-VI), it should be noted that the combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143.A). In this case, Potter further discloses a wick element with a similar structure as the claimed susceptor element; specifically, the wick element comprises:
a heating region (Central part 6a) having a length in a longitudinal direction, and a width in a lateral direction perpendicular to the longitudinal direction (see annotated Fig. 3; [0042-0043]; region where the heater wraps around the wick is considered equivalent to a heating region);
and at least one mounting region (End part 6b/62) having a length in a longitudinal direction, and a width in a lateral direction perpendicular to the longitudinal direction (see Figs. 3-4, 7; [0042-0043, 0047, 0052]; Portions 6b and 62 are shown to both be end parts; end parts are inserted into cavities which is considered equivalent to mounting);
the at least one mounting region being located adjacent a periphery of the heating region and extending from the heating region in the lateral direction (see annotated Fig. 3; end parts are located adjacent to the peripheral ends of the central/heating region);
and a susceptor holder (Body 50) in contact with the at least one mounting region of the susceptor element (see Figs. 3-4; [0042-0043, 0047, 0052]; end/mounting portions are held and compressed into place within the cavity walls of the body/holder);
wherein the length of the at least one mounting region is less than the length of the heating region (see Fig. 7; [0052]; discloses another wick embodiment similar/equivalent to Figs. 3-4 where the central/heating/third parts 63/6a is illustrated to have a longer length than the end/mounting/first part 61/6b);
Though, Potter discloses the wick element as separate from that of the heating element, Potter does note that the heater can be configured to have a wicking function. This would imply that it would be possible to construct the wick as an inductive/magnetic heating element.
In fact, Fraser, directed to an inductive heating (i.e., susceptor) assembly, discloses the assembly comprises a susceptor and drive coil which produces a varying magnetic field to induce heating within the heating element [0042]. The heating element can be designed such that it can act as both a susceptor and a wick to control liquid flow from a reservoir [0059].
Therefore, one ordinarily skilled in the art could modify the wick (6) disclosed by Potter and construct it to double as a wick and susceptor heating element (4/6) as taught by Fraser, and predictably yield a susceptor element with a heating and mounting region that is also capable of acting as a wicking component to draw liquid from a reservoir.
Regarding Claim 18, Potter discloses an aerosol-generating system cartridge (30) comprising:
a liquid reservoir (3) configured to hold a liquid aerosol-forming substrate (i.e., source liquid) (Fig. 1; [0031]);
a susceptor assembly in fluid communication with the liquid reservoir;
the susceptor assembly (i.e., atomizing assembly) comprising a susceptor element (Heater 4) heatable by penetration with a varying magnetic field (Fig. 1; [0032]; disclosed that heater can be an inductive heating element which implies heating through magnetic means; considered equivalent to heating via varying magnetic fields);
Potter does not explicitly disclose the susceptor element further comprising:
a heating region having a length in a longitudinal direction, and a width in a lateral direction perpendicular to the longitudinal direction;
and at least one mounting region having a length and a width;
the at least one mounting region being located adjacent a periphery of the heating region;
and extending from the heating region in the longitudinal direction;
and a susceptor holder in contact with the at least one mounting region of the susceptor element;
wherein the width of the at least one mounting region is less than the width of the heating region.
Regarding (I-VI), it should be noted that the combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143.A). In this case, Potter further discloses a wick element with a similar structure as the claimed susceptor element; specifically, the wick element comprises:
a heating region (Central part 6a) having a length in a longitudinal direction, and a width in a lateral direction perpendicular to the longitudinal direction (see annotated Fig. 3; [0042-0043]; region where the heater wraps around the wick is considered equivalent to a heating region);
and at least one mounting region (End part 6b/62) having a length in a longitudinal direction, and a width in a lateral direction perpendicular to the longitudinal direction (see Figs. 3-4, 7; [0042-0043, 0047, 0052]; Portions 6b and 62 are shown to both be end parts; end parts are inserted into cavities which is considered equivalent to mounting);
the at least one mounting region being located adjacent a periphery of the heating region and extending from the heating region in the lateral direction (see annotated Fig. 3; end parts are located adjacent to the peripheral ends of the central/heating region);
and a susceptor holder (Body 50) in contact with the at least one mounting region of the susceptor element (see Figs. 3-4; [0042-0043, 0047, 0052]; end/mounting portions are held and compressed into place within the cavity walls of the body/holder);
and the width of the at least one mounting region is less than the width of the heating region (see Fig. 7; [0052]; discloses another wick embodiment similar/equivalent to Figs. 3-4 where the central/heating/third parts 63/6a is illustrated to have a longer lateral width than the end/mounting/first part 61/6b).
Though, Potter discloses the wick element as separate from that of the heating element, Potter does note that the heater can be configured to have a wicking function. This would imply that it would be possible to construct the wick as an inductive/magnetic heating element.
In fact, Fraser, directed to an inductive heating (i.e., susceptor) assembly, discloses the assembly comprises a susceptor and drive coil which produces a varying magnetic field to induce heating within the heating element [0042]. The heating element can be designed such that it can act as both a susceptor and a wick to control liquid flow from a reservoir [0059].
Therefore, one ordinarily skilled in the art could modify the wick (6) disclosed by Potter and construct it to double as a wick and susceptor heating element (4/6) as taught by Fraser, and predictably yield a susceptor element with a heating and mounting region that is also capable of acting as a wicking component to draw liquid from a reservoir.
Regarding Claim 19, Modified Potter further discloses the at least one mounting region (6b/62) comprises a plurality of mounting regions (see Figs. 3, 7; [0042]; discloses more than one mounting region).
Regarding Claim 20, Modified Potter further discloses a first mounting region and a second mounting region, the first mounting region being positioned at one side of the susceptor element and the second mounting region being positioned on a second end opposite the first end (see annotated Fig. 7).
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Modified Potter does not disclose the second mounting region being position at the same side of the susceptor element as the first mounting region. However, it should be noted that the change in form or shape, without any new or unexpected results, is an obvious engineering design (see MPEP § 2144.04.IV.B).
In this regard, while Potter discloses a “dog-bone” shaped wick as shown in Figures 3 and 7, Potter also notes that other shapes and configurations of the wick may be used [0054]. For example, Potter discloses a cross-shaped wick can be formed as shown in Figure 9, with four different mounting regions formed at each four ends of the cross, while also stating that additional ends (i.e., mounting regions) can be added if desired to receive liquid from a reservoir that may have more than two openings in its wall [0055].
Therefore, it would have been an obvious engineering design choice for one ordinarily skilled in the art to change the shape of the wick susceptor element as disclosed by Potter to a different configuration where the first and second mounting region are located on the same side of a susceptor element without any new or unexpected results.
Regarding Claim 21, Modified Potter further does not explicitly disclose the first mounting region is positioned at a first end of the susceptor element (4/6); and the second mounting region is positioned at a second end of the susceptor element, opposite the first end.
However, it should be noted that rearrangement of parts without modifying the operation of the device is held to be an obvious matter of design choice that gives predictable results (see MPEP § 2144.04.VI.C). In this case, Potter explicitly states that different shapes and configurations of the wick may be used to receive liquid from a reservoir that may have more than two openings in its wall [0055].
Thus, it would have been an obvious design choice for one ordinarily skilled in the art to arrange the first and second mounting portions that are on the same side of the susceptor element to be in sequential order such that the first mounting region is positioned at one end of the susceptor element, and the second mounting region at a second end opposite the first end to predictably result in a susceptor element capable of wicking liquid for vaporization.
Regarding Claim 22, Modified Potter further discloses a first mounting region and a second mounting region, the first mounting region being positioned at one side of the susceptor element and the second mounting region being positioned on a second end opposite the first end (see annotated Fig. 7).
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Regarding Claim 23, Modified Potter further discloses that the susceptor wick element (4/6) can be configured to have the first mounting region and the second mounting region positioned at the same position along the length of the heating region (see annotated Fig. 9; [0055]; the labelled first and second mounting region are located on the same vertical position on opposite sides of the susceptor wick element).
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Regarding Claim 24, Modified Potter further discloses the susceptor heating element (4/6) can be configured such that the first mounting region and the second mounting region are positioned centrally along the length of the heating region.
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Regarding Claim 25, Modified Potter further discloses that susceptor wick element can be configured such that the first mounting region is positioned at a first end of the susceptor element (4/6), and the second mounting region is positioned at a second end of the susceptor element, the second end being opposite the first end (see annotated Fig. 9; [0054]; the mounting ends are situated on opposite ends of the susceptor wick at the central point of the cross shape).
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Modified Potter does not explicitly disclose that the first and second mounting regions comprise a pair of each mounting regions. However, it should be noted that the mere duplication of parts, without any new or unexpected results, is within the ambit of one of ordinary skill in the art (see MPEP § 2144.04.VI.B). In this case, Potter specifically states that additional ends (i.e., mounting regions) can be added if desired to receive liquid from a reservoir that may have more than two openings in its wall [0055].
Therefore, it would have been obvious to one ordinarily skilled in the art to duplicate the first and second mounting regions on each side of the susceptor wick element ends to predictably result in a pair of each mounting region to receive liquid from the reservoir (3) with additional openings for guiding liquid.
Regarding Claim 26, Modified Potter further discloses the length of the at least one mounting region is less than the length of the heating region (see Fig. 7; [0052]; discloses another wick embodiment similar/equivalent to Figs. 3-4 where the central/heating/third parts 63/6a is illustrated to have a longer length than the end/mounting/first part 61/6b).
Modified Potter does not explicitly disclose or illustrate the length of at least one mounting region being no more than half the length of the heating region. However, it should be noted that a change in size is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance (see MPEP § 2144.04.IV.A).
In this case, it should be noted that the susceptor wick element’s length is shown to be sized to a dimension that matches with the airflow channel (37) so that the ends (i.e., mounting regions) can reach the liquid reservoir (3) to absorb and atomize liquid (see Fig. 2; [0037-0038]).
Therefore, it would have been within the level of one ordinarily skilled in the art to size the length of the mounting regions/ends to be no more than half the length of the susceptor wick element (4/6) so long as the element as the mounting region is within reach of the liquid reservoir to perform liquid transfer from said reservoir to the susceptor heater for atomization.
Regarding Claim 27, Modified Potter further discloses the cartridge assembly comprises a housing (i.e., outer housing) formed from the liquid reservoir’s (3) outer wall (32) (Fig. 2; [0038]);
wherein the susceptor holder (50) is integrally formed with the reservoir (3) and compresses (i.e., secures) the susceptor assembly (4/6) to the outer housing (i.e., cartridge housing) (Figs. 2, 4-5; [0047-0049]; the susceptor holder is integrally formed with the reservoir via its walls which also forms the outer housing via another set of reservoir walls; implies that securing/compressing the susceptor via the holder also secures said susceptor to the outer housing by virtue of their integral form).
Regarding Claim 28, Modified Potter further discloses the susceptor wick element (4/6) is substantially planar (Fig.3; [0042]; the wick is disclosed to be planar; see Claim 16 rejection for modifying the wick to be a susceptor element).
Regarding Claim 29, Modified Potter further discloses the susceptor holder (50) having at least one sidewall defining an internal passageway (Cavity 48) (see annotated Fig. 4; [0047]; side walls of the reservoir form the body 50 to create a cavity/passageway for inserting the susceptor wick element);
the at least one sidewall defining an opening between the ends of the susceptor holder (50) (see annotated Fig. 4; the sidewalls have an opening on either side for insertion of the susceptor wick element);
wherein the susceptor element (4/6) extends into the internal passageway (48) (see annotated Fig. 4; [0047]; susceptor wick element is shown to extend inside the cavity passageway);
and wherein the at least one mounting region (6b/62) of the susceptor element (4/6) extends into the opening of the sidewall between the ends of the susceptor holder (50) (see annotated Fig. 4; mounting region is the end portions of the susceptor wick element which is shown extending into the sidewall opening).
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Modified Potter does not explicitly disclose the susceptor holder (50) is tubular in shape. However, it should be noted that the change in form or shape, without any new or unexpected results, is an obvious engineering design (see MPEP § 2144.04.IV.B). In this case, Potter discloses that the susceptor holder body (50) can be integrally formed with the liquid reservoir (3) component which is tubular in shape (Figs. 2-4; [0037, 0047]).
Since the reservoir is known to be tubular, and the susceptor holder body can be integrally formed from the reservoir and its walls, it would be an obvious engineering design choice to one ordinarily skilled in the art to have the susceptor holder body be tubular in shape to match the reservoir when integrally forming the two components together without any new or unexpected results.
Conclusion
THIS ACTION IS MADE FINAL. 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 Vu P Pham whose telephone number is (703)756-4515. The examiner can normally be reached M-Th (7:30AM-4:00PM EST).
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/V.P./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755