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 Preliminary Amendment
The preliminary amendment submitted on 09 August 2023 has been entered. After entry of the amendment claims 1-9, 13-17 and 19-24 are currently pending in the application.
Claim Interpretation
Claim 8 recites that “the organic fibers comprise polyvinyl alcohol fibers….and nylon fibers”. The examiner is interpreting this limitation as only requiring at least one of the organic fibers listed in the group.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-3, 7, 14-15, 20-21 and 23 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.
In claims 2-3, it is unclear as to how Portland cement and concrete mixes can be considered to be a filler when these are well-known inorganic binders. Clarification is requested.
In claim 7, 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 7 recites the broad recitation “between 1 and 15” and the claim also recites “preferably between 2 and 9” which is the narrower statement of the range/limitation. The claim is 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 claim.
In claim 14, The term “high” found in the phrase “high energy” is a relative term which renders the claim indefinite. The term “high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
In claim 15, The term “high” found in the phrase “high temperature-resistant” is a relative term which renders the claim indefinite. The term “high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Also it is unclear as to the types of materials encompassed by the phrase “another high temperature-resistant material”. Clarification is requested.
As for claim 16, it is unclear as to what is meant by the claim. As the composition is applied to a surface it would therefore be applied to three dimensional surface. Clarification is requested.
In claim 20, the phrase “the modulus” lacks proper antecedent basis.
In claim 21, the phrase “the stress at break” lacks proper antecedent basis.
In claim 23, The term “high” found in the phrase “high temperatures” is a relative term which renders the claim indefinite. The term “high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The phrase “the cured coating” lacks proper antecedent basis.
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 (or as subject to pre-AIA 35 U.S.C. 102) 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.
Claims 1, 5, 8, 13-14, 16, and 20-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Motoki (US Patent No. 4,802,921 A).
The reference teaches, in Table 2-A, coatings and foamed bodies made from:
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Example 14 is being specifically referred to in the following rejection.
In Example 14: Component A-1 is an aqueous solution of potassium silicate, Component B-1 is alumina cement, Component C-1 is Gibbsite and Component F-2 is polypropylene fiber of a 10 mm length.
The instant claims are met by the reference.
As for claim 1, the potassium silicate and alumina cement meets the binder. The Gibbsite meets the filler material. The polypropylene fiber meets the chopped organic fiber. Note that reference teaches that the fibers are used in the form of chopped strands of monofilaments (see column 5, lines 60-61). The amounts of the components fall within the claimed ranges of components.
As for claim 5, the reference teaches potassium silicate.
As for claim 8, the reference teaches polypropylene fiber.
As for claim 13, the reference teaches the application of the refractory coating to a substrate. While it does not recite that the article is fire resistant after application, as the reference teaches the same composition it is believed to function as a fire resistant article absent evidence showing otherwise. If the composition is physically the same, it must have the same properties. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971) and also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See also MPEP 2112.01 [R-3] I and II.
As for claim 14, as the composition is the same the recited property is believed to be inherent. If the composition is physically the same, it must have the same properties. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971) and also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See also MPEP 2112.01 [R-3] I and II.
As for claim 16, as the composition is applied to a substrate (i.e. a 3 dimensional article) this claim is believed to be met.
As for claims 20-21 and 23, as the composition is the same the recited properties are believed to be inherent. If the composition is physically the same, it must have the same properties. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971) and also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See also MPEP 2112.01 [R-3] I and II.
As for claim 22, this limitation is met as the composition only teaches an inorganic binder, inorganic filler and an organic fiber.
Claims 1-5, 8, 20-21, and 23-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cisneros (US Patent No. 4,664,712 A).
The reference teaches, in the example, a blended mixture composition comprising:
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The instant claims are met by the reference.
As for claim 1, the reference teaches sodium silicate solution that meets the inorganic binder. The expanded perlite, kaolin, mica, and calcium carbonate meets the inorganic filler. The chopped nylon fibers meets the chopped organic fibers. The amounts of the components fall within the claimed ranges. While the reference does not recite that the composition is a coating composition, it is believed that the composition before being subjected to pressing is capable of being used as such as it is a thermally insulating material that comprises the same components. If the composition is physically the same, it must have the same properties. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971) and also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See also MPEP 2112.01 [R-3] I and II. Accordingly the composition of the reference, before being subjected to pressing would meet the instantly claimed coating composition.
As for claim 2, the reference teaches kaolin, mica, and perlite.
As for claim 3, the reference teaches kaolin, mica, and perlite.
As for claim 4, the reference teaches kaolin and mica.
As for claim 5, the references teaches sodium silicate.
As for claim 8, the reference teaches nylon fibers.
As for claim 20-21 and 23, as the composition is the same it would therefore possess the claimed properties absent evidence showing otherwise. If the composition is physically the same, it must have the same properties. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971) and also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See also MPEP 2112.01 [R-3] I and II.
As for claim 24, the reference teaches sodium silicate solution that meets the inorganic binder. The expanded perlite, kaolin, mica, and calcium carbonate meets the inorganic filler. The chopped nylon fibers meets the chopped nylon fibers. The amounts of the components fall within the claimed ranges. While the reference does not recite that the composition is a coating composition, it is believed that the composition before being subjected to pressing is capable of being used as such as it is a thermally insulating material that comprises the same components. If the composition is physically the same, it must have the same properties. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971) and also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See also MPEP 2112.01 [R-3] I and II. Accordingly the composition of the reference, before being subjected to pressing would meet the instantly claimed coating composition.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 103 (or as subject to pre-AIA 35 U.S.C. 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.
Claims 1-3, 5-6, 13-16, 20-21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over China Patent Specification No. CN 112430056 A.
The reference teaches, in the abstract, a preservation coating comprises 5-30 wt.% inorganic fiber, 0.5-5 wt.% organic fiber, 10-30 wt.% low heat-conducting filler, 2-20 wt.% heat-resistant filler, 15-35 wt.% binding agent and 20-40 wt.% water. The inorganic fiber is rock wool fiber, aluminum silicate fiber and/or calcium magnesium silicate fiber. The organic fiber is pulp fiber. The low heat-conducting filler is perlite powder, expanded vermiculite powder, floating beads and/or hollow glass beads and the heat-resistant filler is kaolin and/or Zhangzhou mud.
The binding agent is inorganic binding agent and/or organic binding agent. The inorganic binding agent comprises sodium silicate and/or silica sol and organic binding agent comprises starch and/or cellulose.
The instant claims are obvious over the reference.
As for claim 1, the low heat-conducting filler and heat-resistant filler meets the inorganic filler. The sodium silicate and/or silica sol meets the inorganic binder. The pulp fiber , which according to the specification has a length of 3 to 12 mm) meets the chopped organic fibers as the examples found in the instant specification have lengths which encompass the lengths recited in the reference. The amounts of the inorganic binding agent falls within the claimed range. The amounts of the inorganic filler overlaps the claimed range of amounts and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05. The amount of the organic fiber falls within the claimed range.
As for claim 2, the reference teaches perlite and vermiculite as the heat-conducting filler and kaolin as the heat-resistant filler.
As for claim 3, the reference teaches kaolin, vermiculite and perlite.
As for claim 5, the reference teaches sodium silicate.
As for claim 6, the reference teaches that the binder can also contain silica sol which meets the colloidal silica.
As for claim 13, the reference teaches that the thermal insulation coating can be applied to a surface and as the composition is the same it is believed to function as a fire resistant coating. Note further that the reference teaches that it can be used in high temperature furnaces and therefore it is believed that it can function as a fire resistant coating absent evidence showing otherwise.
As for claim 14 as the composition is the same and it may be used as thermal insulating coating in high temperature furnaces the recited property is believed to be inherent. If the composition is physically the same, it must have the same properties. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971) and also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See also MPEP 2112.01 [R-3] I and II.
As for claim 15, as the composition is applied to a high temperature furnace it meets the “another high temperature-resistant material” recited in the claim.
As for claim 16, as the composition is applied to a furnace (i.e. a 3 dimensional article) this claim is believed to be met.
As for claims 20-21 and 23, as the composition is the same it would therefore possess the claimed properties absent evidence showing otherwise. If the composition is physically the same, it must have the same properties. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971) and also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See also MPEP 2112.01 [R-3] I and II.
Claims 1-4, 8-9, 13, 16, 20-21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over China Patent Specification No. CN 103124704 A.
The reference teaches, on page 4, 8th full paragraph-13th full paragraph, a coating composition which comprises preferably from 10 to 60 by weight, more preferably from 20 to 55% by weight and most preferably from 30 to 50% by weight of a polymer; preferably from 2 to 30% by weight, more preferably from 2 to 20% by weight and most preferably from 3 to 15% by weight of lime; preferably 10 to 80% by weight, more preferably from 20 to 70% by weight and most preferably 40 to 60% by weight of a filler; the content in % by weight is the dry weight of the coating composition, and the sum is 100 weight %. Page 4, 3rd full paragraph, teaches examples of other mineral binders that may be used. Page 4, 4th full paragraph, teaches examples of suitable fillers. Page 5, paragraph 4, teaches; that additives or auxiliary additives can be added. Page 5, paragraph 7, teaches that a preferred additive is fibers. The fibers include polyamide fibers, polyacrylonitrile fibers, polyvinyl alcohol fibers, etc. The fiber is preferably present in an amount of 0 to 3%, more preferably 0.1 to 2% by weight.
The instant claims are obvious over the reference.
As for claim 1, the lime meets the inorganic binder. The filler meets the inorganic filler and the fiber meets the chopped fiber. As for the reference broadly teaches the addition of a fiber it would appear to render obvious all forms of fibers such as a chopped fiber especially in light of the fact the composition of the reference is a coating composition and therefore the use of small size fibers is obvious. As for the amounts, the reference teaches amounts that overlap the claimed ranges of amounts. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05.
As for claim 2, the reference teaches various fillers such as talc or mica, fly ash, and metakaolin.
As for claim 3, the reference teaches various fillers such as clay, talc or mica, fly ash, and metakaolin and further the reference teaches that any desired mixture of the filler can be used. Therefore the use of a mixture of fillers is suggested.
As for claim 4, the reference suggests that mixtures can be used. As the reference teaches clay it would have been obvious to utilize any type of clay such as kaolin without producing any unexpected results absent evidence showing otherwise.
As for claim 8, the reference teaches polyvinyl alcohol fibers.
As for claim 9, the reference teaches polyvinyl alcohol fibers.
As for claim 13, the reference teaches that flame retardants can be added as an auxiliary and therefore it would appear obvious that the application of this coating comprising the flame retardant would result in a fire resistant article absent evidence showing otherwise.
As for claim 16, as the coating is applied to a substrate, this limitation is met.
As for claims 20-21 and 23, as the composition is the same it would therefore possess the claimed properties absent evidence showing otherwise. If the composition is physically the same, it must have the same properties. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971) and also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See also MPEP 2112.01 [R-3] I and II.
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 5-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 6-8, and 12-13 of copending Application No. 18/868,377 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims encompass all of the limitations of the claims of the instant application and therefore are rendered obvious by said claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The copending application suggests the formation of a coating composition comprising an inorganic binder, an inorganic filler and fibers. The fibers of the copending application would render obvious any type of fiber such as the instantly claimed chopped organic fibers. The amounts of the components overlap the claimed range of amounts and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05.
Allowable Subject Matter
Claims 16 and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
ajg March 24, 2026