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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, limitations, “preparing an overlapped member by making the first starting material overlap a partial region of the one or more second starting materials” and “the overlapping member having a multi-layer region, in which the one or more second stating materials overlap each other”, in claim 5 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1 and 5 are objected to because of the following informalities.
Regarding claim 1, - - the laser welding is continuously applied to the multi-layer region and the single layer region - -
Regarding claim 5, - - continuously applying the laser welding to the multi-layer region - -
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 5 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 5, i) recitation “…, the overlapped member having a single layer region, in which only the first starting material is present, and a multi-layer region, in which the one or more second starting materials overlap each other” requires the multi-layer region of the overlapped member comprising one or more second starting materials overlap each other.
However, according to the specification, at [0020, 0030, and 0030] and Figs. 1 and 3-7, an overlapped member (100, Fig. 1) is prepared by overlapping a first starting material (110) and a second starting material (120), such that the overlapped member comprising a single layer region, in which only the first starting material is present, and a multi-lay region, in which the first starting material and the second starting materials overlap each other, NOT second starting materials overlap each other as claimed.
Therefore, claim 5 is rejected as new matter.
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.
Claim 5 is 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.
Regarding claim 5, recitation “preparing an overlapped member by making the first starting material or the one or more second starting materials overlap a partial region of one of the starting materials, the overlapped member having a single layer region, in which only the first starting material is present, and a multi-layer region, in which the one or more second starting materials overlap each other” is indefinite because:
i) term “the starting materials” lack antecedent basis and it is unclear whether term “one of the starting materials” a) refers to either the previously claimed first starting material or the previously claimed one or more second starting materials, or b) different starting materials in addition to the previously claimed first starting material and the previously claimed one or more second starting materials;
ii) if term “one of the starting materials” refers to either the previously claimed first starting material or the previously claimed one or more second starting material”, it is further unclear the claimed recitation requires which one of the first starting material or the one or more second stating materials overlap a partial region of which one of the first starting material or the one or more second starting materials (may raises 112a issue because the specification discloses the second starting material overlaps a partial region of the first starting material);
iii) as explained in 112a new matter rejection above, claim limitation “a multi-layer region, in which the one or more second starting materials overlap each other” is conflicting with the disclosure, and thus, it is unclear whether said limitation requires the claimed multi-layer region has a) a plurality of second starting materials overlap each other, or b) the previously claimed one or more second starting materials (just one) overlaps with the previously claimed first starting material as disclosed.
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.
Claims 1, 5-6, and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by OIKAWA JP2011162009A (provided by IDS).
Regarding claim 1, OIKAWA teaches the invention as claimed: A blank (10, Fig. 2b) in which a first starting material (20, Fig. 2b) and one or more starting materials (30, Fig. 2b) overlap each other are joined with each other by laser welding (W1 and Z1, Fig. 2b and [0029 and 0031]), wherein
the blank has a single layer region (where Z1 is), in which only the first starting material is present (only has 20, see Fig. 2b), and a multi-layer region (where W1 is), in which the first starting material (20) and the one or more of the starting materials (30) overlap each other (see Fig. 2b),
laser welding (W1 and Z1) is continuously applied to the multi-layer region and the single layer region (see Fig. 2b and [0029 and 0031]), and
one end (the magnified section of S in annotated Fig. 2b) of a laser weld zone (S and T, Fig. 2b) is located at an edge (annotated Fig. 2b; according to Merriam-webster Dictionary, “edge” means the narrow part adjacent to a border) of the single layer region (where Z1 is) of the blank (10), and the one end (the magnified section of S in annotated Fig. 2b) forms a concave-shaped welding end portion having a concave shape (see annotated Fig. 2b) when the blank (10) is viewed from an end face (interpreted as an end surface, which is the surface facing outward from the paper, see annotated Fig. 2b) of the single layer region (where Z1 is).
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Regarding claim 8, OIKAWA further teaches wherein each of the first starting material and the one or more second starting materials (both of 20 and 30 in Fig. 2b) is a steel material ([0027]).
Regarding claim 5, OIKAWA teaches the invention as claimed: A method for producing a blank (10, Fig. 2b) in which a first starting material (20, Fig. 2b) and one or more second starting materials (30, Fig. 2b) overlap each other are joined with each other by laser welding (W1 and Z1, Fig. 2b and [0029 and 0031]), the method comprising:
preparing an overlapped member (annotated Fig. 2b) by making the one or more second starting materials (30) overlap a partial region of one of the starting materials (interpreted as the first starting material 20, see Fig. 2b), the overlapped member (annotated Fig. 2b) having a single layer region (where Z1 is), in which only the first starting material is present (only has 20, see Fig. 2b), and a multi-layer region (where W1 is), in which the one or more second starting materials overlap each other (interpreted as the first starting material 20 and the second starting material 30 overlap each other, see Fig. 2b); and
continuously applying laser welding (W1 and Z1) to the multi-layer region and the single layer region of the overlapped member (see Fig. 2b and [0029 and 0031]) such that one end (the magnified section of S in annotated Fig. 2b) of a laser weld zone (S and T, Fig. 2b) of the blank (10) is located at an edge (annotated Fig. 2b; according to Merriam-webster Dictionary, “edge” means the narrow part adjacent to a border) of the single layer region (where Z1 is) of the blank (10), and the one end (S the magnified section of S in annotated Fig. 2b forms a concave-shaped welding end portion having a concave shape (see annotated Fig. 2b) when the blank (10) is viewed from an end face (interpreted as an end surface, which is the surface facing outward from the paper, see annotated Fig. 2b) of the single layer region (where Z1 is).
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Regarding claim 6, OIKAWA teaches the invention as claimed: A member (10, Fig. 2b) including a first starting material (20, Fig. 2b) and one or more starting materials (30, Fig. 2b) overlap each other, the member (10, Fig. 2b) being shaped into a predetermined shape (as shown in Fig. 2b), wherein
the member has a single layer region (where Z1 is), in which only the first starting material is present (only has 20, see Fig. 2b), and a multi-layer region (where W1 is), in which the first starting material (20) and the one or more of the starting materials (30) overlap each other (see Fig. 2b),
the multi-layer region and the single layer region are joined with each other continuously by laser welding (W1 and Z1; see Fig. 2b and [0029 and 0031]), and
one end (the magnified section of S in annotated Fig. 2b in claim 1) of a laser weld zone (S and T, Fig. 2b) is located at an edge (annotated Fig. 2b in claim 1; according to Merriam-webster Dictionary, “edge” means the narrow part adjacent to a border) of the single layer region (where Z1 is) of the member (10), and the one end (the magnified section of S in annotated Fig. 2b in claim 1) forms a concave-shaped welding end portion having a concave shape (see annotated Fig. 2b in claim 1) when the member (10) is viewed from an end face (interpreted as an end surface, which is the surface facing outward from the paper, see annotated Fig. 2b) of the single layer region (where Z1 is).
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.
Claims 1-2, 6-7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Komaki 20070214998 in view of OIKAWA JP2011162009A (provided by IDS).
Regarding claim 1, Komaki teaches the invention as claimed: A blank (Fig. 24) in which a first starting material (306) and one or more second starting materials (307, Fig. 24) overlap each other are joined with each other by laser welding (per [0178], 307 and 306 are joined by welding indicated as line U, see Fig. 21), wherein
the blank has a single layer region (per [0195], during the process of forming the blank as shown in Fig. 24, 307 is firstly welded to 306 and 314 is secondly welded to 307 and 306, and thus, before 314 is welded to 307 and 306, the edge portion of 306 where 314b would be placed later is a single layer, also see annotated Fig. 24a), in which only the first starting materials is present (306, see annotated Fig. 24a), and a multi-layer region (where the leg of 307 overlaps with 306, see annotated Fig. 24a), in which the first starting material (306) and the one or more second starting materials (307) overlap each other (see annotated Fig. 24a),
laser welding (indicated by line U, see Fig. 21 and [0178]) is continuously applied to the multi-layer region (where the leg of 307 overlaps with 306, see Fig. 21 and annotated Fig. 24a).
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Komaki does not teach laser welding is continuously applied to the multi-layer region and the single layer region, and one end of a laser weld zone is located at an edge of the single layer region of the blank, and the one end forms a concave-shaped welding end portion having a concave shape when the blank is viewed from an end face of the single layer region.
However, OIKAWA teaches laser welding (W1 and Z1) is continuously applied to the multi-layer region (where W1 is) and the single layer region (where Z1 is, see Fig. 2b and 3-4 and [0029 and 0031]), and one end (the magnified section of S in annotated Fig. 2b) of a laser weld zone (S and T, Fig. 2b) is located at an edge (annotated Fig. 2b; according to Merriam-webster Dictionary, “edge” means the narrow part adjacent to a border) of the single layer region (where Z1 is) of the blank (10), and the one end (the magnified section of S in annotated Fig. 2b) forms a concave-shaped welding end portion having a concave shape (see annotated Fig. 2b) when the blank (10) is viewed from an end face (interpreted as an end surface, which is the surface facing outward from the paper, see annotated Fig. 2b) of the single layer region (where Z1 is).
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It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify Komaki with OIKAWA’s continuously applying laser welding to the multi-layer region and the single layer region, such that
one end of a laser weld zone is located at an edge of the single layer region of the blank, and the one end forms a concave-shaped welding end portion having a concave shape when the blank is viewed from an end face of the single layer region (the modification is instead of only continuously applying laser welding to Komaki’s multi-layer region, continuously applying laser welding to Komaki’s multi-layer region and Komaki’s single layer region as taught by OIKAWA)
in order to reduce welding distortion and obtain a good aesthetic appearance (OIKAWA, [0040 and 0004]).
Regarding claim 2, Komaki in view of OIKAWA further teaches wherein the single layer region (Komaki’s edge portion of 306 where Komaki’s 314b would be placed later is a single layer before Komaki’s 314 is placed on Komaki’s 306 and 307, see annotated Komaki’s Fig. 24a and Komaki’s [0195]) of the blank (Komaki’s Fig. 24) has an opening portion (Komaki’s S1 where window is installed, see Komaki’s Figs. 20 and 24 and [0194]), and the concave-shaped welding end portion (in OIKAWA’s magnified section of S, see OIKAWA’s annotated Fig. 2b in claim 1) is located at an end portion of the opening portion (after continuously applying laser welding to Komaki’s edge portion of 306 marked in annotated Komaki’s Fig. 24a as taught by OIKAWA’s [0029 and 0031], OIKAWA’s concave-shaped welding end portion as shown in annotated OIKAWA’s Fig. 2b in claim 1 is located at an end portion of opening S1, see annotated Komaki’s Fig. 24a, laser welding is demonstrated by dash-line) of the single layer region (see annotated Komaki’s Fig. 24a and Komaki’s [0195]).
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Regarding claim 9, Komaki further teaches wherein each of the first starting
material and the one or more second starting materials (each of 306 and 307) is a steel material ([0002]).
Regarding claim 6, Komaki teaches the invention as claimed: A member (Fig. 24) including a first starting material (306) and one or more second starting materials (307, Fig. 24) overlap each other, the member being shaped into a predetermined shape (see Fig. 24), wherein
the member has a single layer region (per [0195], during the process of forming the blank as shown in Fig. 24, 307 is firstly welded to 306 and 314 is secondly welded to 307 and 306, and thus, before 314 is welded to 307 and 306, the edge portion of 306 where 314b would be placed later is a single layer, also see annotated Fig. 24a in claim 1), in which only the first starting materials is present (306, see annotated Fig. 24a in claim 1), and a multi-layer region (where the leg of 307 overlaps with 306, see annotated Fig. 24a in claim 1), in which the first starting material (306) and the one or more second starting materials (307) overlap each other (see annotated Fig. 24a in claim 1),
laser welding (indicated by line U, see Fig. 21 and [0178]) is continuously applied to the multi-layer region (where the leg of 307 overlaps with 306, see Fig. 21 and annotated Fig. 24a in claim 1).
Komaki does not teach laser welding is continuously applied to the multi-layer region and the single layer region, and one end of a laser weld zone is located at an edge of the single layer region of the blank, and the one end forms a concave-shaped welding end portion having a concave shape when the blank is viewed from an end face of the single layer region.
However, OIKAWA teaches laser welding (W1 and Z1) is continuously applied to the multi-layer region (where W1 is) and the single layer region (where Z1 is, see Fig. 2b and 3-4 and [0029 and 0031]), and one end (the magnified section of S in annotated Fig. 2b in claim 1) of a laser weld zone (S and T, Fig. 2b) is located at an edge (annotated Fig. 2b in claim 1; according to Merriam-webster Dictionary, “edge” means the narrow part adjacent to a border) of the single layer region (where Z1 is) of the blank (10), and the one end (the magnified section of S in annotated Fig. 2b in claim 1) forms a concave-shaped welding end portion having a concave shape (see annotated Fig. 2b in claim 1) when the blank (10) is viewed from an end face (interpreted as an end surface, which is the surface facing outward from the paper, see annotated Fig. 2b in claim 1) of the single layer region (where Z1 is).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify Komaki with OIKAWA’s continuously applying laser welding to the multi-layer region and the single layer region, such that
one end of a laser weld zone is located at an edge of the single layer region of the blank, and the one end forms a concave-shaped welding end portion having a concave shape when the blank is viewed from an end face of the single layer region (the modification is instead of only continuously applying laser welding to Komaki’s multi-layer region, continuously applying laser welding to Komaki’s multi-layer region and Komaki’s single layer region as taught by OIKAWA)
in order to reduce welding distortion and obtain a good aesthetic appearance (OIKAWA, [0040 and 0004]).
Regarding claim 7, Komaki in view of OIKAWA further teaches wherein the single layer region (Komaki’s edge portion of 306 where Komaki’s 314b would be placed later is a single layer before Komaki’s 314 is placed on Komaki’s 306 and 307, see annotated Komaki’s Fig. 24a in claim 2 and Komaki’s [0195]) of the blank (Komaki’s Fig. 24) has an opening portion (Komaki’s S1 where window is installed, see Komaki’s Figs. 20 and 24 and [0194]), and the concave-shaped welding end portion (in OIKAWA’s magnified section of S, see OIKAWA’s annotated Fig. 2b in claim 1) is located at an end portion of the opening portion (after continuously applying laser welding to Komaki’s edge portion of 306 marked in annotated Komaki’s Fig. 24a in claim 2 as taught by OIKAWA’s [0029 and 0031], OIKAWA’s concave-shaped welding end portion as shown in annotated OIKAWA’s Fig. 2b in claim 1 is located at an end portion of opening S1, see annotated Komaki’s Fig. 24a in claim 2, laser welding is demonstrated by dash-line) of the single layer region (see annotated Komaki’s Fig. 24a in claim 2 and Komaki’s [0195]).
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Komaki 20070214998 in view of OIKAWA JP2011162009A (provided by IDS), and in further view of Lindgren 20170355407.
Regarding claim 3, Komaki further teaches wherein a first starting material (306) forming the single layer region (per [0195], during the process of forming the blank as shown in Fig. 24, 307 is firstly welded to 306 and 314 is secondly welded to 307 and 306, and thus, before 314 is welded to 307 and 306, the edge portion of 306 where 314b would be placed later is a single layer, also see annotated Fig. 24a in claim 1), and a second starting material (307) overlapping the first starting material (306) in the multi-layer region (see annotated Fig. 24a in claim 1) is a reinforcement component ([0177]).
Komaki in view of OIKAWA does not teach tensile strength of said first starting material is lower than tensile strength of said one or more second starting material.
However, Lindgren teaches tensile strength of a first starting material (panel portion per [0028]) is lower than tensile strength of a second starting material (reinforcement patch per [0028] attached to the panel portion, and per [0028], the tensile strength of the panel portion and the tensile strength of the reinforcement path are independently selected between 780 MPa and 2200 MPa, and thus when panel portion selects a tensile strength as 800 is lower than reinforcement patch selects a tensile strength as 2000) that is made as a reinforcement component ([0028]) in order to form a blank (panel assembly) having sufficient strength and stiffness with light weight ([0003]).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to provide Komaki in view of OIKAWA with Lindgren’s teaching of independently selecting tensile strength of the first material and the second material, such that
wherein tensile strength of a first starting material forming the single layer region is lower than tensile strength of a second starting material that is made to overlap the first starting material in the multi-layer region
because it has been held that to be obvious to try by choosing from a finite number of identified, predictable solutions, in this case, choosing the same tensile strength for the first and second starting materials; choosing the tensile strength of the first starting material being lower than the tensile strength of the second starting material; or choosing the tensile strength of the first starting material being higher than the tensile strength of the second starting material, with a reasonable expectation of success, in this case, forming blank having sufficient strength and stiffness with light weight as taught by Lindgren, was an obvious extension of prior art teachings. See MPEP 2143 l(E).
Regarding claim 4, Komaki further teaches wherein each of the first starting material and the one or more second starting materials (each 306 and 307) is a steel material (see [0002]).
Response to Arguments
Applicant's argument filed 07/30/2026 has been fully considered.
Applicant argues, on pp. 6-7, “… However, as can be seen from the above, melt-solidified part Z1 does not extend to the end, or edge, of the single layer region and therefore, would not be viewable as the blank is view from an end face …”.
Examiner does not agree with said argument because: it is noted “Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims”, MPEP 2145(VI). In this case i) the claim language only requires one end of the laser weld zone is located at “an edge” of the single layer region, which does NOT require said end extends/reaches a distal end of the single layer region and thus, the claimed edge is interpreted as the edge section marked in annotated Oikawa’s Fig. 2b (according to Merriam-webster Dictionary, “edge” means the narrow part adjacent to a border) and ii) the claim language only requires a concave-shaped welding end portion having a concave shape when the blank is view from an end face of the single later region, which does NOT require said end face is an end face formed in a specific direction or viewed from a specific viewing direction and thus, the claimed end face is interpreted as an end surface that faces outward from paper in Oikawa’s Fig. 2b (see details in the rejection above)
Examiner Note
Applicant is suggested to further clarify where the end of the laser weld zone is ended at the single layer region (e.g., a distal end of a first surface of the single layer region) and the concave shape of the welding end portion can be observed at which surface (e.g., a second surface of the single layer region that extending from the first surface in a radial direction).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JINGCHEN LIU whose telephone number is (571)272-6639. The examiner can normally be reached 9:30-4:30.
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/JINGCHEN LIU/ /GERALD L SUNG/ Primary Examiner, Art Unit 3741 Examiner, Art Unit 3741