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 .
Claim Rejections - 35 USC § 112
1. 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.
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.
2. Claims 1-14 and 39-45 are 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 claims 1, 40 and 41, the disclosure does not disclose how the space between the attachment members can be adjustable to a shape of a base plate of power tool. The size of the base plate could be a little larger or smaller. In this case, it could be argued that the space between the attachment members is adjustable and can accommodate base blades with different size or length. However, it is not clear how different shapes of base plate can be accommodated within the space between the attachment members. Can the adjustable space between the attachment members receive a base plate which has large vertical side edges?
Regarding claims 1, 40, and 45, the specification does not clearly disclose that the set of attachment members are laterally adjustable in two dimensions relative to the base plate. The attachment members 148 move laterally up and down along the respective side member 92 in only one dimension. Although, the attachment members 148 may also pivot with respect to the base plate, it is unclear whether such pivoting movement is intended to constitute adjustment in a second lateral dimension, as the pivoting movement occurs about a vertical axis rather than constituting lateral movement. Furthermore, if the movement of the attachment members by the slide members along a direction opposite to the up-and-down movement of the attachment members is intended to represent a second dimensional adjustment, such movement would not be lateral, as it is opposite to the lateral up-and-down movement of the attachment members. Therefore, the specification does not identify or define the two lateral dimensional movements of the attachment members.
3. Claims 1-14 and 39-45 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.
Regarding claims 1, 40, and 45, “wherein the set of attachment members are laterally adjustable in two dimensions relative to the base plate so as to adjust a size and shape of the base plate of the cutting member” in confusing. It is not clear how the lateral movement of the adjustment members can adjust the attachment members for a shape of the base plate of the power tool. The shape of the base plate could be in a shape that cannot be accommodate in the space between the pair of the side members. It is not clear what are the shapes of the base plate which fit into the space between the attachment members. The size of the base plate could be a little larger or smaller. In this case, it could be argued that the space between the attachment members is adjustable and can accommodate base blades with different size or length. However, it is not clear how different shapes of base plate can be accommodated within the space between the attachment members. Can the adjustable space between the attachment members receive a base plate which has large vertical side edges?
Regarding claims 1, 40, and 45, “the set of attachment members are laterally adjustable in two dimensions relative to the base plate” is not accurate. The attachment members 148 move laterally up and down along the respective side member 92 in only one dimension. Although, the attachment members 148 may also pivot with respect to the base plate, it is unclear whether such pivoting movement is intended to constitute adjustment in a second lateral dimension, as the pivoting movement occurs about a vertical axis rather than constituting lateral movement. Furthermore, if the movement of the attachment members by the slide members along a direction opposite to the up-and-down movement of the attachment members is intended to represent a second dimensional adjustment, such movement would not be lateral, as it is opposite to the lateral up-and-down movement of the attachment members. Moreover, the specification does not identify or define the two lateral dimensional movements of the attachment members.
Regarding claim 6, “wherein the set of attachment members includes at least one attachment member” does not further limit the guide system, since the set of attachment members inherently and naturally includes at least one attachment member. Regarding claims 6, it’s not clear whether the movement of the attachment member along the length of the respective side member, the movement of the attachment member inward and outward relative to its respective side member, and the pivoting movement of the attachment member along its vertical axis are part of the two-dimensional movement of the attachment member set forth in claim 1.
Regarding claim 7, it is not clear whether side-to-side and forward-to back movements of the attachment members are part of the two-dimensional movement of the attachment member set forth in claim 1.
Claim Objections
Claim 1 is objected to because of the following informalities: claim 1 recites
includes “having a set of attachment members” which has not been properly annotated to indicate that this limitation has been added to the claim. Appropriate correction is required.
Claim Rejections - 35 USC § 102
5. 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.
6. Claims 1-2, 4-5, 9-10, 12-13, 40, and 45 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Hall (2022/0288707 A1). Regarding claim 1, as best understood, Hall teaches a guide system 10 for woodworking operations, comprising: a sled 108 configured (or capable) to slide on a top surface of a workpiece; the sled 108 having a pair of side members (defined by the sliding bars on both sides of the sled 108; Fig. 3) having a set of attachment members 132 configured to engage a base plate 134 of a cutting member 104 so as to facilitate secure attachment of the cutting member 104 to the sled while allowing a blade 146 of the cutting member 104 to reach down and through the workpiece; wherein the set of attachment members 132 are laterally adjustable in a two dimensions relative to the base plate so as to adjust to a side and shape of the base. It should be noted that each adjustment members is laterally adjustable along the elongated slot (Fig. 3) via its respective side member and it is also adjustable along its pivotal axis in the lateral direction. See Figs. 1-9 in Hall.
Regarding claim 2, Hall teaches everything noted above including that the cutting member 104 is a circular saw (Fig. 9). It should be noted that claim 1 does not positively claim a cutting member. Therefore, claim 2 does not further limit the guide system.
Regarding claim 4, Hall teaches everything noted above including that the sled having a front member 11; wherein the pair of side members 12 are operatively connected to the front member (Fig. 1).
Regarding claim 5, Hall teaches everything noted above including that the sled having a front member 138 (Fig. 3); the front member having a pair of slots (defined by the elongated slots on both ends of the front member 138; Fig. 3); wherein the pair of side members are operatively connected to the front member through the pair of slots of the front member; and wherein the pair of side members are configured to move laterally within the pair of slots of the front member.
Regarding claim 9, Hall teaches everything noted above including that the pair of side members extending a length from a front end to a back end; the pair of side members each having a first slot (defined by the elongated slot which receive the fastener) and a second slot (defined by the slot that receives the protrusion pin of the clamping member Fig. 3); wherein the first slot extends a length from the front end of the pair of side members to near a midpoint of the pair of side members; wherein the second slot extends a length (defined by the length of the aperture which receives the clamping pin; Fig. 3) from near the midpoint of the pair of side members to near the back end (defined by the back side of the pair of side members); the pair of side members each having a first attachment member 132 and a second attachment member 132 of the set of attachment members; wherein the first attachment member is movable along a length of the first slot of the pair of side members; and wherein the second attachment member is movable along a length of the second slot of the pair of side members.
Regarding claim 10, Hall teaches everything noted above including a rail 106; the rail extending a length between a first end and a second end (Fig. 1); wherein the sled 108 is operatively connected to the rail; and wherein the sled is configured to move laterally along a length of the rail 106.
Regarding claim 12, Hall teaches everything noted above including a rail 106; the rail having a feature (defined as a groove in the rail 106 which receives a protrusion of the sled 108); wherein the sled 108 is operatively connected to the feature of the rail; and wherein the sled is configured to move laterally along a length of the rail.
Regarding claim 13, Hall teaches everything noted above including a rail 106; the rail extending a length between a first end and a second end; the sled 108 having a front member 138; the front member having a pair of slots (defined by elongated slots on both ends of the front member 138; Fig. 3); wherein the pair of side members are operatively connected to the front member 138 through the pair of slots; wherein the pair of side members are configured to move laterally (as move side to side relative to the front member 138; Fig. 3) within the pair of slots of the front member; and wherein the front member 138 is configured to operatively connect to the rail 106 (Fig. 1) and move laterally along a length of the rail.
Regarding claim 39, Hall teaches everything noted above that the sled 108 is configured to be slide or capable of being slid on and in contact with the top surface of the workpiece when performing a cutting operation to cut the workpiece using the cutting member; wherein the set of attachment members hold the base plate in a stationary position relative to the sled during a cutting operation. It should be noted that the slid 108 is capable of being slid on a workpiece. In addition, While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997); In re Swinehart, 439 F.2d 210, 212-213, 169 USPQ 226, 228-29 (CCPA 1971; In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). Apparatus claims cover what a device is, not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990).
Regarding claim 40, as best understood, Hall teaches a guide system for woodworking operations, comprising: a sled 108 configured to slide on (or capable of sliding on) and in contact with a top surface of a workpiece when performing a cutting operation to cut the workpiece using a cutting member; the sled having a pair of side members (defined by the sliding bars on both sides of the sled 108; Fig. 3); the pair of side members having a set of attachment members 132 configured to engage a base plate 134 of the cutting member 104 so as to facilitate secure attachment of the cutting member to the sled while allowing a blade 146 of the cutting member to reach down and through the workpiece; wherein the set of attachment members are laterally adjustable in a two dimensions relative to the base plate so as to adjust to a size and shape of the base plate of the cutting member. It should be noted that each adjustment members is laterally adjustable along the elongated slot (Fig. 3) via its respective side member and it is also adjustable along its pivotal axis in the lateral direction. See Figs. 1-9 in Hall.
Regarding claim 45, Hall teaches everything noted above including that the sled has a front member; wherein the pair of side members are operatively connected to the front member; wherein the pair of side members are adjustable in position along a length of the front member; wherein the set of attachment members are operably connected to the pair of side members; wherein the set of attachment members 132 are laterally adjustable (by pivoting laterally or side-to-side) relative to the side members.
7. Claims 1-2, 4, 6-8, 39-40, and 45 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Kwiatkowski (3,320,982). Regarding claim 1, as best understood, Kwiatkowski teaches a guide system for woodworking operations, comprising: a sled 10 configured (or capable) to slide on a top surface of a workpiece; the sled 10 having a pair of side members (16, 25) having a set of attachment members (24, 28) configured to engage a base plate (col. 2, lines 27-40) of a cutting member 22 so as to facilitate secure attachment of the cutting member 22 to the sled while allowing a blade 46 of the cutting member 22 to reach down and through the workpiece; wherein the set of attachment members (16, 25) are laterally adjustable in a two dimensions relative to the base plate so as to adjust to a side and shape of the base. It should be noted that each adjustment members (16, 25) is laterally adjustable along the elongated slot (23, 27; Fig. 4) and it is also adjustable along its pivotal axis in the lateral direction. See Figs. 1-6 in Kwiatkowski.
Regarding claim 2, Kwiatkowski teaches everything noted above including that the cutting member 22 is a circular saw (Fig. 1). It should be noted that claim 1 does not positively claim a cutting member. Therefore, claim 2 does not further limit the guide system.
Regarding claim 4, Kwiatkowski teaches everything noted above including that the sled having a front member 13; wherein the pair of side members (16, 25) are operatively connected to the front member (Fig. 2).
Regarding claim 6, as best understood, Kwiatkowski teaches everything noted above including that the set of attachment members (24, 28) includes at least one attachment member; wherein the at least one attachment member is configured to facilitate secure engagement of the cutting member 22 to at least one of the pair of side members (16, 25); wherein the at least one attachment member is movable along a length of the at least one of the pair of side members (16, 25); wherein the at least one attachment member is configured to move inward and outward (by pivoting about it axis) relative to the at least one of the pair of side members; and wherein the at least one attachment member is configured to pivot about a vertical axis.
Regarding claim 7, as best understood, Kwiatkowski teaches everything noted above including that each of the pair of side members (24, 28) having a respective one of the set of attachment members; wherein the respective attachment members of the each of the pair of side members is adjustable side-to side (by the respective side member; Figs. 1-3) as well as forward-to-back (along the slot of the side member 16, 25; Fig. 2).
Regarding claim 8, Kwiatkowski teaches everything noted above including that the pair of side members extend a length from a front end to a back end; wherein the pair of side members have at least one slot (23, 27; Fig. 2); wherein the at least one slot of the pair of side members extend a length from near the front end towards the back end of the pair of side members; wherein the pair of side members have at least one attachment member (24, 28) of the set of attachment members; and wherein the at least one attachment member is movable along a length of the at least one slot of the pair of side members.
Regarding claim 39, Kwiatkowski teaches everything noted above that the sled 10 is configured to be slide or capable of being slid on and in contact with the top surface of the workpiece when performing a cutting operation to cut the workpiece using the cutting member; wherein the set of attachment members hold the base plate in a stationary position relative to the sled during a cutting operation. It should be noted that the slid 108 is capable of being slid on a workpiece. In addition, While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997); In re Swinehart, 439 F.2d 210, 212-213, 169 USPQ 226, 228-29 (CCPA 1971; In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). Apparatus claims cover what a device is, not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990).
Regarding claim 40, as best understood, Kwiatkowski teaches a guide system for woodworking operations, comprising: a sled 10 configured to slide on (or capable of sliding on) and in contact with a top surface of a workpiece when performing a cutting operation to cut the workpiece using a cutting member; the sled having a pair of side members (16, 25; Fig. 2); the pair of side members having a set of attachment members (24, 28) configured to engage a base plate (col. 2, lines 27-40) of the cutting member 22 so as to facilitate secure attachment of the cutting member to the sled while allowing a blade 46 of the cutting member to reach down and through the workpiece; wherein the set of attachment members are laterally adjustable in a two dimensions relative to the base plate so as to adjust to a size and shape of the base plate of the cutting member. It should be noted that each adjustment members is laterally adjustable along the elongated slot and it is also adjustable along its pivotal axis in the lateral direction. See Figs. 1-6 in Kwiatkowski.
Regarding claim 45, Kwiatkowski teaches everything noted above including that the sled has a front member 13; wherein the pair of side members are operatively connected to the front member; wherein the pair of side members (16, 25) are adjustable in position along a length of the front member; wherein the set of attachment members (24, 28) are operably connected to the pair of side members; wherein the set of attachment members are laterally adjustable (along the slots 23, 27) relative to the side members.
Claim Rejections - 35 USC § 103
8. 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.
9. Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hall in view of Kuhlmann. Regarding claim 3, Hall does not explicitly teach that the cutting member is a jigsaw in an alternative embodiment. However, Kohlmann teaches a guide device 10 used for both a circular saw apparatus and a jigsaw apparatus (Figs. 1-4). It would have been obvious to a person of ordinary skill in the art to used Hall’s guide system also with a jigsaw, as taught by Kohlmann, in order to create different cuts in the workpiece.
10. Claim 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Hall in view of Kwiatkowski or Bradbury et al. (5,035,061), hereinafter Bradbury. Regarding claim 6, as best understood, Hall teaches everything noted above including that the set of attachment members 132 includes at least one attachment member; wherein the at least one attachment member is configured to facilitate secure engagement of the cutting member 104 to at least one of the pair of side members;; wherein the at least one attachment member is configured to move inward and outward (by pivoting about it axis) relative to the at least one of the pair of side members; and wherein the at least one attachment member is configured to pivot about a vertical axis.
Hall does not explicitly teach that the at least one attachment member is movable along a length of the at least one of the pair of side members. However,
Kwiatkowski teaches at least one attachment member (24, 28) which is movable along a length of the at least one side member (16, 25) to accommodate a base of a power tool. See Figs. 1-6 in Kwiatkowski. Bradbury also teaches at least one attachment member 38 which is movable along a length of the at least one side member 10. The side member moves along a length of an arm 6, similar to the side members in Hall. See Fig. 1 in Bradbury. It would have been obvious to a person of ordinary skill in the art to provide Hall’s side members with the slot, taught by Kwiatkowski or Bradbury, in order to further move the attachment member along the side members and further facilitating attachment of the tool base to the sled.
Regarding claim 7, as best understood, Hall, as modified by Kwiatkowski or Bradbury, teaches everything noted above including that each of the pair of side members having a respective one of the set of attachment members 132; wherein the respective attachment members of the each of the pair of side members is adjustable side-to side (by the respective side member; Fig. 3 in Hall) as well as forward-to-back (along the slot of the side member as taught by Kwiatkowski or Bradbury).
Regarding claim 8, Hall, as modified by Kwiatkowski or Bradbury, teaches everything noted above including that the pair of side members extend a length from a front end to a back end; wherein the pair of side members have at least one slot (as taught by Kwiatkowski or Bradbury); wherein the at least one slot of the pair of side members extend a length from near the front end towards the back end of the pair of side members; wherein the pair of side members have at least one attachment member 132 of the set of attachment members; and wherein the at least one attachment member is movable along a length of the at least one slot (as taught by Kwiatkowski or Bradbury) of the pair of side members.
11. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Hall in view of Whitney. Regarding claim 11, Hall teaches everything noted above including a rail 106; wherein the sled 108 is operatively connected to the rail; and wherein the sled is configured to move laterally. Hall does not explicitly teach indicia; wherein the indicia of the rail indicates distance from an end of a workpiece. However, Whitney teaches a rail 10 including indicia 18; wherein the indicia of the rail indicates distance from an end of a workpiece 2. See Figs. 1-2 in Whitney. It would have been obvious to a person of ordinary skill in the art to provide Hall’s rail with indica, as taught by Whitney, in order to assist the user in measuring the workpiece and the cuts by the cutting member in the workpiece.
12. Claims 14 and 41-44 are rejected under 35 U.S.C. 103 as being unpatentable over Hall in view of Ursell et al. (10,456,944 B2), hereinafter Ursell. Regarding claim 14, Hall teaches everything noted above including a rail 106; the rail having a length extending from a first end to a second end; and wherein the sled 108 moves along a length of the rail. Hall does not explicitly teach a guide arm; the guide arm configured to be positioned adjacent an end of a workpiece; and wherein the end of a rail is operatively connected to the guide arm. However, Ursell teaches a guide arm 70; the guide arm configured to be positioned adjacent an end of a workpiece (Fig. 5); and wherein the end of a rail 44 is operatively connected to the guide arm 70. See Figs. 1-5 in Ursell. It would have been obvious to a person of ordinary skill in the art to provide Hall’s system with the guide arm, as taught by Ursell, in order to along one end of the workpiece with the rail and assist the user in cutting a straight cut in the workpiece.
Regarding claim 41, Hall in view of Ursell teaches a guide system for woodworking operations, comprising: a sled configured to slide on and in contact with a top surface of a workpiece when performing a cutting operation to cut the workpiece using a cutting member; the sled having a pair of side members; the pair of side members having a set of attachment members configured to engage a base plate of the cutting member so as to facilitate secure attachment of the cutting member to the sled while allowing a blade of the cutting member to reach down and through the workpiece; wherein the set of attachment members are laterally adjustable in a two dimensions relative to the base plate so as to adjust to a size and shape of the base plate of the cutting member; a rail 106 (as taught by Hall); the rail extending a length between a first end and a second end; wherein the sled 108 is operatively connected to the rail; a guide arm (70l Fig. 5 in Ursell); the guide arm operably connected to the second end of the rail; wherein the guide arm is configured to slide along an edge of the workpiece and thereby guide the rail and sled relative to an edge of the workpiece as the sled is slide on the top surface of a workpiece when performing a cutting operation.
Regarding claim 42, Hall teaches everything noted above including that the sled is adjustable in position along the length of the rail.
Regarding claim 43, Hall teaches everything noted above including that the sled has a front member; wherein the pair of side members are operatively connected to the front member; wherein the pair of side members are adjustable in position along a length of the front member.
Regarding claim 44, Hall teaches everything noted above including that
the sled has a front member; wherein the pair of side members are operatively connected to the front member; wherein the pair of side members are adjustable in position along a length of the front member; wherein the pair of side members are operatively connected to the front member through the pair of slots of the front member; and wherein the pair of side members are configured to move laterally within the pair of slots of the front member.
Response to Arguments
13. Applicant’s arguments with respect to 112(a) and 112 (b) rejections are not persuasive. Applicant argues that a person of ordinary skill in the art would able to understand the claimed invention from at least paragraph [00238] of the description. However, the description and the applicant is totally silent about how base plates with different shapes can be accommodated within the space between the attachment members. Can the adjustable space between the attachment members receive a base plate which has large vertical side edges? In fact, it is not clear what are shapes of the base plates and what shape of base plates can be accommodated within the space between the attachment members.
Applicant’s argument that Hall does not teach that the slod is configured to slide on a top surface of a workpiece is not persuasive. Hall’s slid 108 is capable of being slid on a workpiece. It should be noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As stated above, Hall’s slid is capable of sliding on a workpiece.
Conclusion
14. The prior art made of record and not relied upon is considered pertinent to
applicant’s disclosure.
Cleveland (5,815,931) teaches a guide system for woodworking operations.
15. 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 extension fee 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.
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/GHASSEM ALIE/Primary Examiner, Art Unit 3724
January 22, 2026