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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Claims 1 and 2 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on December 20, 2025.
Applicant's election with traverse of Group II, claims 3-12, in the reply filed on December 20, 2025 is acknowledged. The traversal is on the ground(s) that it would not place a serious burden on the Examiner. This is not found persuasive because the composition of claims 3-12 can be used as various types of films, e.g. a resist film or upper layer film, which would require a different field of search than the invention of claims 1-2.
The requirement is still deemed proper and is therefore made FINAL.
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 3 and 5-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 9,029,069. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and patented claims are directed to compositions comprising a polymer having a structural unit substituted with an alkynyloxy group, and a solvent. Formula (1) of ‘069 when defined as: each of R3 to R8 independently represents a group shown by a formula (2), a hydrogen atom, a hydroxyl group, a substituted or unsubstituted alkyl group having 1 to 6 carbon atoms, a substituted or unsubstituted alkoxy group having 1 to 6 carbon atoms, a substituted or unsubstituted alkoxycarbonyl group having 2 to 10 carbon atoms, a substituted or unsubstituted aryl group having 6 to 14 carbon atoms, or a substituted or unsubstituted glycidyl ether group having 3 to 6 carbon atoms, wherein at least one of R3 to R8 represents the group shown by the formula (2) wherein R1 represents a single bond, a substituted or unsubstituted alkanediyl group having 1 to 20 carbon atoms, or a substituted or unsubstituted arenediyl group having 6 to 20 carbon atoms, and R2 represents a hydrogen atom, and X represents a substituted arenediyl group having 6 to 20 carbon atoms encompasses formula (1) of instant claims 3 and 5-12 when Ar1 is a naphthalene ring comprising at least one group represented by formula (2-1) when R7 is a divalent organic group having 1 to 20 carbon atoms or a single bond and R0 is a benzene ring comprising at least one group represented by formula (2-1) when R7 is a divalent organic group having 1 to 20 carbon atoms or a single bond.
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.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 3, 5-8, and 10-12 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kori et al. (U.S. 2019/0067021).
Kori et al. teaches the compounds (A1) to (A22) synthesized in Synthesis Examples, a crosslinking agent (CR1) and an acid generator (AG1) as additives, and (S1) 1,6-diacetoxyhexane having a boiling point of 260°C or (S2) tripropylene glycol monomethyl ether having a boiling point of 242°C as a high-boiling-point solvent were dissolved in a solvent containing propylene glycol monomethyl ether acetate (PGMEA) and 0.1 mass % FC-4430 (manufactured by Sumitomo 3M Ltd.) in proportions shown in Table 4. The solution was filtered through a 0.1-μm filter made of a fluorinated resin to prepare compositions (UDL-1 to -20, comparative UDL-1 to -14) for forming an organic film [0234] (claim 3) in which UDL-5 comprises compound A5 which is the following:
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[p 28] which is equivalent to a polymer comprising a repeating unit represented by formula (1) of instant claims 3 and 5-8 when Ar1 is a divalent group comprising an aromatic ring having 26 ring atoms, specifically a benzene ring and two naphthalene rings comprising two groups represented by formula (2-1) when R7 is a divalent organic group having 1 carbon atom and R0 is a naphthalene aromatic hydrocarbon ring comprising a group represented by formula (2-1), specifically formula (2-1-1). Kori et al. also teaches The compositions (UDL-1 to -20, comparative UDL-1 to -14) for forming an organic film prepared above were each applied onto a silicon wafer substrate on which a SiO2 film of 300 nm had been formed. Then, the resulting substrate was baked at 450°C for 60 seconds under such a nitrogen stream that the oxygen concentration was controlled to 0.2% or less. Thereby, an organic film (resist underlayer film) was formed. A CVD-SiON hard mask was formed thereon, and further an organic antireflective film composition (ARC-29A: manufactured by Nissan Chemical Industries, Ltd.) was applied and baked at 210°C for 60 seconds to form an organic antireflective film having a film thickness of 80 nm. A monolayer resist for ArF was applied thereon as a resist upper layer film composition and baked at 105°C for 60 seconds to form a photoresist film having a film thickness of 100 nm. A liquid immersion top coat composition (TC-1) was applied on the photoresist film and baked at 90°C for 60 seconds to form a top coat having a film thickness of 50 nm [0244] (claim 12).
Claims 10 and 11 recite “when a coating film of the composition is heated” while claim 12 recites “is suitable for” which refer to the use of the composition. It has been held that a recitation with respect to the manner in which a claimed composition is intended to be used does not differentiate the claimed composition from a prior art composition satisfying the claimed structural limitations. Ex Parte Masham, 2, USPQ2d 1647 (1987). This recitation of the composition is drawn to intended use; therefore, this limitation does not add any patentable weight to the claim (MPEP 2106). Thus, the composition of Kori et al. is the same as instantly claimed.
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.
Claims 4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Kori et al. (U.S. 2019/0067021).
With regard to claims 4 and 9, Kori et al. teaches the above compound A5.
Kori et al. does not teach when R0 comprises at least two groups selected from formula (2-1) and (2-2) or that R0 is a benzene ring.
However, Kori et al. teaches a polymer comprising a repeating unit shown by the following general formula (1) [0099]:
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[0099] wherein AR1, AR2, and AR3 each represent a benzene ring, a naphthalene ring, or an anthracene ring which optionally have a substituent; carbon atoms on aromatic rings of AR1 and AR2, or AR2 and AR3, optionally bond to each other directly or via a linking group to form a bridge structure; R1 and R2 each independently represent a hydrogen atom or an organic group having 1 to 30 carbon atoms; when R1 and R2 are the organic groups, R1 and R2 optionally bond to each other within a molecule to form a cyclic organic group; and Y represents a group shown by the following formula (2) [0100]:
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[0100] wherein R3 represents a single bond or a divalent organic group having 1 to 20 carbon atoms; R4 represents a hydrogen atom or a monovalent organic group having 1 to 20 carbon atoms; and a dotted line represents a bonding arm [0101] in which specific examples of the partial structure -R1-C-R2- include the following:
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[0109] which are equivalent to R0 which is a benzene or naphthalene ring having one or two groups represented by formula (2-1). Kori et al. also teaches the present invention will be more specifically described by referring to Synthesis Examples, Comparative Synthesis Examples, Examples, and Comparative Examples. However, the present invention is not limited thereto [0221] and the present invention is not restricted to the above-described embodiments. The embodiments are merely examples so that any embodiments that have substantially the same feature and demonstrate the same functions and effects as those in the technical concept as disclosed in claims of the present invention are included in the technical range of the present invention [0259]. Kori et al. further teaches an object of the present invention is to provide a composition for forming an organic film, which generates no by-product even under such a film formation condition in an inert gas as to prevent substrate corrosion, which is capable of forming an organic film not only excellent in properties of filling and planarizing a pattern formed on a substrate but also favorable for dry etching resistance during substrate processing, and further which causes no fluctuation in film thickness of the film due to thermal decomposition even when a CVD hard mask is formed on the organic film [0024].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the specific teachings of Kori et al. to include additional resins including the above described groups through routine experimentation of substituting equally suitable groups for the sought invention and arrive at the instant claims in order to achieve a film generating no by-product and optimum filling and planarizing properties.
Claims 3 and 5-12 are rejected under 35 U.S.C. 103 as being unpatentable over Minegishi et al. (U.S. 9,029,069).
Minegishi et al. teaches a resist underlayer film-forming composition includes (A) a polymer that includes a structural unit shown by a formula (1), and has a polystyrene-reduced weight average molecular weight of 3000 to 10,000 (hereinafter may be referred to as "polymer (A)"), and (B) a solvent [col; 3 lines 10-17]:
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[col 3 line 20] wherein R3 to R8 independently represent a group shown by a formula (2) (hereinafter may be referred to as "specific substituent (S1)"), a hydrogen atom, a hydroxyl group, a substituted or unsubstituted alkyl group having 1 to 6 carbon atoms, a substituted or unsubstituted alkoxy group having 1 to 6 carbon atoms, a substituted or unsubstituted alkoxycarbonyl group having 2 to 10 carbon atoms, a substituted or unsubstituted aryl group having 6 to 14 carbon atoms, or a substituted or unsubstituted glycidyl ether group having 3 to 6 carbon atoms, provided that at least one of R3 to R8 represents the group shown by the formula (2), and X represents a substituted or unsubstituted alkanediyl group having 1 to 10 carbon atoms, a substituted or unsubstituted cycloalkanediyl group having 3 to 20 carbon atoms, a substituted or unsubstituted alkanediyloxy group having 1 to 10 carbon atoms, a substituted or unsubstituted cycloalkanediyloxy group having 3 to 20 carbon atoms, a substituted or unsubstituted arenediyl group having 6 to 14 carbon atoms, or a divalent group formed by combining arbitrary groups among these groups [col 3 lines 28-46]:
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[col 3 line 50] wherein R1 represents a single bond, a substituted or unsubstituted alkanediyl group having 1 to 20 carbon atoms, or a substituted or unsubstituted arenediyl group having 6 to 20 carbon atoms, and R2 represents a hydrogen atom, a substituted or unsubstituted alkyl group having 1 to 20 carbon atoms, or a substituted or unsubstituted aryl group having 6 to 20 carbon atoms [col 3 lines 52-58] in which the polymer (A) may be obtained by a method 1 or 2 illustrated in FIG. 1. Specifically, a naphthalene compound that includes a hydroxyl group (hereinafter may be referred to as "compound (N1)") is polymerized, or polycondensed with an appropriate condensation agent (e.g., aldehyde, ketone, or divinyl compound) to obtain a naphthalene ring-containing polymer that includes a hydroxyl group (hereinafter may be referred to as "polymer (P1)"), and the polymer (P1) is alkynyloxylated using a compound that includes a leaving group corresponding to the specific substituent (S1) (hereinafter may be referred to as "alkynylation agent") to obtain the polymer (A) (method 1) [col 9 lines 18-29] wherein examples of the compound (N1) include naphthols such as 1-naphthol, 2-naphthol, 2-methyl-1-naphthol, 4-methoxy-1-naphthol, 7-methoxy-2-naphthol, 1,5-dihydroxynaphthalene, 1,7-dihydroxynaphthalene, 2,3-dihydroxynaphthalene, 2,6-dihydroxynaphthalene, 2,7-dihydroxynaphthalene, and binaphthol, and the like. Among these, 1-naphthol, 4-methoxy-1-naphthol, 7-methoxy-2-naphthol, 1,5-dihydroxynaphthalene, 1,7-dihydroxynaphthalene, and 2,7-dihydroxynaphthalene are preferable, and 1-naphthol and 2,7-dihydroxynaphthalene are more preferable. Examples of the aldehyde that may be used as the condensation agent include formaldehyde, trioxane, paraformaldehyde, benzaldehyde, acetaldehyde, propylaldehyde, phenylacetaldehyde, α-phenylpropylaldehyde, β-phenylpropylaldehyde, o-hydroxybenzaldehyde, m-hydroxybenzaldehyde, p-hydroxybenzaldehyde, o-chlorobenzaldehyde, m-chlorobenzaldehyde, p-chlorobenzaldehyde, o-nitrobenzaldehyde, m-nitrobenzaldehyde, p-nitrobenzaldehyde, o-methylbenzaldehyde, m-methylbenzaldehyde, p-methylbenzaldehyde, p-ethylbenzaldehyde, p-n-butylbenzaldehyde, furfural, and the like [col 9 lines 44-65] and examples of the alkynylation agent include a compound shown by the following formula (3), and the like [col 10 lines 31-32]:
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[col 10 line 35] wherein R1 and R2 are the same as defined for the formula (2), and Y represents a leaving group. Examples of the leaving group represented by Y include a chlorine atom, a bromine atom, a tosyl group, a mesyl group, a trifluoromethylsulfonyl group, and the like [col 10 lines 39-43] such that when 1-naphthol is selected as the compound (N1) and o-hydroxybenzaldehyde, m-hydroxybenzaldehyde, or p-hydroxybenzaldehyde are selected as the aldehyde, it is equivalent to a polymer comprising a repeating unit represented by formula (1) of instant claims 3 and 5-9 when Ar1 is a divalent group comprising an aromatic ring having 10 ring atoms, specifically a naphthalene ring comprising a group represented by formula (2-1) when R7 is a divalent organic group having 1 carbon atom and R0 is an aromatic hydrocarbon ring, specifically a benzene ring comprising a group represented by formula (2-1), specifically formula (2-1-1). Minegishi et al. also teaches the invention is further described below by way of examples. Note that the invention is not limited to the following examples [col 19 lines 22-24] and Obviously, numerous modifications and variations of the invention are possible in light of the above teachings. It is therefore to be understood that within the scope of the appended claims, the invention may be practiced otherwise than as specifically described herein [col 23 lines 46-50]. Minegishi et al. further teaches a resist underlayer film-forming composition that can form a resist underlayer film that exhibits excellent etching resistance, exhibits an excellent depression filling capability, and reduces generation of outgas when forming the resist underlayer film, has been desired [col 2 lines 4-8].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the specific teachings of Minegishi et al. to include additional resins including the above described groups through routine experimentation of substituting equally suitable groups for the sought invention and arrive at the instant claims in order to achieve a film exhibiting excellent etching resistance, depression filling capability, and reduced outgassing.
Claims 10 and 11 recite “when a coating film of the composition is heated” while claim 12 recites “is suitable for” which refer to the use of the composition. It has been held that a recitation with respect to the manner in which a claimed composition is intended to be used does not differentiate the claimed composition from a prior art composition satisfying the claimed structural limitations. Ex Parte Masham, 2, USPQ2d 1647 (1987). This recitation of the composition is drawn to intended use; therefore, this limitation does not add any patentable weight to the claim (MPEP 2106). Thus, the composition of Minegishi et al. is the same as instantly claimed.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Minegishi et al. (U.S. 9,029,069) as applied to claim 3 above, and further in view of Makinoshima et al. (U.S. 2020/0361843).
With regard to claim 4, Minegishi et al. teaches the above polymer (1) which may be obtained by a method 1 or 2 illustrated in FIG. 1. Specifically, a naphthalene compound that includes a hydroxyl group (hereinafter may be referred to as "compound (N1)") is polymerized, or polycondensed with an appropriate condensation agent (e.g., aldehyde, ketone, or divinyl compound) to obtain a naphthalene ring-containing polymer that includes a hydroxyl group (hereinafter may be referred to as "polymer (P1)"), and the polymer (P1) is alkynyloxylated using a compound that includes a leaving group corresponding to the specific substituent (S1) (hereinafter may be referred to as "alkynylation agent") to obtain the polymer (A) (method 1) [col 9 lines 18-29] wherein examples of the aldehyde that may be used as the condensation agent include formaldehyde, trioxane, paraformaldehyde, benzaldehyde, acetaldehyde, propylaldehyde, phenylacetaldehyde, α-phenylpropylaldehyde, β-phenylpropylaldehyde, o-hydroxybenzaldehyde, m-hydroxybenzaldehyde, p-hydroxybenzaldehyde, o-chlorobenzaldehyde, m-chlorobenzaldehyde, p-chlorobenzaldehyde, o-nitrobenzaldehyde, m-nitrobenzaldehyde, p-nitrobenzaldehyde, o-methylbenzaldehyde, m-methylbenzaldehyde, p-methylbenzaldehyde, p-ethylbenzaldehyde, p-n-butylbenzaldehyde, furfural, and the like [col 9 lines 44-65].
Minegishi et al. does not teach when the R0 comprises at least two groups selected from formula (2-1) and (2-2), i.e. a dihydroxybenzaldehyde.
However, Makinoshima et al. teaches a resin obtained using the compound represented by the above formula (1) as a monomer [0149], specifically, by reacting the compound represented by the above formula (1) with a crosslinking compound. The crosslinking compound may be any compound as long as it can oligomerize or polymerize the compound represented by the above formula (1), and examples thereof include an aldehyde, a ketone, a carboxylic acid, a carboxylic acid halide, a halogen containing compound, an amino compound, an imino compound, an isocyanate compound, and an unsaturated hydrocarbon group containing compound. Specific examples of the resin of the present embodiment include a resin that has been made novolac obtained through, for example, a condensation reaction between the compound represented by the above formula (1) and an aldehyde or ketone, which is a crosslinking compound [0152-0154] and examples of the aldehyde include, without particular limitations, formaldehyde, trioxane, paraformaldehyde, benzaldehyde, acetaldehyde, propylaldehyde, phenylacetaldehyde, phenylpropylaldehyde, hydroxybenzaldehyde, chlorobenzaldehyde, nitrobenzaldehyde, methylbenzaldehyde, dimethylbenzaldehyde, trimethylbenzaldehyde, ethylbenzaldehyde, propylbenzaldehyde, butylbenzaldehyde, pentabenzaldehyde, butylmethylbenzaldehyde, hydroxybenzaldehyde, dihydroxybenzaldehyde, fluoromethylbenzaldehyde, cyclopropylaldehyde, cyclobutylaldehyde, cyclohexylaldehyde, cyclodecylaldehyde, cycloundecylaldehyde, cyclopropylbenzaldehyde, cyclobutylbenzaldehyde, cyclohexylbenzaldehyde, cyclodecylbenzaldehyde, cycloundecylbenzaldehyde, biphenylaldehyde, naphthaldehyde, anthracenecarbaldehyde, phenanthrenecarbaldehyde, pyrenecarbaldehyde, and furfural [0139] in which hydroxybenzaldehyde is equivalent to the aldehyde of Minegishi et al. and dihydroxbenzaldehyde is equivalent to when the R0 comprises two groups represented by formula (2-1). It should be noted that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945). See MPEP 2144.07. In the instant case, Minegishi and Makinoshima are bother directed to novolak resins obtained by reacting aromatic hydroxy compounds with known aldehydes.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Minegishi et al. to include other known aldehydes such as dihydroxybenzaldehyde taught by Mikanoshima et al. through routine experimentation of substituting equally suitable components for the sought invention and arrive at the instant claims with a reasonable expectation of success.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. 2019/0064659, U.S. 2022/0144738, U.S. 2019/0198341, U.S. 2021/0109448, U.S. 2019/0048236, U.S. 2018/0348633, U.S. 2012/0252217, and JP2009014816.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA E MALLOY whose telephone number is (571)270-5849. The examiner can normally be reached 8:00-4:30 EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff can be reached at 571-272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Anna Malloy/Examiner, Art Unit 1737
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737