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 . This Office Action is responsive to the Applicant's communication filed on November 28, 2023. In view of this communication, claims 1-20 are now pending in the application.
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, 3, 11-13, 15-17, and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 14-20 of copending Application No. 18/522201 (US 20240178711 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because Independent claim 1, 17, and 19 of the present applications contain the same structural limitations as claims 1 and 20 of Application No. 18/522201 (US 20240178711 A1). Additionally, the functional limitations of the present invention have inherent properties (pressure due to thermal expansion)that can be found in any press fit stator. More information of the interpretation of inherent functional limitations can be found in 2114 of the MPEP, but in summation if an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In regards to the dependent claims of the present invention, claims 11-13 correspond to claims 15-17 of Application No. 18/522201 (US 20240178711 A1), and claim 3 of the present invention correspond to claims 14 of Application No. 18/522201 (US 20240178711 A1), and claims 15-16 of the present invention correspond to claims 18-19 of Application No. 18/522201 (US 20240178711 A1).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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, the “permanent magnets is mounted rotatable with respect to the stator” from claim 13 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 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 8 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.
Claim 8 recites the limitation "the press fit ". There is insufficient antecedent basis for this limitation in the claim.
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)(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.
Claim(s) 1-3, 7, and 11-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated FANUC (US 20190305615 A1).
Before the explanation of the anticipation 102 rejection, the Applicant should note the limitation of “a press fit” in claims 7-9 , are considered as a product-by-process limitation. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777F, 2d 659, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see also MPEP 2113.
Additionally, the Applicant should note features of an apparatus may be recited either structurally or functionally. However, if an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40, 100 USPQ2d 1433, 1440 (Fed. Cir. 2011). The burden then shifts to applicant to establish that the prior art does not possess the characteristic relied on. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432; In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 228 (CCPA 1971); see also MPEP 2114. In the case of the present invention, the examiner notes that the functional limitation of “a transferrable torque between the stator and the housing”, “a static friction coefficient between the housing and the ring of cooling segments”, and “ a thermal expansion coefficient” is inherent to any prior art having these components press-fit and being made of metal.
Regarding claim 1, FANUC teaches:
A structure for an electric machine(Fig 1; 1), the structure comprising:
a stator(Fig 1; 21); and
a housing(Fig 1; 10),
wherein the structure has a high-temperature torque transfer capability denoting a maximum transferrable torque between the stator (Fig 1; 21)and the housing(Fig 1; 10) at a first, higher temperature, and a low-temperature torque transfer capability denoting a maximum transferrable torque between the stator and the housing at a second, lower temperature[0047], and
wherein a ratio of the high-temperature torque transfer capability divided by the low- temperature torque transfer capability is greater than or equal to 1.2( the housing 10 is fit to the outside of the cooling segment 22 [0003] and the cooling segment 22 is fit to the outside of the stator 21 [0031]. These press-fit pieces have inherent pressure which is known in the art to change with temperature due thermal expansion. The pressure creates torque transfer making it inherent and manipulatable by change in temperature).
Additionally, the Applicant should note it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980. The Examiner concludes that the thermal expansion coefficient of metals creating pressure in a press-fit are result effective variables, thus the limitation is obvious if needed in further new grounds of rejection.
Regarding claim 2, FANUC teaches the structure as stated in claim 1:
wherein the ratio of the high-temperature torque transfer capability divided by the low-temperature torque transfer capability is greater than or equal to 1.4( the housing 10 is fit to the outside of the cooling segment 22 [0003] and the cooling segment 22 is fit to the outside of the stator 21 [0031]. These press-fit pieces have inherent pressure which is known in the art to change with temperature due thermal expansion. The pressure creates torque transfer making it inherent and manipulatable by change in temperature).
Additionally, the Applicant should note it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980. The Examiner concludes that the thermal expansion coefficient of metals creating pressure in a press-fit are result effective variables, thus the limitation is obvious if needed in further new grounds of rejection.
Regarding claim 3, FANUC teaches the structure as stated in claim 1:
further comprising a ring of cooling segments(Fig 1; 22) arranged between the housing (Fig 1; 20)and the stator(Fig 1; 21), the ring of cooling segments (Fig 1; 22)being configured to transmit torque between the stator and the housing(the cooling segment 22 is fit between the stator 21 and housing 10[0003,0031]).
Regarding claim 7, FANUC teaches the structure as stated in claim 3:
wherein a press fit retains the housing(Fig 1; 10)[0003] and the ring of cooling segments (Fig 1; 22)on the stator(Fig 1; 21)[0031](a press fit limitation is a product by process thus patentability is based on the product itself MPEP 2113).
Regarding claim 11, FANUC teaches the structure as stated in claim 1:
wherein the housing (Fig 1; 10)is coaxially arranged with the stator(Fig 1; 21).
Regarding claim 12, FANUC teaches the structure as stated in claim 1:
wherein the stator(Fig 1; 21) is arranged within the housing(Fig 1; 10).
Regarding claim 13, FANUC teaches the structure as stated in claim 1:
wherein the stator (Fig 1; 21)comprises electric coils(Fig 1; 26), and a rotor (Fig 1; 30) with permanent magnets is mounted rotatable with respect to the stator[0034].
Regarding claim 15, FANUC teaches the structure as stated in claim 1:
wherein the structure is in an electric machine(Fig 1; 1).
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.
Claim(s) 5-6, 8-10, and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over FANUC (US 20190305615 A1).
In regards to claim 5, FANUC teaches the structure as stated in claim 3:
wherein a static friction coefficient (a static friction coefficient is an inherent limitation of two pieces that are press fit like the housing and cooling segment [0003])between the housing and the ring of cooling segments is in a range of between 0.08 and 0.25.
Therefore, FANUC discloses the claimed invention except for a static friction coefficient between 0.08 and 0.25. It would have been obvious to one having ordinary skill in the art at the time the invention was made to create for a static friction coefficient between 0.08 and 0.25, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 CCPA 1980. The Examiner concludes that a static friction coefficient are result effective variables.
In regards to claim 6, FANUC teaches the structure as stated in claim 3:
wherein a static friction coefficient(a static friction coefficient is an inherent limitation of two pieces that are press fit like the cooling segment and the stator [0031]) between the stator and the ring of cooling segments is in a range between 0.08 and 0.25.
Therefore, FANUC discloses the claimed invention except for a static friction coefficient between 0.08 and 0.25. It would have been obvious to one having ordinary skill in the art at the time the invention was made to create for a static friction coefficient between 0.08 and 0.25, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 CCPA 1980. The Examiner concludes that a static friction coefficient are result effective variables.
In regards to claim 8, FANUC teaches the structure as stated in claim 3:
wherein the press fit [0003, 0031] has a radial force between the housing and one of the cooling segments of at least 1000 N.
Therefore, FANUC discloses the claimed invention except for a radial force between the housing and one of the cooling segments of at least 1000 N. It would have been obvious to one having ordinary skill in the art at the time the invention was made to create a radial force of at least 1000N, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 CCPA 1980. The Examiner concludes that a radial force is a result of effective variables for example the thermal expansion coefficient of the material.
In regards to claim 9, FANUC teaches the structure as stated in claim 8:
wherein the press fit [0003, 0031]radial force between the housing and the one cooling segment is:3000 N or more at -45 C;
4400 N or more at 200C;
7500 N or more at 70°C; or any combination thereof.
Therefore, FANUC discloses the claimed invention except for a radial force between the housing and one of the cooling segments is:3000 N or more at -45 C; 4400 N or more at 200C; 7500 N or more at 70°C; or any combination thereof. It would have been obvious to one having ordinary skill in the art at the time the invention was made to create a radial force at the listed temperatures, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 CCPA 1980. The Examiner concludes that a radial force is a result of effective variables for example the thermal expansion coefficient of the material.
In regards to claim 10, FANUC teaches the structure as stated in claim 1:
wherein the first temperature is 70 °C or 20 °C, and the second temperature is 20 °C or -45 °C (operation temperature is an inherent variable of all motors).
Therefore, FANUC discloses the claimed invention except for the first and second tempature. It would have been obvious to one having ordinary skill in the art at the time the invention was made to use a temperature to get the desired torque ratio, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 CCPA 1980. The Examiner concludes that a radial force and torque is a result of effective variables for example the thermal expansion coefficient of the material dependent on the temperature.
In regards to claim 17, FANUC teaches:
A structure for an electric machine(Fig 1; 1), the structure comprising:
a stator(Fig 1; 21); and
a housing(Fig 1; 10),
wherein the structure has a high-temperature torque transfer capability denoting a maximum transferrable torque between the stator (Fig 1; 21)and the housing(Fig 1; 10) at a first, higher temperature, and a low-temperature torque transfer capability denoting a maximum transferrable torque between the stator and the housing at a second, lower temperature[0047], and
wherein a ratio of the high-temperature torque transfer capability divided by the low- temperature torque transfer capability is greater than or equal to 1.2, and
wherein the first temperature is 20 °C, and the second temperature is -45 °C( the housing 10 is fit to the outside of the cooling segment 22 [0003] and the cooling segment 22 is fit to the outside of the stator 21 [0031]. These fit pieces have inherent pressure which is known in the art to change with temperature due thermal expansion. The thermal expansion coefficient changes based on the material used).
Therefore, FANUC discloses the claimed invention except for the optimal torque transfer ratio at high and low temperatures. It would have been obvious to one having ordinary skill in the art at the time the invention was made to create a ratio higher that 1.2, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980. The Examiner concludes that the thermal expansion coefficient of metals creating pressure in a press-fit are result effective variables, thus the limitation is obvious.
In regards to claim 18, FANUC teaches the structure as stated in claim 17:
wherein the ratio of the high-temperature torque transfer capability divided by the low-temperature torque transfer capability is greater than or equal to 1.4( the housing 10 is fit to the outside of the cooling segment 22 [0003] and the cooling segment 22 is fit to the outside of the stator 21 [0031]. These fit pieces have inherent pressure which is known in the art to change with temperature due thermal expansion. The thermal expansion coefficient changes based on the material used).
Similar to claim17, FANUC discloses the claimed invention except for the optimal torque transfer ratio at high and low temperatures. It would have been obvious to one having ordinary skill in the art at the time the invention was made to create a ratio higher that 1.4, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980. The Examiner concludes that the thermal expansion coefficient of metals creating pressure in a press-fit are result effective variables, thus the limitation is obvious.
In regards to claim 19, FANUC teaches:
A structure for an electric machine(Fig 1; 1), the structure comprising:
a stator(Fig 1; 21); and
a housing(Fig 1; 10),
wherein the structure has a high-temperature torque transfer capability denoting a maximum transferrable torque between the stator (Fig 1; 21)and the housing(Fig 1; 10) at a first, higher temperature, and a low-temperature torque transfer capability denoting a maximum transferrable torque between the stator and the housing at a second, lower temperature[0047], and
wherein a ratio of the high-temperature torque transfer capability divided by the low- temperature torque transfer capability is greater than or equal to 1.5, and
wherein the first temperature is 70°C, and the second temperature is 20°C( the housing 10 is fit to the outside of the cooling segment 22 [0003] and the cooling segment 22 is fit to the outside of the stator 21 [0031]. These fit pieces have inherent pressure which is known in the art to change with temperature due thermal expansion. The thermal expansion coefficient changes based on the material used).
Therefore, FANUC discloses the claimed invention except for the optimal torque transfer ratio at high and low temperatures. It would have been obvious to one having ordinary skill in the art at the time the invention was made to create a ratio higher that 1.2, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980. The Examiner concludes that the thermal expansion coefficient of metals creating pressure in a press-fit are result effective variables, thus the limitation is obvious.
In regards to claim 20, FANUC teaches the structure as stated in claim 19:
wherein the ratio of the high-temperature torque transfer capability divided by the low-temperature torque transfer capability is greater than or equal to 1.7( the housing 10 is fit to the outside of the cooling segment 22 [0003] and the cooling segment 22 is fit to the outside of the stator 21 [0031]. These fit pieces have inherent pressure which is known in the art to change with temperature due thermal expansion. The thermal expansion coefficient changes based on the material used).
Similar to claim 19, FANUC discloses the claimed invention except for the optimal torque transfer ratio at high and low temperatures. It would have been obvious to one having ordinary skill in the art at the time the invention was made to create a ratio higher that 1.7, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980. The Examiner concludes that the thermal expansion coefficient of metals creating pressure in a press-fit are result effective variables, thus the limitation is obvious.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over FANUC (US 20190305615 A1), in view of CHEN (CN 109888944 A).
In regards to claim 14, FANUC teaches the structure as stated in claim 3.
FANUC does not teach:
the stator comprises a ring made of a material with a thermal expansion coefficient in a range between 8.8e-6 1/K and 10.9e-6 1/K.
CHEN teaches:
wherein the stator (Fig 1;1)comprises a ring made of a material with a thermal expansion coefficient in a range between 8.8e-6 1/K and 10.9e-6 1/K [pg 3; ln 55- pg 4; ln 20](the stator is made of steel and the cooling segment of aluminum alloy; this means the expansion coefficient of the cooling segment is larger than the stator).
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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 FANUC by using the steel stator taught by CHEN, in order to have a smaller thermal expansion coefficient, thus creating a stronger fit in high temperature [pg 3; ln 55- pg 4; ln 20 CHEN].
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over FANUC (US 20190305615 A1), in view of HOWE (US 20210075298 A1).
In regards to claim 16, FANUC teaches the structure as stated in claim 1.
FANUC does not teach:
wherein the structure is in an aircraft engine having a rotor unit with rotor blades.
CHEN teaches:
wherein the structure is in an aircraft engine(Fig 1; 112) having a rotor unit(Fig 1; 301) with rotor blades(Fig 1; 102)[0906].
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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 FANUC by using aircraft engine taught and rotor blade by HOWE, in order to use the motor in a more efficient environment [0099 HOWE].
Allowable Subject Matter
Claim 4 is 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.
Regarding claim 4: The following is a statement of reasons for the indication of allowable subject matter:
CHEN (CN 109888944 A)teaches:
wherein at least one of the cooling segments (Fig 1; 2) has a form-lock element (Fig 1; 3)engaged with a form-lock element of the stator (Fig 1; 1)so as to transmit a torque between the stator (Fig 1; 1)and the ring of cooling segments(Fig 1; 2), and
However, the prior art does not teach: wherein at least one of the cooling segments has a form-lock element engaged with a form-lock element of the housing so as to transmit a torque between the ring of cooling segments and the housing. (The underlined is allowable subject matter.)
Claim 4 is objected to, and not rejected, because the limitation of lock element between the cooling segment and the housing is too specific which makes it novel.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS L SETZER whose telephone number is (571)272-3021. The examiner can normally be reached Mon-Fri, 8am-5pm EST.
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, Oluseye Iwarere can be reached at (571) 270-5112. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/N.L.S./Examiner, Art Unit 2834
/OLUSEYE IWARERE/Supervisory Patent Examiner, Art Unit 2834