DETAILED ACTION
Claims 1-20 are pending.
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
This application is a 371 of PCT/US2022/025158 (04/18/2022) which claims benefit of 63/177,503 (04/21/2021) as reflected in the filing receipt issued March 12 2024.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on June 6 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 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.
Claim 1 as currently written is vague and indefinite. Claim 1 recites an adduct of 2-amino-9-[(2R, 5R,7R, 8S,10R,12aR, 14R, 15S, 15aR,16R)-14-(6-amino-9H-purin-9-yl)-15,16-difluoro-2,10-dihydroxy-2,10- disulfidooctahydro-12H-5,8-methanofuro[3 ,2-1] [1,3,6,9,11,2,10]pentaoxadiphospha-cyclotetradecin-7-yl]- 1, 9-dihydro-6H-purin-6-one (aka compound A) and L-histidine. The instant specification provides no limiting definition of the recitation adduct. Example 1 which teaches the formation of Form I, indicates that the adduct is produced from crystallization of compound A with L-histidine. The gold book indicates that an adduct is a: A new chemical species AB, each molecular entity of which is formed by direct combination of two separate molecular entities A and B in such a way that there is change in connectivity, but no loss, of atoms within the moieties A and B. Stoichiometries other than 1:1 are also possible, e.g. a bis-adduct (2:1). An intramolecular adduct can be formed when A and B are groups contained within the same molecular entity. This is a general term which, whenever appropriate, should be used in preference to the less explicit term complex. It is also used specifically for products of an addition reaction. It does not appear from the specification that the adduct is an addition reaction product.
Form I is described in example 1 of the instant specification. This example specifically teaches that form I is produced by direct crystallization of compound A and a buffer containing L-histidine. This appears to limit the Form I to a crystalline product of compound A and L-histidine. However, the recitation adduct is broader. Therefore, it isn’t clear what structure is required since Form I indicates a specific structure but the recitation adduct of compound A and L-histidine is broader. In light of the example 1 of the specification being the only description of the adduct, the examiner is interpreting an adduct to be a crystalline product of L-histidine and compound A.
Claims 2-6 recite characterization of an X-ray powder diffraction containing at least 2 of the following 2θ values measured by CuKα. As set forth above Form I is a specific structure obtained from crystallization of compound A and L-histidine. While the instant specification shows different x-ray diffraction patterns for different forms of compound A, Form I only has one X-ray diffraction pattern. Claim 2 encompasses a 2θ at about 6.77 but that only appears in the x-ray diffraction of compound A, mono-sodium crystalline salt. This creates confusion as to the scope of Form I. Since Form I as indicated above is made from the crystallization of compound A and L-histidine and is shown to have a specific x-ray diffraction pattern, the claimed 2θ values, which the claims only require at least 2, create confusion to the structure.
Claim 8 recites the limitation "the solid adduct" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 8 depends from claim 1 which recites “an adduct”. Nothing in claim 1 limits the adduct to be solid.
Claim 8 as currently written is vague and indefinite. The claim recites the solid adduct is amorphous. But claim 1 recites the adduct is Form I, which the instant specification teaches in example 1 is crystalline. Therefore, it isn’t clear if the adduct is amorphous and not form I or how the adduct is amorphous.
Claim 9 recites the limitation "the solid adduct" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 9 depends from claim 1 which recites “an adduct”. Nothing in claim 1 limits the adduct to be solid.
Claim 12 as currently written is vague and indefinite. Claim 12 depends from claim 10 which depends from claim 1. As set forth above claim 1 is interpreted as being directed to the crystalline product of compound A and L-histidine. However, claim 12 recites a sterile solution for the pharmaceutical composition. This is interpreted as requiring the composition as being a solution, meaning, the adduct is dissolved. If the adduct is dissolved, then it is no longer crystalline. This then creates confusion as to the adduct because depending on how this term is interpreted, which is indefinite, as set forth above, it is not clear if the composition just merely has to have L-histidine and compound A or if there is some sort of interaction. Furthermore, as evidenced by Thayyil et al., co-crystals can be dissociated into its components by dilution of the co-crystal solution (page 203, left column). This suggests that forming the solution of Form I would result in dissociation of the components.
Claims 7, 10-11 and 13-20 are included in the rejection as they depend on a rejected base claim and they do not clarify the issues.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-9 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 7 recites the adduct of claim 1 characterized by the 1H-NMR spectra of Fig. 3. The description of Fig. 3 in the specification (page 3) indicates that the 1H-NMR is of form I and that is the formed claimed in claim 1. It does not appear that claim 7 further limits the adduct claimed in claim 1 but merely recites a property which is necessarily possessed by Form I.
Claims 2-6 recite the X-ray powder diffraction. Since as set forth above, Form I, is directed to a specific crystalline structure as shown in example 1 and a specific X-ray diffraction pattern as shown in Fig. 1C, it would appear that these limitations do not further limit the scope of the Form I recited in claim 1.
Claim 8 recites the solid adduct is amorphous. When claim 1 is interpreted as requiring Form I, this is interpreted as the crystalline form. However, claim 8 recites amorphous which is broader in scope. Therefore, claim 8 fails to further limit.
Claim 9 recites the solid adduct is crystalline. As set forth above, claim 1 recites Form I which example 1 of the instant specification teaches is the crystallization product of compound A and L-histidine. Therefore, claim 9 does not appear to further limit claim 1 as it is already a crystalline product.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Altman et al. (USPGPUB No. 20170044206, cited on PTO Form 1449) in view of Adams et al. (USPGPUB No. 20170158724, cited on PTO Form 1449), Ismerai et al. (WO2020010068, cited on PTO Form 1449) and Thayyil (Adv. Pharm. Bulletin, 2020).
Applicant Claims
The instant application claims an adduct of 2-amino-9-[(2R, 5R,7R, 8S,10R,12aR, 14R, 15S, 15aR,16R)-14-(6-amino-9H-purin-9-yl)-15,16-difluoro-2,10-dihydroxy-2,10- disulfidooctahydro-12H-5,8-methanofuro[3 ,2-1] [1,3,6,9,11,2,10]pentaoxadiphospha-cyclotetradecin-7-yl]- 1, 9-dihydro-6H-purin-6-one (aka compound A) and L-histidine (Form I). This is interpreted as a crystalline product of compound A and L-histidine.
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Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Altman et al. is directed to cyclic dinucleotide compounds as sting agonists. A specific compound taught is:
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(paragraph 0764; example 247). Table 12 shows example 247 has an EC50 of less than 1 nM.
A pharmaceutical composition comprising the compound and a carrier (claim 25). Intravenous administration is taught (paragraph 0154). Solid oral dosage forms are taught (paragraph 0168). Buffering agents are taught (paragraph 0165).
Claimed is a method of inducing an immune response in a subject comprising administering a therapeutically effective amount of either the compound to the subject (claim 26) or a pharmaceutical composition (claim 27) to the subject. Claimed is a method of inducing a STING-dependent type I interferon production in a subject (claims 28-29). Claimed is a method of treating a cell proliferation disorder in a subject wherein the cell proliferation disorder is cancer (claims 30-33).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
While Altman et al. teaches instantly claimed compound A, methods of using and pharmaceutical compositions, Altman et al. does not expressly teach an adduct with L-histidine. However, this deficiency is cured by Adams et al., Mirmehrabi et al. and Thayyil et al.
Adams et al. is directed to novel compounds. The compounds of formula I are similar to the instantly claimed compound and diastereomer 4 of Altman et al. (i.e. they are cyclic dinucleotides which modulate STING). The compounds may be fully amorphous to fully crystalline. The term crystalline refs to a solid phase in which the material has a regular ordered internal structure at the molecular level and gives a distinctive X-ray diffraction pattern with defined peaks (paragraph 0215). Salts are readily prepared by those of skill in the art. Base additional salts include L-histidine (paragraph 0213).
Mirmehrabi et al. is directed to solid forms of 2-(3,5-dichloro-4-((5-isopropyl-6-oxo-1,6-dihydropyridazin-3-yl)oxy)phenyl)-3,5-dioxo-2,3,4,5-tetrahydro-1,2,4-triazine-6-carbonitrile. Taught are co-crystals of the compound with different co-formers. Co-formers include L-histidine (paragraph 00177). Several different counter-ions were used to make salts. These include L-histidine (paragraph 00244). Co-crystals were characterized by an X-ray powder diffraction pattern using a CuKα radiation source (paragraph 0048).
Thayyil et al. is directed to pharmaceutical co-crystallization: regulatory aspects, design, characterization and applications. It is taught that making pharmaceutical co-crystals allows for the modification to be made to a crystalline form of an API (active pharmaceutical ingredient) , which in turn results in an API with altered physiochemical properties without comprising its intended biological properties (page 203, left column).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Altman et al., Adams et al., Mirmehrabi et al. and Thayyil et al. and form the adduct of compound 247 and L-histidine. One skilled in the art would have been motivated to form the adduct with L-histidine as it is taught as a co-former and/or salt as taught by Mirmehrabi et al. Since co-crystals are known to provide for altered physiochemical properties without comprising its intended biological properties as taught by Thayyil et al. one skilled in the art would have been motivated to utilize a co-former with compound 247. Since both crystalline and amorphous forms of similar compounds are taught by Adams et al., there is a reasonable expectation of success.
Regarding claims 2-7 and 9, Thayyil et al. provides the motivation to form a co-crystal. Mirmehrabi et al. teaches that L-histidine is a known co-former. Therefore, crystallization of compound 247 in the presence of L-histidine would result in the same Form I as claimed. Since the same form is taught, it would necessarily have the same X-ray diffraction pattern and 1H-NMR. This is further supported by Mirmehrabi et al. which teaches that co-crystals are characterized by an X-ray powder diffraction pattern using a CuKα radiation.
Regarding claims 10-12, Altman et al. teaches the same pharmaceutical formulations.
Regarding claims 13-20, Altman et al. claims the compounds can be used in the same manner.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-34 of U.S. Patent No. 10106574 in view of Adams et al., Mirmehrabi et al. and Thayyil et al. Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope.
The instant application claims an adduct of 2-amino-9-[(2R, 5R,7R, 8S,10R,12aR, 14R, 15S, 15aR,16R)-14-(6-amino-9H-purin-9-yl)-15,16-difluoro-2,10-dihydroxy-2,10- disulfidooctahydro-12H-5,8-methanofuro[3 ,2-1] [1,3,6,9,11,2,10]pentaoxadiphospha-cyclotetradecin-7-yl]- 1, 9-dihydro-6H-purin-6-one (aka compound A) and L-histidine (Form I). This is interpreted as a crystalline product of compound A and L-histidine.
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Patent ‘574 claims a compound. One of which is:
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(claim 1; claim 2; claim 3; claim 26; claim 33). A pharmaceutical composition comprising the compound and a carrier is claimed (claim 4). A method of inducing an immune response in a subject and a method of inducing a STING-dependent type I interferon production in a subject is claimed (claims 5-8).
While Patent ‘574 claims instantly claimed compound A, methods of using and pharmaceutical compositions, Patent ‘574 does not expressly teach an adduct with L-histidine. However, this deficiency is cured by Adams et al., Mirmehrabi et al. and Thayyil et al.
Adams et al. is directed to novel compounds. The compounds of formula I are similar to the instantly claimed compound and diastereomer 4 of Altman et al. (i.e. they are cyclic dinucleotides which modulate STING). The compounds may be fully amorphous to fully crystalline. The term crystalline refs to a solid phase in which the material has a regular ordered internal structure at the molecular level and gives a distinctive X-ray diffraction pattern with defined peaks (paragraph 0215). Salts are readily prepared by those of skill in the art. Base additional salts include L-histidine (paragraph 0213).
Mirmehrabi et al. is directed to solid forms of 2-(3,5-dichloro-4-((5-isopropyl-6-oxo-1,6-dihydropyridazin-3-yl)oxy)phenyl)-3,5-dioxo-2,3,4,5-tetrahydro-1,2,4-triazine-6-carbonitrile. Taught are co-crystals of the compound with different co-formers. Co-formers include L-histidine (paragraph 00177). Several different counter-ions were used to make salts. These include L-histidine (paragraph 00244). Co-crystals were characterized by an X-ray powder diffraction pattern using a CuKα radiation source (paragraph 0048).
Thayyil et al. is directed to pharmaceutical co-crystallization: regulatory aspects, design, characterization and applications. It is taught that making pharmaceutical co-crystals allows for the modification to be made to a crystalline form of an API (active pharmaceutical ingredient) , which in turn results in an API with altered physiochemical properties without comprising its intended biological properties (page 203, left column).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patent ‘574, Adams et al., Mirmehrabi et al. and Thayyil et al. and form the adduct the claimed compounds of patent ‘574 and L-histidine. One skilled in the art would have been motivated to form the adduct with L-histidine as it is taught as a co-former and/or salt as taught by Mirmehrabi et al. Since co-crystals are known to provide for altered physiochemical properties without comprising its intended biological properties as taught by Thayyil et al. one skilled in the art would have been motivated to utilize a co-former with the claimed compounds of patent ‘574. Since both crystalline and amorphous forms of similar compounds are taught by Adams et al., there is a reasonable expectation of success.
Regarding claims 2-7 and 9, Thayyil et al. provides the motivation to form a co-crystal. Mirmehrabi et al. teaches that L-histidine is a known co-former. Therefore, crystallization of the claimed compounds of patent ‘574 in the presence of L-histidine would result in the same Form I as claimed. Since the same form is taught, it would necessarily have the same X-ray diffraction pattern and 1H-NMR. This is further supported by Mirmehrabi et al. which teaches that co-crystals are characterized by an X-ray powder diffraction pattern using a CuKα radiation.
Regarding claims 10-12, Patent ‘574 claims the same pharmaceutical formulations.
Regarding claims 13-20, Patent ‘574 claims the compounds can be used in the same manner.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 10766919 in view of Adams et al., Mirmehrabi et al. and Thayyil et al. Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope.
The instant claims are set forth above.
Patent ‘919 claims a method of inducing e-STING-dependent type I interferon production in a subject. Compounds which can be administered in a therapeutically effect amount include:
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(claims 1;2). Claimed is a method of inducing STING-dependent type I interferon production (claim 13).
While Patent ‘919 claims instantly claimed compound A, methods of using and pharmaceutical compositions, Patent ‘919 does not expressly teach an adduct with L-histidine. However, this deficiency is cured by Adams et al., Mirmehrabi et al. and Thayyil et al.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patent ‘919, Adams et al., Mirmehrabi et al. and Thayyil et al. and form the adduct the claimed compounds of patent ‘919 and L-histidine. One skilled in the art would have been motivated to form the adduct with L-histidine as it is taught as a co-former and/or salt as taught by Mirmehrabi et al. Since co-crystals are known to provide for altered physiochemical properties without comprising its intended biological properties as taught by Thayyil et al. one skilled in the art would have been motivated to utilize a co-former with the claimed compounds of patent ‘919. Since both crystalline and amorphous forms of similar compounds are taught by Adams et al., there is a reasonable expectation of success.
Regarding claims 2-7 and 9, Thayyil et al. provides the motivation to form a co-crystal. Mirmehrabi et al. teaches that L-histidine is a known co-former. Therefore, crystallization of the claimed compounds of patent ‘919 in the presence of L-histidine would result in the same Form I as claimed. Since the same form is taught, it would necessarily have the same X-ray diffraction pattern and 1H-NMR. This is further supported by Mirmehrabi et al. which teaches that co-crystals are characterized by an X-ray powder diffraction pattern using a CuKα radiation.
Regarding claims 10-12, Adams et al. teaches presenting the compounds as the active ingredient as a pharmaceutical composition. Such compositions include the compound and one or more excipients (paragraph 0241). Routs of administration include oral as well as injectable (paragraph 0245). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patent ‘919, Adams et al., Mirmehrabi et al. and Thayyil et al. and utilize the adduct as a pharmaceutical composition. One skilled in the art would have been motivated to utilize with a pharmaceutical composition as it is a well-known way to administer compounds as taught by Adams et al.
Regarding claims 13-20, Patent ‘919 claims the compounds can be used in inducing STING-dependent type I interferon production. Adams et al. teaches the compounds can be used in treating cancer (claims). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patent ‘919, Adams et al., Mirmehrabi et al. and Thayyil et al. and utilize the compounds in know ways in which compounds which modulate STING are useful such as those in Patent ‘919 and Adams et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABIGAIL VANHORN whose telephone number is (571)270-3502. The examiner can normally be reached M-Th 6 am-4 pm EST.
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/ABIGAIL VANHORN/Primary Examiner, Art Unit 1636