DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 15 January 2026 has been entered.
By the above submission, Claims 21, 27, 35, and 36 have been amended. No claims have been added or canceled. Claims 21-40 are currently pending in the present application.
Response to Amendment
As noted below, the submission filed on 15 January 2026 is not fully responsive under 37 CFR 1.111. In particular, the response does not clearly fully comply with the requirement of 37 CFR 1.111(b) that Applicant must reply to every ground of objection and rejection in the prior Office action, as detailed below, or the requirement of 37 CFR 1.111(c) that Applicant must clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited and must also show how the amendments avoid such references. As a courtesy and in order to advance prosecution of the present application, the present response has been considered as though it were fully responsive to the previous Office action; however, Applicant is reminded that further responses must fully comply with the requirements of 37 CFR 1.111.
Response to Arguments
Applicant's arguments filed 15 January 2026 have been fully considered but they are not persuasive.
As noted in the advisory action mailed 28 January 2026, the majority of Applicant's arguments appear to be repeated largely verbatim from the response filed 27 June 2025, which were addressed in the response to arguments (pages 2-5) in the final rejection mailed 03 November 2025. By the above request for continued examination, Applicant has merely requested entry and consideration of the previously submitted amendment and has not provided any further arguments or amendments in response to the advisory action.
Regarding the double patenting rejection, Applicant requests that the rejection be held in abeyance until the claims are otherwise allowable and also generally requests reconsideration in view of the amendments (page 9 of the present response). However, as per MPEP § 804 I.B.1, a complete response to a nonstatutory double patenting rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims or the filing of a terminal disclaimer in accordance with 37 CFR 1.321. As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated. Further, it is noted that the request for reconsideration in view of the amendments does not constitute a showing or explanation of how the rejected claims are patentably distinct from the reference claims. This does not fully comply with the requirement of 37 CFR 1.111(b) that Applicant must distinctly and specifically point out the supposed errors in the examiner’s action.
Regarding the rejection of Claims 21-40 under 35 U.S.C. 112(b) as indefinite, although Applicant states that the claims have been clarified (page 9 of the present response), it is noted that not all of the issues of indefiniteness set forth in the final Office action have been clearly acknowledged or addressed. For example, not all of the issues set forth in the independent claims have been clearly addressed. Further, Applicant does not appear to have acknowledged or addressed the specific rejections of dependent Claims 25, 26, 30, 31, 39, and 40. This is not fully responsive under 37 CFR 1.111(b), which requires that Applicant must reply to every ground of objection and rejection in the prior Office action.
Regarding the rejection of Claims 21-40 under 35 U.S.C. 102(a)(1) as anticipated by Olson et al, US Patent Application Publication 2015/0244734, and with particular reference to independent Claim 21, Applicant's arguments (see pages 10-12 of the present response) do not appear to clearly refer to the proposed amendments, but rather appear to be set forth with reference to the version of the claim as filed 08 August 2025 and rejected in the final Office action mailed 03 November 2025. As noted above, these arguments appear to be repeated largely verbatim from the previous response. Applicant is referred to the response to arguments set forth in the final Office action, which is repeated herein for Applicant’s convenience. In particular, with reference to Claim 21, Applicant argues that Olson fails to describe that additional threat modeling is performed in response to receipt of a new rule or new policy (see pages 15-18 of the present response, citing Olson, paragraphs 0004, 0080-0110, and 0129). However, it is submitted that Olson does disclose additional threat modeling being performed in response to receipt of a new rule or new policy. In paragraph 0086, Olson discloses that a sub-graph is identified and traversed in response to new data being added to the graph, where the traversal is partial (i.e. a portion of the graph) and includes the new data. This paragraph also refers to Tonn, US Patent 8650170, which discloses dynamic pattern matching where rules for checking for matches (analyzing) are newly generated each time analysis is performed (see column 2, lines 6-47), as discussed in paragraphs 0090-0109 of Olson. Similarly, the graph data of Olson is described as dynamic (changing as new information is learned) in paragraph 0129. Therefore, the overall teachings of Olson (including the reference to Tonn) disclose that the additional threat modeling is performed responsive to the new rule or policy as recited in the independent claims. To the extent that Tonn may not considered to be a part of the disclosures of Olson, an alternative rejection under 35 U.S.C. 103 has also been set forth as detailed below.
Applicant also states that the claims have been amended "to expedite allowance" (page 13 of the present response). This statement does not comply with the requirement of 37 CFR 1.111(b) that Applicant must point out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references, nor does it comply with the requirement of 37 CFR 1.111(c) that Applicant must clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited and must also show how the amendments avoid such references. It is also noted that Olson explicitly discloses rules to be applied by a rules engine (see, for example, paragraph 0082, rule engine 518; see also paragraph 0086, graph analytics engine).
Regarding the rejection of Claims 21-40 under 35 U.S.C. 101 as directed to abstract ideas without significantly more, Applicant again largely repeats verbatim the arguments from the response filed 27 June 2025 (see pages 14-16 of the present response). Although Applicant has stated that the claims have been amended (page 14 of the present response), Applicant does not appear to directly argue that the amendments have overcome the outstanding rejection. Applicant is again referred to the response to arguments set forth in the final Office action, which is repeated herein for Applicant’s convenience. In particular, Applicant argues that a technical improvement of reducing the use of computational and memory resources is provided by one or more additional elements (pages 14-15 of the present response, citing paragraph 0012 of the present specification). However, first, it is noted that the threat modeling is not clearly restricted to only a subset of the graph. For example, independent Claim 21 recites performing threat modeling on the first sub-graph and also on a second sub-graph which may or may not encompass the first sub-graph and which in combination could still result in performing threat modeling on the graph as a whole or in performing duplicative threat modeling on some portions of the graph, which does not clearly reduce the use of computational or memory resources. Further, the steps or functions of performing threat modeling and additional threat modeling are not “additional elements” but are parts of the abstract ideas themselves, and therefore cannot be relied upon to provide the practical application. See MPEP § 2106.05(a), which states that the judicial exception alone cannot provide the improvement. It is also noted that the courts have indicated that mere automation of manual processes may not be sufficient to show an improvement in computer functionality, as per MPEP § 2106.05(a) I. Applicant also generally refers to the Office’s subject matter eligibility examples 3, 4, and 47 and alleges that the claimed subject matter is eligible for similar reasons (page 20 of the present response); however, Applicant does not provide any explanation of how the present claims are similar to the cited examples. It is submitted that the present claims are more similar to the ineligible Claim 2 of example 47 rather than the eligible Claim 3 of example 47.
Therefore, for the reasons detailed above, the Examiner maintains the rejections as set forth below.
Specification
The objection to the disclosure is withdrawn in light of the amendments to the specification. Applicant’s cooperation is again requested in correcting any other errors of which applicant may become aware in the specification.
Double Patenting
The nonstatutory double patenting rejection of Claims 21, 27, 34, and 35 is maintained for the reasons detailed above.
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 21, 27, 34, and 35 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 5, 11, 12, 14, and 15 of U.S. Patent No. 12,019,742. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims are generally broader than and obvious variations of the patented claims. More specifically, pending Claim 21 recites a system corresponding to portions of the system of patented Claim 1 in combination with limitations of Claim 14. Determining the graph in Claim 21 corresponds to generating the graph in Claim 1; determining the sub-graph in Claim 21 corresponds to identifying the sub-graph in Claim 1; the steps of performing threat modeling in Claims 21 and 1 correspond, where patented Claim 1 recites additional details compared to pending Claim 21; and performing additional threat modeling relating to a new policy in Claim 21 corresponds to similar limitations in patented Claim 14. Similarly, pending Claim 27 recites a method corresponding to portions of the method of patented Claim 5 in combination with limitations of Claim 14, and pending Claim 35 recites a software implementation of a method corresponding to portions of the software of patented Claim 15 in combination with limitations of Claim 14. Further, pending Claim 34 recites features corresponding to patented Claims 11 and 12.
Claim Rejections - 35 USC § 101
The rejection of Claims 21-40 under 35 U.S.C. 101 as directed to abstract ideas is NOT withdrawn for the reasons detailed above.
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract ideas without significantly more.
Claim 21 recites a system that includes computing devices implementing a threat modeler configured to determine a graph, determine a first sub-graph in the graph, and perform threat modeling and additional threat modeling using analyzers. The function of determining the graph is a mathematical concept or mental process, because the graph could be drawn using pen and paper. The function of determining the sub-graph is also a mental process because it could be implemented by analyzing the written graph. The functions of performing threat modeling and additional threat modeling using rules is also a mental process because evaluating the rules could also be performed by inspection and analysis of the written sub-graphs. Mental processes are one of the groupings of abstract ideas set forth in MPEP § 2106.04(a)(2). Abstract ideas are judicial exceptions as per MPEP § 2106.04(I). See also Alice Corporation Pty. Ltd. v. CLS Bank International, et al, 573 U.S. 208, 110 USPQ2d 1976 (2014).
These judicial exceptions are not integrated into a practical application because the claim does not recite any use or further action with respect to the threat modeling. Nothing is done with the results of the threat modeling or additional threat modeling that would provide a practical application of the abstract idea. The recitation of functions being performed by a computing device or a generic “analyzer” or “engine” does not constitute anything more than mere instructions to implement the abstract idea on a computer or a limitation to a particular technological environment, as per MPEP § 2106.05(f) and (h). There is nothing that would result in a particular transformation, as per MPEP § 2106.05(c). The claims do not require the use of the abstract idea in conjunction with a particular machine or manufacture, as per MPEP § 2106.05(b). The abstract ideas are not clearly used to improve the functioning of a computer or to transform an article. There is no further step taken beyond performing analysis of data that would result in a practical application of the abstract ideas. There are no additional elements that apply or use the abstract idea in a meaningful way beyond merely linking the use of the judicial exception to a particular technological environment. Therefore, the claim is not directed to a practical application of the abstract ideas.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception for similar reasons as detailed above with respect to the question of a practical application of the judicial exception. Therefore, the claim as a whole, whether the functions are considered individually or as an ordered combination, is not directed to significantly more than the abstract idea. See also the 2019 Guidance.
Dependent Claims 22-26 only recite further details of the generation of the graph or policy, which only provide further detail of the abstract ideas, or additional steps such as generating or sending a notification of software components that violate a policy, which constitute insignificant post-solution activity as per MPEP § 2106.05(g). These do not provide any additional steps or features that would amount to a practical application of or significantly more than the abstract idea.
Claim 27 is directed to a method corresponding to the functions of the system of Claim 21 (i.e. determining a graph and a sub-graph and performing threat modeling), and is directed to abstract ideas for similar reasons as detailed above with respect to Claim 21. The method also does not recite any further step beyond performing analysis of data that would result in a practical application of the abstract ideas, nor does the method recite any additional steps or features that would amount to significantly more than the abstract ideas. Dependent Claims 28-34 only recite further details of the generation of the graph or details about the event data, which only provide further detail of the abstract ideas, or additional steps such as generating or sending a notification of software components that violate a policy, which constitute insignificant post-solution activity. These do not provide any additional steps or features that would amount to a practical application of or significantly more than the abstract idea.
Claim 35 is directed to computer-readable media storing instructions for performing a method similar to that of Claim 27 or performing functions similar to those of Claim 21. There is no particular structure recited in the body of Claim 35; rather, the claim is only limited by its functionality. This functionality is directed to abstract ideas for similar reasons as detailed above with respect to Claims 21 and 27. That the claims recite computer software does not constitute anything more than mere instructions to implement the abstract idea on a computer, as per MPEP § 2106.05(f). Therefore, the medium claim is also not directed to a practical application of the abstract idea or to significantly more than the abstract idea. Dependent Claims 36-40 only recite further details of the generation of the graph or details about the event data, which only provide further detail of the abstract ideas, or steps that constitute insignificant post-solution activity similar to those noted above. These do not provide any additional steps or features that would amount to a practical application of or significantly more than the abstract idea.
Based upon consideration of all of the relevant factors with respect to the claims as an ordered combination and as a whole, Claims 21-40 are determined to be directed to abstract ideas without a practical application and without significantly more, as detailed above. Therefore, based on the above analysis, the claimed inventions are not directed to patent eligible subject matter.
Claim Rejections - 35 USC § 112
The rejection of Claims 27-29 and 32-34 under 35 U.S.C. 112(b) as indefinite is withdrawn in light of the amendments to the claims. The rejection of Claims 1-26, 30, 31, and 35-40 under 35 U.S.C. 112(b) is NOT withdrawn because not all issues have been addressed and/or because the amendments have raised new issues, as detailed below.
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 21-26, 30, 31, and 35-40 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 21 recites “wherein perform threat modeling comprises determine” in line 11. The phrases “wherein perform” and “comprises determine” are grammatically unclear and not in proper idiomatic English. It is not clear what the subject of the verb “comprises” is intended to be. It appears that the verbs “perform” and “determine” are being used as nouns, which is not grammatically clear because they are not in infinitive or gerund form. The above ambiguities render the claim indefinite.
Claim 25 recites “being found, via the additional threat modeling, to match the new rule or to violate the new policy determines a violation of a policy for a security best practice” in lines 2-4. It is not clear what the subject of the verb “determines” is intended to be. Further, the term “security best practice” appears to be a relative term which is not clearly defined in the specification or claims and for which a standard of comparison to determine a best practice has not been set forth. See MPEP § 2173.05(b). The claim further recites “generate one or more notifications comprises generate a notification” in line 5. It is not clear what the subjects of the verbs “comprises” or “generate a notification” are intended to be.
Claim 26 recites “being found, via the additional threat modeling, to match the new rule or to violate the new policy determines a security threat or vulnerability for the corresponding software component” in lines 2-4. It is not clear what the subject of the verb “determines” is intended to be. Further, there is not clear antecedent basis for “the corresponding software component” in the claims (see also line 6). The claim further recites “generate one or more notifications comprises generate a notification” in line 5. It is not clear what the subjects of the verbs “comprises” or “generate a notification” are intended to be.
Claim 30 recites “a security best practice” in line 2. This appears to be a relative term which is not clearly defined in the specification or claims and for which a standard of comparison to determine a best practice has not been set forth. See MPEP § 2173.05(b). Further, it appears that “and” should be inserted at the end of line 2 or “wherein” should be inserted at the beginning of line 3.
Claim 31 recites “the software component” in line 7. It is not clear to which of the plural software components this is intended to refer.
Claim 35 recites “wherein perform threat modeling comprises determine” in line 10. The phrases “wherein perform” and “comprises determine” are grammatically unclear and not in proper idiomatic English. It is not clear what the subject of the verb “comprises” is intended to be. It appears that the verbs “perform” and “determine” are being used as nouns, which is not grammatically clear because they are not in infinitive or gerund form. The above ambiguities render the claim indefinite.
Claim 39 recites “security best practices” in line 3. This appears to be a relative term which is not clearly defined in the specification or claims and for which a standard of comparison to determine a best practice has not been set forth. See MPEP § 2173.05(b). The claim further recites “generate one or more notifications comprises generate a notification” in line 4. It is not clear what the subjects of the verbs “comprises” or “generate a notification” are intended to be.
Claim 40 recites “generate one or more notifications comprises generate a notification” in lines 2-3. It is not clear what the subjects of the verbs “comprises” or “generate a notification” are intended to be.
Claims not explicitly referred to above are rejected due to their dependence on a rejected base claim.
Claim Rejections - 35 USC § 102 or 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
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.
Claims 21-40 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Olson et al, US Patent Application Publication 2015/0244734, and Tonn, US Patent 8650170.
In reference to Claim 27, Olson discloses a method that includes determining a graph including nodes representing software components and edges representing relationships between components (see paragraphs 0023-0024, for example, describing nodes and edges; see also Figure 3, steps 302-310, and paragraphs 0051-0071 describing how the nodes and edges in the graph are generated), determining a sub-graph associated with an event indicative of a change to one or more nodes or edges (Figure 6, step 602, and paragraph 0086, identifying sub-graphs), and performing threat modeling on the sub-graph using analyzers to determine whether the sub-graph complies with one or more policies based on application of rules by a rules engine (paragraphs 0080-0109, rules, i.e. policies, applied in sub-graphs, noting rule engine 518) and performing additional threat modeling responsive to receipt of a new rule or policy (see paragraphs 0080-0109, rules, i.e. policies, applied in sub-graphs, noting the inclusion of new data in paragraphs 0086-0088, where the rules/policies for checking for matches, i.e. analyzing, are newly generated each time analysis is performed as disclosed in the referenced Tonn, US Patent 8650170, which discloses dynamic pattern matching at column 2, lines 6-47, and corresponds to the graph data of Olson changing as new information is learned as described in paragraph 0129). To the extent that the techniques of Tonn for matching rules to sub-graphs as referenced by Olson (see paragraphs 0082, 0086, and 0090) may be considered to be part of the disclosure of Olson, then the combined disclosures of Olson and Tonn anticipate the new rule or policy as described above. However, noting that Olson does not explicitly incorporate by reference the disclosure of Tonn, it would nevertheless also have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Olson to include the definition of new rules as taught by Tonn, as explicitly suggested by Olson (paragraphs 0082, 0086, and 0090), in order to provide dynamic pattern matching (see Tonn, column 2, lines 6-13).
In reference to Claim 28, Olson further discloses rolling out new rules or policies over different time periods (see paragraph 0129).
In reference to Claims 29-33, Olson further discloses determining that nodes fail to comply with one or more policy and sending a notification to an owner (see paragraphs 0089-0109, events failing to comply with rules, sending alerts).
In reference to Claim 34, Olson further discloses static or dynamic (runtime) analysis (paragraphs 0057, 0065, static; paragraph 0129, dynamic).
Claims 21-26 are directed to systems having functionality corresponding to the methods of Claims 27, 28, and 30-33, and are rejected by a similar rationale, mutatis mutandis.
Claims 35-40 are directed to software implementations of the methods of Claims 27, 28, and 30-33, and are rejected by a similar rationale, mutatis mutandis.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zachary A Davis whose telephone number is (571)272-3870. The examiner can normally be reached Monday-Friday, 9:00am-5:30pm, Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rupal D Dharia can be reached at (571) 272-3880. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Zachary A. Davis/Primary Examiner, Art Unit 2492