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
Acknowledgement is made this application claims benefit of Provisional Application 63/537,937 filed on 09/12/2023.
Requirement for Information under 37 C.F.R. § 1.105
1. Applicant and the assignee of this application are required under 37 CFR 1.105 to provide the following information that the examiner has determined is reasonably necessary to the examination of this application.
2 An issue of public use or on sale activity has been raised in this application. In order for the examiner to properly consider patentability of the claimed invention under 35 U.S.C. 102 a (1), additional information regarding this issue is required. The Examiner, upon conducting a search for prior arts specifically related to the inventor and digitizing Gold discovered an article dated March 29, 2022 in How Would Digitizing Global Supply Chain of Gold Bars Affect Investors. The second article “Digital Gold Asset Are Coming” dated September 29, 2023 by Rory Gillen quotes from Inventor David Tait related to digitizing gold and its standardization ” (see attached Google Search Results on invention and inventor). The Non-Patent Literature of LBMA/World Gold Council dated March 22, 2022 submitted by the applicant (see reference 102 in IDS dated 08/27/2024 submitted by the applicant) discusses “digitize the global supply chain of gold bars” and “create an immutable record of a gold bar’s place of origin and chain of custody” and quote of the inventor David Tait with respect to “gold has been responsibly and sustainably produced and tracing origin of gold bars.”
In response to this requirement, please provide:
i) the dates and the extent to which the claimed invention was put into use by the Applicant and to demonstrate with any relevant documentation, specifically, that the use is experimental and not subject to the 35 USC 102 (a) (1) statutory bar for public use more than one year prior to the date of filing of the Application.
ii) the citation and a copy of each publication which any of the applicants authored or co-authored and which describe the disclosed subject matter.
iii) the names of any products or services that have incorporated the claimed subject matter.
3. In responding to those requirements that require copies of documents, where the document is a bound text or a single article over 50 pages, the requirement may be met by providing copies of those pages that provide the particular subject matter indicated in the requirement, or where such subject matter is not indicated, the subject matter found in applicant's disclosure.
4. The fee and certification requirements of 37 CFR 1.97 are waived for those documents submitted in reply to this requirement. This waiver extends only to those documents within the scope of this requirement under 37 CFR 1.105 that are included in the applicant's first complete communication responding to this requirement. Any supplemental replies subsequent to the first communication responding to this requirement and any information disclosures beyond the scope of this requirement under 37 CFR 1.105 are subject to the fee and certification requirements of 37 CFR 1.97.
5. The applicant is reminded that the reply to this requirement must be made with candor and good faith under 37 CFR 1.56. Where the applicant does not have or cannot readily obtain an item of required information, a statement that the item is unknown or cannot be readily obtained may be accepted as a complete reply to the requirement for that item.
6. This requirement is an attachment of the enclosed Office action. A complete response to the enclosed Office action must include a complete response to this requirement. The time period for reply to this requirement coincides with the time period for reply to the enclosed Office action, which is THREE months.
Supervisory Patent Examiner (SPE)
/ABHISHEK VYAS/ Supervisory Patent Examiner, Art Unit 3691
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
3. Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations 21 in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 101
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 1-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. ____ (2014).
In the instant case, Claims 1-21 are directed to system and method for identifying a physical asset, generating the SGU token and linked PWL token and storing the SHU token and the PWL token immutably. The claims 1-21 are analyzed to see if claims are statutory category of invention, recites judicial exception and the claims are further analyzed to see if the claims are integrated into practical application if the judicial exception is recited and the claims provides an inventive as per 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) and October 2019 Update: Subject Matter Eligibility as set forth below:
Analysis:
Step 1: Statutory Category? This part of the eligibility analysis evaluates whether the claim falls within any statutory category. MPEP 106.03.
Claim 1 and 21 are directed to system comprising a server with memory and database for immutably storing tokens. The claimed system is therefore directed to a statutory category, i.e., a machine (a combination of device) (Step 1: YES).
Claim 10 is directed to a process i.e., a series of method steps or acts, of immutably storing tokens which is a non-statutory categories of invention as it failed to positively recite the particular machine/processor to which it is tied, for example, by identifying the apparatus that accomplishes the method steps (Step 1: NO) (see U.S.C. 101 Rejection above).
Claim 20 is directed to a non-transitory computer-readable storage media, which is a manufacture. The claim, thus a statutory category of invention (Step 1: YES).
Step 2A - Prong 1: Judicial Exception Recited? This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04(II) and the October 2019 Update, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim. There are no nature- based product limitations in this claim, and thus the markedly different characteristics analysis is not performed. However, the claim still must be reviewed to determine if it recites any other type of judicial exception.
Claims 1, 10, 21 and 22 are similar and they are then analyzed to determine whether it is directed to a judicial exception.. The claim recite plurality of steps of “identifying a physical asset to be represented by a standardized gold unit (SGU) token and a unique and linked Purity, Weight & Location (PWL) token; generating the SGU token; generating the linked PWL token.”
The limitations of identifying a physical asset to be represented, generating the SGU and the linked PWL token, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “server/processor,” nothing in the claim element precludes the step from practically being performed in the mind and thus fall within the “mental processes” grouping of abstract idea set forth in the 2019 PEG. 2019 PEG Section I, 84 Fed. Reg. at 52. For example, but for the “executed by processor” language, “identifying a physical asset and generating token for identified asset” in the context of this claim encompasses the user manually identification and generating token” The recitation of a processor in this claim does not negate the mental nature of these limitations because the claim here merely uses the processor as a tool to perform the otherwise mental processes. See October Update at Section I(C)(ii). Thus, the above limitations of recite concepts that fall into the “mental process” grouping of abstract ideas. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas (YES).
Step 2A - Prong 2: Integrated into a Practical Application? This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. 2019 PEG Section III(A)(2), 84 Fed. Reg. at 54-55.
Besides the abstract idea as described in Prong 1, the claim recites the additional elements of the computing device performing “immutably storing the SHU token and the PWL token.”
An evaluation of whether limitations are insignificant extra-solution activity is then performed. Note that because the Step 2A Prong 2 analysis excludes consideration of whether a limitation is well-understood, routine, conventional activity (2019 PEG Section III(A)(2), 84 Fed. Reg. at 55), this evaluation does not take into account whether or not limitation (a) is well-known. See October 2019 Update at Section III.D. When so evaluated, this additional element represents mere storing generated in a blockchain which is immutable that is necessary for use of the recited judicial exception. The server/processor is also an additional element which is configured to carry out limitations for that is used in steps described in Prong 1. But the server/processor is recited so generically without any details that it represents no more than mere instructions to apply the judicial exceptions on a computer. It can also be viewed as nothing more than an attempt to generally link the use of the judicial exceptions to the technological environment of a controller. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of the computer does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014). Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception (Step 2A: NO).
Step 2B: Claim provides an Inventive concept? This part of the eligibility analysis evaluates whether the claim as a whole amounts to significantly more than the recited exception, i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. MPEP 2106.05.
As explained with respect to Step 2A Prong 2, there are two additional elements.
The first is the computing device/server/processor, which is configured to perform all the limitations recited. As explained previously, the computing device is at best the equivalent of merely adding the words “apply it” to the judicial exception. Mere instructions to apply an exception cannot provide an inventive concept. The second additional element is limitation of immutably storing the SHU token and the PWL token, which as explained previously is extra-solution activity, which for purposes of Step 2A Prong Two was considered insignificant. Under the 2019 PEG, however, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B. 2019 PEG Section III(B), 84 Fed. Reg. at 56. At Step 2B, the evaluation of the insignificant extra-solution activity consideration takes into account whether or not the extra-solution activity is well-known. See MPEP 2106.05(g). Here, the recitation of a computing device for storing generated data is distributed ledger/blockchain which is not invented by the applicant, recited at a high level of generality, and, as disclosed in the specification, is also well-known. This limitation therefore remains insignificant extra-solution activity even upon reconsideration. Thus, limitation (a) does not amount to significantly more. Even when considered in combination, these additional elements represent mere instructions to apply an exception and insignificant extra-solution activity, which do not provide an inventive concept (Step 2B: NO). The claim is not eligible.
Further, Applicant specifically described invention is to implement calculating a spread price using a mathematical equation that is based on a trading spread (see Specification: paragraph [0018-0022, 0088-0098]). The claimed additional elements of executing spread module in response to receiving request from input device is implemented using examples of existing computer networking equipment, hardware, and software that are used to construct the claimed invention without apparent modification (see Fig. 3; Specification: paragraph [0057-0063]]). Therefore, the additional element only recite generic components and steps are well-understood routine and conventional. Claims as recited do not provide any particular asserted inventive technology for performing those functions and therefore the claims are held patent ineligible (see Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claims is not patent eligible. (NO).
Dependent Claims:
Examiner further reviewed the dependent claims 2-9 and 11-19 that could be added to the independent claims to make patent eligible. The dependent claims as recited pertains to additional steps which further describes physical asset, authorization based on validation, secure repository, redeem/exchange/buy/sell of token, storing token in distributed ledger, ownership transfer of token which appear to be a mental process using a generic computer component that been found to be an abstract idea as described above. These dependent claims do not provide additional elements significantly more than the purported abstract idea that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The dependent claims as recited would not make the independent claim significantly more by incorporating them into the independent claims. Therefore, claims 1-21 are not patent eligible (NO).
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.
Claims 1-21 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Pierce et al. European Patent Application No. EP 3432240 A1 (reference 85 of IDS dated 08/27/2024 submitted by the applicant).
As per claim 1, Pierce et al. teach a system comprising:
at least one server having memory; a database stored in memory (see Fig. 2, Server (200): Memory (204): Instructions (212); Drive Unit (306): Computer Readable Medium (210)/Instructions (212); paragraph [0063-0068]; where instructions or data or database is stored in memory/computer readable medium),
wherein the database stores information associated with of a unique and linked standardized gold unit (SGU) token and a unique and linked Purity, Weight & Location (PWL) token (see Fig. 7: Digital Tradable Token, DTT (702); Inventory Token, IT (706): paragraph [0038, 0044-0046 and 0139]; where DTT is share of ownership denominated by weight of entirety of gold linked to inventory token specifying refiner, the year of manufacture, a serial number and assayed fineness of the gold),
wherein the database retains a unique number for each stored PWL token; wherein an account number of a PWL token is changeable (see Fig. 9B:paragraph [0047, 0147, 0152-0153]); and
wherein information associated with the unique and linked SGU token and the PWL token cannot be changed in the database (see paragraph [0047-0048, 0050]; where Digital Token and Inventory Token are added blockchain which is immutable/unchangeable) .
As per claims 2-3, Pierce et al. teach claim 1 as described above. Pierce et al. further teach the system, wherein
the SGU token and the PWL token are associated with a physical asset, and the physical asset is gold (see abstract, paragraph [0048]; where the token is associated with a physical asset, e.g., Gold).
As per claim 4, Pierce et al. teach claim 2 as described above. Pierce et al. further teach the system, wherein
authorization from an authorized SGU creator provides validation that the physical asset exists and conforms with integrity standards (see Fig. 8, Step 806: paragraph [0165-0168, 0171]; where quantity and fineness of gold associated with digital token and inventory token validated to meet predetermined relationship).
As per claim 5, Pierce et al. teach claim 2 as described above. Pierce et al. further teach the system, wherein
the physical asset is stored in a secure repository (see paragraph [0033]; where gold is stored in secured vault and audited regularly).
As per claim 6, Pierce et al. teach claim 2 as described above. Pierce et al. further teach the system, wherein
the physical asset is stored in a secure repository and redeemable or exchangeable upon presentation of the SGU token (see paragraph [0032, 0041, 0043, 0052, 0153]).
As per claim 7, Pierce et al. teach claim 1 as described above. Pierce et al. further teach the system, wherein
the SGU token and the PWL token are stored on a distributed ledger (see paragraph [0043, 0047 and 0050]).
As per claim 8, Pierce et al. teach claim 1 as described above. Pierce et al. further teach the system, wherein
the SGU token is able to be bought, sold, exchanged, traded, auctioned, and/or bartered (see Fig. 9A, 9B and 9C, paragraph [0020, 0154, 0179]).
As per claim 9, Pierce et al. teach claim 1 as described above. Pierce et al. further teach the system, wherein
the SGU token and PWL token provide a useful, concrete and tangible product that does not require physically relocating an underlying physical asset to effect an ownership transfer of the physical asset (see paragraph [0039, 0149, 0152]; where token pride transfer ownership of gold without moving or relocating the gold as a physical asset).
As per claim 10, Pierce et al. teach a method comprising:
identifying a physical asset to be represented by a standardized gold unit (SGU) token and a unique and linked Purity, Weight & Location (PWL) token (see paragraph [0190]; where physical metal asset is identified based on metal refiner, year of manufacture, a serial number, an assayed fineness and weight);
generating the SGU token; generating the linked PWL token and immutably storing the SHU token and the PWL token (see paragraph [0048]; where Digital Tradable Token and Inventory Token is generated and added to block chain serving as an immutable record).
As per claim 11, Pierce et al. teach claim 10 as described above. Pierce et al. further teach the system comprising
validating existence, quality and integrity of the physical asset (see Fig. 8, Step 806: paragraph [0165-0168, 0171]; where quantity and fineness of gold associated with digital token and inventory token validated to meet predetermined relationship).
As per claim 12, Pierce et al. teach claim 10 as described above. Pierce et al. further teach the system comprising
exchanging the SGU token for the physical asset (see paragraph [0040-0041]; Digital token exchanged for physical asset Gold).
As per claim 13, Pierce et al. teach claim 10 as described above. Pierce et al. further teach the system, wherein
the generating and storing steps are a digitization of the physical asset (abstract, paragraph [0039-0041]; where issuer generate digital token for gold on blockchain and exchange with fiat currency).
As per claim 14, Pierce et al. teach claim 10 as described above. Pierce et al. further teach the system comprising
a SGU token holder buying, selling, exchanging, trading, auctioning, and/or bartering the SGU token (see Fig. 9A, 9B and 9C, paragraph [0020, 0154, 0179]).
As per claim 15, Pierce et al. teach claim 10 as described above. Pierce et al. further teach the system, wherein
the immutably storing is on a distributed ledger (see paragraph [0048]).
As per claim 16, Pierce et al. teach claim 10 as described above. Pierce et al. further teach the system comprising
receiving authorization from a SGU creation administrator to generate the SGU token. (see paragraph [0039, 0165]).
As per claims 17-18, Pierce et al. teach claim 10 as described above. Pierce et al. further teach the system comprising
the SGU token and the PWL token are associated with a physical asset and the physical asset is gold (see abstract, paragraph [0048]; where the token is associated with a physical asset, e.g., Gold).
As per claim 19, Pierce et al. teach claim 17 as described above. Pierce et al. further teach the system comprising
redeeming or exchanging the physical asset from a secured repository upon presentation of the SGU token (see paragraph [0032, 0041, 0043, 0052, 0153]).
As per claim 20, Pierce et al. teach a non-transitory computer-readable information storage media having instructions stored thereon, that when executed by one or more processors ((see Fig. 2, Processor (202), Memory (204): Instructions (212); Drive Unit (306): Computer Readable Medium (210)/Instructions (212)), perform a method comprising steps as described in the claim 10 above.
As per claim 21, Pierce et al. teach a system comprising:
means for identifying a physical asset to be represented by a standardized gold unit (SGU) token and a unique and linked Purity, Weight & Location (PWL) token (see paragraph [0190]; where physical metal asset is identified based on metal refiner, year of manufacture, a serial number, an assayed fineness and weight);
means for generating the SGU token; means for generating the linked PWL token (see abstract, paragraph [0039-0041]; where issuer generate digital token for gold on blockchain and exchange with fiat currency); and
means for immutably storing the SHU token and the PWL token (see paragraph [0048]; where Digital Tradable Token and Inventory Token is generated and added to block chain serving as an immutable record).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosures. The following are pertinent to current invention, though not relied upon:
Akunuri et al. (U.S. Pub No. 2024) teach identifying, validating and transferring soft or hard physical asset using digital surrogate.
Choi (U.S. Pub No. 2024/0095727) teaches virtual asset value in real asset having virtual asset value.
Gagne-Keats et al. (U.S. Pub No. 2023/0239152) teach linking digital and physical non-fungible items.
De Jong et a. (U. S. Patent No. 1,657,595) teach tokenization of asset-backed digital assets.
Marques (U.S. Pub No. 2025/0086711) teaches linking cryptocurrency to a physical asset.
Responsible Gold Operations Ltd. (WO 2018/209148) teach tokenization of asset-backed digital assets
Gillen, Rory (2023) teaches digital gold assets.
Bizouti-Kennedy, Yael (2022) teaches digitized gold bar supply chain affecting investors
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BIJENDRA K SHRESTHA whose telephone number is (571)270-1374. The examiner can normally be reached on 8:00AM-5:00PM.
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, Abhishek Vyas can be reached on (571) 270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Respectfully submitted,
/BIJENDRA K SHRESTHA/Primary Examiner, Art Unit 3691 11/21/2025