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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1, and 3-5 in the reply filed on 06/03/2026 is acknowledged.
Claims 2, and 6-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups II, III, and IV, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/03/2026.
Status of the Claims
Claims 1-16 are pending. Claims 2, and 6-16 have been withdrawn.
Claims 1, 3-5 are currently under examination.
Information Disclosure Statement
Initialed and dated copies of Applicants’ information disclosure statement (IDS) filed on 05/22/2024 and 07/07/2025 are attached to the instant Office action. The submission 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.
Claim 3 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 3 recites the limitation "the poorly soluble progerinin drug" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Dong et al. (WO2016025643A1, Published 02/18/2016) in view Joon et al. (WO2018199633A1, Published 11/01/2018; cited in the IDS filed 05/22/2024) in further view of Shaw et al. (US20090004262A1, Published 01/01/2009).
Applicant’s invention
The Applicants claims are drawn to a nanosuspension comprising progerinin, the nanosuspension comprising: (a) 1 to 10 wt% of a progerinin compound represented by the following Chemical Formula 1; (b) 0.5 to 5 wt% of hydroxypropyl methylcellulose (HPMC) which is a polymeric suspension; (c) 0.5 to 5 wt% of D-a-tocopherol polyethylene glycol succinate (TPGS) which is a solubility enhancer; and (d) 0.1 to 0.5 wt% of potassium sorbate which is a preservative:
[Chemical Formula 1]
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wherein the progerinin compound is drug particles formed via wet type ball milling in an average particle diameter (D50) of 100 nm to 300 nm.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claims 1 and 3, Dong teaches methods, kits, and uses of the PGALs or compositions for delivering an agent to a subject, tissue, or cell and for treating and/or preventing in a subject diseases such as musculoskeletal diseases; wherein the compositions include a described PGAL and an agent (e.g., polynucleotide, small molecule, peptide, or protein) (abstract). Dong continues to teach in certain embodiments, an musculoskeletal disease is Werner Syndrome (paragraph [00122]). Dong also teaches a described composition including a polymer described herein may be in the form of particles (i.e., nanoparticles) (paragraph [0020]); wherein The term "nanoparticle" refers to a particle having a characteristic dimension of less than about 1 micrometer and at least about 1 nanometer (paragraph [0096]). Dong further teaches exemplary antifungal preservatives include potassium sorbate (paragraph [00349]). Dong also teaches that for oral and parenteral administration, the dosage can be in the form of a suspension (i.e., nanosuspension), wherein the oral dosage form also comprises solubilizing agents such as isopropyl alcohol, ethyl carbonate, propylene glycol, cyclodextrins (paragraph [00357]). Dong continues to teach exemplary surface active agents such as hydroxypropyl methylcellulose (paragraph [00343]). Dong further teaches relative amounts of the active ingredient, excipient, and any additional ingredients in the composition will vary depending upon the identity, size, and/or condition of the subject to whom the composition is administered and further depending upon the route by which the composition is to be administered (paragraph [00339]). Dong continues to teach a composition that includes a polymer and agent described herein may be in the form of a particle (paragraph [00405]). The Examiner notes that instant claim 1 uses product by process language, wherein the drug particles are formed via wet type ball milling. "[E]ven 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113 (I).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Dong does not teach progerinin and D-α-tocopherol polyethylene glycol succinate (TPGS) which is a solubility enhancer. However these deficiencies are cured by Joon et al. and Shaw et al.
In the analogous art of oral administration, Joon teaches a pharmaceutical composition for preventing or treating aging-related diseases comprising a compound represented by the following Formula 1 or a pharmaceutically acceptable salt thereof: [Formula 1]
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(claim 1); wherein the aging-related disease is progeria (claim 4); The pharmaceutical composition according to claim 4, wherein the progeria is selected from the group consisting of Werner syndrome (claim 5). Joon also teaches oral liquid preparations include suspensions and formulations for parenteral administration include suspensions (paragraph 25).
In the analogous art of nanoparticulate compositions, Shaw teaches nanoparticulate formulations of drugs having an aqueous solubility of less than 1 mg/ml in a pH of about 7.4 which provide enhanced stability, physical and chemical properties and can provide enhanced pharmacokinetic properties to achieve an optimal balance between pharmacodynamic and side effect profiles in mammals, and dosage forms containing the same, as well as methods of making nanoparticulate drug formulations and their use in the treatment of various disorders (paragraph [0002]). Shaw also teaches the drug compositions described herein can be formulated for administration to a subject via any conventional means including, but not limited to, oral, parenteral administration routes (paragraph [0179]), such as aqueous oral suspensions (paragraph [0180]). Shaw further teaches “solubilizers” include compounds such as ethyl oleate, ethyl caprylate, vitamin E TPGS (i.e., D-α-tocopherol polyethylene glycol succinate (TPGS)), ethanol, n-butanol, isopropyl alcohol, cholesterol, bile salts, polyethylene glycol 200 to 600, propylene glycol, and dimethyl glycerol, and the like (paragraph [0070]).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to add progerinin to Dong’s pharmaceutical composition. Dong teaches methods, kits, and uses of the PGALs or compositions for delivering an agent to a subject, tissue, or cell and for treating and/or preventing in a subject diseases such as musculoskeletal diseases (abstract), wherein an musculoskeletal disease is Werner Syndrome (paragraph [00122]). One would have understood in view of Joon a pharmaceutical composition for preventing or treating aging-related diseases comprising a compound represented by the following Formula 1 or a pharmaceutically acceptable salt thereof: [Formula 1]
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(claim 1); wherein the aging-related disease is progeria (claim 4); wherein the progeria is selected from the group consisting of Werner syndrome (claim 5). It would have been obvious to one of ordinary skill to add progerinin to Dong’s pharmaceutical composition because Dong teaches methods, kits, and uses of the PGALs or compositions for delivering an agent (e.g., polynucleotide, small molecule, peptide, or protein) to a subject, tissue, or cell and for treating and/or preventing in a subject diseases such as musculoskeletal diseases (abstract); wherein an musculoskeletal disease is Werner Syndrome (paragraph [00122]) and Joon teaches a pharmaceutical composition for preventing or treating aging-related diseases comprising a compound represented by the following Formula 1 or a pharmaceutically acceptable salt thereof: [Formula 1]
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(i.e., small molecule) (claim 1); wherein the aging-related disease is progeria (claim 4); wherein the progeria is selected from the group consisting of Werner syndrome (claim 5). Therefore, progerinin is suitable for the purpose of an agent used for preventing or treating Werner syndrome. See MPEP 2144.07.
With regards to D-α-tocopherol polyethylene glycol succinate (TPGS) which is a solubility enhancer, it would have been obvious to use D-α-tocopherol polyethylene glycol succinate (TPGS) which is a solubility enhancer in Dong’s pharmaceutical composition. Dong teaches that for oral and parenteral administration, the dosage can be in the form of a suspension, wherein the oral dosage form also comprises solubilizing agents such as isopropyl alcohol, ethyl carbonate, propylene glycol, cyclodextrins, polyethylene glycols (paragraph [00357]). One would have understood in view of Shaw that nanoparticulate formulations of drugs described herein can be formulated for administration to a subject via any conventional means including, but not limited to, oral, parenteral administration routes (paragraph [0179]), such as aqueous oral suspensions (paragraph [0180]). Shaw further teaches “solubilizers” include compounds such as ethyl oleate, ethyl caprylate, vitamin E TPGS (i.e., D-α-tocopherol polyethylene glycol succinate (TPGS)), ethanol, n-butanol, isopropyl alcohol, cholesterol, bile salts, polyethylene glycol 200 to 600, propylene glycol, and dimethyl glycerol, and the like (paragraph [0070]). It would have been obvious to one of ordinary skill to use D-α-tocopherol polyethylene glycol succinate (TPGS) which is a solubility enhancer in Dong’s pharmaceutical composition because Dong teaches solubilizing agents such as isopropyl alcohol, ethyl carbonate, propylene glycol, cyclodextrins (paragraph [00357]) and Shaw teaches vitamin E TPGS (i.e., D-α-tocopherol polyethylene glycol succinate (TPGS)) as well as isopropyl alcohol, propylene glycol, cyclodextrins, polyethylene glycol 200 to 600. Therefore it would have been prima facie obvious to exchange or combine known solubilizers described by Dong with known solubilizer vitamin E TPGS (i.e., D-α-tocopherol polyethylene glycol succinate (TPGS)) (as taught by Shaw) because these substances were known to serve the same purpose. See MPEP 2144.06.
With regards to the amounts of the progerinin, hydroxypropyl methylcellulose, D-α-tocopherol polyethylene glycol succinate (TPGS), and potassium sorbate, it would have been prima facie obvious to one of ordinary skill in the art to optimize the amounts of these ingredients. Dong teaches relative amounts of the active ingredient, excipient, and any additional ingredients in the composition will vary depending upon the identity, size, and/or condition of the subject to whom the composition is administered and further depending upon the route by which the composition is to be administered (paragraph [00339]). Therefore, it would have been obvious to optimize the amounts by routine experimentation of the progerinin, hydroxypropyl methylcellulose, D-α-tocopherol polyethylene glycol succinate (TPGS), and potassium sorbate based on the identity, size, and/or condition of the subject to whom the composition is administered and further depending upon the route by which the composition is to be administered (paragraph [00339]) as taught by Dong to achieve the desired results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In addition, according to the MPEP, “It is to be presumed also that skilled workers would as a matter of course, if they do not immediately obtain desired results, make certain experiments and adaptations, within the skill of the competent worker.” (MPEP 716.07).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Dong et al. (WO2016025643A1, Published 02/18/2016) in view Joon et al. (WO2018199633A1, Published 11/01/2018; cited in the IDS filed 05/22/2024) in further view of Shaw et al. (US20090004262A1, Published 01/01/2009) further in view of Ryde et al (US20080152585A1, Published 06/26/2008).
Applicant’s invention
Dong, Joon, and Shaw render obvious all the limitations of claim 1. Applicants claim 4 further adds the limitations wherein a viscosity of the nanosuspension is 2 to 8.5 mPa.s.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 4, Dong teaches besides inert diluents, the oral compositions can include adjuvants such as suspending agents (i.e., viscosity enhancers) (paragraph [00357]).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Dong, Joon, and Shaw does not teach wherein a viscosity of the nanosuspension is 2 to 8.5 mPa.s. However this deficiency is cured by Ryde et al.
In the analogous art of liquid dosage forms of nanoparticulate active agents, Ryde teaches the liquid dosage forms of the invention comprise stable dispersions of nanoparticulate active agents. A stable dispersion allows high solids loading while maintaining homogeneity and consistent rheological behavior. For dispersions, stability implies that the particles of the invention are dominated by Brownian motion, whereas inertia and gravity have a larger effect on the behavior of suspensions of larger particles, such as those in conventional liquid dosage forms of the same active agents (paragraph [0050]). Ryde further teaches the liquid dosage forms of the invention provide significant advantages over conventional viscous liquid dosage forms or large solid dosage forms. Depending on the active agent, these advantages may include for example: (1) high dose loading; (2) improved performance characteristics for oral, intravenous, subcutaneous, or intramuscular injection; (3) avoidance of organic solvents or pH extremes; (4) longer active agent dose retention in blood and tumors for some active agents; (5) elimination of fed-fasted effects; (6) more rapid absorption of active agents; (7) better patient compliance due to the perception of a lighter formulation which is easier to consume and digest; (7) ease and accuracy of dispensing due to low viscosity; (8) potential smaller dose volume resulting from a higher concentration of active agent ingredient, and thus less volume for the patient to consume; (9) easier overall formulation concerns; (10) liquid dosage forms suitable for parenteral administration; (11) the liquid dosage forms can be sterile filtered; and (12) increased bioavailability of an active agent (paragraph [0035]). Ryde also teaches the invention provides liquid dosage forms having a low viscosity. Viscosity is concentration and temperature dependent (paragraph [0054]); wherein low viscosity is an important feature for oral administration of liquids when treating patients with difficulty in swallowing or in patients who suffer from symptoms including nausea and vomiting. Low viscosity is an especially important feature in injectable formulations. Typically the viscosity of the liquid dosage forms of the invention, at a shear rate of 0.1 (1/s), are from about 10 mPa·s to about 1 mPa·s (paragraph [0055]).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have a viscosity of the nanosuspension is 2 to 8.5 mPa.s for Dong’s pharmaceutical composition. Dong teaches besides inert diluents, the oral compositions can include adjuvants such as suspending agents (i.e., viscosity enhancers) (paragraph [00357]). The artisan of ordinary skill would have been motivated to have a viscosity of the nanosuspension is 2 to 8.5 mPa.s because Ryde teaches the liquid dosage forms of the invention provide significant advantages over conventional viscous liquid dosage forms or large solid dosage forms. Depending on the active agent, these advantages may include for example: (1) high dose loading; (2) improved performance characteristics for oral, intravenous, subcutaneous, or intramuscular injection; (3) avoidance of organic solvents or pH extremes; (4) longer active agent dose retention in blood and tumors for some active agents; (5) elimination of fed-fasted effects; (6) more rapid absorption of active agents; (7) better patient compliance due to the perception of a lighter formulation which is easier to consume and digest; (7) ease and accuracy of dispensing due to low viscosity; (8) potential smaller dose volume resulting from a higher concentration of active agent ingredient, and thus less volume for the patient to consume; (9) easier overall formulation concerns; (10) liquid dosage forms suitable for parenteral administration; (11) the liquid dosage forms can be sterile filtered; and (12) increased bioavailability of an active agent (paragraph [0035]). Ryde also teaches the invention provides liquid dosage forms having a low viscosity. Viscosity is concentration and temperature dependent (paragraph [0054]); wherein low viscosity is an important feature for oral administration of liquids when treating patients with difficulty in swallowing or in patients who suffer from symptoms including nausea and vomiting. Low viscosity is an especially important feature in injectable formulations. Typically the viscosity of the liquid dosage forms of the invention, at a shear rate of 0.1 (1/s), are from about 10 mPa·s to about 1 mPa·s (paragraph [0055]). The skilled artisan would have had a reasonable expectation of success because Dong teaches that for oral and parenteral administration, the dosage can be in the form of a suspension, wherein the oral dosage form can include adjuvants such as suspending agents (i.e., viscosity enhancers) (paragraph [00357]), and Ryde teaches low viscosity is an important feature for oral administration of liquids when treating patients with difficulty in swallowing or in patients who suffer from symptoms including nausea and vomiting and also that low viscosity is an especially important feature in injectable formulations. Typically the viscosity of the liquid dosage forms of the invention, at a shear rate of 0.1 (1/s), are from about 10 mPa·s to about 1 mPa·s (paragraph [0055]).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Dong et al. (WO2016025643A1, Published 02/18/2016) in view Joon et al. (WO2018199633A1, Published 11/01/2018; cited in the IDS filed 05/22/2024) in further view of Shaw et al. (US20090004262A1, Published 01/01/2009) further in view of Keane et al. (American Pharmaceutical Review, Published 12/01/2016).
Applicant’s invention
Dong, Joon, and Shaw render obvious all the limitations of claim 1. Applicants claim 5 further adds the limitation wherein the nanosuspension has stability owing to uniform dispersibility of drug particles for more than 20 days under a temperature of 4°C.
Determination of the scope and the content of the prior art
(MPEP §2141.01)
Regarding claim 5, Dong teaches excipients used in the manufacture of provided compositions include dispersing agents (paragraph [00340]); wherein dispersing agents include potato starch, corn starch, tapioca starch, sodium starch glycolate, clays, alginic acid, guar gum, citrus pulp, agar, bentonite, cellulose, and wood products, natural sponge, cation-exchange resins, calcium carbonate, silicates, sodium carbonate, cross-linked poly(vinyl-pyrrolidone)
(crospovidone), sodium carboxymethyl starch (sodium starch glycolate), carboxymethyl cellulose, cross-linked sodium carboxymethyl cellulose (croscarmellose), methylcellulose, pregelatinized starch (starch 1500), micro crystalline starch, water insoluble starch, calcium carboxymethyl cellulose, magnesium aluminum silicate (Veegum), sodium lauryl sulfate, quaternary ammonium compounds, and mixtures thereof (paragraph [00342]).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Dong, Joon, and Shaw does not teach wherein the nanosuspension has stability owing to uniform dispersibility of drug particles for more than 20 days under a temperature of 4°C. However this deficiency is cured by Keane et al.
Keane teaches many medicines in routine use are particulate suspensions of an active pharmaceutical ingredient in a continuous liquid phase. Homogeneous dispersion of the key ingredient in such products is essential for uniform dosing. Understanding and controlling suspension instability is therefore crucial, to ensure that a product is both efficacious and safe (abstract). Keane also teaches pharmaceutical suspensions are easy to use, have relatively high patient acceptability, and are particularly useful for the delivery of drugs that are chemically unstable in solution, but stable in suspension; and that the formulation of a pharmaceutical suspension requires careful consideration of how to ensure homogeneous drug distribution during administration. Settling or sedimentation is problematic because it introduces the risk of non-homogeneity and an unknown dosage. An ideal solution is therefore to maintain the dispersed phase in a uniformly-suspended state for the lifetime of the product, under all relevant conditions. However, in some instances this is not feasible, in which case easy redispersion is vital (Stability-A Critical Quality Attribute? Section). Keane further teaches in terms of stability, particle size has a direct effect on the ease of maintenance of a uniform suspended phase. In a submicron suspension, Brownian motion helps to keep the particles in a dispersed state (Particle Size section). Keane continues to teach in the formulation of pharmaceutical suspensions, achieving product stability is critical, but can be demanding and time-consuming. The principles and case study presented here show how this task can be made easier through the application of particle size and zeta potential measurements, together with rotational rheometry. Together, zeta potential measurement and particle size data provide essential insight into the mechanisms that are controlling stability in the suspension, whether kinetic or thermodynamic (Conclusion section).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have stability owing to uniform dispersibility of drug particles for more than 20 days under a temperature of 4°C in Dong’s pharmaceutical composition. Dong teaches excipients used in the manufacture of provided compositions include dispersing agents (paragraph [00340]). The artisan of ordinary skill would have been motivated to have stability owing to uniform dispersibility of drug particles for more than 20 days under a temperature of 4°C because Keane teaches many medicines in routine use are particulate suspensions of an active pharmaceutical ingredient in a continuous liquid phase. Homogeneous dispersion of the key ingredient in such products is essential for uniform dosing (abstract). Keane also teaches pharmaceutical suspensions are easy to use, have relatively high patient acceptability, and are particularly useful for the delivery of drugs that are chemically unstable in solution, but stable in suspension, and an ideal solution is therefore to maintain the dispersed phase in a uniformly-suspended state for the lifetime of the product, under all relevant conditions (Stability-A Critical Quality Attribute? Section). Keane further teaches in terms of stability, particle size has a direct effect on the ease of maintenance of a uniform suspended phase. In a submicron suspension, Brownian motion helps to keep the particles in a dispersed state (Particle Size section). The skilled artisan would have had a reasonable expectation of success because Dong teaches a described composition including a polymer described herein may be in the form of particles (i.e., nanoparticles) (paragraph [0020]); that for oral and parenteral administration, the dosage can be in the form of a suspension (paragraph [00357]); wherein excipients used in the manufacture of provided compositions include dispersing agents (paragraph [00340]), and Keane teaches many medicines in routine use are particulate suspensions of an active pharmaceutical ingredient in a continuous liquid phase. Homogeneous dispersion of the key ingredient in such products is essential for uniform dosing (abstract). With regards to stability of drug particles for more than 20 days under a temperature of 4°C, the examiner points out that once stability owing to uniform dispersibility is achieved, the composition would inherently have the property of being stable for more than 20 days under a temperature of 4°C.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AFUA BAMFOAA BOATENG whose telephone number is (703)756-1358. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm.
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AFUA BAMFOAA BOATENGExaminer, Art Unit 1617
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614