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 .
Claim Rejections - 35 USC § 102
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.
Claim 9 is rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Jeoung et al. (EP 3 850 956 A1).
Regarding claim 9, Jeoung teaches a heating-type aerosol generating device (heating-type aerosol generating device used with aerosol generating article 50; ¶ [0062]) configured to generate an aerosol through the aerosol generating article according to claim 1 (aerosol generating article 50 used with the heating-type aerosol generating device; ¶ [0062]).
The recitation “configured to generate an aerosol through the aerosol generating article according to claim 1” defines the capability and intended article with which the device operates and does not positively recite the aerosol generating article as a structural component of the claimed device. Jeoung nevertheless expressly teaches the stated capability.
Claim Rejections - 35 USC § 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 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.
Claims 1, 4, and 6–8 are rejected under 35 U.S.C. § 103 as being unpatentable over Jeoung et al. (EP 3 850 956 A1).
Regarding claim 1, Jeoung teaches an aerosol generating article comprising an aerosol generating rod (aerosol generating article including an aerosol generating rod; ¶ [0008]), the aerosol generating rod comprising a non-tobacco material coated with a liquid material (first non-tobacco material having a liquid containing a tobacco component applied thereto; ¶ [0008]), and wherein the liquid material comprises a tobacco component and a liquid binder (tobacco granules or tobacco fine particles mixed with a liquid binder; ¶ [0012]).
Jeoung further teaches the constituents recited by wherein the liquid binder comprises water, alcohol, and starch, specifically a liquid binder including a binder selected from gum, HPMC, and starch, as well as water and ethanol (¶ [0013]). Jeoung thus identifies starch, water, and ethanol as suitable constituents of the same liquid-binder system, but does not expressly teach selecting starch, water, and ethanol together.
Jeoung teaches mixing an appropriate amount of liquid binder with the tobacco granules or tobacco fine particles to provide an appropriate viscosity for application to the non-tobacco material (¶ [0044]).
It has been held that choosing from a finite number of identified, predictable solutions with a reasonable expectation of success supports a conclusion of obviousness. MPEP § 2143(I)(E).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to select starch together with water and ethanol from Jeoung’s expressly identified liquid-binder constituents because Jeoung identifies each as suitable for the same binder system and teaches formulating the binder to provide an appropriate viscosity for application to the non-tobacco material, with the predictable result of a workable tobacco-containing liquid binder comprising water, alcohol, and starch.
Regarding claim 4, modified Jeoung further teaches the aerosol generating article of claim 1, wherein the liquid binder allows the liquid material to be adsorbed to the non-tobacco material (non-tobacco material comprising polymer or cellulose material capable of absorbing applied material; ¶ [0036]). The recitation that the binder “allows” the liquid material to be adsorbed defines a functional capability of the recited binder/substrate combination, and modified Jeoung possesses the stated capability.
Regarding claim 6, modified Jeoung further teaches the aerosol generating article of claim 1, wherein the non-tobacco material comprises paper or poly lactide (PLA) (first non-tobacco material comprising a paper sheet; ¶ [0036]).
Regarding claim 7, modified Jeoung further teaches the aerosol generating article of claim 1, wherein the aerosol generating rod comprises an aerosol generating portion and a medium portion (aerosol generating rod formed from second non-tobacco sheet 30 and first non-tobacco sheet 20; ¶ [0056]), wherein the aerosol generating portion comprises an aerosol generating material (second non-tobacco sheet 30 having aerosol generating material applied thereto; ¶ [0056]), and wherein the non-tobacco material coated with the liquid material is included in the medium portion (first non-tobacco sheet 20 incorporated with second non-tobacco sheet 30 into the aerosol generating rod; ¶ [0056]).
Regarding claim 8, modified Jeoung further teaches the aerosol generating article of claim 7, wherein the aerosol generating material comprises at least one of glycerin or propylene glycol (aerosol generating material including propylene glycol and glycerin; ¶ [0059]), and wherein the aerosol generating portion comprises a non-tobacco material coated with the aerosol generating material (second non-tobacco sheet 30 having aerosol generating material applied thereto; ¶ [0056]).
Claims 2 and 3 are rejected under 35 U.S.C. § 103 as being unpatentable over Jeoung et al. (EP 3 850 956 A1) in view of Kim (EP 3 925 456 A1).
Regarding claim 2, Jeoung, as modified for claim 1, teaches the aerosol generating article of claim 1 (tobacco-containing liquid binder for which starch, water, and ethanol are identified as suitable constituents; ¶ [0013]). Jeoung does not teach wherein the liquid binder comprises 40 to 50 wt.% of water and 10 to 20 wt.% of alcohol.
Kim teaches coating compositions comprising water and ethanol in the claimed amounts, including 50 wt.% water and 15 wt.% ethanol in Example 1 and 40 wt.% water and 15 wt.% ethanol in Example 2 (¶ [0106], Table 1). Kim teaches that ethanol concentration affects coating viscosity, affinity, drying, and workability (¶ [0069]—[0071]) and that water is used to control concentration and viscosity (¶ [0074]).
Kim is particularly pertinent because, like Jeoung, Kim concerns a liquid coating composition applied to cigarette paper and supplies workable proportions for the same water and alcohol constituents that Jeoung leaves unquantified.
It has been held that claimed amounts or proportions are prima facie obvious where they overlap or lie within amounts taught by the prior art, particularly where the parameter is recognized as affecting the relevant result. MPEP § 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify Jeoung’s liquid binder to employ 40 to 50 wt.% water and 10 to 20 wt.% alcohol, as taught by Kim, because Kim teaches those concentrations as workable amounts for a cigarette-paper coating composition and identifies water and ethanol concentrations as affecting viscosity and coating workability, thereby predictably providing suitable coating and processing characteristics.
Regarding claim 3, Jeoung, as modified in view of Kim for claim 2, teaches the aerosol generating article of claim 2 and further identifies gum and starch as suitable binder materials (¶ [0013]). Jeoung does not teach wherein the liquid binder further comprises gum, and wherein the liquid binder comprises 40 to 50 wt.% of water, 10 to 20 wt.% of alcohol, 25 to 35 wt.% of starch, and 5 to 15 wt.% of gum.
Kim teaches a coating composition containing Arabic gum, starch, ethanol, and water, including 25 wt.% Arabic gum, 30 wt.% starch, 15 wt.% ethanol, and 30 wt.% water (¶ [0107], Table 2, Comparative Example 2). Thus, Kim expressly teaches 30 wt.% starch and 15 wt.% ethanol within the claimed ranges. Kim further teaches Arabic gum in an amount of 10 to 30 wt.% (¶ [0062]) and water in an amount of 10 to 40 wt.% (¶ [0074]), thereby overlapping the claimed gum range at 10–15 wt.% and the claimed water range at 40 wt.%. Kim teaches that Arabic-gum concentration affects dispersion stability, drying, viscosity maintenance, and workability (¶ [0062]) and that water concentration controls concentration and viscosity (¶ [0074]).
It has been held that optimization of overlapping ranges or proportions is ordinarily obvious where the prior art recognizes the parameter as affecting the relevant result. MPEP § 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify Jeoung’s liquid binder to include gum together with starch, water, and ethanol and to optimize the amounts within Kim’s taught and overlapping proportions to provide 40 to 50 wt.% water, 10 to 20 wt.% alcohol, 25 to 35 wt.% starch, and 5 to 15 wt.% gum because Kim teaches the same four-component coating system and recognizes the constituent concentrations as affecting dispersion stability, viscosity, drying, and coating workability, thereby predictably providing a workable liquid-binder composition having the recited proportions.
Claim 5 is rejected under 35 U.S.C. § 103 as being unpatentable over Jeoung et al. (EP 3 850 956 A1) in view of Jin et al. (EP 3 903 605 A1).
Regarding claim 5, Jeoung, as modified for claim 1, teaches the aerosol generating article of claim 1, wherein the liquid material comprises tobacco granules (tobacco granules mixed with the liquid binder; ¶ [0012]). Jeoung does not teach wherein the liquid material comprises a crystalline tobacco granule or an amorphous tobacco granule. Applicant’s Specification identifies a crystalline tobacco granule as a regular tobacco granule and an amorphous tobacco granule as an irregular tobacco granule (Applicant’s Specification, ¶ [0078]).
Jin teaches irregularly shaped tobacco granules having grooves, ridges, and/or through holes (¶ [0007]) and teaches use of such tobacco granules in heating non-burning tobacco products (¶ [0016]). Jin teaches that the irregular morphology provides pores and channels that improve thermal conductivity and smoke production (¶ [0008]).
Jin is directly pertinent because both Jeoung and Jin concern tobacco granules for heated/non-burning tobacco articles.
It has been held that simple substitution of one known element for another to obtain predictable results supports a conclusion of obviousness. MPEP § 2143(I)(B).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to substitute Jin’s irregular tobacco granules for the tobacco granules of Jeoung because Jin teaches such granules for heating non-burning tobacco products and teaches that the irregular morphology provides pores and channels that improve thermal conductivity and smoke production, thereby predictably providing Jeoung’s aerosol generating article with the claimed amorphous/irregular tobacco granules and improved aerosol-generation characteristics.
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.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,622,579.
Although the claims are not identical, they are not patentably distinct.
Patent claim 1 recites an aerosol-generating apparatus comprising a heater configured to generate aerosol by heating a cigarette, a battery configured to supply power to the heater, and a controller configured to control the power supplied from the battery to the heater.
Instant claim 9 recites a heating-type aerosol-generating device configured to generate an aerosol through the aerosol-generating article according to claim 1. However, instant claim 9 does not positively recite the aerosol-generating article as a component of the device, nor does it require any particular heater, controller, accommodation structure, or other device structure dictated by the article of claim 1.
Accordingly, the recitation that the device is configured to generate aerosol through the particular article of claim 1 is functional or intended-use language and does not impose an additional structural limitation on the claimed device. Patent claim 1 positively recites a heating-type aerosol-generating apparatus having a heater configured to generate aerosol by heating a cigarette and therefore falls within the structural scope of instant claim 9.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,596,182.
Although the claims are not identical, they are not patentably distinct.
Patent claim 1 recites an aerosol-generation device comprising a heater configured to generate an aerosol by heating an aerosol-generating substrate and a controller configured to control power supplied to the heater by a battery.
Instant claim 9 recites a heating-type aerosol-generating device configured to generate an aerosol through the aerosol-generating article according to claim 1. However, instant claim 9 does not positively recite the aerosol-generating article as a component of the device or require any particular structural adaptation of the device for that article.
Accordingly, the recitation of the particular aerosol-generating article is functional or intended-use language and does not impose an additional structural limitation on the claimed device. Patent claim 1 expressly recites an aerosol-generation device having a heater configured to generate aerosol by heating an aerosol-generating substrate and therefore falls within the structural scope of instant claim 9.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,700,886.
Although the claims are not identical, they are not patentably distinct.
Patent claim 1 recites an aerosol-generating device comprising a thermally conductive element having an accommodation space for accommodating a cigarette, a flexible heater surrounding at least a portion of the thermally conductive element, and a battery configured to supply power to the flexible heater.
Instant claim 9 recites a heating-type aerosol-generating device configured to generate an aerosol through the aerosol-generating article according to claim 1. However, instant claim 9 does not positively recite the aerosol-generating article as part of the device or require any particular device structure corresponding to the composition of that article.
The recitation of the particular article therefore does not impose an additional structural limitation on the claimed device. Patent claim 1 positively recites an aerosol-generating device having an accommodation space for receiving a cigarette and a heater for heating the received cigarette and thus falls within the structural scope of the claimed heating-type aerosol-generating device.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,207,688.
Although the claims are not identical, they are not patentably distinct.
Patent claim 1 recites an aerosol-generating device comprising a heating unit configured to heat an aerosol-generating material, a battery configured to supply power to the heating unit, and a microcontroller configured to control operation of the heating unit.
Instant claim 9 recites a heating-type aerosol-generating device configured to generate an aerosol through the aerosol-generating article according to claim 1. However, instant claim 9 does not positively recite the aerosol-generating article as a component of the device or require any particular heater or other device structure dictated by that article.
Accordingly, the recitation of the particular aerosol-generating article is functional or intended-use language and does not impose an additional structural limitation on the claimed device. Patent claim 1 positively recites an aerosol-generating device having a heating unit configured to heat aerosol-generating material and therefore falls within the structural scope of instant claim 9.
Claims 1, 4, and 6–8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 5–7 of co-pending U.S. Application No. 18/647,017.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not yet been patented.
Regarding claim 1, co-pending claims 1, 5, and 6 collectively claim an aerosol-generating article comprising an aerosol-generating rod having a sheet of non-tobacco material to which a tobacco-component-containing liquid is applied, wherein the liquid includes tobacco granules or tobacco fine particles mixed with a liquid binder, and wherein the liquid binder includes components selected from gum, HPMC, starch, water, and ethanol.
Instant claim 1 broadly recites an aerosol-generating rod comprising a non-tobacco material coated with a liquid material containing a tobacco component and a liquid binder comprising water, alcohol, and starch. The additional cooling and filtering structure and aerosol-generating material required by the co-pending claims do not distinguish instant claim 1 because instant claim 1 is broader in those respects. Further, selecting starch together with water and ethanol from the binder constituents expressly recited in co-pending claim 6 would have been an obvious selection of expressly identified binder components. Accordingly, instant claim 1 is not patentably distinct from the subject matter of co-pending claims 1, 5, and 6.
Regarding claim 4, co-pending claims 1, 5, and 6 claim substantially the same non-tobacco material, tobacco-containing liquid, and liquid binder discussed above. The further recitation that the liquid binder “allows the liquid material to be adsorbed to the non-tobacco material” is functional language describing a capability of the binder and does not positively recite additional article structure. Accordingly, this functional limitation does not render the claimed article patentably distinct from the structurally corresponding article of the co-pending claims.
Regarding claim 6, co-pending claim 3 recites that the non-tobacco material comprises a polymer material or a cellulose material. Paper is a cellulose material, and poly lactide (PLA) is a polymer material. Thus, the recitation of paper or PLA represents selection of species within the polymer/cellulose materials expressly claimed by the co-pending application and does not render claim 6 patentably distinct.
Regarding claim 7, co-pending claim 7 recites, in addition to the first non-tobacco sheet bearing the tobacco-component-containing liquid, a second non-tobacco sheet to which aerosol-generating material is applied. The first sheet bearing the tobacco-containing liquid corresponds to the claimed medium portion, while the second non-tobacco sheet bearing aerosol-generating material corresponds to the claimed aerosol-generating portion. Merely characterizing these portions as an “aerosol generating portion” and a “medium portion” does not impose a patentably distinct structural arrangement.
Regarding claim 8, co-pending claim 7 further requires a non-tobacco sheet coated with aerosol-generating material. The co-pending application identifies glycerin and propylene glycol as aerosol-generating materials falling within the scope of the claimed aerosol-generating material. Selection of glycerin or propylene glycol from the expressly identified aerosol-generating materials would have been an obvious species selection. Accordingly, claim 8 is not patentably distinct from co-pending claim 7.
Claims 2–3 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 5, and 6 of co-pending U.S. Application No. 18/647,017 in view of Kim et al. (EP 3 925 456 A1).
As discussed above, the co-pending claims claim an aerosol-generating article comprising a non-tobacco material having a tobacco-containing liquid including tobacco granules or fine particles and a liquid binder, with starch, water, and ethanol expressly identified as binder constituents.
Regarding claim 2, the co-pending claims do not specify the claimed amounts of water and alcohol. Kim teaches coating compositions containing water in an amount of about 10–40 wt% and ethanol in an amount of about 15–30 wt%. The claimed ranges of 40–50 wt% water and 10–20 wt% alcohol therefore overlap Kim’s ranges at 40 wt% water and throughout 15–20 wt% alcohol. Kim further teaches that the amounts of water and ethanol affect concentration, viscosity, coating workability, and drying characteristics. It would have been obvious to optimize the relative amounts of these known binder components within the overlapping ranges to obtain suitable viscosity and coating properties. Accordingly, claim 2 is not patentably distinct from the co-pending claims in view of Kim.
Regarding claim 3, Kim further teaches Arabic gum in an amount of about 10–30 wt%, which overlaps the claimed 5–15 wt% gum range, and teaches use of starch-containing coating compositions, including an exemplary composition containing 30 wt% starch. It would have been obvious to employ starch and gum within the overlapping and expressly taught amounts while optimizing the known binder constituents for desired viscosity, adhesion, and coating performance. Accordingly, claim 3 is not patentably distinct from the co-pending claims in view of Kim.
Claim 5 is provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1 and 5 of co-pending U.S. Application No. 18/647,017 in view of Jin et al. (EP 3 903 605 A1).
Co-pending claim 5 recites a tobacco-component-containing liquid comprising tobacco granules or tobacco fine particles mixed with a liquid binder, but does not expressly require the tobacco granules to have the regular or irregular configuration recited in instant claim 5.
Jin teaches abnormally shaped, i.e., irregular, tobacco granules for use in heating non-burning tobacco products. Jin further teaches that the irregular configuration provides pores and channels, decreases smoking resistance, improves thermal conductivity or flammability, and reduces bulk density.
It would have been obvious to employ Jin’s irregular tobacco granules as the tobacco granules of co-pending claim 5 because both concern tobacco granules for heated tobacco products, and Jin teaches that the irregular configuration predictably improves airflow and heating characteristics. The resulting tobacco granules correspond to the claimed amorphous (irregular) tobacco granules. Accordingly, claim 5 is not patentably distinct from the co-pending claims in view of Jin.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER KESSIE whose telephone number is (571)272-7739. The examiner can normally be reached Monday - Thursday 7:00am - 5:00pm.
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/JENNIFER A KESSIE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747