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 .
Claims 1-20 are presented for examination.
Examiner’s Remark
At the time of writing of the instant action, the Examiner is aware of potential avenues for advancing prosecution and encourages Applicant to contact the Examiner to advance prosecution.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims are nominally directed to methods, memory sub-systems and non-transitory computer-readable mediums.
Patent eligibility is a question of law that is reviewable de novo. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). 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. In interpreting this statute, the Supreme Court emphasizes that patent protection should not preempt “the basic tools of scientific and technological work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Benson”); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (“Mayo”); Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (“Alice”). The rationale is that patents directed to basic building blocks of technology would not “promote the progress of science and useful arts” under the U.S. Constitution, Article I, Section 8, Clause 8, but instead would impede it. Accordingly, laws of nature, natural phenomena, and abstract ideas, are not patent-eligible subject matter. Thales Visionix Inc. v. United States, 850 F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 573 U.S. at 216– 17). The Supreme Court set forth a two-part test for subject matter eligibility in Alice (573 U.S. at 217–19). The first step is to determine whether the claim is directed to a patent-ineligible concept. Id. (citing Mayo, 566 U.S. at 76–77). If so, then the eligibility analysis proceeds to the second step of the Alice/Mayo test in which we “examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (quoting Mayo, 566 U.S. at 72, 79). There is no need to proceed to the second step, however, if the first step of the Alice/Mayo test yields a determination that the claim is directed to patent eligible subject matter. The Patent Office has revised its guidance for how to apply the Alice/Mayo test in the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (the “Revised Guidance”). Under the Revised Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, mental processes, or certain methods of organizing human activity such as a fundamental economic practice or managing personal behavior or relationships or interactions between people); and (2) additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)). 84 Fed. Reg. at 51–52, 55. A claim that integrates a judicial exception into a practical application applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so integrated, then the claim is not directed to a judicial exception and is patent-eligible under § 101. Revised Guidance, 84 Fed. Reg. at 54. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then evaluate whether the claim provides an inventive concept. Revised Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–19, 221. Evaluation of the inventive concept involves consideration of whether an additional element or combination of elements (1) adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or (2) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
USPTO Step 1 – Do the claims recite a statutory category of invention?
The claims nominally satisfy a statutory category of invention. The analysis proceeds to the first step of Alice/Mayo.
The Examiner relies upon claim 1 as the representative claim infra.
Alice/Mayo—Step 1 (Abstract Idea)
USPTO Step 2A–Prongs 1 and 2 identified in the Revised Guidance
USPTO Step 2A—Prong 1 (Does the Claim Recite a Judicial Exception?)
Turning to the first step of the Alice inquiry (Step 2A, Prong 1 of the Revised Guidance), the Examiner finds the independent claims are directed to the abstract idea BEI Sovereign Mobile Terminal Systems. Each of these elements and steps are acts performed using human activities and data. All of these steps/elements do not require the use of a computer or rely upon a computer for nominal, generic functionality. In particular, such underlying steps of can be done in the human mind or via the use of pen & paper.
The idea is recited, at least in part and not limited when analyzing the limitations individually and as an ordered combination, in the following aspects of the claims:
[Symbol font/0xB7] “receiving a request”
[Symbol font/0xB7] “generate a certificate associated with a memory device comprising a set of active components, wherein each active component of the set of active components is associated with an active component identifier” (further emphasis by the Examiner)
[Symbol font/0xB7] “identifying a set of active component identifiers”
[Symbol font/0xB7] “generating, …, the digital certificate associated with the memory device” (further emphasis by the Examiner)
[Symbol font/0xB7] “providing the digital certificate to a host system”
[Symbol font/0xB7] “the digital is used to authenticate the memory device” (further emphasis by the Examiner)
The idea amounts to a process that, under its broadest reasonable interpretation, covers performance in the mind or with a pen and paper but for the recitation of generic computer components. If a claim, 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. Accordingly, each of the independent claims recites an abstract idea.
Thus, all of the limitations are in fact a mental process and certain methods of organizing human activity; See MPEP §§ 2106.04(a)(2)(II)-(III). While the claims do recite some functional steps, the underlying operations recited in the claim are acts that could be performed mentally and by pen & paper without the use of a computer. Our reviewing court has concluded that mental processes include similar concepts of collecting, manipulating and providing data. See Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (the Federal Circuit held “the concept of . . . collecting data, . . . recognizing certain data within the collected data set, and . . . storing that recognized data in a memory” ineligible); and Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes). However, mental processes remain unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson.”). We now turn to USPTO Step 2A, Prong 2, of the Revised Guidance to determine whether the abstract idea is integrated into a practical application. See Revised Guidance, 84 Fed. Reg. at 54–55.
The Examiner holds the claimed invention does not improve a computer or its components’ functionality or efficiency, or otherwise changes the way those devices function, at least in the sense contemplated by the by the Federal Circuit in Enfish LLC v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir. 2016). The claimed self-referential table in Enfish was a specific type of data structure designed to improve the way a computer stores and retrieves data in memory. Enfish, 822 F.3d at 1339. The Examiner maintains the claimed invention, while necessarily utilizing a computing device, is not rooted in computer technology, but merely utilizes a computing device to execute the process faster or more efficiently than doing so manually, any speed or efficiency increase comes from the capabilities of the generic computer components—not the recited process itself. See FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”)); see also Intellectual Ventures I LLC v. Erie Indemnity Co., 711 F. App’x 1012, 1017 (Fed. Cir. 2017) (non-precedential) (“Though the claims purport to accelerate the process of finding errant files and to reduce error, we have held that speed and accuracy increases stemming from the ordinary capabilities of a general-purpose computer ‘do not materially alter the patent eligibility of the claimed subject matter.’” (citation omitted)). Like the claims in FairWarning, the focus of the claims are not on an improvement in computer processors as tools, but on certain independently abstract ideas that use generic computing components as tools. See FairWarning, 839 F.3d at 1095. Nor is this invention analogous to that which the court held eligible in McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016).
The Examiner notes “a claim for a new abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). “[U]nder the Mayo/Alice framework, a claim directed to a newly discovered law of nature (or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility . . . .” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted).
USPTO Step 2A—Prong 2 (Integration into Practical Application)
Under Revised Step 2A, Prong Two of the Revised Guidance, the Examiner discern no additional element or combination of elements recited in Applicant’s claims that may have integrated the judicial exception into a practical application. See Revised Guidance, 84 Fed. Reg. at 54–55. The Examiner further points out that the additional elements of the claims are nominal. The claims do not recite specific types of additional elements or their operations, thereby requiring no improvements to computing or data processing technologies. Such elements do not: (1) improve the functioning of a computer or other technology; (2) are not applied with any particular machine (except for generic computing elements); (3) do not effect a transformation of a particular article to a different state; and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. (See MPEP §§ 2106.05(a)–(c), (e)–(h)). As a result, the claim’s recited additional elements are not indicative of “integration into a practical application,” and are not enough to distinguish the steps of the independent claims from describing a mental process. See Revised Guidance, 84 Fed. Reg. at 54–55.
Using a generic computing device to receive and process data amounts to merely applying the judicial exception using a generic computing component. See Mayo, 566 U.S. at 72 (Explaining that “to transform an unpatentable [judicial exception] into a patent eligible application of [the judicial exception], one must do more than simply state the [judicial exception] while adding the words ‘apply it.”’); see also Alice, 573 U.S. at 221; Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (Explaining that in order for a machine to add significantly more, it must “play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly.”); MPEP § 2106.05(b). Further, “the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.” Bancorp Servs. v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (explaining that “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible”) (citing Alice, 573 U.S. at 224 (“use of a computer to create electronic records, track multiple transactions, and issue simultaneous instructions” is not an inventive concept)).
Moreover, the devices recited in the preambles amount to insignificant extra-solution activity that is insufficient to integrate the abstract idea into a practical application. See MPEP § 2106.05(g). Thus, the claims do not recite an improvement to the functioning of the computer system or other computer related products. Nor do the claims recite an improvement to a technical field. Indeed, the claims do not use the results of the recited “comput[ing]” step. See McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (“We . . . look to whether the claims in these patents focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.”).
Accordingly, under Step 2A, Prong 2, claims 1-27 do not recite “additional elements that integrate the [judicial] exception into a practical application,” and are directed to an abstract idea in the form of a mental process. Revised Guidance, 84 Fed. Reg. at 52, 54. Therefore, we proceed to USPTO Step 2B, The Inventive Concept.
Alice/Mayo—Step 2 (Inventive Concept)
USPTO Step 2B identified in the Revised Guidance
USPTO Step 2B of the Alice two-step framework requires us to determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exception. Alice, 573 U.S. at 221; see also Revised Guidance, 84 Fed. Reg. at 56. As discussed above, the independent claims include additional elements that are nominally recited and relied upon when performing the underlying process when considered individually and in an ordered combination, correspond to nothing more than generic and well-known components and operations used to implement the abstract idea. In other words, we find that the additional elements, as claimed, are well-understood, routine, and conventional and “behave exactly as expected according to their ordinary use.” (See In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 615 (Fed. Cir. 2016); Final Act. 7; Ans. 7–8.) Thus, implementing the abstract idea with these generic and well-known elements “fail[s] to transform that abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 221.
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 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.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Young et al (U.S. Pat App Pub 2022/0207145 A1), hereinafter referred to as Young in in view of Gulati (U.S. Pat App Pub 2019/0356529 A1), hereinafter referred to as Gulati.
Re claims 1, 8 and 15: Young teaches a method, a memory sub-system and a non-transitory computer-readable storage medium comprising instructions that, when executed by a processing device, cause the processing device to perform operations comprising: a memory device; and a processing device, operatively coupled to the memory device, the processing device to perform operations comprising: receiving a request to generate a digital certificate associated with a memory device comprising a set of active components, wherein each active component of the set of active components is associated with an active component identifier; in response to the request, identifying a set of active component identifiers; generating, based on at least a portion of the set of active component identifiers, the digital certificate associated with the memory device; and providing the digital certificate to a host system, where the digital certificate is used to authenticate the memory device (¶40; ¶42; ¶43; ¶45-¶47; ¶60; ¶73; ¶75; ¶78-¶80; ¶92; Figs 3-7).
Gulati teaches each active component of the set of active components is associated with an active component identifier; in response to the request, identifying a set of active component identifiers; generating, based on at least a portion of the set of active component identifiers, the digital certificate associated with the memory device; and providing the digital certificate to a host system , where the digital certificate is used to authenticate the memory device (Fig 5; ¶94; ¶96; ¶104-¶106; Fig 9; ¶219-¶223; Fig 10; ¶272-¶273).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Young with the teachings of Gulati, for the purpose of providing predictable variations in the art of preventing unauthorized devices and preventing the counterfeiting of devices where Gulati provides for matching data amongst certificates to determine the authorization/genuineness of such devices.
Re claims 2, 9 and 16: The combination of Young and Gulati teaches the set of active components comprises one or more of a controller circuit, a non-volatile memory component, a volatile memory component, an integrated circuit, or a printed circuit board of the memory device (Young: ¶29; ¶35; ¶44-¶45; ¶49; Gulati: ¶60; ¶65-¶66; ¶113-¶114).
Re claims 3, 10 and 17: The combination of Young and Gulati teaches a seed value is established using at least a portion of the set of active component identifiers (Gulati: Fig 5; ¶94; ¶96; ¶104-¶106; Fig 9; ¶219-¶223; Fig 10; ¶272-¶273).
Re claims 4, 11 and 18: The combination of Young and Gulati teaches generating the digital certificate is performed using the seed value (Gulati: Fig 5; ¶94; ¶96; ¶104-¶106; Fig 9; ¶219-¶223; Fig 10; ¶272-¶273).
Re claims 5, 12 and 19: The combination of Young and Gulati teaches the seed value further comprises additional information (Gulati: Fig 5; ¶94; ¶96; ¶104-¶106; Fig 9; ¶219-¶223; Fig 10; ¶272-¶273).
Re claims 6 and 13: The combination of Young and Gulati teaches the host system comprises a certificate authority system storing a set of valid digital certificates (Young: ¶40; ¶42; ¶43; ¶45-¶47; ¶60; ¶73; ¶75; ¶78-¶80; ¶92; Figs 3-7; Gulati: Fig 5; ¶94; ¶96; ¶104-¶106; Fig 9; ¶219-¶223; Fig 10; ¶272-¶273).
Re claims 7 and 14: The combination of Young and Gulati teaches the digital certificate is compared to the set of valid digital certificates to authenticate the memory device (Young: ¶40; ¶42; ¶43; ¶45-¶47; ¶60; ¶73; ¶75; ¶78-¶80; ¶92; Figs 3-7; Gulati: Fig 5; ¶94; ¶96; ¶104-¶106; Fig 9; ¶219-¶223; Fig 10; ¶272-¶273).
Re claim 20: The combination of Young and Gulati teaches the host system comprises a certificate authority system storing a set of valid digital certificates; and wherein the digital certificate is compared to the set of valid digital certificates to authenticate the memory device (Young: ¶40; ¶42; ¶43; ¶45-¶47; ¶60; ¶73; ¶75; ¶78-¶80; ¶92; Figs 3-7; Gulati: Fig 5; ¶94; ¶96; ¶104-¶106; Fig 9; ¶219-¶223; Fig 10; ¶272-¶273).
Conclusion
Examiner's Note:
The Examiner identified and designated “the particular part[s] [of the references] relied on” as provided in 37 C.F.R § 1.104(c)(2).
A reference is not limited to the disclosure of specific working examples. In re Mills, 470 F.2d 649, 651 (CCPA 1972); In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (A prior art reference’s disclosure is not limited to its examples.). Nor do disclosed examples teach away from a reference’s broader disclosure. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971); In re Boe, 355 F.2d 961, 965 (CCPA 1966) (All of the disclosures in a prior art reference “must be evaluated for what they fairly teach one of ordinary skill in the art.”).
“The prima facie case is merely a procedural device that enables an appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus, held that the USPTO carries its procedural burden of establishing a prima facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection, “together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
MPEP 2123 [R – 08.2012] states: "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
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A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. "The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.").
In the case of amending the claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention. See: Ralston Purina Co. v. FarMar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985), In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983), Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010), Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000), Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560 (Fed. Cir. 1991) and TurboCare Div. of Demag Delavel Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir. 2001)
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTOL-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARREN B SCHWARTZ whose telephone number is (571)270-3850. The examiner can normally be reached 9am-7pm EST, Monday-Thursday, 9am-5pm EST, Friday.
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, Amir Mehrmanesh can be reached at (571)270-3351. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DARREN B SCHWARTZ/Primary Examiner, Art Unit 2435
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