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 Species A, Subspecies A2 in the reply filed on July 19, 2026 is acknowledged.
Claims 12 and 28-30 are withdrawn, by Examiner, from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species, there being no allowable generic or linking claim. Claim 12 recites, ““wherein the hindfoot portion comprises three degrees of freedom independent of the forefoot portion, and the forefoot portion comprises three degrees of freedom independent of the hindfoot portion”; however degrees of freedom (a statistical term) are only disclosed in the specification in relation to the adjustment platform 1700, see para. 00268, which is in references to non-elected Species T. Claim 28, recites, “one of the hindfoot portion and the forefoot portion comprises a unidirectional surface configured to inhibit rotation of the second outsole normal to the unidirectional surface during ambulation”; however such a limitation is disclosed in para. 00128-0129 with reference to outsole 400 (non-elected Species C) and therefore claim 28 and it’s dependents 29-30 are withdrawn from further examination.
Accordingly, claims 1-30 are pending in this application, with an action on the merits to follow regarding claims 1-11 and 13-27.
Drawings
The drawings are objected to because:
140 is referred to a as the tongue in para. 0098 but in Fig. 2B is not pointing to the tongue;
Fig. 2A should be split into two separate figures;
Fig. 3C should be split into 3 separate figures;
Fig. 16B shows multiple separate parts but no bracket or connection line is drawn to indicate how all parts are within Fig. 16B.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The use of the term “Velcro®” (in paras. 0099, 00101, 00106, 00235, 00236, and 00307) which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term. Examiner respectfully suggests amending to recite, “VELCRO®”.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claims 9, 14-15, and 27 are objected to because of the following informalities:
Claims 9 and 27 should recite, “wherein the generally planar surface is configured to contact[[s]] ground…”, otherwise it may appear that a method is being claimed within a product claim, thereby mixing statutory categories.
Claim 14 should recite, “wherein the hindfoot portion, the forefoot portion, and the central portion are configured to be ground contacting during ambulation”, otherwise it may appear the ground is being claimed.
Claim 15 should recite, “wherein at least one of the hindfoot portion, the forefoot portion, and the central portion comprises one or more slots that are configured to not the ground”.
Appropriate correction is required.
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.
Claims 1, 3-10, and 16-26 (and claims 2 and 27 at least for depending from a rejected claim) are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 16, and 21 are indefinite as each recites, “the hindfoot portion is adjustably positionable relative to the first outsole independently of the forefoot portion; and the forefoot portion is adjustably positionable relative to the first outsole independently of the hindfoot portion.” As no structure such as material composition, adjustment mechanisms, slots, or otherwise has been claimed to account for the adjustability of the forefoot and hindfoot portions independent of each other, it is unclear as to how such adjustability occurs and when infringement would occur.
Claims 3 and 17 are indefinite as each recites, “wherein, with the plate securely attached to the second outsole, the plate is further configured to prevent adjustment of a first relative position of the hindfoot portion and a second relative position of the forefoot portion.” The entirely of the claim recites functional language and no structure is claimed. As no structure such as any sort of attachment mechanism, or otherwise has been claimed to account for securing of the outsoles, one of which is adjustable, to prevent adjustment of portions of the second outsole, it is unclear as to such prevention of adjustability occurs and when infringement would occur.
Claims 4 and 25 are indefinite as it recites, “wherein the plate and the second outsole are removeable from the first outsole without altering a first position of the hindfoot portion or a second position of the forefoot portion relative to the plate.” The entirely of the claim recites functional language and no structure is claimed. As no structure such as any sort of attachment mechanism, or otherwise has been claimed to account for securing and/or removability of the outsoles, one of which is adjustable, to prevent altering the positions of portions of the second outsole, it is unclear as to such prevention of adjustability occurs and when infringement would occur.
Claims 5 and 24 are indefinite as each recites, “wherein the central portion is adjustably positionable relative to the hindfoot portion and the forefoot portion independently of the hindfoot portion and the forefoot portion.” The entirely of the claim recites functional language and no structure is claimed. As no structure such as material composition, adjustment mechanisms, slots, or otherwise has been claimed to account for the adjustability of the forefoot and hindfoot portions independent of each other, it is unclear as to how such adjustability occurs and when infringement would occur.
Claims 6, 18 and 22 are indefinite as each recites, “wherein the hindfoot portion is linearly adjustably positionable along a first axis and along a second axis, and is rotationally adjustably positionable about a third axis.” These citations are likewise indefinite and for sake of brevity, will not be described in depth as they are related to a same or similar issue as identified above
Claims 7, 19, and 23 are indefinite as each recites, “wherein the forefoot portion is linearly adjustably positionable along a first axis and along a second axis, and is rotationally adjustably positionable about a third axis.” These citations are likewise indefinite and for sake of brevity, will not be described in depth as they are related to a same or similar issue as identified above
Claims 8 and 26 are indefinite as each recites, “a generally planar surface”. It is unclear how one of ordinary skill in the art can ascertain to any requisite degree how much a surface can deviate from being planar and be considered “generally” planar and therefore it is unknown what surfaces can be included or excluded by the claim.
Claim 10 is indefinite as it recites, “a generally planar ground contacting surface.” It is unclear if this limitation is referring to the “generally planar surface” of claim 8 or a different surface. If referring to a different surface, it is unclear how one of ordinary skill in the art can ascertain to any requisite degree how much a surface can deviate from being planar and be considered “generally” planar and therefore it is unknown what surfaces can be included or excluded by the claim.
Claim 20 is indefinite as it recites, “the first position and the second position are adjustable with the second outsole detached from the plate; and the first position and the second position are not adjustable with the second outsole attached to the plate.” As no structure such as attachment mechanisms, material composition, adjustment mechanisms, slots, or otherwise has been claimed to account for the attachment, adjustability, or non-adjustability of the outsoles, plate, or portions of the second outsole, it is unclear as to how such adjustability or non-adjustability occurs and when infringement would occur.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 and 5-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dougall (US 2021/0235809).
Regarding claim 1, Dougall discloses a system (10, Figs. 2 and 11C) for modifying gait mechanics of a patient (see para. 0079), the system comprising: a shoe (18) comprising a first outsole (sole of shoe which has surface 16, best shown in Fig. 7); and a second outsole (12/13/14, see Fig. 11C) configured to attach to the first outsole (via hook and loop, see para. 0081); wherein: the second outsole comprises a hindfoot portion (12), a forefoot portion (14), and a central portion (13) connecting the hindfoot portion and the forefoot portion (as seen in Fig. 11C); the hindfoot portion is adjustably positionable relative to the first outsole independently of the forefoot portion; and the forefoot portion is adjustably positionable relative to the first outsole independently of the hindfoot portion (as 12 and 14 can be separately repositioned, see para. 0081, further see para. 0096 where if 12-14 are connected, the connector allows for relative movement between the coupled projections therefore the hindfoot and forefoot can be positioned independent of each other).
Examiner notes that italicized limitations in the prior art rejections are functional and do not positively recite a structural limitation, but instead require an ability to so perform and/or function. As the prior art discloses the structure of the system, there would be a reasonable expectation for the system to perform such functions, as Examiner has explained after each functional limitation.
Regarding claim 5, Dougall discloses wherein the central portion is adjustably positionable relative to the hindfoot portion and the forefoot portion independently of the hindfoot portion and the forefoot portion (as disclosed para. 0096, each of the projections, even when connected, can move relative to each other and therefore independent of each other).
Regarding claim 6, Dougal discloses wherein the hindfoot portion is linearly adjustably positionable along a first axis and along a second axis, and is rotationally adjustably positionable about a third axis (as both 12 and 14 can be positioned anywhere along the respective hindfoot and forefoot portions of the first sole in any orientation, see para. 0097, further see para. 0096 where rotational movement is allowed).
Regarding claim 7, Dougall discloses wherein the forefoot portion is linearly adjustably positionable along a first axis and along a second axis, and is rotationally adjustably positionable about a third axis (as both 12 and 14 can be positioned anywhere along the respective hindfoot and forefoot portions of the first sole in any orientation, see para. 0097, further see para. 0096 where rotational movement is allowed).
Regarding claim 8, Dougall discloses wherein the central portion (13) comprises a generally planar surface (20, see para. 0084 where 20 can be flat) between the hindfoot portion and the forefoot portion (as seen in Fig. 11C).
Regarding claim 9, Dougall discloses wherein the generally planar surface contacts ground during ambulation of the patient while wearing the shoe (as can be seen in Fig. 11C, as 20 is the lowest surface, it would contact the ground during ambulation).
Regarding claim 10, Dougall discloses wherein the central portion (13) comprises a plurality of slots (slots between each of the projections 13 as seen in Fig. 11C) configured to facilitate the second outsole to be expanded, contracted, rotated, and/or angled while maintaining a generally planar ground contacting surface (as rotation is possible as seen in para. 0096 and even if rotated, 20 remains planar and can still contact the ground).
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.
Claim(s) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dougall, as applied to claim 1 above, and further in view of Zuborev (US 2021/0145113).
Regarding claim 2, Dougall discloses all the limitations of claim 1 above, but does not expressly disclose further comprising a plate configured to securely attach to the second outsole and to securely attach to the first outsole.
Zuborev teaches modular footwear further comprising a plate (30) configured to securely attached to the second outsole (44, via hook and loop, see para 0044) and to securely attached to the first outsole (16, via hook and loop, see paras. 0042-0043).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add a plate attached to the first and second outsoles of Dougall, as taught by Zuborev, so that “the user may vary the height of the [shoe]” (see para. 0001 of Zuborev) as desired or as needed to help with medical conditions such as scoliosis.
Regarding claim 3, the modified system of Dougall discloses wherein, with the plate securely attached to the second outsole, the plate is further configured to prevent adjustment of a first relative position of the hindfoot portion and a second relative position of the forefoot portion (as in combination, the plate 30 of Zuborev would attached to the first outsole of Dougal, and the second outsole 12-14 of Dougal would attached to the plate 30 of Zuborev, and as such when plate and second outsole are connected via hook and loop, positions of the hindfoot and forefoot portions are prevented from moving without being removed and relocated by the user).
Regarding claim 4, the modified system of Dougall discloses wherein the plate and the second outsole are removeable from the first outsole without altering a first position of the hindfoot portion or a second position of the forefoot portion relative to the plate (as in combination, the plate 30 of Zuborev would attached to the first outsole of Dougal via hook and loop, and the second outsole 12-14 of Dougal would attached to the plate 30 of Zuborev via hook and loop, and therefore the plate and second outsole can be removed from the first outsole, but the hindfoot and forefoot portions would maintain their positions on the plate).
Claim(s) 11 and 13-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dougall in view of Zuborev.
Regarding claim 11, Dougall discloses a system (10, Figs. 2 and 11C) for modifying gait mechanics of a patient (see para. 0079), the system comprising: a shoe (18) comprising a first outsole (sole of shoe which has surface 16, best shown in Fig. 7); a gait modifier (12/13/14) comprising a second outsole (as 12/13/14 is the second outsole); wherein the second outsole comprises: a forefoot portion (14); and a hindfoot portion (12) configured to cooperate with the forefoot portion during ambulation of the patient while wearing the shoe to modify the gait mechanics (as 12 and 14 can be separately repositioned to modify gait, see para. 0081).
Dougall does not expressly disclose wherein the gait modifier comprising a plate; and wherein: the second outsole is configured to securably attach to the plate; and the plate is configured to securably attach to the first outsole so that a position of the second outsole is fixed relative to the first outsole.
Zuborev teaches modular footwear further comprising a plate (30); and wherein: the second outsole (44) is configured to securably attach to plate (via hook and loop, see para 0044); and the plate is configured to securably attach to the first outsole (16, via hook and loop, see paras. 0042-0043) so that a position of the second outsole is fixed relative to the first outsole (as each when all connected, the position of the second outsole is fixed relative the first outsole).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add a plate to the gait modifier of Dougall, as taught by Zuborev, so that “the user may vary the height of the [shoe]” (see para. 0001 of Zuborev) as desired or as needed to help with medical conditions such as scoliosis.
Regarding claim 13, the modified system of Dougall discloses wherein the second outsole (12/13/14) further comprises a central portion (13) connecting the hindfoot portion (12) and the forefoot portion (14) (as can be seen in Fig. 11C).
Regarding claim 14, the modified system of Dougal discloses wherein the hindfoot portion, the forefoot portion, and the central portion are ground contacting during ambulation (as can be seen in Fig. 11C, each of 12-14 are downward facing and have at least one surface that would contact the ground when walking).
Regarding claim 15, the modified system of Dougall discloses wherein at least one of the hindfoot portion, the forefoot portion, and the central portion comprises one or more slots (slots between each of 12, 13, and 14) that are not ground contacting (as the slots are formed into the lateral and medial sides of 12-14 and not into a ground facing surface, they are not configured to contact the ground).
Regarding claim 16, the modified system of Dougall discloses wherein the hindfoot portion is adjustably positionable relative to the first outsole independently of the forefoot portion and the forefoot portion is adjustably positionable relative to the first outsole independently of the hindfoot portion (as 12 and 14 can be separately repositioned, see para. 0081, further see para. 0096 where if 12-14 are connected, the connector allows for relative movement between the coupled projections therefore the hindfoot and forefoot can be positioned independent of each other).
Regarding claim 17, the modified system of Dougall discloses wherein, with the plate securely attached to the second outsole, the plate is further configured to prevent adjustment of a first relative position of the hindfoot portion and a second relative position of the forefoot portion (as in combination, the plate 30 of Zuborev would attached to the first outsole of Dougal via hook and loop, and the second outsole 12-14 of Dougal would attached to the plate 30 of Zuborev via hook and loop, and therefore the plate and second outsole can be removed from the first outsole, but the hindfoot and forefoot portions would maintain their positions on the plate).
Regarding claim 18, the modified system of Dougall discloses wherein the hindfoot portion is linearly adjustably positionable along a first axis and along a second axis, and is rotationally adjustably positionable about a third axis (as both 12 and 14 can be positioned anywhere along the respective hindfoot and forefoot portions of the first sole in any orientation, see para. 0097, further see para. 0096 where rotational movement is allowed).
Regarding claim 19, the modified system of Dougall discloses wherein the forefoot portion is linearly adjustably positionable along a first axis and along a second axis, and is rotationally adjustably positionable about a third axis (as both 12 and 14 can be positioned anywhere along the respective hindfoot and forefoot portions of the first sole in any orientation, see para. 0097, further see para. 0096 where rotational movement is allowed).
Regarding claim 20, Dougall discloses a system (10, Figs. 2 and 11C) for modifying gait mechanics of a patient (see para. 0079), the system comprising: a shoe (18) comprising a first outsole (sole of shoe which has surface 16, best shown in Fig. 7); a gait modifier (12/13/14) comprising a second outsole (as 12/13/14 is the second outsole); the gait modifier is configured to attach to the first outsole (via hook and loop, see para. 0081); the second outsole comprises a hindfoot portion (12) positionable at a first position and a first orientation (via hook and loop); the second outsole comprises a forefoot portion (14) comprising a second position and a second orientation (via hook and loop).
Dougall does not expressly disclose the gait modifier comprising a plate; wherein: the second outsole is configured to attach to the plate; the hindfoot portion positionable at the first position and the first orientation relative to the plate, the forefoot portion comprising the second position and the second orientation relative to the plate; the first position and the second position are adjustable with the second outsole detached from the plate; and the first position and the second position are not adjustable with the second outsole attached to the plate.
Zuborev teaches modular footwear further comprising a plate (30); and wherein: the second outsole (44) is configured to attach to plate (via hook and loop, see para 0044); and the gait modifier (combination of 30 and 44) is configured to attach to the first outsole (16, via hook and loop, see paras. 0042-0043).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add a plate to the gait modifier of Dougall, as taught by Zuborev, so that “the user may vary the height of the [shoe]” (see para. 0001 of Zuborev) as desired or as needed to help with medical conditions such as scoliosis.
When used in combination, the plate 30 of Zuborev would attached to the first outsole of Dougal via hook and loop, and the second outsole 12-14 of Dougal would attached to the plate 30 of Zuborev via hook and loop, and therefore the hindfoot portion is positionable at the first position and the first orientation relative to the plate (as the hindfoot portion would be positioned on the plate with the hook and loop), the forefoot portion comprising the second position and the second orientation relative to the plate (as the forefoot portion would be positioned on the plate with the hook and loop); the first position and the second position are adjustable with the second outsole detached from the plate (via the hook and loop); and the first position and the second position are not adjustable with the second outsole attached to the plate (as once they are positioned, they would not be adjustable until the user removes and reattaches the forefoot and hindfoot portions).
Regarding claim 21, the modified system of Dougall discloses wherein the hindfoot portion is adjustably positionable relative to the first outsole independently of the forefoot portion and the forefoot portion is adjustably positionable relative to the first outsole independently of the hindfoot portion (as 12 and 14 can be separately repositioned, see para. 0081, further see para. 0096 where if 12-14 are connected, the connector allows for relative movement between the coupled projections therefore the hindfoot and forefoot can be positioned independent of each other).
Regarding claim 22, the modified system of Dougall discloses wherein the hindfoot portion is linearly adjustably positionable along a first axis and along a second axis, and is rotationally adjustably positionable about a third axis (as both 12 and 14 can be positioned anywhere along the respective hindfoot and forefoot portions of the first sole in any orientation, see para. 0097, further see para. 0096 where rotational movement is allowed).
Regarding claim 23, the modified system of Dougall discloses wherein the forefoot portion is linearly adjustably positionable along a first axis and along a second axis, and is rotationally adjustably positionable about a third axis (as both 12 and 14 can be positioned anywhere along the respective hindfoot and forefoot portions of the first sole in any orientation, see para. 0097, further see para. 0096 where rotational movement is allowed).
Regarding claim 24, the modified system of Dougall discloses wherein the second outsole (12/13/14) further comprises a central portion (13) connecting the hindfoot portion (12) and the forefoot portion (14) (as can be seen in Fig. 11C).
Regarding claim 25, the modified system of Dougall discloses wherein the central portion is adjustably positionable relative to the hindfoot portion and the forefoot portion independently of the hindfoot portion and the forefoot portion (as disclosed para. 0096, each of the projections, even when connected, can move relative to each other and therefore independent of each other).
Regarding claim 26, the modified system of Dougall discloses wherein the central portion (13) comprises a generally planar surface (20, see para. 0084 where 20 can be flat) between the hindfoot portion and the forefoot portion (as seen in Fig. 11C).
Regarding claim 27, the modified system of Dougall discloses wherein the generally planar surface contacts ground during ambulation of the patient while wearing the shoe (as can be seen in Fig. 11C, as 20 is the lowest surface, it would contact the ground during ambulation).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For example, Cheney (US 2024/0049835) teaches outsoles with slots to adjust the size of the outsole, Thomas (US 2019/0053567) teaches footwear with second outsoles, and Livne (US 2023/0029846) teaches footwear with detachable and replaceable second outsoles and a plate between first and second outsoles.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HEATHER MANGINE, Ph.D. whose telephone number is (571)270-0673. The examiner can normally be reached Monday-Friday 8AM-4PM.
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, Clinton Ostrup can be reached at 571-272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HEATHER MANGINE, Ph.D./ Primary Examiner, Art Unit 3732