UNITED STATES pATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Offite
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.usplo.gov
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`APPLICATION NO.
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`FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONFIRMATION NO.
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`10/789,488
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`02/26/2004
`
`Simon Nicholas Richmond
`
`SPRUSON-08795
`
`7998
`
`05/0212006
`
`7590
`Christine A .. Lekutis
`MEDLEN & CARROLL, LLP
`Suite 350
`101 Howard Street
`San Francisco, CA 94105
`
`EXAMINER
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`A,MINHD
`
`ART UNIT
`
`2821
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`PAPER NUMBER
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`DATE MAILED: 05/02/2006
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`PT0-90C (Rev. 10/03)
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`Richmond, Exh. 2016, p.1
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`

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`Office Action Summary
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`Application No.
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`Appllcant(s)
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`/
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`10/789,488
`
`Examiner
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`RICHMOND, SIMON NICHOLAS
`
`Art Unit
`
`2821
`Minh D. A
`- The MAILING DATE of this communication appears on the cover sheet with the correspondence address -
`Period for Reply
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE~ MONTH{S) OR THIRTY {30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`- Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent tenn adjustment See 37 CFR 1. 704(b).
`Status
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`1 )[gl Responsive to communication{s) filed on 06 February 2006.
`2a)0 This action is FINAL.
`2b)[gl This action is non-final.
`3)0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
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`4)[gl Claim{s) 1-29 is/are pending in the application.
`4a) Of the above claim{s) __ is/are withdrawn from consideration.
`5)[gl Claim{s) 1-19 is/are allowed.
`6)[gl Claim{s) 20-29 is/are rejected.
`7)0 Claim{s) __ is/are objected to.
`8)0 Claim{s) __ are subject to restriction and/or election requirement.
`
`Application Papers
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`9)0 The specification is objected to by the Examiner.
`10)0 The drawing{s) filed on __ is/are: a)O accepted or b)O objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`11)0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PT0-152.
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`Priority under 35 U.S.C. § 119
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`12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119{a)-{d) or {f).
`a)O All b)O Some* c)O None of:
`1.0 Certified copies of the priority documents have been received.
`2.0 Certified copies of the priority documents have been received in Application No. __ .
`3.0 Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau {PCT Rule 17.2(a)).
`*See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`1) [gl Notice of References Cited (PT0-892)
`2) 0 Notice of Draftsperson's Patent Drawing Review (PT0-948)
`3) 0 Information Disdosure Statement(s) (PT0-1449 or PTO/SB/08)
`Paper No(s)/Mail Date __ .
`
`4) 0 Interview Summary (PT0-413)
`Paper No(s)/Mail Date. __ .
`5) 0 Notice of Informal Patent Application (PT0-152)
`6) 0 Other: __ .
`
`U.S. Patent and Trademar1< Office
`PTOL-326 (Rev. 7-05)
`
`Office Action Summary
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`Part of Paper No./Mail Date 1
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`Richmond, Exh. 2016, p.2
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`

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`Application/Control Number: 1 0/789,488
`Art Unit: 2821
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`Page 2
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`DETAILED ACTION
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`1.
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`This is a response to the Applicant's filing on 2/6/06.
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`In virtue of this filing,
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`claims 1-29 are currently presented in the instant applicant.
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`Applicant 's communication filed on 2/6/06 has been carefully considered by the
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`examiner. The arguments advanced therein are persuasive with respect to the rejection
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`of record, and those rejection are accordingly withdraw. In view of a further ·
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`consideration, however, a new rejection is set forth below. This action is not made final.
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`Claim Rejections - 35 USC § 103
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`2.
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`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
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`3.
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`Claims 20-29 are rejected under 35 U.S.C. 1 03(a) as being unpatentable over
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`by May et al (US 2005/0156103) in view of Zhang (US 6,528,782).
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`Regarding claim 20, figure 1, May disclose a body(10); a lens mounted on the
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`body and generally a chamber(11) and a circuit (21) having at least two lamps (19) of
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`different colours to produce a desired colour including a varying colour, the lamps(19)
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`being mounted to direct light into the chamber. See figures 1-5, col.3, lines [0045] to
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`col.8, lines [0098] to [01 03].
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`May does not teach a connections for at least one rechargeable battery to power
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`the circuit and a solar cell mounted on an exposed surface of the assembly so as to be
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`Richmond, Exh. 2016, p.3
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`

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`Application/Control Number: 1 0/789,488
`Art Unit: 2821
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`Page 3
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`exposed to light and operatively associated with the connections to charge the battery,
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`and a user operated on/off switch operable to control delivery of electric power from the
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`battery to operate said circuit, the switch being exposed to provide for access thereto by
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`a user thereby enabling a user to manipulate the switch to control the delivery of electric
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`power from the battery.
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`Zhang a chromogenic light filter and controls comprise a connections for at least
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`one rechargeable battery (361 )(figure 3) to power the circuit (361) and a solar cell(360)
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`mounted on an exposed surface of the assembly so as to be exposed to light and
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`operatively associated with the connections to charge the battery(360), and a user
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`operated on/off switch(456)(456) operable to control delivery of electric power from the
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`battery to operate said circuit, the switch(456) being exposed to provide for access
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`thereto by a user(440) thereby enabling a user to manipulate the switch to control the
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`delivery of electric power from the battery. See figures 1-3, col.3, lines 25-67 to col.29,
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`lines 1-55.
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`It would have been an obvious to one of ordinary skill in the art at the time the
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`invention was made to employ at least one rechargeable battery (361 )(figure 3) to
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`power the circuit (361) and a solar cell (360) mounted on an exposed surface of the
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`assembly so as to be exposed to light and operatively associated with the connections
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`to charge the battery (360), and a user operated on/off switch (456)(456) operable to
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`control delivery of electric power from the battery to operate said circuit, the switch(456)
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`being exposed to provide for access thereto by a user(440) thereby enabling a user to
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`manipulate the switch to control the delivery of electric power from the battery such as
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`Richmond, Exh. 2016, p.4
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`

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`Application/Control Number: 10/789,488
`Art Unit: 2821
`
`Page4
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`that suggested by Zhang in the lamp circuit of May to switch on/off and adjust different
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`color by user, since such a combination of circuits to create a different colors have been
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`well known in the art as evidenced by the teachings of Zhang.
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`Regarding claim 21 ,figure 10, May discloses the circuit includes a light sensitive
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`switch (139) that renders the circuit operative at low level voltage.
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`Regarding claim 22, figure 10, May disclose a sub-circuit connected to the lamps
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`to deliver electric power thereto so that the lamps produce said desired colour, with said
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`switch being an on/off switch (137) to deliver electric power from the batteries to said
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`sub-circuit. See figures 9-11.
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`Regarding claim 23, figure 10, May discloses the circuit includes a light sub-
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`circuit having an integrated circuit (129) operable to select a desired fixed colour, with
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`said switch being connected to said integrated circuit and operable to select said
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`desired fixed colour.
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`Regarding claim 24,figure 10, May discloses the circuit 1(21) includes a sub-
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`circuit(, said switch is a first switch, said first switch being an on/off switch to deliver
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`electric power from the battery to said sub-circuit, and said sub-circuit includes an
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`integrated circuit and a second switch connected to said integrated circuit, the second
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`switch being operable to select a desired fixed colour and exposed to provide for access
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`thereto by a user. Col.9, line [0112] to col.11, lines [0126].
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`Regarding claim 25, figures 1 and 10, May inherently discloses the second
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`switch is on the exposed external surface, since it provides a different colors or
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`adjusting a LED for different colors.
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`Richmond, Exh. 2016, p.5
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`

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`Application/Control Number: 10/789,488
`Art Unit: 2821
`
`Page 5
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`Regarding claim 26,figures 1 and 10, May discloses the circuit includes a light
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`sub-circuit (129)connected to the lamps to deliver electric power thereto so that the
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`lamps produce said desired colour with said switch being an on/off switch to deliver
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`electric power from the batteries to said sub-circuit.
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`Regarding claim 27, figures 1 and 10, May discloses the circuit includes a light
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`sub-circuit having an integrated circuit operable to select a desired fixed colour with the
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`switch being connected to said integrated circuit and operable to select said desired
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`fixed colour.
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`Allowable Subject Matter
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`3.
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`Claims 1-19 are allowed.
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`The following is a statement of reasons for the indication of allowable subject
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`matter:
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`The prior art does not teach that, a body; a lens mounted on the body and
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`generally enclosing a chamber having an upper rim surrounding a top opening, and a
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`bottom region; a reflector mounted in the bottom region; a cap assembly including
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`securing means to releasably engage the rim so that the cap assembly can be
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`selectively removed from the lens in combination with all limitations recited in
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`independent claim 1.
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`Claims 2-19 allowed, since they are depending in claim 1.
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`Richmond, Exh. 2016, p.6
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`

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`Application/Control Number: 10/789,488
`Art Unit: 2821
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`Page 6
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`Citation of relevant prior art
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`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure.
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`Wang (US. Patent No, 6,784,357) discloses a solar energy operated street
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`lamp.
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`use.
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`Wismeth et al (U.S. Patent No. 6,729,742) discloses a solar lamp for outdoor
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`Inquiry
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`Any inquiry concerning this communication or earlier communications from
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`the examiner should be directed to Minh Dieu A whose telephone number is (571)
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`272-1817. The examiner can normally be reached on M-F (5:30AM-2:45PM).
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`If attempts to reach the examiner by telephone are unsuccessful, the
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`examiner's supervisor, Timothy Callahan can be reached on (571) 272-1740. The
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`fax phone number for the organization where this application or proceeding is
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`assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for published
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`applications may be obtained from either Private PAIR or Public PAIR. Status
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`information for unpublished applications is available through Private PAIR only. For
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`more information about the PAIR system, see http://pair-direct.uspto.gov. Should you
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`have questions on access to the Private PAIR system, contact the Electronic Business
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`Center (EBC) at 866-217-9197 (toll-free).
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`Richmond, Exh. 2016, p.7
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`

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`Application/Control Number: 10/789,488
`Art Unit: 2821
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`Page 7
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`TU'f
`·:>A\MAR'f EXAM!NER
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`Examiner
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`Minh A
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`Art Unit 2821
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`4/23/06
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`Richmond, Exh. 2016, p.8
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`