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`06948.105II29
`‘M85 '
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`1590
`w.soouPenv.Esq-
`KING & SPALDINGI
`45”.‘ Floor
`I9] Peachrree Street, N.E.
`Atlanta, GA 30303
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`PETKOVSEK, DANIEL J
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`1|‘!-I
`DATE MAILED: lIJ06i2002
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`Please find below and/or attached an Office commiinieation concerning this application or proceeding.
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`no-soc (Reta?-01)
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`|LLUM|N_A, INC. EXHIBIT 1007
`ILLUMINA, INC. EXHIBIT 1007
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` Application No.
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`1oro1o.as4
`Examiner
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`' Avpllcantisl
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`WACH ET AL.
`Art Unit
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`Office Action Summary
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`2374
`Daniel J Petkovsek
`- The MAILING DAT of this communication appears on the cover sheet with the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE ,3 MONTH(S) FROM
`THE MAiL|NG DATE OF THIS COMMUNICATION.
`In no event. however. may I reply be timely tiled
`.' Emma“. or trim may he avenue underihe provlaieni cl 3? CFR 1.138(1).
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`elier SIX (6) MONTHS item the mailing date at this corrimunlonttolt.
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`it the period for reply specified shove is ieuthcn thirty (30) days. a reply within the statutory rninlrnunt oi thirty (30) days vii be considered timely.
`II no period torrepiy is specified above. the mexirnurn etetinoiy period wil apply and rail expire slit to; MONTHS from the mailing date oiinis conmwnicaiion.
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`- Failure to reply within the set or extended period for reply will. byataluie. came the Ippllcdiion to become ABANDONED (35 u.s.c. 5133).
`- AnyreplyreoeiveooytheOiticeieterihentl-reerrionihssflcr1rremslllngdeteofIhiscoInnitinIuiicn.evGn|f|i11Itt'|'|tIG.Illflvrlllwilflv
`canned patentterm Iditiatrttarlt. Set 37 C1-'R1,TtM(i'.t).
`Status
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`1)[_'_"l Responsive to oommunicationts) filed on
`2a)|:l This action is FINAL.
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`.2133 This action is non-final.
`3)l:| Since this application is in condition for allowance except for formal rntters. prosecution as to the merits is
`closed in accordance with the practice under Ex parts Quayle, 19_35 C.D. 11. 453 0.G. 213.
`Disposition of Claims
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`ME Claim(s) 1 lslare pending in the application.
`4a) Oi‘ the above claims) __ istsre withdrawn tram consideration.
`I 5)|j CIaim(s)_ islere allowed.
`6)E Claim(s) L-fl islare rejected.
`nij Claim(s) _'_ israre objected to.
`B)|:| Ciaim(s)
`are subject to restriction andlor election requirement."
`Application Papers
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`9)CI The specification is objected to by the Examiner.
`10)lZ| The drawingts) filed on @g isiare: a)|Z| accepted or b}[:I objected to by the Examiner.
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`Applicant may not request that any objection to the drawingts) he hotel in abeysnco. See 37 CFR 1.85(a).
`_11)l] The proposed drawing correction filed on __ is: all] approved b}|:l disapproved by the Examiner.
`if approved. corrected drawings are required in reply to this Oflice action,
`mi] The oath or declaration is objectiflq by the Examiner.
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`Priority under 35 U.S.C. §§ 119 and 120f[f?jj'
`13)l_'_'] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(3)-(d) or (f).
`a)C] All b)I:I some * c)|:I None.’ ti;
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`1.EIt Certified copies of the pfidrity documents have been received.
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`2.[] Certified copies of the_prigi;ity documents have been receuivednin Application No.
`3E Copies of the certified copies;of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule t7.2(a)).
`‘ See the attached detailed Office action for a list of the certified copies not received.
`t4)|:| Acknowledgment is made of a claim for domestic priority under 35 u.s.c. § 119(3) (to a_ provisional application).
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` PTD426 (Rev. 04-01)
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`a) CI The translation of the foreign language provisional application has been received.
`15)|:] Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 andior 121.
`Attechmenttsi
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`1) E Notice of References cited (910-392)
`2) CI Notice of Draflspersorfs Patent Drawing Review (PTO-948)
`3) CI information Disclosure Staion1entte)(PTO-1-l-l9)Peper No(e)
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`4) CI Interview Surrrnary (PTO-413) Paper Nets).
`5) I3 Notice of lntonn I Patent Application (PTO-152)
`at El Other.-
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`Ofiice Action Summary
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`Part of Paper No. 7
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`Page 2
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`Application/Control Numoer: 10/010,854
`Art Unit: 2874
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`Page 2
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`DETAILED ACTION
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`-Draivings
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`1: -
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`' This application haslbeen filed with informal drewings which areacceptable for
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`examination purposes only. Formal drawings will be required when the application is
`allowed. Correction is
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`Claint Objections
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`T Claims I and 11 are objected to becauseofthe following infonnalities: In claim
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`2.
`1, there is improper multiplespacing between words, and in claim 11, “exposed as a
`ports”, should be rewritten to ‘ieitposed as a port”. Appropriate correction is required.
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`Claim Rejections - 35 USC § 102
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`3. -
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`__ The following is a quotation ofthe appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless - '
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`described in--
`(e) the invention
`(1) an application for patent, published under section 1220!), by another filed in.the United States
`before the invention by the applicant for patent, except that an international application flied under the
`treaty defined in section 35l(a) shall have the effect under this subsection of I national application
`published under section l22(b) only ifthe international application designating the United States was
`published under Article 21(2)(a) ofsuch treaty in the Es-tglish'lengueg_e; or
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`{2} a patent granted on an application for patent by another filed inlthe United States before the
`invention by the applicant for patent, except thata patent shall not be deemed filed in the United States
`for the purposes of this subsection based on the filing ofan international application filed under the
`treaty defined in secaondiéda).
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`4.
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`Claims 1-5, 12, and in-;_2l rejected under 35 U.S.C. l02(e) as being anticipated by
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`Shmulovich U.S.P. No. 6,46Zf_g_69.
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`Shmulovich U.S.P. l\lo{,6,467,969 teaches (Fig. 3, colunm 3, lines 60-67) an
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`interlink for providing opticalchannels between an optical fiber system and multi-
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`Application/ControlNumoerfslnfl/010,854
`Art Unit: 2374
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`channel planar optical waveguide comprising the following: a docking surface with
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`separate ports for matching the optical fibers to selected ports ofthe planar optical
`.wa\_reguide, and at least two modified optical fibers
`tapered cladding regions (Claim
`i) terminated at or near the face surface ofthe plum: waveguiding region for efficient
`optical coupling between fiber and waveguide regions, which clesrly, fully meets
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`Applicsnfs claimed limitations.‘
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`"Regarding claims 2-3, the inter—link of Shmulovich ‘969 transitions between
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`circular to with different rectsnguiar cross sections; Regarding claims 4-5, the fibers are I
`shaped. Regarding claim
`second surface ofthe inter-link ofShmu1ov_ich ‘969 is
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`parallel to the first surface.
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`Rejections - 35 USC§ 103
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`The following is a quotation of 35 U.S.C. i03(a) which forms the basis for all
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`5.
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`obviousnessrejections 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 I02 ofthis 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.
`Patentabiiity shall not be negatived by the manner in which the invention was made.
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`6.
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`Claims 1-5, 12-21 are rejected under 35 U.S.C. 103(a) as being anticipated by
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`Murphy U.S.P. No. 4,639,074.
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`Murphy U.S.P. No. 4,639,074 teaches (Fig. 1, column 3, lines 22-51) an interlink
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`for an optical fiber system matched to planar optical waveguides comprising the
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`followingi a plurality of opticsl. fibers 24 and a multi-channel waveguide region 14, face i
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`surfaces 16 and 18 for matdin 3 fibers to waveguides with a plurality ofports for mating
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`respective fibers to waveguides. Murphy ‘074 does not explicitly teach that the optical
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`Application/Control Nunioer: 10l01O,8S4
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`fibers24used are mwifiwfiigéf. however, itwould havebeenobvious atthe timethe
`invention was made to a
`with ordinary skill in the artto use any variety offiber in
`the optical sub-assembly, sineelthe kind offiber used does not change the overall scope
`ofthe invention.
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`Regarding claims 2-3, the inter-link oftransitions between circular to
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`different rectangular cross sections (Fig 1). Regarding claims 4-5, the fibers are shaped.
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`Regarding claims 9 and 15, some of the interlinked fibers 24 in Fig I arrive to the
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`waveguiding region at oblique angles. Regarding claim 12, the second surface of the
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`inter-link of Murphy ‘M4 is parallel to the first surface. Regarding claims 13-14, it
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`would have been obvious at the time the invention was made to a person with ordinary
`skill in the art to change the second surface of the interlirik to be at an oblique angle to
`the first surface for the purpose of opticallynchanneling the signals in different directions,
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`since this modification does not change the scope ofthe invention ofMurphy ‘074.
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`ea.
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`Claims 10 and 1 I are rejected under 35 U.S.C. 103(a)_as being unpatentable over
`7.
`Shmulovich U.S.P. No. 6,4‘6|?€§69, as applied-to claim I above, and furtherin view of
`Nalcagoine et_a.l. JP 053-13039».
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`Shmulovich U.S.P. No," 6,467,969 teaches an interlitik for providing optical
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`' channels between an optical fiber system and rnulti-channel planar optical waveguide
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`comprising the following: a docking surface for matching the fibers to selected ports of
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`the waveguide, atleast two fibers with tapered cladding regions terminated at or near a
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`face surface of the planar waveguiding region for efficient optical coupling between fiber
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`Appliciitiot-v'ControI Nunioer: 10/010,854 -
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`and waveguide regions. Shmulovich ‘969 does not teach embedding the interlink fibers
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`in the first face region of the waveguide.
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`Nakagome et al. JP 0‘25:34_-13039 A discloses an interlink which embeds (Figs. 1-5) ’
`optical fibers in a fixed in the interfacing region between optical fibers and a
`waveguide region. Since the inventions ofShmulovich ‘696 and N_alcagoine et at. ‘039
`are both from the same fieldioiendeavor, linking optical fibers to waveguide regions, it
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`would have been obvious at the time the invention was made to a person having ordinary
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`skiil in the art to create embedded regions (from Nakagome et al. ’039) in the interfacing
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`apparatus of Shmulovich ‘G96.
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`8.
`Claims 6-8 are rejected under 35 U.S.C. -103 (a) as being unpatentable over
`Shmulovich ‘696.
`I
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`- Shmulovich U.S.P. No. 6,467,969 teafches an interlink for providing optical
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`channels between an optical fiber system and multi-channel planar optical waveguide
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`comprising the following: a docking surface for matching the fibers to selected ports of
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`the waveguide, atleast two fibers with tapered cladding regions terminated at or near a
`fece surface ofthe planar vgifilggguiding region for efficient opticoi coupling between fiber
`and waveguide regions. Shrnulovich ‘969 does not teach the use offilters or a iiltering
`system in the face surface ofthe interlink region ofthe device.
`Since filters and filtering systems are well known in the art for filtering optical
`M LTL.
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`signals in fiber and waveguidiing devices, it would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to‘ combine the elements
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`to include filters in the interfacing region of Shmulovich ‘969 for the purpose of
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`passingfblocking certain optical frequencies.
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`Conclusion
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`The prior art made of record and not relied upon is considered pertinent to
`9.
`' applicant's disclosure, with regards to the state of the art of fiber to waveguide interfacing
`devices: References B-F o,n.PTO-892.
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`0
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`rg§ggge_:
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directczidiio Daniei J Petkovsek whose telephone number is (703) 305-
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`6919. The examiner can rii:_iIiii1a1ly be reached on M-F 8:30-5:00.
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`ifattempts to reach the examiner bygtelephone are unsuccessful, the examiner-’s
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`supervisor, Rodney Bovernick can be. reached on (703) 308-4819. The fax phone
`numbers for the organization where this application or proceeding is assigned are (703) '
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`87249318 for regular communications and (703) 8772-9319 for After Fina]
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`communications.
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`Any inquiry of a general nature or relating to the status of this application or
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`proceeding should be directed to the receptionist whose telephone number is (703) 872-
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`9321.
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`r
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`r
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`Daniel Petkovsek
`October‘31, 2002
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`Noflce of References Cited"
`-a=1x‘:'_‘
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`U.3. PATENT DOCUMENTS
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`~',_:';;'A§pIicant(s) atentunder
`‘Reéxamination
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`WACHETAL:
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`V
`T~=Tme
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`II .
`In
`In T
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`IE
`Ifl Hat-S-Harm --
`.T
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`Ifl.Murvhv-E¢m°n.dJ- T
`IIIIT
`III —
`I_:—
`Ifl
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` H-E
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`In JP D5313039A .
`[
`11-1993
`NAKAGOME mi.
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`GD2B O6!3O
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`Notice of Rsierenoos Clhd
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`Part of Paper No. 7
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`=;
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`on.(suMEP§0.05u}.)
`‘Aaopyoflhisteferenoenm ng
`Damn nmmrv fomntampubflcattm dates Classillcatiunlmayba Us or forakun.
`|J.5. Patent and Trudolrmk Once
`PTO_-E92 (Rev. 01-2001)
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