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`Ex. PGS 1048
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`EX. PGS 1048
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Al<xlllldria, Virginia 22313-1450
`www.uspto.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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`111455,042
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`06/1612006
`
`Oyvind Hillesund
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`14.0123-PCT-US-CONT4
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`9123
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`08/18/2006
`7590
`28116
`WESTERNGECO L.L.C.
`10001 RICHMOND A VENUE
`(P.O. BOX 2469, HOUSTON, TX 77252-2469, U.S.A.)
`HOUSTON, TX 77042
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`EXAMINER
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`SOTELO, JESUS D
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`ART UNIT
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`3617
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`PAPER NUMBER
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`DATE MAILED: 08/18/2006
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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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`Ex. PGS 1048
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`Office Action Summary
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`Application No.
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`Applicant(s)
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`11/455,042
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`Examiner
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`HILLESUND ET AL.
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`Art Unit
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`3617
`Jesus D. Sotelo
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address -(cid:173)
`Period for Reply
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`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 term adjustment. See 37 CFR 1.704(b).
`Status
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`1)0 Responsive to communication(s) filed on __ .
`2a)0 This action is FINAL.
`2b)[81 This action is non-final.
`3)0 Since this application is in condition for allowance except for fonnal 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.
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`Disposition of Claims
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`4)[81 Claim(s) 1-34 is/are pending in the application.
`4a) Of the above claim(s) __ is/are withdrawn from consideration.
`5)0 Claim(s) __ is/are allowed.
`6)[81 Claim(s) 1.2.18 and 19 is/are rejected.
`7)[81 Claim(s) 3-17 and 20-34 is/are objected to.
`8)0 Claim(s) __ are subject to restriction and/or election requirement.
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`Application Papers
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`9)0 The specification is objected to by the Examiner.
`10)[81 The drawing(s) filed on 16 June 2006 is/are: a)[8] 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 fonn PT0-152.
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`Priority under 35 U.S.C. § 119
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`12)[8] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)[81 All b)O Some * c)O None of:
`1.0 Certified copies of the priority documents have been received.
`2.[81 Certified copies of the priority documents have been received in Application No. 09/787.723.
`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.
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`Attachment(s)
`1) [8] Notice of References Cited (PT0-892)
`2) 0 Notice of Draftsperson's Patent Drawing Review (PT0-948)
`3) 0 Information Disclosure Statement(s) (PT0-1449 or PTO/SB/08)
`Paper No(s)/Mail Date __ .
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`4) 0 Interview Summary (PT0-413)
`Paper No(s)/Mail Date. __ .
`5) 0 Notice of Informal Patent Application (PT0-152)
`6) 0 Other: __ .
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`U.S. Patent and Trademark Offoce
`PTOL-326 (Rev. 7-05)
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`Office Action Summary
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`Part of Paper No./Mail Date 20060816
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`Ex. PGS 1048
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`
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`Application/Control Number: 11/455,042
`Art Unit: 3617
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`Page2
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`DETAILED ACTION
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`Claims 1-34 are in the application.
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`The cross-reference to related applications should be updated to reflect the present status
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`1.
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`2.
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`of the parent and related applications.
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`Double Patenting
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`The nonstatutory double patenting rejection is based on a judicially created doctrine
`3.
`grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or
`improper timewise extension of the "right to exclude" granted by a patent and to prevent possible
`harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection
`is appropriate where the conflicting claims are not identical, but at least one examined
`application claim is not patentably distinct from the reference claim(s) because the examined
`application claim is either anticipated by, or would have been obvious over, the reference
`claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re
`Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225
`USPQ 645 (Fed. Cir. 1985); In re VanOrnum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re
`Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163
`USPQ 644 (CCP A 1969).
`A timely filed terminal disclaimer in compliance with 37 CFR 1.32l(c) or 1.321(d) may
`be used to overcome an actual or provisional rejection based on a nonstatutory double patenting
`ground provided the conflicting application or patent either is shown to be commonly owned
`with this application, or claims an invention made as a result of activities undertaken within the
`scope of a joint research agreement.
`Effective January 1, 1994, a registered attorney or agent of record may sign a terminal
`disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR
`3.73(b).
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`4.
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`Claims 1, 2, 18 and 19 are rejected on the ground of nonstatutory double patenting over
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`claim 10 ofU. S. Patent No. 6,932,017 since the claims, if allowed, would improperly extend
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`the 11right to exclude 11 already granted in the patent.
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`The subject matter claimed in the instant application is fully disclosed in the patent and is
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`covered by the patent since the patent and the application are claiming common subject matter,
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`Ex. PGS 1048
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`
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`Application/Control Number: 111455,042
`Art Unit: 3617
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`Page 3
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`as follows: "control system configured to use a control mode selected from a feather angle mode,
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`a tum control mode, and a streamer separation mode" generally as in claims 7 and 8 of the
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`patent.
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`Furthermore, there is no apparent reason why applicant was prevented from presenting claims
`corresponding to those of the instant application during prosecution of the application which
`matured into a patent. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See
`also l\.1PEP § 804.
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`Allowable Subject Matter
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`5.
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`Claims 3-17 and 20-34 are objected to as being dependent upon a rejected base claim, but
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`would be allowable if rewritten in independent form including all of the limitations of the base
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`claim and any intervening claims.
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`Conclusion
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`6.
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`The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure. Dolengowski ( 4,890,568) discloses the use of feathering control. Nielsen et al
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`(5,913,280) and Walker et al (5,973,995) disclose the problems with separation of streamers.
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`7.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Jesus D. Sotelo whose telephone number is 571-272-6686. The
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`examiner can normally be reached on Mon. Fri. 5:30AM 2:00PM.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Mr. Samuel J. Morano can be reached on 571-272-6684. The fax phone number for
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`the organization where this application or proceeding is assigned is 571-273-8300.
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`Ex. PGS 1048
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`Application/Control Number: 11/455,042
`Art Unit: 3617
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`Page4
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`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR
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`system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR
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`system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would
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`like assistance from a USPTO Customer Service Representative or access to the automated
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`information system, call800-786-9199 (IN USA OR CANADA) or 571-272-1000.
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`~2)~
`~e4tt4 z:>. s~
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`Primary Examiner
`Art unit 3617
`KNX03D69©
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`jds
`August 16, 2006
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`Ex. PGS 1048
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`
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`Notice of References Cited
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`Application/Control No.
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`111455,042
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`Examiner
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`Applicant(s)!Patent Under
`Reexamination
`HILLESUND ET AL.
`Art Unit
`
`Jesus D. Sotelo
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`3617
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`Date
`MM-YYYY
`01-1990
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`U.S. PATENT DOCUMENTS
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`Name
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`Dolengowski, George A
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`06-1999
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`Nielsen et al.
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`10-1999
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`Walker et al.
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`08-2005
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`Hillesund et al.
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`Page 1 of 1
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`Classification
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`114/246
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`114/242
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`367/20
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`114/244
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`Document Number
`Country Code-Number-Kind Code
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`*
`* A US-4,890,568
`*
`B US-5, 913,280
`* c US-5,973,995
`* D US-6,932,017
`E US-
`F US-
`G US-
`H US-
`I US-
`US-
`J
`K US-
`L US-
`M US-
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`*
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`Document Number
`Country Code-Number-Kind Code
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`Date
`MM-YYYY
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`Country
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`Name
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`Classification
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`FOREIGN PATENT DOCUMENTS
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`NON-PATENT DOCUMENTS
`Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)
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`*
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`N
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`0
`p
`a
`R
`s
`T
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`u
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`v
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`w
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`X
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`. A copy of th1s reference 1s not bemg furn1shed With th1s Office act1on. (See MPEP § 707.05(a).)
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`Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.
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`U,S, Patent and Trademark Office
`PT0-892 (Rev. 01-2001)
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`Notice of References Cited
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`Part of Paper No. 20060816
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`Ex. PGS 1048
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