`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`
`16/307,376
`
`12/05/2018
`
`Nitish KUMAR
`
`2857.7240001
`
`6802
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 NEW YORK AVENUE, N.W.
`WASHINGTON, DC 20005
`
`PEACE. RHONDA S
`
`ART UNIT
`
`2874
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/10/2019
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`
`following e—mail address(es):
`e-offiee @ sternekessler. com
`
`PTOL-90A (Rev. 04/07)
`
`
`
`0/7709 A0170” Summary
`
`Application No.
`16/307,376
`Examiner
`R. PEACE
`
`Applicant(s)
`KU MAR et al.
`Art Unit
`2874
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS 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.
`|f 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
`
`1)[:] Responsive to communication(s) filed on
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a)D This action is FINAL.
`
`2b)
`
`This action is non-final.
`
`3)C] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`
`4):] 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 Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)
`Claim(s)
`
`16—30 is/are pending in the application.
`
`5a) Of the above claim(s)
`
`is/are withdrawn from consideration.
`
`[:1 Claim(s) _ is/are allowed.
`
`Claim(s) fl is/are rejected.
`
`[j Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`are subject to restriction and/or election requirement
`C] Claim(s)
`9
`* If any claims have been determined aflowabie, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`httpfiwww.”smogovmatentszinit_events[pph[index.'§p or send an inquiry to PPeredhack@g§ptg.ggv.
`
`Application Papers
`
`10):] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 12/5/18 is/are: a). accepted or b)D 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).
`
`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a). All
`
`b)I:l Some**
`
`c)C] None of the:
`
`1.. Certified copies of the priority documents have been received.
`
`2.[:] Certified copies of the priority documents have been received in Application No.
`
`3.[:] 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)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date M.
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20191002
`
`
`
`Application/Control Number: 16/307,376
`Art Unit: 2874
`
`Page 2
`
`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.
`
`Priority
`
`Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
`
`Information Disclosure Statement
`
`The information disclosure statement (IDS) submitted on 1/9/19 was filed in
`
`compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure
`
`statement is being considered by the examiner.
`
`Claim Rejections - 35 USC § 1 12
`
`The following is a quotation of 35 U.S.C. 112(d):
`
`(d) REFERENCE IN DEPENDENT FORMS—Subject to subsection (e), a claim in dependent
`form shall contain a reference to a claim previously set forth and then specify a further
`limitation of the subject matter claimed. A claim in dependent form shall be construed to
`incorporate by reference all the limitations of the claim to which it refers.
`
`The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
`
`Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim
`in dependent form shall contain a reference to a claim previously set forth and then specify a
`further limitation of the subject matter claimed. A claim in dependent form shall be construed
`to incorporate by reference all the limitations of the claim to which it refers.
`
`Claim 22 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th
`
`paragraph, as being of improper dependent form for failing to further limit the
`
`subject matter of the claim upon which it depends, or for failing to include all the
`
`limitations of the claim upon which it depends. All of the limitations of dependent
`
`claim 22 are recited in independent claim 16. Applicant may cancel the claim(s), amend
`
`the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in
`
`
`
`Application/Control Number: 16/307,376
`Art Unit: 2874
`
`Page 3
`
`independent form, or present a sufficient showing that the dependent claim(s) complies
`
`with the statutory requirements.
`
`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 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.
`
`Claim(s) 16, 17, 22, 23, 25, 26 and 28 is/are rejected under 35 U.S.C.
`
`102(a)(1) as being anticipated by Clowes et al (US 2014/0233091).
`
`Re. Claim 16, Clowes et al discloses a supercontinuum radiation source
`
`comprising:
`
`illumination optics 14 arranged to receive a pulsed pump radiation beam having a
`
`power and to form a plurality of pulsed sub-beams, each pulsed sub-beam comprising a
`
`portion of the pulsed pump radiation beam (Fig 4; [0078]-[0079]);
`
`a plurality of waveguides 3 each arranged to receive at least one of the plurality
`
`of pulsed subbeams beam and to broaden a spectrum of that pulsed sub-beam so as to
`
`
`
`Application/Control Number: 16/307,376
`Art Unit: 2874
`
`Page 4
`
`generate a supercontinuum sub-beam wherein the power of the pulsed pump radiation
`
`beam is spread over the plurality of waveguides 3 (Fig 4; [0079], [0066], [0101]); and
`
`collection optics 5 arranged to receive the supercontinuum sub-beam from the
`
`plurality of waveguides 3 and to combine them so as to form a supercontinuum radiation
`
`beam (Fig 4; [0081]).
`
`Re. Claim 17, Clowes et al discloses the plurality of waveguides 3 comprise
`
`integrated optics ([0066], [0087]).
`
`Re. Claim 22, Clowes et al discloses the power of the pulsed pump radiation
`
`beam is spread over the plurality of waveguides 3 (Fig 4; [0079], [0066]).
`
`Re. Claim 23, Clowes et al discloses the supercontinuum radiation beam has a
`
`spectrum which comprises radiation in the wavelength range of 400 to 2600 nm
`
`qoosop.
`
`Re. Claim 25, Clowes et al discloses the collection optics 5 comprises a plurality
`
`of groups of waveguides, the plurality of groups of waveguides being sequentially
`
`ordered and wherein the waveguides from each group of waveguide optically couple to
`
`a plurality of waveguides in the next group of waveguides in the sequence ([0088]-
`
`[0090], [0111]).
`
`Re. Claim 26, Clowes et al discloses the illumination optics and/or collection
`
`optics comprises a plurality of lensed fibers, each of the lensed fibers coupling to at
`
`least one of the plurality of waveguides 3 ([0075], [0087]).
`
`Re. Claim 28, Clowes et al discloses an optical measurement system
`
`comprising: a supercontinuum radiation source comprising:
`
`
`
`Application/Control Number: 16/307,376
`Art Unit: 2874
`
`Page 5
`
`illumination optics 14 arranged to receive a pulsed pump radiation beam having a
`
`power and to form a plurality of pulsed sub-beams, each pulsed sub-beam comprising a
`
`portion of the pulsed pump radiation beam (Fig 4; [0078]-[0079]);
`
`a plurality of waveguides 3 each arranged to receive at least one of the plurality
`
`of pulsed sub-beams beam and to broaden a spectrum of that pulsed sub-beam so as
`
`to generate a supercontinuum sub-beam wherein the power of the pulsed pump
`
`radiation beam is spread over the plurality of waveguides 3 (Fig 4; [0079], [0066],
`
`[0101]); and
`
`collection optics 5 arranged to receive the supercontinuum sub-beam from the
`
`plurality of waveguides 3 and to combine them so as to form a supercontinuum radiation
`
`beam (Fig 4; [0081]).
`
`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 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.
`
`
`
`Application/Control Number: 16/307,376
`Art Unit: 2874
`
`Page 6
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
`
`USPQ 459 (1966), that are applied for establishing a background for determining
`
`obviousness under 35 U.S.C. 103 are summarized as follows:
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`4. Considering objective evidence present in the application indicating
`
`obviousness or nonobviousness.
`
`This application currently names joint inventors. In considering patentability of the
`
`claims the examiner presumes that the subject matter of the various claims was
`
`commonly owned as of the effective filing date of the claimed invention(s) absent any
`
`evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
`
`point out the inventor and effective filing dates of each claim that was not commonly
`
`owned as of the effective filing date of the later invention in order for the examiner to
`
`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
`
`prior art against the later invention.
`
`Claims 18-21 and 24 is/are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Clowes et al (US 2014/0233091).
`
`Re. Claim 18, Clowes et al discloses the supercontinuum radiation source as
`
`discussed above. Clowes et al discloses the plurality of waveguides are formed of silica
`
`or other glass materials ([0076]).
`
`
`
`Application/Control Number: 16/307,376
`Art Unit: 2874
`
`Page 7
`
`However, Clowes et al does not explicitly disclose the plurality of waveguides are
`
`formed from silicon nitride (Si3N4) and are surrounded by a cladding material or silicon
`
`or silicon dioxide (SiOz).
`
`Optical waveguides comprising a silicon nitride core surrounded by a cladding
`
`material for supercontinuum generation are well known in the art, and one of ordinary
`
`skill would have found the claimed arrangement obvious, since it has been held to be
`
`within the general skill of a worker in the art to select a known material on the basis of
`
`its suitability for the intended use as a matter of obvious design choice.
`
`In re Leshin,
`
`125 USPQ 416.
`
`Re. Claim 19, Clowes et al discloses the supercontinuum radiation source as
`
`discussed above. Clowes et al discloses the plurality of waveguides may be integrally
`
`formed ([0082]).
`
`However, Clowes et al does not disclose the plurality of waveguides are formed
`
`on a common substrate.
`
`Integration of multiple optical waveguides on a common substrate is well known
`
`in the art, and commonly done for the purpose of creating a discrete photonic circuit.
`
`The claimed arrangement would have been obvious to one of ordinary skill in the
`
`art at the time the invention was effectively filed for the purpose of providing the
`
`waveguides as an integrated photonic substrate. “A person of ordinary skill is also a
`
`person of ordinary creativity, not an automaton” — ‘[w]hen there is a design need or
`
`market pressure to solve a problem and there are a finite number of identified,
`
`predictable solutions, a person of ordinary skill has good reason to pursue the known
`
`options within his or her technical grasp.
`
`If this leads to the anticipated success, it is
`
`
`
`Application/Control Number: 16/307,376
`Art Unit: 2874
`
`Page 8
`
`likely the product not of innovation but of ordinary skill and common sense.” KSFi’
`
`International Co. v. Teleflex Inc., 550 USPQ2d 1385 (2007).
`
`Re. Claim 20, Clowes et al discloses the supercontinuum radiation source as
`
`discussed above.
`
`However, Clowes et al does not disclose the plurality of waveguides have a width
`
`of the order of 1pm or less and a height of the order of 500 nm or less.
`
`Optical waveguides are known to be formed within the claimed dimensions.
`
`It
`
`would have been obvious to one of ordinary skill in the art at the time the invention was
`
`effectively filed to form the plurality of waveguides with a width of the order of 1 um or
`
`less and a height of the order of 500 nm or less, since it has been held that where the
`
`general conditions of a claim are disclosed in the prior art, discovering the optimum or
`
`workable ranges involves only routine skill in the art.
`
`In re Aller, 105 USPQ 233.
`
`Re. Claim 21, Clowes et al discloses the supercontinuum radiation source as
`
`discussed above.
`
`However, Clowes et al does not disclose each of the plurality of waveguides has
`
`a length of 10 mm or less.
`
`Optical waveguides are known to be formed within the claimed length range.
`
`It
`
`would have been obvious to one of ordinary skill in the art at the time the invention was
`
`effectively filed to form the plurality of waveguides with a length of 10 mm or less, since
`
`it has been held that where the general conditions of a claim are disclosed in the prior
`
`art, discovering the optimum or workable ranges involves only routine skill in the art.
`
`In
`
`re Aller, 105 USPQ 233.
`
`
`
`Application/Control Number: 16/307,376
`Art Unit: 2874
`
`Page 9
`
`Re. Claim 24, Clowes et al discloses the supercontinuum radiation source as
`
`discussed above. Clowes et al also discloses the source comprises at least ten
`
`waveguides ([0020]—[0021], [0024], and [0080]).
`
`However, Clowes et al does not disclose the supercontinuum radiation source
`
`comprises 100 or more waveguides.
`
`It would have been obvious to one of ordinary skill in the art at the time the
`
`invention was effectively filed to form the source with 100 or more waveguides, since it
`
`has been held that where the general conditions of a claim are disclosed in the prior art,
`
`discovering the optimum or workable ranges involves only routine skill in the art.
`
`In re
`
`Aller, 105 USPQ 233.
`
`Claim 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Clowes et al (US 2014/0233091) and Duguay (US 3,958,229).
`
`Re. Claim 27, Clowes et al discloses the supercontinuum radiation source as
`
`discussed above, wherein the illumination optics 14 is formed with an optical splitter (Fig
`
`4; [0078]-[0079]);
`
`However, Clowes et al does not disclose an arrangement wherein the
`
`illumination optics comprises a first optic and a focusing optic, the first optic is arranged
`
`to receive the radiation beam from the radiation source and to direct it onto the focusing
`
`optic, and the focusing optic is arranged to optically couple a different portion of the
`
`pump radiation beam to at least two of the plurality of waveguides.
`
`Duguay discloses an optical splitter comprising a pulsed radiation source 10,
`
`illumination optics 11/12 to split a pulsed optical signal from the source 10 into a
`
`
`
`Application/Control Number: 16/307,376
`Art Unit: 2874
`
`Page 10
`
`plurality of optical signals, the plurality of optical signals input into a plurality of optical
`
`waveguides 14. The illumination optics 11/12 comprises a first optic 11 and a focusing
`
`optic 12, the first optic 11 is arranged to receive the radiation beam from the pulsed
`
`radiation source 10 and to direct it onto the focusing optic 12, and the focusing optic 12
`
`is arranged to optically couple a different portion of the pump radiation beam to at least
`
`two of the plurality of waveguides 14 (Fig 1; col. 3 lines 50-62).
`
`The claimed arrangement would have been obvious to one of ordinary skill in the
`
`art, since one of ordinary skill would have sought out well known optical splitters to
`
`implement the optical splitter schematically shown in Clowes et al, and Duguay
`
`illustrates a well-known and efficient optical splitter for pulsed optical signals. “A person
`
`of ordinary skill is also a person of ordinary creativity, not an automaton” — ‘[w]hen there
`
`is a design need or market pressure to solve a problem and there are a finite number of
`
`identified, predictable solutions, a person of ordinary skill has good reason to pursue the
`
`known options within his or her technical grasp.
`
`If this leads to the anticipated success,
`
`it is likely the product not of innovation but of ordinary skill and common sense.” KSR
`
`International Co. v. Teleflex Inc., 550 USPQ2d 1385 (2007).
`
`Claims 29 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Clowes et al (US 2014/0233091) and Den Boef (US 2011/0069292 A1).
`
`Re. Claims 29 and 30, Clowes et al discloses a supercontinuum radiation source
`
`comprising:
`
`
`
`Application/Control Number: 16/307,376
`Art Unit: 2874
`
`Page 11
`
`illumination optics 14 arranged to receive a pulsed pump radiation beam having a
`
`power and to form a plurality of pulsed sub-beams, each pulsed sub-beam comprising a
`
`portion of the pulsed pump radiation beam (Fig 4; [0078]-[0079]);
`
`a plurality of waveguides 3 each arranged to receive at least one of the plurality
`
`of pulsed subbeams beam and to broaden a spectrum of that pulsed sub-beam so as to
`
`generate a supercontinuum sub-beam wherein the power of the pulsed pump radiation
`
`beam is spread over the plurality of waveguides 3 (Fig 4; [0079], [0066], [0101]); and
`
`collection optics 5 arranged to receive the supercontinuum sub-beam from the
`
`plurality of waveguides 3 and to combine them so as to form a supercontinuum radiation
`
`beam (Fig 4; [0081]).
`
`However, Clowes et al does not disclose the supercontinuum radiation source as
`
`contained within an alignment mark measurement system, the system additionally
`
`comprising: an optical system operable to project the supercontinuum radiation beam
`
`onto an alignment mark on a substrate supported on a substrate table; a sensor
`
`operable to detect radiation diffracted/scattered by the alignment mark and to output a
`
`signal containing information related to a position of the alignment mark; and a
`
`processor configured to receive the signal from the sensor and to determine a position
`
`of the alignment mark relative to the substrate table in dependence thereon. Clowes et
`
`al also fails to disclose such an alignment mark measurement system contained within a
`
`lithographic apparatus.
`
`Den Boef discloses an alignment mark measurement system AS (Fig 3), the
`
`system comprising: a light source 2 comprising a supercontinuum radiation source 221
`
`to form a supercontinuum radiation beam (Figs 3, 4 and 6; [0043], [0047]); an optical
`
`
`
`Application/Control Number: 16/307,376
`Art Unit: 2874
`
`Page 12
`
`system 12/13/15/16 operable to project the supercontinuum radiation beam onto an
`
`alignment mark 30 on a substrate W supported on a substrate table WTa (Figs 1 and 3;
`
`[0037], [0039], [0042]); a sensor 18 operable to detect radiation diffracted/scattered by
`
`the alignment mark 30 and to output a signal containing information related to a position
`
`of the alignment mark 30 (Fig 4; [0040]-[0041]); and a processor configured to receive
`
`the signal from the sensor 18 and to determine a position of the alignment mark 30
`
`relative to the substrate table W in dependence thereon (Fig 4; [0037]). Den Boef also
`
`discloses the alignment mark measurement system AS is contained within a
`
`lithographic apparatus LA (Fig 1; [0037]).
`
`The claimed arrangement would have been obvious to one of ordinary skill, since
`
`Den Boef discloses the lithographic apparatus and alignment mark measurement
`
`system is an improved metrology device that can measure on a smaller target ([0002]-
`
`[0006D.
`
`Conclusion
`
`The prior art made of record and not relied upon is considered pertinent to
`
`applicant's disclosure.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to R. PEACE whose telephone number is (571)272-8580.
`
`The examiner can normally be reached on 9-5 pm.
`
`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.
`
`
`
`Application/Control Number: 16/307,376
`Art Unit: 2874
`
`Page 13
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Uyen-Chau Le can be reached on (571) 272-2397. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571 -273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
`
`/RHONDA S PEACE/
`
`Primary Examiner, Art Unit 2874
`10/4/19
`
`

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