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Patents Government The Courts News

Court Says USPTO Can Change Patent Rules 83

Posted by kdawson
from the mixed-message dept.
bizwriter writes "Many large companies have been closely monitoring the Tafas v. Doll lawsuit over whether the US Patent and Trademark Office has the power to change the patent application process in significant ways, so as to restrict the scope of patents and the chances of getting one. The US Court of Appeals for the Federal Circuit has finally spoken, with a split court ruling that the USPTO does have the necessary authority. The case stems from a court challenge to four new rules the USPTO put in place in 2007. A number of tech companies including Microsoft, IBM, Oracle, Apple, and Intel have supported the rule changes, which would strengthen their positions and make it more difficult for small companies to create, protect, and bring to market disruptive technology. These companies didn't have it all their way, as the appeals court said that one of the four rules conflicts with existing patent law and sent the other three back to a lower court for further review. If the decision is sustained by a full review of all 12 Federal Circuit appeals judges, it could be a blow to biotech and pharmaceutical companies, which depend on being able to obtain large numbers of patents. Expect further appeals on this one, and for the only beneficiaries in the short run to be the lawyers."
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Court Says USPTO Can Change Patent Rules

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  • by bencoder (1197139) on Tuesday March 24, 2009 @07:26AM (#27310175)

    "which would strengthen their positions and make it more difficult for small companies to create, protect, and bring to market disruptive technology."

    What? There is nothing like this in the article itself. And how exactly does a limit of 5 unique patents per invention strengthen their positions? From my perspective patents only serve to stifle progress in this age of accelerating change. I can understand why they helped back when things moved slower, but that's not the case anymore.

    • by bencoder (1197139)

      5 unique patents per invention

      Sorry. that should have been "5 unique claims per invention" (i.e. 5 unique claims per patent)

    • Re: (Score:3, Interesting)

      by Arancaytar (966377)

      Concurred. This pro-patent analysis seems very unreasonable in a time where patent lawsuits are mostly crazy monkey trials where an unproductive, greedy company seeks to prevent people from innovating by protecting things that have long become common knowledge or accepted practice.

      Thanks to the accelerated rate of innovation enabled by technology, there is a turning point where the damage done by keeping the lid on an invention outweighs the incentive.

      Nowadays, ideas are becoming cheaper, whereas implementi

      • This pro-patent analysis seems very unreasonable in a time where patent lawsuits are mostly crazy monkey trials where an unproductive, greedy company seeks to prevent people from innovating by protecting things that have long become common knowledge or accepted practice.

        Confirmation bias. We only ever hear about plane crashes, too.

        • Though both may operate in the GP's comment.

          In psychology and cognitive science, confirmation bias [wikipedia.org] is a tendency to search for or interpret new information in a way that confirms one's preconceptions and to avoid information and interpretations which contradict prior beliefs.

          Publication bias [wikipedia.org] arises from the tendency for researchers, editors, and pharmaceutical companies to handle experimental results that are positive (they found something) differently from results that are negative (found that something d

        • by Austerity Empowers (669817) on Tuesday March 24, 2009 @10:37AM (#27312459)

          Confirmation bias. We only ever hear about plane crashes, too.

          Possibly, but in both large tech companies I have worked for (one of which used to be well known for huge, world changing inventions), I have been in a position to monitor patent submissions.

          They're largely crap. My present company is the worst offender (but fortunately patents only in self defense, so far) but both produce a tremendous amount of bullshit patents.

          It's very rare that I see an idea novel enough and essential enough to warrant a patent. Usually I see an attempt to mine the area, harming only people for whom a single lawsuit could bankrupt them, but ignoring equal or larger predators because it'd be too expensive to bother. This is to say, they exist for anti-competitive purposes.

          Don't get me wrong, I know that the verbage in the summary about "small businesses" is code for "patent trolls", and I'm not trying to make the case that abuse is rampant only amongst big businesses. The entire system is not serving the intended purpose anymore, it's being used to prevent, restrict or channel innovation, to the detriment of the society which created the system.

        • We only ever hear

          Ah, so it's not

          Confirmation bias.

          but Selective Reporting.

          Confirmation bias is what happens when you foul-play the relative weighting of evidence that you know of for vs. against your conjecture.

          Selective Reporting is having the evidentiary weighting foul-played for you by the media (for present purposes this includes /.) by only letting you know about some of the evidence (giving the rest an effective weight of 0).

          Okay, so once you know about Selective Reporting, you can try to give the untold stories a non-zero weight, but

      • by Zordak (123132) on Tuesday March 24, 2009 @09:26AM (#27311439) Homepage Journal

        Okay, I'm a bona fide registered patent attorney, and I actually litigate against trolls. It is maddening to see them make some of their more credibility-stretching arguments to a court. Bad patents are my great nemesis. But the truth is, these were very, very bad rules, and everybody knew it. I know it's popular to knock the patent office on Slashdot, and yes, some bad patents have issued (I've litigated against some of them), but these rules are not the answer.

        The first problem is the limit on continuations, which was flagrantly in violation of statute. That's the one that got struck down, and without it, the others are not so meaningful. Actually, leaving continuations while limiting RCEs actually just creates MORE delay. So this doesn't fix the pendency problem. The second problem is an inventor often doesn't know what the patentable part of his invention is when he first files. I always tell my clients to give me very, very detailed disclosures, because chances are what you think is your invention turns out to not be patentable, or turns out to be only one of several patentable aspects of your disclosure. So most of my applications will have fewer than the 5/25 claim limit, but sometimes you need more flexibility, because you don't know which patents are going to survive examination, and it's much better to just cancel a claim and fall back on an existing alternative than to have to amend a claim.

        As for anti-business bias, I write patents for both really big companies you definitely know (and quite possibly hate) and little individual inventors. Guess who loses under these rules? The little guy, every time. This basically shuts down the ability of any little guys to take an idea to market and make money, because the ONLY competitive advantage they have against the big guys is their patents. This means that little guys will never disclose their ideas to big guys, because in most cases, your patent is the only protection you have against them just taking your idea and doing what they want with it.

        So yes, there are bad patents. Yes, there are trolls. Yes, I despise them as much as you do. In fact, I wrote a comment for the law review when I was in law school about the problem of patent trolls. My analysis was that the only way to shut down trolls without stifling legitimate inventors was to strengthen the obviousness standard, and specifically, to let go of the rigid adherence to the "Teaching, Suggestion, or Motivation" test. Just when I was ready to submit it for publication, the Supreme Court came out with KSR and adopted my exact reasoning (if only I'd sent them my paper, maybe I could have claimed credit). These rules do nothing to further innovation. They were the product of inept bureaucrats (including a director of the USPTO who was not even statutorily qualified for the position) trying desperately to pin their own failures on the patent bar by making it look like so-called "abuse of continuations" was the real problem. The truth is, only a very small percentage of applicants are doing anything remotely abusive with continuation practice. The real problem was Dudas and his cronies at the USPTO. These guys were appointed as political payoff, and they ran the place like payoff political appointees (i.e., ineptly). They railroaded these rules through, totally ignoring comments and concerns from the patent bar, applied them retroactively to existing applications, ignored statute, and then presented them in a sham unveiling where they solicited questions from participants, then ignored all of the questions submitted and at the end, instead answered a bunch of pre-canned softball questions they had carefully crafted themselves (hint to inept bureaucrats: it looks suspicious when you have power point slides for supposedly answering questions in real time). The whole thing was shady, abusive, and dishonest.

        • Re: (Score:1, Insightful)

          by Anonymous Coward

          Guess who loses under these rules? The little guy, every time.

          Please explain how that differs from the status quo, wherein a big company has an almost limitless litigation war chest, and the "little guy" does not.

          In the US legal system, whoever has the most money for lawyers, wins.

          • by Zordak (123132)
            Because if the case is valuable, the little guy can get an attorney to represent him on contingency. Even my very conservative firm that ONLY takes matters on an hourly basis and NEVER takes contingency cases is considering taking some patent plaintiffs' work on a contingency basis.
        • IANYourL. This post is my rambling, not legal advice. Do not rely on this post for any reason.

          Out of curiosity, why do lawyers in public forums almost always say that? I'm not your IT guy, but I don't disclaim technical advice I give you. Neither am I a doctor, but I'll hypothesize about medical stuff without prepending "IANAD" to every statement. In fact, I only see those disclaimers from lawyers, and seemingly every time a lawyer chimes in on legal stuff. Why is that?

          BTW, I do mean that as a serious question. Is it a requirement of the bar or something?

          • Re:OT: Your sig (Score:5, Informative)

            by Zordak (123132) on Tuesday March 24, 2009 @10:10AM (#27312011) Homepage Journal
            Because you can sue a lawyer for negligently giving you bad legal advice, especially if he creates the impression that he represents you. Yes, there are people in the world who really are stupid enough to think that a random post on Slashdot is legitimate legal advice (or at least claim they did, trying to strike it rich). So when you sue me, exhibit A is my .sig.
            • Isn't that true of almost any field, though? If I give you bad IT advice here and you follow it to the letter, trashing your data or otherwise compromising it, wouldn't I face the same exposure?
              • There are also state by state licensure requirements for lawyers, with criminal penalties attached to them. Most attorneys are only licensed to practice law in a handful of states at most. Applying law to facts in a professional capacity in a state in which you are not licensed is a no no, and one that bars you belong to wouldnt look upon any more highly than the bar of a state you werent licensed in. Of course, the likelihood of anyone inferring an attorney client relationship from a post on /. and acti
              • Two lines of thinking here...(and both could be wildly inaccurate)
                1) Lawyers, medical practitioners, even engineers (as in, taken the FE & PE, licensed, etc) are held to a standard of practice, legally and via professional organizations that control licensing. IT, for example, has no such established "standard" by which to prove negligence.

                2) IT (again for example) workers generally don't have "clients" as such, they work for a company. Knowing that, it would be hard to argue that one has given the imp

            • Re: (Score:3, Insightful)

              by fizzup (788545)

              You should know that putting it in your .sig is not sufficient. I have signatures disabled in my post viewing preferences. I find most of them to be without value. You should add your disclaimer to anything you write, because I didn't even know that your post was not advice.

              • I wonder if a court would consider his disclaimer a "good enough" effort, since you've willfully disabled that functionality.

                • Re: (Score:3, Interesting)

                  by SydShamino (547793)

                  I turned signatures off nearly a decade ago. I just can't see a trivial user preference like that being crucial for a legal case.

                  Of course, I can't see a slashdot post from a lawyer as crucial for a legal case, either.

                • IANAL, but the court would probably just throw the whole suit out as nonsense.

                  Irony totally intended.

              • Re: (Score:3, Interesting)

                by Zordak (123132)
                True, it's not perfect. But the totally effective thing to do would be to get a signed non-engagement letter from every Slashdot user and AC, co-signed by their own attorney for best results, clearly indicating that I don't represent them. Sometimes you just go with "good enough." Some people have .sigs off, but most don't. And sometimes, if I want to be extra careful, I will add an extra inline disclaimer.
        • Re: (Score:3, Interesting)

          by Temujin_12 (832986)

          I am not a bona fide registered patent attorney, but it seems to me that requiring a certain level of investment towards the development of the entity behind a patent (relative to what the investment capability of the filer is) would go a long way towards making the business of being a patent troll unprofitable. Once it's unprofitable to be a patent troll, they'll go away.

          This would basically make the patent system a two-way street. If the government is going to grant you a patent and help you protect it (

          • 1) A patent is a NEGATIVE right, not a positive right.
            A patent doesn't give me the right to practice my invention, only prevent others from doing so.
            For example, ...
            I can patent an improvement to a GM engine (which they have patents on).
            But, because GM has existing patents on their engine, you can't start making knock-off GM engines that include your invention.
            Now, if you are clever, you can make an adapter kit that, once someone has bought a GM engine from GM, they can adapt their GM engine to make use of

            • So, requiring that people sell their invention won't work because it tramples on other's patents.
              This is why some industries (e.g., semi-conductors) rely on cross-licensing deals.

              That's not what the OP said. He said "investment". In your GM example, sale of the adapter kits could be considered "investment".

              2) The patent system is already a two-way street.
              You give the public knowledge of your invention (versus keeping it a trade secret), and the government gives you an invention.

              Not a fair one, since the public's knowledge of your invention is worthless unless you license them. If someone innovates upon your innovation, they need your permission. A patent just means they can innovate first, ask second, and pray not to be sued third. On a side note, WTF does "the government gives you an invention" mean? A more accurate phrasing would be "the governme

              • by Zordak (123132)

                We all know from economics 101 that monopolies tend to be bad for the public in the long run (see M$ for an empirical example).

                Actually, we tend to believe that perpetual monopolies are a bad thing. Copyright is dangerously close to just being a perpetual monopoly. The term is ridiculously long, and we are seeing problems from that. But we decided way back in Article 1 of our U.S. Constitution that a limited monopoly would be a good thing to "promote the progress of science and useful arts." Maybe you disagree with that individually, and you're entitled to believe whatever you want. But the general consensus is, and has been f

              • That's not what the OP said. He said "investment". In your GM example, sale of the adapter kits could be considered "investment".

                Except that to sell them, you need to have them manufactured, and unless you own a factory, in many cases, you can't, because without a patent nothing prevents the contract manufacturer from stealing your inventions.

                That's an important part of what the patent system had initially been designed for: to protect inventors from manufacturers.

          • by Zordak (123132)
            The problem is that not everybody who has great ideas has the money and/or business sense to run a business. I have seen plenty of brilliant people who could not run a business with any amount of money. As a society, we still want their inventions, so we let them license the technology to others rather than make it themselves.
            • From the OP:

              requiring a certain level of investment towards the development of the entity behind a patent (relative to what the investment capability of the filer is)

              Since when does such a person have nonzero investment capability?

              • by Zordak (123132)
                After you've paid $10,000 -- $20,000 or more to get a patent issued, how much are you personally going to have to "invest" in the technology? Now take a poll of your friends and family. How much will they each have left to "invest" in the technology? Some try to file applications on their own to save on the attorneys' fees, and with very, very few exceptions, they end up with worthless or near worthless patents. The truth is, the cost of a patent is already prohibitive to many deserving people with good
        • by russotto (537200)

          The first problem is the limit on continuations, which was flagrantly in violation of statute.

          Which is too bad, because using continuations to update a patent to cover the state-of-the-art while maintaining a past priority date is a favorite patent troll tactic.

          So most of my applications will have fewer than the 5/25 claim limit

          It's hard for me to see why that one is procedural rather than substantive.

          • by Zordak (123132)

            using continuations to update a patent to cover the state-of-the-art while maintaining a past priority date is a favorite patent troll tactic.

            This was more the Lemelson tactic. You can't do it anymore because the calculation of the patent term changed. If the state of the art changes, you can only "update" your claims if the state of the art was already in your original disclosure. If it was, then you really are the inventor, and I don't have a problem with you getting those claims. The other option is filing a CIP as the state of the art changes, but you can't file on matter you didn't invent yourself (and if you do, your patent is void). S

        • by bl968 (190792)

          That is the issue isn't it the patent bar doesn't want the law and process to be more settled. Uncertainty for the patent bar means that they get more work and thus make more money.

    • Re: (Score:1, Interesting)

      by Anonymous Coward

      I agree.

      1) A big company can drive a small company out of business by using their patent on widely adopted technology.
      2) A small company may have ideas to make existing patent into a disruptive technology or more cheaply but unable to do so due to big company holding on to the patent.
      3) A big company have more patents in their portfolio to play with. A small company may try to sue a big company for 1 patent but the big company can overrun the small company with counter sue with 5-7 patents of their own.
      4)

      • 3) A big company have more patents in their portfolio to play with. A small company may try to sue a big company for 1 patent but the big company can overrun the small company with counter sue with 5-7 patents of their own.
        And this is WHY we have "patent trolls". Only a firm that has no products of thier own can really win in a patent lawsuit against a megacorp.

    • From my perspective patents only serve to stifle progress

      Except that without patents, if someone truly does invent something unique, they will have no chance at selling it, as a large company will just take the idea and out produce the small guy giving him no chance at success.

      • From my perspective patents only serve to stifle progress

        Except that without patents, if someone truly does invent something unique, they will have no chance at selling it, as a large company will just take the idea and out produce the small guy giving him no chance at success.

        An inventor has the first mover advantage [wikipedia.org]. Perhaps a compromise can be struck, say a patent term of 5 maybe 10 years. Now if an inventor comes up with something potentially valuable they may take it to a number of angel investors [wikipedia.org].

    • Re: (Score:3, Interesting)

      by darkmeridian (119044)

      Small pharmaceutical companies usually discover the novel compounds that may have medicinal value. However, it is the big companies that can perform human testing and bring it to market. Small companies may find it difficult to cover all medicinal uses for their products with only five patents. For instance, Viagra was designed for heart problems but turned out to be useful for erectile dysfunction. With these limitations, it is theoretically easier for big companies to bully small companies into giving up

    • "which would strengthen their positions and make it more difficult for small companies to create, protect, and bring to market disruptive technology."

      What? There is nothing like this in the article itself.

      Actually there is something like it in the article: "An additional criticism was that the rules would favor large established companies with existing patent portfolios and hamper smaller firms that are often sources of disruptive technologies and business models."

      From my perspective patents only serve to

      • Nahh, that last bit will never work...
        Better idea, switch business methods with formal product delivery theories and economics theses, ruling them down to (relatively) solid science, which would be quite harder to emulate with something trivial. And in order to get a software patent, you must provide verbatim source code, possibly with a full language specification, and documentation. That would make software patents quite possible, but also - quite useless.
        And while we're at it - compiled binary is not a

        • you must provide verbatim source code, possibly with a full language specification, and documentation.

          Software is already protected with copyrights. But then again with copyright terms being so long maybe it would be better to patent software. At least then it wouldn't be closed and protected for ever.

          Falcon

          • Precisely my point. Also, I wanted compiled binaries to not have full copyright rights, so as to make them unprotected. Making protecting compiled works worthless, source only. I guess though I'm not such a good programmer, hanging out on slashdot has made me more precise and logical. Not to mention improved my spelling...

            Cheers, especially to CmdrTaco.

  • Hmmmm (Score:4, Insightful)

    by Anonymous Coward on Tuesday March 24, 2009 @07:27AM (#27310189)

    Maybe it does help the larger IT companies more than smaller ones in the sense that the larger ones have the resources to submit more patents, but it only restricts the small ones (or anyone) from making lots of separate claims within each patent. This should make each individual patent easier to follow. That's good, right? You can still patent your small company's disruptive technology but you're effectively encouraged to focus on actually patenting that and not laying claim to everything under the sun and moon while you're doing it.

    • Moderation question (Score:1, Interesting)

      by Anonymous Coward

      According to the moderation log, my above comment has currrently been modded +4, as follows:

          50% Insightful
          30% Informative
          20% Interesting

      Question: How does that work? I could see +2/+1/+1 giving total +4 and 50%/25%/25% but what combination of points could get +4 with 50%/30%/20%?

      • Question: How does that work? I could see +2/+1/+1 giving total +4 and 50%/25%/25% but what combination of points could get +4 with 50%/30%/20%?

        The old system showed the raw number of points for each reason, up until that infamous post in "Oracle Breakable After All" [slashdot.org] that had literally hundreds of moderations. So Slashdot switched to percentages to make the controversy level of someone else's post harder to determine. But people could still infer the controversy level from the precise percentages: if they're all close to multiples of 9%, then it's likely that 11 moderations were applied. So Slashdot switched to rounding the percentages to the near

  • Details on the rules (Score:5, Informative)

    by langelgjm (860756) on Tuesday March 24, 2009 @07:29AM (#27310213) Journal

    A somewhat better description of the rules can be found here. [ip-watch.org]

    They include things like limiting the number of claims to 25 (some patents include hundreds of claims, I believe; these are the heart of the patent, as they define what exactly might be infringed); and setting a limit on the number of requests for reexamination (I think that currently, you can just refile indefinitely, and that many applicants do just that, hoping that eventually an examiner will give up and accept their patent application).

    • I don't think you meant requests for reexamination, which are generally a Good Thing. A reexamination is a way to try to invalidate an already issued patent. Solid patents can usually withstand a reexamination, while poor ones can be invalidated by a reexam with relatively low costs.

      Maybe you meant Requests for Continued Examination (RCE)?
    • by Theaetetus (590071) <theaetetus...slashdot@@@gmail...com> on Tuesday March 24, 2009 @08:19AM (#27310695) Homepage Journal

      A somewhat better description of the rules can be found here. [ip-watch.org]

      They include things like limiting the number of claims to 25 (some patents include hundreds of claims, I believe; these are the heart of the patent, as they define what exactly might be infringed); and setting a limit on the number of requests for reexamination (I think that currently, you can just refile indefinitely, and that many applicants do just that, hoping that eventually an examiner will give up and accept their patent application).

      For the former, it's not as big an issue in high technology, but it's a much bigger issue in pharmaceuticals and biotechnology, where a 100-claim set is actually reasonable, due to the numbers of species or minor changes to a drug that they're claiming as dependent claims.

      For the latter, one slight note I'd add is that the requests for continuing examination still have to move prosecution along... You can't just keep saying "my invention is A", have the examiner say "A is not novel", and file a continuation saying "my invention is A", unless you want it rubber stamped. Instead, it's more about narrowing the claims until you get to "Okay, my invention is A and B, when you use it to do C and D".

  • That means that you can't go patenting "a visual display to transmit data in visual form over a rapidly updated and refreshed rectangular optical screen" and then go sue every television and LCD display maker under the sun. So much for my idea to patent breathing.
  • by gravesb (967413) on Tuesday March 24, 2009 @07:47AM (#27310379) Homepage
    for Congress re-writing the law in a comprehensive matter. If Congress does so, courts have to defer to the new laws. With the USPTO doing it, every rule change will be heavily scrutinized by courts, and it will take years of start and stop rule making to come up with an ad hoc, disjointed rule set. But at least someone is doing something.
    • by langelgjm (860756) on Tuesday March 24, 2009 @07:52AM (#27310431) Journal

      On the other hand, if Congress tries to rewrite it, every industry lobbyist will be pushing their own agenda at Congress. And I would tend to think that the USPTO has a better idea of what needs to be done in terms of reform than Congress.

      • by cvd6262 (180823) on Tuesday March 24, 2009 @09:14AM (#27311299)

        True. My first reaction was like the GP: The Constitution grants congress the authority to protect intellectual property ("inventions"). I don't see the Patent Office mentioned anywhere therein. While it makes sense that an office would be creating for the application of congressional rules, granting that office the authority to change the rules is tantamount to dereliction of duty.

        But then, like you, I looked back at the last dozen-or-so congresses and realized I don't have much faith in them upholding the Constitution either. Whether it's unlawful search and seizure or bills of attainder, I'm pretty sure most of our elected officials flunked high school government.

        There is one difference between having congress set the rules and allowing the USPTO do it: We can vote out the congress.

        • While it makes sense that an office would be creating for the application of congressional rules, granting that office the authority to change the rules is tantamount to dereliction of duty.

          Dereliction? I believe you misspelled "delegation". If the Congress wants to "secur[e] for limited Times to [] Inventors the exclusive right to their [] Discoveries" by creating a federal agency that specializes in finding the way to do so that best "promote[s] Progress", let them.

          There is one difference between having congress set the rules and allowing the USPTO do it: We can vote out the congress.

          The Congress can always legislate away a USPTO regulation if it feels the need.

          • Re: (Score:3, Insightful)

            by cvd6262 (180823)

            I can accept that.

            Will you agree there are some authorities that congress should not delegate away? IMHO, governance of property rights is only of those authorities.

            Here in NY, we have a great deal of regulating offices that the state legislature created (as you point out, they were well authorized to do so), but now these offices exist without state oversight, yet they wield power greater than the elected officials who created them.

            Child protective services offices in many states operate under this lack of

  • by Brandybuck (704397) on Tuesday March 24, 2009 @12:20PM (#27314275) Homepage Journal

    A number of tech companies including Microsoft, IBM, Oracle, Apple, and Intel have supported the rule changes, which would strengthen their positions and make it more difficult for small companies to create, protect, and bring to market disruptive technology.

    If you want to support small companies and get more disruptive technologies to the market, ABOLISH PATENTS! Sheesh.

    Handing out exclusive monopolies doesn't help small business, it props up big business and hinders innovation. The proponents say it foster innovation, but it only fosters getting to the first rung of the ladder. Once you have a monopoly on the first rung, everyone has to pay royalties to get to the second and third. Big businesses love patents, because they beat down their small business competitors, and prevent new ones from rising. (Actually, big businesses love most regulations, for exactly the same reason).

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