Ex Parte Reich et al

Patent Trials and Appeals Board

Feb 15, 2019

13780844 - (D) (P.T.A.B. Feb. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/780,844 02/28/2013
28395 7590 02/20/2019
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Daniel Reich
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
83236943 2489
EXAMINER
DESAI, RESHA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
02/20/2019 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL REICH, SANDRA L. WINKLER,
ERICA Z. KLAMPFL, NATALIE I. OLSON,
JOHN MATTHEW GINDER, and
TIMOTHY JOHN W ALLINGTON 1
Appeal2017-007852
Application 13/780,844
Technology Center 3600
Before HUNG H. BUI, ADAM J. PYONIN, and MICHAEL M. BARRY,
Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-23, which constitute all pending claims. See Final Act. 1 and
Appeal Br. 14--17 (Claims App'x). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 "The real party in interest is FORD GLOBAL TECHNOLOGIES, LLC."
Appeal Br. 3.
Appeal2017-007852
Application 13/780,844
Introduction
Appellants' invention "relates to a system and method for vehicle fleet
purchase recommendations based on one or more designated customer
parameters." Spec. ,r 2. Claims 1, 15, and 21 are independent, of which
claim 1 is illustrative:
1. A system for generating a vehicle fleet
configuration, comprising:
an input device configured to receive user input
indicative of a number of vehicles to configure and at least one
fleet operational parameter target;
a computer in communication with the input device and a
database having fuel economy and emissions information for a
plurality of available vehicle models and powertrain
configurations, in response to the user input, the computer is
configured to generate and output for display via the input
device, a recommended number of vehicles for one or more of
the available vehicle models with associated powertrain
configurations to satisfy the number of vehicles to purchase,
wherein the operational parameters associated with the number
of vehicles satisfy the fleet operational parameter target.
Appeal Br. 14 (Claims App'x).
Re} ections and References
Claims 1-23 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter as directed to an abstract idea without reciting
significantly more. Final Act. 3-6; see also Ans. 2--4.
Claims 1-3, 6, and 8-18 stand rejected as unpatentable over Schuette
(US 2006/0074707 Al; Apr. 6, 2006) and Stevens (US 2011/0270486 Al;
Nov. 3, 2011). Final Act. 7-15; see also Ans. 4---6.
Claims 4 and 5 stand rejected as unpatentable over Schuette, Stevens,
and Anderson (US 2006/0217993 Al; Sept. 28, 2006). Final Act. 16-17.
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Claims 7 and 19--23 stand rejected as unpatentable over Schuette,
Stevens, and Rudow (US 2011/0184784 Al; July 28, 2011). Final Act. 18-
23.
ANALYSIS
A. The§ 101 Rejection
1. Principles of Law
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219--20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
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mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see also id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (internal citation omitted). "A
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claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50-57 (Jan. 7, 2019) ("2019 PEG"). Under the 2019 PEG, we first
look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)). 2
See 2019 PEG at 52, 55-56. Only if a claim (1) recites a judicial exception
and (2) does not integrate that exception into a practical application, does the
office then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 PEG at 56.
2. Analysis
For the§ 101 rejection, Appellants argue claims 1-23 together as a
group. See Appeal Br. 4--10. We select claim 1 as representative, see
2 All references to the MPEP are to are to Rev. 08.2017 (Jan. 2018).
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37 C.F.R. § 4I.37(c)(l)(iv), and, thus, for this rejection, all claims stand or
fall with claim 1.
The Examiner determines claim 1 is directed to the abstract idea of
"generating a vehicle fleet configuration." Final Act. 4; see also id. at 4--5
( determining the directed-to idea is ineligible as abstract because it is an
activity "that 'can be performed in the human mind, or by a human using a
pen and paper"' (quoting CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1371-72 (Fed. Cir. 2011)). Appellants contend that "generating
a vehicle fleet configuration" is not a patent-ineligible abstract idea. See
Appeal Br. 4--7. In particular, Appellants contend the Examiner errs because
"the 'abstract ideas' exception is confined to only those examples provided
by the Courts and should not be extended beyond those examples," and "the
identified abstract idea ... is not similar to at least one of those previously
identified by the courts." Appeal Br. 5, 7. Appellants further contend the
§ 101 rejection is improper because "even if the claims are directed to the
abstract idea of 'generating a vehicle fleet configuration,' the claims do not
seek to tie up this idea such that others cannot practice it." Appeal Br. 9.
These arguments are unpersuasive.
We agree with the Examiner that claim 1 recites the abstract idea of
"generating a vehicle fleet configuration." Claim 1 's recited technology-
related limitations are "an input device," "a computer in communication
with the input device," and "a database," none of which are part of the
abstract idea. Putting those aside, the remaining limitations of claim 1
recite-
receiv[ing] user input indicative of a number of vehicles
to configure and at least one fleet operational parameter target;
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having fuel economy and emissions information for a
plurality of available vehicle models and powertrain
configurations, in response to the user input, ... generat[ing]
and output[ting] ... a recommended number of vehicles for one
or more of the available vehicle models with associated
powertrain configurations to satisfy the number of vehicles to
purchase, wherein the operational parameters associated with
the number of vehicles satisfy the fleet operational parameter
target.
We agree with the Examiner that these remaining limitations describe a
process that can be performed by a human with pen and paper. See Final
Act. 4--5. Thus, claim 1 recites a patent-ineligible abstract idea in the
category of "an idea 'of itself"' pursuant to case law, and "mental processes"
pursuant to the 2019 PEG. MPEP 2106.04(a)(2)(III) (quoting
CyberSource, 654 F.3d at 1372); see also Electric Power Group, LLC v.
Alstom, S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016); see also 2019 PEG
at 52.
Appellants' argument that the Examiner errs because "generating a
vehicle fleet configuration" is not specifically similar to an abstract idea
previously identified by a court (Appeal Br. 5-7) is unpersuasive. Although
identifying such precedent can be helpful, there is no per se requirement to
do so. Our agreement with the Examiner's determination that claim 1 is
directed to an abstract idea is consistent with the binding precedent of
Alice/Mayo and with the 2019 PEG.
Appellants' argument that claim 1 "does not seek to tie-up or pre-
empt the identified abstract idea" (Appeal Br. 8) is also unpersuasive.
Appellants provide the example of a potentially non-infringing alternative-
using separate databases for the recited fuel economy and emissions
information. Id. This example is unpersuasive because it presumes that
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reciting "a database" requires "a single database." The "indefinite article 'a'
or 'an' in patent parlance carries the meaning of 'one or more' in open-
ended claims containing the transitional phrase 'comprising."' KCJ Corp. v.
Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) (citing Elkay
Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973,977 (Fed. Cir. 1999); Abtox, Inc.
v. Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997); North Am. Vaccine,
Inc. v. Am. Cyanamid Co., 7 F.3d 1571, 1575-76 (Fed. Cir. 1993)).
Appellants also argue the Examiner errs because the claims do not "tie
up" the idea of generating a vehicle fleet configuration. App. Br. 7-8.
Preemption, however, is not a concern here. "While preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also CLS Bankint'l v. Alice
Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir. 2013) ("[B]road claims do
not necessarily raise § 101 preemption concerns, and seemingly narrower
claims are not necessarily exempt."); OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("[T]hat the claims do not preempt
all price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract."). "Where a patent's
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework ... preemption concerns are fully addressed and made
moot." Ariosa, 788 F.3d at 1379.
Having determined that the claims recite a judicial exception, our
analysis under the 2019 PEG turns now to determining whether there are
"additional elements that integrate the exception into a practical
application." See MPEP § 2106.05(a}-(c), (e}-(h). The additional elements
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are the technology aspects related to the input device, computer, and
database. Regarding the input device, Appellants' Specification explains
that "[ t ]he present disclosure is generally independent of the particular type
of input device" (Spec. ,r 32) and describes examples at a high level, e.g., "a
microprocessor-based input device, such as a tablet computer" (id. ,r 8).
Although claim 1 recites a facially counter-intuitive requirement for "display
[i.e., a type of output] via the input device," ordinarily skilled artisans would
understand these claim requirements to be generic input/output limitations.
Similarly, the recited computer is generic. Regarding the recited database,
Appellants' Specification describes database technology details such as
"access[ing] one or more local or remote databases" (id.), using "one or
more publically available or proprietary databases" (id. ,r 33; see also
,r,r 41, 47), and variations on database connectivity such as in the cloud, on a
server, or mobile device, with potential for local and/or network access
(Spec. ,r 36). These details, however, are not claimed. 3 Ordinarily skilled
artisans would understand claim 1 's database recitation to be generic.
Claim 1 does not change the way in which the recited input device,
computer, and database perform their tasks, it simply uses those components
for their ordinary purposes to carry out the business method of generating a
vehicle fleet configuration. In other words, claim 1 does not apply the
judicial exception with any particular machine. See MPEP § 2106.05(b ).
Appellants' arguments similarly do not persuade us that claim 1 improves
the functioning of a computer or any other technology or technical field, or
that it effects a particular transformation of the recited articles, which are
3 We note claim 21 recites "accessing a database over a computer network."
Accessing a database over a network is also a generic technology limitation.
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simply used for their ordinary purposes, or that it adds any other meaningful
(technological) limitations, i.e., limitations beyond simply "linking the use"
of the abstract idea to generic technology. See MPEP § 2106.05(a), (c), (e}-
(f); see also id. at (g}-(h) (use of well-known limitations beyond the
judicially excepted matter constitutes "insignificant extra-solution activity"
(g) and claim limitations "merely indicating a field of use or technological
environment in which to apply a judicial exception do not amount to
significantly more" (h)). The claim does not integrate the judicial exception
into a practical application.
Accordingly, we consider whether, beyond the judicial exception,
claim 1 recites limitations, individually or in combination, that are not "well-
understood, routine, and conventional." See 2019 PEG at 56 (citing MPEP
§ 2106.05(d)).
The Examiner determines the limitations other than those directed to
the abstract idea-i.e., the input device, computer, and database-add only
"implementation via computers," which constitutes limiting the abstract idea
to a particular technological environment and, thus, claim 1 does not recite
significantly more or otherwise transform the abstract idea into an inventive
concept. Final Act. 5---6. Appellants contend the Examiner errs because
claim 1 recites "specific components that are not performing functions that
are merely generic or that are specified at a high level of generality."
Appeal Br. 9. Appellants also contend claim 1 recites significantly more
because it is "a specific application of any alleged abstract idea to a new and
useful end." Id.; see also id. at 10 (contending "the additional elements
apply the alleged abstract idea with, or by use of, a particular machine and
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do not merely recite a generic computer performing generic computer
functions").
Appellants' arguments are unpersuasive. As an initial observation, we
note usefulness is not a relevant issue-ineligible subject matter such as
abstract ideas, mathematical formulae, etc., almost always can be useful.
Novelty, similarly, "is of no relevance in determining whether the subject
matter of a claim falls within the § 101 categories of possibly patentable
subject matter." Diehr, 450 U.S. at 188-89. "It has been clear since Alice
that a claimed invention's use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention 'significantly
more' than that ineligible concept." BSG Tech LLC v. BuySeasons, Inc., 899
F.3d 1281, 1290 (Fed. Cir. 2018). A novel and nonobvious claim directed to
an abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.
Further, as discussed supra, the input device, computer, and database
are recited in the claim and described in the Specification at a high level of
generality. 4 As also discussed supra, claim 1 uses the recited computer-
related components for their ordinary purposes to carry out the business
method of generating a vehicle fleet configuration-there is no
transformation of the recited computer-related components into "a particular
machine" that is not generic. MPEP § 2106.05(b).
In arguing Alice step two, Appellants also point to Enfzsh, 5 Bascom, 6
and McRO 7 as persuasive precedent in which claims that used general
4 As discussed supra, claim 1 's limitation of "display[ing] via the input
device" combines a generic output requirement with the input device, which
effectively requires the input device to be an input/output device, which does
not render the "input device" non-generic.
5 Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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purpose computers were determined to be patent eligible. The claims at
issue in Enfzsh, however, were not directed to an abstract idea. 822 F.3d at
1336. Moreover, claim 1 is unlike the claims at issue in Enfzsh, which
recited a distinct improvement in software technology and did not include
any business method limitations. See id. ( explaining that the recited means
for configuring and indexing data a database table was "directed to a specific
improvement to the way computers operate, embodied in the self-referential
table"). Here, claim 1, by contrast, focuses on (is directed to) a business
method of generating a vehicle fleet configuration and otherwise recites only
generic computer-related technology.
Claim 1 is also unlike the claims at issue in Bascom, which was
directed to the abstract idea of filtering content on the Internet. 827 F.3d at
1348. The claims in Bascom were determined at Alice step two to recite a
combination of limitations that "claim[] a technology-based solution (not an
abstract-idea-based solution implemented with generic technical components
in a conventional way)." Id. at 1351. Here, claim 1 simply uses computer-
related technology for its ordinary purposes-the solution provided by claim
1 arises from its business method limitations, not from any combination of
technology limitations as in Bascom.
Finally, claim 1 is also unlike the claim at issue in McRO, which, as
with the claims in Enfzsh, was not directed to an abstract idea. 837 F.3d at
1316. Further, the claim at issue in McRO did not "simply use a computer as
a tool," but was directed to a specific "technological improvement" of
6 Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016).
7 McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016).
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computer animation technology. See id. at 1314--16. Appellants' claim 1,
on the other hand, simply uses computer technology as a tool to automate a
business method.
Accordingly, because Appellants' claim 1 is directed to a patent-
ineligible abstract concept and does not recite something "significantly
more" under the second prong of Alice, we sustain the Examiner's rejection
of claims 1-23 under 35 U.S.C. § 101.
B. The§ 103 Rejections
Appellants argue the Examiner errs in finding the combination of
Schuette and Stevens teaches or suggests "generating a vehicle fleet
configuration that includes 'a database having fuel economy and emissions
information for a plurality of available vehicle models and powertrain
configurations,' as recited by claim 1." Appeal Br. 11-12. This argument is
unpersuasive.
Schuette teaches a system for vehicle fleet management "so that
informed decisions can be made as to the addition of vehicles to and/or the
deletion of vehicles from the fleet." Schuette ,r 2. Schuette uses historical
sales data "for performing long term fleet planning wherein a computerized
system is configured to determine a quantity of vehicles to be purchased."
Schuette Abstract. Thus, Schuette teaches or suggests "generating a vehicle
fleet configuration." As shown in Schuette's Figure 1, Schuette's preferred
embodiment uses a "fleet management application" connected to a "fleet
database," which "stores vehicle data for the vehicles that are currently or
were formerly part of the fleet." Schuette ,r 50. Thus, we agree with the
Examiner that Schuette teaches systems and methods for generating a
vehicle fleet configuration that includes "a database storing information for a
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plurality of available vehicle models." Ans. 5 (emphasis omitted); see also
Final Act. 8.
Stevens teaches a system for "simulating vehicle energy use based on
vehicle modeling and drive cycle data." Stevens ,r 2; see also ,r 17
(explaining "'drive cycle data' should be understood to refer generally to
'asset usage data', and so on"). The Examiner "re lie [ s] on Stevens to teach a
database ... that stores fuel economy information ... and emissions
information." Final Act. 25 (citing Stevens ,r,r 20, 27, 75, Fig. 1); see also
Ans. 5. We agree with this finding. Stevens' database includes drive cycle
data for use in evaluating and comparing energy consumption and efficiency
(i-f 27), which ordinarily skilled artisans would have understood to teach that
the database includes "fuel economy and emissions information," as recited.
The system of Stevens teaches collecting "pollution output (for example,
CO2 emissions)" (i-f 7 5) from vehicle fleets, which such artisans would have
understood to teach that the database also includes "emissions information,"
as recited.
Thus, on the record before us, Appellants do not persuade us the
Examiner errs in determining that
it would have been obvious to one of ordinary skill in the art to
modify the database of available cars of Schuette with the
database of fuel economy and emissions information of a
plurality of cars as taught by Stevens for the result of "a
database having fuel economy and admissions information for
plurality of available vehicle models and powertrain
configurations".
Ans. 5; see also Final Act. 8-9.
Accordingly, we sustain the § 103 rejections of claim 1. Appellants
rely on the same argument in arguing Examiner error in the § 103 rejections
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of claims 2-23. See Appeal Br. 12-13. We also, therefore, sustain the§ 103
rejections of claims 2-23. 37 C.F.R. § 4I.37(c )(1 )(v).
DECISION
We affirm the Examiner's 35 U.S.C. § 101 rejection of claims 1-23.
We affirm the Examiner's 35 U.S.C. § 103 rejection of claims 1-23.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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