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T 181/17 - Inventive step attack with document used for novelty attacks as closest prior art


The introduction of new grounds during opposition and opposition appeal proceedings may be difficult, but also the introduction of new lines of reasoning in support of raised grounds of opposition. A raised ground of lack of inventive step may allow assessment of novelty in view of  the closest prior art - G 7/91 and Guidelines (2017) D-III, 5. Also, in a case where a patent has been opposed under Article 100(a) EPC on the grounds of lack of novelty and inventive step having regard to a prior art document, and the ground of lack of novelty has been substantiated, a specific substantiation of the ground of lack of inventive step is neither necessary - given that novelty is a prerequisite for determining whether an invention involves an inventive step and such prerequisite is allegedly not satisfied - nor generally possible without contradicting the reasoning presented in support of lack of novelty; in such a case, the objection of lack of inventive step is not a fresh ground for opposition and can consequently be examined in the appeal proceedings without the agreement of the patentee - T 131/01. One would expect that introducing a new line of attack for an existing ground to be less difficult, e.g. when introducing a new inventive step attack using a document used for novelty as closest porior art. However, in the case below, the inventive step attack based on D17 -not admitted in first instance proceedings, but filed with and admitted into the appeal and used for several novelty attacks- as the closest prior art was not admitted into the proceedings in accordance with Article 13(1) Rules of Procedure of the Boards of Appeal (which provides that any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the Board's discretion, where the discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.)

Summary of Facts and Submissions

I. This decision concerns the appeals filed by both the opponent and the patent proprietor against the interlocutory decision of the opposition division that European patent No. 2 346 356 as amended met the requirements of the EPC.

II. With the notice of opposition, the opponent had requested revocation of the patent based on Article 100(a) (lack of novelty and lack of inventive step), Article 100(b) and Article 100(c) EPC.

The documents cited during opposition proceedings included:

D1: EP 0 953 289 A2

D2: J.M.M. Cruijsen, "Physical stability of caseinate stabilized emulsions during heating", 14 pages, 1996

D4: US 2003/0104033 A1

D17: Y.H. Hui, "Handbook of Food Products Manufacturing", John Wiley & Sons, Inc., 2007, 723-747

D18: Expert's declaration, Kirstine Mette Sveje

D19: Expert's declaration, Kirstine Mette Sveje

D20: A.W.M. Sweetsur et al., Journal of the Society of Dairy Technology 33(3), 1980, 101-105.

III. The opposition division's decision was based on a main request and auxiliary request 1 and can be summarised as follows:

Late-filed documents D17 to D20 were not admitted into the proceedings.

Main request:

Claims 1, 21 and 22 of the main request were identical to claims 1, 21 and 22 as granted and read as follows:

"1. Shelf-stable liquid aqueous nutritional composition comprising non-micellar casein and more than 30 g fat per 100 ml of said composition, wherein the composition further comprises a heat stabilisation system."

"21. Composition according to any one of claims 1 to 19 for use in the management of conditions in malnourished persons or persons at risk of becoming malnourished, and which are in need of liquid oral nutrition."

"22. Composition according to claim 21 for use in the treatment of malnourished persons, persons at risk of malnourishment, metabolically stressed people, and elderly."

The opposition division held that the invention underlying claim 1 was sufficiently disclosed having regard to the term "shelf-stable" and the open-ended range of fat content. The invention was also sufficiently disclosed as regards the therapeutic uses referred to in claims 21 and 22. However, the subject-matter of claim 1 of the main request lacked novelty over D1.

As regards method claim 20, the patent proprietor noted during oral proceedings that the claim contained an unintentional error that made it broader in scope than the granted claim. The patent proprietor then tried to introduce a main request that had been amended accordingly. However, this request was not admitted into the proceedings, because the subject-matter of claim 1 still lacked novelty over D1.

Auxiliary request 1:

[...]

IV. Both the opponent and the patent proprietor appealed this decision.

As both the opponent and the patent proprietor are appellant and respondent in these proceedings, for simplicity the board will continue to refer to them as the opponent and the patent proprietor.

V. The opponent requested that the opposition division's decision be set aside and that the patent be revoked in its entirety. It also requested that D17 to 20, which had not been admitted by the opposition division, be admitted into the proceedings. Furthermore, the following documents were filed with the statement setting out the grounds of appeal:

[D21, D22, D23, D23a]

Reference was also made to:

https://en.wikipedia.org/wiki/Malnutrition

https://en.oxforddictionaries.com/definition/malnutrition

VI. The patent proprietor requested that the opposition division's decision be set aside and that the patent be maintained based on the main request or auxiliary requests 1 to 6, all requests filed with its statement setting out the grounds of appeal dated 28 March 2017. Furthermore, the following documents were filed with the statement setting out the grounds of appeal:

[D24, D25, D25a]

VII. Further submissions were filed by the opponent by letters of 9 August 2017 and 28 September 2017, and by the patent proprietor by letter of 17 August 2017, including a screenshot of:

http://dictionary.cambridge.org/dictionary/english/malnourished.

VIII. In preparation for the oral proceedings, the board issued a communication dated 28 March 2018.

IX. With a letter dated 9 April 2018, the patent proprietor filed new auxiliary requests 1-4 and renumbered former auxiliary requests 2-6 as auxiliary requests 5-9. The opponent made submissions by letter of 3 May 2018.

X. At the beginning of the oral proceedings, which were held on 7 June 2018, the requests of the parties were as follows:

The patent proprietor requested

- that the opposition division's decision be set aside and that the patent be maintained in amended form based on:

- the main request filed by letter of 28 March 2017, or

- auxiliary requests 1 to 4 filed by letter of 9 April 2018; or

- auxiliary request 5 to 9, which were filed as auxiliary request 2 to 6 by letter of 28 March 2017 and renumbered by letter dated 9 April 2018; and

- that documents D17 to D23/D23a not be admitted into the proceedings.

The opponent requested

- that the decision of the opposition division be set aside and that the patent be revoked;

- that the main request and auxiliary requests 1 to 4 not be admitted into the proceedings;

- that documents D17 to D23/23a but not documents D24 and D25 and D25a be admitted into the proceedings.

XI. In the course of the oral proceedings, the patent proprietor withdrew its request that D17 not be admitted and the opponent withdrew its request that D24 not be admitted into the proceedings.

XII. The claims of the main request, the only relevant request in the present decision, correspond to the claims of the patent as granted, except that granted claim 23 has been deleted. Claims 1, 21 and 22 are identical to claims 1, 21 and 22 of the main request before the opposition division, and claim 20 is identical to claim 20 of auxiliary request 1 allowed by the opposition division (for the wording of these claims, see point III. above).

XIII. The opponent's arguments which are relevant to the present decision may be summarised as follows:

- Admissibility of documents:

The opposition division had been wrong in not admitting late-filed documents D18 to D20 into the proceedings. They should be admitted because their disclosure was prima facie relevant. The same reasoning applied to D21 to D23/D23a. D25, however, had been published well after the filing date of the application from which the opposed patent stems.

- Admissibility of the main request

The main request was not admissible, since it essentially reinstalled the claims of the patent as granted. However, in view of proprietor's filing of a new main request in opposition proceedings, the granted claims had to be regarded as withdrawn or abandoned.

- Added subject-matter:

The feature "for use in the management of conditions in malnourished persons" in claim 21 had no basis in the application as filed.

- Sufficiency of disclosure:

[...]

- Novelty:

The subject-matter of claims 1 and of claims 21 and 22, in so far as it related to the non-medical treatment of malnourished persons, was anticipated by D1 and by D17.

The product of example 1 of D1 (paragraphs [0036] to [0038]) had to be regarded as inherently shelf-stable, because it comprised the same ingredients as the subject-matter of claim 1.

Document D17 in section 32.7.5 disclosed cream liqueur products having the same ingredients as the subject-matter of claim 1. In particular, the high-fat concentration of 40% had to be understood as meaning that the composition had a fat content of more than 30 g per 100 ml.

The subject-matter of the method claim 20 lacked novelty over D1, D2, D21 and D22. Claim 20 had to be interpreted as being merely suitable to provide the composition of claim 1. The cited prior-art documents included all process steps (a) to (d) of claim 20.

- Admissibility of the attack based on D17 as the closest prior art:

It should be possible to develop an inventive-step attack using D17 as the closest prior art, because this document was already relevant for assessing novelty.

- Inventive step:

After the board's decision not to admit the new attack based on D17 into the proceedings, lack of inventive step was eventually argued using only D4 as the closest prior art. Example 1 of D4 disclosed all features of the subject-matter of independent claims 1, 20 and 21, with the exception of the fat content. The technical problem was the provision of a high caloric composition. The solution was obvious to the person skilled in the art who was aware that high-fat compositions existed in the art and that additives for stabilising such compositions were known in the art.

XIV. The patent proprietor's arguments which are relevant to the present decision may be summarised as follows:

- Admissibility of documents:

The opposition division had been right in not admitting D18 to D20 into the proceedings. Documents D21 and D22 should not be admitted, since they essentially had the same content as D4. D23/D23a should not be admitted, since it could and should have been filed earlier, namely already during the opposition proceedings.

- Admissibility of the main request:

[...]

- Added subject-matter:

[...]

- Sufficiency of disclosure:

[...]

- Novelty:

D1 did not disclose shelf-stable liquid compositions including more than 30 g fat per 100 ml. In the light of the patent specification "shelf-stable" had to be understood as meaning sterilised.

D17 disclosed in section 32.7.5 only a composition including 40% solid matter, of which 40% was fat. Thus, the fat content disclosed in this section was of 16%, which was the typical fat content of cream liqueur compositions.

The subject-matter of claim 20 was directed to a manufacturing method providing the subject-matter of claim 1. The products disclosed in D1, D2, D21 and D22 were either too low in fat content or not shelf-stable.

- Admissibility of the attack based on D17 as the

closest prior art:

The attack should not be admitted, since it had not been presented until the oral proceedings.

- Inventive step:

D4 was the closest prior art. The technical problem was how to provide a shelf-stable liquid aqueous nutritional composition. The problem was solved. There was nothing in the prior art to suggest this solution: in D4 only low-fat concentrations were used, and paragraph [0011] of D4 taught away from using caseinate. Documents D17 and D24 emphasised that there were many difficulties in stabilising high-fat compositions.

Reasons for the Decision

1. Admissibility of documents

1.1 Admitted documents:

1.1.1 D17 and D24: In the course of the oral proceedings before the board, both parties relied on D17 and D24. Consequently, the opponent eventually withdrew its request that D24 not be admitted and the patent proprietor its request that D17 not be admitted into the proceedings. The board thus saw no reason not to admit these two documents into the proceedings.

1.1.2 D21 and D22: These documents were used to attack method claim 20. The core issue for assessing patentability of this claim is how to interpret its scope. In this specific situation, the board decided to admit these documents in view of procedural economy.

1.1.3 D23/D23a: The opponent filed this experimental report to demonstrate that, in view of the open-ended range in claim 1 ("more than 30 g fat per 100 ml"), the invention was not enabled over the entire scope claimed. The patent proprietor argued that such tests could and should have been filed earlier, because the lack of experimental evidence had already been highlighted during the opposition proceedings. Nevertheless, the board considers that the filing of D23/D23a with the statement setting out the grounds of appeal, i.e. at the earliest possible stage in the appeal proceedings, is an acceptable reaction, occasioned at least in part by the opposition division's decision. Thus, the board decided to admit D23/D23a into the proceedings.

1.2 Non-admitted documents:

1.2.1 D18 and D19: These two documents had been filed late during opposition proceedings and the opposition division had exercised its discretion not to admit them into the proceedings for their lack of prima facie relevance. As these documents were not used during the oral proceedings before the board, the board saw no reason to overrule the opposition division's decision on this issue.

1.2.2 D20: This document had also been filed late during opposition proceedings, and the opposition division had exercised its discretion not to admit it for lack of relevance to the present case. The opponent argued that D20 underlined that heat stability was a complicated technical problem which was not easily solved and that the difficulties were mainly caused by the protein which is present in skim milk. This argument does not convince the board. D20 deals with heat stability of skim milk products, i.e. low-fat products. Technical problems that occur with a low-fat product are simply not the same as those that occur with a high-fat composition, since fat globules do interact with casein. This is confirmed by handbooks D24 (page 448) and D17 (page 727). Thus, the board saw no reason to overrule the opposition division's decision on this issue.

1.2.3 D25: In view of the fact that this document was published in 2012, i.e. some four years after the date of filing of the opposed patent, it was not admitted.

2. Admissibility of the main request

2.1 The opponent requested that the main request not be admitted into the proceedings because the appealed decision was not based on this request. It alleged that the patent proprietor was trying to re-install the claims as granted, which had been replaced by a new main request before the opposition division. This implied that the former main request (i.e. the claims as granted) had been withdrawn. A request which had been abandoned or withdrawn could not be the subject of an appeal.

2.2 First of all, the board notes that the main request does not re-install the claims as granted. Claim 23 as granted is deleted from the main request. Besides, it is evident from the course of events in the present case that the patent proprietor never intended to abandon or withdraw a request worded like the present main request.

2.2.1 In opposition proceedings, the patent proprietor had filed a new main request from which granted claim 23 had been deleted in a genuine attempt to overcome objections of added subject-matter raised by the opposition division in its preliminary opinion accompanying the summons. It was only during oral proceedings before the opposition division that the proprietor realised that claim 20 of the then main request was broader in scope than claim 20 as granted. It explained that an unintentional error had occurred in claim 20 when filing the then new request (see minutes, point 3.3.2). Subsequently, the patent proprietor tried to introduce an amended main request in which only the unintentional error in claim 20 was amended (see minutes, point 4.1). Such a set of claims would have been identical to the present main request. However, the request was not admitted into the proceedings because such a set of claims contained an unaltered claim 1, the subject-matter of which was still not novel over D1.

2.2.2 Thus, rather than abandoning a request worded like the present main request, the patent proprietor had attempted during oral proceedings to introduce a request identical to that main request.

2.3 In view of this, the opponent's request that the main request not be admitted is not justified.

3. Main request - added subject-matter:

The amendment in claim 21 "for use in the management of conditions in malnourished persons..." is based on claims 1 and 10 (further comprising a heat stabilisation system) as filed in conjunction with the first paragraph of the application as filed, in particular in lines 9 to 11. It is specified there that the "nutritional composition according to the invention is especially suitable for malnourished persons or persons at risk of becoming malnourished, and in need of liquid oral nutrition". The board cannot see that the slightly reworded expression "management of conditions" in claim 21 results in any added subject-matter. The ground under Article 100(c) EPC does not prejudice the maintenance of the patent in the form of the main request.

4. Main request - lack of sufficiency of disclosure

4.1 The opponent regarded several features in claim 1 as leading to insufficient disclosure, namely:

(i) the feature "shelf-stable";

(ii) the feature "heat stabilisation system"; and

(iii) the open-ended concentration range for the amount of fat.

4.2 As a first remark, the board notes that the opposed patent contains sufficient information for the person skilled in the art to carry out the invention. The patent specification includes a definition of what "shelf-stable" means (paragraph [0017]), a definition of "heat stabilisation system" and compounds to be used as heat stabilisation system (paragraph [0044] and [0045]). Furthermore, the patent contains a rather detailed description of the process for preparing the shelf-stable liquid nutritional composition together with formulation examples (paragraphs [0072] to [0081]). Although no tests have been carried out with the exemplified compositions, it is plausible that no sedimentation occurs.

4.3 More specifically, [...]

4.4 - 4.6 [...]

4.7 It follows from this that none of the objections raised under Article 100(b) EPC compromise the maintenance of the patent in amended form.

5. Novelty of claims 1, 21 and 22

5.1 Novelty of claims 1, 21 and 22 vs. D1

5.1.1 - 5.1.2 [...]

5.1.3 Due to the fact that the intermediate composition of example 1 is not sterilised, the subject-matter of claim 1 is novel over D1. Analogously, the subject-matter of claims 21 and 22 - in so far as it relates to the non-medical aspect of malnourishment - is also novel over D1.

5.2 Novelty of claims 1, 21 and 22 vs. D17

5.2.1 In the statement setting out the grounds of appeal, the opponent cited D17 as novelty destroying. The opponent cited various passages of this document allegedly disclosing the features of claim 1. In its communication, the board informed the parties that separate items of D17 had to be combined in order to read a novelty-destroying disclosure into the document.

5.2.2 At the oral proceedings, the opponent relied only on section 32.7.5 of D17, on page 742, which reads as follows:


5.2.3 However, this passage also does not unambiguously disclose the combination of features of present claim 1. In fact, it consists of a summary of four different scientific publications. For the board, it is not clear what precisely this document discloses.

5.2.4 A first possible reading of this passage would be that each scientific publication is a different, stand-alone disclosure, meaning that the summaries of these publications cannot be straightforwardly combined.

5.2.5 A second reading would be that the entire passage must be understood as single, new disclosure. However, such a reading inevitably leads, again, to different ways of reading the document:

(a) The patent proprietor's way of reading this passage is that the cream liqueur composition contains about 40% solids, of which 40% are fat, thus resulting in a fat content of 16%. Fat contents within this range are in fact typical for cream liqueur beverages.

(b) According to the opponent, D17 disclosed all ingredients disclosed in claim 1, and the "the high-fat content of 40%" had to be understood as meaning that the composition had a fat content of more than 30 g per 100 ml.

5.2.6 From all this, the board can only conclude that D17 does not - directly and unambiguously - disclose a shelf-stable composition comprising more than 30 g fat per 100 ml of said composition, wherein the composition further comprises a heat stabilisation system and non-micellar casein. Consequently, the subject-matter of claims 1, 21 and 22 is novel over D17.

6. Novelty of method claim 20

6.1 - 6.5 [...]

6.6 Thus, the subject-matter of claim 20 is also novel over the cited prior art.

7. Admissibility of the attack using D17 as the closest prior

7.1 At the oral proceedings, the opponent stated - for the first time in the appeal proceedings - that it would present an inventive-step attack based on D17 as the closest prior art. The patent proprietor objected to this new attack.

7.2 The board notes that, over the course of the appeal proceedings, the opponent has submitted four substantive written submissions, all of which referred to D17, but only in the context of novelty.

7.3 Introducing an attack based on D17 as the closest prior art at such a late stage in the proceedings confronts both the board and the patent proprietor with a completely new case.

7.4 The opponent argued that, since D17 had been used to attack novelty, it could have been expected that this document would also be used for an inventive-step attack. This does not convince the board. In view of the duty of a party to present its complete case, there is no obligation on the board (or on the patent proprietor) to speculate on other attacks. Novelty and inventive step are different grounds of opposition, and documents useful in attacking novelty are not necessarily the same as those that qualify as the closest prior art.

7.5 Thus, the attack based on D17 as the closest prior art is not admitted into the proceedings in accordance with Article 13(1) Rules of Procedure of the Boards of Appeal.

8. Inventive step

8.1 The invention relates to a liquid aqueous nutritional composition comprising at least non-micellar casein, having more than 30 g fat per 100 ml of said liquid aqueous nutritional composition, and a heat stabilisation system. The product is shelf-stable, meaning that after sterilisation no sedimentation, segregation, aggregation, flocculation or gelation of the individual components should occur.

8.2 Closest prior art:

8.2.1 In its communication, the board informed the parties that it regarded document D4 as the closest prior art, as was the case in the appealed decision. At the oral proceedings, the opponent likewise used only D4 as the closest prior art.

8.2.2 - 8.2.3 [...]

8.3 The technical problem and its solution:

Starting from D4, the objective technical problem is to provide [...]

8.4 Obviousness:

8.4.1 To arrive at the subject-matter claimed, a nine-fold increase of the fat content is necessary. This cannot be considered an obvious modification of the composition of the closest prior art.

8.4.2 Starting from the teaching of example 1 of D4, the board simply cannot see that the skilled person would consider it obvious to envisage - with a reasonable expectation of success - a nine-fold increase of the fat content to solve the technical problem. In this context, the disclosure regarding the destabilising role of the caseinate discussed in paragraph [0011] of the closest prior art cannot be disregarded. Moreover, the fact that compositions including more than 30 g fat are per se known (e.g. from D1, paragraph [0038], or possibly from D17) would not prompt the person skilled in the art starting from example 1 of D4 to arrive at the subject-matter of claim 1.

8.4.3 The disclosure of D17 and D24 was discussed by the parties at the oral proceedings. For the board, these documents demonstrate that the stability of sterilised high-fat compositions is indeed a technical issue and that there may be ways to stabilise high-fat compositions (by adjusting the pH and by using stabilisers). However, there is simply no incentive for the person skilled in the art to combine the teaching of these documents with the closest prior art, example 1 of D4, in order to solve the objective technical problem.

8.5 It follows from this that the subject-matter of claim 1, and by the same token of claims 20 to 22, involves an inventive step (Article 56 EPC).

9. In view of this conclusion, there is no need to discuss the auxiliary requests.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division with the order to maintain the patent on the basis of claims 1 to 22 of the main request as filed with letter dated 28 March 2017 and a description to be adapted thereto, if required.

This decision T 181/17 (pdf) has European Case Law Identifier:ECLI:EP:BA:2018:T018117.20180607. The file wrapper can be found here. Photo "Attack!" by Isengardt obtained via Flickr under CC BY 2.0 license (no changes made).

Comments

  1. "One would expect that introducing a new line of attack for an existing ground to be less difficult, e.g. when introducing a new inventive step attack using a document used for novelty as closest porior art."

    One *could*, of course. Question is, should "introducing a new inventive step attack using a document used for novelty as closest prior art" be seen as an amendment to a party's case?

    A "switch" of attack as described seems of a different category than an inventive step attack bringing along a possible novelty attack in view of the closest prior art, or inventive step needing to be substantiated after lack of such in view of a specific document had already been indicated initially, despite not having been had to be substantiated earlier in view of an accepted novelty argument.

    Unlike the cited cases, a new inventive step attack based on a "novelty-document" does not seem to be covered by the "umbrella" of attacks defined by the initial arguments. In that sense, one should doubt whether introducing a new line of attack for an existing ground as described should indeed be less difficult.

    ReplyDelete
  2. The problem here is that D17 was not admitted by the OD but by the BA. Only a novelty attack was launched with D 17.

    The Boards decision is correct when one looks at the rule of procedure.

    It puts however the opponent at a disadvantage. If there is a novelty attack, it means that all features are known from a given document. If the same document is is used for inventive step, it means that there are differences between the features disclosed in said document and the subject-matter of the claim. It does not look very logical to say both at the same time, although it is a common practice.

    For the future, the only lesson to keep: if a late document is not admitted by the OD and is re-filed when entering appeal, base all possible objections under Art 100a) on this document. I am not sure that the economy of the procedure is thereby helped, but the RPBA will have been respected....

    ReplyDelete
    Replies
    1. Dear Robin,

      you wrote:
      > If there is a novelty attack, it means that all features are known from a given document. If the same document is is used for inventive step, it means that there are differences between the features disclosed in said document and the subject-matter of the claim. It does not look very logical to say both at the same time, although it is a common practice.

      Was that not exactly why G 7/91 decided that a raised ground of lack of inventive step may allow assessment of novelty in view of the closest prior art and that T 131/01 decided that "If patent has been opposed on grounds of lack of novelty and inventive step having regard to a prior art document and opponent has only substantiated ground of lack of novelty, then:
      - lack of inventive step is not a fresh ground for opposition, and
      - can consequently be examined in the appeal proceedings without the agreement of the patentee.
      - A specific substantiation of the ground of lack of inventive step is neither necessary nor generally possible without contradicting the reasoning presented in support of lack of novelty."
      The latter seems to be the exact same situation here, or am I overlooking something?
      I am very surprised that the principle of T 131/01 can be overturned by a RPBA interpretation... the arguments of T 131/01 still hold and there is nothing in the opponent's behaviour which would justify to "punish" him for not having raised an objection (inv.step) that he could not raise as he considered the claim to lack novelty (w.r.t. the same document that would now form the closest prior art...)

      By the way, you also write
      > a late document is not admitted by the OD and is re-filed when entering appeal, base all possible objections under Art 100a) on this document. I am not sure that the economy of the procedure is thereby helped, but the RPBA will have been respected....
      But... if not admitted in 1st instance, then Art. 12(4) RPBA allows the Board to not admit them either... so your proposal would not help, or?

      Did you read the proposed RPBA in the consultation earlier this year? It limits the possibilities for late requests even further. E.g, where now the RBA often says "It is at the discretion of the Board to admit ... or not", the proposed RPBA most frequently say "The Board shall not admit ..." :-(

      Delete

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