Q) Claiming, Deleting and Reclaiming a Benefit Claim

by patentbar on May 7, 2007 · 47 comments

in Exam Questions

Test takers report two questions on how to extend your patent life by deleting a claim of benefit and a variant about reclaiming benefit.  (MPEP 200/700, Extend Patent Term)

Question 1 –

 

Test takers report a question involving “Joe Blockhead.” Fact pattern: you represent Joe Blockhead who files a nonprovisional application which claims the benefit of a provisional application. You receive a Notice of Allowance and Blockhead decides that he wants to extend the term of his patent and remove the benefit. How do you enter an amendment to do this?

a) Pay the issue fee then file a RCE with the amendment.
b) Don’t pay the issue fee, and file a RCE with the amendment.
c) Juggle watermelons (not really, but something out there)
d) Pay the issue fee then file an the amendment.
e) Don’t pay the issue fee, and file the amendment.

After the notice of allowance, entry of an amendment or ADS is not a matter of right, so in order to be sure that it is entered you would need to file an RCE. I know it doesn’t specifically say that in the MPEP, but I made an inference based on what it says in 201.11 and 714.16(a).

What is needed to get RCE (MPEP 700)? Prosecution must be CLOSED (Notice of Allowance), and applicant must request RCE by filing a submission and fee PRIOR TO the earliest of the: 1) payment of the issue fee (unless petition to withdraw is granted); 2) abandonment of application; or 3) filing of notice of appeal or start of civil suit (unless terminated while application is still pending). So the answer is “B,” don’t pay the issue fee and file an RCE with the amendment.

Note: MPEP 201.11 reads that removing a filing benefit can be done by amendment (by amending specification or submitting a new application data sheet to delete any references to prior applicants) before the notice of allowance, but this is a matter of grace and not a matter of right. If the amendment or ADS is submitted after the application has been allowed, the amendment or ADS will be treated under MPEP 714.16.

Question 2 –

Test takers report a second variant of deleting a benefit claim that hinges on the following:

  • Realize the 4 months/16 months deadlines (see 1.55(a) and 1.78(a)(2)(ii)),
  • figure out these deadlines are exceeded, and
  • realize that because the applicant removed the claim himself he cannot avail himself of adding the claim as unintentional (new ground of rejection is applied after the application withdraws his claim, and he has no way to put the claim back).

In 201.11 G. Deleting Benefit Claims – As a result of the 20-year patent term, it is expected, in certain circumstances, that applicants may cancel their claim to priority by amending the specification or submitting a new application data sheet (no supplemental declaration is necessary) to delete any references to prior applications. […]

A cancellation of a benefit claim to a prior application may be considered as a showing that the applicant is intentionally waiving the benefit claim to the prior application in the instant application. If the applicant later files a petition to accept an unintentionally delayed claim to add the benefit claim to the prior application in the same application from which the benefit claim was canceled, the Office may refuse to accept such benefit claim because the delay was not unintentional.

Question 3 (Reclaiming Benefit) –

Test takers also report a variant of “deleting a benefit claim” concerning reclaiming a benefit claim. [see also MPEP 201.11 G.] In this question, the applicant deletes benefit a claim then the examiner rejects it with prior art. The applicant now wants to reclaim the benefit. How can he do it?

 

(?) RCE is the answer but one of the options was “applicant later files a petition to accept an unintentionally delayed claim to add the benefit claim” which I think is wrong answer (trap).

{ 47 comments… read them below or add one }

1 LynnNo Gravatar January 12, 2008 at 2:00 am

Hi,
Thank you for this good website.
As to the question you posted above–“Joe Blockhead”, could you kindly explain to me, why deleting the claim of a priority on the “provisional” application can extend the patent term? I am a little bit confused.
Thanks,
Lynn

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2 patentbarNo Gravatar January 17, 2008 at 9:42 pm

Lynn, I am confused as well! I’ll look it up later when I have more time.

The patent term is measured as 20 years from the application date (or 17 years from issue under special circumstances.) I thought that the patent term is not measured from the date you submit the Provisional Application. If you seek priority of an earlier filed Provisional, you can effectively extend your patent term by up to a year (to 21 years). However that added time is tacked on to the beginning, not the end of the term.

Can anyone else clarify?

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3 JTNo Gravatar May 13, 2015 at 1:37 pm

The question asks about withdrawing a priority claim to an earlier filed NON-PROVISIONAL application to extend the term of the patent that will issue.
If Notice of Allowance has issued, you must file an RCE before payment of the issue fee to remove the priority claim. MPEP 714.16 (i.e. amend the spec to remove priority)

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4 NooneNo Gravatar January 25, 2008 at 1:05 am

The question must involve a priority claim to a continuatino filed under 120, 121, or 365. the provisional claim would not affect patent term. The question was mistyped above, or else it makes no sense.

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5 patentbarNo Gravatar January 26, 2008 at 12:54 am

Thanks for the clarification. I have compiled the “exam questions” from posts on the forum, and these errors are expected. Hopefully with everyone’s assistance we can figure out (as closely as possible) the exact questions in the database.

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6 patentbarNo Gravatar August 19, 2008 at 7:13 pm

There is another question in teh prometric database re: claiming benefit. “How to claim benefit

“Question about where in an application you claim benefit of an earlier application. I believe answer options were combinations of a) in the first sentence of the specification, b) in the application data sheet and c) in the oath or declaration.

MPEP 201.11
An application in which the benefits of an earlier application are desired must contain a specific reference to the prior application(s) in the first sentence of the specification or in an application data sheet (37 CFR 1.78(a)(2) and (a)(5)).”

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7 SolNo Gravatar April 5, 2012 at 5:23 pm

c) claim priority in oath/declaration is proper while it MAY be recognized by the office to waive a petition/fee to correct it; nonotheless, it still needs to be corrected.

Even if the Office has recognized a benefit claim by entering it into the Office’s database and including it on applicant’s filing receipt, the benefit claim is not a proper benefit claim under 35 U.S.C. 119(e) or 35 U.S.C. 120 and 37 CFR 1.78 unless the reference is included in an ADS or in the first sentence>(s)< of the specification and all other requirements are met.

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8 toxipatentNo Gravatar August 20, 2008 at 10:18 pm

With respect to the provisional, here is text from 201.11(V) [R-3]

Changing a benefit claim of a prior-filed provisional application under 35 U.S.C. 120 (e.g., “This application is a continuation of prior-filed provisional application No. —”) to a benefit claim of the same provisional application under 35 U.S.C. 119(e) (e.g., “This application claims the benefit of prior-filed provisional
application No. —”) during the pendency of the later-filed application. Note, however: If the later-filed application has issued as a patent, the correction cannot be made by a certificate of correction and would not be effective in a reissue application because the term of a patent is measured from the prior appli-cation’s filing date and removing the benefit claim under 35 U.S.C. 120, 121, or 365(c) would have the effect of lengthening the term of the patent.

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9 matt30No Gravatar May 10, 2009 at 10:41 am

I got the exam and passed yesterday… I got question 1…

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10 JohnNo Gravatar June 8, 2009 at 11:20 am

Lynn, I believe the answer to your question lies with converting (instead of claiming benefit) of a provisional application

MPEP 608.01 “Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e) (rather than converting the provisional application into a nonprovisional application pursuant to this paragraph).”

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11 Art WilliamsNo Gravatar August 25, 2009 at 3:11 pm

The discussion of version 1 of the deleting-benefit-claim question states that: “Note: MPEP 201.11 reads that removing a filing benefit can be done by amendment (by amending specification or submitting a new application data sheet to delete any references to prior applicants) before the notice of allowance ” with the word “before” underlined. I don’t understand where “before notice of allowance” comes from. I don’t see it in 201.11/III/G (Deleting Benefit Claim).
The entry of amendments received after allowance “as a matter of grace” appears in 714.15. Doesn’t the preference of answer b over answer e rest on the uncertainty implied by “grace”?
The fact pattern of the question includes allowance. If “before” is correct, then 201.11 is irrelevant. Right?

Thanks, Art Williams

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12 MarianneNo Gravatar May 12, 2010 at 5:21 pm

An index type correction to John’s comment to Lynn above: ‘Lynn, I believe the answer to your question lies with converting (instead of claiming benefit) of a provisional application’. This isn’t in MPEP 608.01, but rather 601.01.

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13 lanceNo Gravatar October 4, 2010 at 10:22 pm

I know this is late in the game but I think that deleting the claim to benefit effectively extends the patent term because otherwise if you kept the benefit of the PA, the term would start on that filing date. If you deleted the claim to benefit, the term would start on the filing date of the NPA. Right..?

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14 LawrenceNo Gravatar December 10, 2010 at 7:01 pm

Addressing lance’s question, the term is measured from the earliest filing date of a non-provisional patent. Priority to provisional patents are not considered in the 20-year term. Section 1201.

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15 DerekNo Gravatar January 15, 2011 at 12:50 pm

I think Lawrence is correct, but I think another citation is to MPEP § 2701, citing § 154(a)(3) (“Priority under section 119, 365(a), or 365(b) of this title shall not be taken into account in determining the term of a patent”).

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16 VeNo Gravatar January 27, 2011 at 7:35 pm

Got the question about deleting priority claim to extend life of patent. Went with “don’t pay the issue fee and file RCE with amendment to the spec”. I remembered that the spec had to be amended so I chose the answer with that in it,

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17 OverworkkedNo Gravatar April 28, 2011 at 12:58 pm

VARIANT on 4/27/2011 MPEP E8R8:

Applicant files a nonprovisional application, examiner cites prior art, applicant wants to amend application to get prior patent benefit. How can he do this?

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18 BeckerNo Gravatar May 17, 2011 at 3:09 pm

I got this question 5/16/2011.

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19 SarahNo Gravatar May 18, 2011 at 3:38 pm

Got this today 5/18/11

Had it, deleted it, 1 answer choice was petition for unintentionally delayed (NO)
3 answer choices involved reinserting the wording through amendment or RCE, but the 4/16 month deadline had passed. So the answer was e) none of these are allowed.

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20 zaoNo Gravatar June 11, 2011 at 6:28 pm

Could anybody help me figure out where you can claim foreign priority? I found this section on MPEP.
201.14(b) Right of Priority, Papers Required [R-2]
The claim for priority may appear in the oath or declaration, an application data sheet (37 CFR1.76), or the application transmittal letter with the recitation of the foreign application. See MPEP § 201.13, paragraph A.

A. The Priority Claim
A priority claim need not be in any special form and may be a statement signed by a registered attorney or agent. A priority claim can be made on filing: (A) by including a copy of an unexecuted or executed
oath or declaration specifying a foreign priority claim
(see 37 CFR 1.63(c)(2)); or (B) by submitting an
application data sheet specifying a foreign priority
claim (see 37 CFR 1.76).

Can you also claim foreign priority in the first sentence of the specification? Is there a difference between where you can claim domestic priority and foreign priority? I found that you can claim domestic using first sentence of spec but did not find that for foreign. Please help

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21 FlashofGNo Gravatar July 22, 2011 at 9:12 pm

Claiming Priority
Foreign –> ADS or oath/declaration
Domestic (120, 365(c)) –> First sentence of spec or ADS

Old test question (2003 I believe) for Foreign Priority claim, if the priority is not in the ADS, it MUST be in the declaration.

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22 DanielNo Gravatar August 3, 2011 at 11:00 am

This and a variant of it on 7/29/2011. One was inside of the 16/4 and one wasn’t.

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23 TJLNo Gravatar August 18, 2011 at 11:31 pm

Got this 8/18. Non-provisional filed, then abandoned, but continuation filed before abandonment. Applicant removes priority benefit to extend patent term, then gets a non-final rejection based on prior art filed between the filing date of his/her original non-provisional and continuation, so he wants to reapply benefit.

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24 sevalleyNo Gravatar August 24, 2011 at 4:34 pm

I got this 8/22. Filed with priority, then priority deleted, prior art rejection, wants to re-add priority. I believe I put this is not possible. I don’t know if this was right, and the comments here are somewhat confusing as to the proper answer. I passed though.

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25 maggieNo Gravatar August 27, 2011 at 2:26 am

@ patentbar
Q: What correction must be made to claim domestic priority benefit? Answer choices a) in the first sentence of the specification, b) ADS c) first sentence of the specification OR ADS (4) oath or declaration.- my answer was C

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26 DannyNo Gravatar September 13, 2011 at 10:39 pm

yes thats the right answer. See mpep 200 p. 57 paragraph (c)

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27 maggieNo Gravatar September 14, 2011 at 3:14 am

Re posting from earlier posts 2011

Q7b (Reclaiming Benefit) : Applicant files a nonprovisional application with priority, then priority deleted, examiner cites prior art, applicant wants to amend application to get prior patent benefit. How can he do this?

Q7b (Extend life of patent by deleting a benefit claim): How can you deleting priority claim to extend life of patent deleting a benefit claim

Q7c (Claim benefit of an earlier application): What correction must be made to claim domestic priority benefit?

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28 KenNo Gravatar October 9, 2011 at 7:58 am

Got question 3 verbatim 10/18

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29 KenNo Gravatar October 9, 2011 at 7:59 am

Oops I meant 10/8

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30 JamecamNo Gravatar October 30, 2011 at 10:22 pm

I got question 3 on 10/29/2011. The facts stated that an applicant intentionally deleted a benefit claim. The examiner then presented new prior art with a date after filing date of the deleted benefit application but before the filing date of the current application. More than 16 months had passed since the first application was filed.

A few of the answer choices included language suggesting that the applicant could file a petition for an unintentionally delayed benefit claim. These were wrong because the delay was not unintentional and the 16 month deadline had passed.

I chose the answer that said something like “applicant may be precluded from reestablishing priority because the delay was not unintentional.”

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31 maggieNo Gravatar November 15, 2011 at 3:29 pm

Thank you :)

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32 maggieNo Gravatar November 15, 2011 at 7:09 pm

¶ 2.39 35 U.S.C. Benefit Claim is Untimely

If the application is an application filed under 35 U.S.C. 111(a) on or after November 29, 2000, the reference to the prior application must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.

If the application is a nonprovisional application which entered the national stage from an international application filed on or after November 29, 2000, after compliance with 35 U.S.C. 371, the reference to the prior application must be made during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) or sixteen months from the filing date of the prior application.

Applicant must file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(a)(3) or (a)(6). The petition must be accompanied by: (1) the reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78(a)(2) or (a)(5) to the prior application (unless previously submitted); (2) a surcharge under 37 CFR 1.17(t); and (3) a statement that the entire delay between the date the claim was due under 37 CFR 1.78(a)(2) or (a)(5) and the date the claim was filed was unintentional

33 JamieNo Gravatar July 18, 2012 at 4:33 pm

During PCT (IA), claiming priority should be filed within 4/16 which period expired EARLIER. This is different from US national stage. Correct?

34 MirandaNo Gravatar February 21, 2012 at 7:25 pm

Can he reclaim the deleted benefit claim if both the deletion and reclamation were accomplished within the 16/4 window? (thereby obviating the need to file a “this was unintentional” petition?) Why are they testing this section anyway? there are way to many “mays” aka ambiguities: “may be considered… waiving”, “Office may refuse to accept…”

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35 KillianRedNo Gravatar March 17, 2012 at 5:47 pm

Got this on 3/17/12

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36 KerstinNo Gravatar March 18, 2012 at 5:58 pm

Can someone easily/briefly explain the 16/4 rule…it’s not jiving with my brain….

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37 BfusionNo Gravatar April 2, 2012 at 8:30 pm

Kerstin,

I’ll attempt to explain in terms that make sense to me…(and hopefully to others)

I’ll start broadly…. Say you have a patent, and you’re trying to get priority (you are trying to establish that the current patent you are filing can claim an earlier filing date as it were, by “pointing back” to an earlier filed app. that’s claiming priority….

Assuming the other requirements are met that the earlier app you are claiming / pointing back to is (1) “yours” (shared inventorship), is (2) pending or < 1 year from issuance, (3) That the disclosure (what the earlier patent talks about) is still kosher to cover what's present in your new app, then you can claim "priority" back to that parent app.

So, you are in a sense, claiming the benefit of the filing date of the parent application saying "the current app I have gets the filing date of the app that was filed previously."

BUT: in order to "claim" that earlier filing date, or claim priority, you MUST tell someone (submit the claim for priority) within 4 months from when you filed the current (new) app, OR, must tell (submit that claim for priority) sooner than 16 months from when the previous "parent" app was filed (that you are trying to claim the filing date of).

If for some reason you submit it outside the 4/16 window as it's called, you *can* submit a petition begging them, as it were, to allow your claim for priority as long as you give good reason for you missing that deadline (unintentional delay) and pay the office a crap load of money (fee).

Side point…let's say you filed a patent 1 month ago, and want to claim priority. Ok, so far, you're good because you are within the 4 month filing window. However, lets say the patent you are trying to claim priority to was filed 14 months ago. You're still good, because this meets the <16 month window. BUT….let's say that patent that was filed 14 months ago was issued 13 months ago (1 year and 1 month ago). So, while you're within the time windows to claim priority…you are still going to meet a 102(b) bar.

just something to watch out for…

If i'm wrong here…someone please correct me!

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38 MirandaNo Gravatar April 5, 2012 at 6:51 pm

Bfusion, as pointed out by Sol, I think you meant <1 year from the filing date, and of course this only applies if the parent is a 119(e) provisional app or a 119(a-d) foreign app.

39 SolNo Gravatar April 5, 2012 at 5:55 pm

I wonder where you get (2) <1 year from issurance

Assuming the other requirements are met that the earlier app you are claiming / pointing back to is (1) “yours” (shared inventorship), is (2) pending or < 1 year from issuance,

Also, don't forget copendcy requirement if 120. 119(e) no longer require copendency.

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40 MirandaNo Gravatar April 5, 2012 at 7:05 pm

Sol, 119(a-d) likewise doesn’t require copendency of the foreign parent, right?

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41 SolNo Gravatar April 5, 2012 at 7:52 pm

I don’t know but I checked quickly, it seems your inference seems right. Can you find any support?

For 119(e), support is here(one caveat, the prov can be abandoned, fine, but if abandoned due to failing to pay, no good)

Public Law 106-113 amended 35 U.S.C. 119(e)(2) to eliminate the copendency requirement for a nonprovisional application claiming benefit of a provisional application.

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42 MirandaNo Gravatar April 5, 2012 at 9:03 pm

I can’t find it in the MPEP, but I do remember a PLI fact pattern in which the foreign app matured into a patent 1 month after filing, but you could still file a US app before the 12 month deadline and claim foreign priority.

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43 KeenerNo Gravatar May 19, 2012 at 2:22 pm

Sol,
How is 119(e) without copendency possible? 119e(2) only speaks to the fee requirement of prioriyt. 119e(1) says “An application for patent filed under section 111(a) or section 363 of this title for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in a provisional application filed under section 111(b) of this title, by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b) of this title, if the application for patent filed under section 111(a) or section 363 of this title *is filed not later than 12 months after the date on which the provisional application was filed* and if it contains or is amended to contain a specific reference to the provisional application.” Since Provisionals only last for 12 month, wouldn’t copendency be necessary?
Or are you saying that one could expressly abandon provisional A and then, within 12 months of filing provisional A, still claim benefit to the prov A?

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44 KeenerNo Gravatar May 19, 2012 at 2:39 pm

Looking into it further I see where 37 CFR 1.78 a(5)ii mentions the 4/16, for claiming priority, but copendency required by 119(e)1 “application…is filed not later than 12 months after the date on which the provisional application was filed” has not been removed.
Am I wrong?

45 fluidNo Gravatar September 23, 2012 at 8:55 am

I had it 9/22/2012.

Somebody had a priority claim but deleted it to extend the patent term. Then, they were rejected because of a printed publication. How can they reinstate the priority date?

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46 tomásNo Gravatar March 26, 2013 at 2:21 pm

201.11
This just came up in my practice the other day:
(B) The later-filed application must be copending with the prior-filed nonprovisional application for a benefit claim under 35 U.S.C. 120, 121, or 365(c). For a benefit claim under 35 U.S.C. 119(e), the later-filed application must be filed not later than 12 months after the filing date of the prior provisional application.

Thus, you can claim priority to an *expressly abandoned* provisional application. The provisional need not be copending. This is especially relevant to Paris Convention Article 4 (C)(2) and (4).

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47 ZNo Gravatar March 31, 2013 at 2:50 pm

Got same question as fluid on 3/30/13.

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