Reevaluating Design Patent Obviousness

by Dennis Crouch

Design patents continue to rise in importance, but the underlying law full of eccentricities.  The crux of the issue lies in the manner patent law decisions are typically written. Most of precedential patent decisions are penned with a strong focus on utility patent doctrine, yet, surprisingly, the same patent doctrines of novelty, obviousness, definiteness, enablement, and written description are also applicable in the realm of design patents.

The Federal Circuit has decided to reevaluate this dichotomous situation specifically in relation to the question of obviousness. The case under scrutiny is LKQ Corp. v. GM Global Tech, 21-2348 (Fed. Cir. 2023). The court has set forth six key questions for the parties to consider:

A. Does KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), overrule or abrogate In re Rosen, 673 F.2d 388 (CCPA 1982), and Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996)?

B. Assuming that KSR neither overrules nor abrogates Rosen and Durling, does KSR nonetheless apply to design patents and suggest the court should eliminate or modify the Rosen-Durling test? In particular, please address whether KSR’s statements faulting “a rigid rule that limits the obviousness in-quiry,” 550 U.S. at 419, and adopting “an ex-pansive and flexible approach,” id. at 415, should cause us to eliminate or modify: (a) Durling’s requirement that “[b]efore one can begin to combine prior art designs . . . one must find a single reference, ‘a something in existence, the design characteristics of which are basically the same as the claimed design,’” 101 F.3dat 103 (quoting Rosen, 673 F.2d at 391); and/or (b) Durling’s require-ment that secondary references “may only be used to modify the primary reference if they are ‘so related to the primary reference that the appearance of certain ornamental fea-tures in one would suggest the application of those features to the other,’” id. at 103 (quot-ing In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996)) (internal alterations omitted).

C. If the court were to eliminate or modify the Rosen-Durling test, what should the test be for evaluating design patent obviousness challenges?

D. Has any precedent from this court already taken steps to clarify the Rosen-Durling test? If so, please identify whether those cases resolve any relevant issues.

E. Given the length of time in which the Rosen-Durling test has been applied, would eliminat-ing or modifying the design patent obviousness test cause uncertainty in an otherwise settled area of law?

F. To the extent not addressed in the responses to the questions above, what differences, if any, between design patents and utility patents are relevant to the obviousness inquiry, and what role should these differences play in the test for obviousness of design patents?

En Banc Order.

The case itself involves design patents covering GM parts, such as front fenders.  See D797,625.  The existence of the design patent means that repair parts must come from authorized manufacturers and channels.  For years, auto insurance companies and others have argued that this improperly raises costs.

The original appellate decision was non-precedential and supported the PTAB IPR decision that the patent challenger failed to demonstrate obviousness. The court relied on the tests delineated in Rosen & Durling, putting a spotlight on a primary reference that ought to be “basically the same” as the claimed design. Notably, this is a substantially different approach than the one employed in utility patent obviousness doctrine.

The original panel was composed of Judges Lourie, Clevenger, and Stark. Though the panel released a per curium opinion, separate opinions were also issued by Judges Lourie and Stark. Judge Lourie expressed his conclusion that it is totally acceptable for the design patent obviousness test to be different from that in utility patents. “Obviousness of an ornamental design thus requires different considerations from those of a utility invention.”  Judge Stark disagreed with the majority opinion on a procedural grounds (forfeiture of certain arguments).

Barry Irwin teamed up with Profs Mark Lemley and Mark McKenna for the en banc petition. Joseph Herriges and John Dragseth from Fish & Richardson represent GM.

The court specifically invited the US Gov’t to file an amicus brief and also welcomed additional briefs of amicus curiae — noting that they “may be filed without consent and leave of the court.”  If you support LKQ (making it easier to invalidate design patents), amicus briefs will be due in late August.  If you support GM, briefs will be due in late September.

61 thoughts on “Reevaluating Design Patent Obviousness

  1. 9

    After harping on the refusal of the CAFC to review this obvious design patent obviousness-test issue for years, I am very pleased to see it being formally evaluated in LKQ Corp. v. GM Global Tech, 21-2348 (Fed. Cir. 2023). The court has set forth 6 key questions to consider, starting with “A. Does KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), overrule or abrogate [the old CCPA case of] In re Rosen, 673 F.2d 388 (CCPA 1982), and Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996)?” [Does Durling really need overruling?]
    But the general Court question “C” here deserves more consideration. In particular, why is the required statutory 103 person of ordinary skill in the art test seemingly also ignored in design cases? And, the inconsistency between 103 tests and infringement tests for designs. Unlike utility patents with the same statutes involved. Most commercial* designs that are patented are by professional product designers, not lay observers.
    [I also agree with many folks that replacement car fenders and the like [which can only be competitively sold as exact copies] is a whole separate, different, but serious problem with U.S. design patents, whether “functional” or not even though that seems obvious to infrequent design patenting folks. But that does seem to make this a particularly “bad facts” case for evaluating design patents?]

    1. 9.1

      *the intended footnote was to exclude the numerous and sometimes fraudulent and/or client-misleading design patents filed and issued by “invention promotion” companies. [Like the notorious painted bait bucket design patents involved in one of the few published PTO case attacks.]

    2. 9.2

      What is your point, Paul?

      That is, are you merely happy that the court is acting on this case, or do you have a legal opinion (and attendant reasoning for that opinion)?

      Your past musings on pretty much anything to do with design patents have repeatedly brought out criticisms on your apparent lack of understanding, and it is just not clear whether your level of understanding has improved since your last comments on the subject of design patents.

    3. 9.3

      Paul, I imagine you are thrilled that the court is taking up this question (no matter who wins/loses, this is likely eventually headed to SCOTUS).

      But given that Sec. 103 is not going away under any scenario, what is your answer to Question C?

      C. If the court were to eliminate or modify the Rosen-Durling test, what should the test be for evaluating design patent obviousness challenges?

      1. 9.3.1

        Thanks Perry, but I am not foolhardy enough to pontificate on what an unpredictable Supreme Court might do in almost any patent case. Some of its conservate majority have already demonstrated no more pro-patent inclinations that some of the far less conservative. This case also differs in that the argument might be cast as promoting conservative following of the statute itself vs a judicial accretion? [Which might also be relevant to Alice.]
        Are you going to file an amicus brief with your own design patent obviousness test suggestions? Or, provide a logical argument for the retention of the CCPA’s unique In re Rosen test for only design patents?
        Interestingly, many of the comments on this blog seek drastic design patent changes only available by legislation, yet apparently there is not enough lobbying funding for that. Not even from the huge software/internet or pharma industries, since they are not significantly impacted by suits on obvious design patents.


          but I am not foolhardy enough to pontificate on…

          But Paul has no such limits to being foolhardy enough to pontificate on many other things (most all of which can be aptly labeled anti-patent or pro-Efficient Infringer).

  2. 8

    I might dissent mildly from the general consensus here. IMHO, the test for novelty/infringment of design patents should essentially be “look at the two designs side-by-side for 10 seconds (only!). Do you think they are exactly the same?”

    Obviousness (and DoE, now that we’re saying the “same patent doctrines” apply) comes into play if/when a highly motivated observer can squint very closely at the two and identify a few barely perceptible differences.

    tl;dr Rosen-Durling is mostly fine.

    1. 8.1

      But how do you ignore the CAFC case law [which Perry has well noted in an excellent article some years ago now] which is supposed to limit the claim scope of a design patent to what is shown in its solid lines as further limited by any optional written description.

  3. 7

    If obviousness is a legitimate criterion for design patents then so too should it be for recognition of copyright. It isn’t though is it. The test in Europe for the patentability of a design is whether it is new and whether it has individual character. That’s quite different from obviousness. But here perhaps the court could take the opportunity to bend the present obviousness enquiry into one which is to all intents and purposes an enquiry into whether the design has individual character.

      1. 7.1.1

        Yes, I meant copyright and, yes, I accept the point that copyright can subsist even when the work lacks patentable novelty. Compare the IPR’s we have in Europe, other than utility patents. We have copyright, like in the USA. We have a 25 year registered design right, which bestows exclusive rights and can be enforced even when there has not been any copying. And we also have an unregistered design right, of shorter term (max 10 years) than a registered design, and which can be enforced only against those who have copied. So you see, our UDR is akin to copyright in the field of industrial designs.

        But the criterion obvious Y/N is relevant in Europe only for utility patents. Europe strives to keep its obviousness enquiry objective. For design protection though, I don’t see how it can be anything other than subjective.


          A former Commissioner of Patents and Trademarks agrees with you. In a 1981 speech to the ABA PTC Section, Gerald Mossinghoff said: “… the concept of unobviousness is not well suited to ornamental designs.”


          As much as I appreciate your point on non-US Sovereign matters, this exchange between is a perfect example of your EPO Uber Alles tendencies, and how your “provocative” aim only makes you look c1ue1ess, as the vast majority of readers here have the baseline view of US Sovereign law.

          I daresay that as soon as most people see a post by MaxDrei, and the words “in Europe” (or anything similar), your post is skipped. This is because you ONLY look at things through your spectacles, and simply do not bother to understand the US system (enough) to actually make a pertinent point about the US system.

          Now mind you, experts (such as Perry) already have enough US knowledge for them to fill the monstrous gaps of your Euro-centric posts.

  4. 6

    “ Judge Lourie expressed his conclusion that it is totally acceptable for the design patent obviousness test to be different from that in utility patents.”

    It’s not only “acceptable.” It’s mandatory because the subject matter of the two types of patents is completely different.

    1. 6.1

      Not sure I understand what you are trying to say.

      Subject matter — per se — has nothing to do with whether or not different “tests for obviousness” apply.

      There is only one law of obviousness. Your comment (as far as “subject matter” goes) would indicate that you think that there should be different obviousness tests merely for different subject matter (e.g., subject matter of bicycles versus subject matter of surgical devices).

      I am not 1gn0ring your use of “types of patents,” and certainly we have been in agreement before how inane it is to attempt to shoehorn ANY non-utility type of intellectual property protection into a system first and largely built for utility patent protection.

      But this does not even need “the subject matter” to make this point (plus, as design patents are NOT to designs per se, the “subject matter” does in fact overlap with the “subject matter” to which utility patents could apply — as seen in the link I provided (i.e., subject matter of gloves or tires and the like can serve as either of the design patent notion of article of manufacture portion of a design patent or the subject of utility of a utility patent.

      1. 6.1.1

        Have I told you to go eff yourself today? Because you really need to go eff yourself.


          Lol — see what happens when I provide a direct and snark-less critique?

          Now why in the world should I deny myself the joy of bashing you when all that you do — all that you are capable of doing — is this type of ‘response’…?

          I am not the one that needs to “eff oneself.”

          Take a deep breath. Get a grip on your emotions, and try again.

          If you dare.

  5. 5

    the same patent doctrines of novelty, obviousness, definiteness, enablement, and written description are also applicable in the realm of design patents.

    See also: link to

    (ipguy – any update?)

    1. 5.1

      35 USC 171(b) says that the requirements of Sec. 112(a), for example, apply to design patents, but saying it doesn’t make it so.

      I’m aware of no court that has invalidated a design patent because, like every single design patent, its specification fails to teach “the manner and process of making and using it … to enable any person skilled in the art … to make and use the same…”

      1. 5.1.1

        Thanks Perry,

        To your, “35 USC 171(b) says that the requirements of Sec. 112(a), … apply to design patents, but saying it doesn’t make it so.

        But that cannot be correct, can it?

        Much like how the courts got the patent marking statute wrong for some 50 years or so (prompting a nigh-emergency change in law by Congress), just because no court has so found (yet), is NOT definitive.

        With SurgiSel’s ‘power’ of the article of manufacture link, I could easily imagine a push-back that (and this would be practically ALL) design patents are invalid for failing to show how to make and use.

        As opposed to a “design in the abstract,” teaching how to make and use WILL be highly specific to any named article of manufacture.


          Further regarding 112(a), what is the “best mode” of a design? Does a court require the designer to produce all the scraps of paper he/she used before coming up with the claimed design, in case one of them is deemed the “best”? Do we require a comparison with other design patents to see if the claimed design is the “best”? And who exactly judges “best”? I submit that when it comes to designs, courts are rather poor arbiters of aesthetic qualities.


            Completely agree.

            I also believe that we are in accord that it is an abysmal shame for Congress to have even attempted to force-fit Design Patents into a utility patent system.


          112(b) says: “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” Yet the PTO has steadfastly refused design patent applications to have more than one claim.


            As I (barely) delve into design patent prosecution, this is more a question than an assertion, but were there not recent changes to allow “family sets” of claims (that is, more than one item shown completely in one or more drawings, as expressed in the MPEP section on dealing with 35 USC 112 at MPEP 1504.04: “However, since the drawing disclosure and any narrative description in the specification are incorporated into the claim by the use of the language “as shown and described,” any determination of the scope of protection sought by the claim is also a determination of the subject matter that must be enabled by the disclosure“…?


              In order for more than one embodiment to remain in one application, they must be deemed obvious variations of each other. The downside is that if prior art teaches one embodiment, then the entire patent is invalid because there’s only one claim.

              37 CFR 1.153 Title, description and claim, oath or declaration

              (a) The title of the design must designate the particular article.
              No description, other than a reference to the drawing, is
              ordinarily required. The claim shall be in formal terms to the
              ornamental design for the article (specifying name) as shown,
              or as shown and described. More than one claim is neither
              required nor permitted.



                And yes, even if the Office states, “No description, other than a reference to the drawing, is
                ordinarily required. The claim shall be in formal terms to the
                ornamental design for the article (specifying name) as shown,
                or as shown and described.

                If this does not meet the legal requirement of “teach to make and use,” the Office is in error and (again) most all Design patents will be void.

                Of course, this would be an extremely harsh result….

    2. 5.2

      None. I’ve been looking for examples of petitions involving “lack of compact prosecution”.

  6. 3

    The core of the problem is that the act of inventorship that gives rise to a patentable utility invention is fundamentally a very different thing than the act of “inventorship” that gives rise to a patentable design invention. Utility inventions arise out of solving a technical problem, a process that is amenable to objective analysis based on the facts of the problem and the solution – e.g., the factual inquires underlying the obviousness question. In contrast, by statutory definition the subject matter of design inventions is limited to visual appearance, there is no objective problem to be solved, the only improvement can be that something looks “better” or worse just “different”. (Setting aside all the “designs” that are actually intended to protect function that is dictated by shape and which never get weeded out because the Fed. Cir. doesn’t believe any design ever can be dictated primarily by function). Because the act of invention that leads to a design invention is so different than the act of invention that leads to a utility invention, it is complete insanity to expect that the exact same tests can be applied to both. Legal analysis cannot and will never be able to fairly asses a completely subjective act. The entire design patent system in the US should be dumped in favor of a novelty/registration/design right scheme like the rest of the world employs. This will never happen however because the “USA” always thinks it is right and too many lawyers now make too much money off of the current system.

    1. 3.2


      Interesting, but since Malcolm thinks “perfect,” I am obliged to point out that you have an over-dependence on the aspect of “solving a technical problem,” in so far as you decry design patents as “the only improvement can be that something looks “better” or worse just “different”.

      Utility patents themselves promote with ‘merely’ providing a novel and non-obvious solution that is ONLY “different,” and there is NO requirement that such a “different” solution actually be better (linearly or otherwise).

      Quite in fact, most often initial advances of patent merit may well be worse than existing options (and it is often in the secondary implementation phase that additional discoveries may occur that accelerate an adoption curve that provides the putative “advance” that so many mistakenly believe is necessary to justify the grant of a patent.

      Also, your criticism of “too many lawyers now make too much money off of the current system” is both UNfounded and ill-founded. You ascribe power and animus that simply does not reach the legislative function that would implement the change that you suggest.

    2. 3.3

      90% +1.

      While also noting that — given the last 10+ yrs or so — the CAFC is more likely than not to further constrict patent protection.

      This time design patent protection.

      Given this risk, expect the large majority of both domestic and foreign transportation manufacturing companies to file amicus briefs.

      Indeed, a record could be set.

      (Anyone know which case currently holds the record for patent cases?)

      1. 3.4.1

        Mr Saidman, on the “functionality part” where you demur, what about a new design which is “dictated by function” in that it is the ONLY design capable of delivering a specific technical function. Should such a design be registrable, or should it be protectable ONLY by a utility patent? This was an issue when Europe created its pan-European registered design right.

        Hard to think of a real world example. Perhaps a new way to cut a diamond. Should the law allow a design patent on that design?


          It’s hard to think of a real world example… because there aren’t any.

          For many years, whenever I give a talk on functionality, I offer to buy dinner for any person in the audience who can create a new ornamental design for an article of manufacture for which there are no alternative designs that perform substantially the same function. So far, I haven’t spent a dime.


            OK. So far, so good. But what about design protection for spare parts that “must fit” or “must match”? A replacement front wing for an automobile, perhaps. Isn’t it so, that only one “ornamental” design of such an article of commerce is available and that its “designer” has no design freedom whatsoever?


              odd hit of a filter…

              Your comment is awaiting moderation.

              July 2, 2023 at 8:38 am


              As anyone who has lived in the US near the s0uthern b0rder can attest, the notion of “MUST” in “must fit” or “must match” is almost never** related to actual function.

              ** There are “must fit” aspects that ARE functional, being contour type things in which a mat1ng with a different item does have a functional requirement. Such though, are covered under the standard ‘functionality’ aspects.


              Europe prohibits design enforcement of “must fit” designs (see Porsche/Audi/Acacia EU litigation). To @MaxDrei’s point, this would be an easier fix for LQM in the US, rather than tinkering with obviousness. However, the US has apparently rejected the “must-fit” rule. Please see: link to This may be why LQM limited the en banc focus to obviousness.


            That’s because you ascribe to a definition of “dictated primarily function” that no one but specialist design patent practitioner would understand – very clearly the profile of the operational edge of a key is dictated not just primarily, but solely by function – it shaped the way it is shaped for one reason and only one reason – to mate with and operate the tumblers in the lock with which it is paired. There is no other shape that key could take and still act as a key. So unless we are talking about a non-operational key (and then who cares?), that is a clear example of an appearance dictated primarily by function, and one which I understand you have refused to accept as such.



              Are you thinking of a cut key profile as that key is laying flat?

              Or the “down the barrel” view of a blank uncut key?

              The first is not something for which design patent protection is sought, now is it?

              The second (uncut) cannot selectively turn the tumblers, now can it?

              As indicated, the US looks at mating items a bit differently, and the “down-the-barrel” design choice is a bit open, eh?

              Certainly, some functionality is there (a la tire treads as a different example), but for at least the keys, “primarily” may not be as strong as you suppose.


                Time for Judge Newman to enter, stage left. Writing in dissent (of course) in the key blade case (Best Lock v. Ilco Unican, 94 F.3d 1563), she hits the nail on the head:

                “The parties to this litigation agree that there are myriad possible designs of key profiles. All keys require, of course, mating keyways. In holding that because the key must fit a keyway, the abstract design of the key profile is converted to one solely of function, the court creates an exception to design patent subject matter. An arbitrary design of a useful article is not statutorily excluded from § 171 simply because in use it interacts with an article of complementary design.

                “The design of the key profile was not dictated by the design of the keyway, and indeed the two share the same arbitrary design.

                “In sum, the fact that the key blade is the mate of a keyway does not convert the arbitrary key profile into a primarily functional design. It is not the design of the key profile that is functional, but the key itself.”

                Here’s hoping she will bring some sense to the LKQ brouhaha.

                1. With all due respect to Judge Newman, that is just plain wrong. And the clue should be that you are trying to distinguish between two things that cannot be distinguished: the design of the key and the key itself. Put the “teeth” of the key in dashed lines and I’ll agree with you. But include the teeth profile as part of the claimed design (assuming we are otherwise talking about a generic key shape), then no, there is no distinction between the key and the design of the key.
                  If the design in question were instead directed to a “lock and key set” then, yes, you might say the profile of the key is a matter of design choice because any profile could be chosen.**
                  However, when just the key is claimed, the shape of that key is dictated solely by its need to mate with the keyway of the lock. No other shape will work for that purpose.
                  The logical fallacy is proven by the assertion that “indeed the [key and keyway] share the same arbitrary design.” It is only arbitrary when considered together. When the key is considered alone, it is anything but arbitrary – it is unequivocally dictated by the function of being received in a specific keyway, which is not part of the claimed design.
                  As I said, a definition of function that only a design patent practitioner could understand. But more more fundamentally, given that Newman writes in dissent, I would think the dinner is owed.

                  ** Assuming the patent owner does not market the lock and key set as having superior security due to its unique key profile.

                2. TK,

                  I must say, that you are taking a rather wooden approach here.

                  To your comment of, “However, when just the key is claimed, the shape of that key is dictated solely by its need to mate with the keyway of the lock. No other shape will work for that purpose.” the actual function of a key is not merely to mate with a keyway.

                  Doing so — and only so — would result in actual sales of ZERO units.

                  This is the deeper point for which I provided this example. Your original supposition was NOT merely the key-to keyway aspect (my emphais added): “to mate with and operate the tumblers in the lock with which it is paired.

                  Not only does Judge Newman have the better legal position, her litany of supporting cases ALL still remain good law on the books.

                  Don’t count on bad law for your dinners.

    3. 3.5

      I like that you put inventorship in quotes with respect to designs. Fully agree that the USA to move to what the rest of the world has been doing in this area for many years.

  7. 2

    The original panel was composed of Judges Lourie, Clevenger, and Stark.

    Perhaps worth noting that the order granting en banc review was joined by Judge Newman.

    1. 2.1

      “but the symbolic impact seems like it could be deep and far-reaching.”

      That’s true, a great blow against racism was finally struck. Took long enough.

      “So diversity in the officer corps is a legitimate reason for racial preferences, but diversity in the professional class is not?”

      He only said this because he doesn’t understand the difference between the professional class pipeline and the officer corps pipeline. Companies are free to hire on just about anyone they want for diversity (qualified or not) within some reason, but the officer pipeline is very narrow through a few academies.

      1. 2.1.1


        You may find this of interest (as well as others, seeking to understand traditional liberalism – aka, not imbibing the Sprint Left mindset):

        link to

        (if the filter snags the above, replace the “$” with a “c” and remove the extras spaces in the link of:

        htt p s:// $ ism-vs-liberalism/


          Somewhat of a feel good vidya. I will note though that we had “mandatory anti-bias training” at the PTO the other day which I thought about just skipping and “getting in trouble for skipping”. But I went ahead and went to hear what they’d say. Predictably there’s a lot of language control and setting forth a few obscure things that are “offensive” to this or that obscure groups (I by now have basically a PHD in what is an isn’t offensive to a gazillion micro-groups). In any event, I was surprised that throughout the training it did seem like some blatantly liberal sorts of things were being appended. No doubt to soften the authleft feel the training would otherwise have. And likely to try to stop their trainings from just making people more rac/se/etc ist. In any event it wasn’t that truly awful.


            One must always be aware of the Motte and Bailey approach, as the 1984isms run rampant.

    2. 2.2


      I had in the Times how the Racyism of colleges was an item that the Sprint Left group would be hard-pressed to find support.

      As I have long posted: one cannot fight Racyism with Racyism.

  8. 1

    “The Federal Circuit has decided to reevaluate this dichotomous situation…”

    The problem is that it’s NOT dichotomous, that in the USA designs (which only the US are called “design PATENTS”) get lumped together with patents (which only the US are called UTILITY patents”). They’re two legal creations, meant to protect two different sets of property interests. In other countries with which I’m familiar, there is no obviousness test for designs, only a novelty test.

    Additionally, the profit disgorgement in design cases in the US is absurd (cf. Apple v Samsung – rounded corners accounted for little of any of Samsung’s profits).

    1. 1.1

      Apple v Samsung is kinda the first time I’d heard of people taking design patents seriously in the tech business. A profit disgorgement remedy…particularly after all the (new) limitations on damage theories / injunctions wrt utility patents… wow, just wow.

      In fairness, it also be driven in part by the top of the industry’s shift from an innovation-driven “feeds and speeds” model to a fashion-driven “now available in rose gold” model.

    2. 1.2

      Yes, the statute providing for profit disgorgement in design patent cases in the US could have been a financial disaster for Samsung smartphones in the Apple v Samsung suit if the Sup. Ct. had not limited recovery to just the phone case for a design patent on its beveled rounded corners, not the entire smartphone.

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