Joint Appendix One

Case 2:" )-cv-07678-JFW-DTB Document 56 Filed 09/28/11 Page 4 of 11 Page ID #:904
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states as follows in paragraph 5: ...the claimed
invention of the '855 patent was actually reduced
to practice in the United States of America before
December 19, 2000, which is the earliest effective
date of Rowe '065 and Katz '901."
15. The PTO issued afinal office action on
December 3, 2008. In this office action, the PTO
raised issues of whether the claimed invention
described in Mr. Meyerhofer's declaration was
either on sale or in public use under 35 U.S.C. §
102(b). This was based upon the third page of Mr.
Meyerhofer's declaration which stated "After
being built, the promotional printer of was placed
into operation and used for its intended
purpose..." and the oral statement of his patent
attorney that "FutureLogic has created products
for use by other corporations."
16. In its December 3 '_ office action, the PTO
stated: "In the case of the facts revealing that the
invention was involved in "public use" or "on
sale" activities, the 35 U.S.C. § 102(b) rejections
based upon a public use or sale of the invention
will be maintained, ff the facts reveal otherwise,
the rejection will be withdrawn."
17, On June 3, 2009, FutureLogic responded to
the December 3rd office action.
18, In the June 3 ra response, FutureLogic stated
the following: "...Applicant submits herewith but
under separate letter, a Supplemental Declaration
under 37 C.F.R. § 1.131 in order to further clarify
the circumstances under which the promotional
printer described in Applicant's two previous
Declarations under 37 C.F.R.I. 131 dated
February 11, 2008 and August 12, 2008, was
reduced to practice."
19. In the June 3 ra response, FutureLogic further
stated the following: "Furthermore, and in
accordance with Applicant's understanding of the
rejection under 35 U.S.C. § 102(b), Applicant
respectfully requests that the Examiner consider
the additional information supplied in the
Rounds Decl. Cl[4, Exhibit 3
at pp. 31-34.
Rounds Decl. q[ 4, Exhibit 3
at p. 34.
Rounds Decl. ql 4, Exhibit 3
at pp. 26-30.
Rounds Decl. I[ 4, Exhibit 3
at p. 29.
Rounds Decl. q[ 4, Exhibit 3
at p. 29.
- 4 - Case No. CV 10-7678-JFW-DTB
Nanoptix, Inc,'s Slatement of Uncontroverled Facts and Conclusions of Law
-A0124-