Joint Appendix One

Case 2:10-cv-07678-JFW-DTB Document 57-3 Filed 09/28/11 Page 6 of 37 Page ID
#:946 NAN04687
REMARKS
This application has been carefi_y reviewed in light of the Office Action dated
December 3, 2008. Claims 82 to 152 and 154 to i66 are pending, of which Claims 82, 117 and
154 are independent. Reconsideration and further examination are respectfuily requested.
Claims 82 to 152 and 154 to 166 were rejected under 35 U.S.C. § 102(b) based on
an aUeged public use or sale. Reconsideration and withdrawal of this rejection are respectfully
requested.
Initially, Applicant notes that, in making the rejection under 35 U.S.C. § 102(b),
the Office Action failed to set forth aprimafacie case for either an alleged public use or an
alleged offer for sale. (See M.P.E.P. 2133.03(a)). In regard to public use, the Office Action
merely contended that Applicant's declaration under 37 C.F.R. § 1.131 "appears to suggest that
the device was udlized for its purposes to print items Coincident with its use. The purpose of the
invention is to provkle vouchers in a gaming environment or receipts to customers in a vending
environment." (See Detailed Action, Section 5.) Applicant is uncertain how an appearance or a
suggestion can be considered the factual basis for a rejection under 35 U.S.C. § I02(b). As such,
it is impossible for Applicant to determine what facts form the basis for the rejection of the
claims. However, for the purposes of advancing the application and providing a response to the
current Office Action, Applicant understands the Office Action to contend that the present
invention was allegedly either made accessible to the public or allegedly used eommerciaily
before the critical date of March 29, 2001 because the promotional printer described in
Applicant's previous declarations under 37 U.S.C. § 1.131 was used for its intended purpose,
namely to generate printed items for financial transactions, including receipts and vouchers. (See
M.P.E.P. § 2t33.03(a)I.)
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00027
Nanoptix' Summary Judgment Exhibit No. 3
-A0166-