Joint Appendix One

Case 2:10-cv-07678-JFW-DTB Document 57-3 Filed 09/28/11 Page 7 of 37 Page ID
#:947 NAN04688
Furthermore, the Office Action appears to assert that FutureLogic, Inc. (the
assignee of the present application) "has created products for use by other corporations" and that
this fact alone is sufficient evidence to support the allegation that the present invention was sold
or offered for sale prior to the critical date of March 29, 2001. (See Detailed Action, Secdon 6.).
Applicant submits that whether FutureLogie, Inc. has or has not created products for use by other
corporations is not at all relevant to determining whether or not the present invention was so]d or
offered for sale before the critical date. Therefore, it is impossible f6r Applicant to determine
what facts form the basis for this rejection or how Applicant is expected to respond to such an
allegation. Nonetheless, and simply for the purposes of advancing the application and providing
a response to the current Office Action, Applicant understands the Office Action to contend that"
an alleged offer for sale of the present invention occun'ed before the critical date of March 29,
2001 because of an alleged definite sale, or an alleged offer to sell of the promotional printer as
described in Applicant's previous declarations under 37 U.S.C. § 1.131 before the critical date.
(See M.P.E.P. § 2133,03(b)I.)
Finally, the rejection 35 U.S.C. § 102(b) appears to be combined with a request
for iJaformadon under 37 C.F.R, § 1.105. Specifically, the Office Action stated "(a)n issue of
public use or on sale activity has been raised in this application, In order for the examiner to
properly consider patentability of the claimed invention under 35 U.S.C. 102Co), additional
information regarding this issue is required as follows:". After presenting a series of apparent
interrogatories, the Office Action stated "Applicant is reminded that failure to fully reply to this
requirement for information will result in a holding of abandonment." (See Detailed Action,
Section 6, emphasis added.) However, it is not apparent from the request how the Applicant is to
respond to such a request. Specifically, the apparent interrogatories appear to require Applicant
-3-
00028
Nanoptix' Summary Judgment Exhibit No. 3
-A0167-