Joint Appendix One

Case 2:10-cv-07678-JFW-DTB Document 57-3 Filed 09/28/11 Page 8 of 37 Page ID
#: 948 NAN04689
to provide answers that are conclusions of law or based on personal knowledge or belief rather
than by submission of documents. Based on the foregoing and as best understood by Applicant,
the request for information appears to have been made pursuant to 37 C.F.R. § 1.105(a)(1)(vii),
namely, it is a request for "(i)dentification of any use of the claimed invention known to any of
the inventors at the time the application was filed notwithstanding the date of the use."
In accordance with Applicant' s understanding of the apparent request pursuant to
37 C.F.R. § 1.105(a)(1)(vii), 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.IL § 1.131 dated February 11, 2008 and August 12, 2008, was reduced to practice.
Applicant submits that the addidona] information supplied in the Supplemental Declaration is
responsive to the requesL
Furthermore, and in accordance with Applicant's understanding of the rejection
under 35 U.S.C. § 102Co), Applicant respectfully requests that the Examiner consider the
additional information supplied in the Supplemental Declaratinn. Based on that additional
information, Applicant submits that the present inyention was neither made accessible to the
public, nor used.commercially, nor offered for sale or sold, before the critical date of March 29,
2001. Accordingly, Applicant respecffuUy requests reconsideration and withdrawal of the
rejection under 35 U.S.C. § 102(b).
No other matters being raised, Applicant submits that the application is in
condition for allowance and respeetfiflly requests same.
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00029
Nanoptix' Summary Judgment Exhibit No. 3
-A016 8-
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