Joint Appendix One

Case 2:10-cv-07678-JFW-DTB Document 57-3 Filed 09/28/11 Page 12 of 37 Page ID
#:952 NAN04745 I
Application/Control Number: 10/405,112 Page 3
Art Unit: 2625
5. Claims 82-152 and 154-166 rejected under 35 U.S.C. 102(b) based upon a
public use or sale of the invention. In the broad statement in the declaration, it appears
to suggest that the device was utilized for its purposes to print items coincident with its
use. The purpose of the invention is to provide vouchers in e gaming environment or
receipts to customers in a vending environment. Therefore, based on this bi'oad
statement, the Examiner concluded that the invention has been used in a manner that
coincides with "public use". However, a proper response to the questions below can
further clarify if the invention was "on sale" or in "pubic use".
6. An 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. 102(b), additional information regarding this issue is required as follows:
On the third page of the declaration, the inventor stated that "After being built, the
promotional pnnter was placed into operation and used for its intended purpose....".
Based on the above statement, the Examiner would like ask for more clarification as to
the period in which the invention was in operation. When the invention was placed into
operation, was the invention on display to anyone other than the inventor? Was the use
of the invention strictly for testing purposes? Was the operation of the invention in a
place where the public could view the structural features of the claimed invention while
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in operation? As discussed earlier in a conversation with Attorney of record Frank Cite,
the Examiner understood that FutureLogic, Inc has created products for use by other
corporations. Has the claimed invention in question been used by another person or
party other than the inventor to use the invention without limitation, restriction or I
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00033
Nanoptix' Summary Judgment Exhibit No. 3
-A0172-
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