Joint Appendix One

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2:10-cv-07678-JFW-DTB Document 64-3 Filed 10/07/11 Page 5 of 10 Page ID
#:1243
A proper response to these questions would make it clear
to the Examiner and place facts on record whether the
invention was reduced to practice before the earliest
reference with or without any "public use" or "on sale"
activities. Refer to MPEP 2133.03 for the explanation of
"On Sale" or "Public Use." 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. If the facts reveal otherwise, the rejection
will be withdrawn.
34. On June 3, 2009, responding to the December 3, 2008 final office
action, FutureLogic stated:
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. 1.131 dated February 11,
2008 and August 12, 2008, was reduced to practice ....
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
Supplemental Declaration. Based on that additional
information, Applicant submits that the present invention
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
respectfully requests consideration and withdrawal of the
rejection under 35 U.S.C. § 102(b).
35. On June 26, 2009, FutureLogic filed Mr. Meyerhofer's third
declaration, which was intended to accompany the June 3, 2009 response,
indicating that the submission was "inadvertently delayed." FutureLogic further
indicated, "The contents and sufficiency of the supplemental declaration were
discussed with the Examiner in a telephonic interview prior to the submission of the
Proposed
Additions to
Answer
-A0352-
-4-