Joint Appendix One

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2:10-cv-O7678-JFW-DTB Document 65-1 Filed 10/07/11 Page 5 of 36 Page ID
#:1282
Nanoptix's Alleged Uncontroverted Response in Opposition
Facts
9. On February 28, 2008,
FutureLogic responded to the PTO's
October 16, 2007 final office action. In
its response, FutureLogic filed the
Declaration of Mark Meyerhofer to
antedate the Rowe '320 patent and the
Rowe '527 published application.
10. Mr. Meyerhofer stated that "the
claimed invention of the '855 patent was
actually redticed to practice in the United
States of America before Jtdy 10, 2001
which is the earliest effective date of
Rowe'320 and Rowe '527."
11. In paragraphs 6 tol 6 of his
declaration, Mr. Meyerhofer described
the promotional printer that met the
elements of the claimed invention. The
exhibits attached to Mr. Meyerhofer's
declaration depict the promotional
printer.
12. The promotional printer described
in Mr. Meyerhofer's declaration was the
PSA-66-VM printer ("VM printer")
which was provided to Coca-Cola.
13. On May 13, 2008, the PTO again
rejected all claims of the '855 Patent
application. In this third rejection, the
PTO rejected the claims based upon the
Rowe '065 published application and the
Nichols '241 patent and, in some
instances, other prior art.
-5-
-A0391 -
Rounds Decl. 4, Exhibit 3 at pp. 65-
79.
Undisputed.
Rounds Decl. 4, Exhibit 3 at p. 67,
5.
Undisputed.
Rounds Decl. 4, Exhibit 3 at pp. 67-
79; Rounds Decl. 6, Exhibit 5.
Undisputed.
Rounds Decl. 22, Meyerhofer Tr.
36:21-37:23, 44:8-22.
Undisputed.
Rounds Decl. 4, Exhibit 3 atpp. 61-
64.
Undisputed.
F1JTURELOG IC'S STMT OF ISSUES {.IF MATFA_IAL FACT IN
OPP TO NANOPTIX'S MOTION
2: i 0-CV-07678 -JFW-DTB