Joint Appendix One

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2:10-cv-O7678-JFW-DTB Document 65-1 Filed 10/07/il Page 7 of 36 Page ID
#:1284
Nanop_'s Alleged Uncontroverted Response in Opposition
Facts
16. In its December 3rd office action,
the PTO stated: "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withdrawn."
17. On June 3, 2009, FutureLogic
responded to the December 3rd office
action.
18. In the June 3rd response,
FutureLogic stated the following:
"... Applicant submits herewith but tinder
separate letter, a Supplemental
Declaration under 37 C.F.R. § 1.13i in
order to further clarify file circumstances
under which flae promotional printer
described in Applicant's two previous
Declarations under 37 C.F.R. 1.131
dated February II, 2008 and August 12,
I2008, was reduced to practice."
-7-
-A0393-
Rounds Decl. 4, Exhibit 3 at p. 34.
Undisputed as to the statement itself,
but misleading. See inJi'a, 25.
Rounds Decl. 4, Exhibit 3 at pp. 26-
30.
Undisputed.
Rounds Decl. 4, Exhibit 3 at p. 29.
Undisputed
FtJTUREI.OG ICeS s I,_fl7 OF ISSUES OF MATFJIlAL FACT I:N
OPP TO NANOP FIX'8 MOTION
2; 1¢1-CV- 0767 g-J FW-D'I28