Free Memorandum - District Court of Arizona - Arizona

IN

THE

UNITED

STATES

PATENT

AND

TRADEMARK

OFFICE

In re reissue application: Serial No.: Inventor: Invention: Reissue Application Filed: Original Patent Number: Atty Docket No.:

10/008,393 Kevin B. Tucek Hand-Held Laser Light Generator Device 11/06/2001 6,013,096 206-004

CLAIM

AMENDMENTS

Commissioner of Patents P.O. Box 1450 Alexandria, V A 22313-1450 Dear Sir: This is a responseto a Withdrawal from Issue dated July 20, 2006 and an office action dated July 21, 2006. Both documents state that the prosecution of the aboveidentified reissue application is being reopened.Therefore, Applicants submit the attachedclaim amendments to be entered in the annlication.

Claim

Amendments

begin on page 2 of this paper .

Remarks

begin on page 20 of this paper .

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AMENDED CLAIMS
This listing will replace all prior versions of the claims in the application.

I. (original) A hand-held laser light generator device for use in medical therapy, said

device comprising:

(a) a wand in the form of a substantially elongated hollow tube defining an interior cavity and capable of being retained in a hand of a user and freely moved relative to the surface of the skin ofapatient to receive the medical therapy;

(b) means mounted in said interior cavity of said wand for generating a beam of laser

light in the red color spectrum;

(c ) an optical arrangement mounted in said interior cavity of said wand for receiving the red color spectrum generated beam of laser light from said generating means and for transforming the generated beam of laser light into a substantially planar beam of laser light disposed externally of said wand for producing a line of laser light in the red color spectrum at a desired location on the surface of the patient's skin and with said line of laser light being visible to the user as said wand is held and freely moved by the user in a spaced relationship from and out of contact with the patient;

( d) a housing

defining

an interior

chamber and having

an exterior;

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( e ) means disposed

in said interior

chamber of said housing

for suppl ying electrical

power to said laser beam generating means;

(f) means for electrically interconnecting said laser beam generating means and said electrical power supplying means such that said wand is movable relative to said housing; and

(g) means on said housing for controlling a period of time said beam of laser light is
generated.

2. (original)

The device of claim

1 wherein

said generating

means is a semiconductor

diode laser using less than one watt of power .

3. (original)

The device of claim

1 wherein

the generated said beam of light has a

wavelength of about 635 nm.

4. (original) The device of claim 1 wherein said optical arrangement includes: a collimating lens; and lens and line generating prism being disposed in

a line generating prism, said collimating

a serial relation to said generating means.

5. {original) The device of claim 1 wherein said electrical power supplying means is a

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battery.

6. (original) The device of claim 1 wherein said controlling means includes: an electrical timing circuit disposed in said interior chamber of and being mounted to said housing; a start switch activatable between on and off positions; and a selector knob having multiple period of time length setting positions, said start switch and selector knob being mounted to said housing and accessible at said exterior thereof and being in operable communication with said electrical timing circuit for controlling

initiation of generation of said beam of laser light and length of the period of time said beam of laser light is generated.

7. ( original)

The device of claim 6 wherein

said controlling

means further

includes:

a lock

mechanism

mounted

to said housing;

and

a key for actuating said lock mechanism between a first position in which said lock mechanism permits said start switch to be activated to said on position and a second position in which said lock mechanism prevents said start switch from being activated to said on position.

8. (original) The device of claim 1 wherein said housing further has a cradle mounted to and projecting outwardly from said exterior of said housing for releasably securing said

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wand thereto, said cradle defining an annular slot open at opposite ends such that said tubular wand can be removably and slidably placed through said slot in a relatively tightfitting relationship with said cradle and thereby retained by said cradle in a storage position spaced from and alongside said housing.

9. (original) The device of claim 1 wherein said housing further has a clip mounted to said exterior of said housing for releasably securing said housing to an article of clothing worn by the user .

10. ( original)

A hand-held

laser light generator device for use in medical

therapy,

said

device comprising:

(a) a wand in the form ofa substantially elongated hollow tube defining an interior cavity and capable of being retained in a hand ofa user and freely moved relative to the surface of the skin of a patient to receive the medical therapy;

(b) a semiconductor diode laser mounted in said interior cavity of said wand for generating a beam of laser light in the red color spectrum;

( c) an optical arrangement mounted in said interior cavity of said wand for receiving the red color spectrum generated beam of laser light from said generating means and for transforming the generated beam of laser light into a substantially planar beam of laser light disposed externally of said wand for producing a line of laser light in the red color

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spectrum at a desired location on the surface of the patient's skin and with said line of laser light being visible to the user as said wand is held and freely moved by the user in a spaced relationship from and out of contact with the patient;

( d) a housing

defining

an interior

chamber and having

an exterior;

( e ) a battery disposed

in said interior

chamber of said housing

for supplying

electrical

power to said laser;

(f) an electrical cord having opposite ends, one of said opposite ends being attached to said wand and making electrical connection with said laser, the other of said opposite ends being attached to said housing and making electrical connection with said battery such that said wand is movably relative to said housing; and

(g) means for controlling

a period of time said beam of laser light is generated, said

controlling means including

(i) an electrical timing circuit disposed in said interior chamber of and being mounted to

said housing,

(ii) a start switch activatable between on and off positions,

(iii) a selector knob having multiple period of time length setting positions, said start

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switch and selector knob being mounted to said housing and accessible at said exterior thereof and being in operable communication with said electrical timing circuit for controlling initiation of generation of said beam of laser light and length of the period of time said beam of laser light is generated,

(iv) means electrically

activatable for generating a sound audible to the user, and

(v) means electrically

connected to said timing circuit and said sound generating means

for electrically charging in response to said beam of laser light being generated and for electrically discharging and thereby electrically activating said sound generating means in response to termination of generation of said beam of laser light.

11. (original) The device of claim 10 wherein said laser uses less than one watt of power.

12. (original) The device of claim 10 wherein said generated said beam of laser light has
a wavelength of about 635 nm.

13. (original) The device of claim 10 wherein said optical arrangement includes;

a collimating

lens;

and

a line generating prism, said collimating
a serial relation to said laser .

lens and line generating prism being disposed in

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Claim

Amendments

Entered

After

Notice

of Withdrawal

from

Issue

SIN 10/008393

14. (original) The device of claim 10 wherein said controlling means further includes:

a lock mechanism

mounted

to said housing;

and

a key for actuating said lock mechanism between a first position in which said lock mechanism permits said start switch to be activated to said on position and a second position in which said lock mechanism prevents said start switch from being activated to said on position.

15. (original) The device of claim 10 wherein said housing further has a cradle mounted to and projecting outwardly from said exterior of said housing for releasably securing said wand thereto, said cradle defining an annular slot open at opposite ends such that said tubular wand can be removably and slidably placed through said slot in a relatively tight-fitting relationship with said cradle and thereby retained by said cradle in a storage

position spaced from and alongside said housing.

16. (original) The device of claim 10 wherein said housing further has a clip mounted to said exterior of said housing for releasably securing said housing to an article of clothing worn by the user.

17. (original)

A hand-held

laser light generator device for use in medical

therapy,

said

device comprising:

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(a) a wand in the form of a substantially elongated hollow tube defining an interior cavity and capable of being retained in a hand ofa user and freely moved relative to the surface of the skin ofa patient to receive the medical therapy;

(b) a semiconductor diode laser mounted in the interior cavity of said wand and using less than one watt of power for generating a beam of laser light in the red color spectrum and having a wavelength of about 635 nm;

( c ) an optical

arrangement

mounted

in said interior

cavity

of said wand and including

(i) a collimating

lens, and

(ii) a line generating prism, said collimating

lens and line generating prism being

disposed in a serial relation to said laser such that said beam of laser light in said red color spectrum generated by said laser is received and transformed into a substantially planar beam of laser line disposed externally of said wand for producing a line of laser light in the red color spectrum at a desired location on the surface of the patient's skin and with said line of laser light being visible to the user as said wand is held and freely moved by the user in a spaced relationship from and out of contact with the patient;

( d) a housing

defining

an interior

chamber and having an exterior;

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(e) a battery disposed in said interior chamber of said housing for supplying electrical power to said laser;

(f) an electrical cord having opposite ends, one of said opposite ends being attached to said wand and making electrical connection with said laser, the other of said opposite ends being attached to said housing and making electrical connection with said battery such that said wand is movable relative to said housing; and

(g) means on said housing for controlling a period of time said beam of laser light is

generated,said controlling means including

(i) an electrical timing circuit disposed in said interior chamber of and being mounted to said housing,

(ii) a push button start switch activatable between on and off positions,

(iii) a rotary selector knob having multiple period of time length setting positions, said push button start switch and rotary selector knob being mounted to said housing and accessible at said exterior of said housing and being in operable communication electrical timing circuit for controlling with said

initiation of generation of and length of the period

of time said beam of laser light is generated,

(iv) a lock mechanism mounted to said housing,

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(v) a key for actuating said lock mechanism between a first position in which said lock mechanism permits said push button start switch to be activated to said on position and a second position in which said lock mechanism prevents said push button start switch from being activated to said on position,

(vi) means electrically activatable for generating a sound audible to the user, and

(vii) means electrically connected to said timing circuit and said sound generating means for electrically charging in response to said beam of laser light being generated and for electrically discharging and thereby electrically activating said sound generating means in response to termination of generation of said beam of laser light.

18. (original) The device of claim 17 wherein said housing further has a cradle mounted to and projecting outwardly from said exterior of said housing for releasably securing said wand thereto, said cradle defining an annular slot open at opposite ends such that said tubular wand can be removably and slidably placed through said slot in a relatively tight-fitting relationship with said cradle and thereby retained by said cradle in a storage

position spaced from and alongside said housing.

19. (original) The device of claim 17 wherein said housing further has a clip mounted to said exterior of said housing for releasably securing said housing to an article of clothing worn by the user .

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Claim

Amendments

Entered

After

Notice

of Withdrawal

from

Issue

SIN 10/008393

20-34 (cancelled)

35.
therapy. said device

A hand-held laser li ht enerator device for use in medical
comQrising:

(a) a wand

in the form

of a substantially

elon~ated

hollow

tube;

b means attached to said wand for.
spectrum;

a beam of laser li ht in the red color

ement attachedto said wand for transformi

eneratedbeam

of laser liQht into a line of laser liQht at a desired location on the surface o patient's skin:

d means for su

..ower

to said laser beam.

and

e means for electricall
electrical Qower suDolving

interconnectin
means.

said laser beam.

means and said

36.

The device of claim 35 wherein the tube defines an interior cavity and is caDable of being retained in a hand of a user and freelv moved relat

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to the surface

of the skin

of a Datient

to receive

the medical

therapy:

and the means

for generating

a beam

of laser

light

is mounted

in said interior

cavity

of said wand.

37.

The

device

of claim

35 wherein

the electrical.

means

is a battery.

38.

The device of claim 35 further co

..a

means on said

wand for controllinQ a Deriod of time said beam of laser light is generated.

39.

The device of claim 38 further corn.

.a

means electricall the user

interconnected to said means for controlling a Qeriod of time for informing that the laser light is no longer being generated.

40. (previously presented) The device of claim 35 wherein said wand further has a c mounted to said exterior of said wand for releasably securinQ: said wand to an article of clothinQ: worn by the user .

41.
therapy. said device

A hand-held laser li ht enerator device for use in medical
coml2rising:

~

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b means mounted

in said interior

cavit

of said wand for.

a beam of laser

ligh!;

ment mounted in said interior cavit for receivin the enerated beam of laser lig:ht and for transforming:the g:enerated beam of laser lig:ht int of laser lig:ht in the red color soectrum at a desired location on the surface of t patient's skin:

sed in said interior
beam generatin!Z means: and

cavit

..ower

to said laser

e means for electricall
electrical DOWer suDDlvinQ

interconnectin
means.

said laser beam

.means

and said

42.
means is a battery.

The device of claim 41 wherein the electrical.

43.

Thedeviceofclaim41furthercom

..a

means

on said

wand

for controllin(!

a Deriod

of time

said beam

of laser

light

is generated

44.

The device of claim 43 further com ..a

means electricall

interconnected to said means for controlling a Deriod of time for informing that the laser li2ht is no longer being generated,

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45. {Qreviously Qresented)The device of claim 41 wherein said wand further has a clip mounted to said exterior of said wand for releasably securing said wand to an article of clothing worn by the user.

46. (previously presented) A hand::~ser
therapy. said device comprising:

light ~,!tor

device for use in medical

(a) a wand

in the form

of a substantiallx

elongated

hollow

tube

defining

an interior

cavitx

and caQable

of being

retained

in a hand

of a user and freel X moved

relative

to

the surface

of the skin

of a patient

to receive

the medical

therapy;

(b) means mounted in said interior cavity of said wand for generating a beam of laser
light in the red color sQectrum:

( c) an optical arrangement mounted in said interior cavity of said wand for receiving the red color sQectrum generated beam of laser light from said generating means and for transforming the generated beam of laser light into a substantially Qlanar beam of laser light disQosed externally of said wand for Qroducing a line of laser light in the red color sQectrum at a desired location on the surface of the Qatient's skin and with said line of laser light being visible to the user as said wand is held and freely moved bv the user in a sDaced relationshiD from and out of contact with the Datient:

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an interior chamber and havin

an exterior'

osed in said interior chamber of said housin
power to said laser beam ~enerating means:

.electrical

means for electricall
electrical DOWer suoolvinQ

interconnectin
means: and

said laser beam.

means and said

means on said housin
generated.

for controllin

a eriod of time said beam of laser li ht is

47. interconnected

The device of claim 46 further to said means for controlling

com

..a

means electricall the

a Deriod of time for informing

that the laser light is no longer being generated.

48.
means is a battery.

The device of claim 46 wherein the electrical.

49.

The device of claim 46 wherein said wand further has a cli mounted to said exterior of said wand for releasablv securing said wand to an ai of clothing worn bv the user.

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50. (new) A hand-held laser liQ:htQ:enerator device for use in medical theraDv. said device
comQnsmg:

(a) a wand in the form ofa

substantially

elongated

hollow

tube and caQable of being

retained in a hand of a user and freely moved relative lli!1kl1t to re~eiye the medical therapy:

to the surface of the skin of a

(b) a laser disposed in said wand for generating a beam of laser light for oroviding the
medical theraQY: and

( c)

an

o~tical

arrangement

dis~osed

in

said

wand

for

receiving

the

beam

of

laser

light

from

the

laser

and

for

transforming

the

beam

of

laser

light

into

a

line

of

laser

light

at

a

desired

location

on

the

surface

of

the

~atient's

skin

and

with

said

line

of

the

laser

light

being

visible

to

the

user

as

said

wand

is

held

and

freely

moved

by

the

user

during

said

theraDV.

51. (new) The device of claim 50 furth~~mDrisin~ane.lectrical period of time said beam of laser liQht is Qenerated.

circuit for ~_ontmlling a

52. (new) The device of claim 51 wherein said electrical circuit further comQrises switches for controlling a~eriod of time said beam of laser light is geD~rated

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53. new The device of claim 51 wherein said electrical circuit further corn rises ush buttons for controlling: a oeriod of time said beam oflaser lig:ht is generate

54. new The device of claim 51 wherein said electrical circuit is dis osed in a housin

eriods of time the laser is on. wherein the buttons are accessible at the exterior of said housing.

55. new The device of claim 51 wherein said electrical circuit is dis osed in a housin

multiple periods of time the laser is on: wherein the push buttons are acce exterior of said housing.

56. new

The device of claim

51 wherein

said electrical

circuit

further

com

rises a first

~

57.

new The device of claim 50 wherein the.
mechanical arrangement.

ement corn rises a

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58. new The device of claim 50 wherein the o .ement
optical devices.

corn rises two or more

59. new The device of claim 50 wherein the o
beam shaDing lens.

.ement

consists ofa sin le

60. new The device of claim 50 wherein the laser is a semiconductor laser diode.

61. new The device of claim 50 wherein the device further corn rises a batte connected to said laser for suDDlvingelectrical DOWer said laser. to

62. ~The

device of claim 35 further comprising a housing operably connected to the

wand wherein said housing further has a clip mounted to said exterior of said housing for releasably securing said housing to an article of clothing worn by the user.

63. !!!!;W-The device of claim 41 further comprising a housing operably connected to the wand wherein said housing further has a clip mounted to said exterior of said housing for releasably securing said housing to an article of clothing worn by the user.

64. ~

The device of claim 46 wherein said housing further has a clip mounted to said

exterior of said housing for releasably securing said housing to an article of clothing worn by the user .

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REMARKS

I.

Status of Claims Claims 1-19 are pending. Claims 1-19 have been allowed. Claims 20-34 were

cancelled in an earlier reply. Claims 35-64 are added herein. No claims from the original patent are amended or cancelled. A charge form for the fee for additional claims is enclosed.

II.

Entry as Matter

of Right because Prosecution

Not Closed

Applicant believes that prosecution has not been closed because neither a final action nor a Notice of Allowance and Issue Fee Due has been issued. Therefore, Applicant believes the claim amendments submitted herein should be entered as a matter of right pursuant to 37 CFR §1.111.

III.

Alternatively,

Entry

as Matter

of Right because Prosecution

Reopened

If the claim amendments are not entered as a matter of right because prosecution has been closed, Applicant argues in the alternative that the prosecution has been reopened as indicated it would be in the Withdrawal from Issue dated July 20, 2006 and the office action dated July 21. As such, the claim amendments submitted herein should be entered as a matter of right pursuant to 37 CFR § 1.111

IV.

Alternatively,

Entry as Matter

of Examiner's

Discretion

If the claim amendments are not entered as a matter of right, Applicant argues in the alternative that the claim amendments can be entered at the Examiner's discretion under 37 CFR § 1.116 because the amendments should be treated as amendments after final. The claim amendments herein put the application in better fonn for allowance or appeal.

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v.

Alternatively,

Entry as Matter

of Request for Continuing

Examination

If the claims are not entered as a matter of right or under the Examiner's discretion, and the prosecution has been deemed closed and not yet reopened, Applicant requests continued examination under 37 CFR § 1.114 and requests that the claim amendments submitted herein be entered. A charge form for the fee for continued examination i!\ enclo!\ed.

VI.

Claims 20-24 Claims 20-34 were cancelled by Applicant in a responseto an office action dated

September9,2004. However, Applicant cancelled claims 20-34 at that time not because he thought the obviousness objections could not be overcome, but in order to expedite the allowance of the reissue application, which had been pending for nearly three years, despite being a special application and in litigation. Applicant believes claims 20-34 were allowable then, and now, without amendment,over the rejections set forth in that office action because,et alia, each of the three cited patents teach away from the laser light being visible to the practitioner due to inherent structural limitations of the disclosed devices. If the claims are rejected again for obviousness,Applicant reservesthe right to traverse such rejection with legal and factual arguments. Therefore, Applicant presentsclaims 20-34 again herein as claims 35-49. Support in the specification for these claims was presentedin the original reissue application datedNovember 6, 2001 and is incorporated herein by reference.

VII.

Claims 50-64
Applicant submits new claims 50-64. Applicant believes that the specification

supports the added claims, and respectfully requests that the '096 patent be corrected to add these claims. The attorney preparing the original application failed to appreciate the full scope of the invention. The nature of the broadening with these claims relates to the electrical circuit for controlling the period of time the laser light is generated and the optical arrangement. These broadening claims can be presented after two years from the grant of the original patent because they are filed in a broadening reissue application that

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was filed within two years from grant. MPEP §1412.03. See In re Doll, 419 F. 2d 925, 928,164 USPQ 218,220 (CCPA 1970). Support is found in the specification for these claim amendments as follows: The patented invention is compact in size. See the Title and column 1, lines 60-61 of US patent 6,013,096 (hereinafter "the '096 patent"). It is freely movable and easy to maneuver by hand. See col. 2, line 63. The device includes a laser. See col. 1, line 62; col. 2, line 2. As known to persons skilled in the art, a semiconductor diode is only one embodiment of the laser. See col. 4, line 26. An optical arrangement is disposed in the wand for receiving the generated beam of laser light from the laser and transforming the laser light into a line of laser light. See col. 2, line 5; col. 3, line 65- col. 4, line 3. The laser light is visible to the user as the wand is moved during treatment. See col. 4, lines 47-50; Claim I of original patent. The device includes an electrical circuit for controlling a period of time said beam

of laser light is generated. See col. 2, lines 42-44. The electric circuit has switches for controlling a period of time the laser light is generated. See col. 5, line 2-3; Table 1; col. 6, line 53. The switches may be push buttons. Id. The device includes means for transforming the laser light into the line of laser light. See col.3, lines 49-52. The means for transforming the laser light into a line may be an optical arrangement. col. 3, line 65- col. 4, line 3. As known to persons of skill in the art, an optical arrangement may comprise optical devices such as mirrors, lenses, filters, gratings and prisms. See, e.g., the patents listed on Exhibit A. The preferred embodiment of the device uses two optical devices, namely a collimating lens and a prism. See col. 4,

lines 33-34. The means for transforming the laser light may be a mechanical arrangement. See col. 4, lines 41-43. Preferably a battery is used to supply electrical power to the laser beam generating means. See col. 2, line 34. The battery can be any commercially-available d.c.

battery. See col. 5, line 63. The specification supports a battery operably attached to the laser to power it. See col. 2, lines 12-14; col. 4, lines 12-17. The specification does not require that the battery reside in an external housing separate from the wand. If a small enough battery is used, or alternatively a large enough wand, the battery can fit inside the~

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from Issue

wand cavity, making a shorter connection to the laser module and thus a smaller size device. See col. 4, lines 20-22. The added claims reflect moving the battery to the wand. Further, the specification does not indicate that the wand must move relative to a housing to achieve the objectives of the invention. The pertinent object here is to move

the wand relative to the patient. See col. 1, lines 62-65; col. 4, line 48. As originally claimed, the means for supplying electrical power may reside in a housing external to the wand so that, in effect the wand moves relative to the housing when moving relative to the patient. However, the object of freely moving the wand relative to the patient can be achieved without reference to the housing, particularly if the power means is moved within the wand.

VIII.

Conclusion
Applicant believes the claim amendments herein should be entered. Applicant

believes that no formalities are outstanding and that the reissue application is form for issuance.

Date:

!?/ / I%tll

~

Respectfully submitted,

s
Attorney for Applicant Registration No. 36,982 Customer Number 33354 Etherton Law Group, LLC 5555 East Van Buren Street Suite 100 Phoenix,AZ 85008 tel: 602-681-3331 fax: 602-681-3339

206-004

23

Case 2:02-cv-02036-MHM

Document 342-3

Filed 08/11/2006

Page 23 of 24

Claim Amendments SIN 101008393

Entered After Notice of Withdrawal

from Issue

Exhibit

A

Selection of U.S. Patents Disclosing Optical Arrangements

u.s.

Patent 5,071,416 5,091,626 5,336,215 5,554,029 5, 786,924 5,822,345 5,825,551 5,200,966 4,711,542 4,728,770 4,776,687 4,642,114 4,309,998

No.

206-004

24

Case 2:02-cv-02036-MHM

Document 342-3

Filed 08/11/2006

Page 24 of 24