Free Memorandum - District Court of Arizona - Arizona

5555

EAST VAN BUREN STREET. SUITE 100 FAX: 602-681-3339

PHOENIX. ARIZONA 85008-3422 TEL: 602-681-3331

August 10, 2006

By facsimile: 571-273-0464 Original to follow by mail
Mindy B. Fleisher Chief of Staff Office of the Commissioner for Patents P.O. Box 1450 Alexandria, V A 22313-1450 In re Application of Inventor: Title of Invention: Application Serial No.: Reissue Application Filed: Original Patent Number: Atty Docket No.: Dear Ms. Fleisher:

TUCEK, Kevin B. Hand-Held Laser Light Generator Device 10/008393
11/06/2001 6,013,096 206-004

Thank you for your letter of July 26, 2006 regarding the above-identified reissue application. I have a couple points of clarification. First, the stay in the litigation involving the reissue patent was lifted on September 8, 2004, and the case is proceeding. As to our inquiry as to the prosecution status, it appearsthat your intervention was effective, becausewe received a Notice of Withdrawal from Issue and an Examiner's Interview Summary dated July 20 and 21, 2006, respectively. Although we are not pleasedwith the substantive nature of the Office's response,we thank you for any efforts to determine the status and the beneficial effect your inquiry had to move things along. However, we disagree a number of Examiner Sholl's contentions and would like to addressthem briefly here to help clarify the record. First, we disagree with Examiner Sholl's comment to you that the reissue application contained formal requirements not addressedbefore the Notice of Allowance had issued. After review of the file wrapper, I do not believe there are any formal requirements that remain outstanding. And, a Notice of Allowance has never been issued, although a Notice of Allowability was mailed January 19, 2006.

Case 2:02-cv-02036-MHM

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Response to Letter Dated July Page 2

26,

2006

Also, we note several factual inaccuracies in the Examiner Interview Summary, which we have formally responded to in a reply to the Examiner Interview Summary.A copy is enclosed. In short, Examiner Sholl never talked to me. She left a messagewith a non-patent associateof our firm with information that differs from her account here. Having tried here to set forth my understanding of the matters, I again thank you for your help with the status of this application. If I need more help, I will contact you directly.

Case 2:02-cv-02036-MHM

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IN TI-I~

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

10/008,393 Kevin B. Tucek Hand-Held Laser Ligh1 Generator Device 11/06/2001 6,013,096 206-004

RESPONSE'

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EXAMINER'S

INTER'

SUMMARY

Commissioner of Patents (J P.O. Box 1450 Alexandria, V A 22313-1450 \ Dear Sir:
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interview summary.The office action set forth a non-extendable period of the longer of one month or thirty days from the interview date or mailing date of the interview summary form, whichever is later, to file a statement of the substanceof the interview. This responsewas mailed within thirty days of the mailing date of the interview summary form, and is therefore timely filed. Pursuant to 37 CFR §1.2, the actions of the Patent and Trademark Office are to be basedexclusively on the written record. Therefore, Applicant respectfully makes the following written comments and clarifications regarding the interview summary signed by Examiner Sholl. Examiner Sholl states that she had a telephonic interview with Sandra Etherton on AprilS, 2006. However, Sandra Etherton, the undersigned, was not in her office on AprilS, 2006 and therefore could not have taken the call. Instead, Sandra Etherton was in San Francisco at a patent auction Apri15-8, 2006. Applicant's file notes show that Examiner Shollleft a messagewith Sarah Sharma, an associatewith Applicants' attorney's law firm. A~~~~~nl~ .~~.~~~-'~~~ ~~~~~~~ ~~~~~~£-~~-~~-~~-~~-',---£---~---~--

Case 2:02-cv-02036-MHM

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Response to Examiner's Page 2

Interview

Summary

Further, Attorney Sharrna's notes from the telephone call indicate that Examiner Shol stated she would "send a letter rejecting the application under §251" and that, if there was nothing to "fix," the application would go abandoned.Upon Attorney Etherton's return to the law firm's office on Apri110, 2006, Attorney Etherton called Examiner Sholl to clarify this unusual situation. Examiner Sholl was unavailable and Attorney Etherton left her a message. To be clear, the only contact Attorney Etherton had with Examiner Sholl was to leave a messagefor her, five days after the alleged interview took place. As explained in Applicants' correspondenceto Secretary Dudas on July 17, 2006, Examiner Sholl did not return Attorne) Etherton's call. Applicant also respectfully requeststo clarify that Examiner Sholl initiated the interview without any request for such interview by Applicant. While it is true that Applicant's attorney inquired as to the status of this application, that request was made via telephone on March 28, 2006 to Examiner Farah, the last known examiner to have the file. The status inquiry was made becauseApplicant had received a Notice of Allowability dated January 19, 2006 but had not yet received the Notice of Allowance and Issue Fee Due that normally promptly follows a Notice of Allowability .See MPEP § 1302.03 requiring such promptness. Given the procedural history of this caseand the fact it is in litigation, Applican was loathe to wait any longer than necessaryfor the Notice of Allowance and Issue Fee Due. At no time did Annlicant or Annlic3nt'~ 3ttomev remle~t 3n interview rep3rdinp the ~t3hl~
Date:

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Respectfully submitted,

~a

L. Etherton -

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

Case 2:02-cv-02036-MHM

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