Response to Office Action

CSIRO

COMMONWEALTH SCIENTIFIC AND INDUSTRIAL RESEARCH ORGANISATION

Response to Office Action

PTO Form 1966 (Rev 9/2002)
OMB Control #0651-0050 (Exp. 04/30/2006)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 76212587
MARK SECTION (no change)
ARGUMENT(S)
Dear Sir: This is in response to the Office Action of July 10, 2003. In previous office actions, the Examining Attorney indicated that he has searched the Office records and has found no similar registered or pending mark which would bar registration of this mark. The Examining Attorney has refused registration on the grounds that the identification of goods and recitation of services is unacceptable as indefinite. In accordance with the requirement of the Examining Attorney, the Applicant hereby amends the identification of goods and recitation of services in a manner Applicant believes should be acceptable to the Examining Attorney. The identification of goods reflects the breath of diversity in the research conducted by Applicant. Applicant is a very large research organization employing five thousand scientists with an annual research budget of approximately four hundred million dollars ($400,000,000). Applicant respectfully suggests that the Examining Attorney review the web site of the Applicant for a more complete listing of the full range of work done by this fine organization (www.csiro.au). CONCLUSION By the above response, Applicant has satisfactorily addressed the issues raised by the Examining Attorney in the Office Action. The Examining Attorney did not identify any similar registered or pending mark which would bar registration. Therefore, Applicant respectfully requests that the Examining Attorney find that the application is in condition for approval and publication. Applicant respectfully requests that the Examining Attorney contact Brent E. Routman (612-336-4619) if she has any further questions regarding the application. Respectfully submitted,
GOODS AND/OR SERVICES SECTION (1st class)(current)
INTERNATIONAL CLASS 042
DESCRIPTION
Scientific research, analysis for oil field exploration, bacteriological research, calibration measuring of instruments and apparatus, chemical analysis, chemical research, chemistry consultation, computer programming for others, computer software design for others, consultation in the field of scientific research, industrial design, engineering, geological research, consultation in the field of horticulture, materials testing, mechanical research, consultation in the field of physics, product and process research and development
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (1st class)(proposed)
INTERNATIONAL CLASS 042
DESCRIPTION
Scientific research, analysis for oil field exploration, bacteriological research, calibration measuring of instruments and apparatus, chemical analysis, chemical research, chemistry consultation, computer programming for others, computer software design for others, consultation in the field of scientific research, industrial design, engineering, geological research, consultation in the field of horticulture, materials testing, mechanical research, consultation in the field of physics, product and process research and development
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (2nd class)(current)
INTERNATIONAL CLASS 041
DESCRIPTION
Education services, namely arranging and conducting conferences and seminars in the field of scientific research, organizing exhibitions for educational and scientific purposes, library services, publication of text books
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (2nd class)(proposed)
INTERNATIONAL CLASS 041
DESCRIPTION
Education services, namely arranging and conducting conferences and seminars in the field of scientific and industrial research, organizing exhibitions for educational, scientific and industrial purposes in all fields of natural and physical sciences, computer, mathematical, and information sciences; library services, publication of text books
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (3rd class)(current)
INTERNATIONAL CLASS 009
DESCRIPTION
Scientific apparatus and instruments, namely, instruments for measurement of fiber thickness for fleeces and other fibers; instruments for measuring consistency of yam; instruments for detecting impurities in wool and other fibres; instruments for measuring the properties of fibres for textiles including diameter, diameter distribution, stability, tensile strength, compressive strength, bend ability etc; instruments for measuring the properties of textiles including strength, flexibility, stability etc; instruments and machines for use in fiber processing; instruments for measuring the density of solids and slurries for mining and quarrying, mineral processing, fossil fuels and waste treatment; instruments for measuring moisture content of materials for mining and quarrying, mineral processing, fossil fuels and waste treatment; instruments for non-destructive measurement of wood quality; instruments for measuring and/or monitoring of biodegradable chemical oxygen demand, reactors for continuous and batch chemical reactions using microwave energy; instruments for measuring the composition of non-biological materials such as minerals or coal for mining and quarrying, mineral processing, fossil fuels and waste treatment; instruments for measuring of particle size for mining and quarrying, mineral processing, fossil fuels and waste treatment; instruments for producing images of objects using gamma-rays, flow meters for measurement of gas flow, instruments for measurement of geological structures by airborne techniques; flow meters for measuring and/or monitoring the use of irrigation water; laboratory and medical diagnostic instruments for use in detection of cervical cancer; instruments for measuring and monitoring forest canopies for environmental research and forest industry management; instruments for measuring cracks in roads; computer software for use in the field of science
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (3rd class)(proposed)
INTERNATIONAL CLASS 009
DESCRIPTION
Scientific apparatus and instruments, namely, instruments for measurement of fiber thickness for fleeces and other fibers; instruments for measuring consistency of yam; instruments for detecting impurities in wool and other fibres; instruments for measuring the properties of fibres for textiles including diameter, diameter distribution, stability, tensile strength, compressive strength, bend ability etc; instruments for measuring the properties of textiles including strength, flexibility, stability etc; instruments for use in fiber processing; instruments for measuring the density of solids and slurries for mining and quarrying, mineral processing, fossil fuels and waste treatment; instruments for measuring moisture content of materials for mining and quarrying, mineral processing, fossil fuels and waste treatment; instruments for non-destructive measurement of wood quality; instruments for measuring and/or monitoring of biodegradable chemical oxygen demand, reactors for continuous and batch chemical reactions using microwave energy; instruments for measuring the composition of non-biological materials such as minerals or coal for mining and quarrying, mineral processing, fossil fuels and waste treatment; instruments for measuring of particle size for mining and quarrying, mineral processing, fossil fuels and waste treatment; instruments for producing images of objects using gamma-rays, flow meters for measurement of gas flow, instruments for measurement of geological structures by airborne techniques; flow meters for measuring and/or monitoring the use of irrigation water; laboratory and medical diagnostic instruments for use in detection of cervical cancer; instruments for measuring and monitoring forest canopies for environmental research and forest industry management; instruments for measuring cracks in roads; Computer software for use in scientific research and development, specifically for designing, creating and testing scientific measuring and recording instruments for a variety of environmental, industrial and commercial uses, software for data processing in scientific measuring and recording instruments for a variety of environmental, industrial and commercial use; encryption software; anti-virus software; software for coding and decoding of multi-media files; computer software for creating searchable databases of information and data; software for image processing in the fields of geology, forestry, land management, agriculture, and human identification; 3D visualisation software; software for database management; operating systems software; software for DNA research namely for identifying DNA sequences; computer networking software; computer software development tools; data transmission software; bioinfomatics software
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (4th class)(no change)
SIGNATURE SECTION
SIGNATURE /ber/
SIGNATORY NAME Brent E. Routman
SIGNATORY POSITION Attorney for Applicant
SIGNATORY DATE 01/07/2004
FILING INFORMATION SECTION
SUBMIT DATE Wed Jan 07 16:41:49 EST 2004
TEAS STAMP USPTO/OA-XXXXXXXXXXX-2004
0107164149309102-76212587
-200e24880a032263b6daaf21
5e26f8c6ac1-N-N-200401071
63918094552



PTO Form 1966 (Rev 9/2002)
OMB Control #0651-0050 (Exp. 04/30/2006)

Response to Office Action


To the Commissioner for Trademarks:

Application serial no. 76212587 is amended as follows:    
        
Argument(s)
In response to the substantive refusal(s), please note the following:
Dear Sir: This is in response to the Office Action of July 10, 2003. In previous office actions, the Examining Attorney indicated that he has searched the Office records and has found no similar registered or pending mark which would bar registration of this mark. The Examining Attorney has refused registration on the grounds that the identification of goods and recitation of services is unacceptable as indefinite. In accordance with the requirement of the Examining Attorney, the Applicant hereby amends the identification of goods and recitation of services in a manner Applicant believes should be acceptable to the Examining Attorney. The identification of goods reflects the breath of diversity in the research conducted by Applicant. Applicant is a very large research organization employing five thousand scientists with an annual research budget of approximately four hundred million dollars ($400,000,000). Applicant respectfully suggests that the Examining Attorney review the web site of the Applicant for a more complete listing of the full range of work done by this fine organization (www.csiro.au). CONCLUSION By the above response, Applicant has satisfactorily addressed the issues raised by the Examining Attorney in the Office Action. The Examining Attorney did not identify any similar registered or pending mark which would bar registration. Therefore, Applicant respectfully requests that the Examining Attorney find that the application is in condition for approval and publication. Applicant respectfully requests that the Examining Attorney contact Brent E. Routman (612-336-4619) if she has any further questions regarding the application. Respectfully submitted,
        
Classification and Listing of Goods/Services
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 042 for Scientific research, analysis for oil field exploration, bacteriological research, calibration measuring of instruments and apparatus, chemical analysis, chemical research, chemistry consultation, computer programming for others, computer software design for others, consultation in the field of scientific research, industrial design, engineering, geological research, consultation in the field of horticulture, materials testing, mechanical research, consultation in the field of physics, product and process research and development
Original Filing Basis: 1(b).
Proposed: Class 042 for Scientific research, analysis for oil field exploration, bacteriological research, calibration measuring of instruments and apparatus, chemical analysis, chemical research, chemistry consultation, computer programming for others, computer software design for others, consultation in the field of scientific research, industrial design, engineering, geological research, consultation in the field of horticulture, materials testing, mechanical research, consultation in the field of physics, product and process research and development
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 041 for Education services, namely arranging and conducting conferences and seminars in the field of scientific research, organizing exhibitions for educational and scientific purposes, library services, publication of text books
Original Filing Basis: 1(b).
Proposed: Class 041 for Education services, namely arranging and conducting conferences and seminars in the field of scientific and industrial research, organizing exhibitions for educational, scientific and industrial purposes in all fields of natural and physical sciences, computer, mathematical, and information sciences; library services, publication of text books
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 009 for Scientific apparatus and instruments, namely, instruments for measurement of fiber thickness for fleeces and other fibers; instruments for measuring consistency of yam; instruments for detecting impurities in wool and other fibres; instruments for measuring the properties of fibres for textiles including diameter, diameter distribution, stability, tensile strength, compressive strength, bend ability etc; instruments for measuring the properties of textiles including strength, flexibility, stability etc; instruments and machines for use in fiber processing; instruments for measuring the density of solids and slurries for mining and quarrying, mineral processing, fossil fuels and waste treatment; instruments for measuring moisture content of materials for mining and quarrying, mineral processing, fossil fuels and waste treatment; instruments for non-destructive measurement of wood quality; instruments for measuring and/or monitoring of biodegradable chemical oxygen demand, reactors for continuous and batch chemical reactions using microwave energy; instruments for measuring the composition of non-biological materials such as minerals or coal for mining and quarrying, mineral processing, fossil fuels and waste treatment; instruments for measuring of particle size for mining and quarrying, mineral processing, fossil fuels and waste treatment; instruments for producing images of objects using gamma-rays, flow meters for measurement of gas flow, instruments for measurement of geological structures by airborne techniques; flow meters for measuring and/or monitoring the use of irrigation water; laboratory and medical diagnostic instruments for use in detection of cervical cancer; instruments for measuring and monitoring forest canopies for environmental research and forest industry management; instruments for measuring cracks in roads; computer software for use in the field of science
Original Filing Basis: 1(b).
Proposed: Class 009 for Scientific apparatus and instruments, namely, instruments for measurement of fiber thickness for fleeces and other fibers; instruments for measuring consistency of yam; instruments for detecting impurities in wool and other fibres; instruments for measuring the properties of fibres for textiles including diameter, diameter distribution, stability, tensile strength, compressive strength, bend ability etc; instruments for measuring the properties of textiles including strength, flexibility, stability etc; instruments for use in fiber processing; instruments for measuring the density of solids and slurries for mining and quarrying, mineral processing, fossil fuels and waste treatment; instruments for measuring moisture content of materials for mining and quarrying, mineral processing, fossil fuels and waste treatment; instruments for non-destructive measurement of wood quality; instruments for measuring and/or monitoring of biodegradable chemical oxygen demand, reactors for continuous and batch chemical reactions using microwave energy; instruments for measuring the composition of non-biological materials such as minerals or coal for mining and quarrying, mineral processing, fossil fuels and waste treatment; instruments for measuring of particle size for mining and quarrying, mineral processing, fossil fuels and waste treatment; instruments for producing images of objects using gamma-rays, flow meters for measurement of gas flow, instruments for measurement of geological structures by airborne techniques; flow meters for measuring and/or monitoring the use of irrigation water; laboratory and medical diagnostic instruments for use in detection of cervical cancer; instruments for measuring and monitoring forest canopies for environmental research and forest industry management; instruments for measuring cracks in roads; Computer software for use in scientific research and development, specifically for designing, creating and testing scientific measuring and recording instruments for a variety of environmental, industrial and commercial uses, software for data processing in scientific measuring and recording instruments for a variety of environmental, industrial and commercial use; encryption software; anti-virus software; software for coding and decoding of multi-media files; computer software for creating searchable databases of information and data; software for image processing in the fields of geology, forestry, land management, agriculture, and human identification; 3D visualisation software; software for database management; operating systems software; software for DNA research namely for identifying DNA sequences; computer networking software; computer software development tools; data transmission software; bioinfomatics software
        
Response Signature
        
Signature: /ber/     Date: 01/07/2004
Signatory's Name: Brent E. Routman
Signatory's Position: Attorney for Applicant
        
        
        
Serial Number: 76212587
Internet Transmission Date: Wed Jan 07 16:41:49 EST 2004
TEAS Stamp: USPTO/OA-XXXXXXXXXXX-2004010716414930910
2-76212587-200e24880a032263b6daaf215e26f
8c6ac1-N-N-20040107163918094552




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