Attorney Docket: 09010.0006-00000
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Applicant: Cytyc Corporation
Serial Number: 76/383954
Filing Date: March 19, 2002
Mark: THINPREP
Examining Atty: Charles L. Jenkins, Esq.
Law Office: 105
COMMISSIONER FOR TRADEMARKS
2900 Crystal Drive
Arlington, Virginia 22202-3513
ATTN: BOX RESPONSES NO FEE / ecom105@uspto.gov
REQUEST FOR RECONSIDERATION / RESPONSE TO OFFICE ACTION
Applicant submits the following amendment and remarks in response to the Office Action dated March 11, 2003.
AMENDMENT
Please delete the description of goods in Class 10 and replace it with the following:
--Medical testing kits comprising catheters, slides, stains, collection vials, and cervical sampling devices and solutions for use in the detection and diagnosis of cancer and infectious
diseases--
REMARKS
The Examining Attorney has issued a final refusal of this application on the grounds that the description of goods is unacceptable as indefinite. Specifically, the Examining Attorney requires that
the Applicant specify the language "electronic imaging and image processing apparatus, namely, [specify components] for use in the field of cytology, including molecular diagnostics, and parts and
attachments therefor" in Class 9 and the term "other diseases" in Class 10.
For the following reasons, Applicant respectfully requests that the Examining Attorney reconsider and withdraw the refusal to register the application.
1. ELECTRONIC IMAGING AND IMAGE PROCESSING APPARATUS
Applicant submits that the description "electronic imaging and image processing apparatus for use in the field of cytology, including molecular diagnostics, and parts and attachments therefor" is
sufficiently definite for purposes of registration. Applicant notes that the Examining Attorney himself has approved virtually identical language in Applicant's co-pending application no. 76/383,990.
Applicant encloses a copy of that application from the PTO's electronic database for the Examining Attorney's reference. Applicant therefore requests that the Examining Attorney withdraw the refusal
to register the application based on the Class 9 description of goods.
Assuming that the Examining Attorney agrees with Applicant's request, Applicant notes that certain wording in the current description of goods in Class 9 has been mistakenly repeated when it was
entered into the record. The Class 9 description of goods should read as follows, with the bracketed language (also in ALL CAPS) removed:
--Computer hardware and software use for in the detection and diagnosis of cancer and other diseases; microscopes for use in the detection and diagnosis of cancer and other diseases; electronic
imaging and image processing apparatus for use in the field of cytology, including molecular diagnostics, and parts and [IMAGE PROCESSING APPARATUS FOR USE IN THE FIELD OF CYTOLOGY, INCLUDING
MOLECULAR DIAGNOSTICS, AND PARTS AND] attachments therefor--
2. OTHER DISEASES
Applicant has amended the application to specify the term "other diseases." Applicant respectfully submits that the language "infectious diseases" is sufficiently definite for registration. Applicant
attaches copies of four prior registrations on the Principal Register (Reg. Nos. 2651976, 2676146, 2735130, 2715352) whose descriptions of goods contain similar language. As such, the Examining
Attorney should similarly accept this language as sufficient and withdraw the refusal to register as to the Class 10 description of goods.
Accordingly, Applicant respectfully requests that the application be approved for publication.
Respectfully submitted,
CYTYC CORPORATION
By: /jonathan m. gelchinsky/
Jonathan M. Gelchinsky
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
1300 I St. NW
Washington, DC 20005
Tel: (202) 408-4000
Fax: (202) 408-4400
Attorneys for Applicant
Dated: August 13, 2003
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CERTIFICATE OF TRANSMISSION
I hereby certify that this correspondence is being transmitted by electronic mail to the United States Patent and Trademark Office on the date shown below.
Jonathan M. Gelchinsky
/jonathan m. gelchinsky/
August 13, 2003
