UNITED STATES PATENT AND TRADEMARK OFFICE
OFFICE ACTION
TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE:
The Office of the Commissioner for Trademarks has reviewed the application and determined the following. The examining attorney regrets this
inconvenience to the applicant.
Identification of Goods and Services
The amended identification of goods and services is unacceptable because the wording “single nucleotide polymorphism kits, also called SNP kits, comprising at least
oneoligonucleotide or a polynucleotide” and “kits comprised of an antibody, a protein, a peptide, a nucleic acid, a polynucleotide or a probe for purification and/or separation of nucleic acids” is
indefinite. These goods are classified in Class 1 if for scientific or research and Class 5 if for medical or veterinary use.
The amended identification of goods and services is unacceptable also because the wording “for medical or diagnostic use” is unclear; if for “medical
diagnostic use,” the goods are classified in Class 5; however if for “scientific or research diagnostic use,” these goods are classified in Class 1.
Finally, the wording “providing a data base on the subject of genetics, biology, pharmacy, biotechnology, medicine, veterinary medicine, biochemistry and chemistry by collecting,
storing and offering of software, data, images, audio and video” is indefinite. These services are classified in Class 42 if the purpose is clearly for research; if
for medical purposes, these services are classified in Class 44.
The applicant may adopt the following identification of goods, if accurate (suggested language is given in
bold):
- Chemicals used in industry and science, agriculture, horticulture and forestry, namely, proteins, peptides, nucleic acids and polynucleotides;
proteins and recombinant proteins for scientific research use, antibodies for scientific research use; DNA probes for scientific research use; oligonucleotides for scientific research use; antibodies
for scientific research use; DNA probes for scientific research use; oligonucleotides for scientific research use; antisense constructs for scientific research use; arrays of nucleic acids or
proteins on a carrier material for scientific research use; single nucleotide polymorphism kits, also called SNP kits, comprising at least oneoligonucleotide or a polynucleotide; expression profiling
kits comprised of an antibody, a protein, a peptide, a nucleic acid, a polynucleotide or a probe for scientific research use, in particular by use of PCR, immunohistochemistry or arrays; kits
comprised of an antibody, a protein, a peptide, a nucleic acid, a polynucleotide or a probe for indication of specific therapy for scientific research use, in particular FISH,arrays, PCR and
iminunohistochemistry; kits comprised of an antibody, a protein, a peptide, a nucleic acid, a polynucleotide or a probe for detection of predisposition for particular diseases for research purposes,
in particular by using PCR, MALDITOF and oligo hybridization; cartilage cells for scientific research use, in particular implantable cartilage cells; fat cells for scientific research use, in
particular implantable fat cells;adult and fetal stem cells for scientific research use; kits comprised of an antibody, a protein, a peptide, a nucleic acid, a polynucleotide or a probe for
purification and/or separation of nucleic acids; kits for purification or separation of nucleic acids for scientific research useChemicals used in industry and science, agriculture, horticulture and
forestry, namely, proteins, peptides, nucleic acids and polynucleotides; proteins and recombinant proteins for scientific research use, antibodies for scientific research use; DNA probes for
scientific research use; oligonucleotides for scientific research use; antibodies for scientific research use; DNA probes for scientific research use; oligonucleotides for scientific research use;
antisense constructs for scientific research use; arrays of nucleic acids or proteins on a carrier material for scientific research use; single nucleotide polymorphism kits, also called SNP kits,
comprising at least oneoligonucleotide or a polynucleotide for scientific research use; expression profiling kits comprised of an antibody, a protein, a peptide, a nucleic acid,
a polynucleotide or a probe for scientific research use, in particular by use of PCR, immunohistochemistry or arrays; kits comprised of an antibody, a protein, a peptide, a nucleic acid, a
polynucleotide or a probe for indication of specific therapy for scientific research use, in particular FISH,arrays, PCR and iminunohistochemistry; kits comprised of an antibody, a protein, a
peptide, a nucleic acid, a polynucleotide or a probe for detection of predisposition for particular diseases for research purposes, in particular by using PCR, MALDITOF and oligo hybridization;
cartilage cells for scientific research use, in particular implantable cartilage cells; fat cells for scientific research use, in particular implantable fat cells; adult and fetal stem cells for
scientific research use; kits comprised of an antibody, a protein, a peptide, a nucleic acid, a polynucleotide or a probe for purification and/or separation of nucleic acids for
scientific research use; kits for purification or separation of nucleic acids for scientific research use (Class 1)
- Pharmaceutical and veterinary products, namely, slimming, appetite suppressants, pharmaceuticals for acidosis therapeutics, analeptic
antihypoxaemics; analgesics and antirheumatic drugs, pharmaceuticals functioning antihelminitics, antiallergics, antianemia drugs, antiarrhythmics, antibiotics and antiinfectives,
antidementics,nootropics, antidiabetics, antidotes for the treatment of poisoning, antiemetics and antivertiginosics, antiepileptics, antihemorrhagics, antifibrinolyrics, hemostatics,
antihypertonics, antihypoglycemics, antihypotonics, anticoagulants, antimycotics, pharmaceuticals functioning as antiparasitics, antiphlogistics, antitussives, expectorants for use in
atherosclerosis, belneotherapeutics and pharmaceuticals for thermal therapy, pharmaceuticals functioning as beta receptor blocking agents, pharmaceuticals for calcium channel blocking and inhibiting
of the renin angiotensin-system, pharmaceuticals functioning as broncholytics, antiasthmetics, cholagoguegics and for use in biliary tract therapeutics; pharmaceuticals functioning as cholinergics,
corticoids, dermatics; all purpose disinfectants and antiseptics; pharmaceuticals functioning as dietetic agents and in alimentary therapeutics; pharmaceutical preparations functioning as diuretics,
as agents for favoring blood flow, as withdrawal agents, as fibrinolytics, to treat gout, the flu and catarrhal fever; pharmaceuticals for the treatment of gynecological illnesses, namely, menstrual
cramps, hemorrhoids,hepatitis; pharmaceuticals functioning as hypnotics and sedatives; pharmaceuticals to treat cardiac ailments; pharmaceuticals for use in caries and parodontosis; dental
preparations, namely, dental abrasives; laxatives, pharmaceuticals functioning as antilipaemics, local anesthetics, neural therapeutics, gastro-intestinal preparations, pharmaceuticals to treat
migraines; pharmaceutical preparations for use in mouth and pharyngeal therapeutics; pharmaceuticals for use as muscle relaxants; pharmaceuticals for the treatment of addiction to narcotics;
pharmaceuticals for use in neuropathology; ophthalmic pharmaceuticals for treating blindness, conjunctivitis, cataract, glaucoma, retinal detachment, styc chalazion, dacryoadenitis, corneal clouding,
keratitis, gasserian ganglionitis, vitreous opacity, amaurosis, retinopathy, central retinal artery occlusion, retinoblastoma, melanoma, optic neuritis, optic nerve atrophy; pharmaceuticals for use
in osteoporosis and calcium metabolism modification; pharmaceuticals for the treatment of Parkinson's Disease and disturbances of the extrapyramidal system; pharmaceuticals for psychotropic,
rhinologic and sinostic purposes; pharmaceuticals functioning as roborants and tonics; pharmaceuticals for use in thyroidal therapeutics; pharmaceuticals functioning as spasmolytics and inhibitors of
thrombocyte aggregation; pharmaceuticals for the treatment of tuberculosis; pharmaceuticals functioning as altemants, urologics and venous agents; vitamins; pharmaceuticals for use as cytostatics and
antineoplastic agents; veterinary preparations for the use in the treatment of distemper, macular degeneration, cancer, infertility, arthritis, dermatitis, infections, sepsis, cardiovascular
diseases, artherioscierosis, diabetes and obesity in pets, livestock, wild animals, breeding animals and zoo animals; dietetic substances adapted for medical use, namely, food for elderly people who
require medically restricted diets; medical plasters; materials for dressings, namely, wound, burn and surgical dressings; all-purpose disinfectants; preparations for destroying vermin; fungicides
for domestic or agricultural use; herbicides for domestic or agricultural use; wound medicines; wound ointment; wound spray; wound tincture; wound fleece; fleece against restenosis, in particular
after vascular surgery; medicaments against artheriosclerosis; medicaments against restenosis; medicaments for tissue regeneration and tissue replacement; medicaments for cartilage regeneration;
pharmaceutical and veterinary preparations for diabetes treatment; pharmaceutical and veterinary preparations for diabetes prophylaxis; implantable cartilage cells; implantable fat cells; adult and
fetal stem cells for medical diagnostic use; medicaments against obesity; pharmaceutical and veterinary preparations for pets, livestock, wild animals, breeding animals and zoo
animals against tumors; gene therapeutic preparations against tumors; pharmaceutical and veterinary preparations for use in pets, livestock, wild animals, breeding animals and zoo animals against
endometriosis; pharmaceutical and veterinary preparations pets, livestock, wild animals, breeding animals and zoo animals for tissue modeling for medical diagnostic use;
recombinant proteins for medical diagnostic use; antibodies for medical diagnostic use; DNA probes for medical diagnostic
use; target oligonucleotides for medical diagnostic use; antisense constructs; small molecules for medical diagnostic use; anticalines for medical diagnostic use; aptamers for medical diagnostic use; spiegelmers for medical diagnostic use; ribozymes for
medical diagnostic use; RNAi for medical diagnostic use; specific oligonucleotides for medical diagnostic use; DNA probes for medical
diagnostic use; single nucleotide polymorphism kits, also called SNP kits, comprised of proteins,peptides, nucleic acids or oligonucleotides for medical diagnostic use; expression profiling kits
comprised of proteins, peptides, nucleic acids or oligonucleotides for medical diagnostic use, in particular by use of PCR immunohistochemistry or arrays; kits comprised of proteins, peptides,
nucleic acids or oligonucleotides for medical diagnostic use for indication of specific therapy approaches, in particular FISH arrays, PCR and immunohistrochemistry; kits comprised of proteins,
peptides, nucleic acids, or oligonucleotides for medical diagnostic use for detection of predisposition of particular diseases, in particular by using PCR, MALDITOF, and oligo hybridization; kits
comprised of proteins, peptides, nucleic acids or oligonucleotides for medical diagnostic use for purification and/or separation of nucleic acids (Class 5)
- Scientific control apparatus and instruments, namely, microscopes, ELISA readers, scanners, fluorescence readers, phosphorirnagers; apparatus for
recording, transmission or reproduction of sound or images, namely, cameras, ELISA readers, scanners, fluorescence readers, phosphorimagers; prerecorded magnetic data carriers featuring biological
data of a sample or group of samples; data processing equipment, namely, ELISA readers, scanners, fluorescence readers, phosphorimagers; computers; stored computer programs for use in database
management, for use as a spreadsheet, for word processing or analysis of biological data of a sample or group of samples; stored computer software for use in database management, for use as a
spreadsheet, for word processing or analysis of biological data of a sample or group of samples; programs, in particular computer programs for analysis of patterns of surfaces, in particular of
patterns of arrays of nucleic acids or proteins on carrier materials; automated expression profiles, namely, software for analysis of expression profiles (Class 9)
- Surgical, medical, dental and veterinary instruments and apparatus, namely, medical tubing, syringes, surgical implants and dental implants for the
administration of fluid, gels, solids and solidifying systems; artificial limbs; orthopedic articles, namely, bone implants, cartilage implants and neck braces (Class 10)
- Treatment of materials, namely, custom construction of therapeutically useful substances into liposomes; custom construction of therapeutically
useful substances in carrier substances; custom manufacture of recombinant proteins for third parties; custom manufacture of antibodies for third parties; custom manufacture of gene and tissue arrays
for third parties; custom manufacture of specific oligonucleotides for third parties; custom cultivation of cells, in particular of animal and/or human cells for third parties; custom manufacture of
functional nucleic acids, in particular ribozymes, aptamers, spiegelmers, RNAi and antisense oligonucleotides for third parties (Class 40)
- Scientific and technological services, namely, designing laboratory protocols, manufacturing protocols and clinical trial protocols; industrial
analysis and research services, namely in the field of biology, biotechnology, biochemistry, genetics, chemistry, medicine, veterinary medicine and pharmacy; design and development of computer
hardware and software; scientific research in the nature of construction of viral vectors, namely, for medication; expression profile analysis, namely, by PGR, immunohistochemistry or array
hybridization; mapping of genes, in particular, chromosomes and gene libraries; hybridizations of gene libraries; single nucleotidepolymorphism analysis, also called SNP analysis, performing FISH,
arrays, PCR analysis, immunohistochemistry analysis; scientific research in the nature of detection of predisposition for developing particular diseases, in particular, by using PCR or oligo
hybridization; designing computer programs for others for scientific and technological services and research; designing computer programs, namely, computer programs for industrial analysis and
research activities; providing a data base for scientific use on the subject of genetics, biology, pharmacy, biotechnology, medicine, veterinary medicine, biochemistry and
chemistry by collecting, storing and offering of software, data, images, audio and video; providing non-downloadable software on the subject of chemical, pharmaceutical, biotechnological, biological,
medical and veterinary research services, namely, legal or consulting services relating to exploitation concepts for biotechnological inventions and biotechnological know-how; scientific research the
nature of design and realization of animal experiments and design and realization of therapy studies, and analysis for specific therapy approaches (Class 42)
- Medical and veterinary services; health care for humans and animals; beauty salons; grooming salons for animals; plastic tissue regeneration;
cosmetic tissue modeling and tissue regeneration (Class 44)
See TMEP §1402.01.
Although identifications of goods may be amended to clarify or limit the goods, adding to or broadening the
scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
For assistance with identifying and classifying goods and/or services in trademark applications,
please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Multiple Class Requirements
If applicant prosecutes this application as a combined, or multiple-class application, then applicant
must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):
(1) Applicant must list the goods and/or services by international class; and
(2) Applicant must submit a filing fee for each international class of goods and/or services not
covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).
See 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
/Leigh Caroline Case/
Trademark Attorney, Law Office 105
(571) 272-9140
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be
filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office
action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed
responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and
e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations
Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and
maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the
assigned examining attorney.