Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77106674 has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for software for use in image guided surgery; computer software for integrating views of a patient with the tracked position of tools or instruments for use in computer assisted surgery; image guided surgery systems namely hardware and software and application tools and instruments and component parts therefor for tracking instrument location; computer assisted surgery systems consisting primarily of computer hardware and software for image guided surgery, spatial position sensors, tool interface units for tracking tools, universal handles, monitors and cart; computer software for integrating representations of application tools and instruments with images of patients obtained by imaging modalities including Computed Tomography (CT), Magnetic Resonant Imaging (MR), Single Photon Emission Computed Tomography (SPECT) and Positron Emission Tomography (PET); computer software for medical use; computer hardware for medical use; computer hardware; computer software; computer assisted image guided surgery systems; computer assisted image guided surgery system for guiding instruments using pre-operative and intra-operative images; computer assisted image guided surgery system for providing 3-dimensional visualization and navigation of instruments; surgery planning software; computer assisted surgery system; image guided surgery system; surgery planning software for use in image guided surgery; tool identification software used for use in image guided surgery; navigation software for image guided surgery; mobile system cart for use in image guided surgery; mobile system cart having electro-magnetic field generator, computer workstation and instrument connection unit; image guided surgery cart having electromagnetic field generator, computer work station and connections for medical instruments and devices; image guided surgery workstation; medical devices; tracking devices for medical devices; trackers for use in image guided surgery; telemetry devices for medical applications; endoscopes; flexible endoscopes; bronchoscopes; tracked endoscopes; tracked flexible endoscopes; tracked bronchoscopes; catheters; tracked catheters; needles; tracked needles; stylettes; tracked stylettes; bone screws; tracked bone screws; laparoscope ultrasound trackers; tracked laparoscope ultrasound; tracked ultrasound transducers; positioning aids for use in ultrasound imagery; transcutaneous ultrasound trackers; endorectal ultrasound trackers; ultrasound tracker calibrators; fluoroscope tracker and local calibrator therefor; tracked fluoroscope; fluoroscope tracker and integrated calibrator therefor; universal adaptor for medical devices; medical instrument adaptors; stylette pairs; cannula pairs; tracked cannula pairs; needle device introducers; tracked needle device introducers; needle introducers; tracked needle introducers; biopsy needle guns; tracked biopsy needle guns; tracked K-wires; k-wires; bone wires; tracked bone screws; tracked multisensor guidewires; guidewires; tracked single sensor guidewires; tool offset calibrators; disposable button probes; tracked disposable button probes; reusable probes; tracked reusable probes; disposable dynamic reference patches; magnetic tool offset calibrators; skin patches for referencing; distortion measurement devices; locatable guides; tracked locatable guides; steerable catheters; tracked steerable catheters; reusable dynamic reference frames; positioning aids; vertebroplasty needles; tracked vertebroplasty needles; steerable locatable guides; tracked steerable locatable guides; tracked clamps; clamps; tracked cutting devices; cutters; scalpels; tracked scalpels; footswitches; input devices; stents; tracked stents; cannulas; tracked cannulas; shunts and introducers; tracked shunts and introducers; needles; locatable guides; aspiration needles; tracked aspiration needles; tracked grasper; grasper; tracked brush; brush; precision spatial measurement devices; metrological instruments and equipment; ultrasound trackercalibrators; fluoroscope tracker and local calibrator therefor; tracked multisensor guidewires; tracked clamps; clamps; tracked cutting devices; cutters scalpels; stents; shunts and introducers; fluoroscope tracker and integrated calibrator therefor; medical instrument adaptors; tracked medical instrument adaptors; optical tool offset calibrators; positioning aids; footswitches; input devices; and sale of precision spatial measurement devices; sale of metrological instruments; sale of metrological equipment; sale of metrological devices; sale of image guided surgery systems; sale of computer assisted surgery systems; sale of computer software and hardware for image guided surgery systems; sale of computer hardware and software for computer assisted surgery systems; sale of medical instruments and apparatuses; sale of medical devices; service of computer assisted surgery systems and tools; service of image guided surgery systems and tools; maintenance of computer assisted surgery systems and tools; maintenance of image guided surgery systems and tools
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Canada application number 1,319,798 filed 10/11/2006]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 009 for Software for use in image guided surgery; computer software for integrating views of a patient with the tracked position of tools or instruments for use in computer assisted surgery; image guided surgery systems namely hardware and software and application tools and instruments and component parts therefor for tracking instrument location; computer assisted surgery systems consisting primarily of computer hardware and software for image guided surgery, spatial position sensors, tool interface units for tracking tools, universal handles, monitors and cart; computer software for integrating representations of application tools and instruments with images of patients obtained by imaging modalities including Computed Tomography (CT), Magnetic Resonant Imaging (MR), Single Photon Emission Computed Tomography (SPECT) and Positron Emission Tomography (PET); computer software for medical use; computer hardware for medical use; computer hardware; computer software; computer assisted image guided surgery systems, all being computer systems for medical use; computer assisted image guided surgery system for guiding instruments using pre-operative and intra-operative images; computer assisted image guided surgery system for providing 3-dimensional visualization and navigation of instruments, all being computer systems for medical use; surgery planning software; computer assisted surgery system, all being computer systems for medical use; image guided surgery system, all being computer systems for medical use; surgery planning software for use in image guided surgery; tool identification software used for use in image guided surgery; navigation software for image guided surgery; mobile system cart for use in image guided surgery, all being computer systems for medical use; mobile system cart having electro-magnetic field generator, computer workstation and instrument connection unit, all being computer systems for medical use; image guided surgery cart having electromagnetic field generator, computer work station and connections for medical instruments and devices; image guided surgery workstation; tool offset calibrators; magnetic tool offset calibrators; distortion measurement devices; footswitches; input devices; metrological instruments and equipment; optical tool offset calibrators; input devices
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Canada application number 1,319,798 filed 10/11/2006]. 15 U.S.C.Section 1126(d), as amended.

Applicant hereby adds the following class of goods/services to the application:
New: Class 010 for Medical devices; tracking devices for medical devices; trackers for use in image guided surgery; telemetry devices for medical applications; endoscopes; flexible endoscopes; bronchoscopes; tracked endoscopes; tracked flexible endoscopes; tracked bronchoscopes catheters; tracked catheters; needles; tracked needles; stylettes; tracked stylettes; bone screws; tracked bone screws; laparoscope ultrasound trackers; tracked laparoscope ultrasound; tracked ultrasound transducers; positioning aids for use in ultrasound imagery; transcutaneous ultrasound trackers; endorectal ultrasound trackers; ultrasound tracker calibrators; fluoroscope tracker and local calibrator therefor; tracked fluoroscope; fluoroscope tracker and integrated calibrator therefor; universal adaptor for medical devices; medical instrument adaptors; stylette pairs; cannula pairs; tracked cannula pairs; needle device introducers; tracked needle device introducers; needle introducers; tracked needle introducers; biopsy needle guns; tracked biopsy needle guns; tracked k-wires; k-wires; bone wires; tracked bone screws; tracked multisensor guidewires; guidewires; tracked single sensor guidewires; disposable button probes; tracked disposable button probes; reusable probes; tracked reusable probes; disposable dynamic reference patches; skin patches for referencing; locatable guides; tracked locatable guides; steerable catheters; tracked steerable catheters; reusable dynamic reference frames; positioning aids; vertebroplasty needles; tracked vertebroplasty needles; steerable locatable guides; tracked steerable locatable guides; tracked clamps; clamps; tracked cutting devices; cutters; scalpels; tracked scalpels; stents; tracked stents; cannulas; tracked cannulas; shunts and introducers; tracked shunts and introducers; needles; locatable guides; aspiration needles; tracked aspiration needles; tracked grasper; grasper; tracked brush; brush precision spatial measurement devices; ultrasound tracker calibrators; fluoroscope tracker and local calibrator therefor; tracked multisensor guidewires; tracked clamps; clamps; tracked cutting devices; cutters scalpels; stents; shunts and introducers; fluoroscope tracker and integrated calibrator therefor; medical instrument adaptors; tracked medical instrument adaptors; positioning aids footswitches; all being medical apparatus and instruments
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Canada application number 1,319,798 filed 10/11/2006]. 15 U.S.C.Section 1126(d), as amended.

Applicant hereby adds the following class of goods/services to the application:
New: Class 035 for Sale of precision spatial measurement devices; sale of metrological instruments; sale of metrological equipment; sale of metrological devices; sale of image guided surgery systems; sale of computer assisted surgery systems; sale of computer software and hardware for image guided surgery systems; sale of computer hardware and software for computer assisted surgery systems; sale of medical instruments and apparatuses; sale of medical devices
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Canada application number 1,319,798 filed 10/11/2006]. 15 U.S.C.Section 1126(d), as amended.

Applicant hereby adds the following class of goods/services to the application:
New: Class 037 for Servicing of computer assisted surgery systems and tools; servicing of image guided surgery systems and tools; maintenance of computer assisted surgery systems and tools; maintenance of image guided surgery systems and tools
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Canada application number 1,319,798 filed 10/11/2006]. 15 U.S.C.Section 1126(d), as amended.

FEE(S)
Fee(s) in the amount of $975 is being submitted.

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /sh/      Date: 12/07/2007
Signatory's Name: Sana Hakim
Signatory's Position: Attorney for Applicant

Response Signature
Signature: /sh/     Date: 12/07/2007
Signatory's Name: Sana Hakim
Signatory's Position: Attorney for Applicant

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
RAM Sale Number: 3096
RAM Accounting Date: 12/10/2007
        
Serial Number: 77106674
Internet Transmission Date: Fri Dec 07 18:21:23 EST 2007
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20071207182123744
480-77106674-410165377eb97879a94577754a9
e5a17125-DA-3096-20071207175517401283