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: 4/13/2009

 

 

This is a PROVISIONAL PARTIAL FINAL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application that applies to only the following goods in the application: 

 

Class 1

 

Chemical, biochemical and biotechnological products for industrial and scientific purposes, namely, nucleic acids for laboratory and research use, enzymes, polymerases, chemical and biochemical dye and marker compounds for laboratory and research use, chemical and biochemical reagents commonly known as probes for detecting and analysing molecules in protein or nucleic acid arrays, transfection reagents, lipids for introducing chemical, biochemical and biotechnological products into cells, aqueous and non aqueous solutions of alcohols and/or salts, distilled or purified water, magnetic particles in fluid form, column and membrane material, namely, for the isolation, purification or separation of chemical, biochemical and biotechnological products, none of the foregoing for medical or veterinary purposes; reagents and solvents for non-medical and non-veterinary purposes, chemicals and biochemicals for industrial and scientific purposes, namely reagents and solvents for sample preparation, purification, lysis, modification and manipulation of cells and tissues, namely, transfection reagents and reagents and solvents for performing marking, separating, isolating, purification, amplification, and/or analysis methods of biopolymers, namely, nucleic acids, enzymes, proteins, macromolecules and biologically active substances for separation, modification, analysis, marking, amplification and purification of biological and chemical compounds, none of the foregoing for medical or veterinary purposes; kits comprising chemicals for scientific or industrial purposes, kits comprising biochemicals and/or biotechnological products for scientific or industrial purposes, namely, comprising biochemical catalysts, transfection reagents, lipids for introducing chemical, biochemical and biotechnological products into cells, nucleic acids, oligonucleotides, enzymes, proteins, chemical and biochemical dye and marker compounds, chemical and biochemical reagents commonly known as probes for detecting and analysing molecules in protein or nucleic acid arrays and/or comprising chemical buffers used in biochemistry and biotechnology for sample preparation, purification, lysis, modification and manipulation of cells or tissue and for performing marking, separating, isolating, purification, amplification and/or analysis methods for biopolymers, namely, nucleic acids, enzymes, proteins, macromolecules, none of the foregoing for medical or veterinary purposes

 

Class 5

 

Pharmaceutical and veterinary products, namely, nucleic acids, chemical reagents and biochemical preparations; enzymes for diagnostic and/or pharmaceutical purposes, proteins for diagnostic and/or pharmaceutical purposes; nucleic acids for diagnostic and/or pharmaceutical purposes; polymerases for diagnostic and/or pharmaceutical purposes, chemical and biochemical dye and marker compounds for diagnostic and/or pharmaceutical purposes, chemical buffers for diagnostic and/or pharmaceutical purposes, aqueous and non aqueous solutions of alcohols for diagnostic purposes, aqueous and non aqueous solutions of salts for diagnostic and/or pharmaceutical purposes, distilled or purified water for diagnostic and/or pharmaceutical purposes, magnetic particles for diagnostic and/or pharmaceutical purposes, column material, namely, for the isolation, purification or separation of chemical, biochemical and biotechnological products for diagnostic and/or pharmaceutical purposes, lipids for the introduction of molecules into cells for diagnostic and/or pharmaceutical purposes; transfection reagents for diagnostic and/or pharmaceutical purposes; kits comprising chemical reagents for medical and veterinary-diagnostic purposes, kits comprising biochemical products for medical and veterinary-diagnostic purposes, kits comprising biotechnological products, namely transfection reagents, lipids for the introduction of molecules into cells, nucleic acids, proteins and/or enzymes for medical and veterinary-diagnostic purposes for sample preparation, purification, lysis, modification and/or manipulation of cells and/or tissues and for marking, separating, isolating, purifying, amplification and/or analysis of biopolymers, namely, nucleic acids, protein, macromolecules and biologically active substances, namely, enzymes, proteins, macromolecules and biologically active substances, all of the foregoing for medical, veterinary and/or diagnostic purposes

 

Class 9

 

Scientific apparatuses, instruments and equipment and laboratory instruments and measuring apparatuses and instruments, in particular for research, medical, diagnostic, development and/or analysis purposes, namely, disposable laboratory articles, in particular test vessels, microplates, vessels, plastic vessels, sample storage vessels, reaction and collection vessels and plates, multi-well plates, flasks, containers, tips, including filter tips and dispenser tips, pipette tips and tip boxes, tubes, microtubes and tubes for PCR and micro centrifuges and micro-injection, capillaries, magnetic tips, curvettes, spin columns, cartridges and columns filed with chromatographic material; racks and holders for sample storage vessels, microvessels, tubes, syringes, tips and reagent holders; magnetic particles; membranes and silica material for nucleic acid isolation and purification, sample presentation devices, microarrays, chips; laboratory robots and automated laboratory machines, robotic workstations and systems, laboratory incubators, laboratory apparatuses and equipment for dosage, dispensing, transferring, temperature equalizing, agitating, mixing, diluting, concentrating and separating of liquids for sample preparation, modification and manipulation of cells and/or tissues and for marking, transfecting, separating, isolating, purifying, amplifying, and for the analysis of nucleic acids, proteins and macromolecules and biologically active substances; cyclers, thermocyclers, lysis apparatuses, disrupters, physico-chemical, bio-chemical, optical and electronic analysis apparatus and equipment, in particular spectrophotometers; apparatuses for processing cells or liquids containing cells in particular electroporators, electrofusion apparatuses, transfection apparatuses, micro injectors and micro manipulators; vacuum chambers for chromatography, purification, separation and characterization of natural and synthetic biopolymers, nucleic acids, oligonucleotides, proteins, macromolecules and biologically active substances from sample material; centrifuges; vacuum systems for laboratory use, vacuum concentrators; centrifugal concentrators; vacuum concentrators, mixers; mechanical, electronical and automatical pipettes and dispensers for dispensing liquid for laboratory research and analysis purposes, vacuum pumps, spare parts and fittings of the foregoing, pre-programmed cards, biochips, vacuum valves

 

 

See 15 U.S.C. §1141h(c).

 

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL PARTIAL REFUSAL:

 

Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf.  However, the only attorneys who can practice before the USPTO in trademark matters are as follows:

 

(1)               Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and

 

(1)               Canadian agents/attorneys whorepresent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §11.14(c).

 

37 C.F.R. §§11.1, 11.14; TMEP §602.

 

Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys.  TMEP §602.06(b).  Filing written communications, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter.  A response signed by an unauthorized foreign attorney is considered an incomplete response.  See TMEP §§602.03, 712.03.

 

THE APPLICATION HAS BEEN PROVISIONALLY PARTIALLY REFUSED AS FOLLOWS:

 

NOTE:  This is a partial refusal FINAL Office action.  The refusal(s) and/or requirement(s) in this Office action apply only to specified goods in the U.S. application.

 

This Office action supersedes any previous Office action issued in connection with this application.  The examining attorney apologizes for any confusion this may have causes the applicant.

 

This letter responds to the applicant's communication filed on February 6, 2009.    In its response, the applicant amended its identification. For the following reasons, the requirement for an acceptable identification is maintained and made FINAL

IDENTIFICATION

 

THIS REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

The identification of goods must be clarified because some of the wording is indefinite and could include goods in more than one International Class.  See TMEP §1402.01.  In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant uses indefinite words such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).

 

The word “system” in the identification of goods is indefinite and must be amended to list the major parts or components of the system, as well as describe the nature, purpose and use of the system.  Applicant should use common generic terms when specifying the parts or components of the system.  TMEP §1402.03.

 

The identification of goods is indefinite and must be clarified because it includes the open-ended wording “in particular.”  TMEP §§1402.01 and 1402.03(a).  The identification must be specific and all-inclusive.  Therefore, this wording should be deleted and replaced with “namely.” 

 

Applicant may amend the identification to list only those items that are within the scope of the goods set forth in the application or within the scope of a previously accepted amendment to the identification.  37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a).

 

Suggestions and explanations are incorporated into the identification proposed below in bold.  Applicant may adopt the following identification, if accurate:

 

 

Class 1

 

Chemical, biochemical and biotechnological products for industrial and scientific purposes, namely, nucleic acids for laboratory and laboratory research use, enzymes, polymerases, [please specify the type of chemical biochemical dye and marker compounds, e.g. chemical and biochemical reagents for staining and marking] for laboratory and research use, chemical and biochemical reagents commonly known as probes for detecting and analyzing molecules in protein or nucleic acid arrays, transfection reagents for research purposes, [please specify the common commercial name of lipids as properly classified in Class 1] for introducing chemical, biochemical and biotechnological products into cells], chemical buffers used in analytical chemistry and biochemistry, aqueous and non aqueous solutions of alcohols and/or salts, namely, [please specify type of aqueous and non aqueous solutions of alcohol and salt as properly classified in Class 1], distilled water and purified [please specify type of water, e.g. heavy, ammonia,, distilled] water, magnetic fluid for industrial purposes, column and membrane material, namely, [please specify the type of column and membrane material as properly classified in Class 1] for the isolation, purification or separation of chemical, biochemical and biotechnological products, none of the foregoing for medical or veterinary purposes; chemical reagents and aromatic solvents for industrial and commercial use for sample preparation, purification, lysis, modification and/or manipulation of cells and/or tissues and for performing marking, separating, isolating, purification, amplification, and/or analysis methods of biopolymers, namely, nucleic acids, enzymes, proteins, macromolecules and biologically active substances none of the foregoing for non-medical and non-veterinary purposes, chemicals and biochemicals for industrial and scientific purposes, namely reagents for research purposes and aromatic solvents for industrial and commercial use for sample preparation, purification, lysis, modification and manipulation of cells and tissues, namely, transfection chemical reagents for non-medical purposes, chemical reagents for non-medical purposes and aromatic solvents for industrial and commercial use for performing marking, separating, isolating, purification, amplification, and/or analysis methods of biopolymers, namely, nucleic acids, enzymes, protein, macromolecules and biologically active substances for separation, modification, analysis, marking, amplification and purification of biological and chemical compounds, none of the foregoing for medical or veterinary purposes; kits comprising chemical preparations for scientific purposes and chemicals for industrial purposes, kits comprising biochemicals and biotechnological products for scientific or industrial purposes, namely, biochemical catalysts, transfection chemical reagents for non-medical purposes, [please specify the type of lipids that's properly classified in Class 9] lipids for introducing chemical, biochemical and biotechnological products into cells, nucleic acid for laboratory use, oligonucleotides arrays for scientific research, enzymes for scientific and research purposes, protein arrays for scientific research, chemical and biochemical reagents for staining and marking for non-medical purposes, biochemical reagents commonly known as probes for detecting and analyzing molecules in protein or nucleic acid arrays and comprising chemical buffers used in analytical biochemistry for sample preparation, purification, lysis, modification and manipulation of cells or tissue and for performing marking, separating, isolating, purification, amplification and/or analysis methods for biopolymers, namely, nucleic acids, enzymes, proteins, macromolecules, none of the foregoing for medical or veterinary purposes

 

Class 5

 

Diagnostic preparations for medical and veterinary purposes; pharmaceutical and veterinary products, namely, nucleic acids sequences, chemical reagents and biochemical preparations for medical or veterinary purposes; enzymes for use in animal feeds to assist in digestion for diagnostic and/or pharmaceutical purposes, protein supplements for diagnostic and/or pharmaceutical purposes; nucleic acids sequences for diagnostic and/or pharmaceutical purposes; [please specify in more detail the type of polymerases as properly classified in Class 5] for diagnostic and/or pharmaceutical purposes, [please specify in more detail the type of chemical and biochemical dye and marker compounds as properly classified in Class 5, e.g. radio-isotope markers] for diagnostic and/or pharmaceutical purposes, [please specify the common commercial name for chemical buffers as properly classified in Class 5] for diagnostic and/or pharmaceutical purposes, [please specify the type of aqueous and non aqueous solutions of alcohols, e.g. aqueous and non aqueous medical alcohol] for diagnostic purposes, aqueous and non aqueous solutions of salts, namely, [please specify, e.g. Epsom salts, smelling salts] for diagnostic and/or pharmaceutical purposes, distilled or purified water, namely, [please specify the type of distilled or purified water in Class 5 e.g. nutritionally fortified water, vitamin enriched water] for diagnostic and/or pharmaceutical purposes, magnetic particles, namely, [please specify the type as properly classified in Class 5] for diagnostic and/or pharmaceutical purposes, scope with diagnostic-column material, namely, [please specify the type of scope as properly classified in Class 5] for the isolation, purification or separation of chemical, biochemical and biotechnological products, namely, [please identify the type of biochemical and biotechnological products, e.g. biochemical preparations for medical or veterinary diagnostic and/or pharmaceutical purposes], [please specify the type of lipids as properly classified in Class 5] for the introduction of molecules into cells for diagnostic and/or pharmaceutical purposes; medical transfection reagents for diagnostic and/or pharmaceutical purposes; kits comprising chemical reagents for medical and veterinary-diagnostic purposes, kits comprising biochemical preparations for medical and veterinary-diagnostic purposes and kits comprising biotechnological products, namely transfection reagents and [please specify the common commercial name for lipids for the introduction of molecules into cells, nucleic acids, proteins and enzymes, e.g. nucleic acid sequences, enzymes for use in animal feeds to assist in digestion] for medical and veterinary-diagnostic purposes for sample preparation, purification, lysis, modification and/or manipulation of cells and/or tissues and for marking, separating, isolating, purifying, amplification and/or analysis of biopolymers, namely, nucleic acids, protein, macromolecules and biologically active substances, namely, enzymes, proteins, macromolecules and biologically active substances, all of the foregoing for medical, veterinary and diagnostic purposes

 

Class 9

 

Scientific apparatuses, instruments and equipment for research, development, and analysis purposes, namely, [please specify the type of apparatuses, instruments and equipment, e.g. satellites, prisms]; laboratory instruments and measuring apparatuses and instruments for research, medical, diagnostic, development and/or analysis purposes, namely, explosive containment safety vessels, [please specify the type of vessels as properly classified in Class 9, e.g. explosive containment safety vessels], [please specify plastic vessels as properly classified in Class 9, e.g. explosive containment plastic safety vessels], [please specify the type of sample storage vessels as properly classified in Class 9, e.g. safety equipment, namely, explosive containment sample storage vessels], [please specify the type of reaction and collection vessels and plates as properly classified in Class 9], [please specify the type of multi-well plates as properly classified in Class 9], laboratory flasks, small sample containers for testing oils and lubricants, laboratory pipette tips in the nature of filter tips and dispenser tips, laboratory consumables, namely, pipette tips, [please specify the type of tip boxes in Class 9], laboratory storage tubes, laboratory storage microtubes and laboratory storage tubes for [please specify the common commercial name for PCR], laboratory micro centrifuges and micro-injection, [please specify the type of capillaries as it applies to Class 9], laboratory magnetic pippette tips, curvettes in the nature of [applicant must speicfy, e.g. laboratory storage tubes], spin columns, namely, [please specify the common commercial name of the goods, e.g. pre-packed laboratory columns for use in separation and purification], [please specify the type of cartridges] and [please specify the type of columns] filed with chromatographic material for the separation, purification, and isolation of biopolymers, nucleic acids, oligonucleotides, proteins, macromolecules and biologically active substances from sample material, all for laboratory use; laboratory equipment, namely, pipette racks and holders for sample storage vessels, microvessels, tubes, syringes, and tips; magnetic particles, namely, [please specify the common commercial name of the goods as properly classified in Class 9]; acoustic membranes and silica material, namely, [please specify the type of materials as it is properly classified in Class 9] for nucleic acid isolation and purification, sample presentation devices, namely, [please specify the type of devices as properly classified in Class 9], microarrays in the nature of [applicant must provide further description or common commercial name of the Class 9 goods], sensor chips for scientific use; laboratory robots and automated laboratory machines, namely, [please specify the type of automated laboratory machines, e.g. microwave ovens], robotic workstations comprising [please specify major components of workstation] and [please specify the type of systems as it applies to class 9 only], laboratory incubators, laboratory apparatuses and equipment, namely, [please specify type of laboratory apparatus and equipment, e.g.. machines for dispensing pre-determined dosages of medication, temperature controllers, concentration meters, liquid analyzers] for transferring, temperature equalizing, agitating, mixing, diluting, concentrating and separating of liquids for sample preparation, modification and manipulation of cells and/or tissues and for marking, transfecting, separating, isolating, purifying, amplifying, and for the analysis of nucleic acids, proteins and macromolecules and biologically active substances; laboratory equipment, namely, cyclers in the nature of [applicant must specify, e.g. cyclotrons], thermocyclers in the nature of [applicant must specify, e.g. cyclotrons], lysis apparatuses, namely, [please specify the type of apparatus], disrupters in the nature of [applicant must provide further description or common commercial  name of goods], physico-chemical, bio-chemical, optical and electronic analysis apparatus and equipment, namely, photometers, spectrophotometers for measuring relative DNA/RNA and protein, and optical scanners for detection of fluorescence and colorimetric signals; apparatuses for processing cells or liquids containing cells in particular electroporators in the nature of [applicant must provide further description or common commercial name of goods] for laboratory use, electrofusion apparatuses, namely, [please specify the common commercial name of the apparatuses in Class 9], transfection apparatuses, namely, [please specify the common commercial name of the apparatuses in Class 9], micro injectors in the nature of [applicant must provide further description or common commercial name of goods] and micro manipulators for the remote operation of robotic arms; vacuum chambers for laboratory use for chromatography, purification, separation and characterization of natural and synthetic biopolymers, nucleic acids, oligonucleotides, proteins, macromolecules and biologically active substances from sample material; laboratory apparatus, namely, centrifuges; vacuum systems for laboratory use comprised of [please specify components] for [specify nature of use], vacuum concentrators comprised of [specify components for [specify nature of use] for laboratory use; centrifugal concentrators comprised of [specify components] for [specify nature of use] for laboratory use; rotors for laboratory centrifuges and vacuum concentrators comprised of [specify components] for [specify nature of use] for laboratory use, [please specify the type of mixers] mixers comprised of [specify components] for [specify nature of use] for laboratory use; mechanical, electronic and automatic pipettes dispensers in the nature of [applicant must specify, e.g. non-refrigerated and non-heated electrical dispenser] for dispensing liquid for laboratory research and analysis purposes, leak detectors for vacuum pumps, pre-programmed cards, namely, encoded smart cards containing programming used to [specify the function or purpose and, if the programming is content or field specific, the field of use],  pipettes, electronic and mechanical measuring and analyzing apparatus, namely, biochip for laboratory use, automatic vacuum valves for the purpose of permitting the operation of laboratory processes under subatmospheric pressure for scientific research and examination purposes

 

 

 

The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods and/or services by the International Bureau in the corresponding international registration.  TMEP §§1401.03(d), 1904.02(b).

 

Identifications of goods and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services 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 and/or services that are not within the scope of the goods and/or services 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.

 

 

PROPER RESPONSE TO A FINAL ACTION

If applicant does not respond within six months of the mailing date of this final Office action, the following goods to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment:   

 

 

Class 1

 

Chemical, biochemical and biotechnological products for industrial and scientific purposes, namely, nucleic acids for laboratory and research use, enzymes, polymerases, chemical and biochemical dye and marker compounds for laboratory and research use, chemical and biochemical reagents commonly known as probes for detecting and analysing molecules in protein or nucleic acid arrays, transfection reagents, lipids for introducing chemical, biochemical and biotechnological products into cells, aqueous and non aqueous solutions of alcohols and/or salts, distilled or purified water, magnetic particles in fluid form, column and membrane material, namely, for the isolation, purification or separation of chemical, biochemical and biotechnological products, none of the foregoing for medical or veterinary purposes; reagents and solvents for non-medical and non-veterinary purposes, chemicals and biochemicals for industrial and scientific purposes, namely reagents and solvents for sample preparation, purification, lysis, modification and manipulation of cells and tissues, namely, transfection reagents and reagents and solvents for performing marking, separating, isolating, purification, amplification, and/or analysis methods of biopolymers, namely, nucleic acids, enzymes, proteins, macromolecules and biologically active substances for separation, modification, analysis, marking, amplification and purification of biological and chemical compounds, none of the foregoing for medical or veterinary purposes; kits comprising chemicals for scientific or industrial purposes, kits comprising biochemicals and/or biotechnological products for scientific or industrial purposes, namely, comprising biochemical catalysts, transfection reagents, lipids for introducing chemical, biochemical and biotechnological products into cells, nucleic acids, oligonucleotides, enzymes, proteins, chemical and biochemical dye and marker compounds, chemical and biochemical reagents commonly known as probes for detecting and analysing molecules in protein or nucleic acid arrays and/or comprising chemical buffers used in biochemistry and biotechnology for sample preparation, purification, lysis, modification and manipulation of cells or tissue and for performing marking, separating, isolating, purification, amplification and/or analysis methods for biopolymers, namely, nucleic acids, enzymes, proteins, macromolecules, none of the foregoing for medical or veterinary purposes

 

Class 5

 

Pharmaceutical and veterinary products, namely, nucleic acids, chemical reagents and biochemical preparations; enzymes for diagnostic and/or pharmaceutical purposes, proteins for diagnostic and/or pharmaceutical purposes; nucleic acids for diagnostic and/or pharmaceutical purposes; polymerases for diagnostic and/or pharmaceutical purposes, chemical and biochemical dye and marker compounds for diagnostic and/or pharmaceutical purposes, chemical buffers for diagnostic and/or pharmaceutical purposes, aqueous and non aqueous solutions of alcohols for diagnostic purposes, aqueous and non aqueous solutions of salts for diagnostic and/or pharmaceutical purposes, distilled or purified water for diagnostic and/or pharmaceutical purposes, magnetic particles for diagnostic and/or pharmaceutical purposes, column material, namely, for the isolation, purification or separation of chemical, biochemical and biotechnological products for diagnostic and/or pharmaceutical purposes, lipids for the introduction of molecules into cells for diagnostic and/or pharmaceutical purposes; transfection reagents for diagnostic and/or pharmaceutical purposes; kits comprising chemical reagents for medical and veterinary-diagnostic purposes, kits comprising biochemical products for medical and veterinary-diagnostic purposes, kits comprising biotechnological products, namely transfection reagents, lipids for the introduction of molecules into cells, nucleic acids, proteins and/or enzymes for medical and veterinary-diagnostic purposes for sample preparation, purification, lysis, modification and/or manipulation of cells and/or tissues and for marking, separating, isolating, purifying, amplification and/or analysis of biopolymers, namely, nucleic acids, protein, macromolecules and biologically active substances, namely, enzymes, proteins, macromolecules and biologically active substances, all of the foregoing for medical, veterinary and/or diagnostic purposes

 

Class 9

 

Scientific apparatuses, instruments and equipment and laboratory instruments and measuring apparatuses and instruments, in particular for research, medical, diagnostic, development and/or analysis purposes, namely, disposable laboratory articles, in particular test vessels, microplates, vessels, plastic vessels, sample storage vessels, reaction and collection vessels and plates, multi-well plates, flasks, containers, tips, including filter tips and dispenser tips, pipette tips and tip boxes, tubes, microtubes and tubes for PCR and micro centrifuges and micro-injection, capillaries, magnetic tips, curvettes, spin columns, cartridges and columns filed with chromatographic material; racks and holders for sample storage vessels, microvessels, tubes, syringes, tips and reagent holders; magnetic particles; membranes and silica material for nucleic acid isolation and purification, sample presentation devices, microarrays, chips; laboratory robots and automated laboratory machines, robotic workstations and systems, laboratory incubators, laboratory apparatuses and equipment for dosage, dispensing, transferring, temperature equalizing, agitating, mixing, diluting, concentrating and separating of liquids for sample preparation, modification and manipulation of cells and/or tissues and for marking, transfecting, separating, isolating, purifying, amplifying, and for the analysis of nucleic acids, proteins and macromolecules and biologically active substances; cyclers, thermocyclers, lysis apparatuses, disrupters, physico-chemical, bio-chemical, optical and electronic analysis apparatus and equipment, in particular spectrophotometers; apparatuses for processing cells or liquids containing cells in particular electroporators, electrofusion apparatuses, transfection apparatuses, micro injectors and micro manipulators; vacuum chambers for chromatography, purification, separation and characterization of natural and synthetic biopolymers, nucleic acids, oligonucleotides, proteins, macromolecules and biologically active substances from sample material; centrifuges; vacuum systems for laboratory use, vacuum concentrators; centrifugal concentrators; vacuum concentrators, mixers; mechanical, electronical and automatical pipettes and dispensers for dispensing liquid for laboratory research and analysis purposes, vacuum pumps, spare parts and fittings of the foregoing, pre-programmed cards, biochips, vacuum valves

 

 

The application will then proceed for the remaining goods:

 

Class 1

Chemical buffers used in analytical chemistry, biochemistry and biotechnology

 

Class 5

Diagnostic preparations for medical and veterinary purposes;

 

Class 9

Physico-chemical, bio-chemical, optical and electronic analysis apparatus and equipment, in particular photometers and optical scanners for detection of fluorescence and colorimetric signals, rotors for laboratory centrifuges, pipettes

 

 

15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

 

Applicant may respond to this final Office action by: 

 

(1)   Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)   Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b), TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

If the applicant has any questions regarding this FINAL Office action, please telephone the assigned examining attorney. 

 

 

 

 

 

 

 

Lana H. Pham /lhp/

Trademark Attorney

Law Office 115

United States Patent and Trademark Office

(571) 272-9478

Lana.Pham@uspto.gov (informal)

 

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; 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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 4/13/2009 FOR

APPLICATION SERIAL NO. 79055263

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=79055263&doc_type=OOA&mail_date=20090413 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 4/13/2009.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.