Notation to File

TIME TO HEAL

NovaLung GmbH

RE: TIME TO HEAL US APPLICATION SERIAL NO. 88239013 for TIME TO HEAL Dear Examiner McCauley: Applicant has agreed to the proposed amendment. Please proceed. Thank you for your attention to this matter. Regards, Greg From: McCauley, Brendan <Brendan.McCauley@USPTO.GOV> Sent: Thursday, June 18, 2020 10:07 PM To: Gregory J. Chinlund <gchinlund@marshallip.com> Subject: TIME TO HEAL US APPLICATION SERIAL NO. 88239013 External - This email is from an external email address outside the firm. Dear Gregory Chinlund: The application has been returned to me to consider the proposed amendment to the basis filed on June 8, 2020. However, there are issues accepting the 44(e) basis related to the identification currently of record and that in the foreign registration. The current application identification is: Surgical, medical, dental and veterinary instruments and apparatus, namely, artificial lungs, membrane ventilators and gas exchangers for medical use for extracorporeal lung and heart support; oxygenators; blood pumps; blood gases permeable membranes, namely, medical apparatus in the nature of membranes that allow for the exchange of blood and respiratory gases; blood filters for medical use; medical tubing for withdrawing and supplying of fluids and gases from and to living beings, and hose connectors therefor, and cannulas for medical purposes. The foreign registration identification is: Medical apparatus and instruments for supporting lung function of a human being, including artificial lungs; device for measuring blood flow; dilators; tubes, filters, membranes, clamps, needles, cannulas and closures for afore-mentioned goods; scalpels. If accurate, given the limitations in the foreign registration I proposed the following identification: Medical apparatus and instruments for supporting lung function of a human being, namely, artificial lungs, membrane ventilators, and gas exchangers for medical use for extracorporeal lung and heart support; blood gases permeable membranes, namely, medical apparatus in the nature of membranes that allow for the exchange of blood and respiratory gases, blood filters for medical use, medical tubing for withdrawing and supplying of fluids and gases from and to living beings, and hose connectors therefor, and cannulas for medical purposes, all for the afore-mentioned goods. In particular, “Surgical” and “dental and veterinary” should be deleted because the foreign registrations clearly is limited in language to medical. The goods oxygenators and blood pumps are not specifically listed nor do I see them within the scope of the goods set forth in the foreign registration. While the membranes, filters, tubing, and cannulas are in the foreign registration, they are expressly limited to the aforementioned goods only. If you disagree, let me know, and we can work on other acceptable wording within the scope of the wording in the foreign registration. If easier, feel free to call me at 571-272-9459. With your permission, I can handle this identification, if acceptable, by examiner’s amendment. I know you may have to contact the applicant for approval, but I will need to know by COB on Monday. If I don’t hear from you by that time, I will have to write on Office action accordingly. Thank you, and I appreciate your cooperation on this issue on such a tight deadline. If you feel it best for me to issue an Office action, just let me know. Brendan Brendan McCauley, Esq. Examining Attorney USPTO Law Office 114 571-272-9459

NOTE TO THE FILE

SERIAL NUMBER: 88239013

DATE:    06/23/2020

NAME: bmccauley

NOTE:

Searched:
     Google
     Lexis/Nexis
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:
     Geographic significance
     Surname
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
        phone                               Left message with
    X   email                               Attorney/Applicant

     Requested Law Library search      X   Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        DO NOT PRINT           Added design code in TRADEUPS
     Description of the mark
     Translation statement                  Re-imaged standard character
                                            drawing
     Negative translation statement
     Consent of living individual           Contacted TM MADRID ID/CLASS
                                            about misclassified definite ID
     Changed TRADEUPS to:

X   OTHER:

EMAIL RELATED TO PETITION:

From: Gregory J. Chinlund <gchinlund@marshallip.com>
Sent: Monday, June 22, 2020 9:46 AM
To: McCauley, Brendan <Brendan.McCauley@USPTO.GOV>
Subject: RE: TIME TO HEAL US APPLICATION SERIAL NO. 88239013 for TIME TO HEAL

Dear Examiner McCauley:

Applicant has agreed to the proposed amendment.

Please proceed.

Thank you for your attention to this matter.

Regards, Greg

From: McCauley, Brendan <Brendan.McCauley@USPTO.GOV>
Sent: Thursday, June 18, 2020 10:07 PM
To: Gregory J. Chinlund <gchinlund@marshallip.com>
Subject: TIME TO HEAL US APPLICATION SERIAL NO. 88239013

External - This email is from an external email address outside the firm.

Dear Gregory Chinlund:

The application has been returned to me to consider the proposed amendment to the basis filed on June 8, 2020.

However, there are issues accepting the 44(e) basis related to the identification currently of record and that in the foreign registration.

The current application identification is: Surgical, medical, dental and veterinary instruments and apparatus, namely, artificial lungs, membrane ventilators and gas exchangers for medical use for extracorporeal lung and heart support; oxygenators; blood pumps; blood gases permeable membranes, namely, medical apparatus in the nature of membranes that allow for the exchange of blood and respiratory gases; blood filters for medical use; medical tubing for withdrawing and supplying of fluids and gases from and to living beings, and hose connectors therefor, and cannulas for medical purposes.

The foreign registration identification is: Medical apparatus and instruments for supporting lung function of a human being, including artificial lungs; device for measuring blood flow; dilators; tubes, filters, membranes, clamps, needles, cannulas and closures for afore-mentioned goods; scalpels.

If accurate, given the limitations in the foreign registration I proposed the following identification:

Medical apparatus and instruments for supporting lung function of a human being, namely, artificial lungs, membrane ventilators, and gas exchangers for medical use for extracorporeal lung and heart support; blood gases permeable membranes, namely, medical apparatus in the nature of membranes that allow for the exchange of blood and respiratory gases, blood filters for medical use, medical tubing for withdrawing and supplying of fluids and gases from and to living beings, and hose connectors therefor, and cannulas for medical purposes, all for the afore-mentioned goods.

In particular, “Surgical” and “dental and veterinary” should be deleted because the foreign registrations clearly is limited in language to medical. The goods oxygenators and blood pumps are not specifically listed nor do I see them within the scope of the goods set forth in the foreign registration. While the membranes, filters, tubing, and cannulas are in the foreign registration, they are expressly limited to the aforementioned goods only.

If you disagree, let me know, and we can work on other acceptable wording within the scope of the wording in the foreign registration. If easier, feel free to call me at 571-272-9459.

With your permission, I can handle this identification, if acceptable, by examiner’s amendment.

I know you may have to contact the applicant for approval, but I will need to know by COB on Monday. If I don’t hear from you by that time, I will have to write on Office action accordingly.

Thank you, and I appreciate your cooperation on this issue on such a tight deadline. If you feel it best for me to issue an Office action, just let me know.

Brendan

Brendan McCauley, Esq.

Examining Attorney

USPTO

Law Office 114

571-272-9459

Gregory J. Chinlund
Partner
Marshall, Gerstein & Borun LLP
233 South Wacker Drive
6300 Willis Tower
Chicago, IL 60606-6357 USA
D: +1.312.474.6650
T: +1.312.474.6300
F: +1.312.474.0448
gchinlund@marshallip.com
marshallip.com

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