Notation to File

MOLLI

MOLLI Surgical Inc.

RE: Mark: MOLLI; App. No.: 88/251.000 Barbara, Sorry to drive you crazy. This is not a direct client which makes this more cumbersome. A very slight modification. I think this should be fine. Magnetic detection system for assisting medical and health care professionals in performing precision surgery, comprised of implantable magnetic seeds, a wand for locating the magnetic seeds, and computer hardware and software for use therewith, all of the foregoing sold as a unit; replacement parts of the implantable magnetic seeds and wands for locating the magnetic seeds; implantable magnetic seeds; wands for locating magnetic seeds; all for assisting medical and health care professionals in performing precision surgery Regards, Neil B. Friedman Partner Hodgson Russ LLP Tel: 646.218.7605 Fax: 646.218.7665

NOTE TO THE FILE

SERIAL NUMBER: 88251000

DATE:    08/19/2019

NAME: bgaynor

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 via:
        phone                               Left message with
    X   email                               Attorney/Applicant

     Requested Law Library search           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:

Hi, Neil. Yes, I would accept the proposed amendment to the identification. Just FYI, after today, I will be out of the office until Monday, August 19.

Barb Gaynor

From: Friedman, Neil [mailto:NFriedma@hodgsonruss.com]
Sent: Tuesday, August 13, 2019 2:44 PM
To: Gaynor, Barbara <Barbara.Gaynor@USPTO.GOV>
Subject: RE: Mark: MOLLI; App. No.: 88/251.000

Barbara,

Sorry to drive you crazy. This is not a direct client which makes this more cumbersome. A very slight modification. I think this should be fine.

Magnetic detection system for assisting medical and health care professionals in performing precision surgery, comprised of implantable magnetic seeds, a wand for locating the magnetic seeds, and computer hardware and software for use therewith, all of the foregoing sold as a unit; replacement parts of the implantable magnetic seeds and wands for locating the magnetic seeds; implantable magnetic seeds; wands for locating magnetic seeds; all for assisting medical and health care professionals in performing precision surgery

Regards,

Neil B. Friedman
Partner
Hodgson Russ LLP

Tel:

646.218.7605

Fax:

646.218.7665

Twitter  | LinkedIn | website | e-mail

605 Third Ave, Suite 2300 | New York, NY 10158
Tel: 212.751.4300 | map

From: Gaynor, Barbara <Barbara.Gaynor@USPTO.GOV>
Sent: Tuesday, August 6, 2019 10:57 AM
To: Friedman, Neil <NFriedma@hodgsonruss.com>
Subject: RE: Mark: MOLLI; App. No.: 88/251.000

OK. I will stand by until I hear back from you.

Barb

From: Friedman, Neil [mailto:NFriedma@hodgsonruss.com]
Sent: Tuesday, August 06, 2019 10:19 AM
To: Gaynor, Barbara <Barbara.Gaynor@USPTO.GOV>
Subject: RE: Mark: MOLLI; App. No.: 88/251.000

Hi Barb,

Thanks. Please stand by. I am awaiting final approval.

Regards,

Neil B. Friedman
Partner
Hodgson Russ LLP

Tel:

646.218.7605

Fax:

646.218.7665

Twitter  | LinkedIn | website | e-mail

605 Third Ave, Suite 2300 | New York, NY 10158
Tel: 212.751.4300 | map

From: Gaynor, Barbara <Barbara.Gaynor@USPTO.GOV>
Sent: Tuesday, August 6, 2019 10:14 AM
To: Friedman, Neil <NFriedma@hodgsonruss.com>
Subject: RE: Mark: MOLLI; App. No.: 88/251.000

Good morning, Neil. Your proposed amendment works for me. Would you like for me to issue an Examiner’s Amendment in this matter? Please let me know what works best for you. Thanks.

Barb Gaynor

From: Friedman, Neil [mailto:NFriedma@hodgsonruss.com]
Sent: Friday, August 02, 2019 5:36 PM
To: Gaynor, Barbara <Barbara.Gaynor@USPTO.GOV>
Subject: RE: Mark: MOLLI; App. No.: 88/251.000

Dear Barbara,

I think we are almost there. However, listing the wands as a separate item of the system is not a broadening of the ID, its merely a component of the system which remains a narrowing of the identification.

How about the below?

Magnetic detection system for assisting medical and health care professionals in performing precision surgery, comprised of implantable magnetic seeds, a wand for locating the magnetic seeds, and computer hardware and software for use therewith, all of the foregoing sold as a unit; replacement parts of the implantable magnetic seeds and wands for locating the magnetic seeds; implantable magnetic seeds and wands for locating magnetic seeds for assisting medical and health care professionals in performing precision surgery

Regards,

Neil B. Friedman
Partner
Hodgson Russ LLP

Tel:

646.218.7605

Fax:

646.218.7665

Twitter  | LinkedIn | website | e-mail

605 Third Ave, Suite 2300 | New York, NY 10158
Tel: 212.751.4300 | map

From: Gaynor, Barbara <Barbara.Gaynor@USPTO.GOV>
Sent: Monday, July 15, 2019 5:02 PM
To: Friedman, Neil <NFriedma@hodgsonruss.com>
Subject: RE: Mark: MOLLI; App. No.: 88/251.000

Good afternoon, Mr. Friedman. Here is my counterproposal to the applicant’s proposed amended identification: Magnetic detection system for assisting medical and health care professionals in performing precision surgery, comprised of implantable magnetic seeds, a wand for locating the magnetic seeds, and computer hardware and software for use therewith, all of the foregoing sold as a unit; replacement parts of the implantable magnetic seeds and wands for locating the magnetic seeds; implantable magnetic seeds for assisting medical and health care professionals in performing precision surgery.

I cannot accept the language “and replacement parts for the foregoing” in your proposed amended identification because that would include replacement parts for computer hardware and software, which would be classified in Class 9. I cannot accept the wording “wands for locating magnetic seeds” as a separate item because the original identification of goods was limited to “implantable magnetic markers and magnetic detection system for use in surgery.” The only separate item is the “implantable magnetic markers,” which we are now calling “seeds.” The wand is not listed as a separate item.

Please let me know your thoughts on my counterproposal. Thanks.

Barb Gaynor

From: Friedman, Neil [mailto:NFriedma@hodgsonruss.com]
Sent: Monday, July 15, 2019 3:18 PM
To: Gaynor, Barbara <Barbara.Gaynor@USPTO.GOV>
Cc: Findorak, Sara <SFindora@hodgsonruss.com>
Subject: Mark: MOLLI; App. No.: 88/251.000

Dear Ms. Gaynor,

I was hoping to attend to the office action issued by examiner’s amendment. Please advise if the below is acceptable.

Magnetic detection system for assisting medical and health care professionals ~~in locating and removing cancerous tumors soft tissue marked for biopsy or surgical removal~~ in performing precision surgery, comprised of implantable magnetic seeds, a wand for locating the magnetic seeds, and computer hardware and software for use therewith, all of the foregoing sold as a unit and replacement parts for the foregoing; implantable magnetic seeds; wands for locating magnetic seeds.

Feel free to contact me with any questions/concerns.

Regards,

Neil B. Friedman
Partner
Hodgson Russ LLP