NOTE TO THE FILE
SERIAL NUMBER: 88464684
DATE: 09/17/2019
NAME: jgriffin
NOTE:
Searched:
Lexis/Nexis
OneLook
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Other:Checked:
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Surname
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ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Priority Action
for:PRINT DO NOT PRINT Added design code in TRADEUPS
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Translation statement Re-imaged standard character
drawing
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Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:X OTHER:
From: Gregory.Phillips <Gregory.Phillips@knobbe.com>
Sent: Tuesday, September 17, 2019 2:03 PM
To: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Cc: Heather.OBrien <Heather.Obrien@knobbe.com>; truin.040t.kmob@iwcs.kmob.com
Subject: RE: TRUINJECT, ser. no. 88464684 (TRUIN.040T)
Dear Examining Attorney Griffin,
Thank you for your emails. We are waiting to receive the retainer from our client. I do not have an estimate of when it will arrive. It is tied together with some other projects that we are handling for the client. It may prove best to issue an Office Action and then I can respond.
Best regards,
Greg
Gregory B. Phillips
Partner
949-721-2894 Direct
Knobbe Martens
2040 Main St., 14th Fl.
Irvine, CA 92614
www.knobbe.com/gregory-phillips
From: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Sent: Tuesday, September 17, 2019 10:39 AM
To: Gregory.Phillips <Gregory.Phillips@knobbe.com>
Subject: RE: TRUINJECT, ser. no. 88464684 (TRUIN.040T)
So please let me know when you’ve had a chance to do that and I’ll do the examiner’s amendment.
From: Griffin, Jim
Sent: Monday, September 16, 2019 1:10 PM
To: Gregory.Phillips <Gregory.Phillips@knobbe.com>
Subject: RE: TRUINJECT, ser. no. 88464684 (TRUIN.040T)
Easier to just pay online and I’ll take care of everything else. You can pay the filing fee ($275) here: http://teas.gov.uspto.report/office/pra/, and click “yes” for number 6.
From: Gregory.Phillips <Gregory.Phillips@knobbe.com>
Sent: Monday, September 16, 2019 10:55 AM
To: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Cc: Heather.OBrien <Heather.Obrien@knobbe.com>; truin.040t.kmob@iwcs.kmob.com
Subject: RE: TRUINJECT, ser. no. 88464684 (TRUIN.040T)
Dear Examining Attorney Griffin,
My client’s software is downloadable/recordable and non-downloadable. So, we will add Class 42 and pay the additional fee. I assume the best approach is to issue an Office Action and then we will respond and pay the fee. Please let me know, though, if there is a better approach.
Best regards,
Greg
Gregory B. Phillips
Partner
949-721-2894 Direct
Knobbe Martens
2040 Main St., 14th Fl.
Irvine, CA 92614
www.knobbe.com/gregory-phillips
From: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Sent: Monday, September 16, 2019 7:26 AM
To: Gregory.Phillips <Gregory.Phillips@knobbe.com>
Subject: RE: TRUINJECT, ser. no. 88464684 (TRUIN.040T)
Good morning, Greg. Any response yet from the client?
Jim
From: Gregory.Phillips <Gregory.Phillips@knobbe.com>
Sent: Thursday, September 12, 2019 4:06 PM
To: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Cc: Heather.OBrien <Heather.Obrien@knobbe.com>
Subject: RE: TRUINJECT, ser. no. 88464684 (TRUIN.040T)
Dear Examining Attorney Griffin,
Thank you for your email. I will ask my client whether the software is downloadable and/or recorded. I should have the response soon.
Best regards,
Greg
Gregory B. Phillips
Partner
949-721-2894 Direct
Knobbe Martens
2040 Main St., 14th Fl.
Irvine, CA 92614
www.knobbe.com/gregory-phillips
From: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Sent: Thursday, September 12, 2019 9:17 AM
To: Gregory.Phillips <Gregory.Phillips@knobbe.com>
Cc: efiling <efiling@knobbe.com>
Subject: TRUINJECT, ser. no. 88464684
Importance: High
Hi Greg,
I had previously approved this application for pub, but it’s been bounced back to me b/c of the ID. Specifically, we need to specify whether the software is “downloadable” or “recorded” to keep it in Class 9, since online software is a service in Class 42. Sorry for not catching that in the first place! So I’d suggest the following:
Medical teaching mannequins; medical teaching facial mannequins; DOWNLOADABLE software AND RECORDED SOFTWARE for use with medical teaching mannequins and medical syringes associated therewith, namely, software for analyzing, collecting, organizing, transmitting, storing and sharing medical assessment and diagnostic data and information from medical teaching mannequins injected by medical syringes (Class 9).
Please let me know if that’s acceptable, and if so, I’ll get that change made and get it back in the queue for publication.
Regards,
Jim Griffin
James T. Griffin
Examining Attorney, Law Office 103
United States Patent & Trademark Office
571-272-9169