`AUROBINDO,
`BRECKENRIDGE,
`VENNOOT, SANDOZ,
`SUN
`IPR2014-01126-1004, p. 1
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`
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`Serial Number: 08/818,688
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`Art Unit: 1209
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`Page 2
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`1.
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`An examiner‘s amendment to the record appears below. Should the changes andr‘or
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`additions be unacceptable to applicant, an amendment may be filed as provided by 37 CFR 1.312.
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`To ensure consideration of such an amendment, it MUST be submitted no later than the payment
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`of the issue fee.
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`Authorization for thisexaminer's amendment was given in a telephone intennew with Mr.
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`Mark Cohen on 11’271'98.
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`2.
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`3.
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`II |
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`_.._
`_
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`Ml...“-
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`1
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`The application has been amended as follows:
`,
`,
`_/ ,/
`_
`.
`
`-
`In clalm 9l line 2 IS deleted and|-- contains at least 90% (wiw) R stereousomer --
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`isinserted therefor.
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`The following is an examiner's statement of reasons for allowance: Instant claims are
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`directed anticonvulsant enantiomeric amino acid derivatives in the method of treating CNS
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`disorders. The closest prior arts are CohenGJS 5,654,301) and Anderson et al( J.Am.Chern.
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`Soc. 1967). Cohen teach structurally similar compounds as claimed herein for similar
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`pharmaceutical method. The difference between the reference and herein claimed compounds is
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`the definition ofRQ, R, in the reference. The reference never teach or suggest R1, R3 to be an
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`ether, as against ether in herein claims. Anderson et al at the same position teach hydroxy group,
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`but fails to mention the claimed utility. There is no motivation to one of ordinary skill in the art to
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`arrive at the claimed compounds for the claimed method of use, from the above cited references
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`alone or in combination, and hence the claims are patentable.
`
`I
`
`|PR2014-01126, Exhibit 1004, p. 2
`(cid:44)(cid:51)(cid:53)(cid:21)(cid:19)(cid:20)(cid:23)(cid:16)(cid:19)(cid:20)(cid:20)(cid:21)(cid:25)(cid:15)(cid:3)(cid:40)(cid:91)(cid:75)(cid:76)(cid:69)(cid:76)(cid:87)(cid:3)(cid:20)(cid:19)(cid:19)(cid:23)(cid:15)(cid:3)(cid:83)(cid:17)(cid:3)(cid:21)
`
`(cid:3)
`
`l |
`
`|
`
`i
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`
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`Serial Number: 081’8 1 8,688
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`Art Unit: 1209
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`Page 3
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`Any comments considered necessary by applicant must be submitted no later than the
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`payment of the issue fee and, to avoid processing delays, should preferably accompany the issue
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`fee. Such submissions should be clearly labeled "Comments on Statement of Reasons for
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`Allowance."
`
`4.
`
`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to S.Kumar whose telephone number is (703) 308-4519.
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`“V
`sanitation» KUMAH
`Farmer EXAMINER
`- snoun 12mm
`
`S .Ku mar
`
`January 28, 1998
`
`_ |PR2014-01126, Exhibit 1004, p. 3
`(cid:44)(cid:51)(cid:53)(cid:21)(cid:19)(cid:20)(cid:23)(cid:16)(cid:19)(cid:20)(cid:20)(cid:21)(cid:25)(cid:15)(cid:3)(cid:40)(cid:91)(cid:75)(cid:76)(cid:69)(cid:76)(cid:87)(cid:3)(cid:20)(cid:19)(cid:19)(cid:23)(cid:15)(cid:3)(cid:83)(cid:17)(cid:3)(cid:22)
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`(cid:3)
`
`
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