IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of:
`
`Amihay ER%fiMAN
`
`Appln. No.:
`
`L0/484,623
`
`Filed:
`
`June L5, 2004
`
`Atty. Docket:
`
`ERfifiMAN=lA
`
`Confirmation Vo.:
`
`7402
`
`Art Unit:
`
`l6l6
`
`Examiner: Mei Ping CHUI
`
`)
`)
`
`)
`)
`
`)
`)
`
`) Washington, D.C.
`)
`
`)
`For: METEODS AND COMPOS T ONS
`FOR TRTATIVG FUNGAP NEfiCT ONS )
`
`August 5, 2009
`
`AMENDMENT
`
`lonorable Commissioner for Patents
`J.S. Patent and Trademark O""ice
`Custome_ Service Window
`
`Qandolph Building, Mail Stop Amendment
`401 Dulany Street
`Alexandria, VA 22314
`
`Sir:
`
`Responsive to the o""ice Action of March 5, 2009,
`
`please amend as
`
`follows:
`
`Amendments to the Claims are re"
`
`ected in the
`
`listing of
`
`claims which begins on page 2 of
`
`this paper.
`
`Remarks/Arguments begin on page
`
`o‘ this paper.
`
`CFAD v. Anacor, |PR201 5-01776 ANACOR EX. 2156 - 1/21
`
`CFAD v. Anacor, IPR2015-01776 ANACOR EX. 2156 - 1/21
`
`
`
`In re Application of:
`
`Amihay ER%fiMAN
`
`Appln. No.:
`
`L0/484,623
`
`Filed:
`
`June L5, 2004
`
`Atty. Docket:
`
`ERfifiMAN=lA
`
`Confirmation Vo.:
`
`7402
`
`Art Unit:
`
`l6l6
`
`Examiner: Mei Ping CHUI
`
`)
`)
`
`)
`)
`
`)
`)
`
`) Washington, D.C.
`)
`
`)
`For: METEODS AND COMPOS T ONS
`FOR TRTATIVG FUNGAP NEfiCT ONS )
`
`August 5, 2009
`
`AMENDMENT
`
`lonorable Commissioner for Patents
`J.S. Patent and Trademark O""ice
`Custome_ Service Window
`
`Qandolph Building, Mail Stop Amendment
`401 Dulany Street
`Alexandria, VA 22314
`
`Sir:
`
`Responsive to the o""ice Action of March 5, 2009,
`
`please amend as
`
`follows:
`
`Amendments to the Claims are re"
`
`ected in the
`
`listing of
`
`claims which begins on page 2 of
`
`this paper.
`
`Remarks/Arguments begin on page
`
`o‘ this paper.
`
`CFAD v. Anacor, |PR201 5-01776 ANACOR EX. 2156 - 1/21
`
`CFAD v. Anacor, IPR2015-01776 ANACOR EX. 2156 - 1/21
`
`
`
`Appln. No. LO/484,623
`Amendment dated August 5, 2009
`Reply to 0 “ice Action o: March 5, 2009
`
`Amendments to the Claims
`
`“his listing o‘ claims will
`
`replace all prior
`
`versions, and listings, o: claims in the application:
`
`Listing of Claims:
`
`1
`
`(Previously Presented).
`
`A method for treating
`
`‘ungal
`
`in*ec:ions comprising administering to an animal or
`
`plant a""lic-ed with a ‘ungal
`
`in‘ection an e
`
`"ective amount of
`
`phenylboronic acid or a water soluble derivative thereo:, said
`
`water solub'e derivative having substantially similar or
`
`be:te* anti‘ungal properties ‘or plants or animals as
`
`phenylboronic acid.
`
`2
`
`(Original).
`
`The method according to claim 1
`
`wherein the ‘unga'
`
`injection results from injection with a
`
`fungus selec-ed "com _he group consisting o: T.
`
`rubrum, C.
`
`parapsilosis, B. cinerea, and C. heterostrophus.
`
`3
`
`(Original).
`
`The method according to c'aim
`
`wherein the phenylboronic acid or water soluble de”ivat’ve
`
`thereo: is administered topically.
`
`4
`
`(Currently Amended).
`
`The method according to
`
`claim 1 wherein the derivative—eé—phenylboronic acid or
`
`derivative thereof is selected from compounds o_ the jormula:
`
`CFAD v. Anacor, |PR201 5-01776 ANACOR EX. 2156 - 2/21
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`CFAD v. Anacor, IPR2015-01776 ANACOR EX. 2156 - 2/21
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`
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`Appln. No. LO/484,623
`Amendment dated August 5, 2009
`Reply to O"”ice Action of March 5, 2009
`
`HO
`
`OH\/
`
`wherein R4, R2, R3, R4, and R5 are individually
`
`selected from the group consisting of hydrogen, halogen,
`
`amino, me:1anesul‘ony‘, methoxycarbonyl, substituted or
`
`ursubs-itJ-ed 'ower a'kyl
`
`(cyfx carbon atoms), substituted or
`
`ursubs-itJ-ed 'ower a'koxy (cywg carbon atoms), substituted or
`
`ursubs-it;-ed aryl
`
`(Cg—CQ carbon atoms), substituted or
`
`ursubs-itJ-ed aryloxy (Cb—Cu carbon atoms), cyano, cycloalkyl,
`
`stbstituted or unsubstituted carboxy sulfate, phosphate,
`
`prosphite or hydroxy.
`
`5
`
`(Cancelled).
`
`6
`
`(Original).
`
`The method according to claim 1
`
`wherein the ‘unga'
`
`in"ec,ion is onychomycosis.
`
`7
`
`(Prev‘ous'y Rresented).
`
`A method for treating
`
`‘ungal
`
`in‘ections in an animal or plant comprising
`
`administering to a plant or an animal
`
`a ”licLed with a fungal
`
`infection an e’
`
`‘ective amount o: a compound selected from
`
`compounds o_ the jormula:
`
`(OI-1) 7-3-R
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`CFAD v. Anacor, |PR201 5-01776 ANACOR EX. 2156 - 3/21
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`CFAD v. Anacor, IPR2015-01776 ANACOR EX. 2156 - 3/21
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`
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`Appln . No. L0/484,623
`Amendment dated August 5, 2009
`f March 5, 2009
`Rep_y to 0 “ice Action o
`
`wherein:
`
`R is substituted or unsubstituted phenyl,
`
`naphthalene, or phenanthrene,
`
`or has one of the following
`
`formulas:
`
`(2)
`
`(3)
`
`(M
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`CFAD v. Anacor, |PR201 5-01776 ANACOR EX. 2156 - 4/21
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`CFAD v. Anacor, IPR2015-01776 ANACOR EX. 2156 - 4/21
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`
`
`(5)
`
`(6)
`
`(7)
`
`App;n. No. L0/484,623
`Amendment dated August 5, 2009
`Rep_y to 0 “ice Action of March 5, 2009
`
`R1
`|
`6\,X
`1
`2/ \R1
`
`|R
`
`1
`
`R1
`/L
`R«—4\3
`l
`R1
`
`T‘
`2
`j /R1 ‘\*
`
`
`
`R1
`
`R1
`
`L
`
`R
`\4/ 1
`L
`6/ \R1
`IL1
`
`TM
`R1\/3\4/R1
`|
`5\R
`
`1
`
`7/6\R1
`|
`
`R1
`
`\1
`
`/8
`R1
`
`_ 5 _
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`CFAD v. Anacor, |PR201 5-01776 ANACOR EX. 2156 - 5/21
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`CFAD v. Anacor, IPR2015-01776 ANACOR EX. 2156 - 5/21
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`
`
`App;n. No. L0/484,623
`Amendment dated August 5, 2009
`Rep_y to 0 “ice Action of March 5, 2009
`
`R
`
`R
`
`I"
`Rp\\Z//3
`R1\]
`\
`*”
`/
`
`8
`
`\R1
`
`I"
`4\\T//R1
`E\R1
`R
`
`1
`
`19>
`
`(lm
`
`T1
`R1\2/3
`
`T1
`4\5/R1
`
`/1
`
`R1
`
`6\
`
`R1
`
`/ 7\R1
`
`R1
`2
`
`7
`I
`R1
`
`T1
`3\4/R1
`l
`6/5\R1
`I
`R1
`
`1
`
`R
`A
`
`8|
`
`R1
`
`*<
`
`_
`
`6 _
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`CFAD v. Anacor, |PR201 5-01776 ANACOR EX. 2156 - 6/21
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`CFAD v. Anacor, IPR2015-01776 ANACOR EX. 2156 - 6/21
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`
`
`2009
`
`(ll)
`
`(12)
`
`H3)
`
`n. No.
`
`App;
`Amendment dated August 5, 2009
`March 5,
`Rep_y to 0 "ice Action 0:
`
`L0/484,623
`
`O
`
`N
`
`l,/
`
`~\\N
`
`\\\*|
`
`\\\
`
`///
`
`R1
`
`R1
`
`R1
`
`3
`
`7
`
`|R
`
`1
`
`R1
`
`\2
`R1 /
`\\B
`/
`
`R1
`
`CFAD v. Anacor, |PR201 5-01776 ANACOR EX. 2156 - 7/21
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`CFAD v. Anacor, IPR2015-01776 ANACOR EX. 2156 - 7/21
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`Appln. No. LO/484,623
`Amendment dated August 5, 2009
`Reply to O"”ice Action of March 5, 2009
`
`R1\
`/2
`R1—1\*
`
`R1
`I
`R1\3/4\5/R1
`|6
`
`\R1
`
`7
`
`R1
`
`(14)
`
`wherein:
`
`ring SYStem (2),
`
`(3),
`
`(4),
`
`(5),
`
`(6),
`
`(7),
`
`(8),
`
`(9),
`
`(l0),
`
`(13) or
`
`(14)
`
`is aromatic or nonaromatic;
`
`the atom center * is (R) or
`
`(S)
`
`in the case o?
`
`chiral compounds;
`
`positions l, 2, 3, 4, 5, 6,
`
`7 and 8 each
`
`independently is C, N, O or S;
`
`R1
`
`through R6 each independently is a lone pair, H,
`
`3(OH)2, a halogen atom, CF3, CH2CF3, CCl3, CH2CCl3, C3r&
`
`CH2C3r3, NO2,
`
`lower alkyl, COZH, CHCHCOOH, CH2CH2CH2COOH, SO3H,
`
`PO3H, OSO3H, OPO3H, OH, NH2, CONH2, COCH3, OCH3, or phenyl
`
`boronic acid.
`
`R/
`
`ILS H, CF3, CCl3, CBJC3, CHQCF3, CH2CCl3, CHQCBJC3, N02,
`
`COCH3, OCH3,
`
`lower alkyl, cyclic alkene, cyclic alkene
`
`substituted with one or more substi:uen:s R3, heterocyclic
`
`alkene, or heterocyclic alkene subs_iLu_ed with one or more
`
`substituent R8;
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`CFAD v. Anacor, |PR201 5-01776 ANACOR EX. 2156 - 8/21
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`CFAD v. Anacor, IPR2015-01776 ANACOR EX. 2156 - 8/21
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`
`
`Appln. No. LO/484,623
`Amendment dated August 5, 2009
`Reply to O"”ice Action of March 5, 2009
`
`each R8 is independently H, 3(OH)2,
`
`a halogen atom,
`
`CF3, CCL3, CBJC3, CH2CF3, CH2CCl3, CHQCBI3, N02,
`
`lower alkyl, OH,
`
`NH2, N(CH3)2, N(CH3)CH2CH3, NHCOCP3, COOH, CHCHCOOH,
`
`CHZCHZCHZCOOH, COCH3, OCH3, pheny; boronic acid, CONH2,
`
`CONHCH2COOH, CONHCH2CONH2, CONHCP2CONHCH2Rm,
`
`SOZNHZ,
`
`SO2NHCH2COOH,
`
`SO2NHC 2CONH2, or SO2NHCH2CONHCH2Rufi
`
`X is O, N , NCH3 or
`
`Y is OH, NH2, NCH3, N(CH3)2, NHCOCH3 or NHCOCHZCOOH;
`
`R9 is H, a halogen atom, CH3, CCl3, C3r3, CH2CF&
`
`CH2CCl3, CH2C3r3, NO2, COQH, CHCHCOOH, CH2CH2CH2COOH, SO3H, PO3H,
`
`OSO3H, OPO3{, OH, NH2, CONH2, COCH3, OCH3, phenyl boronic acid,
`
`lower a1ky', or a side chain of a standard amino acid; and
`
`RN is a side chain of a standard amino acid.
`
`8
`
`(Currently Amended).
`
`The method according to
`
`claim 4 wherein Ri, R2, R3, R4, and R5, are individually
`
`selected from the group consisting of hydrogen,
`
`fluoro,
`
`chloro, bromo,
`
`iodo, acetyl, and methoxyT—aHd—thiepheHe.
`
`CFAD v. Anacor, |PR201 5-01776 ANACOR EX. 2156 - 9/21
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`Appln. No. LO/484,623
`Amendment dated August 5, 2009
`Reply to O"”ice Action of March 5, 2009
`
`9
`
`(Currently Amended).
`
`The method according to
`
`claim 8 wherein the compound is eeleeted—érem—the—greup
`
`eefieietifig—eé—3—chloro—4—fluoro phenyl boronic acidT—afid—4—
`
`.
`
`3
`
`1
`
`3}
`
`.
`
`.i.
`
`;O (Cancelled).
`
`(Previously Presented).
`
`The method according to
`
`claim 7 wherein the ‘ungal
`
`in‘ection is an in‘ection o‘
`
`dermatophyte fungi.
`
`12
`
`(Previously Presented).
`
`The method according to
`
`claim ll wherein the compound is applied topically.
`
`l3 (Currently Amended).
`
`The method according to
`
`claim 1 wherein the phenylboronic acid or derivative thereof
`
`is selected from the group consisting o“ ?—‘ormyl
`
`phenylboronic acid, 3—chloro—4—fluoro phenylboronic acid, 2-
`
`acety; phenylboronic acid, 4—vinyl phenylboronic acid,
`
`3—iodo—
`
`phenylboronic acid, 4—iodo phenylboronic acid and 4—vinyl
`
`phenylboronic acid.
`
`l4 (Previously Presented).
`
`The method according to
`
`claim l3 wherein the phenylboronic acid is 2—‘ormyl
`
`phenylboronic acid.
`
`CFAD v. Anacor, |PR20‘|5-01776 ANACOR EX. 2156 - 10/21
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`CFAD v. Anacor, IPR2015-01776 ANACOR EX. 2156 - 10/21
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`Appln. No. 10/484,623
`Amendment dated August 5, 2009
`Reply to O"”ice Action of March 5, 2009
`
`15
`
`(Previously Presented).
`
`The method according to
`
`claim 1 wherein the fungal
`
`infection is an infection o‘
`
`dermatophyte fungi.
`
`16 (Previously Presented).
`
`The method according to
`
`claim 1 wherein the animal or plant a "licted with a fungal
`
`infection is an animal
`
`a
`
`'icLed with a fungal
`
`infection.
`
`17
`
`(Previously Presented).
`
`The method according to
`
`claim 16 wherein the funga'
`
`infection is an infection o‘
`
`dermatophyte fungi.
`
`18
`
`(Previously Presented).
`
`The method according to
`
`claim 7 wherein the animal or plant a "licted with a fungal
`
`infection is an animal
`
`a "licted with a fungal
`
`infection.
`
`19 (Previously Presented).
`
`The method according to
`
`claim 18 wherein the fungal
`
`infection is an infection o‘
`
`dermatophyte fungi.
`
`20
`
`(New).
`
`The method according to claim 7 wherein
`
`the derivative of phenylboronic acid is selected from the
`
`group consisting of 3—nitrophenylboronic acid, 3-
`
`aminophenylboronic acid, and pentafluoroboronic acid.
`
`21
`
`(New).
`
`A me,hod "or
`
`,reaLing "ungal
`
`infections
`
`comprising administering to an animal or plant afflicted with
`
`CFAD v. Anacor, |PR20‘|5-01776 ANACOR EX. 2156 - 11/21
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`
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`Appln. No. LO/484,623
`Amendment dated August 5, 2009
`Reply to 0 “ice Action of March 5, 2009
`
`a fungal infection an e
`
`’ective amount o’ 7-Pormyl
`
`phenylboronic acid.
`
`22
`
`(New).
`
`The method according to claim 2l, wherein
`
`the fungal infection is onychomycosis.
`
`23 (New).
`
`A me,hod "or
`
`treating "ungal
`
`infections
`
`comprising administering :o an animal or plant afflicted with
`
`a fungal infection an e
`
`”ective amount of 4—iodo-
`
`phenylboronic acid.
`
`24
`
`(New).
`
`The method according to claim 23, wherein
`
`the fungal
`
`infection ‘s onychomycosis.
`
`CFAD v. Anacor, |PR20‘|5-01776 ANACOR EX. 2156 - 12/21
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`CFAD v. Anacor, IPR2015-01776 ANACOR EX. 2156 - 12/21
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`Appln. No. 10/484,623
`Amendment dated August 5, 2009
`Reply to 0 “ice Action of March 5, 2009
`
`REMARKS
`
`Claims 1-4, 6-9 and 11-24 presently appear in this
`
`case.
`
`No claims have been allowed.
`
`The O""icial Action of
`
`March 5, 2009, has now been carefully studied.
`
`Reconsideration and allowanc
`
`ar
`
`h roby r sp ctfully urged.
`
`Qriefly,
`
`the present invention relates to a method
`
`for treating fungal
`
`infections by administering to an animal
`
`or plant a ”iicLed with a fungai
`
`infection, an effective
`
`amount of phenylboronic acid or a water soluble derivative
`n
`thereo'.
`
`infection is
`
`"n a preferred embodiment,
`
`the fungal
`
`onychomycosis.
`
`r j
`
`he examiner has objected to claim 5 as it does not
`
`depend from a previous claim.
`
`Claim 5 has now been deleted in favor of new claim
`
`20, which is identical to claim 5 and continues to depend from
`
`claim 7.
`
`Since claim 7 is previous to claim 20,
`
`this
`
`objection has now been obviated.
`
`Claims 4, 5, 8, 9, 13 and 14 have been rejected
`
`under 35 USC 112, second paragraph, as being indefinite.
`
`The
`
`examiner states that claim 4 specifies a formula “or “the
`
`derivative of phenylboronic acid” but it reads on
`
`phenylboronic acid, which is not a derivative.
`
`CFAD v. Anacor, |PR20‘|5-01776 ANACOR EX. 2156 - 13/21
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`CFAD v. Anacor, IPR2015-01776 ANACOR EX. 2156 - 13/21
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`
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`Appln. No. LO/484,623
`Amendment dated August 5, 2009
`Reply to 0 “ice Action of March 5, 2009
`
`Claim 4 has now been amended to specify that the
`
`formula defines the “phenylboronic acid or derivative
`
`thereof.” This term has antecedent basis in claim l and
`
`covers everything within the scope of the formula,
`
`thus
`
`obviating this part of the rejection.
`
`She examiner considers claim 5 to be indefinite
`
`because it reads on compounds that do not appear in any of the
`
`preceding c'aims l—4.
`
`Claim 5 has now been deleted in favor of new claim
`
`20. Claim 20 is clearly dependent from claim 7, which has
`
`antecedent basis for the recitation o" 3—nitro phenylboronic
`
`acid. Accordingly,
`
`this part of the rejection has now been
`
`obviated.
`
`The examiner states that claim 8
`
`is indefinite
`
`because it includes thiophene but there is insufficient
`
`antecedent basis therefore in claim 4.
`
`Claim 8 has now been amended to delete thiophene,
`
`thus obviating this part of
`
`the rejection.
`
`The examiner states that claim 9
`
`is indefinite
`
`because it reads on 4—viny; phenylboronic acid but there is no
`
`antecedent basis theretor in claim 8.
`
`CFAD v. Anacor, |PR20‘|5-01776 ANACOR EX. 2156 - 14/21
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`CFAD v. Anacor, IPR2015-01776 ANACOR EX. 2156 - 14/21
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`
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`Appln. No. LO/484,623
`Amendment dated August 5, 2009
`Reply to 0 “ice Action of March 5, 2009
`
`Claim 9 has now been amended to delete reference to
`
`4—vinyl phenylboronic acid,
`
`thus obviating this par- of the
`
`rejection.
`
`She examiner states that claim l3 is inde"iniLe
`
`or
`
`the same reason as discussed above for claim 4.
`
`Claim l3 has now been amended to specify that it is
`
`referring to the phenylboronic acid or derivative thereof in
`
`accordance with claim 1,
`
`thus obviating this part of
`
`the
`
`rejection in the same way that the amendment
`
`to claim 4
`
`obviated that one.
`
`As
`
`to claim 14,
`
`this part of the rejection has been
`
`obviated by the amendment
`
`to claim 13 discussed above.
`
`According, reconsideration and withdrawal of the
`
`entire rejection under the second paragraph of 35 USC ll2 is
`
`respectfully urged.
`
`Claims l—4, 6-9, ll,
`
`l2, and l4—l9 have been
`
`rejected under 35 USC lO3(a) as being unpatentable over
`
`3rehove in view o‘ ?lias and Lloyd.
`
`The examiner states that
`
`Brehove teaches a method of topical application for treating
`
`human fingernail and toenail infections, i.e., onychomycosis.
`
`The examiner stat s 3r hov
`
`t achcs that topical
`
`fungicidal
`
`'1
`formulations comprising at least one member from the class oi
`
`organoboron compounds that have been shown to exhibit biocidal
`
`activity, such as 2, 2’-(alkyldioxy)bis-(alkyl-l, 3, 2-
`
`CFAD v. Anacor, |PR20‘|5-01776 ANACOR EX. 2156 - 15/21
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`Appln. No. LO/484,623
`Amendment dated August 5, 2009
`Reply to O"”ice Action of March 5, 2009
`
`dioxyborinane) or 2, 2’—oxybis(alkyl—l, 3, 2—dioxyborinane).
`
`The examiner recognizes that 3rehove does not
`
`teach use of
`
`phenylboronic acid ‘or treating onychomycosis.
`
`She examiner
`
`states that Elias teaches a mechod jor enhancing penetration
`
`o: physiologically active substances for cutaneous or
`
`transdermal delivery by employing an epithelial barrier
`
`disrupting amount o: at least one inhibi_or o_ groups such as
`
`acid lipase.
`
`The examiner states that Elias teaches that the
`
`acid lipase inhibitor may include boronic acids including
`it
`
`pheny'boronic acid.
`
`‘he examiner states that Lloyd teaches a
`
`'iquid biocida' composition comprising an organoboron compound
`
`for the contro'
`
`o
`
`"ungi and bacteria and that boronic acids
`
`are known inhibitors o pro-eoly_ic enzymes.
`
`The examiner
`
`states that Lloyd shows that compositions containing
`
`phenylboronic acid at various concentrations show antifungal
`
`properties, citing page 10, example 2 and page ”, table 2.
`
`The examiner concludes that one o: ordinary ski" in the art
`
`would have been motivated to choose organoboron compounds ;or
`
`treating onychomycosis bocaus Brchovo t ach s that
`
`organoboron compounds are e
`
`ec-ive and that it would be
`
`obvious to use phenylboronic acid as the organoboron compound
`
`because it can disrupt the epithelium barrier function in a
`
`host and enhances the pene_ra_ion of therapeutic known or
`
`potential molecules delive_y through nails.
`
`The examiner
`
`CFAD v. Anacor, |PR20‘|5-01776 ANACOR EX. 2156 - 16/21
`
`CFAD v. Anacor, IPR2015-01776 ANACOR EX. 2156 - 16/21
`
`
`
`Appln. No. LO/484,623
`Amendment dated August 5, 2009
`Reply to O"”ice Action of March 5, 2009
`
`states that Lloyd also shows that phenylboronic acid has
`
`antifungal properties and therefore is a functional equivalent
`
`organoboron compound for treating fungal
`
`infection. This
`
`rejection is respectfully traversed.
`
`Brehove only teach s the troatm nt o: fungal
`
`infection onychomycosis by using certain specitic
`
`dioxaborinanes.
`
`There is no disclosure whatsoever about
`
`the
`
`use o" boronic acid derivatives. While the examiner
`
`characterizes Brehove as teaching members of _he class of
`
`organoboron compounds as having antifungal activity,
`
`this is a
`
`vast overstatement.
`
`The specific dioxaborinanes o‘
`
`Qrehove
`
`may be organoboron compounds but Brehove certainly would
`
`create no suggestion that the extremely structurally
`
`dissimilar phenylboronic acid derivates of the preset
`
`invention might possibly have the same kind o: properties.
`
`Elias teaches that phenyboronic acid is an acid
`
`lipase inhibitor and thus enhances penetration of
`
`physiologically active substances for cutaneous or transdermal
`
`delivery. However, H'ias teaches absolutely nothing about any
`
`antifungal property of pheny'boronic acid derivates.
`
`The only
`
`reference used in the rejection that allegedly teaches
`
`antifungal activity o: phenylboronic acid and its derivates is
`
`Lloyd. However, Lloyd does not
`
`teach that phenylboronic acid
`
`has antifungal activity.
`
`?xample 7 ot Lloyd shows that when a
`
`CFAD v. Anacor, |PR20‘|5-01776 ANACOR EX. 2156 - 17/21
`
`CFAD v. Anacor, IPR2015-01776 ANACOR EX. 2156 - 17/21
`
`
`
`Appln. No.
`Amendment dated August 5, 2009
`Reply to 0 “ice Action of
`March 5,
`
`l0/484,623
`
`2009
`
`malt extract/agar solid media containing a phenyl or
`
`substituted phenyl
`
`boronic acid is plugged with actively
`
`growing wood decay
`
`fungi,
`
`the various phenylboronic acid
`
`derivatives,
`
`including
`
`fluoro—phenylboronic acid,
`
`inhibit
`
`radial growth o:
`
`the plug.
`
`There is no claim that these
`
`compounds can kill
`
`fungus.
`
`There is a disclosure that the
`
`compounds kill termites and thus they are appropriately called
`
`biocides but
`
`their antifungal activity is to protec
`
`‘FOIT1
`
`"ungi without any claim ot
`
`killing fungi
`
`(note,
`
`timber
`
`for
`
`examp'e,
`
`claim l0 of
`
`Lloyd as originally “l 'ed).
`
`Accordingly,
`
`one 0"
`
`ordinary skil'
`
`in the art
`
`reading th s
`
`thr
`
`II- r nc s would find no reason to
`
`substitute a phenylboronic acid derivative
`
`for the
`
`dioxaborinane compounds o:
`
`Brehove.
`
`There would be absolutely
`
`no reason to believe that such compounds would kill
`
`T.
`
`rubrum,
`
`for example.
`
`The examiner's statement that
`
`“phenylboronic
`
`acid can be used as a functiona' equivalent organoboron
`
`compound "or
`
`treating "ungal
`
`infection” is inappropriate in
`
`view of the extreme structural dissimilarity and the fact that
`
`there is no disc'osure o” "ungicidal activity for
`
`phenylboronic acid in any of the references of record.
`
`The
`
`fact
`
`that phenylboronic acid can protect timber from infection
`
`by a fungus which is totally dissimilar to the type o" "ungus
`
`involved with onychomycosis would not create a reasonable
`
`l8
`
`CFAD v. Anacor, |PR20‘|5-01776 ANACOR EX. 2156 - 18/21
`
`CFAD v. Anacor, IPR2015-01776 ANACOR EX. 2156 - 18/21
`
`
`
`Appln. No. LO/484,623
`2
`Amendment dated August 5,
`Reply to O"”ice Action of M
`
`O09
`
`arch 5, 2009
`
`expectation for those of
`
`ordinary skill
`
`in the ar'
`
`that such a
`
`compound could be used
`
`to treat onychomycosis by
`
`topical
`
`application. Without s
`
`JCh a reasonable expectation o;
`
`SUCCESS ,
`
`no prima facie case o:
`
`obvious has been established.
`
`Reconsideration and withdrawal
`
`o
`
`this rejection are there:
`
`fore
`
`respectfully urged.
`
`Claims 5 and l3 have been rejected u
`
`qder 35 USC lO3
`
`as being unpatentable over Brehove in view o‘
`
`filias and Lloyd
`
`and
`
`Ul” -her in view o‘
`
`Westin.
`
`The examiner states that
`
`Westin
`
`teaches various arylboronic acids that can be used as
`
`inhibitors o:
`
`beta-lactamase in an animal.
`
`The examiner
`
`states tha
`
`- Westin teaches that several species o
`
`"ungi
`
`that
`
`produce beta—lactams can be
`
`inhibited by phenylboronic acid,
`
`citing colimn 2,
`
`lines 30-32.
`
`Therefore,
`
`the examiner
`
`considers it obvious to use
`
`such compounds and the process
`
`made obvious by Brehove
`
`in view o‘
`
`Tlias and Lloyd. This
`
`rejection is respect:
`
`fully traversed.
`
`?espect'
`
`‘ul "y,
`
`the
`
`examiner's characterization o:
`
`n
`
`Westin is totally incorrect
`
`jhe examiner states that fungi
`
`tha
`
`prodgce beta—lactams can be inhibited by phenylboronic
`
`acid or its derivatives, citing column 2,
`
`line 30-32, o:
`
`Westin.
`
`iowever,
`
`this portion of Westin states nothing of the
`
`sort Westin only teaches that phenylboronic acid can serve
`
`as an inhibitor of beta-lactamase, which is an enzyme that
`
`_]_9_
`
`CFAD v. Anacor, |PR20‘|5-01776 ANACOR EX. 2156 - 19/21
`
`CFAD v. Anacor, IPR2015-01776 ANACOR EX. 2156 - 19/21
`
`
`
`Appln. No. LO/484,623
`Amendment dated August 5, 2009
`Reply to 0 “ice Action of March 5, 2009
`
`acts on beta—lactams.
`
`It is the beta—lactamase enzyme in a
`
`beta—lactamase fungicide that may attack beta—lactams.
`
`Inhibiting beta—lactamase does not inhibit fungal growth or
`
`kil’
`
`fungi;
`
`indeed, it protects fungal growth.
`
`A known type
`
`o
`
`"ungicide involves beta—lactamase.
`
`Thus,
`
`a beta—lactamase
`
`inhibitor would only protect
`
`the fungus from such fungicides
`
`by inhibiting the active ingredient of the fungicide.
`
`There
`'1
`
`is nothing in Westin that would suggest that an inhibitor o:
`
`the beta—lactamase enzyme would in any way be effective to
`
`kill fungi that produce beta-lactams.
`
`Accordingly, claims 5 and 13 are allowable not only
`
`for the same reasons as the claims from which they depend, but
`
`also because Westin does not
`
`teach or suggest anything about
`
`the use o:
`
`the arylboronic acid compounds therein as a
`
`fungicide. Reconsideration and withdrawal of this rejection
`
`ar
`
`th r for
`
`r sp ctfully urged.
`
`She examiner has criticized applicant's declaration
`
`under 37 CFR 1.132, previous submitted.
`
`"n view o" the fact
`
`that the examiner has not established any prima facie case o:
`
`'1
`
`obvious for -he reasons discussed above, it is not necessary
`
`for applicant to rebut the examiner's criticisms of the
`
`declaration at this time. However,
`
`this should not be taken
`
`as acquiescence in the examiner's position in this regard.
`
`CFAD v. Anacor, |PR2015-O1 776 ANACOR EX. 2156 - 20/21
`
`CFAD v. Anacor, IPR2015-01776 ANACOR EX. 2156 - 20/21
`
`
`
`Appln. No. L0/484,623
`Amendment dated August 5, 2009
`Reply to O"”ice Action of March 5, 2009
`
`It is submitted
`
`that all oj
`
`_he claims now present
`
`in the case clearly d
`
`Ilfl
`
`ov r th ref r nc s of record and
`
`fully comply with 35 USC ll
`
`2. Reconsideration and allowance
`
`ar
`
`th r -or
`
`arn stly so’ici:ed.
`
`?espect‘ul'y submitted,
`
`_f>{OWDY AND N*'. MARK, P.L.L.C.
`
`Attorneys for Applicant
`
`By:
`
`/rlb/
`Qoger L. Browdy
`Qegistration No. 25,618
`
`RL3:jhw
`Telephone No.:
`Facsimile No..
`
`(202) 628-5197
`(202) 737-3528
`
`_
`
`_
`
`CFAD v. Anacor, |PR20‘|5-01776 ANACOR EX. 2156 - 21/21
`
`CFAD v. Anacor, IPR2015-01776 ANACOR EX. 2156 - 21/21
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