UNI 1 l;D S 1/ues PA IENI AND TRADI:MARK OPTICE
`
`(JNITFD STATES DEPARTMENT OF (‘.0MMER(‘E
`United States Patent and Tradcntark Oflicc
`Addn:s.s: (,‘().VlMlSSl()Nl-R l-OR P/\'l‘l£N'I'S
`P.0. l)u.\ I-$50
`I\lc.\:II)dri:L \'irgini:l 223i 3- N50
`w\\'w.usplo gm
`
`Al"PI.l(?ATl()N NO.
`
`l‘II.lN(i l).'\TI-I
`
`HRST -.\'.»\MliD INVliN'l‘()R
`
`A’I'I‘OR;\1iY l)()('I(liT N0.
`
`(‘()Nl'1RM/\TlO.\' N0.
`
`I3/03-1.3-1()
`
`02/24/20] I
`
`Alan II. Aucrhach
`
`(‘(iR50()llTS(‘N'I'l
`
`I597
`
`27777
`7590
`PIIII.IPS.J0llNSON
`JOHNSON & JOHNSON
`
`11/25/2011
`
`ONE JOHNSON & JOHNSON PLAZA
`NEW BRUNSWICK, NJ 08933-7003
`
`;
`
`.
`
`_.
`
`“UL SAN MING R
`
`‘
`__
`V
`V
`_
`_
`)
`
`’’‘‘’’‘R M ““““‘
`I628
`
`ll/25/201 l
`
`l;'Ll;'("I‘RONI(‘
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e-mail address(es):
`
`jnjuspalcnt@cOms.jnj.cOm
`lh0wd@its.jnj .cOm
`gsanchc @ iIs.jnj .cOm
`
`PTOI.-90A (Rev. 04/07)
`
`ARGENTUM EX1037
`ARGENTUM EX1037
`
`Page 1
`
`Page 1
`
`

`
`Office Action Summary
`
`Application No.
`
`Applicant(s)
`
`13f034,340
`
`Examiner
`
`SAN—MlNG HUI
`
`AUERBACH ET AL.
`
`M Uni,
`
`1628
`
`-- The MAHJNG DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 1 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`— Extensions of time may be available under the provisions ol 3? CFR 1.136{a).
`In no event. however. may a reply be timely filed
`after SIX (6) MDNTH8 from the mailing date of this communication.
`ll NO period for reply is specified above. the maximum statutory period will apply and will expire SIX {6} MONTHS from the mailing date of this communication.
`—
`— Failure to reply within the set or extended period [or reply will. by statute. cause the application to become ABANDONED (35 U.S.C_ § 133).
`Any reply received by the Dllice later than three months after the mailing date oi this communication. even if timely filed. may reduce any
`earned patent term adjustment. See 37 CFR 1_?04(b)_
`
`Status
`
`1)|:| Responsive to communication(s) filed on
`
`2a)|:| This action is FINAL.
`
`2b)I:I This action is non-final.
`
`3)|:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`
`j; the restriction requirement and election have been incorporated into this action.
`
`4)I:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11,453 CC. 213.
`
`Disposition of Claims
`
`5)IZ Claim(s) ii-‘isiare pending in the application.
`
`5a) Of the above claim(s)
`
`isfare withdrawn from consideration.
`
`6)I:I C|aim(s) _ isiare allowed.
`
`7)I:I C|aim(s) _ isiare rejected.
`
`8)I:l Claim(s)
`
`islare objected to.
`
`9) CIaim(s) 1-36 are subject to restriction andior election requirement.
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`
`11)I:l The drawing(s) filed on
`
`isiare: a)[:l accepted or b)I:l objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheettsj including the correction is required if the drawing(s} is objected to. See 37 CFR 1.121 (d).
`
`12)I:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO—152.
`
`Priority under 35 U.S.C. § 1 19
`
`13)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`
`a)I:l All
`
`b)I:I Some * c)I:I None of:
`
`1.I:I Certified copies of the priority documents have been received.
`
`2.I:I Certified copies of the priority documents have been received in Application No. j
`
`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2(a)).
`
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Atlachn1ent(s)
`
`4) I] lnteniiew Summary (PTO—413)
`_
`P3P_9r N0(5I='M3" D319
`_
`5} I:I NOIICB 07 Inlotmal F'aT9|'ltAPPI|Ca1|0"
`6) C] Other:
`.
`
`1) El Notice of References Cited (PTO—892)
`2) D Notice of Draflsperson’s Patent Drawing Review (PTO—948]i
`3) El Information Disclosure Statementisj (PTOISBIOS)
`Paper No(s)i'lt.-1ai| Date
`US. Patent and Trademark Office
`PTOL-326 (Rev. 03-11 ji
`
`Office Action Summary
`
`Part of Paper No.t'Mail Date 201 11121
`Page 2
`
`Page 2
`
`

`
`Application/Control Number: 13fO34,34O
`
`Page 2
`
`Art Unit: 1628
`
`DETAILED ACTION
`
`Election/Restrictions
`
`Restriction to one of the following inventions is required under 35 U.S.C. 121:
`
`I.
`
`Claims 1-26, drawn to a method of treating cancer, classified in class 514,
`
`subclass 182.
`
`ll.
`
`Claims 27-36, drawn to a composition, classified in class 424, subclass
`
`401+.
`
`The inventions are distinct, each from the other because of the following reasons:
`
`Inventions II and I are related as product and process of use. The inventions can
`
`be shown to be distinct if either or both of the following can be shown: (1) the process
`
`for using the product as claimed can be practiced with another materially different
`
`product or (2) the product as claimed can be used in a materially different process of
`
`using that product. See MPEP § 806.05(h).
`
`In the instant case the composition can be
`
`used in a materially different method such as pharmacokinetic study.
`
`Restriction for examination purposes as indicated is proper because all these
`
`inventions listed in this action are independent or distinct for the reasons given above
`
`and there would be a serious search and/or examination burden if restriction were not
`
`required because at least the following reason(s) apply:
`
`The search fields for the two identified patentably distinct inventions are diverse
`
`and not necessarily overlapped. Searching for all of the inventions encompassed by the
`
`claims would impose undue burden to the examiner.
`
`Page 3
`
`Page 3
`
`

`
`Application/Control Number: 13lO34,34O
`
`Page 3
`
`Art Unit: 1628
`
`Applicant is advised that the reply to this requirement to be complete must
`
`include (i) an election of a invention to be examined even though the requirement
`
`may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing
`
`the elected invention.
`
`The election of an invention may be made with or without traverse. To reserve a
`
`right to petition, the election must be made with traverse. If the reply does not distinctly
`
`and specifically point out supposed errors in the restriction requirement, the election
`
`shall be treated as an election without traverse. Traversal must be presented at the time
`
`of election in order to be considered timely. Failure to timely traverse the requirement
`
`will result in the loss of right to petition under 37 CFR 1.144. It claims are added after
`
`the election, applicant must indicate which of these claims are readable upon the
`
`elected invention.
`
`Should applicant traverse on the ground that the inventions are not patentably
`
`distinct, applicant should submit evidence or identify such evidence now of record
`
`showing the inventions to be obvious variants or clearly admit on the record that this is
`
`the case. In either instance, if the examiner finds one of the inventions unpatentable
`
`over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C.
`
`103(a) of the other invention.
`
`Because the above restriction/election requirement is complex, a telephone call
`
`to applicant's agent to request an oral election was not made. See M.P.E.P. Sec.
`
`812.01.
`
`Page 4
`
`Page 4
`
`

`
`Application/Control Number: 13fO34,34O
`
`Page 4
`
`Art Unit: 1628
`
`Applicant is advised that the reply to this requirement to be complete must
`
`include an election of the invention to be examined even though the requirement be
`
`traversed (37 CFR 1.143).
`
`Applicant is reminded that upon the cancellation of claims to a non—elected
`
`invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one
`
`or more of the currently named inventors is no longer an inventor of at least one claim
`
`remaining in the application. Any amendment of inventorship must be accompanied by
`
`a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
`
`The examiner has required restriction between product and process claims.
`
`Where applicant elects claims directed to the product, and the product claims are
`
`subsequently found allowable, withdrawn process claims that depend from or otherwise
`
`require all the limitations of the allowable product claim will be considered for rejoinder.
`
`fl claims directed to a nonelected process invention must require all the limitations of
`
`an allowable product claim for that process invention to be rejoined.
`
`In the event of rejoinder, the requirement for restriction between the product
`
`claims and the rejoined process claims will be withdrawn, and the rejoined process
`
`claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to
`
`be allowable, the rejoined claims must meet all criteria for patentability including the
`
`requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product
`
`are found allowable, an otherwise proper restriction requirement between product
`
`claims and process claims may be maintained. Withdrawn process claims that are not
`
`commensurate in scope with an allowable product claim will not be rejoined. See MPEP
`
`Page 5
`
`Page 5
`
`

`
`Application/Control Number: 13f034,340
`
`Page 5
`
`Art Unit: 1628
`
`§ 821 .04(b). Additionally, in order to retain the right to rejoinder in accordance with the
`
`above policy, applicant is advised that the process claims should be amended during
`
`prosecution to require the limitations of the product claims. Failure to do so may result
`
`in a loss of the right to rejoinder. Further, note that the prohibition against double
`
`patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement
`
`is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to SAN—MING HUI whose telephone number is (571)272-
`
`0626. The examiner can normally be reached on Mon — Fri from 9:00 to 5:00.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Brandon Fetterolf can be reached on (571) 272-2919. The fax phone
`
`number for the organization where this application or proceeding is assigned is 571 —
`
`273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`Page 6
`
`Page 6
`
`

`
`Application/Control Number: 13fO34,34O
`
`Page 6
`
`Art Unit: 1628
`
`San—ming Hui
`Primary Examiner
`Art Unit 1628
`
`/San—ming Hui/
`Primary Examiner, Art Unit 1628
`
`Page 7
`
`Page 7
`
`

`
`Applicationfcontrol No.
`
`Index 01' Claims
`
`13034340
`
`AppIicant(s)iPalent Under
`Reexamination
`
`AUERBACH ET AL.
`
`Examiner
`
`SAN—M|NG HUI
`
`Art Unil
`
`1323
`
` Reiected
`
`Cancelled
`
`N
`
`I
`
`Non-Elected
`
`Interference
`
`A
`
`O
`
`Appeal
`
`Obiected
`
`Allowed
`
`:
`
`Restricted
`
`|:| Claims renumbered in the same order as presenied by applicant
`
`El CPA
`
`|:| T.D.
`
`|:|
`
`Fl.1 .4?
`
`CLAIM
`
`Final
`
`Original
`
`1 1f21!201 1
`
`DATE
`
`|'\J
`
`G301-DLQ)
`
`'\.|
`
`10
`11
`
`12
`13
`14
`
`15
`16
`
`17
`18
`
`19
`20
`21
`
`22
`
`-2222)“,
`24
`25
`
`25
`2?
`
`28
`29
`30
`
`31
`32
`
`33
`34
`
`35
`36
`
`US. Patent and Trademark Ollice
`
`Pan of Paper No. : 20111121
`
`Page 8
`
`Page 8