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Docket N0.: CGRSOOIUSCNTI
`
`I hereby certify that this correspondence is being transmitted via The Office
`
`Electronic Filing System (EFS) in accordance with 37 CFR l.6(a)(4).
`
`Signature: /I.nurie A. Phillips/ Name: Laurie A. Phillips
`
`Date of Ijlcctronic (El-‘ S) Transmission:
`
`December 21 201 1
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of:
`
`App1i¢}int(s3§'
`
`'2 A153’Hi'}3;Iiéit5éié1iW”
`
`"CioinffNo§: I
`
`ii
`
`FilingiDatc:
`:Title:
`
`I
`
`WiiExamincri:
`A
`I
`I _iHFcbruary 24, 201
`in Methods and Compositionsufor :1‘reating Cancer
`
`SaniMing
`H A
`
`I
`
`I
`
`A
`
`I
`
`Mail Stop Amcndmcnt
`Commissioner for Patents
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`RESPONSE TO RESTRICTION REQUIREMENT
`
`Dear Sir:
`
`The Office has issued a two-way restriction rcquircmcnt rclating to the present
`
`invention. Applicants hereby elect the invention of Group 1, represented by newly
`
`prcscntcd claims 37 et seq. This election is made without travcrsc.
`
`Page 1 of6
`
`ARGENTUM EX1038
`ARGENTUM EX1038
`Page 1
`
`Page 1
`
`

`
`Docket No.: CGR500 l USCNTI
`
`Listing of Claims:
`
`1-36. (Canceled).
`
`37". (New) A method for the treatment of a prostate cancer in a human comprising
`
`administering to said human a therapeutically effective amount of abiraterone acetate or a
`
`pharmaceutically acceptable salt
`
`thereof and a therapeutically effective amount of
`
`prcdnisonc.
`
`38. (New) The method of claim 37, wherein the therapeutically effective amount of the
`
`abiraterone acetate or pharmaceutically acceptable salt thereof is from about 50 mg/day
`
`to about 2000 mg/day.
`
`39. (New) The method of claim 38, wherein the therapeutically effective amount of the
`
`abiraterone acetate or pharmaceutically acceptable salt thereof is from about 500 mg/day
`
`to about I500 mg/day.
`
`40. (New) The method of claim 39, wherein the therapeutically effective amount of the
`
`abiraterone acetate or pharmaceutically acceptable salt thereof is about 1000 mg/day.
`
`4]. (New) The method of claim 3?‘, wherein the therapeutically effective amount of the
`
`abiraterone acetate or a pharmaceutically acceptable salt thereof is administered in at
`
`Page 2 of6
`
`Page 2
`
`Page 2
`
`

`
`Dockcl No.: CGR500 l USCNTI
`
`least one dosage form Comprising about 250 mg of abiraterone acetate or a
`
`pharmaceutically acceptable salt thereof.
`
`42. (New) The method of claim 37, wherein the therapeutically effective amount of the
`
`prednisone is from about 0.0] mg/day to about 500 mg/day.
`
`43. (New) The method of claim 42, wherein the therapeutically effective amount of the
`
`prednisone is from about 10 mg/day to about 250 mgfday.
`
`44. (New) The method of claim 44, wherein the therapeutically effective amount of the
`
`prednisonc is about 10 mg/day.
`
`45. (New) The method of claim 37, wherein the therapeutically effective amount of the
`
`prednisone is administered in at
`
`least one dosage form comprising about 5 mg of
`
`prednisone.
`
`46. (New) The method of claim 37, Comprising administering to said human about 500
`
`mg/day to about 1500 mg/day of abiraterone acetate or a pharmaceutical ly acceptable salt
`
`thereof and about 0.0] mg/day to about 500 mg/day of prednisone.
`
`47. (New) The method of claim 46, comprising administering to said human about 1000
`
`mg/day of abiraterone acetate or a pharmaceutically acceptable salt thereof and about 10
`
`mg/day of prednisone.
`
`Page 3 of6
`
`Page 3
`
`Page 3
`
`

`
`Dockcl No.: CGR500 l USCNT1
`
`48. (New) The method of claim 37, wherein said prostate cancer is refractory prostate
`
`cancer.
`
`49.
`
`(New) The method of claim 48, wherein the refractory prostate cancer is not
`
`responding to at least one anti-cancer agent.
`
`50. (New) The method of claim 49, wherein the at least one anti-cancer agent comprises a
`
`hormonal ablation agent, an anti-androgen agent, or an anti-neoplastic agent.
`
`51. (New) The method of claim 50, wherein the hormonal ablation agent comprises
`
`deslorelin, leuprolide, goserelin, or triptorelin.
`
`52.
`
`(New) The method of claim 50, wherein the anti-androgen agent comprises
`
`biealutamide, flutamide, or nilutamide.
`
`53.
`
`(New) The method of claim 50, wherein the anti-neoplastic agent comprises
`
`docetaxel.
`
`54. (New) The method of claim 48, comprising administering to said human about 500
`
`mg/day to about 1500 mg/day of abiraterone acetate or a pharmaceutically acceptable salt
`
`thereof and about 0.0] mg./day to about 500 mg/day of prednisone.
`
`Page 4 of6
`
`Page 4
`
`Page 4
`
`

`
`Docket No.: CGR500 l USCNT1
`
`55. (New) The method of claim 54, comprising administering to said human about 1000
`
`mg/day of abiraterone acetate or a pharmaceutically acceptable salt thereof and about 10
`
`mg/“day of prcdnisone.
`
`56. (New) The method of claim 53, comprising administering to said human about 1000
`
`mg/day of abiraterone acetate or a pharmaceutically acceptable salt thereof and about 10
`
`mg/day of prcdnisone.
`
`Page 5 of6
`
`Page 5
`
`Page 5
`
`

`
`Docket NO.: CGR500 l USCNTI
`
`Applicants respectfully request that a timely Notice of Allowance be issued in the
`
`present application. Should the office require anything further, it is invited to contact
`
`applicants’ representative at the telephone number below.
`
`JOHNSON & JOHNSON
`
`One Johnson & Johnson Plaza
`
`New Brunswick, NJ 08933-7003
`(732) 524-3957
`Dated: December 21, 201 I
`Customer No.: 27777
`
`Respectfully submitted,
`
`By: fAndrea Jo Kamagef
`Andrea Jo Kamage
`Reg. No. 43,703
`
`Page 6 01°6
`
`Page 6
`
`Page 6
`
`

`
`Electronic Acknowledgement Receipt
`
`Application Number:
`
`13034340
`
`International Application Number:
`
`Confirmation N um ber:
`
`Title of Invention:
`
`Methods and Compositions forTreating Cancer
`
`First Named |nventor!Applicant Name:
`
`Alan H. Auerbach
`
`Customer Number:
`
`27777
`
`Filer:
`
`Andrea J. Kamage/Laurie Phillips
`
`Filer Authorized By:
`
`Andrea J. Kamage
`
`Attorney Docket Number:
`
`CGFI5001 USCNT1
`
`Receipt Date:
`
`21 —DEC—2011
`
`Filing Date:
`
`24-FEB-2011
`
`Time Stamp:
`
`11:00:17
`
`Application Type:
`
`Utility under 35 USC 111(a]
`
`Payment information:
`
`Submitted with Payment
`
`no
`
`File Listing:
`
`Document
`Number
`
`.
`.
`Document Descnpmm
`
`.
`me Name
`
`File Size(Bytesh'
`Message Digest
`192109
`
`Part Lzip (ifappI.)
`
`ctllill Warnings:
`
`Response to Election I Restriction Filed
`
`CGR5001USCNT1ResponsetoRR
`pdf
`
`Ibi.I'I.rJ'5|.‘l‘.F|5!.D()4lIL|'2 J:28.bl.n_[I I .|'.’dl3 EH98
`
`Info rmation:
`
`Page 7
`
`Page 7
`
`

`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`Total Files Size (in bytesll
`
`192109
`
`New Agplications Under 35 U.S.C. 111
`Ifa new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53[b)-{dl and MPEP 506], a Filing Receipt (37 CFR 1.54} will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date ofthe application.
`
`National Stage of an International Agplication under 35 U.S.C. 371
`Ifa timely submission to enter the national stage ofan international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCTlD0lE0!903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`the application.
`
`New International Application Filed with the USPTO asa Receiving Office
`Ifa new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP1810], a Notification of the International Application Number
`and ofthe International Filing Date (Form PCTIROH 05) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`
`Page 8
`
`Page 8
`
`

`
`PTOI'SBI’06 (0?-06}
`Approved for use through 1I'31I'200'I". OMB 0651-0032
`U.S. Patent and Trademark Ollice: US. DEPARTMENT OF COMMERCE
`Under the Pa ennrork Reduction Act of 1995. no ersons are reuired to res ond to a collection of information unless it dis la s a valid OMB control number.
`
`PATENT APPLICATION FEE DETERMINATION RECORD
`Subgfitute fgr Farm PTQ_875
`
`AW'l°all°" 0‘ D°°"e‘ Numb”
`-l
`
`Fl“”9 05119
`
`T D To be Mailed
`
`APPLICATION AS FILED — PART I
`
`OTHER THAN
`
`FOR
`
`El B1‘\S'C FEE
`37CFR1.16a. b.or c
`
`El SEARcH FEE _
`STCFFI I 15k. Il.or m
`
`_
`
`D EXAMINATION FEE
`3?CFR1.160.p.or u
`TOTAL CLAIMS
`3? cFR1.1SI
`INDEPENDENT CLAIMS
`3?CFFl1.t6h
`
`l:lAPP'-'C'°‘T'ON SIZE FEE
`(37 Cm Halal)
`
`ICOILHTIH 11
`NUMBER FILED
`
`(COII-||'W1 21
`NUMBER EXTRA
`
`SMALL ENTITY El
`RATE ($)
`FEE {$)
`
`OR
`
`SMALL ENTITY
`RATE {$)
`
`NIA
`
`NIA
`
`NIA
`
`MIA
`
`I;
`NA
`
`NIA
`
`MIA
`
`NIA
`
`.
`"""U59°=
`,
`"""”53=
`
`If the specification and drawings exceed 100
`sheets of paper, the application size fee due
`is $250 ($125 for small entity) for each
`additional 50 sheets or fraction thereof. See
`35 U.S.C. 41 a 1 G and 37 CFFl1.16 3.
`
`El MULTIPLE DEPENDENT OLAIM PRESENT (3? CFR 1.151.);
`’ If the difference in column 1 is less than zero. enter "D" in column 2.
`
`APPLICATION AS AMENDED — PART ll
`
`(Column 1)
`CLAIMS
`REMA NINS
`AFTER
`AMENDMENT
`
`(Column 2}
`HIGHEST
`NDMSER
`PREVIOUSLY
`PAID FOR
`
`(Column 3)
`
`PRESENT
`
`-
`
`-v 20
`
`123213201 1
`
`12211
`Id
`def
`
`SMALL ENTITY
`
`ADD TONAL
`FEEl($|
`
`RATE ‘$1
`
`X5
`
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`
`=
`
`=
`
`I:I Application Size Fee (3? OFR 1.1 5151)
`
`D FIRST PRESENTATION OF MULTIPLE DEPENDENT CLAIM (3? CFR 1 16“)!
`
`CLAIMS
`REMAINING
`AFTER
`AMENDMENT
`
`HIGHEST
`NuMSER
`PREVIOUSLY
`PAID FOR
`
`PRESENT
`
`RATE ‘$1
`
`ADDITIONAL
`FEE IS)
`
`l.I6I
`
`'"“‘*"‘*"""”‘ - _ -XS —
`
`
`
`Minus
`
`I:I Application Size Fee (37 SFR 1.1513);
`
`D FIRST PRESENTATION OF MULTIPLE DEPENDENT CLAIM (3? CFR 1. 16[|'JJ
`
`OTHER THAN
`
`SMALL ENTITY
`
`ADDITIONAL
`FEE 12$}
`
`$60
`XX :3$
`
`ADDITIONAL
`FEE ($1
`
`RATE “Bl
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`
`X OT!
`
`X {:0
`
`II
`
`I-
`
`ZU
`
`J EDZU
`
`J E-
`
`‘I
`
`AMENDMENT
`
`F
`‘
`is less than the entry in column 2. write "0' in column 3.
`* II the entry in column 1
`"‘ If the Highest Number Previously Paid For IN THIS SPACE Is less lhan 2|], enler 20 .
`"“‘ If [he “Highest Number Previously Paid For" IN THIS SPACE is less than 3. enter "3'.
`The ‘Highest Number Previously Paid For’ (Total or Independent) is the highest number found in the appropriate box in column 1.
`This collection ol information is required by 3? CFR 1.16. The information is required to obtain or retain a benefit by the public: which is to file (and by the USPTO to
`process) an application. Confidentiality Is governed by 35 U.S.C 122 and 37 OFF] 1 .14. This collection is estimated to take 12 minutes to complete. including gathering.
`preparing. and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on the amount of time you
`require to complete this Iorm and.’or suggestions for reducing this burden. should be sent to the Chiel Information Ollicer. US. Patent and Trademark Offioe. U.S.
`Department of Commeroe. P.O. Box 1450. Alexandria. VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS
`ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`ifyou need assistance in completing the form, call 1—8t}0—PTO—9t99 and select option 2
`
`Legal Instrument Exam iner:
`is-I-EFAN|E BRYC E’,
`
`Page 9
`
`Page 9

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