UNITED STATES DEPARTMENT OF COMMERCE
`United States Vatent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`www.uspto.g:
`Alexandria, Virginia 22313-1450
`
`
`
`
`a
`
`
`
`<FREON
`ZENSE~“XKXQ) Unrrep STATES PATENT AND TRADEMARK OFFICE
`
`APPLICATION NO.
`
`11/357,687
`
`ISSUE DATE
`
`09/01/2009
`
`PATENT NO.
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATION NO.
`
`7582621
`
`064507-5014US
`
`4964
`
`43850
`
`7590
`
`08/12/2009
`
`MORGAN, LEWIS & BOCKIUS LLP(SF)
`One Market, Spear Street Tower, Suite 2800
`San Francisco, CA 94105
`
`The projected patent numberandissue date are specified above.
`
`ISSUE NOTIFICATION
`
`Determination of Patent Term Adjustment under 35 U.S.C. 154 (b)
`(application filed on or after May 29, 2000)
`
`The Patent Term Adjustment is 267 day(s). Any patent to issue from the above-identified application will
`include an indication of the adjustment on the front page.
`
`If a Continued Prosecution Application (CPA) wasfiled in the above-identified application, the filing date that
`determines Patent Term Adjustmentis the filing date of the most recent CPA.
`
`Applicant will be able to obtain more detailed information by accessing the Patent Application Information
`Retrieval (PAIR) WEBsite (http://pair-uspto. gov).
`
`Any questions regarding the Patent Term Extension or Adjustment determination should be directed to the
`Office of Patent Legal Administration at (571)-272-7702. Questions relating to issue and publication fee
`payments should be directed to the Customer Service Center of the Office of Patent Publication at
`(571)-272-4200.
`
`APPLICANT(s)(Please see PAIR WEBsite http://pair.uspto.gov for additional applicants):
`
`Stephen J. Baker, Mountain View, CA;
`Tsutomu Akama, Sunnyvale, CA;
`Carolyn Bellinger-Kawahara, Redwood City, CA;
`Vincent S. Hernandez, Watsonville, CA;
`Karin M. Hold, Belmont, CA;
`James J. Leyden, Malvern, PA;
`Kirk R. Maples, San Jose, CA;
`Jacob J. Plattner, Berkeley, CA;
`Virginia Sanders, San Francisco, CA;
`Yong-Kang Zhang, San Jose, CA;
`
`IR103 (Rev. 11/05)
`
`FlatWing Ex. 1013, p. 1
`
`FlatWing Ex. 1013, p. 1
`
`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`NOTICE OF ALLOWANCE AND FEE(S) DUE
`
`MORGAN,LEWIS & BOCKIUS LLP (SF)
`One Market, Spear Street Tower, Suite 2800
`San Francisco, CA 94105
`
`SHIAO,REI TSANG
`
`1606
`DATE MAILED: 04/22/2009
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATIONNO.
`
`02/16/2006
`11/357,687
`TITLE OF INVENTION: BORON-CONTAINING SMALL MOLECULES
`
`Stephen J. Baker
`
`064507-5014US
`
`4964
`
`
`
`
`
`
`
`APPLN. TYPE PUBLICATION FEE DUE|PREV. PAID ISSUE FEESMALL ENTITY ISSUE FEE DUE TOTAL FEE(S) DUE DATE DUE
`
`
`
`
`
`nonprovisional
`
`YES
`
`$755
`
`$300
`
`$0
`
`$1055
`
`07/22/2009
`
`THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
`PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCEIS NOT A GRANT OF PATENT RIGHTS.
`THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
`PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
`
`THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
`MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED.—THIS
`STATUTORY PERIOD CANNOT BE EXTENDED.
`SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
`NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION.
`IF AN ISSUE FEE HAS
`PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
`WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
`DUE.
`
`HOW TO REPLYTO THIS NOTICE:
`
`I. Review the SMALL ENTITYstatus shown above.
`
`If the SMALL ENTITYis shown as YES, verify your current
`SMALLENTITYstatus:
`
`If the SMALL ENTITYis shown as NO:
`
`A. If the status is the same, pay the TOTAL FEE(S) DUE shown
`above.
`
`A. Pay TOTAL FEE(S) DUE shownabove, or
`
`B. If the status above is to be removed, check box 5b on Part B -
`Fee(s) Transmittal and pay the PUBLICATION FEE (if required)
`and twice the amount of the ISSUE FEE shown above,or
`
`B. If applicant claimed SMALL ENTITYstatus before, or is now
`claiming SMALL ENTITYstatus, check box 5a on Part B - Fee(s)
`Transmittal and pay the PUBLICATION FEE (if required) and 1/2
`the ISSUE FEE shown above.
`
`II. PART B - FEE(S) TRANSMITTAL,orits equivalent, must be completed and returned to the United States Patent and Trademark Office
`(USPTO) with your ISSUE FEE and PUBLICATIONFEE (if required). If you are charging the fee(s) to your deposit account, section "4b"
`of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
`request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
`the paper as an equivalentof Part B.
`
`IH. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
`Mail Stop ISSUE FEE unless advisedto the contrary.
`
`IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
`maintenancefees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.
`
`PTOL-85 (Rev. 08/07) Approved for use through 08/31/2010.
`
`Page 1 of 3
`
`FlatWing Ex. 1013, p. 2
`
`FlatWing Ex. 1013, p. 2
`
`

`

`PART B - FEE(S) TRANSMITTAL
`
`Complete and sendthis form, together with applicablefee(s), to: Mail Mail Stop ISSUE FEE
`Commissioner for Patents
`P.O. Box 1
`Alecandvia Virginia 22313-1450
`
`or Fax (571)-273-2885
`through 5 should be completed where
`INSTRUCTIONS: This form should be used for transmitting the ISSUE FEE and PUBLICATION FEE(if required). Blocks 1
`ppropriate. All further correspondence including the Patent, advance orders and notification of maintenance fees will be mailed to the current correspondence address as
`indicated unless corrected below or directed otherwise in Block 1, by (a) specifying a new correspondence address; and/or (b) indicating a separate "FEE ADDRESS" for
`maintenance fee notifications.
`CURRENT CORRESPONDENCE ADDRESS(Note: Use Block 1 for any changeof address)
`
`43850
`7590
`04/22/2009
`MORGAN, LEWIS & BOCKIUS LLP (SF)
`‘
`One Market, Spear Street Tower, Suite 2800
`San Francisco, CA 94105
`
`can only be used for domestic mailings of the
`Note: A certificate of mailing
`Fee(s) Transmittal. This certificate cannot be used for any other accompanying
`papers. Each additional paper, such as an assignment or formal drawing, must
`ave its own certificate of mailing or transmission.
`Certificate of Mailing or Transmission
`I hereby certify that thisFee(s) Transmittal is being depositedpith the United
`States Postal Service with
`sufficient postage for
`first class mail
`in an envelope
`addressed to the Mail Stop ISSUE FEE address above, or being facsimile
`transmitted to the USPTO (571) 273-2885, on the date indicated below.
`(Depositor's name)
`
`
`
`(Signature)
`
`(Date)
`
`APPLICATION NO
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATIONNO.
`
`02/16/2006
`11/357,687
`TITLE OF INVENTION: BORON-CONTAINING SMALL MOLECULES
`
`Stephen J. Baker
`
`064507-5014US
`
`4964
`
`
`
`
`
`
`
`APPLN. TYPE PUBLICATION FEE DUE|PREV. PAID ISSUE FEESMALL ENTITY ISSUE FEE DUE TOTAL FEE(S) DUE DATE DUE
`
`
`
`
`
`nonprovisional
`
`EXAMINER
`
`SHIAO, REI TSANG
`
`$755
`
`ART UNIT
`
`1626
`
`1. Change of correspondence address or indication of "Fee Address" (37
`CFR 1.363).
`Lj Change of correspondence address (or Change of Correspondence
`Address form PTO/SB/122) attached.
`LI "Fee Address" indication (or "Fee Address” Indication form
`PTO/SB/47; Rev 03-02 or more recent) attached. Use of a Customer
`Numberis required.
`
`
`
`
`
`$300
`
`CLASS-SUBCLASS
`
`514-064000
`
`$1055
`
`07/22/2009
`
`2. For printing on the patentfront page,list
`(1) the names of up to 3 registered patent attorneys
`or agents OR,alternatively,
`(2) the name ofa single firm (having as a member a
`2
`registered attorney or agent) and the namesof up to
`2 registered patent attorneys or agents. If no nameis
`listed, no namewill be printed.
`
`
`
`3
`
`3. ASSIGNEE NAME AND RESIDENCE DATA TO BE PRINTED ON THE PATENT(printor type)
`If an assignee is identified below, the document has beenfiled for
`PLEASE NOTE: Unless an assignee is identified below, no assignee data will appear on the patent.
`recordation as set forth in 37 CFR 3.11. Completion of this form is NOT a substitute for filing an assignment.
`(A) NAMEOF ASSIGNEE
`(B) RESIDENCE:(CITY and STATE OR COUNTRY)
`
`Please check the appropriate assignee category or categories (will not be printed on the patent) :
`
`LV individual LJ Corporation or other private group entity (J Government
`
`4a. The following fee(s) are submitted:
`L] Issue Fee
`_] Publication Fee (No small entity discount permitted)
`LY Advance Order - #of Copies
`
`
`
`4b. Paymentof Fee(s): (Please first reapply any previously paid issue fee shown above)
`LIA checkis enclosed.
`Lj Paymentby credit card. Form PTO-2038 is attached.
`[_J The Directoris hereby authorized to charge the required fee(s), any deficiency, or credit any
`overpayment, to Deposit Account Number
`(enclose an extra copy ofthis form).
`
`
`
`5. Change in Entity Status (from status indicated above)
`LI b. Applicant is no longer claiming SMALL ENTITYstatus. See 37 CFR 1.27(g)(2).
`LY a. Applicant claims SMALL ENTITYstatus. See 37 CFR 1.27.
`NOTE: The Issue Fee and Publication Fee (if required) will not be accepted from anyone other than the applicant; a registered attorney or agent; or the assignee or other party in
`interest as shown bythe records of the United States Patent and Trademark Office.
`
`Authorized Signature
`
`Typed or printed name
`
`
`Date
`
`Registration No.
`
`This collection of information is required by 37 CFR 1.311. The information is required to obtain or retain a benefit by the public whichis to file (and by the USPTOto process)
`an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR Li14. This collection is estimated to take 12 minutes to complete, including gathering,preparing, and
`submitting the completed application form to the USPTO. Time will v.
`epending uponthe individual case. Any comments on the amountof time you require to complete
`this form and/or suggestions for reducing this burden, should be sent peeChief Information Officer, U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O.
`Box 1450, Alexandria, Virginia 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450,
`Alexandria, Virginia 22313-1450.
`Under the Paperwork Reduction Act of 1995, no persons are required to respondto a collection of information unlessit displays a valid OMBcontrol number.
`
`PTOL-85 (Rev. 08/07) Approved foruse through 08/31/2010.
`
`OMB 0651-0033
`
`U.S. Patent and Trademark Offite; U.S.tseOF COMMERCE
`FlatWing Ex. 1013
`
`FlatWing Ex. 1013, p. 3
`
`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATIONNO.
`
`11/357,687
`
`02/16/2006
`
`Stephen J. Baker
`
`064507-5014US
`
`4964
`
`MORGAN,LEWIS & BOCKIUS LLP (SF)
`One Market, Spear Street Tower, Suite 2800
`San Francisco, CA 94105
`
`SHIAO, REI TSANG
`
`1606
`DATE MAILED: 04/22/2009
`
`Determination of Patent Term Adjustment under 35 U.S.C. 154 (b)
`(application filed on or after May 29, 2000)
`
`The Patent Term Adjustment to date is 267 day(s). If the issue fee is paid on the date that is three monthsafter the
`mailing date of this notice and the patent issues on the Tuesday before the date that is 28 weeks (six and a half
`months) after the mailing date of this notice, the Patent Term Adjustment will be 267 day(s).
`
`If a Continued Prosecution Application (CPA) was filed in the above-identified application, the filing date that
`determines Patent Term Adjustmentis the filing date of the most recent CPA.
`
`Applicant will be able to obtain more detailed information by accessing the Patent Application Information Retrieval
`(PAIR) WEBsite (http://pair-uspto.gov).
`
`Any questions regarding the Patent Term Extension or Adjustment determination should be directed to the Office of
`Patent Legal Administration at (571)-272-7702. Questions relating to issue and publication fee payments should be
`directed to the Customer Service Center of
`the Office of Patent Publication at 1-(888)-786-0101
`or
`(571)-272-4200.
`
`PTOL-85 (Rev. 08/07) Approved for use through 08/31/2010.
`
`Page 3 of 3
`
`FlatWing Ex. 1013, p. 4
`
`FlatWing Ex. 1013, p. 4
`
`

`

`
`
`Notice of Allowability
`
`Application No.
`
`11/357,687
`Examiner
`
`Applicant(s)
`
`BAKER ETAL.
`Art Unit
`
`REI-TSANG SHIAO
`
`1626
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address--
`All claims being allowable, PROSECUTION ON THE MERITS IS (OR REMAINS) CLOSED in this application.
`If not included
`herewith (or previously mailed), a Notice of Allowance (PTOL-85) or other appropriate communication will be mailed in due course. THIS
`NOTICE OF ALLOWASBILITY IS NOT A GRANT OF PATENT RIGHTS. This application is subject to withdrawal from issue atthe initiative
`of the Office or upon petition by the applicant. See 37 CFR 1.313 and MPEP 1308.
`1. K] This communication is responsive to amendmentfiled on 1/23/2009.
`2. XJ Theallowedclaim(s)is/are 27-31, 40, and 42-47,now are 1-12.
`
`3. L] Acknowledgmentis madeof a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)O All
`b)L)Some*
`c)L1None
`ofthe:
`1. LF Certified copies of the priority documents have been received.
`2. C1 Certified copies of the priority documents have been received in Application No.
`3. [1] Copiesof the certified copies of the priority documents have been receivedin this national stage application from the
`International Bureau (PCT Rule 17.2(a)).
`
`* Certified copies not received:
`
`Applicant has THREE MONTHS FROM THE “MAILING DATE?”of this communication to file a reply complying with the requirements
`noted below. Failure to timely comply will result in ABANDONMENT ofthis application.
`THIS THREE-MONTH PERIOD IS NOT EXTENDABLE.
`
`4. (] A SUBSTITUTE OATH OR DECLARATIONmust be submitted. Note the attached EXAMINER’S AMENDMENTor NOTICE OF
`INFORMAL PATENT APPLICATION (PTO-152) which gives reason(s) why the oath or declaration is deficient.
`
`5. [] CORRECTED DRAWINGS ( as “replacement sheets”) must be submitted.
`(a) 7 including changes required by the Notice of Draftsperson’s Patent Drawing Review ( PTO-948) attached
`1) [1] hereto or 2) [] to Paper No./Mail Date
`.
`(o) (1 including changes required by the attached Examiner's Amendment / Commentorin the Office action of
`Paper No./Mail Date
`.
`Identifying indicia such as the application number (see 37 CFR 1.84(c)) should be written on the drawingsin the front (not the back) of
`each sheet. Replacement sheet(s) should be labeled as suchin the header according to 37 CFR 1.121(d).
`
`6. [] DEPOSIT OF and/or INFORMATIONaboutthe deposit of BIOLOGICAL MATERIAL must be submitted. Note the
`attached Examiner's comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.
`
`Attachment(s)
`1. [] Notice of References Cited (PTO-892)
`2. [] Notice of Draftperson's Patent Drawing Review (PTO-948)
`
`3. [J Information Disclosure Statements (PTO/SB/08),
`Paper No./Mail Date
`4. (J Examiner's Comment Regarding Requirement for Deposit
`of Biological Material
`
`/REI-TSANG SHIAO /
`
`Primary Examiner, Art Unit 1626 U.S. Patent and Trademark Office
`
`5. CJ Notice of Informal Patent Application
`6. FJ Interview Summary (PTO-413),
`Paper No./Mail Date
`.
`7. J Examiner's Amendment/Comment
`
`8. KJ Examiner's Statement of Reasons for Allowance
`
`9. [J Other
`
`.
`
`PTOL-37 (Rev. 08-06)
`
`Notice of Allowability
`
`FlatWing Ex.
`1013, p. 5
`art of tO) No./Mail Date 20090420
`
`FlatWing Ex. 1013, p. 5
`
`

`

`Application/Control Number: 11/357 ,687
`Art Unit: 1626
`
`Page 2
`
`DETAILED ACTION
`
`1.
`
`This application claims benefit of the provisional application:
`
`60/654 ,060 with a filing date 02/16/2005.
`
`2.
`
`Amendment of claims 27 and 40, cancellation of claims 1-26 and 32-39, 41, and
`
`addition of claims 43-47 in the amendmentfiled on January 23, 2009 is acknowledged.
`
`Claims 27-31, 40, and 42-47 are pending in the application. No new matteris found.
`
`Since the newly added claims 43-47 are commensurate with the scope of the invention,
`
`claims 27-31, 40, and 42-47 are prosecuted in the case.
`
`3.
`
`The rejection of claims 27-31, 40 and 42 under 35 U.S.C. 112, first paragraph
`
`Reasonsfor Allowance
`
`has been overcome in the amendmentfiled on January 23, 2009.
`
`4.
`
`Applicant's arguments regarding the rejection of claims 27-31, 40, and 42 under
`
`35 U.S.C. 103(a) over Austin et al. ‘024 in view of Answre.com filed on January 23,
`
`2009 have been fully considered and they are persuasive. Since Austin et al. ‘024 or
`
`Answre.com doesnotdisclose the instant invention of methods of usefor treating
`
`infection in an animal, therefor the instant invention is distinct from Austin et al. The
`
`rejection of claims 27-31, 40, and 42 under 35 U.S.C. 103(a) over Austin et al. ‘024 in
`
`view of Answre.com has been withdrawn herein. Since claim 41 has been canceled,
`
`the rejection of claim 41 under 35 U.S.C. 103(a) is obviated herein.
`
`5.
`
`Since claims 53-54 and 58 of Baker et al. co-pending application No. 11/505,591
`
`have been canceled, the provisional rejection of claims 27-31, 40, and 42 underthe
`
`FlatWing Ex. 1013, p. 6
`
`FlatWing Ex. 1013, p. 6
`
`

`

`Application/Control Number: 11/357 ,687
`Art Unit: 1626
`
`Page 3
`
`obviousness-type double patenting over Baker et al. co-pending application No.
`
`11/505,591 has been withdrawn herein.
`
`6.
`
`Claims 27-31, 40, and 42-47 are neither anticipated nor rendered obvious over
`
`the art of record, and therefore are allowable. A suggestion for modification of above
`
`reference to obtain the instant methods of use has not been found. Claims 27-31, 40,
`
`and 42-47 are allowed.
`
`Any comments considered necessary by applicant must be submitted no later
`
`than the payment of the issue fee and, to avoid processing delays, should preferably
`
`accompany the issue fee. Such submissions should be clearly labeled “Comments on
`
`Statement of Reasons for Allowance”.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Rei-tsang Shiao whose telephone number is (571) 272-
`
`0707. The examiner can normally be reached on 8:30 AM - 5:00 PM.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Joseph K. McKane can be reached on (571) 272-0699. 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.
`
`FlatWing Ex. 1013, p. 7
`
`FlatWing Ex. 1013, p. 7
`
`

`

`Application/Control Number: 11/357 ,687
`Art Unit: 1626
`
`Page 4
`
`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 accessto 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.
`
`/REI-TSANG SHIAO /
`Primary Examiner, Art Unit 1626
`
`April 20, 2009
`
`FlatWing Ex. 1013, p. 8
`
`FlatWing Ex. 1013, p. 8
`
`

`

`
`Search Notes
`
`Application/Control No.
`
`Applicant(s)/Patent under
`Reexamination
`
`
`
`
`
`
`
`SEARCHED
`
`4/20/2009
`
`
`4/20/2009
`
`
`
`
`
`
`
`
`
`
`
`INTERFERENCE SEARCHED
`
`4/20/2009
`
`a 4/20/2009
`
`288
`
`
`
`
`
`
`11/357 ,687
`Examiner
`
`BAKER ETAL.
`Art Unit
`
`REI-TSANG SHIAO
`
`1626
`
`SEARCH NOTES
`(INCLUDING SEARCH STRATEGY)
`DATE
`
`EXMR
`
`EAST class/subclass
`
`4/20/2009
`
`
`
`U.S. Patent and Trademark Office
`
`Part of Paper No. 20090420
`
`FlatWing Ex. 1013, p. 9
`
`FlatWing Ex. 1013, p. 9
`
`

`

`
`
`Issue Classification
`
`ore. No.
`
`abplicant(s)/Patent under
`
`BAKER ET AL.
`
`Examiner
`Art Unit
`
`
`
`REI-TSANG SHIAO
`
`1626
`
`ISSUE CLASSIFICATION
`
`NON-CLAIMED
`CLAIMED
`SUBCLASS
`
`/
`
`64
`
`A
`
`K
`
`31
`
`169
`
`
`
` U.S. Patent and Trademark Office
`
`
`
`SUee
`
`al}
`
`
`Pot||
`
`
`
`
`
`
`
`
`(Legal Instruments Examiner)
`
`(Date)
`
`(Primary Examiner)
`
`(Date)
`
`/Rei-tsang Shiao/
`4/20/2009
`
`O.G.
`Print Fig.
`
`NONE
`
`BK
`
`ginal
` oo}Ori—
`
`@]M]—|Original
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`
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`
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`FlatWing Ex. 1013, p. 10
`
`

`

`
`
`\ UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Page 1 of 1
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto. gov
`
`CONFIRMATIONNO. 4964
`
`GROUPART UNIT ATTORNEY DOCKET
`064507-5014US
`
`BIB DATA SHEET
`
`SERIAL NUMBER
`11/357,687
`
`FILINGor 371(c)
`02/16/2006
`
`RULE
`
`APPLICANTS
`Stephen J. Baker, Mountain View, CA;
`Tsutomu Akama, Sunnyvale, CA;
`Carolyn Bellinger-Kawahara, Redwood City, CA;
`Vincent S. Hernandez, Watsonville, CA;
`Karin M. Hold, Belmont, CA;
`James J. Leyden, Malvern, PA;
`Kirk R. Maples, San Jose, CA;
`Jacob J. Plattner, Berkeley, CA;
`Virginia Sanders, San Francisco, CA;
`Yong-Kang Zhang, San Jose, CA;
`** CONTINUING DATA ***888tethereee
`This appin claims benefit of 60/654,060 02/16/2005
`kK FOREIGN APPLICATIONS KEEKEKEEKERERERERERERERERER
`
`** IF REQUIRED, FOREIGN FILING LICENSE GRANTED ** ** SMALL ENTITY **
`03/30/2006
`
`
`
`Foreign Priority claimed
`J Yes No
`35 USC 119(a-d) conditions met L} Yes Wino
`Verified
`and
`/REI-TSANG SHIAO/
`Acknowledged
`Examiner's Signature
`
`SHEETS
`DRAWINGS
`4 2
`
`TOTAL
`CLAIMS
`wanes
`QQrence
`
`|INDEPENDENT
`CLAIMS
`3
`
`
`
`L) Metafter|
`R.S.
`Initials
`
`STATE OR
`COUNTRY
`CA
`
`ADDRESS
`
`MORGAN, LEWIS & BOCKIUS LLP (SF)
`One Market, Spear Street Tower, Suite 2800
`San Francisco, CA 94105
`UNITED STATES
`
`Boron-containing small molecules
`
`FILING FEE |FEES: Authority has been given in Paper
`RECEIVED |No._——_—sto. chaarge/credit DEPOSIT ACCOUNT
`for following:
`
`BIB (Rev.05/07).
`
`FlatWing Ex. 1013, p. 11
`
`FlatWing Ex. 1013, p. 11
`
`

`

`EAST Search History
`
`EAST Search History
`
`
`
`TimeStamp_
`
` ‘Operator
`
`
` 2009/04/20
`(514/64).CCLS.
`
`11:35
`“OFF~~(2009/04/20
`11:35
`RORSLSRSSLSLSRSRLSSRLSRSSRSSRSSRSSRLSSRLSSSSRSLSRGRRL
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`‘Plurals
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` 44q
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`Bo
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`(558/288).
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`4/ 20/ 2009 11:35:23 AM
`
`FlatWing Ex. 1013, p. 12
`file:///C/Documents% 20and%20Settings/rshiao/My%20Docum...357687/EAS TSearchHistory. 1 1357687_AccessibleVersion.htm4/20/2009 11:35:25 AM
`
`FlatWing Ex. 1013, p. 12
`
`

`

`CERTIFICATE OF ELECTRONIC TRANSMISSION
`
`I herebycertify that this correspondence, including listed enclosures is
`being electronically transmitted in Portable Document Form (PDF)through
`EFS-Web via Hyper Text Transfer Protocol to the United States Patent and
`Trademark Office's Patent Electronic Business Centeron:
`
`Dated:
`Signed:
`
`| Z3 lo
`C. RheliA< “Fiery
`
`Attorney Docket No.: 064507-5014-US
`
`IN THE UNITED STATES PATENT AND TRADEMARKOFFICE
`
`In re application of:
`
`Confirmation No.: 4964
`
`Stephen J. BAKER,etal.
`Application No.: 11/357,687
`
`Examiner: SHIAO,Rei Tsang
`Art Unit: 1626
`
`Filed: February 16, 2006
`
`RESPONSETO FIRST OFFICE ACTION
`
`For: BORON-CONTAINING SMALL
`MOLECULES
`
`Customer No.: 43850
`
`
`
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Sir:
`
`In responseto the First Office Action dated August 26, 2008, please enter the
`
`following amendments and remarks.
`
`Amendments to the Claimsare reflected in the listing of claims which begins on page 2 of this
`paper.
`
`Remarks/Arguments begin on page 4 of this paper.
`
`Page 1 of 7
`
`FlatWing Ex. 1013, p. 13
`
`FlatWing Ex. 1013, p. 13
`
`

`

`Appl. No. 11/357,687
`Amendment dated January 23, 2009
`Response to Office Action dated August 26, 2008
`
`PATENT
`
`Amendments to the Claims:
`
`Thislisting of claims will replace all prior versions, and listings of claimsin the application.
`
`Listing of Claims:
`
`1. — 26.
`
`(Cancelled).
`
`—&WwNO—
`oOo1DHON&WHNO
`memeeeeMmBRWwWNYOKFCO
`
`27.
`
`(Currently amended) A methodoftreating er-preventing an infection in
`
`an animal, said method comprising administering to the animal a therapeutically effective
`
`amountof 1 ,3-dihydro-5-fluoro-1-hydroxy-2,1-benzoxaborole, or a pharmaceutically acceptable
`
`salt thereof or-a-prodrugthereof., sufficient to treat said infection.
`
`28.
`
`(Original) The methodof claim 27, wherein said infection is a member
`
`selected from a systemic infection, a cutaneous infection, and an ungualor periungual infection.
`
`29,
`
`(Original) The method of claim 27, wherein said infection is a member
`
`selected from chloronychia, paronychias, erysipeloid, onychorrhexis, gonorrhea, swimming-pool
`
`granuloma, larva migrans, leprosy, Orf nodule, milkers' nodules, herpetic whitlow, acute
`
`bacterial perionyxis, chronic perionyxis, sporotrichosis, syphilis, tuberculosis verrucosacutis,
`tularemia, tungiasis, peri- and subungual warts, zona,nail dystrophy (trachyonychia),
`dermatological diseases, psoriasis, pustular psoriasis, alopecia aerata, parakeratosis pustulosa,
`
`contact dermatosis, Reiter's syndrome,psoriasiform acral dermatitis, lichen planus, idiopathy
`
`atrophyin the nails, lichin nitidus, lichen striatus, inflammatory linear verrucous epidermal
`
`naevus (ILVEN), alopecia, pemphigus, bullous pemphigoid, acquired epidermolysis bullosa,
`
`Darier's disease, pityriasis rubrapilaris, palmoplantar keratoderma, contact eczema, polymorphic
`
`erythema, scabies, Bazex syndrome, systemic scleroderma, systemic lupus erythematosus,
`
`chronic lupus erythematosus, dermatomyositus, Sporotrichosis, Mycotic keratitis, Extension
`
`oculomycosis, Endogenous oculomycosis, Lobomycosis, Mycetoma, Piedra, Pityriasis
`
`versicolor, Tinea corporis, Tinea cruris, Tinea pedis, Tinea barbae, Tinea capitis, Tinea nigra,
`
`Otomycosis, Tinea favosa, Chromomycosis, and Tinea Imbricata.
`
`Page 2 of 7
`
`FlatWing Ex. 1013, p. 14
`
`FlatWing Ex. 1013, p. 14
`
`

`

`Appl. No. 11/357,687
`Amendmentdated January 23, 2009
`Response to Office Action dated August 26, 2008
`
`PATENT
`
`30.
`onychomycosis.
`
`(Original) The methodof claim 27, wherein said infection is
`
`31.
`
`(Original) The method of claim 27, wherein said animal is a member
`
`selected from a human,cattle, goat, pig, sheep, horse, cow,bull, dog, guineapig, gerbil, rabbit,
`
`cat, chicken and turkey.
`
`32.-39.
`
`(Cancelled).
`
`40.
`
`(Currently amended) The method of claim 30, wherein said
`
`onychomycosis is Fimea+meninn tinea unguium.
`
`41.
`
`(Cancelled).
`
`42.
`
`(Previously presented) The methodof claim 27, wherein said animalis a
`
`human.
`
`43.
`
`(New) The methodof claim 27, wherein the administeringis at a site
`
`which is a memberselected from the skin, nail, hair, hoof and claw.
`
`44,
`
`(New) The method ofclaim 43, wherein said skin is the skin surrounding
`
`the nail, hair, hoof or claw.
`
`45.
`
`(New) The method of claim 27, wherein said infection is a fungal
`
`infection.
`
`&WwWNN
`
`—
`
`46.
`
`(New) A methodoftreating onychomycosis in a human,said method
`
`comprising administering to the humana therapeutically effective amount of 1,3-dihydro-5-
`
`fluoro-1-hydroxy-2,1-benzoxaborole, or a pharmaceutically acceptable salt thereof, sufficient to
`
`treat said onychomycosis.
`
`47,
`
`(New) A method ofinhibiting the growth of a fungus in a human,said
`
`method comprising administering to the human a therapeutically effective amountof 1,3-
`
`dihydro-5-fluoro-1-hydroxy-2,1-benzoxaborole, or a pharmaceutically acceptable salt thereof.
`
`Page 3 of 7
`
`FlatWing Ex. 1013, p. 15
`
`FlatWing Ex. 1013, p. 15
`
`

`

`Appl. No. 11/357,687
`Amendment dated January 23, 2009
`Response to Office Action dated August 26, 2008
`
`PATENT
`
`REMARKS/ARGUMENTS
`
`I. Status of the Claims
`
`After entry of this Response, claims 27-31, 40 and 42-47 are pending. Claims 1-
`
`26, 32-39 and 41 are cancelled without prejudice. Claims 43-47 are new. Claims 27-31 and 40
`
`and 42-47 are currently presented. Claim 27 is amended. No new matter has been added.
`
`IT. Support for the amended claims and new claims
`
`Claim 27 is amendedto add the phrase “‘sufficientto treat said infection”.
`
`Support for this amendmentis provided in paragraph 108.
`
`Support for new claim 43 is provided in paragraphs 108 and 109.
`
`Support for new claim 44 is provided in paragraph 109.
`
`Support for new claim 45 is provided in paragraphs 102, 103 and 108-116 and
`
`Fig. 2.
`
`Support for new claim 46 is provided in paragraphs 108, 109 and 258.
`
`Support for new claim 47 is provided in paragraphs 102, 103, 317, 320-323, 324-
`
`334, 335-371, 372-381.
`
`No new matter has been added.
`
`HI. Responseto the rejections
`
`35 U.S.C. § 112, first paragraph, enablement (5.1)
`
`Claims 27-31 and 40-42 are rejected for lacking enablement because the
`
`specification, while being enabling for using the compoundsof claim 27 for treating fungal
`
`infections, allegedly does not reasonably provide enablementfor using the compoundsof claim
`
`27 for preventing infection.
`
`Solely to expedite prosecution, Applicants have amended claim 27 to removethe
`
`phrase ‘or preventing’. Applicants reserve the right to pursue this subject matter in another
`
`application, such as a continuation or a divisional.
`
`In light of this amendment, Applicants respectfully request withdrawal of the
`
`rejection.
`
`Page 4 of 7
`
`FlatWing Ex. 1013, p. 16
`
`FlatWing Ex. 1013, p. 16
`
`

`

`Appl. No. 11/357,687
`Amendmentdated January 23, 2009
`Response to Office Action dated August 26, 2008
`
`|
`
`.
`
`PATENT
`
`
`
`35 USC.§112, first paragraph, enablement (5.2
`
`
`
`Claims 27-31 and 40-42 are rejected for lacking enablement because the
`
`specification, while being enabling for pharmaceutically acceptable salts of the compounds of
`
`claim 27, allegedly does not reasonably provide enablementfor prodrugs of the compounds of
`
`claim 27.
`
`Solely to expedite prosecution, Applicants have amended claim 27 to removethe
`
`term ‘or a prodrug thereof’. Applicants reserve the right to pursue this subject matter in another
`
`application, such as a continuation ora divisional.
`
`In light of this amendment, Applicants respectfully request withdrawal of the
`
`rejection.
`
`35 USC.§103(a
`
`Over Austin in view of Answers.com
`
`Claims 27-31 and 40-42 are rejected under 35 U.S.C. § 103(a) as allegedly being
`unpatentable over Austin et al., CAPlus Document No. 124:234024 (Accession No.
`
`1996:181598) or US Patent 5,880,188 (“Austin”) in view of “Fungicide,” Answers.com.
`
`Reference to “Answers.com”herein refers to Exhibit A, showing the record accessed December
`
`17, 2008, for “fungicide” on Answers.com.
`
`Austin in view of Answers.com doesnotteach or suggest the invention as
`
`claimed. Austin states that “The present invention relates to the use of oxaboroles andsalts
`
`thereof as industrial biocides...” Col. 1, lines 6-8. A previouscitation in the literature (FR
`
`. useful in inhibiting the growth of micro organisms
`.
`7329370) “discloses that an oxaboroleis .
`in aviation fuels.” Col. 1, lines 39-45. Austin suggests that the disclosed compounds
`“containing an oxaborole ring are particularly effective against .
`.
`. fungi, especially fungi which
`cause degradation of plastics materials.” Col. 1, lines 46-50.
`
`Austin contemplates using oxaboroles for “the protection of a medium susceptible
`to microbial attack.” Col. 1, lines 54 & 55. Examples of a “medium” according to Austin
`include “solvent-based paint”, col. 5, line 8; “a plastics material”, col. 5, line 11; “an aqueous
`
`medium”col. 5, line 15. Austin suggests use of oxaboroles in systems such as
`
`liquid, particularly aqueous, systems such as cooling water liquors,
`paper mill liquors, metal working fluids, geological drilling
`
`Page 5 of 7
`
`FlatWing Ex. 1013, p. 17
`
`FlatWing Ex. 1013, p. 17
`
`

`

`Appl. No. 11/357,687
`Amendmentdated January 23, 2009
`Response to Office Action dated August 26, 2008
`
`PATENT
`
`lubricants, polymer emulsions and especially surface coating
`compositions such as paints, varnishes and lacquers and more
`especially solid materials such as wood,plastics materials[,]
`leather[, and] plastics materials such as plasticised PVC and
`urethanes.|]
`
`Col. 8, lines 1-10. Further, 5-fluoro substituted benzoxaborolesare taught to provide
`
`“particularly useful effects .
`
`.
`
`. in plastics materials and paint films.” Col. 4, lines 50-54. Austin
`
`therefore is specifically directed to industrial uses of benzoxaboroles.
`
`In contrast, claim 27 recites a method oftreating an infection in an animal
`
`comprising administ