`
`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
`
`86738
`
`7590
`
`12/13/2013
`
`MCCARTER & ENGLISH, LLP BOSTON
`265 Franklin Street
`Boston, MA 02110
`
`SHTERENGARTS, SAMANTHA L
`
`1626
`
`DATE MAILED: 12/13/2013
`
`14/032,183
`
`09/19/2013
`
`Andreas Bathe
`
`120140-00110
`
`2870
`
`TITLE OF INVENTION: POLYMORPHIC FORMSOF1-[4-(5-CYANOINDOL-3-YL)BUTYL]-4-(2-CARBAMOYLBENZOFURAN-S-YL) PIPERAZINE
`HYDROCHLORIDE
`
`
`
`
`
`
`
`
`
`
`
`APPLN. TYPE PUBLICATION FEE DUE|PREV. PAID ISSUE FEEENTITY STATUS ISSUE FEE DUE TOTAL FEE(S) DUE DATE DUE
`
`
`
`
`
`nonprovisional
`
`UNDISCOUNTED
`
`$1780
`
`$0
`
`$0
`
`$1780
`
`03/13/2014
`
`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 ENTITY STATUSshownabove.If the ENTITY STATUSis shown as SMALL or MICRO,verify whether entitlement to that
`entity status still applies.
`If the ENTITY STATUSis the same as shown above, pay the TOTAL FEE(S) DUE shown above.
`If the ENTITY STATUSis changed from that shown above, on PART B - FEE(S) TRANSMITTAL,complete section number5 titled
`"Change in Entity Status (from status indicated above)".
`For purposes of this notice, small entity fees are 1/2 the amount of undiscounted fees, and micro entity fees are 1/2 the amountof small entity
`fees.
`
`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 PUBLICATION FEE(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 isfiled, 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. 02/11)
`
`Page | of 4
`
`Argentum EX1006
`Argentum EX1006
`Page 1
`
`Page 1
`
`
`
`PART B - FEE(S) TRANSMITTAL
`
`Complete and send this form, together with applicable fee(s), to: Mail Mail Stop ISSUE FEE
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, 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
`appropriate. 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)
`
`12/13/2013
`7590
`86738
`MCCARTER & ENGLISH, LLP BOSTON
`265 Franklin Street
`Tankin
`ottee!
`Boston, MA 02110
`
`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
`apers. Each additional paper, such as an assignment or formal drawing, must
`have its own certificate of mailing or transmission.
`Certificate of Mailing or Transmission
`I hereby certify that this Fee(s) Transmittal is being deposited with the United
`tates
`Postal
`Service with
`sufficient postage for
`first class mail
`in an envelope
`States
`Postal Service
`with
`suffici
`for
`first
`cl
`ili
`I
`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)
`
`(ate)
`
`APPLICATION NO.
`
`FILING DATE
`
`
`
`
`
` FIRST NAMED INVENTOR
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATION NO.
`
`14/032,183
`
`09/19/2013
`
`Andreas Bathe
`
`120140-00110
`
`2870
`
`TITLE OF INVENTION: POLYMORPHIC FORMSOF1-[4-(5-CYANOINDOL-3-YL)BUTYL]-4-(2-CARBAMOYLBENZOFURAN-S-YL) PIPERAZINE
`HYDROCHLORIDE
`
`
`
`
`
`
`
`APPLN. TYPE PUBLICATION FEE DUE|PREV. PAID ISSUE FEEENTITY STATUS ISSUE FEE DUE TOTAL FEE(S) DUE DATE DUE
`
`
`
`
`
`nonprovisional
`
`UNDISCOUNTED
`
`$1780
`
`$0
`
`$0
`
`$1780
`
`03/13/2014
`
`SHTERENGARTS, SAMANTHA L
`
`1626
`
`1. Change of correspondence address or indication of "Fee Address" (37
`CFR 1.363).
`LI 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.
`
`
`
`
`
`514-254090
`
`2. For printing on the patent front 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 nonameis
`listed, no namewill be printed.
`
`
`
`43
`
`3. ASSIGNEE NAME AND RESIDENCE DATA TO BE PRINTED ON THE PATENT(printor type)
`If an assignee is identified below, the document has been filed 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) NAME OF 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:
`LI Issue Fee
`_] Publication Fee (No small entity discount permitted)
`LT 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).
`
`
`
`PTOL-85 (Rev. 02/11)
`
`Page 2 of 4
`
`Page 2
`
`Page 2
`
`
`
`5. Change in Entity Status (from status indicated above)
`| Applicantcertifying micro entity status. See 37 CFR 1.29
`
` Lj Applicant changing to regular undiscounted fee status.
`
`Lj Applicant asserting small entity status. See 37 CFR 1.27
`
`
`NOTE:Absenta valid certification of Micro Entity Status (see form PTO/SB/15A and 15B), issue
`fee paymentin the micro entity amountwill not be accepted at the risk of application abandonment.
`NOTE:If the application was previously under micro entity status, checking this box will be taken
`to be a notification ofloss of entitlement to micro entity status.
`
`NOTE: Checking this box will be taken to be a notification ofloss of entitlement to small or micro
`entity status, as applicable.
`
`NOTE: The Issue Fee and Publication Fee (if required) will not be accepted from anyone otherthan 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 which is to file (and by the USPTOto process)
`an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 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 amountof time you require to complete
`this form and/or suggestions for reducing this burden, should be sent tothe chief 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 unless it displays a valid OMBcontrol number.
`
`PTOL-85 (Rev. 02/11) Approved for use through 08/31/2013.
`
`OMB 0651-0033
`
`U.S. Patent and Trademark Office; U.S. DEPARTMERAS8B COMMERCE
`
`Page 3 of 4
`
`Page 3
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`APPLICATION NO.
`
`FILING DATE
`
`
`
`
`FIRST NAMED INVENTOR
`
`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
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATION NO.
`
`14/032,183
`
`09/19/2013
`
`Andreas Bathe
`
`120140-00110
`
`2870
`
`86738
`
`7590
`
`12/13/2013
`
`MCCARTER & ENGLISH, LLP BOSTON
`265 Franklin Street
`Boston, MA 02110
`
`SHTERENGARTS, SAMANTHA L
`
`1626
`
`DATE MAILED: 12/13/2013
`
`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 0 day(s). If the issue fee is paid on the date that is three months after 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 0 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. 02/11)
`
`Page 4 of 4
`
`Page 4
`
`Page 4
`
`
`
`Privacy Act Statement
`
`The Privacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection with
`your submission of the attached form related to a patent application or patent. Accordingly, pursuant to
`the requirements of the Act, please be advised that: (1) the general authority for the collection of this
`information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary; and (3) the
`principal purpose for which the information is used by the U.S. Patent and Trademark Office is to process
`and/or examine your submission related to a patent application or patent. If you do not furnish the
`requested information, the U.S. Patent and Trademark Office may not be able to process and/or examine
`your submission, which may result in termination of proceedings or abandonmentof the application or
`expiration of the patent.
`
`The information provided by youin this form will be subject to the following routine uses:
`
`1. The information on this form will be treated confidentially to the extent allowed under the Freedom
`of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from this system of
`records may be disclosed to the Department of Justice to determine whether disclosure of these
`records is required by the Freedom of Information Act.
`. A record from this system of records may be disclosed, as a routine use, in the course of presenting
`evidence to a court, magistrate, or administrative tribunal, including disclosures to opposing counsel
`in the course of setthement negotiations.
`. A record in this system of records may be disclosed, as a routine use, to a Member of Congress
`submitting a request involving an individual, to whom the record pertains, when the individual has
`requested assistance from the Member with respect to the subject matter of the record.
`. A record in this system of records may be disclosed, as a routine use, to a contractor of the Agency
`having need for the information in order to perform a contract. Recipients of information shall be
`required to comply with the requirements of the Privacy Act of 1974, as amended, pursuant to 5
`U.S.C. 552a(m).
`. A record related to an International Application filed under the Patent Cooperation Treaty in this
`system of records may be disclosed, as a routine use, to the International Bureau of the World
`Intellectual Property Organization, pursuant to the Patent Cooperation Treaty.
`. A record in this system of records may be disclosed, as a routine use, to another federal agency for
`purposes of National Security review (35 U.S.C. 181) and for review pursuant to the Atomic Energy
`Act (42 U.S.C. 218(c)).
`to the Administrator,
`. A record from this system of records may be disclosed, as a routine use,
`General Services, or his/her designee, during an inspection of records conducted by GSAaspart of
`that agency's responsibility to recommend improvements in records management practices and
`programs, under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall be made in accordance
`with the GSA regulations governing inspection of records for this purpose, and any other relevant
`(i.e., GSA or Commerce) directive. Such disclosure shall not be used to make determinations about
`individuals.
`. A record from this system of records may be disclosed, as a routine use, to the public after either
`publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent pursuant to 35
`U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37 CFR 1.14, as a
`routine use, to the public if the record was filed in an application which became abandonedor in
`which the proceedings were terminated and which application is referenced by either a published
`application, an application open to public inspection or an issued patent.
`. A record from this system of records may be disclosed, as a routine use, to a Federal, State, or local
`law enforcementagency, if the USPTO becomes aware of a violation or potential violation of law or
`regulation.
`
`Page 5
`
`Page 5
`
`
`
`Notices of Allowance and Fee(s) Due mailed between October 1, 2013 and
`December 31, 2013
`
`(Addendum to PTOL-85)
`
`If the “Notice of Allowance and Fee(s) Due” has a mailing date on or after October 1, 2013 and before
`January 1, 2014, the following information is applicable to this application.
`
`If the issue fee is being timely paid on or after January 1, 2014, the amount dueis the issue fee and
`publication fee in effect January 1, 2014. On January 1, 2014, the issue fees set forth in 37 CFR 1.18
`decrease significantly and the publication fee set forth in 37 CFR 1.18(d)(1) decreasesto $0.
`
`If an issue fee or publication fee has been previously paid in this application, applicant is not entitled to a
`refund of the difference between the amount paid and the amountin effect on January 1, 2014.
`
`Page 6
`
`Page 6
`
`
`
`Applicant(s)
`BATHE ET AL.
`Art Uni
`AIA (First Inventor to
`
`1 526 m
`
`File) Status
`
`No
`
`
`
`.
`
`Notice of Allowability
`
`aye
`
`Application No.
`14/032,183
`E
`i
`
`Samantha Shterengarts
`
`-- The MAILING DATEof this 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 ALLOWABILITY IS NOT A GRANTOF 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. KJ This communication is responsive to 19 September 2013.
`LIA declaration (s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2. J An election was madeby the applicant in response to a restriction requirementset forth during the interview on
`requirement and election have been incorporatedinto this action.
`
`; the restriction
`
`3. KJ The allowedclaim(s) is/are 56-70 (renumbered 1-15). As a result of the allowed claim(s), you may beeligible to benefit from the
`Patent Prosecution Highway program ata participating intellectual property office for the corresponding application. For more
`information, please see htis://jwww.uspto.gov/patents/init events/oph/index.isp or send an inquiry to PPHieedback@uspio.gov.
`
`4. ] Acknowledgmentis madeof a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`
`Certified copies:
`*c) (J None ofthe:
`a)X All
`b)[LJSome
`1. X] Certified copies of the priority documents have been received.
`2. [] Certified copies of the priority documents have been received in Application No.
`3. [J 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.
`
`5. L] CORRECTED DRAWINGS( as “replacement sheets”) must be submitted.
`(including changes required by the attached Examiner's Amendment / Commentor in 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 drawings in the front (not the back) of
`each sheet. Replacement sheet(s) should be labeled as such in the header according to 37 CFR 1.121(d).
`
`6. [] DEPOSIT OF and/or INFORMATIONaboutthe deposit of BOLOGICAL MATERIAL must be submitted. Note the
`attached Examiner’s comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.
`
`Attachment(s)
`1. [J Notice of References Cited (PTO-892)
`2. X] Information Disclosure Statements (PTO/SB/08),
`Paper No./Mail Date 9/19/2013
`3. [] Examiner's Comment Regarding Requirement for Deposit
`of Biological Material
`4. (1 Interview Summary (PTO-413),
`Paper No./Mail Date
`.
`
`/Samantha Shterengarts/
`Primary Examiner, Art Unit 1626
`
`5. (J Examiner's Amendment/Comment
`6. KJ] Examiner's Statement of Reasons for Allowance
`
`7. J Other
`
`.
`
`U.S. Patent and Trademark Office
`
`PTOL-37 (Rev. 08-13)
`
`Notice of Allowability
`
`Part of Paper No./Mail Date 20131202
`
`Page 7
`
`Page 7
`
`
`
`Application/Control Number: 14/032,183
`
`Art Unit: 1626
`
`Page 2
`
`1,
`
`2.
`
`DETAILED ACTION
`
`The present application is being examined underthe pre-AJAfirst to invent provisions.
`
`Claims 56-70 are pending in the instant application.
`
`Information Disclosure Statement
`
`3.
`
`The information disclosure statements (IDS) submitted on September 19, 2013 were in
`
`compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The IDS documents were
`
`considered. A signed copy of each form 1449 is enclosed herewith.
`
`REASONS FOR ALLOWANCE
`
`4,
`
`The following is an examiner’s statement of reasons for allowance: The instantly claimed
`
`crystalline compounds, compositions, and methods for using the same, are novel and non-
`
`obviousoverthe prior art. The closest prior art is U.S. Patent no. 5,532,241, which does not
`
`teach the claimedcrystalline forms. This reference does not encompassthe scope of the instant
`
`application. This reference lacks identical or obvious crystalline forms of 1-[4-(5-cyanoindol-3-
`
`yl)butyl]-4-(2-carbamoyl-benzofuran-5-yl)-piperazine. A person of ordinary skill in the art
`
`would not have expected that making modifications would retain identical activity as disclosed
`
`in the priorart.
`
`Any comments considered necessary by applicant must be submitted no later than the
`
`paymentof the issue fee and, to avoid processing delays, should preferably accompanythe issue
`
`fee. Such submissions should be clearly labeled “(Comments on Statement of Reasonsfor
`
`Allowance.”
`
`Conclusion
`
`Page 8
`
`Page 8
`
`
`
`Application/Control Number: 14/032,183
`
`Art Unit: 1626
`
`Page 3
`
`5.
`
`6.
`
`Claims 56-70 (renumbered 1-15) are allowed.
`
`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Samantha Shterengarts whose telephone numberis (571)270-
`
`5316. The examiner can normally be reached on Mondaythru Thursday 9-6pm.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Mr. Joseph K. McKanecan be reached on 571-272-0699. The fax phone numberfor
`
`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
`
`maybe 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 CustomerService Representative or access to
`
`the automated information system, call 800-786-9199 (IN USA OR CANADA)or 571-272-
`
`1000.
`
`/Samantha Shterengarts/
`Primary Examiner, Art Unit 1626
`
`Page 9
`
`Page 9
`
`