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Docket No.: 0020-5041PUS2
`(PATENT)
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent Application of:
`Mitsutaka NAKAMURA et al.
`
`Application No.: 10/525,021
`
`Confirmation No.: 3141
`
`Filed: February 18, 2007
`
`Art Unit: 1617
`
`For: AGENT FOR TREATMENT OF
`SCHIZOPHRENIA
`
`Examiner: C. K. Huynh
`
`REPLY TO RESTRICTION REQUIREMENT
`
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Sir:
`
`In response to the Restriction Requirement issued on August 29, 2007, the following
`
`remarks are respectfully submitted in connection with the above-identified application:
`
`Remarks begin on page 2 of this paper.
`
`Birch, Stewart, Kolasch & Birch, LLP
`
`DRN/JB/whg
`
`Page 1 of 3
`
`SLAYBACK EXHIBIT 1012
`
`

`

`Application No.: 10/525,021
`
`Docket No.: 0020-5041PUS2
`
`REMARKS
`
`The Examiner has required a restriction under 35 U.S.C. § 121 and 372 because the
`
`Examiner contends that the following three groups of claims define subject matter that allegedly
`
`do not form a single inventive concept under PCT Rule 13.1.
`
`Group I, claims 1-13, drawn to a method for treating schizophrenia compnsmg
`
`administering (1R,2S,3R,4S)-N-[ (1R,2R)-2-[ 4-(1 ,2-benzoisothiazol-3-y1 )-1-piperazinylmethyl]-
`
`1-cyclohexylmethyl]-2,3-bicyclo[2.2.1 ]heptanedicarboximide of formula (I);
`
`Group II, claims 14-16, drawn to agent for treatment of schizophrenia compnsmg
`
`(1R,2S,3R,4S)-N-[(1R,2R)-2-[ 4-(1,2-benzoisothiazol-3-y1 )-1-piperazinylmethyl]-1-
`
`cyclohexylmethyl]-2,3-bicyclo[2.2.1 ]heptanedicarboximide of formula (I); and
`
`Group III, claims 17-19, drawn to a method for the preparation of an agent for treatement
`
`of schizophrenia comprising
`
`(1R,2S,3R,4S)-N-[ (1R,2R)-2-[ 4-(1 ,2-benzoisothiazol-3-y1 )-1-
`
`piperazinylmethyl]-1-cyclohexylmethyl]-2,3-bicyclo[2.2.1 ]heptanedicarboximide of formula (I).
`
`Although Applicants do not agree with the Examiner's assertions, Applicants elect the
`
`claims of Group I, claims 1-13, for examination.
`
`Applicants respectfully request early and favorable action on the claims, which define
`
`subject matter that meets all statutory patentability requirements.
`
`Shouid there be any outstanding matters that need to be resoived in the present
`
`application, the Examiner is respectfully requested to contact Mark J. Nuell, Registration No
`
`36,623 at the telephone number of the undersigned below, to conduct an interview in an effort to
`
`expedite prosecution in connection with the present application.
`
`2
`
`DRN/JB/whg
`
`Page 2 of 3
`
`SLAYBACK EXHIBIT 1012
`
`

`

`Application No.: 10/525,021
`
`Docket No.: 0020-5041PUS2
`
`If necessary, the Commissioner is hereby authorized in this, concurrent, and future
`
`replies, to charge payment or credit any overpayment to our Deposit Account No. 02-2448 for
`
`any additional fees required under 37 C.P.R. § 1.16 or under § 1.17; particularly, extension of
`
`time fees.
`
`Dated: October 1, 2007
`
`Respectfully submitted,
`
`~arh#u~__._QQ
`
`Registration No.: 36,623
`BIRCH, STEW ART, KOLASCH & BIRCH, LLP
`12770 High Bluff Drive
`Suite 260
`San Diego, California 92130
`(858) 792-8855
`Attorney for Applicant
`
`3
`
`DRN/JB/whg
`
`Page 3 of 3
`
`SLAYBACK EXHIBIT 1012
`
`

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