`(PATENT)
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In re Patent Application of:
`Mitsutaka NAKAMURA et al.
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`Application No.: 10/525,021
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`Confirmation No.: 3141
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`Filed: February 18, 2007
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`Art Unit: 1617
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`For: AGENT FOR TREATMENT OF
`SCHIZOPHRENIA
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`Examiner: C. K. Huynh
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`REPLY TO RESTRICTION REQUIREMENT
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`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Sir:
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`In response to the Restriction Requirement issued on August 29, 2007, the following
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`remarks are respectfully submitted in connection with the above-identified application:
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`Remarks begin on page 2 of this paper.
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`Birch, Stewart, Kolasch & Birch, LLP
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`DRN/JB/whg
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`Page 1 of 3
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`SLAYBACK EXHIBIT 1012
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`
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`Application No.: 10/525,021
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`Docket No.: 0020-5041PUS2
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`REMARKS
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`The Examiner has required a restriction under 35 U.S.C. § 121 and 372 because the
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`Examiner contends that the following three groups of claims define subject matter that allegedly
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`do not form a single inventive concept under PCT Rule 13.1.
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`Group I, claims 1-13, drawn to a method for treating schizophrenia compnsmg
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`administering (1R,2S,3R,4S)-N-[ (1R,2R)-2-[ 4-(1 ,2-benzoisothiazol-3-y1 )-1-piperazinylmethyl]-
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`1-cyclohexylmethyl]-2,3-bicyclo[2.2.1 ]heptanedicarboximide of formula (I);
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`Group II, claims 14-16, drawn to agent for treatment of schizophrenia compnsmg
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`(1R,2S,3R,4S)-N-[(1R,2R)-2-[ 4-(1,2-benzoisothiazol-3-y1 )-1-piperazinylmethyl]-1-
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`cyclohexylmethyl]-2,3-bicyclo[2.2.1 ]heptanedicarboximide of formula (I); and
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`Group III, claims 17-19, drawn to a method for the preparation of an agent for treatement
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`of schizophrenia comprising
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`(1R,2S,3R,4S)-N-[ (1R,2R)-2-[ 4-(1 ,2-benzoisothiazol-3-y1 )-1-
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`piperazinylmethyl]-1-cyclohexylmethyl]-2,3-bicyclo[2.2.1 ]heptanedicarboximide of formula (I).
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`Although Applicants do not agree with the Examiner's assertions, Applicants elect the
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`claims of Group I, claims 1-13, for examination.
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`Applicants respectfully request early and favorable action on the claims, which define
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`subject matter that meets all statutory patentability requirements.
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`Shouid there be any outstanding matters that need to be resoived in the present
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`application, the Examiner is respectfully requested to contact Mark J. Nuell, Registration No
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`36,623 at the telephone number of the undersigned below, to conduct an interview in an effort to
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`expedite prosecution in connection with the present application.
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`2
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`DRN/JB/whg
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`Page 2 of 3
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`SLAYBACK EXHIBIT 1012
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`
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`Application No.: 10/525,021
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`Docket No.: 0020-5041PUS2
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`If necessary, the Commissioner is hereby authorized in this, concurrent, and future
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`replies, to charge payment or credit any overpayment to our Deposit Account No. 02-2448 for
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`any additional fees required under 37 C.P.R. § 1.16 or under § 1.17; particularly, extension of
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`time fees.
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`Dated: October 1, 2007
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`Respectfully submitted,
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`~arh#u~__._QQ
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`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
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`3
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`DRN/JB/whg
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`Page 3 of 3
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`SLAYBACK EXHIBIT 1012
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