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
`Alexandri~ Virginia 22313-1450
`www .uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`13/901,437
`
`05/23/2013
`
`Giorgio Calderari
`
`23278.2.US.8
`
`8160
`
`07/12/2013
`7590
`53449
`PATENT CORRESPONDENCE
`ARNALL GOLDEN GREGORY LLP
`171 17TH STREET NW
`SUITE2100
`A1LANTA, GA 30363
`
`EXAMINER
`
`GEMBEH, SHIRLEY V
`
`ART UNIT
`
`PAPER NUMBER
`
`1628
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/12/2013
`
`ELECTRONIC
`
`Please fhid below and/or attached an Office communication concerning this application or proceeding.
`
`The titne period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`patents@agg.com
`
`PTOL-90A (Rev. 04/07)
`
`Dr. Reddy’s Laboratories, Ltd., et al.
`v.
`Helsinn Healthcare S.A., et al.
`U.S. Patent No. 9,(cid:20)(cid:26)(cid:22),(cid:28)(cid:23)(cid:21)
`Reddy Exhibit 1017
`
`Exh. 1017
`
`

`
`UNITED STATES DEPARTMENT OF COMMERCE
`U.S. Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`APPLICATION NO./
`CONTROL NO.
`13/901,437
`
`FILING DATE
`
`23 May, 2013
`
`FIRST NAMED INVENTOR I
`PATENT IN REEXAMINATION
`CALDERARI ET AL.
`
`ATTORNEY DOCKET NO.
`
`23278.2.US.8
`
`PATENT CORRESPONDENCE
`ARNALL GOLDEN GREGORY LLP
`171 17TH STREET NW
`SUITE 2100
`ATLANTA, GA 30363
`
`EXAMINER
`
`RICHARD ELLIS
`
`ART UNIT
`
`PAPER
`
`OPIM
`
`A-36051
`
`DATE MAILED:
`
`Please find below and/or attached an Office communication concerning this application or
`proceeding.
`
`Attached is a communication to applicant explaining that the instant application is being identified as a pre-AlA application despite
`applicant's statement under 37 CFR 1.55 or 1.78 made in the instant application, either on the Application Data Sheet (ADS) or in an
`otherwise filed paper.
`
`Commissioner for Patents
`
`PT0-90C (Rev.04-03)
`
`Exh. 1017
`
`

`
`Application Identified as a Pre-AlA Application
`Despite the 37 CFR 1.55 or 1.78 Statement of Record
`
`The statement under 37 CFR 1.55 or 1.78 ("the 1.55/1.78 statement") and the domestic
`benefit/national stage information in this application conflict as to whether this application is to
`be examined under the AlA (First Inventor to File) or pre-AlA (First to Invent) law.
`
`This application, with a filing date on or after March 16, 2013, contains the 1.55/1.78 statement
`indicating that this application should be examined under the AlA (First Inventor to File). This
`statement was either (1) on the Application Data Sheet (ADS) by virtue of the 1.55/1.78
`statement for AlA (First Inventor to File) Transition Applications check box being selected or (2)
`in an otherwise filed paper. The 1.55/1.78 statement provided:
`This application * * * contains, or contained at any time, a claim to a claimed invention
`that has an effective filing date on or after March 16, 2013.
`
`However, this application is separately identified in the Domestic Benefit/National Stage
`Information section of the ADS as a continuation (CON) or divisional (DIY) of an application
`filed before March 16, 2013, indicating that this application should be examined under pre-AlA
`(First to Invent) law because it does not contain, or did not contained at any time, a claim to a
`claimed invention that has an effective filing date on or after March 16, 2013. DUE TO THIS
`APPLICATION BEING IDENTIFIED AS A CONTINUATION OR DIVISIONAL OF AN
`APPLICATION FILED BEFORE MARCH 16,2013, THIS APPLICATION IS BEING
`IDENTIFIED AS A PRE-AlA (FIRST TO INVENT) APPLICATION DESPITE THE 1.55/1.78
`STATEMENT OF RECORD.
`
`Accordingly, this application is/will be examined under pre-AlA (First to Invent) law; all
`forthcoming Office actions on the merits will be labeled "AlA (First Inventor to File) Status:
`No" (see upper right box on form PTOL-37 /37D and/or PTOL-326/326AE).
`
`Moreover, if applicant has received any Office action on the merits, which identified the instant
`application as "AlA (First Inventor to File) Status: Yes," said Status information was in error
`and is hereby corrected to "No" to indicate that that the present application is a pre-AlA (First to
`Invent) application.
`
`NO RESPONSE TO THIS COMMUNICATION IS REQUIRED UNLESS APPLICANT
`BELIEVES THAT THE APPLICATION CONTAINS, OR EVER CONTAINED A CLAIM TO
`A CLAIMED INVENTION HAVING AN EFFECTIVE FILING DATE ON OR AFTER
`MARCH 16,2013 AND IS AN AlA (FIRST INVENTOR TO FILE) APPLICATION.
`
`If applicant believes that the application is an AlA (First Inventor to File) application, applicant
`must file a corrected ADS (with appropriate markings as set forth in 37 CFR 1.76(c)(2))
`identifying the instant application as a continuation-in-part (CIP) application in the Domestic
`Benefit/National Stage Information section of the ADS and request in writing that the application
`
`Page 1 of 2
`
`Exh. 1017
`
`

`
`be examined under the AlA (First Inventor to File) because the identification of the application
`as a CON/DIY application on filing was an error. IN THIS SITUATION, APPLICANT'S
`RESPONSE IS DUE WITHIN TWO MONTHS OF THE MAILING DATE OF THIS
`COMMUNICATION; THE RESPONSE PERIOD IS NOT EXTENDABLE UNDER 37 CPR
`1.136.
`
`Questions regarding this communication may be directed to a TC AlA Specialist as appropriate.
`
`Technology Center
`
`TC AlA Specialist
`
`Contact Information
`
`1600,1700,2900
`2100,2400
`2600,2800
`3600,3700
`
`Kathleen Bragdon
`Christopher Grant
`Cassandra Spyrou
`Tom Hughes
`
`(571) 272-0931
`( 571) 272-7294
`(571) 272-1624
`(571) 272-4357
`
`Page 2 of 2
`
`Exh. 1017