`Doc code: IDS
`Approved for use through 071312016. OMB 0651-0031
`.
`.
`.
`_
`.
`.
`US. Patent and Trademark Office; US. DEPARTMENT OF COMMERCE
`Doc description. Information Disclosure Statement (IDS) FIIed
`Under the Paperwork Reduction Act of 1995. no persons are required to respond to a collection of information unless it contains a valid OMB control number.
`
`
`
`| 5789862
`
`
`I N
`
`IA
`
`Application Number
`Filing Date
`
`First Named Inventor
`
`
`
`
`IN FORMATION DISCLOSU RE
`
`STATEMENT BY APPLICANT
`
`( Not for submission under 37 CFR 1.99)
`
`Art Unit
`
`Examiner Name
`Not Yet Assigned
`Attorney Docket Number
`I AVN-OOQDVCNT
`
`
`
`
`
`
`
`
`U.S.PATENTS
`-
`
`
`Examiner Cite
`Initial*
`No
`
`Patent Number
`
`Kind
`Code1 Issue Date
`
`Name of Patentee or Applicant
`Of cited Document
`
`Pages,ColumnS,LineS where
`Relevant Passages or Relevant
`Figures Appear
`
`
`
`If you wish to add additional US. Patent citation information please click the Add button.
`Add
`U.S.PATENT APPLICATION PUBLICATIONS -
`
`
`Examiner Cite No Publication
`Initial*
`Number
`
`Publication
`Kind
`Code1 Date
`
`Name of Patentee or Applicant
`Of cited Document
`
`Pages,ColumnS,LineS where
`Relevant Passages or Relevant
`Figures Appear
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`If you wish to add additional U.S. Published Application citation information please click the Add button. Add
`FOREIGN PATENT DOCUMENTS
`-
`
`
`
`Pages,Columns,LineS
`
`Name of Patentee or
`
`where Relevant
`Kind
`Publication
`
`Examiner Cite Foreign Document
`Applicant of cited
`T5
`|nitia|*
`No
`Number3
`
`Code4 Date
`Passages or Relevant
`
`
`Document
`
`
`Figures Appear
`
`
`
`If you wish to add additional Foreign Patent Document citation information please click the Add button
`NON-PATENT LITERATURE DOCUMENTS -
`
`
`Include name of the author (in CAPITAL LETTERS), title Of the article (when appropriate), title of the item
`T5
`(book, magazine, journal, serial, symposium, catalog, etc), date, pageS(S), volume-issue number(s),
`publisher, city and/or country where published.
`
`
`EFS Web 2.1.17
`
`
`
`
`
`
`
`IN FORMATION DISCLOSU RE
`STATEMENT BY APPLICANT
`.
`.
`( Not for submissmn under 37 CFR 1.99)
`
`Application Number 15789862
`
`Filing Date
`2017-10-20
`First Named Inventor
`Peter SAZANI
`
`Art U .
`
`mt
`I N/A
`Examiner Name
`Not Yet Assigned
`
` Attorney Docket Number
`
`
`
`
`I AVN-OOQDVCNT
`
`IaxoSmithKline, "Prosensa regains rights to drisapersen from GSK and retains rights to all other programmes for the
`reatment of Duchenne muscular dystrophy (DMD), press release, 4 pages, dated January 13, 2014 (Exhibit 2040 in
`nterferences 106007, 106008, and 106013 on November 18, 2014).
`
`OEMANS, Nathalie M. et aI., "Systemic Administration of PR0051 in Duchenne's Muscular Dystrophy," The New
`ngland Journal of Medicine, Vol. 364:1513-1522 (2011) (Exhibit Number 2036 filed in interferences 106008, 106013,
`06007 on November 18, 2014)
`
`ORDON, Peter M. et aI., "Metal ion catalysis during the axon-ligation step of nuclear pre-mRNA splicing: Extending
`he parallels between the spliceosome and group II introns," RNA, Vol. 6:199-205 (2000) (Exhibit Number 1055 filed in
`nterferences 106008, 106007 on November 18,2014)
`
`ordon, Peter M., et aI., "Kinetic Characterization of the Second Step of Group II Intron Splicing: Role of Metal Ions
`-nd the Cleavage Site 2'—OH in Catalysis," Biochemistry, Vol. 39, pp. 12939-12952 (2000), Exhibit Number 1188 filed
`n Interferences 106,007 and 106,008 on February 17, 2015.
`
`OYENVALLE, Aurelie et al., "Prevention of Dystrophic Pathology in Severely Affected DystrophinIUtrophin—deficient
`ice by Morpholino-oligomer—mediated Exon—skipping," Molecular Therapy, Vol. 18(1):198—205 (2010)
`
`AMMOND, Suzan M. et aI., "Correlating In Vitro Splice Switching Activity With Systemic In Vivo Delivery Using Novel
`' EN—modified Oligonucleotides," Molecular Therapy — Nucleic Acids, Vol. 3:1, 11 pages (2014) (Exhibit Number 2011
`"ed in interferences 106008, 106013, 106007 on November 18, 2014)
`
`ammond, Suzan M., et al., "Genetic therapies for RNA mis—splicing diseases," Cell, Vol.27, No. 5, pp. 196—205 (May,
`'011), Exhibit Number 1113 filed in interferences 106,007 and 106,008 on February 17, 2015.
`
`ammond,Suzan M., et aI., "PRO—051, an antisense oligonucleotide for the potential treatment of Duchenne muscular
`ystrophy," Curr. Opinion Mol. Therap., Vol. 12, No.4, pp. 478—486 (2010), Exhibit Number 1121 filed in interferences
`06,007 and 106,008 on February 13,2015.
`
`ARDING, PL et al., "The Influence of Antisense Oligonucleotide Length on Dystrophin Exon Skipping," Molecular
`herapy, Vol. 15(1):157—166 (2007) (Exhibit Number 1030 filed in interferences 106008, 106007 on November 18,
`
`AREL—BELLAN, Annick et al., "Specific Inhibition of c—myc Protein Biosynthesis Using an Antisense Synthetic Deoxy—
`oligonucleotide in Human T Lymphocytes," The Journal of Immunology, Vol. 140(7):2431-2435 (1988)
`
`avenga, M.J.E., et al., "Exploiting the Natural Diversity in Adenovirus Tropism for Therapy and Prevention of
`Iisease," J. Virol., Vol. 76, No. 9, pp. 4612—4620 (May, 2002), Exhibit Number 1123 filed in interferences 106,007 and
`06,008 on February 13, 2015.
`
`EFS Web 2.1.17
`
`
`
`
`
`
`15789862
`
`IN FORMATION DISCLOSU RE
`STATEMENT BY APPLICANT
`
`( Not for submission under 37 CFR 1.99)
`
`
`Filing Date
`2017-10-20
`First Named Inventor
`Peter SAZANI
`
`Art Unit
`|NIA
`
` Application Number
`
`Examiner Name
`Not Yet Assigned
`Attorney Docket Number
`
`(A)N
`
`4:.
`
`—l—l
`
`EASMAN, Janet, "Morpholino Oligos: Making Sense of Antisense?" Developmental Biology, Vol. 243:209—214 (2002)
`
`EEMSKERK, Hans A. et al., "In vivo comparison of 2'—O—methyl phosphorothioate and morpholino antisense
`ligonucleotides for Duchenne muscular dystrophy exon skipping," The Journal of Gene Medicine, Vol. 11:257-266
`2009) (Exhibit Number 2020 filed in interferences 106008, 106013, 106007 on November 18, 2014)
`
`EID, Christian A. et al., "Real Time Quantitative PCR," Genome Research, Vol. 6:986—994 (1996) (Exhibit Number
`061 filed in interferences 106008, 106007 on November 18, 2014)
`
`ERSCHLAG, Daniel et al., "Contributions of 2' Hydroxyl Groups of the RNA Substrate to Binding and Catalysis by the
`etrahymena Ribozyme: An Energetic Picture of an Active Site Composed of RNA," Biochemistry, Vol. 32:8299—8311
`1993) (Exhibit Number 1031 filed in interferences 106008, 106007 on November 18, 2014)
`
`offman EP, et al., "Characterization of dystrophin in muscle—biopsy specimens from patients with Duchenne's or
`:ecker‘s muscular dystrophy" N Engl J Med 1988;318:1363-68.
`
`offman EP, et al., "Restoring dystrophin expression in Duchenne muscular dystrophy muscle: Progress in exon
`kipping and stop codon read through," Am J Path 2011;179:12—22.
`
`UDZIAK, Robert M. et al., "Antiproliferative Effects of Steric Blocking Phosphorodiamidate Morpholino Antisense
`gents Directed against c—myc," Antisense & Nucleic Acid Drug Development, Vol. 10:163-176 (2000) (Exhibit Numbe
`032 filed in interferences 106008, 106007 on November 18, 2014)
`
`UDZIAK, Robert M. et al., "Resistance of Morpholino Phosphorodiamidate Oligomers to Enzymatic Degradation,"
`‘ ntisense & Nucleic Acid Drug Development, Vol. 6:267-272 (1996)
`
`USSEY, Nicole D. et al., "Analysis of five Duchenne muscular dystrophy exons and gender determination using
`nventional duplex polymerase chain reaction on single cells," Molecular Human Reproduction, Vol. 5(11):1089—1094
`1999)
`
`nterim Guidance on Patent Subject Matter Eligibility ("the December Guidance," 16 pages,(Exhibit Number 2119 filed
`n interferences 106,007 and 106,008 on February 17, 2015.
`
`ntemational Patent Application No. PCT/AU2000I00693 ("Wraight"), published as WO 00/78341 on December 28,
`'000, 201 pages, (Exhibit Number 2125 filed in interferences 106,007 and 106,008 on February 17, 2015.
`
`
`
`
`|AVN-009DVCN7
`
`—l—l"NlU'i
`
`—l
`
`|\J|\J—‘O
`
`|\JN
`
`EFS Web 2.1.17
`
`
`
`
`
`
`
`IN FORMATION DISCLOSU RE
`STATEMENT BY APPLICANT
`.
`.
`( Not for submrssron under 37 CFR 1.99)
`
`Application Number 15789862
`
`Filing Date
`2017-10-20
`First Named Inventor
`Peter SAZANI
`
`Art U .
`
`mt
`I N/A
`Examiner Name
`Not Yet Assigned
`
` Attorney Docket Number
`
`I AVN-OOQDVCNT
`
`
`
`
`ntemational Preliminary Report on Patentability and Written Opinion for Application No. PCT/US2009/061960, 8
`ages, dated April 26, 2011
`
`ntemational Preliminary Report on Patentability for Application No. PCT/AU2005/000943, 8 pages, dated December
`
`ntemational Preliminary Report on Patentability, PCT/U32013IO77216, dated June 23, 2015, pages 1—7.
`
`ntemational Preliminary Report on Patentability, PCT/U320147029610, dated July 1, 2015, pages 1-122.
`
`ntemational Preliminary Report on Patentability, PCT/U320147029689, dated September 15, 2015, pages 1-10.
`
`ntemational Preliminary Report on Patentability, PCT/U320147029766, dated September 15, 2015, pages 1-10.
`
`ntemational Search Report and Written Opinion of the lntemational Searching Authority issued in International Patent
`‘ pplication No. PCT/US20137077216, 5 pages, dated March 27, 2014
`
`ntemational Search Report and Written Opinion of the lntemational Searching Authority issued in International Patent
`‘ pplication No. PCT/US20147029610, 6 pages, dated September 18, 2014
`
`ntemational Search Report and Written Opinion of the lntemational Searching Authority issued in International Patent
`‘ pplication No. PCT/US20147029689, 8 pages, dated October 21, 2014
`
`ntemational Search Report and Written Opinion of the lntemational Searching Authority issued in International Patent
`‘ pplication No. PCT/US20147029766, 8 pages, dated October 21, 2014
`
`ntemational Search Report and Written Opinion, PCT/US2016/054534, dated January 17, 2017, 13 pages.
`
`|\J00
`
`|\J4:.
`
`|\JUt
`
`00|\J|\J|\J|\JO(.0CO"-I0')
`
`00 _.
`
`00N
`
`0000
`
`EFS Web 2.1.17
`
`
`
`
`
`
`15789862
`
`IN FORMATION DISCLOSU RE
`STATEMENT BY APPLICANT
`
`( Not for submission under 37 CFR 1.99)
`
`
`Filing Date
`2017-10-20
`First Named Inventor
`Peter SAZANI
`
`Art Unit
`|NIA
`
` Application Number
`
`Examiner Name
`Not Yet Assigned
`Attorney Docket Number
`
`ntemational Search Report for Application No. PCT/AU2005I000943, 5 pages, dated October 20, 2005
`
`ntemational Search Report for Application No. PCT/USO1I14410, 5 pages, dated March 6, 2002
`
`
`
`
`|AVN-009DVCNT
`
`00000'14:
`
`000')
`
`4:-000000O(.003"-l
`4:-4:-4:-00N—‘
`
`4:.4:.
`
`EFS Web 2.1.17
`
`ntemational Search Report for Application No. PCT/US2009I061960, 9 pages, dated April 6, 2010
`
`nvitation to pay fees and Partial lntemational Search Report issued by the International Search Authority in
`ntemational Patent Application No. PCT/USZO14I029689, 8 pages, dated July 29, 2014
`
`SIS Pharmaceuticals website, 2 pages, http:/Iwwwisispharm.comlPipelinelTherapeutic—Arealether.htm (2014)
`Exhibit Number 2021 filed in interferences 106008, 106013, 106007 on November 18, 2014)
`
`VERSEN, Patrick L. et al., "Efficacy of Antisense Morpholino Oligomer Targeted to c—myc in Prostate Cancer
`' enograft Murine Model and a Phase I Safety Study in Humans," Clinical Cancer Research, Vol. 92510-2519 (2003)
`
`ARVER, Peter et al., "A Chemical View of Oligonucleotides for Exon Skipping and Related Drug Applications,"
`ucleic Acid Therapeutics, Vol. 24(1):37-47 (2014) (Exhibit Number 2061 filed in interferences 106008, 106013,
`06007 on November 18, 2014)
`
`ASON, Tracey L.H. et al., "Toxicology of antisense therapeutics," Toxicology and Applied Pharmacology, Vol.
`'01 :66—83 (2004) (Exhibit Number 2027 filed in interferences 106008, 106013, 106007 on November 18, 2014)
`
`EARAWIRIYAPAISARN, Natee et al., "Long-term improvement in mdx cardiomyopathy afler therapy with peptide—
`njugated morpholino oligomers," Cardiovascular Research, Vol. 85:444-453 (2010)
`
`EARAWIRIYAPAISARN, Natee et al., "Sustained Dystrophin Expression Induced by Peptide—conjugated Morpholino
`oligomers in the Muscles of mdx Mice," Mol. Ther_, Vol. 16(9):1624—1629 (2008)
`
`ett Foundation Presentation by McSherry, C. "Patient and Caregiver-Reported Outcomes of Patients in Clinical Trials
`f Eteplirsen for Treatment of Duchenne" at Peripheral and Central Nervous System Drugs Advisory Committee, April
`'5, 2016, 17 pages.
`
`
`
`
`
`
`
`Application Number 15789862
`
`IN FORMATION DISCLOSU RE
`STATEMENT BY APPLICANT
`.
`.
`( Not for submissmn under 37 CFR 1.99)
`
`
`Filing Date
`2017-10-20
`First Named Inventor
`Peter SAZANI
`
`Art U .
`mt
`I N/A
`
`Examiner Name
`Not Yet Assigned
`
` Attorney Docket Number
`
`
`: :918—928 (2009)
`
`I AVN-009DVCN7
`
`ob Posting by Sarepta for "Scientist II, Muscle Biology" (2 pages), (Academisch Ziekenhuis Leiden Exhibit 1233, filed
`‘ pril 3, 2015 in Interference 106007 and 106008).
`
`ONES, Simon S. et al., "The Protection of Uracil and Guanine Residues in Oligonucleotide Synthesis," Tetrahedron
`etters, Vol. 22(47):4755—4758 (1981)
`
`A RLEN, Yann et al., "Statistical significance of quantitative PCR," BMC Bioinforrnatics, 8:131, 16 pages (2007)
`Exhibit Number 1033 filed in interferences 106008, 106007 on November 18, 2014)
`
`‘ RRAS, James G. et aI., "Deletion of Individual Exons and Induction of Soluble Murine Interleukin—5 Receptor—alpha
`hain Expression through Antisense Oligonucleotide-Mediated Redirection of Pre-mRNA splicing," Molecular
`'harmacology, Vol. 58:380-387 (2000)
`
`YE, Ed, "Results of the Eteplirsen Phase 2b and Phase 2b Extension Study in Duchenne Muscular Dystrophy," 8th
`‘ nnual Meeting of the Oligonucleotide Therapeutics Society, Session 9: Advances in Oligonucleotide Clinical
`Development II, Page 48 (2012)
`
`INALI, Maria et al., "Local restoration of dystrophin expression with the morpholino oligomer AVI—4658 in Duchenne
`uscular dystrophy: a single-blind, placebo—controlled, dose—escalation, proof-of—concept study," Lancet Neurot, Vol.
`
`If you wish to add additional non-patent literature document citation information please click the Add button Add
`EXAMINER SIGNATURE
`
`*EXAMINER: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through a
`citation if not in conformance and not considered.
`Include copy of this form with next communication to applicant.
`
`1 See Kind Codes of USPTO Patent Documents at www.USPTO.GOV or MPEP 901.04. 2 Enter office that issued the document, by the two-letter code (WIPO
`Standard ST.3). 3 For Japanese patent documents, the indication of the year of the reign of the Emperor must precede the serial number of the patent document.
`4 Kind of document by the appropriate symbols as indicated on the document under WIPO Standard ST.16 if possible. 5 Applicant is to place a check mark here if
`English language translation is attached.
`
`EFS Web 2.1.17
`
`
`
`
`
`Application Number 15789862
`
`Filing Date
`2017-10-20
`First Named Inventor
`Peter SAZANI
`
`Art U .
`
`mt
`I N/A
`Examiner Name
`Not Yet Assigned
`I AVN-009DVCN7
`
`IN FORMATION DISCLOSU RE
`STATEMENT BY APPLICANT
`.
`.
`( Not for submissmn under 37 CFR 1.99)
`
`
`
` Attorney Docket Number
`
`
`
`
`
`Please see 37 CFR 1.97 and 1.98 to make the appropriate selection(s):
`
`CERTIFICATION STATEMENT
`
`That each item of information contained in the information disclosure statement was first cited in any communication
`from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the
`information disclosure statement. See 37 CFR 1.97(e)(1).
`
`OR
`
`That no item of information contained in the information disclosure statement was cited in a communication from a
`
`foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification
`after making reasonable inquiry, no item of information contained in the information disclosure statement was known to
`any individual designated in 37 CFR 1.56(c) more than three months prior to the filing of the information disclosure
`statement. See 37 CFR 1.97(e)(2).
`
`El
`
`See attached certification statement.
`
`The fee set forth in 37 CFR 1.17 (p) has been submitted herewith.
`
`A certification statement is not submitted herewith.
`
`SIGNATURE
`
`A signature of the applicant or representative is required in accordance with CFR 1.33, 10.18. Please see CFR 1.4(d) for the
`form of the signature.
`
`This collection of information is required by 37 CFR 1.97 and 1.98. The information is required to obtain or retain a benefit by the
`public which is to file (and by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR
`1.14. This collection is estimated to take 1 hour 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 amount of time you
`require to complete this form andlor suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S.
`Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND
`FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria,
`VA 22313-1450.
`
`EFS Web 2.1.17
`
`
` NamelPrint
`Signature
`2017—10—30
`
`
`
`
`
`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 andr'or examine your submission, which may
`result in termination of proceedings or abandonment of the application or expiration of the patent.
`
`The information provided by you in 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 the Freedom of Information Act requires disclosure of these record 5.
`
`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 settlement
`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)).
`
`A record from this system of records may be disclosed, as a routine use, to the Administrator, General Services, or
`his/her designee, during an inspection of records conducted by GSA as part 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 abandoned or in which the proceedings were terminated and which application is
`referenced by either a published application, an application open to public inspections 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
`enforcement agency, if the USPTO becomes aware of a violation or potential violation of law or regulation.
`
`
`
`
`
`
`
`EFS Web 2.1.17
`
`