`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 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, SAMANTHAL
`
`1626
`
`DATE MAILED: 12/13/2013
`
`14/032,183
`
`09/19/2013
`
`Andreas Bathe
`
`120140—001 10
`
`2870
`
`TITLE OF INVENTION: POLYMORPHIC FORMS OF 1—[4—(5—CYANOINDOL—3—YL)BUTYL]—4—(2—CARBAMOYLBENZOFURAN—S—YL) PIPERAZINE
`HYDROCHLORIDE
`
`
`
`
`
`APPLN. TYPE
`
`ENTITY STATUS
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE
`
`PREV. PAID ISSUE FEE
`
`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 ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
`THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
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`SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
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`DUE.
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`HOW TO REPLY TO THIS NOTICE:
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`II. PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
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`IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
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`
`PTOL—85 (Rev. 02/11)
`
`Page 1 of4
`
`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
`PO. Box 1450
`Alexandria, Virginia 22313-1450
`or m (571)-273-2885
`
`through 5 should be completed where
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`ap ropriate. All further correspondence including the Patent, advance orders and notification of maintenance fees will be mailed to the current correspondence address as
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`CURRENT CORRESPONDENCE ADDRESS (Note: Use Block 1 for any change ofaddFESS)
`
`12/13/2013
`7590
`86738
`MCCARTER & ENGLISH, LLP BOSTON
`265 F nkl‘ St
`t
`ra m 1‘66
`Boston, MA 02110
`
`Note: A certificate of mailin can only be used for domestic mailings of the
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`Certificate of Mailing or Transmission
`I hereby certify that this Fee(s) Transmittal is being deposited with the United
`tates osta
`erv1ce W1
`su 1c1ent postage or 1rst c ass ma1 1n an enve ope
`s
`P
`1s
`'
`'th
`ff'
`'
`f
`f'
`1
`'1 '
`1
`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)
`
`(Date)
`
`APPLICATION NO.
`
`FILING DATE
`
`
`
`
`
` F {ST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`14/032,183
`
`09/19/2013
`
`Andreas Bathe
`
`120140—001 10
`
`2870
`
`TITLE OF INVENTION: POLYMORPHIC FORMS OF 1—[4—(5—CYANOINDOL—3—YL)BUTYL]—4—(2—CARBAMOYLBENZOFURAN—5—YL) PIPERAZINE
`HYDROCHLORIDE
`
`APPLN. TYPE
`
`ENTITY STATUS
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE
`
`PREV. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`DATE DUE
`
`nonprovisional
`
`UNDISCOUNTED
`
`$1780
`
`$0
`
`$0
`
`$1780
`
`03/13/2014
`
`SHTERENGARTS, SAMANTHA L
`
`1626
`
`5 14— 254090
`
`1. Change of correspondence address or indication of "Fee Address" (37
`CFR 1.363).
`
`3 Chan e of correspondence address (or Change of Correspondence
`Address orm PTO/SB/ 122) attached.
`
`3 "Fee Address" indication (or "Fee Address" Indication form
`PTO/SB/47; Rev 03—02 or more recent) attached. Use of a Customer
`Vumber is required.
`
`
`
`2. For printing on the patent front page, list
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`or agents OR, alternatively,
`(2) the name of a single firm (having as a member a
`registered attorney or agent) and the names of up to
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`listed, no name will be printed.
`
`
`
`
`
`2
`
`3
`
`3. ASSIGNEE NAME AND RESIDENCE DATA TO BE PRINTED ON THE PATENT (print or 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) :
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`'3 Individual
`
`'3 Corporation or other private group entity '3 Government
`
`4a. The following fee(s) are submitted:
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`
`
`
`3 Publication Fee (No small entity discount permitted)
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`3 The Director is hereby authorized to charge the required fee(s), any deficiency, or credit any
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`(enclose an extra copy of this form).
`
`
`
`PTOL—85 (Rev. 02/11)
`
`Page2of4
`
`PageZ
`
`Page 2
`
`

`

`5. Change in Entity Status (from status indicated above)
`3 Applicant certifying micro entity status. See 37 CFR 1.29
`
`3 Applicant asserting small entity status. See 37 CFR 1.27
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` 3 Applicant changing to regular undiscounted fee status.
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`NOTE: Absent a valid certification of Micro Entity Status (see form PTO/SB/ 15A and 15B), issue
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`NOTE: If the application was previously under micro entity status, checking this box will be taken
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`NOTE: Checking this box will be taken to be a notification of loss 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 other than the applicant; a registered attorney or agent; or the assignee or other party in
`interest as shown by the records of the United States Patent and Trademark Office.
`
`Authorized Signature
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`Typed or printed name
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`Date
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`Registration No.
`
`This collection of information1s required by 37 CFR 1. 311. The information1s re uired to obtain or retain a benefit by the public which1s to file (and by the USPTO to process)
`an application. Confidentiality1s governedby 35 U.S.C. 122 and 37 CFR 1. 14.Tl1is collection1s estimated to take 12 minutes to complete including gathering, prepar1ng, and
`submitting the completed application form to the USPTO. Time will v
`eendin upon the individual case. Any comments on the amount of time you require to complete
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`eC ief In ormation Officer U.S. Patent and Trademark Office U.S. Department of Commerce P.O.
`Box 1450 Alexandgria, Virg1nia 22313— 1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents P.O. Box 14,50
`Alexandria, Virginia 22313— 1450.
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`
`PTOL—85 (Rev. 02/11) Approved for use through 08/31/2013.
`
`OMB 0651—0033
`
`US. Patent and Trademark Office; US. DEPARTMERfigélg COMMERCE
`
`Page 3 of 4
`
`Page 3
`
`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`APPLICATION NO.
`
`FILING DATE
`
`
`
`
`F {ST NAMED INVENTOR
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`14/032,183
`
`09/19/2013
`
`Andreas Bathe
`
`120140—001 10
`
`2870
`
`86738
`
`7590
`
`12/13/2013
`
`MCCARTER & ENGLISH, LLP BOSTON
`265 Franklin Street
`B MA 02110
`
`SHTERENGARTs, SAMANTHAL
`
`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
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`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 0f 4
`
`page 4
`
`Page 4
`
`

`

`Privacy Act Statement
`
`The Privacy Act of 1974 (PL. 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: (l) 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 US. 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 US. Patent and Trademark Office may not be able to process and/or examine
`your submission, which may result in termination of proceedings or abandonment of the application or
`expiration of the patent.
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`The information provided by you in this form will be subject to the following routine uses:
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`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
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`A record from this system of records may be disclosed, as a routine use, in the course of presenting
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`. 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
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`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 GSA as part of
`that agency's responsibility to recommend improvements in records management practices and
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`with the GSA regulations governing inspection of records for this purpose, and any other relevant
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`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 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 enforcement agency, 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—SS)
`
`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 due is 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) decreases to $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 amount in effect on January 1, 2014.
`
`Page 6
`
`Page 6
`
`

`

`
`
`.
`.
`.
`NOTICE Of Allowability
`
`Application No.
`14/032,183
`E
`'
`82:12:10: Shterengarts
`
`Applicant(s)
`BATHE ET AL.
`A U '
`AIA (First Inventor to
`16t26 mt
`File) Status
`No
`
`-- The MAILING DA TE of 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 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.
`
`1. IXI This communication is responsive to 19 September 2013.
`
`I] A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`
`
`2. I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`requirement and election have been incorporated into this action.
`
`; the restriction
`
`3. E The allowed claim(s) is/are 56-70 (renumbered 1-15) . As a result of the allowed claim(s), you may be eligible to benefit from the
`Patent Prosecution Highway program at a participating intellectual property office for the corresponding application. For more
`
`information, please see htt ‘://'www.us tor ov/batents/init eventsx‘ h/indexis or send an inquiry to PPeredbacka us ‘to. 0v .
`
`4. X Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`
`Certified copies:
`
`a) [XI AII
`
`b) I] Some
`
`*c) I] None of the:
`
`1. IX Certified copies of the priority documents have been received.
`
`2. El Certified copies of the priority documents have been received in Application No. _
`
`3. El Copies of the certified copies of the priority documents have been received in 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 of this application.
`THIS THREE-MONTH PERIOD IS NOT EXTENDABLE.
`
`5. El CORRECTED DRAWINGS (as “replacement sheets”) must be submitted.
`
`El
`
`including changes required by the attached Examiner’s Amendment / Comment or in the Office action of
`Paper No./Mai| 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. I] DEPOSIT OF and/or INFORMATION about the deposit of BIOLOGICAL MATERIAL must be submitted. Note the
`attached Examiner’s comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.
`
`Attachment(s)
`1. I] Notice of References Cited (PTO-892)
`
`2. IX Information Disclosure Statements (PTO/SB/08),
`Paper No./Mai| Date 9/19/2013
`3. I] Examiner‘s Comment Regarding Requirement for Deposit
`of Biological Material
`4. El Interview Summary (PTO-413),
`
`Paper No./Mai| Date
`
`/Samantha Shterengarts/
`Primary Examiner, Art Unit 1626
`
`5. El Examiner‘s Amendment/Comment
`
`6. [XI Examiner‘s Statement of Reasons for Allowance
`
`7. D Other
`
`.
`
`
`
`US. Patent and Trademark Office
`
`PTOL-37 (Rev. 08-13)
`
`Notice of Allowability
`
`Part of Paper No./Mai| Date 20131202
`
`Page 7
`
`Page 7
`
`

`

`Application/Control Number: 14/032,183
`
`Page 2
`
`Art Unit: 1626
`
`1.
`
`2.
`
`DETAILED ACTION
`
`The present application is being examined under the pre—AIA first 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—
`
`obvious over the prior art. The closest prior art is US. Patent no. 5,532,241, which does not
`
`teach the claimed crystalline forms. This reference does not encompass the 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—S—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 prior art.
`
`Any comments considered necessary by applicant must be submitted no later than the
`
`payment of the issue fee and, to avoid processing delays, should preferably accompany the issue
`
`fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for
`
`Allowance.”
`
`Conclusion
`
`Page 8
`
`Page 8
`
`

`

`Application/Control Number: 14/032,183
`
`Page 3
`
`Art Unit: 1626
`
`5.
`
`6.
`
`Claims 56—70 (renumbered 1—15) are allowed.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Samantha Shterengarts Whose telephone number is (571)270—
`
`5316. The examiner can normally be reached on Monday thru Thursday 9—6pm.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Mr. Joseph K. McKane can be reached on 571—272—0699. The fax phone number for
`
`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
`
`may be 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 Customer Service 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
`
`