UNITED STATES PATENT AND TRADEMARK OFFICE
`
`CERTIFICATE OF CORRECTION
`
`PATENT NO.
`APPLICATION NO.
`
`: 8,129,343 B2
`: 11/908834
`
`DATED
`INVENTOR(S)
`
`: March 6, 2012
`: Jesper Lau et al.
`
`Page 1 of 1
`
`It is certified that error appears in the above-identified patent and that said Letters Patent is hereby corrected as shown below:
`
`Onthe Title Page:
`
`Thefirst or sole Notice should read --
`
`Subject to any disclaimer, the term of this patent is extended or adjusted under 35 U.S.C. 154(b)
`by 1046 days.
`
`Signed and Sealed this
`Seventeenth Day of October, 2017
`et
`4
`‘
`sy
`:
`?2
`£
`Pa Ley if
`.
`& oO 7 7
`OF feetee
`
`oe
`oe
`
`
`Joseph Matal
`Performing the Functions and Duties ofthe
`Under Secretary of Commercefor Intellectual Property and
`Director ofthe United States Patent and Trademark Office
`
`MPI EXHIBIT 1004 PAGE1
`
`MPI EXHIBIT 1004 PAGE 1
`
`MPI EXHIBIT 1004 PAGE 1
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Docket No.: 7140.204-US
`(PATENT)
`
`In re Letters Patentof:
`Jesper Lau et al.
`
`Patent No.: 8,129,343
`
`Issued: March 6, 2012
`
`For: Acylated GLP-1 Compounds
`
`REQUEST FOR CERTIFICATE OF CORRECTION
`PURSUANT TO 37 C.EF.R.§1.322
`
`Attention: Certificate of Correction Branch
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Commissioner:
`
`Upon reviewing the above-identified patent, Patentee noted a typographical error which
`
`should be corrected as follows:
`
`On the Title Page
`
`The first or sole Notice should read:
`
`“Subject to any disclaimer, the term of this patent is extended or adjusted under 35
`
`U.S.C. 154(b) by 1046 days.”
`
`On June 23, 2015, the USPTO issued a Patent Term Adjustment Petition decision
`
`granting the present case 1046 days of PTA. The Certificate of Correction issued on September1,
`
`2015 incorrectly states the number of PTA daysas 1114.
`
`7140.204-US - Requestfor Certificate of Correction -- PTO Error-- no fee required (37 CFR 1.322).doc
`
`MPI EXHIBIT 1004 PAGE 2
`
`MPI EXHIBIT 1004 PAGE 2
`
`MPI EXHIBIT 1004 PAGE 2
`
`

`

`Patent No.: 8,129,343
`
`Docket No.: 7140.204-US
`
`Transmitted herewith is a proposed Certificate of Correction effecting such amendment.
`
`Patentee respectfully solicits the granting of the requested Certificate of Correction.
`
`The error wasnotin the application as filed by applicant; accordingly no fee is required.
`
`However,if a fee is due, please charge our Deposit Account No. 14-1447, under Order No.
`
`7140.204-US from which the undersignedis authorized to draw.
`
`Dated: September 18,2017
`
`Respectfully submitted,
`
`Electronic signature:
`
`/ Rosemarie R. Wilk-Orescan, Reg. No. 45,220 /
`
`Rosemarie R. Wilk-Orescan
`Registration No.: 45,220
`NOVO NORDISK INC
`800 Scudders Mill Road
`Plainsboro, New Jersey 08536
`(609) 987-5800
`Attorney For Applicant
`
`MPI EXHIBIT 1004 PAGE 3
`
`MPI EXHIBIT 1004 PAGE 3
`
`MPI EXHIBIT 1004 PAGE 3
`
`

`

`USED IN LIEU OF PTO/SB/44 (09-07)
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`CERTIFICATE OF CORRECTION
`
`Page 1 of 1
`
`PATENT NO.
`
`APPLICATION NO.
`
`ISSUE DATE
`
`INVENTOR(S)
`
`:
`
`:
`
`:
`
`:
`
`8,129,343
`
`11/908,834
`
`March 6, 2012
`
`Jesper Lauetal.
`
`U.S.C. 154(b) by 1046 days.
`
`It is certified that an error appears or errors appearin the above-identified patent and that said
`Letters Patent is hereby corrected as shown below:
`
`On the Title Page:
`
`The first or sole Notice should read:
`
`Subject to any disclaimer, the term of this patent is extended or adjusted under 35
`
`MAILING ADDRESS OF SENDER (Please do not use Customer Number below):
`Rosemarie R. Wilk-Orescan
`NOVO NORDISK INC
`800 Scudders Mill Road
`Plainsboro, New Jersey 08536
`7140.204-US - Certificate of Correction (PTO SB-44).doc
`
`1
`
`MPI EXHIBIT 1004 PAGE 4
`
`MPI EXHIBIT 1004 PAGE 4
`
`MPI EXHIBIT 1004 PAGE 4
`
`

`

`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`www .uspto.g:
`Alexandria, Virginia 22313-1450
`
`APPLICATION NO.
`
`11/908,834
`
`ISSUE DATE
`
`03/06/2012
`
`PATENT NO.
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATION NO.
`
`8129343
`
`7140.204-US
`
`8500
`
`23650
`
`7590
`
`02/15/2012
`
`NOVO NORDISK,INC.
`INTELLECTUAL PROPERTY DEPARTMENT
`100 COLLEGE ROAD WEST
`PRINCETON,NJ 08540
`
`The projected patent numberandissue date are specified above.
`
`ISSUE NOTIFICATION
`
`Determination of Patent Term Adjustment under 35 U.S.C. 154 (b)
`(application filed on or after May 29, 2000)
`
`The Patent Term Adjustment is 750 day(s). Any patent to issue from the above-identified application will
`include an indication of the adjustment on the front page.
`
`If a Continued Prosecution Application (CPA) wasfiled in the above-identified application, the filing date that
`determines Patent Term Adjustmentis the filing date of the most recent CPA.
`
`Applicant will be able to obtain more detailed information by accessing the Patent Application Information
`Retrieval (PAIR) WEBsite (http://pair-uspto. gov).
`
`Any questions regarding the Patent Term Extension or Adjustment determination should be directed to the
`Office of Patent Legal Administration at (571)-272-7702. Questions relating to issue and publication fee
`payments should be directed to the Application Assistance Unit (AAU) of the Office of Data Management
`(ODM)at (571)-272-4200.
`
`APPLICANT(s) (Please see PAIR WEBsite http://pair.uspto.gov for additional applicants):
`
`Jesper Lau, Farum, DENMARK;
`Paw Bloch, Taastrup, DENMARK;
`Thomas Kruse Hansen, Herley, DENMARK;
`
`IR103 (Rev. 10/09)
`
`MPI EXHIBIT 1004 PAGE 5
`
`MPI EXHIBIT 1004 PAGE 5
`
`MPI EXHIBIT 1004 PAGE 5
`
`

`

`Notice of References Cited Examiner
`
`Application/Control No.
`
`11/908,834
`
`Applicant(s)/Patent Under
`Reexamination
`LAU ET AL.
`Art Unit
`
`potees
`
`U.S. PATENT DOCUMENTS
`||nnerzedntnsarecase|wavy|Name|asatatn|
`Document Number
`Date
`
`
`
`
`
`
`
`[*|a|Us2coresozuss=US-|US-2007030205"|08-2007|2007FLAUetal.=Changels)appliedFLAUetal.=Changels)appliedied|ABIK38/26LAUet al. ange K38/26
`|fefus-2oc7o205058|Ptetocurmenty
`pepofess
`pepopeserror
`ptees
`
`*A copyof this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
`Dates in MM-YYYYformat are publication dates. Classifications may be US or foreign.
`U.S. Patent and Trademark Office
`
`PTO-892 (Rev. 01-2001)
`
`Notice of References Cited
`
`Part of Paper No. 20111111
`
`MPI EXHIBIT 1004 PAGE 6
`
`MPI EXHIBIT 1004 PAGE 6
`
`MPI EXHIBIT 1004 PAGE 6
`
`

`

`Receipt date: 04/29/2010
`
`11908834 - GAU: 1654
`
`US Application No.: 11/908,834
`Attorney Docket No.: 7140.204-US
`
`Filing Date: September 17, 2007
`Page 2 of 3
`
`
`INFORMATION DISCLOSURE
`
`STATEMENT BY APPLICANT
`
`
`
`Application No.
`Filing Date
`Applicant
`Art Unit
`Examiner Name:
`
`Atty. Docket No.
`
`
`
`11/908,834
`
`September 17, 2007
`
`Lau et al.
`
`Marcela M. Cordero Garcia
`
`
`
`
`7140.204-US
`
`EXAMINER
`INITIALS
`
`DOCUMENT NUMBER
`
`Number —Kind Code“ "°””
`
`U.S. PATENT DOCUMENTS
`Tssne/Publication
`NAMEofPatentee or
`Date
`Applicant of Cited
`MM-DD-Y YY Y
`ocnment.
`
`Pages, Columns, t.ines Where Relevant. Passages or
`Relevant Figures Appear
`
`
`
`
`
`
`
`FOREIGN PATENT DOCUMENTS
`[DOCUMENT NUMBER
`|Cite
`EXAMINER
`Publication Date
`NAMEofPatentee or Applicant of
`Pages, Columns, Lines Where Relevant
`T
`MM-DD-Y YY Y
`Cited Document
`INITIALS_|No._[Number —Kind Code")
`Passages or Relevant Figures Appear
`
`pL caress
`
`(correspondsto
`W02005/027978)
`Po WO 96/29342
`
`10-27-2007
`
`Novo Nordisk A/S
`
`09-26-1996
`
`Novo Nordisk A/S
`
`
`
`
`
`
`
`
`WO 00/34331
`
`06-15-2000
`
`Societe de Conseils de
`Rechercheset d’
`
`ApplicationsScientifiques
`pf
`Conjuchem Inc
`11-23-2000
`Po WO 00/69911
`foo7 BinilyeGof
`—[oe-is-2000
`Chandiedanef[Wo w2ac7
`ongetsappied[wo 20057014049 [02-17-2008|NovoNordiskS [SOS
`
`/MAHe|
`todo dument,
`WO 2005/027978
`
`Oo
`
`(correspondsto
`RU2006107600)
`
`03-31-2005
`
`Novo Nordisk A/S
`
`(Marcela Cordero Garcia/
`
`11/19/2010
`
`ALL REFERENCES CONSIDERED EXCEPT WHERE LINED THROUGH.
`
`/M.M.C.G//
`
`MPI EXHIBIT 1004 PAGE 7
`
`MPI EXHIBIT 1004 PAGE 7
`
`MPI EXHIBIT 1004 PAGE 7
`
`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Wwww.uspto.gov
`
`INC.
`NOVO NORDISK,
`INTELLECTUAL PROPERTY DEPARTMENT
`100 COLLEGE ROAD WEST
`PRINCETON NJ 08540
`
`In re Application of
`Lau, et al.
`Application No.: 11/908, 834
`Filed: September 17, 2008
`Attorney Docket No. 7140.204-US
`
`MAILED
`
`JAN 12 2012
`OFFICE OF PETITIONS
`
`:
`: DECISION ON APPLICATION
`‘FOR ADJUSTMENT
`:PATENT TERM ADJUTSMENT
`:
`
`This is in response to the “APPLICATION FOR PATENT TERM
`The
`ADJUSTMENT UNDER 37 CFR 1.705(d)” filed December 14, 2011.
`petition is properly treated under 37 CFR 1.705(b). Applicants
`request that the initial Determination of Patent Term Adjustment
`under 35 U.S.C. 154(b) be corrected from two hundred and twenty-
`Six (226) days to one hundred and ninety-one (191) days.
`
`The request for review of determination of the patent term
`adjustment is GRANTED TO THE EXTENT INDICTED HEREIN.
`
`The Office has updated the PALM and PAIR screens to reflect that
`the correct Patent Term Adjustment
`(PTA) determination at the
`time of the mailing of the Notice of Allowance is one hundred
`and fifty-eight
`(158) days.
`A copy of the updated PALM screen,
`showing the corrected determination,
`is enclosed.
`
`On October 3, 2011, a Determination of Patent Term Adjustment
`under 35 U.S.C. 154(b) was mailed indicating that the patent
`term adjustment to date was 226 days.
`On December 14, 2011,
`applicants submitted the instant petition. Applicants assert
`the Determination of Patent Term Adjustment under 35 U.S.C.
`154(b) mailed October 3, 2011,
`is incorrect. Specifically,
`applicants state that:
`.
`
`.
`
`[a] Notice of DO/EO Missing Requirements was due on or
`before July 11, 2008.
`The USPTO mailed the Notice on April
`11, 2008, and the response was filed on September 17,2 008,
`thereby according an Applicant Delay of 68 days.
`
`‘
`
`In addition, an Office Action following a reply was
`due on or before January 9, 2011 (the date that is 4 months
`after the date on which the Response to Election-of-
`
`MPI EXHIBIT 1004 PAGE 8
`
`MPI EXHIBIT 1004 PAGE 8
`
`MPI EXHIBIT 1004 PAGE 8
`
`

`

`In re Application No. 11/908,834
`
`2
`
`The USPTO mailed an Office
`Species/Restriction was filed).
`Action on November 26, 2010. However,
`this Office Action
`was subsequently withdrawn due to Examiner error of
`inconsistency in the version of the claims used.
`The USPTO
`mailed a Supplemental Office Action correcting the claim
`error on February 11, 2011.
`In this regard, Applicants
`filed a response on September 9, 2010, but did not receive
`an Office Action until February 11, 2011,
`thereby according
`a USPTO delay of 33 days.
`:
`
`Excerpt from “APPLICATION FOR PATENT TERM ADJUSTMENT UNDER 37 CER
`1.705(d)” filed December 14, 2011, pages 1-2.
`
`The application history has been reviewed and it has been
`determined that applicant should have been assessed a delay
`under 37 CFR 1.704(b)* for filing a reply in excess of the three
`month period from the April 11, 2008, mailing date of the
`“Notification of Missing Requirements under 35 USC 371 in the
`United States Designated/Elected Office (DO/EO/US)”. On April
`11, 2008,
`a “Notification of Missing Requirements under 35 USC
`371 in the United States Designated/Elected Office (DO/EO/US)”.
`was mailed.
`On September 17,2 008, applicants filed a response
`to the “Notification of Missing Requirements under 35 USC 371 in
`the United States Designated/Elected Office (DO/EO/US)”.
`Thus,
`applicants failed to engage in reasonable efforts to conclude
`processing or examination of this application. Accordingly,
`period of adjustment set forth in § 1.703 should have been
`reduced under 37 CFR 1.704(b) by 37 days,
`the number of days in
`
`the
`
`1 37 CFR 1.704(b) states:
`
`With respect to the grounds for adjustment set forth in §$§ 1.702(a)
`through (e), and in particular the ground of adjustment set forth in
`§ 1.702(b), an applicant shall be deemed to have failed to engage in
`reasonable efforts to conclude processing or examination of an
`application for the cumulative total of any periods of time in
`excess of three months that are taken to reply to any notice or
`action by the Office making any rejection, objection, argument, or
`other request, measuring such three-month period from the date the
`notice or action was mailed or given to the applicant,
`in which case
`the period of adjustment set forth in § 1.703 shall be reduced by
`the number of days,
`if any, beginning on the day after the date that
`is three months after the date of mailing or transmission of the
`Office communication notifying the applicant of the rejection,
`objection, argument, or other request and ending on the date the
`reply was filed. The period, or shortened statutory period,
`for
`reply that is set in the Office action or notice has no effect on
`the three-month period set forth in this paragraph.
`
`MPI EXHIBIT 1004 PAGE 9
`
`MPI EXHIBIT 1004 PAGE 9
`
`MPI EXHIBIT 1004 PAGE 9
`
`

`

`In re Application No. 11/908,834
`
`Go
`
`the period beginning on the day after the date that is three
`months after the date of mailing of the “Notification of Missing
`Requirements under 35 USC 371 in the United States
`Designated/Elected Office (DO/EO/US)”, July 12, 2008, and ending
`on the date the reply was filed, September 17, 2008.
`A period
`of reduction of 68 days will be entered.
`
`Petitioner’s argument that an additional adjustment to the
`patent term under 37 CFR 1.702(a) (2)
`is warranted has been
`considered, but found unpersuasive.
`
`37 CFR 1.702 provides that:
`
`Failure to take certain actions within specified time
`(a)
`Subject to the provisions of 35 U.S.C. 154(b) and this
`frames.
`the term of an original patent shall be adjusted if the
`subpart,
`issuance of the patent was delayed due to the failure of the
`Office to:
`
`(2) Respond to a reply under 35 U.S.C. 132 or to an
`taken under 35 U.S.C. 134 not later than four months
`appeal
`after the date on which the reply was filed or the appeal taken;
`
`37 CFR 1.703 provides,
`
`in pertinent part,
`
`that:
`
`The period of adjustment under § 1.702(a)
`(a)
`of the following periods:
`
`is the sum
`
`in the period
`if any,
`The number of days,
`(2)
`beginning on the day after the date that is four months after
`the date a reply under § 1.111 was filed and ending on the date
`of mailing of either an action under 35 U.S.C. 132, or a notice
`of allowance under 35 U.S.C. 151, whichever occurs first[.]
`
`.
`
`It is undisputed that the Office mailed an action under 35
`U.S.C. 132 in the form of a non-final Office action on November
`26, 2010, within four months of the reply under 37 CFR 1.111
`filed September 9, 2010.
`The subsequent mailing of another:
`Office action under 35 U.S.C. 132 does not alter the date used
`in calculation of the period of adjustment.
`Pursuant
`to 35
`U.S.C. 154(b) (1) (A) (ii), applicants are only entitled to day-to-
`day restoration of term lost as a result of delay created by the
`Office, after four months from the filing of the reply under 37
`CFR 1.111 or appeal taken. The fact that the Office later
`withdrew the non-~final Office action does not negate the fact
`that the Office took action within the meaning of 37 CFR
`1.702(a) (2) on November 26, 2010. Further, relative to the
`
`MPI EXHIBIT 1004 PAGE10
`
`MPI EXHIBIT 1004 PAGE 10
`
`MPI EXHIBIT 1004 PAGE 10
`
`

`

`In re Application No. 11/908,834
`
`4
`
`the examiner does not
`determination of patent term adjustment,
`have the authority to vacate, rescind, or withdraw an Office
`action. Unless expunged from the record,
`for purposes of
`calculating patent term adjustment,
`the action originally mailed
`by the examiner on November 26, 2010, was properly used to
`calculate the adjustment
`to the patent term,
`if any, pursuant
`37 CFR 1.702(a) (2) and 37 CFR 1.703(a) (2).
`See Changes to
`Implement Patent Term Adjustment under Twenty-Year Patent Term;
`Final Rule, 65 Fed. Reg. 54366 (September 18, 2000).
`Accordingly, no period of adjustment to the patent term pursuant
`to 37 CFR 1.702(a) (2) will be entered.
`
`to
`
`the determination of the patent term adjustment
`In view thereof,
`at the time of the mailing of the notice of allowance is one
`hundred and fifty-eight
`(158) days 287 days of Office delay -
`129 days of applicant delay.
`
`The Office acknowledges submission of the $200.00 fee set forth
`in 37 CFR 1.18(e)
`for consideration of the application for
`patent term adjustment under 37 CFR 1.705(b).
`
`Applicants are reminded that any delays by the Office pursuant
`to 37 CFR 1.702(a) (4) and 1.702(b) and any applicant delays
`under 37 CFR 1.704(c) (10) will be calculated at the time of the
`issuance of the patent and applicants will be notified of the
`revised patent term adjustment to be indicated on the patent in
`the Issue Notification letter that is mailed to applicants
`approximately three weeks prior to issuance.
`
`Telephone inquiries regarding this specific matter should be
`directed to the undersigned at
`(571) 272-3222.
`
`Kye COasfepom
`
`Kenya A. M
`Petitions Attorney
`Office of Petitions
`
`Enclosure:
`
`Copy of REVISED PALM screen
`
`MPI EXHIBIT 1004 PAGE11
`
`MPI EXHIBIT 1004 PAGE 11
`
`MPI EXHIBIT 1004 PAGE 11
`
`

`

`i ?
`
`PTA/PTE Information
`
`a
`Patent Term Adjustment Patent Term Extension
`
`
`
`= n
`
`
`
`Explanation of PTE Catculation
`
`Explanation of PTA Calculation
`Application Number*: 11908834
`
`iPTA Calculations for Application: 11908834
`ae
`——==
`
`Application Filing Date09/17/2008
`
`
`
`
`Non-Overlapping USPTODelay
`___Issue Dateof Patent)
`
`
`PTO Manual Adjustmen
`A Delays|287
`
`
`
`
`8B Delays'0
`Applicant Delay (APPL)'61
`
`
`
`
`Total PTA (days)!158
`C Delays'0
`
`.
`
`j
`
`}
`
`* - Sorted Column
`
`
`aeons{statetcnnenrae eeemAyearee “7
`
`
`[File Contents History
`@}
`we
`-
`Action Rees Action Due Action
`Number
`“SOete
`Date
`Code
`113
`01/10/2012
`Po2z8
`10/03/2011
`MN/=.
`09/28/2011
`OAR
`09/28/2011
`OAR
`09/28/2011
`OAR
`09/28/2011
`IREV
`09/22/2011
`OAR
`09/22/2011
`OAR
`09/22/2011
`OAR
`09/22/2011
`ACRE
`09/22/2011
`DVER
`09/22/2011
`a/=.
`09/22/2011
`09/22/2011
`09/22/2011
`09/21/2011
`07/25/2011
`07/11/2011
`o7/11/2011
`07/11/2011
`07/11/2011
`07/11/2011
`07/11/2011
`02/11/2011
`02/11/2011
`02/11/2011
`02/07/2011
`11/29/2010
`11/26/2010
`11/26/2010
`11/22/2010
`09/10/2010
`09/09/2010
`08/31/2010
`08/31/2010
`08/31/2010
`08/27/2010
`08/09/2010
`05/28/2010
`05/28/2010
`05/28/2010
`04/29/2010
`04/29/2010
`04/29/2010
`03/11/2010
`03/11/2010
`03/03/2010
`12/09/2009
`06/19/2009
`06/18/2009
`04/16/2009
`04/16/2009
`04/01/2009
`04/01/2009
`03/26/2009
`
`oy©eooeeoeodcoeooeoecocoesoocs
`
`.
`
`Duration Ouration oa
`PTO
`APPL
`Number
`68
`o
`9
`9
`9
`9
`Qo
`o
`0
`o
`o
`o
`o
`0
`°o
`°
`o
`0
`°
`o
`6
`6
`
`i
`
`Action
`Description
`Adjustment of PTA Calculation by PTO
`Mail Notice of Allowance
`Office Action Review
`Office Action Review
`Office Action Review
`Issue Revision Completed
`Office Action Review
`Office Action Review
`Office Action Review
`Allowed Case Returned to the Examinerfor Clerical Precessing
`DocumentVerification
`°
`Notice of Allowance Data Verification Completed
`Case Docketed to Examiner in GAU
`Examiner's Amendment Communication
`Allowability Notice
`Interview Summary - Examiner Initiated
`Date Forwarded to Examiner
`Information Disclosure Statement considered
`Reference capture on IDS
`Information Disctosure Statement (IDS) Filed
`07/11/2011 M844
`Response after Non-Final Action:
`05/11/2011 A...
`Request for Extension of Time - Granted
`XT/G
`Information Disclosure Statement (IDS) Filed
`WIDS
`ELC_RVW Electronic Review
`EML_NTF Email Notification
`MSRNF
`ail Supplemental Non-Fina! Action
`SRNF
`Supplemental Non-Final Action
`ELC_RVW Electronic Review
`EML_NTF Emaii Notification
`MCTNF
`Mail Non-Fina! Rejection
`CTNF
`Non-Final Rejection
`Fwox
`Date Forwarded to Examiner
`ELC.
`Response to Election / Restriction Filed
`ELC_RVW Electronic Review
`EML_NTF Email Notification
`11/17/2009 MCTRS
`Mai) Restriction Requirement
`cTRS
`Restriction/ Election Requirement
`ALPE
`Preliminary Amendment
`rosc
`Information Disclosure Statement considered
`M844
`Information Disclosure Statement (1DS) Filed
`WIDS
`Information Disclosure Statement (IDS) Fited
`rose
`Information Disclosure Statement considered
`mse4
`Information Disclosure Statement (IDS) Filed
`WIOS
`Information Disclosure Statement (10S) Filed
`EML_NTR Email Notification
`EXIN
`Mail Examiner Interview Summary (PTOL - 413)
`EXIN
`Examiner Interview Summary Record (PTOL - 413)
`DOCK
`Case Docketed to Examiner in GAU
`EML_NTR Email Notification
`PG-ISSUE PG-Pub Issue Notification
`EML_NTR Email Notification
`FLRCPT.C Filing Receipt - Corrected
`EML_NTR Email Notification
`FLRCPT.C Filing Receipt - Corrected
`TSSCOMP IFW TSS Processing by Tech Center Complete
`
`MPI EXHIBIT 1004 PAGE 12
`
`MPI EXHIBIT 1004 PAGE 12
`
`MPI EXHIBIT 1004 PAGE 12
`
`

`

` Application Dispatched from OIPE
`oeoeoeoeoeoeeoeeeec&
`
`12/17/2008
`12/03/2008
`EML_NTR Email Notification
`12/03/2008
`EML_NTR Email Notification
`12/03/2008
`Notice of DO/EO Acceptance Mailed
`12/03/2008
`FLRCPT.O Filing Receipt
`Sent to Classification Contractor
`12/02/2008
`10/23/2008
`CRE Is Good Technically / Entered into Database
`09/17/2008
`371COMP 371 Completion Date
`09/17/2008
`ADDFLFEE Additional Application Filing Fees
`09/17/2008
`Ist set of symbols and procedures, provided to the PTO on a set of
`computer listings, that describe in
`09/17/2008
`CRF Disk Has Been Received by Preexam / Group / PCT
`A statement by one or more inventors satisfying the requirement
`09/17/2008
`under 35 USC 115, Oath of the Applic
`03/20/2006
`International Filing date
`Export to: Excel
`heey
`
`MPI EXHIBIT 1004 PAGE 13
`
`MPI EXHIBIT 1004 PAGE 13
`
`MPI EXHIBIT 1004 PAGE 13
`
`

`

`
`
`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
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`
`
`
` FILING DATE
`
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`CONFIRMATIONNO.
`
`
`11/908,834
`
`09/17/2008
`
`Jesper Lau
`
`7140.204-US
`
`8500
`
`23650
`
`7590
`
`12/12/2011
`
`NOVO NORDISK, INC.
`INTELLECTUAL PROPERTY DEPARTMENT
`100 COLLEGE ROAD WEST
`PRINCETON,NI 08540
`
`CORDERO GARCIA, MARCELA M
`
`1654
`
`
`
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/12/2011
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time 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):
`nnipatent @ novonordisk.com
`KSHL @novonordisk.com
`KISW @novonordisk.com
`
`PTOL-90A (Rev. 04/07)
`
`MPI EXHIBIT 1004 PAGE 14
`
`MPI EXHIBIT 1004 PAGE 14
`
`MPI EXHIBIT 1004 PAGE 14
`
`

`

`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.
`11/908,834
`
`FILING DATE
`
`17 September, 2008
`
`FIRST NAMED INVENTOR/
`PATENT IN REEXAMINATION
`LAU ET AL.
`
`NOVO NORDISK, INC.
`INTELLECTUAL PROPERTY DEPARTMENT
`100 COLLEGE ROAD WEST
`PRINCETON, NJ 08540
`
`ATTORNEY DOCKETNO.
`
`7140.204-US
`
`EXAMINER
`
`MARCELA M. CORDERO GARCIA
`
`ART UNIT
`
`PAPER
`
`1654
`
`20111202
`
`
`
`
`DATE MAILED:
`
`Please find below and/or attached an Office communication concerning this application or
`proceeding.
`
`Commissionerfor Patents
`
`In view of the papers filed 12/2/2011, the inventorship in this nonprovisional application has been changed by the deletion of
`Florencio Zaragoza Dorwald, Henrik Stephensen and Kjeld Madsen.
`The application will be forwarded to the Office of Initial Patent Examination (OIPE) for issuance of a corrected filing receipt, and
`correction of Office records to reflect the inventorship as corrected.
`Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCELA M.
`CORDERO GARCIA whose telephone numberis (571)272-2939. The examiner can normally be reached on M-F 8:30-5:00.
`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s supervisor, Cecilia J. Tsang can be reached on (571)
`272-0562. The fax phone numberfor 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 CustomerService Representative or access to the automated
`
`information system,call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/MARCELA M CORDERO GARCIA/
`Primary Examiner, Art Unit 1654
`
`
`
`PTO-90C (Rev.04-03)
`
`MPI EXHIBIT 1004 PAGE 15
`
`MPI EXHIBIT 1004 PAGE 15
`
`MPI EXHIBIT 1004 PAGE 15
`
`

`

`Attorney Docket No.: 7140.204-US
`
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of: Jesper Lauetal.
`
`Confirmation No.: 8500
`
`Application No.: 11/908,834
`
`Group Art Unit: 1654
`
`Filed: September 17, 2008
`
`Examiner: Marcela M. Cordero Garcia
`
`For: ACYLATED GLP-1 COMPOUNDS
`
`PETITION TO CORRECT INVENTORSHIP UNDER37 C.F.R. §1.48(b)
`
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Sir:
`
`Applicants hereby petition to change the inventorship in the above-captioned application
`
`to delete inventors Florencio Zaragoza Dorwald, Henrik Stephensen, and Kjeld Madsen for the
`
`above-captioned patent application.
`
`The correct
`
`inventors were named in the application when filed. However,
`
`the
`
`prosecution of the application has resulted in the amendment and cancellation of claims so that
`
`less than all of the originally named inventors are the actual inventors of the invention being
`
`claimed in the application.
`
`Applicants therefore have deleted Florencio Zaragoza Dorwald, Henrik Stephensen, and
`
`Kjeld Madsenasinventors.
`
`Applicants respectfully request the grant ofthis petition.
`
`Please charge the required fee, currently $130.00, and any additional fees to our Deposit
`
`Account No. 14-1447.
`
`Date: December1, 2011
`
`Respectfully submitted,
`
`/Richard W. Bork, Reg. No. 36,459/
`Richard W. Bork, Reg. No. 36,459
`Novo Nordisk Inc.
`Customer Number 23650
`(609) 987-5800
`
`Usethe following customer number for all correspondence
`23650
`PATENT TRADEMARK OFFICE
`
`MPI EXHIBIT 1004 PAGE 16
`
`MPI EXHIBIT 1004 PAGE 16
`
`MPI EXHIBIT 1004 PAGE 16
`
`

`

`
`
`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
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`
`
`
` FILING DATE
`
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`CONFIRMATIONNO.
`
`
`11/908,834
`
`09/17/2008
`
`Jesper Lau
`
`7140.204-US
`
`8500
`
`23650
`
`7590
`
`11/17/2011
`
`NOVO NORDISK, INC.
`INTELLECTUAL PROPERTY DEPARTMENT
`100 COLLEGE ROAD WEST
`PRINCETON,NI 08540
`
`CORDERO GARCIA, MARCELA M
`
`1654
`
`
`
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`11/17/2011
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time 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):
`nnipatent @ novonordisk.com
`KSHL @novonordisk.com
`KISW @novonordisk.com
`
`PTOL-90A (Rev. 04/07)
`
`MPI EXHIBIT 1004 PAGE 17
`
`MPI EXHIBIT 1004 PAGE 17
`
`MPI EXHIBIT 1004 PAGE 17
`
`

`

`
`Application No.
`Applicant(s)
`
`
`
`
` ; . ; 11/908,834 LAU ET AL.
`
`Examiner-Initiated Interview Summary
`Examiner
`Art Unit
`
`MARCELA M. CORDERO
`GARCIA
`
`1654
`
`All participants (applicant, applicant's representative, PTO personnel):
`
`(1) MARCELA M. CORDERO GARCIA.
`
`(2) RICHARD BORK.
`
`Date of Interview: 09 November 2011.
`
`Type:
`
`[] Video Conference
`& Telephonic
`L] Personal [copy given to:] applicant
`
`(3)
`
`(4)
`
`[LJ applicant’s representative]
`
`Exhibit shown or demonstration conducted:
`If Yes, brief description:
`
`[L] Yes
`
`[] No.
`
`[4101 [112 [102 [103 Others
`Issues Discussed
`(For each of the checked box(es) above, please describe below the issue and detailed description of the discussion)
`
`Claim(s) discussed: N/A.
`
`Identification of prior art discussed: 2007/0203058.
`
`Substanceof Interview
`(For each issue discussed, provide a detailed description and indicate if agreement was reached. Some topics may include: identification or clarification of a
`reference or a portion thereof, claim interpretation, proposed amendments, arguments of any applied referencesetc...)
`
`Applicant's representative contacted Examiner regarding reference US 2007/0203058 (corresponding to US
`application 10/572,348). Applicant's representative pointed outthat it appeared, based on the search history, that
`Examiner had considered this reference previously. Indeed 2007/0203058 had been previously reviewed during
`examination andit is herein made formally of record (see attached PTO-892).
`
` U.S. Patent and Trademark Office
`
`Applicant recordation instructions:
`
`It is not necessary for applicant to provide a separate record of the substanceofinterview.
`
`Examinerrecordation instructions: Examiners must summarize the substance of any interview of record. A complete and proper recordation of
`the substanceof an interview should include the itemslisted in MPEP 713.04 for complete and proper recordation including the identification of the
`general thrust of each argumentor issue discussed, a general indication of any other pertinent matters discussed regarding patentability and the
`general results or outcomeofthe interview, to include an indication as to whether or not agreement was reached on the issuesraised.
`
`XX] Attachment
`/MARCELA M CORDERO GARCIA/
`Primary Examiner, Art Unit 1654
`
`PTOL-413B (Rev. 8/11/2010)
`
`Interview Summary
`
`Paper No. 20111111
`
`MPI EXHIBIT 1004 PAGE18
`
`MPI EXHIBIT 1004 PAGE 18
`
`MPI EXHIBIT 1004 PAGE 18
`
`

`

`Notice of References Cited Examiner
`
`Application/Control No.
`
`11/908,834
`
`MARCELA M. CORDERO
`U.S. PATENT DOCUMENTS
`
`Applicant(s)/Patent Under
`Reexamination
`LAU ET AL.
`Art Unit
`1654
`
`Page 1 of 1
`
`K38/26
`
`Document Number
`
`Date
`
`
`
`aCode-Number-KindCode coYYYY Classification|US-20070302058|20070302058|08-2007|2007 fLavetalesset al.|ABIK38/26Name
`
`
`
`*A copyof this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
`Dates in MM-YYYYformat are publication dates. Classifications may be US or foreign.
`U.S. Patent and Trademark Office
`
`PTO-892 (Rev. 01-2001)
`
`Notice of References Cited
`
`Part of Paper No. 20111111
`
`MPI EXHIBIT 1004 PAGE 19
`
`MPI EXHIBIT 1004 PAGE 19
`
`MPI EXHIBIT 1004 PAGE 19
`
`

`

`
`
`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
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`NOTICE OF ALLOWANCE AND FEE(S) DUE
`
`23650
`
`7590
`
`10/03/2011
`
`NOVO NORDISK, INC.
`INTELLECTUAL PROPERTY DEPARTMENT
`100 COLLEGE ROAD WEST
`PRINCETON,NJ 08540
`
`
`
`
`
`CORDERO GARCIA, MARCELA M
`
`1654
`
`DATE MAILED: 10/03/2011
`
`09/17/2008
`11/908,834
`TITLE OF INVENTION: ACYLATED GLP-1 COMPOUNDS
`
`Jesper Lau
`
`7140.204-US
`
`8500
`
`
`
`
`
`
`
`APPLN. TYPE PUBLICATION FEE DUE|PREV. PAID ISSUE FEESMALL ENTITY ISSUE FEE DUE TOTAL FEE(S) DUE DATE DUE
`
`
`
`
`
`nonprovisional
`
`NO
`
`$1740
`
`$300
`
`$0
`
`$2040
`
`01/03/2012
`
`THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCEAS A PATENT.
`PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCEIS 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.
`
`THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
`MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED.
`THIS
`STATUTORY PERIOD CANNOT BE EXTENDED.
`SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
`NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION.
`IF AN ISSUE FEE HAS
`PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
`WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
`DUE.
`
`HOW TO REPLYTO THIS NOTICE:
`
`I. Review the SMALL ENTITYstatus shown above.
`
`If the SMALL ENTITYis shown as YES, verify your current
`SMALL ENTITYstatus:
`
`If the SMALL ENTITYis shown as NO:
`
`A. If the status is the same, pay the TOTAL FEE(S) DUE shown
`above.
`
`A. Pay TOTAL FEE(S) DUE shownabove, or
`
`B. If the status above is to be removed, check box 5b on Part B -
`Fee(s) Transmittal and pay the PUBLICATION FEE (if required)
`and twice the amount of the ISSUE FEE shown above,or
`
`B. If applicant claimed SMALL ENTITYstatus before, or is now
`claiming SMALL ENTITYstatus, check box 5a on Part B - Fee(s)
`Transmittal and pay the PUBLICATION FEE (