WANG, Rongfu

Patent Trials and Appeals Board

Feb 26, 2020

14663470 - (D) (P.T.A.B. Feb. 26, 2020)

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. CONFIRMATION NO.
14/663,470 03/20/2015 Rongfu WANG 55533-00001 5756
39290 7590 02/26/2020
Duane Morris LLP
Duane Morris LLP
505 9th Street N.W.
Suite 1000
Washington, DC 20004
EXAMINER
DENT, ALANA HARRIS
ART UNIT PAPER NUMBER
1643
MAIL DATE DELIVERY MODE
02/26/2020 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RONGFU WANG
____________

Appeal 2019-003856
Application 14/663,470
Technology Center 1600
____________

Before DONALD E. ADAMS, ERIC B. GRIMES, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1, 5, 6, 10, and 13 (see Appeal Br. 2).2 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Dr. Rongfu
WANG” (Appellant’s December 7, 2017 Appeal Brief (Appeal Br.) 2).
2 Claims 2–4, 7–9, 11, 12, and 14–[19] stand withdrawn from consideration
and claim 20 is cancelled (see Examiner’s April 21, 2017 Final Office
Action 2; see also Appeal Br. 11–13).
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STATEMENT OF THE CASE
Appellant
claims a method of inducing interferon-gamma release in T
cells and inducing T cells that recognize PSGR-expressing cells
in an HLA-class dependent manner in a prostate cancer patient
comprising administering to the patient an effective amount of a
peptide selected from the group of peptides consisting of
PSGR3 having the amino acid sequence of SEQ ID NO:3,
PSGR4 having the amino acid sequence of SEQ ID NO: 4 and
PSGR14 having the amino acid sequence of SEQ ID NO: 11, or
combinations of two or more of the peptides.
(Appeal Br. 4.) Appellant discloses that PSGR3 has the sequence
ILANIYLLV (SEQ ID NO: 3), PSGR4 has the sequence WLAFPLCSL (SEQ
ID NO: 4), and PSGR14 has the sequence VILANIYLLV (SEQ ID NO: 11)
(see Spec. 15, Table 1). Appellant’s claim 1 is reproduced below:
A method of inducing interferon-gamma release in T cells and
inducing T cells that recognize PSGR-expressing cells in a
HLA-class dependent manner in a patient in need thereof
comprising administering to the patient an effective amount of a
peptide selected from the group of peptides consisting of
PSGR3 having the amino acid sequence of SEQ ID NO: 3,
PSGR4 having the amino acid sequence of SEQ ID NO: 4 and
PSGR14 having the amino acid sequence of SEQ ID NO: 11, or
combinations of two or more of the peptides, wherein the
patient is suffering from prostate cancer, and wherein
interferon-gamma release in T cells is induced and T cells that
recognize PSGR-expressing cells in a HLA-class dependent
manner are induced in said patient.
(id. at 11 (emphasis added).) Appellant’s claims 5, 6, 10, and 13 depend
directly or indirectly from Appellant’s claim 1.

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Grounds of rejection before this Panel for review:
Claims 1, 5, and 6 stand rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Jakobovits ’842.3
Claims 1, 5, and 6 stand rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Jakobovits ’562.4
Claims 1, 5, 6, 10, and 13 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Jakobovits ’842 and Li.5
Claims 1, 5, 6, 10, and 13 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Jakobovits ’562 and Li.

Anticipation:
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that either of Jakobovits ’842 or Jakobovits ’562 teaches
Appellant’s claimed invention?
FACTUAL FINDINGS (FF)
FF 1. Jakobovits ’842 “relates to a gene and its encoded protein, termed
101P3A11 or PHOR-1, expressed in certain cancers, and to diagnostic and
therapeutic methods and compositions useful in the management of cancers
that express 101P3A11” (Jakobovits ’842 1; see also Jakobovits ’562 ¶ 2
(Jokobovits ’562 “relates to a novel gene and its encoded protein, termed
101P3A11, and to diagnostic and therapeutic methods and compositions

3 Jakobovits et al., WO 02/092842 A2, published Nov. 21, 2002.
4 Jakobovits et al., US 2003/0091562 A1, published May 15, 2003.
5 Li et al., US 8,287,856 B2, issued Oct. 16, 2012.
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useful in the management of various cancers that express 101P3A11 (also
referred to as PHOR-1)”)).
FF 2. Jakobovits ’842 and Jakobovits ’562 both disclose that “[t]he use of
a tumor antigen in a vaccine that generates humoral and/or cell-mediated
immune responses as anti-cancer therapy is well known in the art and has
been employed in prostate cancer using human PSMA and rodent PAP
immunogens” (Jakobovits ’842 61; Jakobovits ’562 ¶ 301).
FF 3. Jakobovits ’842 and Jakobovits ’562 both disclose that prostate
cancer expresses 101P3A11 (Jakobovits ’842 8; Jakobovits ’562 ¶ 43).
FF 4. Jakobovits ’842 “provides cancer vaccines comprising a 101P3A11-
related protein” (Jakobovits ’842 61; see id. (Jakobovits ’842 discloses that
“[t]he entire 101P3A11 protein, immunogenic regions or epitopes thereof
can be combined and delivered by various means”); see also Jakobovits ’562
¶ 232 (Jakobovits ’562 discloses the use of 101P3A11 proteins to generate
cancer vaccines); Jakobovits ’562 ¶ 209 (Jakobovits ’562 discloses the use
of one or more immunoreactive eiptopes of 101P3A11, including those
peptides set forth in, inter alia, Table XI); see Ans.6 3–4)).
FF 5. Jakobovits ’842 discloses that “representative embodiments of [its]
invention comprise peptides/proteins having any . . . 9 . . . contiguous amino
acids of a 101P3A11 protein” (Jakobovits ’842 33; Jakobovits ’562 ¶ 27
(Jakobovits ’562 discloses the use of peptides having, inter alia, 9
contiguous amino acids of a 101P3A11 protein))
FF 6. Jakobovits ’842 discloses a number of 9 contiguous amino acid
peptides of 101P3A11 including a peptide having the sequence ILANIYLLV

6 Examiner’s March 8, 2018 Answer.
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(SEQ ID NO: 901) (Jakobovits ’842 166, Table XI; see also Jakobovits ’562
¶ 766 (Jakobovits ’562 discloses a number of 9 contiguous amino acid
peptides of 101P3A11 including a peptide having the sequence ILANIYLLV
(SEQ ID NO: 72); see Ans. 3–4).
FF 7. Jakobovits ’842 and Jakobovits ’562 both disclose that
pharmaceutical compositions for therapeutic treatment are
intended for parenteral, topical, oral, nasal, intrathecal, or local
(e.g. as a cream or topical ointment) administration. Preferably,
the pharmaceutical compositions are administered parentally,
e.g., intravenously, subcutaneously, intradermally, or
intramuscularly. Thus, the invention provides compositions for
parenteral administration which comprise a solution of the
immunogenic peptides dissolved or suspended in an acceptable
carrier, preferably an aqueous carrier.
(Jakobovits ’842 74; Jakobovits ’562 ¶ 384; see also Ans. 3–4.)
FF 8. Jakobovits ’842 and Jakobovits ’562 both disclose that:
In vivo, the effect of a 101P3A11 therapeutic
composition can be evaluated in a suitable animal model. For
example, xenogenic prostate cancer models can be used,
wherein human prostate cancer explants or passaged xenograft
tissues are introduced into immune compromised animals, such
as nude or SCID mice (Klein et al., 1997, Nature Medicine 3:
402-408).
(Jakobovits ’842 81; Jakobovits ’562 ¶ 424.)
FF 9. Examiner finds that the ILANIYLLV peptide disclosed by both
Jakobovits ’842 and Jakobovits ’562 is the same as Appellant’s PSGR3
peptide (Ans. 3–4).
FF 10. Appellant discloses a study testing twenty-one of the peptides
disclosed by Jakobovits (specifically, for their ability to induce “peptide-
specific T-cell responses in [peripheral blood mononuclear cells (PBMCs)
of] at least one of 10 healthy subjects,” wherein Appellant found that 13 of
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the “peptides were capable of inducing peptide-specific T-cell response in at
least one of 10 healthy subjects” (see Spec. ¶ 68–70; cf., e.g., Jakobovits
’842 Tables V, VI, VIII, IX, X, and XI (SEQ ID NOs: 37, 586, 901, 579,
587, 61, 700, 742, 153, 420, 213, 223, 757, 711, 822, 210, 417, 203, 221,
425, and 426)).
ANALYSIS
Examiner finds that both Jakobovits ’842 and Jakobovits ’562 teach
Appellant’s claimed invention (Ans. 3–4; see FF 1–9). We are not
persuaded.
On this record, Appellant claims a method of inducing interferon-
gamma release in T cells and inducing T cells that recognize PSGR-
expressing cells in a HLA-class dependent manner in a patient in need
thereof, wherein the patient is suffering from prostate cancer, and wherein
interferon-gamma release in T cells is induced and T cells that recognize
PSGR-expressing cells in a HLA-class dependent manner are induced in
said patient (see Appeal Br. 11). Examiner established, and Appellant
recognizes, that Jakobovits ’842 and Jakobovits ’562 each disclose a number
of different peptides of varying lengths, including Appellant’s PSGR3
peptide, for use, inter alia, in a method of treating cancer in a patient,
including prostate cancer (see generally FF 1–9; see generally Appeal Br. 7).
Examiner did not, however, establish that either of Jakobovits ’842
and Jakobovits ’562 teach methods of inducing interferon-gamma release in
T cells or inducing T cells that recognize PSGR-expressing cells in a HLA-
class dependent manner, i.e., the functional requirements of Appellant’s
claimed invention. Examiner, instead, relies on inherency to reach the
functional requirements of Appellant’s claimed invention (see Ans. 8).
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Specifically, Examiner reasons that “[p]roducts of identical chemical
composition cannot have mutually exclusive properties. A chemical
composition and its properties are inseparable” and, “[t]herefore, if the prior
art teaches the identical chemical structure, the properties applicant discloses
and/or claims are necessarily present” (Ans. 8 (citing In re Spada, 911 F.2d
705, 708–09 (Fed. Cir. 1990))). Stated differently, Examiner reasons that
because the references disclose one peptide, among many, that falls within
the scope of Appellant’s claimed invention, the administration of this
peptide, to a patient in need thereof, will inherently produce the functional
requirements of Appellant’s claimed invention. We find that the evidence of
record fails to support Examiner’s finding of anticipation.
“[A] claim is anticipated if each and every limitation is found either
expressly or inherently in a single prior art reference.” Celeritas Techs. Ltd.
V. Rockwell Intl. Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998). Inherent
anticipation requires that the missing descriptive material is “necessarily
present,” not merely probably or possibly present, in the prior art. In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citing Continental Can Co.
USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)). In
addition, we note that “[t]o anticipate, the reference must also enable one of
skill in the art to make and use the claimed invention.” In re Donohue, 766
F.2d 531, 533 (Fed. Cir. 1985).
On this record, Appellant established that the peptides disclosed by
Jakobovits ’842 and Jakobovits ’562 have different properties as they relate
to the functional properties of Appellant’s claimed invention (see FF 10; see
generally Appeal Br. 7). Thus, Appellant’s evidence essentially establishes
different classes of peptides among those listed in the prior art tables.
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Examiner failed, however, to establish an evidentiary basis on this record to
support a finding that either of Jakobovits ’842 or Jakobovits ’562 provided
a disclosure directing, i.e. enabling, those of ordinary skill in this art to
select, from the genus, or different classes, of peptides disclosed in the
references, those peptides that exhibit the functional properties required by
Appellant’s claimed invention. See, e.g., Bristol–Myers Squibb Co. v. Ben
Venue Labs., Inc., 246 F.3d 1368 (Fed. Cir. 2001):
The record in this case does not establish whether the general
class of premedicants that are suitable to prophylactically treat
hypersensitivity reactions before administration of a cancer
drug such as paclitaxel is small enough such that Kris’s
disclosure of premedicants effectively described the specific
classes of premedicants in [the] claims.
Id. at 1380.
For the foregoing reasons, we find that Examiner failed to establish an
evidentiary basis on this record to support a finding of anticipation.
CONCLUSION
The preponderance of evidence on this record fails to support
Examiner’s finding that either of Jakobovits ’842 or Jakobovits ’562 teaches
Appellant’s claimed invention.
The rejection of claims 1, 5, and 6 under 35 U.S.C. § 102(a)(1) as
anticipated by Jakobovits ’842 is reversed.
The rejection of claims 1, 5, and 6 under 35 U.S.C. § 102(a)(1) as
anticipated by Jakobovits ’562 is reversed.

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Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 11. Examiner relies on Jakobovits ’842 or Jakobovits ’562 as discussed
above (see FF 1–9).
FF 12. Examiner finds that Jakobovits ’842 or Jakobovits ’562 do not
disclose a “method, wherein an inhibitor of human Programmed Death 1
(PD-1) is administered with PSGR3” and relies on Li to teach “an antibody
that specifically binds to PD-1” (Ans. 5–6 (citing Li, Abstract and Col. 16)).
ANALYSIS
Based on Jakobovits ’842 or Jakobovits ’562 in combination with Li,
Examiner concludes that, at the time Appellant’s invention was made, it
would have been prima facie obvious to “combine the therapeutic agents” of
Li and either of Jakobovits ’842 or Jakobovits ’562 “. . . for enhanced
generation of an immune response to tumor cells in a patient” (Ans. 6 (citing
Li, col. 1: 13–19; Jakobovits ’842, Abstract; Jakobovits ’562, Abstract)
(alteration original)).
Examiner, however, failed to establish that Li makes up for the
deficiency discussed above with respect to either of Jakobovits ’842 or
Jakobovits ’562 (see Appeal Br. 9; see also Ans. 8). Therefore, we are not
persuaded by Examiner’s assertion that “the validity of Jakobovits has been
established herein, hence this reference in combination with Li is proper”
(Ans. 8).
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CONCLUSION
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness.
The rejection of claims 1, 5, 6, 10, and 13 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Jakobovits ’842 and Li is reversed.
The rejection of claims 1, 5, 6, 10, and 13 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Jakobovits ’562 and Li is reversed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5, 6, 20 102(a)(1) Jakobovits ’842 1, 5, 6
1, 5, 6, 20 102(a)(1) Jakobovits ’562 1, 5, 6
1, 5, 6, 10,
13, 20
103 Jakobovits ’842, Li 1, 5, 6, 10,
13
1, 5, 6, 10,
13, 20
103 Jakobovits ’562, Li 1, 5, 6, 10,
13
Overall
Outcome
1, 5, 6, 10,
13

REVERSED