ARAGON PHARMACEUTICALS, INC.

Patent Trials and Appeals Board

Dec 30, 2020

2020000990 (P.T.A.B. Dec. 30, 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.
15/094,113 04/08/2016 ISAN CHEN 103693.001116/
API5006USCO
9128
45511 7590 12/30/2020
BakerHostetler
Cira Centre, 12th Floor
2929 Arch Street
Philadelphia, PA 19104-2891
EXAMINER
JONES, DAMERON LEVEST
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
12/30/2020 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ISAN CHEN,
JEFFREY H. HAGER, EDNA CHOW MANEVAL,
MARK R. HERBERT, and NICHOLAS D. SMITH
__________

Appeal 2020-000990
Application 15/094,113
Technology Center 1600
__________

Before FRANCISCO C. PRATS, JOHN G. NEW, and DAVID COTTA,
Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant1 requests rehearing of the decision entered October 2, 2020
(“Decision”), which affirmed Examiner’s rejection under 35 U.S.C. § 103.
We deny the requested relief.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Aragon Pharmaceuticals, Inc., a wholly-
owned subsidiary of Johnson & Johnson, as the real party in interest.
Appeal Br. 1.
Appeal 2020-000990
Application 15/094,113

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DISCUSSION
Appellant contends that the Decision includes a new ground of
rejection because it changed the thrust of the Examiner’s rejection to the
extent that Appellant was not given a fair opportunity to respond to the
alleged new rejection. Req. Reh’g 3–4.
We are not persuaded.
As Appellant points out, in maintaining the obviousness rejection over
Szmulewitz, the Examiner relied on Szmulewitz’s teachings relating to the
treatment of prostate cancer using ARN-509, abiraterone acetate, and
prednisone, a corticosteroid. See Req. Reh’g 2.
In affirming the Examiner’s rejection over Appellant’s teaching away
arguments, we expressly relied on Szmulewitz’s teachings regarding
prednisone, as well as Szmulewitz’s suggestion to combine prednisone with
ARN-509 and abiraterone acetate:
[T]he fact that the inventors in Szmulewitz describe GR
antagonists as their preferred alternative to a more conventional
GR agonist treatment does not negate the fact that Szmulewitz
discloses the combination of a corticosteroid (prednisone) and
abiraterone acetate, two of the three ingredients recited in
Appellant’s claim 1, as an FDA-approved prostate cancer
treatment. See Szmulewitz 14:7-11. And, as noted above,
Szmulewitz further discloses that ARN-509 was a known AR
antagonist useful for treating prostate cancer in combination
with other agents. See id. 3:37-39.
Decision 8–9.
Because our Decision relied on the same teachings identified by the
Examiner as suggesting the treatment method recited in Appellant’s claim 1,
Appellant does not persuade us that our affirmance changed the thrust of the
Examiner’s rejection, or that “[r]eversal is appropriate because the Board
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clearly found the Examiner’s rejection to be deficient in terms of both its
rationale and its evidentiary support.” Req. Reh’g 4.
We are also unpersuaded that in citing US 6,241,969 B1 (issued June
5, 2001) (“Saidi”) our Decision changed the thrust of the Examiner’s
rejection. See Req. Reh’g 2–3.
It is well settled that, when evaluating whether the teachings of a
reference would have suggested the subject matter recited in a claim at issue,
the test “not only permits, but requires, consideration of common knowledge
and common sense.” Dystar Textilfarben Gmbh & Co. Deutschland KG v.
C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006) (emphasis in
original).
As noted above, in affirming the Examiner’s rejection over
Appellant’s arguments, we expressly relied on Szmulewitz’s teachings
identified by the Examiner as suggesting the combination of prednisone,
ARN-509, and abiraterone acetate in treating cancers encompassed by
Appellant’s claim 1. See Decision 8–9. Saidi was cited simply to show that
it was common knowledge in the art that, in addition to prednisone, other
compounds taught in Szmulewitz as being useful for combination with
ARN-509 and abiraterone acetate were corticosteroids. Decision 4.
That is, Saidi was not cited to remedy any deficiency in the
Examiner’s determination that Szmulewitz would have suggested all of the
elements of Appellant’s claim 1. Rather, Saidi was cited merely to show
how an ordinary artisan, armed with the common knowledge in the art,
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would have evaluated Szmulewitz’s teachings, a required part of the
obviousness analysis. See Dystar, 464 F.3d at 1367.
We are not persuaded that citing a reference to highlight the common
knowledge a skilled artisan would have used in evaluating Szmulewitz’s
teachings, a required part of the obviousness analysis, changed the thrust of
the Examiner’s rejection, particularly given that we expressly relied on the
teachings in Szmulewitz identified by the Examiner in relation to
prednisone’s usefulness for treating cancers encompassed by Appellant’s
claim 1. As explained by our reviewing court, “[a] new ground of rejection .
. . generally will not be found based on the Board ‘further explain[ing] the
examiner’s rejection’ or the Board’s thoroughness in responding to an
applicant’s argument.” In re Biedermann, 733 F.3d 329, 337 (Fed. Cir.
2013) (quoting In re Jung, 637 F.3d 1356, 1364–65 (Fed. Cir. 2011)).
In sum, for the reasons discussed, Appellant does not persuade us that,
in affirming the Examiner’s rejection for obviousness over Szmulewitz, our
Decision changed the thrust of the Examiner’s rejection. We are not
persuaded, therefore, that our Decision made an undesignated new ground of
rejection. Accordingly, we decline to modify our original decision entered
October 2, 2020.

Appeal 2020-000990
Application 15/094,113

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DECISION SUMMARY
In summary:
Outcome of Decision on Rehearing:
Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 5, 6, 19–21,
28–36
103(a) Szmulewitz 1, 2, 5, 6,
19–21,
28–36

Final Outcome of Appeal after Rehearing:
Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 5, 6, 19–21,
28–36
103(a) Szmulewitz 1, 2, 5, 6,
19–21,
28–36

REHEARING DENIED