DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 26, 2026 has been entered.
Status of the Claims
Claims 1, 8-10, 13, 15, and 17-23 were pending.
Claims 10 and 23 are amended.
Claims 1, 8-10, 13, 15, and 17-23 are examined herein.
Claim Objections
Claim 10 is objected to because of the following informalities:
Claim 10 contains abbreviation ABI. Abbreviations should be completely spelled out in their first occurrence.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL. —The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 8-10, 13, 15, and 17-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “a biological sample”, but the specification only discloses data for serum samples. The art of biomarkers is unpredictable and levels of the same biomarkers in different samples or tissues may exhibit different patterns. Therefore, Applicant needs more data to claim broad genus of biological samples.
Claim 1 recites “a mammalian subject”, but the specification only discloses data for human samples. Therefore, Applicant was only in possession of data for human subjects.
Claims 1 and 10 are directed to diagnosing peripheral artery disease (PAD) in a mammalian subject and distinguishing chronic limb-threatening ischemia (CLTI) from intermittent claudication (IC) by detecting in a biological sample the level of at least two metabolic biomarkers.
The prior art is silent on detecting the levels of at least two recited biomarkers for diagnosing PAD or distinguishing CLTI from IC.
Claim 1 recites at least two biomarkers exhibit a difference of at least 20% as compared to the level of the non-PAD control. Claim 10 recites at least two biomarkers exhibit a difference of at least 20% as compared to the level of the IC control.
The broadest reasonable interpretation of the “at least 20%” difference limitations is at least 20% above and at least 20% below the non-PAD control levels.
The specification does not provide evidence for tested subjects having biomarker levels changing in both directions for each given biomarker. For example, PAD/control ratio is 0.65 for creatine (Table 2). It means that creatine level in PAD subjects is lower than that in control subjects, but not higher. All biomarkers need an indication of the level going up or down as compared to the level of the controls. This argument applies to all biomarkers of claims 1 and 10.
Additionally, the “at least 20%” difference limitation is not supported by the disclosure in another way. For example, for creatine PAD/control ratio is 0.65, which corresponds to 35% difference. The “at least 20%” difference for creatine corresponds to PAD/control ratio of 0.8, however, there is no evidence in the specification supporting such ratio. The data supporting the 35% difference do not necessarily indicate that subjects with at least 20% difference for creatine had PAD. This argument applies to all biomarkers of claims 1 and 10.
Finally, claims 1 and 10 recite diagnosing PAD or distinguishing CLTI from IC when at least two biomarkers exhibit a difference of at least 20% as compared to the controls. The specification provides data for the fold-change of each claimed biomarker (FC columns in Tables 2 and 3) for all tested subjects. However, the specification fails to provide data supporting the claim that a statistically significant fraction PAD or CLTI/IC subjects had at least two biomarkers exhibiting the specified difference. The specification fails to provide evidence for any combination of at least two biomarkers. Tables 2 and 3 disclose fold-change and p-values for the biomarkers, but these data are not sufficient for one of ordinary skill in the art to conclude that any given test subject of this study had at least two biomarkers with claimed level changes at the same time.
Claim 10 is directed to a method of distinguishing chronic limb-threatening ischemia (CLTI) from intermittent claudication (IC) in a mammalian subject having PAD by identifying that the level of each of the at least two biomarkers exhibits either a difference of at least 20% as compared to the IC control or an AUC (area under the curve) of greater than 0.8 in a ROC curve of the biomarker, and diagnosing the subject with CLTI based on the level or ABI correlation of the at least two biomarkers.
The invention is based on detecting the level of at least two metabolic biomarkers selected from the group consisting of: creatinine, carnitine, propionylcarnitine, cystine, trimethylamine-N-oxide, a fatty acid biomarker selected from the group consisting of stearic acid, linoleic acid, heptadecanoic acid, palmitic acid, oleic acid, heptadecenoic acid, pentadecanoic acid and eicosadienoic acid, and a ratiometric biomarker selected from the group consisting of stearic acid:carnitine and arginine: propionylcarnitine.
Regarding the limitation of at least 20% difference for the ratiometric biomarker arginine:propionylcarnitine of claim 10, the specification fails to provide data support for this biomarker exhibiting at least 20% difference or any other % difference. The specification provides fold change data for propionylcarnitine only, but corresponding data for arginine are missing. The specification fails to provide either fold change for arginine:propionylcarnitine or fold change for arginine. Without arginine data a person skilled in the art would not have been able to calculate the fold change for arginine:propionylcarnitine. Since the prior art is silent on the claimed biomarkers, the difference of at least 20% cannot be apparent to one of ordinary skill in the art.
Regarding the limitation of an AUC (area under the curve) of greater than 0.8 (claim 10) and equal to 0.87 (claim 23) for the ratiometric biomarkers stearic acid:carnitine and arginine:propionylcarnitine, the specification fails to provide evidence for these limitations.
The prior art is silent on obtaining AUC values originating from a single subject serum assay. Moreover, the AUC is a parameter characterizing the entire assay performance and it is calculated from measurements of the biomarker values of a large number of subjects. As such, the AUC cannot be determined for a single subject assay measurement because one cannot draw a curve using a single measurement. The specification fails to demonstrate how it can be done.
Based on the above findings, one of ordinary skill in the art would conclude that the inventor was not in possession of the invention as claimed in view of the disclosure of the application as filed.
Claims 8-10, 13, 15, and 17-23 are rejected because they depend from rejected claims 1 and 10.
Therefore, claims 1, 8-10, 13, 15, and 17-23 are rejected under 35 U.S.C. 112(a).
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION. —The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10, 13, 15, and 20-23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 10 recites “diagnosing the subject with CLTI based on the level or ABI correlation of the at least two biomarkers”. The claim fails to recite values or ranges for ABI correlation that determine CLTI diagnosis. The metes and bounds of this limitation are unclear.
Claims 13, 15, and 20-23 are rejected because they depend from rejected claim 10.
Response to Arguments
Applicant’s arguments, filed June 26, 2026 have been fully considered.
Applicant argues that “Claim 10 is amended claim 10 to recite in step iii) the identification that the level of each of the at least two biomarkers exhibits a difference of either at least 20% as compared to the IC control an AUC (area under the curve) of greater than 0.8 in a ROC curve of the biomarker. Claim 23 is amended to define the AUC as 0.87. These amendments are fully supported by the specification as filed, for example, at paragraphs [0061] and [0066], and in Fig. 5.A/B” (Remarks, pg. 5, par. 4).
The argument related to “AUC (area under the curve) of greater than 0.8” is not persuasive because as discussed in details in 112(a) rejection above the specification fails to disclose how the biomarker levels measured from a sample obtained from a single subject can be used to generate an AUC value for comparison with the recited values in claim 10. Moreover, the AUC is not known in the art for making diagnosing decisions from individual measurements.
Applicant argues that “While we believe that the arginine:propionylcamitine biomarker complies with the 20% fold change criteria for the reasons highlighted previously, it very definitely exhibits an AUC as claimed which demonstrates reliable discrimination of high risk of CLTI from lower risk IC patients (see last 9 lines of para. [0061]” (pg. 5, par. 5).
The argument is not persuasive because the last 9 lines of [0061] literally do not contain any evidence relevant to the 20% change criteria - “Lastly, ROC curve analysis was also performed on all serum metabolites and their ratios to demonstrate reliable discrimination of high risk CLTI from lower risk IC patient sub-groups. Figure 5 shows two top-ranked ratiometric biomarkers in serum with an AUC - 0.87 along with their 95% confidence intervals (0.73 - 0.98), namely 18:0/C0 and arginine (Arg)/C3. These two ratiometric biomarkers also exhibit strong linear correlation with ABI from PAD patients (r = 0.54 to 0.59, p < 0.001, n=38). This is relevant for biomarker discovery in pilot studies in order to anchor aberrant metabolism to a validated physiological measure of clinical significance to PAD”. Applicant’s belief cannot be used in place of actual evidence.
Applicant’s arguments in paragraphs 6 and 7 of Remarks are not persuasive - they also fail to provide required evidence for the 20% change criteria because these paragraphs discuss AUC limitations and ROC analysis, but not the 20% change criteria.
Subject Matter Free of the Prior Art
Claims 1, 8-10, 13, 15, and 17-23 are free of the prior art.
The prior art neither teaches nor suggests detecting in a biological sample from the subject the level of at least two metabolic biomarkers selected from the group consisting of: creatine, creatinine, phenylacetylglutamine, oxoproline, and monomethylarginine; or at least two metabolic biomarkers selected from the group consisting of: creatinine, carnitine, propionylcarnitine, cystine, trimethylamine-N-oxide, a fatty acid biomarker selected from the group consisting of stearic acid, linoleic acid, heptadecanoic acid, palmitic acid, oleic acid, heptadecenoic acid, pentadecanoic acid and eicosadienoic acid, and a ratiometric biomarker selected from the group consisting of stearic acid:carnitine and arginine:propionylcarnitine.
The closest prior art Ismaeel et al. (IDS; J Clin Med. 2019 Sep 14;8(9):1463) teach characterization of metabolomic profiles in patients with peripheral artery disease. Specifically, Ismaeel teaches a comparison of the serum metabolites of PAD patients and non-PAD patients by measuring more than 400 metabolites, including 21 amino acids, 21 biogenic amines, 55 acylcarnitines, 18 diglycerides, 42 triglycerides, 24 lysophosphatidylcholines, 172 phosphatidylcholines, 31 sphingomyelins, 9 ceramides, and 14 cholesteryl esters. However, Ismaeel does not teach at least two metabolic biomarkers selected from the group consisting of: creatine, phenylacetylglutamine, oxoproline, and monomethylarginine.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alexander Volkov whose telephone number is (571) 272-1899. The examiner can normally be reached M-F 9:00AM-5:00PM (EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bao-Thuy Nguyen can be reached on (571) 272-0824. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER ALEXANDROVIC VOLKOV/Examiner, Art Unit 1677
/REBECCA M GIERE/Primary Examiner, Art Unit 1677
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