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 .
DETAILED ACTION
Applicant’s response filed on 10/15/2025 is duly acknowledged.
Claims 1-10 as amended on 06/02/2023 are pending in this application.
Election/Restrictions
Applicant’s election of Group II (Claims 4-10; directed to “A method for measurement of trehalase enzyme in urine…”) in the reply filed on 10/15/2025 (see REM, p. 1-3) is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, and did not specifically state if the election was made with or without traverse, the election has been treated as an election without traverse (MPEP § 818.01(a)).
In addition, applicant’s description of superiority and differences with the cited prior art of Nakano et al (and additional cited references of Kovanci et al, 2023; which is not provided on record in proper PTO-1449/IDS for consideration; presumed to be a post-filing art from applicants) for the claimed invention is duly noted, and would be considered during the examination of elected invention of group II as per original disclosure of record filed with the office on 06/02/2023.
Accordingly, instant claims 1-3 (drawn to non-elected products of group I) have been withdrawn from further considerations.
Claims 4-10 (elected process invention of Group II, taken as without traverse; directed to “A method for measurement of trehalase enzyme in urine…”) have been examined on their merits in this action hereinafter.
Priority
This application is a 371 of PCT/TR2021/051187 (filed on 11/11/2021), which claims foreign priority from an application from Turkiye, TR2020/22438 filed on 12/30/2020.
Claim Objections
Claims 5-10 are objected to because of the following informalities:
Claim 6 recites “in process step "a" 1 unit volume trehalose solution is mixed to 39 unit volume urine”, which should be amended to recite “in process step a, 1 unit volume of the trehalose solution is mixed to 39 unit volume of the urine sample”.
Claims 5-10 recite the limitations, in process step “a”, in process step “d”, in process step “e, and in process step “e”, which contain a superfluous word “process” and extra quotation marks around the letter designation for each step. Claims 5-10 should be corrected to recite: in step a, in step d, in step e, respectively. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 4-10 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 4 has been reproduced as follows:
“4. (Currently Amended) A method for measurement of trehalase enzyme in urine,
a) mixing trehalose solution and urine sample,
b) incubating mixture at a predetermined temperature and duration,
c) measurement of glucose in mixture by glucose measurement kit with selected urine,
d) measurement of glucose in deionized water added urine mixture at said equivalent conditions in previous steps,
e) evaluation of difference of results between two glucose measurements.”
First, it is noted that there is no conjunction (such as “and’) recited between method steps d) and e) as currently presented in claim 4. In addition, the steps c), d) and e) are recited in passive language, not as active method steps (for instance, “measuring…” or “evaluating…”). It is not clear if the steps c) to e) are in fact performed in the “mixture” obtained from step b), or being separately done and evaluated. The relationship between the steps are not clearly provided, rendering the claimed process ambiguous to an artisan of ordinary skill in the art.
Second, the preamble as presented recites “measurement of trehalase enzyme in urine”, whereas the step a) recites limitation of “urine sample” which appears to lack antecedent basis for “urine sample”.
Third, the step b) recites “incubating mixture at a predetermined temperature and duration”, wherein it is unclear what exact “mixture” is being referred to ? Mixture of “trehalose solution and urine sample” obtained from step a), or some other “mixture”, per se.
Fourth, step c) recites “measurement of glucose in mixture by glucose measurement kit with selected urine”, wherein it is unclear which “mixture” is being referred to (from which step?, step a), or step b), or some other “mixture” from unknown source), and which “selected urine” is being used for such “measurement..” No antecedent basis for such “selection” has been provided in the claimed process.
Fifth, step d) recites “measurement of glucose in deionized water added urine mixture…”, which is also ambiguous because there appears to be no antecedent basis for such a “deionized water added urine mixture” per se. In addition, step d) recited the limitations “at said equivalent conditions in previous steps”, which is again unclear as to which exact step or steps (step a), step b), or step c) per se) and which conditions are being referred to as being “equivalent conditions”. It is noted that steps b) and c), as presented, do not provided any specific conditions of temperature, duration, etc., for that matter. Therefore, it is not clear as to what conditions are being referred to as being “equivalent conditions in previous steps”.
Since, the relationship between the method steps as currently presented is not clearly delineated, the claimed process as a whole is deemed ambiguous and indefinite. Metes and bounds of the claimed process is not properly defined. Appropriate correction is required.
Since, none of the dependent claims 5-10 provide clarification for the above discussed points, they are also rejected as being indefinite, for the same reasons as discussed above.
Claim 7 recites limitations “in process step "d" 1 unit volume deionized water is mixed with 39 unit volume urine”, which is ambiguous because step d) as presented in claim 4 specifically requires the step of “measurement of glucose in deionized water added urine mixture…”, and it is unclear as to when, how and why “1 unit volume deionized water is mixed with 39 unit volume urine. More importantly, it is unclear which “urine” is being referred to? Does it refer to “urine sample”, or some other type of “urine”? Appropriate correction and/or explanation is required.
Claim 8 recites the limitations “in process step "e, trehalose solution and deionized water are mixed and the difference between two different urinary glucose measurements is calculated as trehalase activity”, which is ambiguous and confusing because the step e) as presented in instant claim 4 requires “evaluation of difference of results between two glucose measurements”, and it is not clear as to how the step as recited in claim 8 for “trehalose solution and deionized water are mixed” relates to the step wherein the “difference between two different urinary glucose measurements is calculated as trehalase activity”. It is not clear where and with what exactly the “trehalose solution” and the “deionized water” are being mixed with, and how it relates to the process of measuring glucose, and thereafter evaluating the differences between the results of such glucose measurements, per se. Metes and bounds of the claimed process does not appear to be properly defined. Appropriate correction is required.
Claim 9 recites the limitations “in process step "e", from glucose concentration formed by Trehalase enzyme, trehalase activity result is calculated as U/L”, which also appears to be ambiguous because it lacks appropriate antecedent basis for the limitations of “glucose concentration” per se. In addition, the relationship between said “glucose concentration” and evaluated difference in two “glucose measurements” in step e) of claim 4 as recited is not clearly provided in the claims. Therefore, the metes and bounds of the process of claim 9 does not appear to be properly defined. Appropriate correction is required.
5. Claim 10 recites the limitations, “in process step "e", Trehalase activity producing 2 mmol glucose from 1 mmol trehalose per minute is assumed as one Unit (U)”, which also appears to be ambiguous because it lacks appropriate antecedent basis for the limitations of “Trehalase activity” per se. Also, since step e) of claim 4 as presented only requires “evaluation of difference of results between two glucose measurements”, it is unclear as to how the step recited in instant claim 10 relates to such evaluation of results in the context of “Trehalase activity”. Appropriate amendment/correction is required.
The method steps as presented in claim 4 (and claims dependent therefrom) appear to be open ended and ambiguous for the above discussed reasons rendering the claims 4-10 indefinite. Applicants are advised to amend entire set of claims such that the active method steps recited provide clear relationship with each other in order to remove ambiguities.
NOTE: In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 4-10 (as presented) are rejected under 35 U.S.C. 103 as being unpatentable over Nakano et al (1987; NPL previously made of record by examiner) in view of Dahlqvist (1968, NPL cited as ref. [U] on PTO 892 form).
Claim 4 as currently amended is directed to “A method for measurement of trehalase enzyme in urine,
a) mixing trehalose solution and urine sample,
b) incubating mixture at a predetermined temperature and duration,
c) measurement of glucose in mixture by glucose measurement kit with selected urine,
d) measurement of glucose in deionized water added urine mixture at said equivalent conditions in previous steps,
e) evaluation of difference of results between two glucose measurements.”
(See also 112-b issues discussed above with the claim 4 and dependent claims, as presented)
Nakano et al (1987) disclose, regarding instant claim 4, a method for measurement of trehalase enzyme in urine samples (from diabetic patients and normal subjects; see Title, Summary on p. 125), wherein the method comprises collecting urine samples from patients, pretreating urine samples that included dialysis followed by concentration of urine samples as enzyme solution to be assayed (see p. 126, section “Experimental Procedures”, and cited references therein); wherein the assay reaction mixture comprises pre-treated urine sample (as enzyme source) mixed with 40 mmol of trehalose in 20 mmol of phosphate buffer at pH 6.2 (see p. 127, section “Assay for enzyme activity”) in a total reaction volume of 0.25 ml (40 mmol of trehalose dihydrate, mol. wt. 378.33 would be equivalent to 6.052 g/dL final concentration in the reaction mixture); wherein the reaction mixture is incubated at 37 degree C for 60 min, and the reaction was stopped by addition of a Tris-glucose oxidase-peroxidase reagent (taken herein as a kit) which was used for the determination of the liberated glucose (see cited reference [23] of Dahlqvist, 1968, and discussion below); and wherein the activity of trehalase was calculated and expressed as mmol glucose formed per hour per gram creatinine in the urine samples, which were compared and evaluated with control or healthy urine samples (see Figure 1, Table 1 on p. 128, for instance).
However, the method for measuring trehalase enzyme activity, wherein “deionized water” is used in the reaction mixture (i.e. as a reagent blank for comparison with samples added with trehalose solution), and evaluated for difference glucose measurement results in order to measure trehalase enzyme activity in urine samples, has not been explicitly disclosed by Nakano et al, as discussed above.
Dahlqvist (1968), while teaching assay of intestinal disaccharidases (including trehalase activity; see Title, p. 99, 1st paragraph; p. 102, section “Assay of Disaccharidase Activity”) discloses the fact that Tris buffer is used because it inhibits the disaccharidases activity that are generally present as contaminants in glucose oxidase preparations; and also discloses that for comparative measurement of liberated glucose, suitable blank or controls can be made such as a reagent blank, for instance, that is prepared by mixing 200 microliter distilled water and 3.0 ml of Tris-glucose oxidase reagent (TGO reagent), in order to compare with the glucose measurements using TGO reagent (see p. 103, section “Assay with a Final Volume of 3.2 ml”). In addition, Dahlqvist discloses preparation of suitable stock solutions for various substrates and require reagents (see p. 100-101, for instance), required standard curve for product released, as well as calculations to evaluate dilution factor and to express enzymatic activity in test samples, for instance, 1 mmole disaccharide (such as substrate trehalose hydrolyzed into 2 glucose molecules) hydrolyzed per minute is taken as 1 unit of enzyme activity (see p. 103; and p. 105, for instance).
Thus, given the detailed disclosure by Dahlqvist, 1968 for the use of distilled water (for dissolving substrates/products) for a reagent blank, and for the details of suitable stock solutions for trehalose as substrate and glucose as an end product for making standard curves in order to estimate and/or for comparative measurements and/or evaluations of the activity of disaccharidases expressed in suitable units (such as substrate hydrolyzed, or product released per unit time), including trehalase enzyme in a sample, it would have been obvious to an artisan in the enzymology art to modify the method disclosed by Nakano et al for measuring trehalase enzyme activity in urine samples, such that it employs a suitable reagent blank (such as using distilled water for dissolving substrates, and in place of substrate trehalose in the form of a reagent blank, as taught by Dhalqvist, above; see for instance, p.101, section “Standard Glucose Solutions” wherein glucose is dissolved in water) in order to effectively measure the difference between the amounts of the product (i.e. glucose) released from the urine samples when compared to control urine samples (i.e. without substrate). It is to be noted that instant claims 4-6 as presented do not specify the type of trehalose salt (anhydrous or dihydrate) used, and do not require trehalose substrate solution to be dissolve in water per se. Moreover, since Dhalqvist teaches the same trehalase assay involving the glucose-based color development via spectrophotometric method and analysis for the same disaccharidase enzyme activity including detailed comparative analysis and calculations for expression of enzyme activity (regarding instant claims 9-10) in terms of substrate hydrolyzed or product released per unit of time, an artisan of ordinary skill in the art would have fully contemplated such adjustment in determining enzymatic activity of trehalase in urine samples as taught by Nakano et al. Also (regarding instant claims 5-7) since stock solutions of substrate used and adjustments regarding the dilution factor for samples, and/or reagents used in the assay has already been disclosed by Dhalqvist, an artisan in the enzymology art would have known and/or fully contemplated such variables affecting the enzyme activity calculations with reference to trehalase enzyme activity with trehalose as a substrate and glucose as an end product being detected and/or measured, as taught explicitly by Dhalqvist when taken with the disclosure from Nakano et al. Therefore, the invention as claimed fails to distinguish itself over the combined teachings from the cited prior art references as discussed above, unless evidence/data provided on record to the contrary (which is currently lacking on record; see instant disclosure, Example 1, p. 5-6).
Thus, the claim as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the invention as claimed.
As per MPEP 2111.01, during examination, the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, F.3d, 2004 WL 1067528 (Fed. Cir. May 13, 2004)(The USPTO uses a different standard for construing claims than that used by district courts; during examination the USPTO must give claims their broadest reasonable interpretation.). This means that the words of the claim must be given their plain meaning unless applicant has provided a clear definition in the specification. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Examiner’s Comments
Applicant’s arguments (REM dated 10/15/2025, p. 2-3) as presented in response to election/restriction, in particular context of the post-filing art of Kovanci et al, 2023 showing the use of water in place of buffer, is duly noted and considered. However, it is noted to applicants that the scope of the showing must be commensurate with the scope of claims to consider evidence probative of unexpected results, for example. In re Dill, 202 USPQ 805 (CCPA, 1979), In re Lindner 173 USPQ 356 (CCPA 1972), In re Hyson, 172 USPQ 399 (CCPA 1972), In re Boesch, 205 USPQ 215, (CCPA 1980), In re Grasselli, 218 USPQ 769 (Fed. Cir. 1983), In re Clemens, 206 USPQ 289 (CCPA 1980). It should be clear that the probative value of the data is not commensurate in scope with the degree of protection sought by the claim (see instant claim 4, in particular). No such comparative data has been presented on record to show any criticality of such modification in the method for measuring trehalase in urine samples that would have been any different that already disclosed method by the combined teachings of the cited prior art references as discussed above.
POST-FILING ART
KOVANCI et al. (2023; cited as ref. [V] on PTO 892 form)- “Urinary trehalase activity in contrast-associated acute kidney injury”, European Review for Medical and Pharmacological Sciences, 2023, vol. 27, pages 1298-1304 (applicant’s post-filing art disclosing urinary trehalase enzyme activity as marker for kidney damage, and method for measuring trehalase activity in urine samples; see Abstract and page 1300, left column).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SATYENDRA K. SINGH whose telephone number is (571)272-8790. The examiner can normally be reached M-F 8:00- 5:00.
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SATYENDRA K. SINGH
Primary Examiner
Art Unit 1657
/SATYENDRA K SINGH/Primary Examiner, Art Unit 1657