DETAILED ACTION
Notice of 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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-8 and 11-12 in the reply filed on 25 June 2026 is acknowledged.
It is noted, Applicant’s have amended the claims 11-12 to be method claims rather than the elected product claims. These method claims are drawn to methods of longitudinal imaging of macrophage phenotypes comprising administering the M1 or M2 probes to a subject and imaging he M1 or M2 reporter probe at two or more time points to indicate progression of disease or efficacy of treatment. This necessarily generates Group V (classified as A61K 49/0052) and is independent or distinct from elected Group I, as the products of Group I can be used in materially different processes such as inhibitor binding assays for the M2 reporter or as a chromogenic substrate for peroxidase assays for the M1 reporter. In addition, the methods of Group V differ from those methods of Groups II-IV because each method has unique and defined end points wherein the method steps utilized to obtain said end points vary in substances utilized and methods steps used to achieve said end points. As such, the methods are independent and distinct. Furthermore, a search for one would not necessarily be coextensive with the other which would place an undue search burden upon the examiner.
The requirement is deemed proper and therefore made Final.
Status of Application
Claims 1-19 are pending; Claims 9-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Thus, claims 1-8 are subject to examination on the merits.
Priority
The instant application claims benefit of US application 63507801 filed 13 June 2023.
Claim Objections
Claims 1-8 are objected to because of the following informalities: the claims are objected to for use of the M1 and M2 as acronyms without further explanation. It is suggested to recite for M1, as indicated in paragraph [0004] that M1 is “inflammatory M1 macrophage phenotype” (e.g. An inflammatory M1 macrophage phenotype reporter probe….) and M2 as “M2 macrophage phenotype”, e.g. An M2 macrophage phenotype reporter probe. Appropriate correction is required.
Claims 5 and 6 objected to because of the following informalities: for consistency sake, it is suggested to amend claims 5 and 6 consistent with claims 1 and 3, e.g. (M1 reporter probe; or M2 reporter probe). Also keeping in mind the objection above and amendments necessary for consistency.
Information Disclosure Statement/Specification
Regarding the “Bibliography” on pp. 19-21 of the specification, it is noted, the listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Rejections - 35 USC § 112(b)
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.
Claims 3-4, 6, 7-8 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.
The claims are drawn to arginase I reporter probe, which specifically detects arginase I. However, it is entirely unclear how an arginase I reporter probe, which is comprised of arginase I itself, also then detects arginase I. It seems that the arginase I detecting probe is not made of arginase I itself, rather, it is a small peptide which is able to detect arginase I by being cleaved by arginase I, as ascertained by paragraph 0022. It is noted, this is consistent with the scheme in Figure 1a.
Clarification is requested. However, the claim will be interpreted consistent with Figure 1a and the M2 reporter probe is actually an amino acid containing peptide (of any length) probe and not made of the enzyme arginase I enzyme itself.
Claim Rejections - 35 USC § 112(a)
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.
Written Description:
Claims 1-8 are rejected under 35 U.S.C. 112(a) 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 at the time the application was filed, had possession of the claimed invention.
The claims are drawn to five different but related products; (a) an M1 macrophage reporter probe comprising a reactive o-phenylenediamine molecule conjugated to a fluorophore and a quencher; (b) an M2 macrophage reporter probe comprising an arginase I enzyme conjugated to a fluorophore and a quencher; (c) the M1 reporter probe of (a) encapsulated within a liposomal nanoparticle; (d) the M2 reporter probe of (b) encapsulated within a liposomal nanoparticle and (e) a nanoreporter comprising both M1 and M2 reporter probes encapsulated in a liposomal nanoparticle.
However, the specification does not disclose what exactly the o-phenylenediamine molecule is, nor fluorescent probes utilized on the arginase I probe and o-phenylenediamine molecule probe, same with the quencher molecule, and if these are the same between both probes or completely different. In addition, for claims 7 and 8, any M1 and M2 reporter probe that is encapsulated within a liposomal nanoparticle is claimed. Thus, the claims are drawn to enormous and variable genus of reactive o-phenylenediamine molecules, all of its derivatives, linked to any fluorophore or quencher. Similarly, and noting the discrepancy above regarding the arginase I reporter probe and whether it is actually drawn to an arginase enzyme or an arginase I reporter probe cleaved by arginase I, this is also a huge and variable genus of amino acid reporter probes, also linked to any or all fluorophores and quenchers. The M1 and M2 combined nanoparticle liposomal nanoreporter is drawn to an even larger and more variable genus of molecules, it being anything that conceivably could detect M1 and M2 macrophages encapsulated within a liposomal nanoparticle. The specification, however, is relatively incomplete as to what the representative species are supposed to even be that represent the fluorophores or quenchers used even are, as that information is not ever disclosed (paragraph 0021 states: “Fluorescent probes capable of imaging macrophage spectrums were synthesized to accomplish this goal” but not information detailing what the probes are is found anywhere). For the reactive o-phenylenediamine molecule, what these molecules are or what they look is disclosed. It is stated, also in paragraph 0021: “A highly reactive o-phenylenediamine molecule was used as the backbone to design the nitric oxide reactive probes. These O-phenylene diamine groups are highly reactive towards nitric oxide and in the presence of oxygen (O2) undergo very selective and efficient benzotriazole ring formation. A series of chemical reactions on these o-phenylenediamine molecules allowed us to conjugate a visible range or a NIR (Near-infrared fluorophores) fluorophore and quencher on either side of this molecule.”
For the Arginase I probe, it is stated in paragraph 0022: The arginase enzyme-responsive fluorescent peptide probe was synthesized using both solution-phase and solid-phase chemistry. The use of arginine amino acid as a central node in the peptide sequence allowed us to deploy the fluorophore and a quencher on either side of the active site of the arginase I enzyme. This probe was also designed on the same FRET principle wherein these probe remains in “off” if fluorophore and quencher are in close proximity. The cleavage of the arginase 1 functional site on the peptide probe would release the dye and quencher aside to emit the fluorescence signal.” But the peptide probe is not detailed. For all of these items, e.g. fluorophore, quencher, reactive o-phenylenediamine and/or arginase I probe, even if these details were explicitly disclosed, which they are not, the would not be representative of the entire enormous, variable and at times unpredictable genus of combination of claimed M1 and M2 probes. As such, the claims are deemed to lack written description for the claimed invention.
The MPEP in section 2163(I) states that the purpose of the written description requirement is to ensure that the inventor had possession, at the time the invention was made/filed, of the specific subject matter claimed:
To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonable conclude the inventor had possession of the claimed invention. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319, 66 USPQ2d 1429, 1438 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1563, 19 USPQ2d at 1116. However, a showing of possession alone does not cure the lack of a written description. Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 969-70, 63 USPQ2d 1609, 1617 (Fed. Cir. 2002). For example, it is now well accepted that a satisfactory description may be found in originally-filed claims or any other portion of the originally-filed specification. See In re Koller, 613 F.2d 819, 204 USPQ 702 (CCPA 1980); In re Gardner, 475 F.2d 1389, 177 USPQ 396 (CCPA 1973); In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). However, that does not mean that all originally-filed claims have adequate written support. The specification must still be examined to assess whether an originally-filed claim has adequate support in the written disclosure and/or the drawings.
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An applicant shows that the inventor was in possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. Amer. Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997)"
Further, for a broad generic claim, the specification must provide adequate written description to identify the genus of the claim. In Regents of the University of California v. Eli Lilly & Co. the court stated:
"A written description of an invention involving a chemical genus, like a description of a chemical species, 'requires a precise definition, such as by structure, formula, [or] chemical name,' of the claimed subject matter sufficient to distinguish it from other materials." Fiers, 984 F.2d at 1171, 25 USPQ2d 1601; In re Smythe, 480 F.2d 1376, 1383, 178 USPQ 279, 284985 (CCPA 1973) ("In other cases, particularly but not necessarily, chemical cases, where there is unpredictability in performance of certain species or subcombinations other than those specifically enumerated, one skilled in the art may be found not to have been placed in possession of a genus ...") Regents of the University of California v. Eli Lilly & Co., 43 USPQ2d 1398 (Fed. Circ. 1997).
MPEP § 2163 further states that if a biomolecule is described only by a functional characteristic, without any disclosed correlation between function and structure of the sequence, it is "not sufficient characteristic for written description purposes, even when accompanied by a method of obtaining the claimed sequence." Furthermore, the courts have also held that possession may not be shown by merely describing how to obtain possession of members of the claimed genus or how to identify their common structural features. See University of Rochester, 358 F.3d at 927, 69 USPQ2d at 1895.
Enablement:
Claims 1-8 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The factors to be considered in determining whether undue experimentation is required are summarized In re Wands 858 F.2d 731, 8 USPQ2nd 1400 (Fed. Cir, 1988). The court in Wands states: "Enablement is not precluded by the necessity for some experimentation such as routine screening. However, experimentation needed to practice the invention must not be undue experimentation. The key word is 'undue,' not 'experimentation.' " (Wands, 8 USPQ2d 1404). Clearly, enablement of a claimed invention cannot be predicated on the basis of quantity of experimentation required to make or use the invention. "Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations." (Wands, 8 USPQ2d 1404). The factors to be considered in determining whether undue experimentation is required include: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.
As noted above, the claims are drawn to five different but related products; (a) an M1 macrophage reporter probe comprising a reactive o-phenylenediamine molecule conjugated to a fluorophore and a quencher; (b) an M2 macrophage reporter probe comprising an arginase I enzyme conjugated to a fluorophore and a quencher; (c) the M1 reporter probe of (a) encapsulated within a liposomal nanoparticle; (d) the M2 reporter probe of (b) encapsulated within a liposomal nanoparticle and (e) a nanoreporter comprising both M1 and M2 reporter probes encapsulated in a liposomal nanoparticle.
Regarding the quantity of experimentation required to make the claimed inventions, this would be considered significant because there are no working examples at all in the specification. The specification states the following regarding the claimed invention (PG-Pub paragraph numbering):
“[0021] Fluorescent probes capable of imaging macrophage spectrums were synthesized to accomplish this goal. A highly reactive o-phenylenediamine molecule was used as the backbone to design the nitric oxide reactive probes. These O-phenylene diamine groups are highly reactive towards nitric oxide and in the presence of oxygen (O2) undergo very selective and efficient benzotriazole ring formation. A series of chemical reactions on these o-phenylenediamine molecules allowed us to conjugate a visible range or a NIR (Near-infrared fluorophores) fluorophore and quencher on either side of this molecule. The proximity of the fluorophore results in the fluorescence being “turned off” state in the absence of a nitric oxide stimulus due to the fluorescence resonance energy transfer (FRET) phenomenon. Upon intracellular exposure to nitric oxide and in presence of oxygen, this newly engineered o-phenylenediamine moiety would undergo benzotriazole ring formation followed by hydrolysis to release the dye and quencher apart thereby emitting the fluorescent signal. Although in previous work, the efficacy of commercially available NO probes in detecting NO activity were reported, provided herein a more sensitive NO probe was developed that is modular in nature and can florescence in the more sensitive NIR window.20”
“[0022] The arginase enzyme-responsive fluorescent peptide probe was synthesized using both solution-phase and solid-phase chemistry. The use of arginine amino acid as a central node in the peptide sequence allowed us to deploy the fluorophore and a quencher on either side of the active site of the arginase I enzyme. This probe was also designed on the same FRET principle wherein these probe remains in “off” if fluorophore and quencher are in close proximity. The cleavage of the arginase 1 functional site on the peptide probe would release the dye and quencher aside to emit the fluorescence signal.”
[0023] Systemic delivery of probes that get selectively activated in the presence of disease by a process mediated by enzymatic cleavage of probes can possibly achieve enhanced signal-to-noise ratios and high sensitivities as compared to current disease evaluation techniques. However, these strategies are limited by a number of factors such as lack of biocompatibility of the probe, premature clearance, and ability of the probes to get distributed to the disease site. Therefore, to address these challenges, a strategy was implemented, wherein the Nitric Oxide and Arginase 1 reporter probes were encapsulated in liposomal nanoparticle systems to form the M1 and M2 nanoreporter respectively. The nanoreporter systems were synthesized using a thin-film hydration technique facilitated by the self-assembly of Phosphatidylcholine, DSPE PEG Amine, cholesterol, and the respective reporter probes. Phosphatidylcholine was chosen for its biocompatible nature, DSPE PEG Amine was used as a “Pegylating” agent, and cholesterol was used to stabilize the lipid bilayer. The resulting M1 and M2 nano reporters had a size of 118.54+7.23 nm and 128.8+5.15 nm respectively and zeta potential of and 9.26t1.57 mV and 9.348+0.59 mV respectively. The stability of the nanoparticle systems was evaluated by measuring the size and surface charge at regular intervals over a course of 14 days. As seen in FIG. 2C, minimal changes in size and surface charge were observed over the due course of storage, proving that the nanoparticles are indeed stable under storage conditions. Furthermore, extensive characterization of this liposomal nanoparticle system in previous studies shows the stability of the system in physiological conditions of 37° C. and 10% serum as well.20.29.30 The encapsulation efficiency of the nanoparticle systems was also evaluated and was found to be 70%.
However, exactly how each of these chemical reactions completed, the steps taken, the time for each reaction, the temperature, the chemicals involved for any and all of these is completely missing in the instant specification. While the level of skill for one skilled in the chemical synthesis art is very high (graduate level and above), the amount of direction and guidance in the specification is completely missing. As such, said skilled artisans will necessarily have to practice a great deal of undue experimentation in order to achieve the inventions as claimed because the breadth of the claims are so broad. It is noted, Applicant’s own post-filing of Ramesh et al. (Small, 14 June 2023 – cited herein) art has at least 10 pages devoted how to make and use the products as claimed - See Supporting Information, All sections but especially Sections 1-8; Supplementary Figures 1-3; 11-13. But this very information is missing from the instant specification, and it cannot be considered public prior knowledge known from the prior art given it was published after the instant effective filing date. While the nature of the invention is other M1 and M2 reporter probes do exist, see for example, Latha et al. and Plater et al. as cited above, each go into extensive detail as how to make each of the described probes.
As such, the breadth of claims exceed that which is enabled because the amount of direction and guidance in the specification and working examples coupled with what is known in the art suggests that the instant method claims will be highly unpredictable thus leading one skilled in the art to a huge amount of undue experimentation, despite the high level of skill of said artisan.
Finally, the SCOTUS in Amgen warned that “the more one claims, the more one must enable” Amgen Inc. v. Sanofi, 143 S. Ct. 1243, 1254, 1257 (2023). The Court also made clear that providing “research assignments” to the public to identify claimed species of a genus in trial and error fashion was improper.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Plater et al. (J. Chem. Soc., 2001 – cited herein).
Plater et al. teach NO detection probes comprising anthracene, coumarin or acridine fluorophores coupled to an electron rich o-phenylenediamine group, and a quencher which is the lowest unoccupied orbital of the excited fluorophore. There is nothing in the claims which suggest that the fluorophore cannot also serve as the quencher.
Claim(s) 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Latha et al. (Material Science and Engineering:C 2020 – cited herein).
Hu et al. teach in vivo NO detection probes comprising o-phenylenediamine derivatives conjugated to the fluorophore rhodamine where the fluorophore also acts as a quencher (See Section 3. Results and Discussion). There is nothing in the claims which suggest that the fluorophore cannot also serve as the quencher.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUZANNE M NOAKES whose telephone number is (571)272-2924. The examiner can normally be reached M-F (7-4).
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/SUZANNE M NOAKES/Primary Examiner, Art Unit 1656
01 September 2026
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