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 .
Applicant’s Response Dated July 23, 2025
In the Response dated July 23, 2025, claims 1, 9, 24, 39, 71, 87, 99, 109, 110, and 112-118 were amended. Claims 1, 7-9, 24, 39, 52, 57, 71, 87, 99, and 109-118 are pending. An action on the merits of claims 1, 7-9, 24, 39, 52, 57, 71, 87, 99, and 109-118 is contained herein.
The rejection of claims 99 and 109-111 under 35 U.S.C. 112(b) has been withdrawn in view of applicant’s argument(s) or rendered moot in view of applicant’s amendment dated July 23, 2025.
The rejection of claims 1 and 7-9 under 35 U.S.C. 103 as being unpatentable over Wengel US 6,794,499 B2 is maintained for the reasons of record as set forth in the Office Action dated May 19, 2025.
Rejections Set Forth in the Office Action Dated May 19, 2025
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Wengel US 6,794,499 B2.
Applicant's arguments filed July 23, 2025 have been fully considered but they are not persuasive. Applicant submits that there is no teaching in the prior art that would have suggested the crystalline ENA intermediates of the present disclosure or the advantages of using these crystalline ENA intermediates in the synthesis of ENAs compared to known ENA syntheses.
Applicant’s arguments have been fully considered but are not persuasive. The patentability of a product does not depend on its method of production (e.g., intermediate(s)). If the product in is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. Thus, the rejection is maintained based on the preponderance of evidence.
Conclusion
Claims 1, 7-9, 24, 39, 52, 57, 71, 87, 99, and 109-118 are pending. Claims 1 and 7-9 are rejected. Claims 24, 39, 52, 57, 71, 87, 99, and 109-118 are allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contacts
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK T LEWIS whose telephone number is (571)272-0655. The examiner can normally be reached Monday to Friday, 10 AM to 4 PM EST (Maxi Flex).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shaojia Jiang can be reached at (571) 272-0627. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK T LEWIS/Primary Examiner, Art Unit 1691
/PL/
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