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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/22/26 has been entered.
This office action is in response to applicant’s communication filed on 9/22/26. Claims 1-13 are pending and are being examined in this Office Action. Due to applicant’s claim amendments filed 9/22/26, the 103 rejections are withdrawn. However, based on a new search and further consideration in response to applicant’s amended claims, new rejections are in order.
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.
Claims 1-13 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites the limitation “the reaction with metal equipment”. There is insufficient antecedent basis for this limitation in the claim. The only reaction recited before this phrase is the neutralization reaction. It is also not clear what reacts with the metal equipment, or how the anti-solvent avoids tetramethylurea.
The specification explains that acetic acid corrodes the metal equipment, and the metal salt that forms then helps convert DMF into tetramethylurea at high temperature (paragraph [0035]). Claims 2-13 are also rejected, since they depend from claim 1 and do not cure this defect.
Reference to applicant’s specification refers to applicant’s PGPub: US 20230295074
Claim Rejections – 35 USC 103
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 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 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 of this title, 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-10 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN108358807, pub date 8/3/2018, the English translation is used herein), in view of Hu et al. (CN106831472, pub date 6/13/2017, the English translation is used herein), further in view of Li et al. (CN108862795, pub date 11/23/2018, the English translation is used herein), further in view of Xue et al. (CN101671246, pub date 3/17/2010, the English translation is used herein).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Wang et al. teaches a method to recover acidic DMF and waste sodium acetate from sucralose production. The sucralose process makes wastewater that contains DMF and acetic acid (page 3, paragraph 0005).
Wang et al. teaches adding the acidic DMF solution and 32% liquid alkali to a neutralization kettle for a neutralization reaction. The volume ratio of acidic DMF solution to 32% liquid alkali is 28:1, and the reaction time is 2 hours. The neutralized solution is then cooled to not more than 45°C, and a crystal mixture is obtained (page 5, paragraph 0014; pages 6-7, paragraph 0026).
Wang et al. teaches the crystal mixture is separated in a filter press, which gives a filtrate that contains acidic DMF and a crude sodium acetate filter cake. The filtrate is fed to a scraped evaporator. The distilled DMF enters a DMF receiving tank, and is then sent to a DMF distillation system. The finished DMF is returned to the esterification section for reuse (page 5, paragraph 0015; page 7, paragraph 0027).
Wang et al. also teaches the crude sodium acetate filter cake is dissolved, decolorized, crystallized and centrifuged to give finished sodium acetate, and the filtrate is returned for reuse (page 5, paragraph 0016; page 7, paragraph 0028).
Hu et al. teaches a process to recover DMF from salt-containing DMF waste liquid. The salts in the waste liquid are mainly zinc and iron chlorides (pages 4-5, paragraph 0008). Hu et al. teaches adding an organic extractant to the liquid phase, to selectively leach DMF, and to separate and remove the small amount of salt in the liquid phase. The extractant is petroleum ether, carbon tetrachloride, carbon disulfide, dichloromethane, cyclohexane or benzene (page 6, paragraph 0013; page 10, paragraph 0030).
Hu et al. teaches that after stirring, a layered mixture of solvent and solid is obtained. The mixture is filtered to remove the salt solids, and an extractant-DMF mixture is obtained (page 7, paragraph 0017). In Example 2, the mixture is allowed to stand, and solid and liquid layers form. The solid inorganic salts are at the bottom of the extraction tank, and the extractant-DMF mixture is at the top (page 16, paragraph 0055).
Hu et al. teaches the extractant-DMF mixture is distilled to obtain the extractant and DMF separately. The light extractant is taken off at 30-80°C, and the heavy DMF is taken off at 80-140°C (page 6, paragraph 0014; page 11, paragraph 0037).
Hu et al. also teaches that DMF easily decomposes when heated under acidic or alkaline conditions, which lowers DMF quality and causes serious corrosion of equipment. Thus, acid or alkali is often added to make the DMF waste liquid neutral before further treatment (pages 2-3, paragraph 0004).
Li et al. teaches a method to recover DMF from DMF wastewater. The acidic DMF wastewater is neutralized, filtered, and mixed with an organic solvent for extraction. The volume ratio of organic solvent to wastewater is 1-2:1. The extracted organic solution is distilled to recover the solvent and DMF, respectively. The extracted wastewater is evaporated, and the water and salt are recovered (pages 3-4, paragraphs 0009-0013). Li et al. exemplifies ratios of 1:1 and 1:1.5 (page 7, paragraph 0025; page 9, paragraph 0031).
Li et al. teaches the solvent used in the process can be recycled (page 5, paragraph 0018). Li et al. also teaches adding solid potassium carbonate to adjust the pH of the acidic DMF wastewater (page 7, paragraph 0025).
Xue et al. teaches a method to prepare sodium acetate trihydrate. Acetic acid is absorbed in liquid alkali to form a sodium acetate solution (page 3). The sodium acetate solution is adjusted to pH 6-9, evaporated, concentrated, seeded at 57-60°C, cooled and crystallized. The solid phase obtained is sodium acetate trihydrate (page 1, Abstract; pages 3-5; page 5, claim 1).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012)
Wang et al. is deficient in that it does not expressly teach adding the claimed anti-solvent, which extracts DMF and causes acetate hydrate to crystallize and precipitate as a solid. Wang et al. also does not expressly teach the layering step, the separate evaporation of the upper and lower liquid phases, and the recycle of the anti-solvent condensate. Wang et al. also does not expressly teach chloride-ion impurities in the DMF stock solution.
However, Hu et al. teaches adding an organic extractant, such as benzene, to salt-containing DMF liquid. The extractant leaches the DMF, and the salt in the liquid phase is separated as a solid and filtered off. Hu et al. also teaches distilling the extractant-DMF mixture to recover the extractant and the DMF separately.
Also, Li et al. teaches that when aqueous DMF wastewater is mixed with an organic solvent, an organic solution of DMF and a water phase are obtained, and each phase is treated separately. Li et al. also teaches the solvent can be recycled.
Additionally, Xue et al. teaches that sodium acetate crystallized from an aqueous solution is sodium acetate trihydrate.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to add Hu et al.’s organic extractant, such as benzene, to Wang et al.’s neutralized acidic DMF solution, with stirring, to extract the DMF and precipitate the sodium acetate as a solid, and then to filter the solid. Both references remove salt from a DMF waste liquid to recover DMF. Hu et al. teaches its extractant separates DMF from salt in a single extraction, and avoids salt blockage in the distillation tower (page 5, paragraph 0010; page 10, paragraph 0030). The motivation would have been to remove more of the acetate salt before the DMF is heated, and to recover DMF of higher purity.
One of ordinary skill in the art would have had a reasonable expectation of success. Hu et al.’s waste liquid has no water (paragraph 0008), while Wang et al.’s stream contains some water. However, Wang et al. already crystallizes sodium acetate from its water-containing acidic DMF solution (paragraph 0014). Hu et al.’s extractants are mostly nonpolar solvents in which the inorganic salts separate as solids (paragraphs 0017 and 0055). In the examiner’s view, sodium acetate, an ionic salt, would likewise be expected to have very low solubility in benzene. Thus, adding benzene would be expected to lower the solubility of the acetate further, and to increase the amount of acetate that precipitates.
It would further have been obvious to stand and layer the DMF mother liquor, and to evaporate the upper and lower liquid layers separately. Wang et al.’s neutralized solution contains water. Li et al. teaches that an organic solvent added to aqueous DMF gives an organic phase and a water phase, which are treated separately (paragraphs 0011-0013). Hu et al. lets its extraction mixture stand so that the phases separate (paragraph 0055). Benzene is lighter than water, so the benzene-DMF phase is the upper layer. Hu et al. teaches distilling the extractant-DMF phase, and takes off the light extractant first, at 30-80°C (paragraph 0037). The DMF-rich liquid left after the extractant is taken off is a DMF concentrate.
Therefore, it would have been obvious to stop after the extractant cut, and to send the DMF concentrate on to Wang et al.’s DMF distillation system, since Wang et al. purifies the DMF there anyway. Wang et al. teaches evaporating its aqueous DMF filtrate, and sending the distilled DMF to the DMF receiving tank and then to the DMF distillation system (paragraph 0015).
Thus, it would have been obvious to evaporate the upper layer as taught by Hu et al., to evaporate the lower layer as taught by Wang et al., and to combine the DMF from both layers in Wang et al.’s DMF receiving tank as a crude DMF solution for distillation. Both streams are crude DMF that is purified in the same distillation system. This is the use of known steps for their known purpose, with predictable results.
It would further have been obvious to recycle the recovered extractant, which is the condensate from the upper layer, back to the extraction and crystallization step, since Li et al. teaches the solvent used in the process can be recycled (paragraph 0018). The motivation would have been to reduce solvent cost and waste.
It would further have been obvious that the acetate crystallized from Wang et al.’s water-containing neutralized solution is an acetate hydrate. Xue et al. teaches that sodium acetate crystallized from aqueous solution, after seeding at 57-60°C and cooling, is sodium acetate trihydrate. Wang et al. cools its neutralized solution to not more than 45°C (paragraph 0014). Thus, the claimed acetate hydrate would have been expected.
With regard to applicant’s new limitation that the DMF stock solution is collected from a sucralose production process and contains chloride-ion impurities, Wang et al. teaches the acidic DMF is from sucralose production (paragraph 0005). Hu et al. teaches its extraction separates DMF from chloride salts in DMF waste liquid (paragraphs 0008 and 0030). The claimed steps do not act on the chloride ions. Thus, the prior art process would be expected to work on a DMF stream that contains chloride ions. Note also that applicant’s specification states, in the Background section, that acetic acid, chloride ions and water are produced during sucralose production and are held in the DMF solvent (paragraph [0003]).
With regard to applicant’s new limitation that the anti-solvent causes the acetate hydrate to crystallize and precipitate as solid “so as to avoid tetramethylurea produced by the reaction with metal equipment”, this phrase states the intended result of the claimed steps. See MPEP 2111.04. Even if given weight, the prior art teaches the same steps. In the combination, the acetic acid is converted into acetate, and the acetate is removed as a solid by the extractant before the DMF is heated. Hu et al. teaches that heating DMF under acidic conditions decomposes DMF and causes serious corrosion of equipment (paragraph 0004). Thus, the same result would be expected from the same steps.
With regard to controlling the pH of the mixture within a preset range, Wang et al. sets the ratio of acidic DMF solution to liquid alkali at 28:1 for the neutralization (paragraph 0014), which controls the pH of the mixture.
With regard to the anti-solvent group of claim 1, Hu et al. teaches benzene, which is one of the claimed anti-solvents.
With regard to claim 2, Wang et al. uses a 28:1 volume ratio of acidic DMF solution to 32% liquid alkali (paragraph 0014). By the examiner’s calculation, this alkali neutralizes about 2.4% acetic acid by mass of the acidic DMF solution (250 L of 32% NaOH, about 108 kg NaOH, per 7000 L of acidic DMF; paragraphs 0014 and 0026). The filtrate is still acidic (paragraph 0015).
Thus, Wang et al.’s acetic acid content is at least about 2.4%, which overlaps the claimed 1% to 10%. Wang et al.’s stream is an acidic DMF solution that is also a wastewater, so it contains DMF, acetic acid and water (paragraphs 0005 and 0014). The claimed ranges only describe the feed. Absent evidence of criticality, the claimed ranges do not patentably distinguish the method.
With regard to claim 3, Wang et al. teaches 32% liquid alkali, which forms sodium acetate (paragraphs 0014-0016). This is an aqueous NaOH solution with a mass concentration within the claimed 1% to 50%.
With regard to claim 4, Wang et al. teaches a neutralization reaction with liquid alkali for 2 hours (paragraph 0014). The reaction temperature, reaction time and stirring rate are routine operating parameters for an acid-base neutralization. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With regard to claim 5, Li et al. teaches adding solid potassium carbonate to acidic DMF wastewater to adjust the pH (paragraph 0025). Potassium carbonate is one of the solid alkalis of claim 3. Thus, it would have been obvious to use a solid alkali in Wang et al.’s neutralization step. The amount of alkali, temperature, time and stirring rate are routine operating parameters. At least a molar equivalent of alkali would be used, to convert all of the acetic acid into acetate. See In re Aller above.
With regard to claim 6, Wang et al. adds alkali to neutralize the acetic acid (paragraph 0014). The amount of alkali, and so the final pH, sets how much of the acetic acid is converted into acetate. Xue et al. teaches a sodium acetate solution, made by absorbing acetic acid in liquid alkali, that is brought to pH 6 to 9 before the sodium acetate is crystallized (page 1, Abstract; page 3; page 5, claim 1).
Thus, it would have been obvious to add enough alkali to bring Wang et al.’s mixture to a pH of about 7 to 9, to convert the acetic acid into acetate and to crystallize the acetate. This range overlaps the claimed pH of 7 to 11. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
With regard to claim 7, Hu et al. teaches benzene. Toluene is the next homolog of benzene, and differs from benzene by one -CH2- group. Homologs are generally of such close structural similarity that they are expected to have similar properties. See MPEP 2144.09. Thus, one of ordinary skill in the art would have expected toluene to act as an extractant in the same way as benzene. Note that applicant’s own example with benzene (Embodiment 4, Table 8) gives results like the toluene examples. Thus, no unexpected result is shown for toluene.
With regard to claims 8 and 13, Li et al. teaches a volume ratio of organic solvent to wastewater of 1-2:1, and exemplifies ratios of 1:1 and 1:1.5 (paragraphs 0011, 0025 and 0031). This is a ratio of DMF stock solution to anti-solvent of 1:1 to 1:2, which is within the claimed 1:0.5 to 5 and 1:1 to 3. Hu et al. uses 5-20:1 by mass (paragraph 0016), but that ratio is for a DMF liquid with no water. Li et al.’s ratio is for a water-containing DMF stream, as is the claimed stock solution. In any event, the examiner considers the amount of solvent a result-effective variable, since it controls how much DMF is extracted. See In re Aller above.
With regard to claim 9, Hu et al. teaches stirring for an extraction time of 10-40 min (paragraph 0017), which overlaps the claimed 15 min to 60 min. Hu et al. extracts at 65-130°C. However, Wang et al. cools the neutralized solution to crystallize the acetate (paragraph 0014), and Xue et al. cools to crystallize sodium acetate trihydrate. Thus, it would have been obvious to carry out the step at room temperature, to favor crystallization of the acetate. The stirring rate is a routine operating parameter. See In re Aller above.
With regard to claim 10, Hu et al. teaches that DMF decomposes when heated under acidic or alkaline conditions, and that acid or alkali is often added to make DMF waste liquid neutral before further treatment (paragraph 0004). Hu et al. omits this step in its own process, since the salt formed by neutralization can block the distillation column and the extra step adds cost (paragraphs 0004 and 0043). A reference’s preference for one alternative does not teach away from another. In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Here, the acetate has already been removed as a solid before distillation, so little salt forms from the pH adjustment. When the acetic acid is fully neutralized with excess alkali (see claims 5 and 6), the crude DMF solution can be alkaline. Thus, it would have been obvious to add an acid to the crude DMF solution to bring the pH to about 7 before distillation. A pH of 7 lies within the claimed pH of 6-8. The motivation would have been to avoid decomposition of DMF and corrosion during distillation.
With regard to claim 12, Wang et al. teaches that the crude sodium acetate filter cake is dissolved, decolorized, crystallized and separated to give finished sodium acetate (paragraphs 0016 and 0028). This is a secondary recycling of the precipitated acetate solid.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. in view of Hu et al., further in view of Li et al., further in view of Xue et al., as applied to claim 10 above, and further in view of Wu et al. (CN110639345, pub date 1/3/2020, the English translation is used herein).
Regarding claim 11, Wang et al., Hu et al., Li et al. and Xue et al. teach the method of claim 10 as discussed above.
But, Wang et al., Hu et al., Li et al. and Xue et al. do not expressly teach that the acidic regulator is an inorganic acid with a mass concentration of 5% to 50%.
However, Wu et al. teaches treating tail gas from a DMF wastewater recovery process with a fresh acid solution of sulfuric acid or hydrochloric acid in water, with a concentration of 5-30%. The acid solution and alkali solution are mixed, the pH is adjusted, and the liquid is returned to the DMF wastewater recovery process (page 7, second paragraph; page 9, 5th paragraph from the bottom; claim 10 on page 13).
Thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to use Wu et al.’s 5-30% sulfuric acid or hydrochloric acid solution as the acid added to make the crude DMF solution neutral, in the modified process of Wang et al., Hu et al., Li et al. and Xue et al. Wu et al. uses 5-30% sulfuric or hydrochloric acid in a DMF wastewater recovery plant, and returns the pH-adjusted liquid to the DMF wastewater recovery process. The concentration of 5-30% lies within the claimed 5% to 50%. The motivation would have been to use a known, low-cost acid for pH adjustment of a DMF stream.
Response to Arguments
Applicant’s arguments have been considered but are not persuasive for the following reasons:
The examiner acknowledges applicant’s argument that the rejection is a mosaic of discrete features picked from separate references, and that one of ordinary skill in the art would not have had a reasonable expectation of success.
The examiner responds by stating that the rejection gives reasons, found in the references, for each combination. All of the references are directed to the recovery of DMF from acid- or salt-containing waste streams. Hu et al. itself teaches that an added extractant leaches the DMF, and that the salt in the liquid phase is separated as a solid and filtered off (paragraphs 0013, 0017 and 0055). Wang et al. already crystallizes sodium acetate from its neutralized DMF solution (paragraph 0014). Thus, one of ordinary skill in the art would have expected that adding Hu et al.’s extractant to Wang et al.’s neutralized solution would extract DMF and precipitate more of the acetate. Obviousness requires only a reasonable expectation of success.
The examiner acknowledges applicant’s argument that Wang et al. uses only cooling crystallization, removes only part of the acetate, and does not address acetic acid and chloride ions together.
The examiner responds by stating that Wang et al. is not relied upon alone. Hu et al. is relied upon for the extractant, which removes more of the salt as a solid. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). See MPEP 2145(IV).
The examiner acknowledges applicant’s argument that Li et al. and Hu et al. teach only partition-type liquid-liquid extraction, and that in Hu et al. the salt solids are removed only in a later, separate step.
The examiner responds by stating that Hu et al. teaches that the extractant is added to the liquid phase to leach DMF and to separate and remove the salt in the liquid phase (paragraph 0013). After stirring, “a layered mixture of solvent and solid is obtained”, and the salt solids are then filtered (paragraph 0017). In Example 2, the mixture stands, and the solid salts collect at the bottom of the extraction tank, while the extractant-DMF mixture is at the top (paragraph 0055).
Thus, in Hu et al., the salt is separated as a solid in the extraction step itself. This is the same order of steps as claim 1: add the anti-solvent, stir, precipitate the salt, and filter. Li et al. is not relied upon for salt precipitation. Li et al. is relied upon for the separate layers, their separate treatment, and the recycling of the solvent.
The examiner acknowledges applicant’s argument that the prior art does not teach a sucralose DMF stock solution that contains both acetic acid and chloride-ion impurities.
The examiner responds by stating that Wang et al. teaches acidic DMF from sucralose production (paragraph 0005). Hu et al. teaches the extraction works on DMF waste liquid that contains chloride salts (paragraphs 0008 and 0030). The claimed steps do not act on the chloride ions. Also, applicant’s own specification states that acetic acid, chloride ions and water are produced during sucralose production and are held in the DMF solvent (paragraph [0003]).
The examiner acknowledges applicant’s argument that the prior art does not teach the specific group of anti-solvents.
The examiner responds by stating that Hu et al. teaches benzene, which is a member of the claimed group (paragraphs 0013 and 0030). As to claim 7, toluene is the next homolog of benzene, as explained above.
The examiner acknowledges applicant’s argument that the prior art does not teach the claimed stream routing after the separate evaporation of the upper and lower liquid phases.
The examiner responds by stating that Wang et al. evaporates its aqueous DMF filtrate and sends the distilled DMF to a DMF receiving tank and then to distillation (paragraph 0015). Hu et al. distills the extractant-DMF mixture, and takes off the extractant first as the light component (paragraph 0037). The DMF-rich liquid left after that cut is a DMF concentrate. Li et al. treats the organic phase and the water phase separately, and teaches the solvent can be recycled (paragraphs 0011-0013 and 0018).
Thus, it would have been obvious to recycle the extractant condensate, and to combine the two DMF streams in Wang et al.’s DMF receiving tank before distillation. Both streams are crude DMF that is sent to the same distillation system.
The examiner acknowledges applicant’s argument that Xue et al. is a standalone aqueous salt-making process that cannot be transplanted into a high-DMF waste liquid.
The examiner responds by stating that Xue et al. is not relied upon for its full process. Xue et al. is relied upon only to show that sodium acetate crystallized from a water-containing solution, after cooling, is sodium acetate trihydrate. Wang et al.’s neutralized solution contains water and is cooled to not more than 45°C (paragraph 0014). The test for obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art, not whether one reference may be bodily incorporated into another. In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). See MPEP 2145(III).
The examiner acknowledges applicant’s argument that the claimed method gives unexpected results, such as less tetramethylurea, less salt load on the evaporators, less corrosion, and acetic acid below 0.15 wt% in the recovered DMF.
The examiner responds by stating that the examples report only the DMF, water and acetic acid content of the product (Tables 2, 4, 6, 8, 10, 12, 14, 16, 18, 20 and 22). The specification does not measure tetramethylurea, corrosion or evaporator salt load. For these results, applicant relies on attorney argument. Also, the acetic acid result is not “stably” below 0.15 wt%, since Embodiment 2 reports 0.15% (Table 4). The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). See MPEP 716.01(c) and 2145(I).
Also, the examples do not compare the claimed method with the closest prior art, Wang et al. See MPEP 716.02(e). Further, the examples use specific solvents, ratios and conditions, and are not commensurate in scope with claim 1. Finally, a lower acid content before heating is an expected result, since Hu et al. teaches that heating DMF under acidic conditions decomposes DMF and corrodes equipment (paragraph 0004).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Cho Sawyer whose telephone number is (571) 270 1690. The examiner can normally be reached on Monday-Friday 9 AM - 6 PM PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Renee Claytor can be reached on (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-274-1690.
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/JENNIFER C SAWYER/Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
