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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 79-94, in the reply filed on 9/14/26 is acknowledged. The traversal is on the ground(s) that examiner has not established a serious search or examination burden. This is not found persuasive because the claim were filed under PCT Rule 371, the restriction requirement showed lacking a special technical feature, and the requirements of the Unity of Invention do not require that examiner establish a serious search or examination burden, therefore this argument is not persuasive and the restriction requirement is maintained.
The requirement is still deemed proper and is therefore made FINAL.
Claims 95-100 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9/14/26.
Claim Rejections - 35 USC § 112
Claims 79-94 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.
Regarding claims 79-94, claim 79 is a “process claim” however the only step being claimed in the claim is currently a passive voice “using water” step, therefore the claim fails to clearly set forth any positive action steps as required to be considered a clear process claim, see MPEP 2173.05(q). Applicant must set forth positive, actionable steps in the process claim in order to clearly set forth the metes and bounds of claimed protection sought.
Regarding claims 82, and 85-91, in claim 82, A*) recites “the second distillation column bottoms (108, 208)” which has insufficient antecedent basis in the claim; examiner suggests changing the following limitations in A*) for consistency with the rest of the claims (see below):
“a distillation column (106, 206)” to “a second distillation column (106, 206)”
“the second distillation column bottoms (108, 208)” to “a second distillation column bottoms (108, 208)”
Regarding claims 82, and 85-91, in claim 82, C*) recites “the second distillation column bottoms (113, 213)” which has insufficient antecedent basis in the claim; examiner suggests changing the following limitations in C*) for consistency with the rest of the claims (see below):
“a second distillation column (112, 212)” to “a third distillation column (112, 212)”
“the second distillation column bottoms (113, 213)” to “a third distillation column bottoms (113, 213)”
Regarding claims 87-91, in claim 87, A1) recites “the first distillation column bottoms (104)” which has insufficient antecedent basis in the claim; examiner suggests changing “the first distillation column bottoms (104)” to “a first distillation column bottoms (104)”.
Regarding claims 87-91, in claim 87, B1) recites “a second distillation column (106)” which is confusing in light of recitation in claim 82 of “a distillation column (106, 206)”; if applicant amends claim 82 as above, changing this limitation to recite “the second distillation column (106)” would overcome this rejection.
Regarding claims 87-91, in claim 87, D1) recites “the third distillation column bottoms (113)” which is confusing in view of “the second distillation column bottoms (113, 213)” recited in claim 82; if applicant amends claim 82 as suggested above this rejection would be withdrawn.
Regarding claims 87-91, in claim 87, A) recites “the first distillation column bottoms (204)” which has insufficient antecedent basis in the claim; examiner suggests changing “the first distillation column bottoms (204)” to “a first distillation column bottoms (204)”.
Regarding claims 87-91, in claim 87, B) recites “a second distillation column (206)” which is confusing in light of recitation in claim 82 of “a distillation column (106, 206)”; if applicant amends claim 82 as above, changing this limitation to recite “the second distillation column (206)” would overcome this rejection.
Regarding claims 87-91, in claim 87, B1) recites “the third distillation column bottoms (213)” which is confusing in view of “the second distillation column bottoms (113, 213)” recited in claim 82; if applicant amends claim 82 as suggested above this rejection would be withdrawn.
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 (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 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.
Claim(s) 79-81 and 92-94 is/are rejected under 35 U.S.C. 103 as being unpatentable over Godbole (US 6,843,890) taken in combination with Gajda et al (US 2015/00239828).
Regarding claim 79, Godbole teaches a method and system for purification and recovery of acetonitrile from waste solvent acetonitrile (title, abstract), Godbole teaches the system receives waste acetonitrile 14, mixes with water 12 into distillation column 16, HCN is removed, and then the azeotrope mixture of acetonitrile and water is provided to drying column 32 to further remove impurities and a third product column 42 to further separate acetonitrile water azeotrope, to make 99.8 wt% acetonitrile 50, where it is further purified in resin treatment bed 54 to make ultra high purity HPLC grade acetonitrile 56 to tank 58 (Fig 1, C3:L65-C5:L13).
However Godbole doesn’t teach the acetonitrile waste solvent is from oligonucleotide synthesis.
Gajda teaches methods and systems for purifying acetonitrile waste stream from a process of synthesizing oligonucleotides that use purified acetonitrile waste streams (title, abstract), Gajda teaches the acetonitrile waste stream 102 is separated in distillation column 104 in fractionation zone 103, can be multiple stages and is changed based upon the specific composition of the acetonitrile waste stream (Fig 1, [0013-0014,0026]), the acetonitrile stream is used as washing in the four step cycle of oligonucleotide synthesis, each step producing waste acetonitrile with different organic compounds present from the washing (Fig 1, [0016-0023]).
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention that in view of Godbole, which teaches separating a waste acetonitrile stream, that the more specific teaching of Gajda which obtains the waste acetonitrile stream from a process of synthesizing oligonucleotides, that the process of Godbole would be suitable, and readily modified for use in treating acetonitrile waste solvent that is from oligonucleotide synthesis, as taught by Gajda, with the teaching that both Godbole and Gajda teaches waste acetonitrile separations.
Regarding claims 80-81, in modified Godbole, Gajda teaches that azeotropes form in the distillation [0015], and that the waste specifics are organic [0022-0024].
Regarding claims 92, in modified Godbole, Godbole has taught 99.8% purity acetonitrile is recovered that is further purified in resin treatment.
Regarding claims 93-94, in modified Godbole, Gajda as set forth above make obvious the types of oligonucleotide synthesis claimed through routine skill in the art.
Allowable Subject Matter
Claims 83-84 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 82 and 85-91 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: regarding each of claims 82-84, and dependent claims, each claim requires an intermediate step of introducing a distillate from a distillation column comprising acetonitrile and first set of organic and aqueous impurities, into a watering zone and enriching with water to produce a water enriched acetonitrile stream and subsequently introducing the water enriched acetonitrile stream into a further distillation column, the prior art, alone or in combination fails to teach this limitation.
Godbole (US 6,843,890) is regarded as the closest relevant prior art, Godbole teaches a method and system for purification and recovery of acetonitrile from waste solvent acetonitrile (title, abstract), Godbole teaches the system receives waste acetonitrile 14, mixes with water 12 into distillation column 16, HCN is removed, and then the azeotrope mixture of acetonitrile and water is provided to drying column 32 to further remove impurities and a third product column 42 to further separate acetonitrile water azeotrope, to make 99.8 wt% acetonitrile 50, where it is further purified in resin treatment bed 54 to make ultra high purity HPLC grade acetonitrile 56 to tank 58 (Fig 1, C3:L65-C5:L13), how Godbole does not teach an intermediate step of introducing a distillate from a distillation column comprising acetonitrile and first set of organic and aqueous impurities, into a watering zone and enriching with water to produce a water enriched acetonitrile stream and subsequently introducing the water enriched acetonitrile stream into a further distillation column.
Pertinent Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Pratt (US 2,305,106) teaches acetonitriles manufacturing. Schonbeck (US 3,264,197) teaches acetonitrile distillation. Horvath (US 3,281,450) teaches acetonitrile distillation. Ocampo (US 4,119,497) teaches acetonitrile distillation. Miles (US 6,395,142) teaches acetonitrile distillation. Van Gysel (US 2008/0073201) teaches acetonitrile distillation. Cesas (US 2012/0073954) teaches acetonitrile distillation. Kissell (US 11,814,337) teaches acetonitrile distillation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN MILLER whose telephone number is (571)270-1603. The examiner can normally be reached Monday - Friday 9 - 5.
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/JONATHAN MILLER/Primary Examiner, Art Unit 1772
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