Ex parte MOHR et al. - Page 4




                 Appeal No. 1998-2040                                                                                     Page 4                        
                 Application No. 08/420,077                                                                                                             


                 antifreeze in a process of recovering glycol therefrom.  While                                                                         
                 Cox discloses the addition of a small amount of alkali metal                                                                           
                 hydroxide to spent glycol  containing dimethyl terepthalate1                                                                                         
                 impurities for catalyzing a reaction thereof with glycol                                                                               
                 (paragraph bridging columns 3 and 4), the examiner has not                                                                             
                 established where Cox alone or in combination with Chueh                                                                               
                 teaches or suggests the use of such alkali metal hydroxide                                                                             
                 addition in recovering glycol from used antifreeze.  In this                                                                           
                 regard, a need for catalyzing a reaction of dimethyl                                                                                   
                 terepthalate in used antifreeze is not apparent on this                                                                                
                 record.                                                                                                                                
                          The mere fact that the prior art may be modified to                                                                           
                 reflect features of the claims invention does not make the                                                                             
                 modification obvious unless the desirability of such                                                                                   
                 modification is suggested by the prior art.  The claimed                                                                               
                 invention cannot be used as an instruction manual or template                                                                          
                 to piece together the teachings of the prior art so that the                                                                           

                          1Cox defines spent glycol as "ethylene glycol recovered                                                                       
                 from processes for making and forming films and fibers of                                                                              
                 linear polyesters, particularly the high molecular weight                                                                              
                 linear polyesters made from ethylene glycol and terephthalic                                                                           
                 acid or its derivatives, such as dimethyl terepthalate"                                                                                
                 (column 1, lines 19-25).                                                                                                               







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