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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/14/2026 has been entered.
Claim Amendments
It is noted that the entered set of claims indicated that certain claims were amended, the amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated, except when the claim is being canceled. While the additions and deletion were not marked as required, Examiner has still allowed entry of the claims as the changes were minimal and easily recognized. Future amendments should include a full claim listing, claim status identifiers, and all changes with required markings or be subject to a notice of non-compliance.
Claim Rejections - 35 USC § 103
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.
Claim(s) 26, 28-30, 32, 38, 40-42, 44, and 50-52 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rothman (US 2014/0183104 previously cited) in view of Bergeron (US 2004/0082828).
Regarding claim 26, Rothman teaches discloses an apparatus comprising hydrophobic particles capable of being added to a mineral ore mixture in which they are mixed in a mixer (vertical column/horizontal pipeline [0021]-[0028], [0096]), wherein the hydrophobic particles are capable of collecting various size particles through hydrophobic interaction ([0105]-[0110]) and then subjected to a screen ([0034] [0086]) that is configured to receive a modified stream from the mixer and provide a first screen output containing the loaded particles/beads and a second screen output of the coarser ore particles/waste ore (Figs. 2-4). It is noted that the apparatus is capable of treating mineral based feeds ([0053]) thereby making it a mineral separation apparatus.
The hydrophobic particles are sized to be in the range of 50-500 microns [0110] while the mineral particles may be smaller than the hydrophobic particles or larger than the hydrophobic particles or similar in size to the hydrophobic particles ([0053], and [0110-0111]). Further Rothman ‘104 discloses the mineral particles can be -200 microns or -100 microns [0110]. Thus, Rothman teaches that the ore can be crushed to around 100 microns, which reads on the claim recitation of more than 50% of the ore particles at a size of 150 microns or less as it is merely providing the particles of the desired size. As the size of the hydrophobic particles added may be in the range of 50-500 microns and larger than the mineral particles then it would have been obvious to one of ordinary skill to choose a size range of hydrophobic particles in the size of “about 300 microns or more” as recited in claim 26. The hydrophobic particles and mineral particles of claim 26 appear not to define a structural element as required for an “apparatus” claim. If interpreted as a material acted upon rather than a structural element the claim 26 would be anticipated. It is noted that the claimed ranges are encompassed by the taught ranges in Rothman and either anticipated or obvious in view of Rothman (When the prior art discloses a range which touches or overlaps the claimed range, but no specific examples falling within the claimed range are disclosed, a case by case determination must be made as to anticipation. In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with "sufficient specificity to constitute an anticipation under the statute." What constitutes a "sufficient specificity" is fact dependent. If the claims are directed to a narrow range, and the reference teaches a broader range, other facts of the case, must be considered when determining whether the narrow range is disclosed with "sufficient specificity" to constitute an anticipation of the claims. Compare ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340, 101 USPQ2d 1773 (Fed. Cir. 2012) with Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006).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).
In regards to the limitation that the hydrophobic media particles have a size and density configured to emulate coarser particles, it is noted that the coarser particles of ore are considered to be material worked upon and are not given patentable weight ("[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). As such, the apparatus taught in Rothman contains all patentable structural limitations as to what the device is and meets the claim limitations in either an anticipatory or obvious manner. It is further noted that sizing of the particles and the coarse ore particles are similar and depending on the ore/coarse particles intended to be treated, the density may be similar too. It is also noted that Applicant has not limited or provided ranges as to what is meant by the particles emulating the coarse particles and one skilled in the art would have found that as the hydrophobic particles are mixed with and contact the ore particles, they emulate the coarse particles. Attention is also directed to [0053] and [055] discussing that the density and size of the hydrophobic particles can be modified.
Rothman teaches that a screen/mechanical screen is used as the classifier and coarse particles are separated from the hydrophobic particles ([0021]-[0028]) but fails to teach that the apparatus includes a fluidized bed separator capable of receiving coarse particles from the mechanical screen/mixer wherein the fluidized bed is capable of treating coarse particles. Bergeron teaches that in classifying particles according to size, various means can be used together. Such means would include screens, jigs, spirals (considered by Examiner to include hydrocyclones) and fluidized beds in series in order to efficiently separate the particles ([0023] and claims 9-10). More specifically, Bergeron teaches that the material to be classified is passed through different separators, such as a screen to initially classify and separate different types of particles, then passed through further treatment means like a fluidized bed ([0023]) designed to treat particles in the range of 60µm to 2000µm, which overlap the larger/coarse particles stated in Applicant’s specification, in order to further remove and purify the particles to the desired recovered particles. Therefore, one skilled in the art would have found it obvious to provide a fluidized bed following the screen in Rothman as it is a known similar equivalent particle classification means used in the art and known to be used together with a reasonable expectation of success especially as the order is already known in the prior art ("It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious). Further, the specific order of a screen separating an incoming stream into a first output and a second output and the coarse particles are further separated from other components via a fluidized bed separator is known for mineral/ore/soil based particles. One skilled in the art would recognize that in Rothman after the initial separation based on the screen, any other residual components (contaminants, valuable material, or fines) other than the coarse particles would be further removed via the fluidized bed thereby providing a more consistent recovered coarse particle stream for any desired use.
It is further noted that the phrase “for recycling to the mixer” does not appear to provide any further structure, only an intended use. The recovered coarser ore particles are provided in a fluidized bed separator output that is capable of being recycled and therefore meets the claim limitation absent any specific structure claimed.
Regarding claim 51, Rothman teaches discloses an apparatus comprising hydrophobic particles capable of being added to a mineral ore mixture in which they are mixed in a mixer (vertical column/horizontal pipeline [0021]-[0028], [0096]) and then subjected to one of several different separators including a screen [0034] [0086], a hydrocyclone [0034] or a jig [0034], [0086] that is configured to receive a modified screen from the mixer (Figs. 2-4). Rothman teaches the hydrophobic polymer can be a dense core material and an outer polymer layer ([0022]-[0023])
The hydrophobic particles are sized to be in the range of 50-500 microns [0110] while the mineral particles may be smaller than the hydrophobic particles or larger than the hydrophobic particles or similar in size to the hydrophobic particles ([0053], and [0110-0111]). Further Rothman ‘104 discloses the mineral particles can be -200 microns or -100 microns [0110]. Thus, Rothman teaches that the ore can be crushed to around 100 microns, which reads on the claim recitation of more than 50% of the ore particles at a size of 150 microns or less as it is merely providing the particles of the desired size. As the size of the hydrophobic particles added may be in the range of 50-500 microns and larger than the mineral particles then it would have been obvious to one of ordinary skill to choose a size range of hydrophobic particles in the size of “about 300 microns or more” as recited in claim 26. The hydrophobic particles and mineral particles of claim 26 appear not to define a structural element as required for an “apparatus” claim. If interpreted as a material acted upon rather than a structural element the claim 26 would be anticipated. It is noted that the claimed ranges are encompassed by the taught ranges in Rothman and either anticipated or obvious in view of Rothman (When the prior art discloses a range which touches or overlaps the claimed range, but no specific examples falling within the claimed range are disclosed, a case by case determination must be made as to anticipation. In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with "sufficient specificity to constitute an anticipation under the statute." What constitutes a "sufficient specificity" is fact dependent. If the claims are directed to a narrow range, and the reference teaches a broader range, other facts of the case, must be considered when determining whether the narrow range is disclosed with "sufficient specificity" to constitute an anticipation of the claims. Compare ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340, 101 USPQ2d 1773 (Fed. Cir. 2012) with Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006).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).
In regards to the limitation that the hydrophobic media particles have a size and density configured to emulate coarser particles, it is noted that the coarser particles of ore are considered to be material worked upon and are not given patentable weight ("[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). As such, the apparatus taught in Rothman contains all patentable structural limitations as to what the device is and meets the claim limitations in either an anticipatory or obvious manner. It is further noted that sizing of the particles and the coarse ore particles are similar and depending on the ore/coarse particles intended to be treated, the density may be similar too. It is also noted that Applicant has not limited or provided ranges as to what is meant by the particles emulating the coarse particles and one skilled in the art would have found that as the hydrophobic particles are mixed with and contact the ore particles, they emulate the coarse particles. Attention is also directed to [0053] and [055] discussing that the density and size of the hydrophobic particles can be modified.
Rothman teaches that classifiers based on particle size used would include screens, jigs, and hydrocyclones and coarse particles are separated from the hydrophobic particles ([0021]-[0028]) but fails to teach that the apparatus includes a fluidized bed separator capable of receiving coarse particles from the mechanical screen/mixer wherein the fluidized bed is capable of treating coarse particles. Bergeron teaches that in classifying particles according to size, various means can be used together. Such means would include screens, jigs, spirals (considered by Examiner to include hydrocyclones) and fluidized beds in series in order to efficiently separate the particles ([0023] and claims 9-10). More specifically, Bergeron teaches that the material to be classified is passed through different separators, such as a screen, then passed through further treatment means like a fluidized bed ([0023]) designed to treat particles in the range of 60µm to 2000µm, which overlap the larger/coarse particles stated in Applicant’s specification, in order to further remove and purify the particles. Therefore, one skilled in the art would have found it obvious to provide a fluidized bed following the screen in Rothman as it is a known similar equivalent particle classification means used in the art and known to be used together with a reasonable expectation of success especially as the order is already known in the prior art ("It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious).
It is further noted that the phrase “for recycling to the mixer” does not appear to provide any further structure, only an intended use. The recovered coarser ore particles are provided in a fluidized bed separator output that is capable of being recycled and therefore meets the claim limitation absent any specific structure claimed.
Regarding claim 28, Rothman teaches that the hydrophobic particles are polymer based particles (abstract).
Regarding claim 29, Rothman teaches that the hydrophobic particle can be modified over a large range ([0053] and that the size may range from 50-500 µm ([0110]), which encompasses the claimed range.
Regarding claim 30, it is submitted that the hydrophobic polymer particles forming solid beads reads on the claim limitation ([0022]).
Regarding claim 32, Rothman teaches the hydrophobic polymer can be a dense core material and an outer polymer layer ([0022]-[0023]).
Regarding claim 38, Rothman teaches an apparatus as discussed in claim 26 above, Rothman teaches the apparatus having the same structural elements needed to practice the method claimed (Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986) (The claims were directed to a method of enhancing color effects produced by ambient light through a process of absorption and reflection of the light off a coated substrate. A prior art reference to Donley disclosed a glass substrate coated with silver and metal oxide 200-800 angstroms thick. While Donley disclosed using the coated substrate to produce architectural colors, the absorption and reflection mechanisms of the claimed process were not disclosed. However, King’s specification disclosed using a coated substrate of Donley’s structure for use in his process. The Federal Circuit upheld the Board’s finding that "Donley inherently performs the function disclosed in the method claims on appeal when that device is used in ‘normal and usual operation’" and found that a prima facie case of anticipation was made out. Id. at 138, 801 F.2d at 1326. It was up to applicant to prove that Donley's structure would not perform the claimed method when placed in ambient light.). See also In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (Applicant claimed a process for preparing a hydrolytically-stable zeolitic aluminosilicate which included a step of "cooling the steam zeolite ... at a rate sufficiently rapid that the cooled zeolite exhibits an X-ray diffraction pattern ...." All the process limitations were expressly disclosed by a U.S. patent to Hansford except the cooling step. The court stated that any sample of Hansford’s zeolite would necessarily be cooled to facilitate subsequent handling. Therefore, rejections under 35 U.S.C. 102 and 103 were properly made. Applicant had failed to introduce any evidence comparing X-ray diffraction patterns showing a difference in cooling rate between the claimed process and that of Hansford or any data showing that the process of Hansford would result in a product with a different X-ray diffraction. Either type of evidence would have rebutted the rejections under 35 U.S.C. 102. A further analysis would be necessary to determine if the process was nonobvious under 35 U.S.C. 103.); Ex parte Novitski, 26 USPQ2d 1389 (Bd. Pat. App. & Inter. 1993) (The Board rejected a claim directed to a method for protecting a plant from plant pathogenic nematodes by inoculating the plant with a nematode inhibiting strain of P. cepacia. A U.S. patent to Dart disclosed inoculation using P. cepacia type Wisconsin 526 bacteria for protecting the plant from fungal disease. Dart was silent as to nematode inhibition but the Board concluded that nematode inhibition was an inherent property of the bacteria. The Board noted that applicant had stated in the specification that Wisconsin 526 possesses an 18% nematode inhibition rating.).
In this case, Rothman teaches the same apparatus (hydrophobic particles and mixer) being used to treat the same stream (mineral bearing ore feed of around 150 µm) while providing downstream processing/separation. While Rothman does not teach the specific percentage of coarse and fine particles as claimed, and the intended effect of adding the hydrophobic particles. However, one skilled in the art would have found it obvious to apply the Rothman process to similar mineral bearing ore feeds of different sizes, which would include the sizing claimed, by adding the hydrophobic particles as claimed that would result in the same interactions between the mineral particles and hydrophobic particles.
Rothman teaches that a screen/mechanical is used as the classifier and coarse particles are separated from the hydrophobic particles ([0021]-[0028]) but fails to teach that the apparatus includes a fluidized bed separator capable of receiving coarse particles from the mechanical screen/mixer wherein the fluidized bed is capable of treating coarse particles. Bergeron teaches that in classifying particles according to size, various means can be used together. Such means would include screens, jigs, spirals (considered by Examiner to include hydrocyclones) and fluidized beds in series in order to efficiently separate the particles ([0023] and claims 9-10). More specifically, Bergeron teaches that the material to be classified is passed through different separators, such as a screen to initially classify and separate different types of particles, then passed through further treatment means like a fluidized bed ([0023]) designed to treat particles in the range of 60µm to 2000µm, which overlap the larger/coarse particles stated in Applicant’s specification, in order to further remove and purify the particles to the desired recovered particles. Therefore, one skilled in the art would have found it obvious to provide a fluidized bed following the screen in Rothman as it is a known similar equivalent particle classification means used in the art and known to be used together with a reasonable expectation of success especially as the order is already known in the prior art ("It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious). Further, the specific order of a screen separating an incoming stream into a first output and a second output and the coarse particles are further separated from other components via a fluidized bed separator is known for mineral/ore/soil based particles. One skilled in the art would recognize that in Rothman after the initial separation based on the screen, any other residual components (contaminants, valuable material, or fines) other than the coarse particles would be further removed via the fluidized bed thereby providing a more consistent recovered coarse particle stream for any desired use.
It is further noted that the phrase “for recycling to the mixer” does not appear to provide any further method steps, only a potential step. The recovered coarser ore particles are provided in a fluidized bed separator output that is capable of being recycled and therefore meets the claim limitation absent any specific method step claimed.
Regarding claim 40, Rothman teaches that the hydrophobic particles are polymer based particles (abstract).
Regarding claim 41, Rothman teaches that the hydrophobic particle can be modified over a large range ([0053] and that the size may range from 50-500 µm ([0110]), which encompasses the claimed range.
Regarding claim 42, it is submitted that the hydrophobic polymer particles forming solid beads reads on the claim limitation ([0022]).
Regarding claim 44, Rothman teaches the hydrophobic polymer can be a dense core material and an outer polymer layer ([0022]-[0023]).
Regarding claim 52, as discussed above, the media size is taught to be within a certain size range and is capable of being comparable to coarser ore particles for a stream that is intended to be treated.
Regarding claims 50, the modified Rothman apparatus is capable of being used in unclaimed operations, such as a mining operation.
Claim(s) 34, 37, 46, and 49 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rothman (US 2014/0183104) in view of Bergeron (US 2004/0082828) as applied to claim 26 and 38 above, and further in view of Rothman (US 2014/0166585 previously cited hereinafter `585).
Regarding claims 34, 37, 46, and 49, while Rothman teaches that the polymer particles can be washed via a washing means ([0104]), Rothman fails to teach the hydrophobic particles are passed through a washing means/apparatus in order to remove the valuable smaller particles which are then capable of further processing followed by a recycle means for returning the washed hydrophobic particles to the beginning of the process. `585 teaches a similar apparatus having hydrophobic particles wherein the hydrophobic particles are washed via chemical or mechanical means and then recycled to the process/mixer thereby reusing the hydrophobic particles ([0024]). Therefore, it would have been obvious to combine the mechanical/chemical washing means in Rothman with a recycling conduit back to the mixer in order to reuse the hydrophobic particles.
Response to Arguments
Applicant's arguments filed 1/14/2026 have been fully considered but they are not persuasive.
The above rejection addresses the added claim limitations. It is noted that the Applicant’s arguments directed to the type of material treated are not given patentable weight for the apparatus claims (A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). In regards to the method claims including similar language, Rothman teaches the apparatus performing method steps to treat crushed ore in order to separate mineral particles and the ore can be ground to sizes in the claimed range ([0053] and [0110]-[0111]) thereby reading on the limitations directed to the sizing of the crushed ore/mineral particles.
Applicant argues that Rothman fails to teach the specific sizing claimed. Rothman teaches the sizing generally and said sizing overlaps the claimed range. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
In regards to Applicant’s comparison of Figs. 1 and 3, it is noted that it is not inventive to find workable or optimal ranges within the ranges already taught in Rothman.
In response to applicant's argument that Bergeron is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). Applicant alleges that since a different type of source of particles to be separated by size, property or weight, then Bergeron is not considered to be in the same field of endeavor or pertinent to the problem the inventor faced. Examiner respectfully disagrees. In this case, the problem Applicant was concerned was separating mineral based particles from other components based on size, property, and/or weight in order to recover the various components separately. Both Rothman and Bergeron teach separating mineral based particles based on size, property, and/or weight in order to recover the various components separately. Bergeron further teaches separating mineral based particles in the sizes claimed and teaches that separation means/processes in series can better separate the mineral based particles into more pure component streams. One skilled in the art would have found the teachings of Bergeron to be applicable to a wide range of mineral based particles, soil or ore particles, with a reasonable expectation of success and that the efficient separation of said particles via different means in Bergeron would be considered reasonably pertinent to the particular problem with which the inventor was concerned reasonably pertinent to the particular problem with which the inventor was concerned. Further, while Applicant argues that Bergeron is not mining related and therefore non-analogous and not reasonably pertinent, Bergeron explicitly teaches that the broad term soil is related to mining operations and that the “soil” treated can comprise rock, sand, and minerals ([0029]-[0036]) thus showing the similarity of the particles treated in Rothman and Bergeron. As such, Bergeron would be in the field of the inventor’s endeavor and also be reasonably pertinent to the particular problem with which the inventor was concerned (separation of rocks/soil/minerals based on size).
Conclusion
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/PETER KEYWORTH/Primary Examiner, Art Unit 1777