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 .
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.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the Applicant regards as his invention.
Claims 1 and 6-9 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.
The term “valuable” in claim 1 is a relative term which renders the claim indefinite. The term “valuable” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
It is unclear how to establish the metes and bounds of valuable. It is unclear at what measurement or term of degree Applicant regards a metal is no longer valuable.
Claim Rejections - 35 USC § 103
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 Su (CN 110964907-A) as provided by machine translation (CN 110964907-A) as an English language equivalent in view of He (CN 108043863-A) as provided by machine translation (CN 108043863-A) as an English language equivalent and Maenaka et al. (US 2018/0302976 A1).
Claim 1:
Su discloses a recovery method (recycling photovoltaic modules), comprising:
crushing a photovoltaic sheet structure to form debris wherein the crushing provides a shearing action to obtain a fine powder with small particle size and a course powder with the large particle size as the debris and sorting (sieving) the debris (page 2, lines 21-22 and page 10, lines 1-2); wherein the sorting comprises classifying the debris into fine powder having smaller particle size and coarse powder having larger particle size, thereby collecting the fine powder (sieving) (page 2, lines 21-22 and page 10, lines 1-2);
wherein no heat processing is utilized during the crushing and the classifying and no heat processing is utilized between the crushing and the classifying (page 2, lines 21-22 and page 10, lines 1-2);
wherein the photovoltaic sheet structure (solar photovoltaic cell) is obtained by removing a glass substrate (glass) and a frame member (aluminum frame) from the photovoltaic module (page 9, line 18 bridging page 10 line 1).
Su fails to disclose air-sorting the coarse powder to separate into heavy materials and other light materials, thereby collecting the heavy metals.
He discloses a metal recovery method, comprising:
crushing a photovoltaic sheet-like structure to form debris (S2) wherein the crushing provides a shearing action to obtain the debris and sorting the debris (S4) (fig. 1, page 5, line 23 and page 7, lines 22-23);
wherein the sorting comprises classifying (screening) the debris into fine powder having smaller particle size and course powder having larger particle size, thereby collecting the fine powder (fig. 1, page 7, line 22 bridging page 8, line 5);
wherein the sorting further comprises air-sorting the coarse powder obtained by the classifying to separate (screening) into heavy materials (higher density) and other light materials (lower density) thereby collecting the heavy materials (fig. 1, page 7, line 22 bridging page 8, line 5),
wherein no heat processing is utilized during at least the crushing and the classifying (page 2, lines 16-23).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to classify the debris into higher density and lower density materials as taught by He in order to sort the materials into higher value and lower value materials. See MPEP § 2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results. The results would have been predictable because both prior art references are drawn to recycling photovoltaic modules by disassembling components including separating glass from the components and crushing photovoltaic sheet-like components.
Su in view of He renders obvious a photovoltaic module is configured to include photovoltaic cells (He, solar cell sheet), a metal pattern (He, silver) wired from the photovoltaic cells (He, solar cell sheet), an encapsulant (He, EVA layer) encapsulating the photovoltaic cells and the metal pattern, a protective member (He, laminate) provided on one surface of the encapsulant (He, EVA layer), a glass substrate (He, glass, plate) provided on the other surface of the encapsulant (He, EVA layer), and a frame member (He, package frame) surrounding a laminate including the encapsulant, and the glass substrate (He, page 1 line 21 bridging page 2 line 17).
Su in view of He do not explicitly identify the crushing apparatus or explicitly state that the crushing is a shear crushing in which a softer and more viscous material is crushed more coarsely to form the coarse powder high in resin and low in valuable metal, while a harder, more brittle material including a metal or Si is crushed more finely to form the fine powder low in resin and high in valuable metal.
Maenaka discloses that crushed inorganic materials may be produced using known crushing equipment including a uniaxial crusher, a biaxial crusher, a hammer crusher, a ball mill, or the like (Maenaka, page 9, para [0128]). Therefore, Maenaka teaches that such crushers are known and interchangeable crushing devices used to crush lump-like inorganic materials into broken pieces.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to perform the crushing step of Su in view of He using a known uniaxial crusher as taught by Maenaka, since uniaxial crushers were known crushing devices suitable for breaking inorganic materials into particulate form (Maenaka, para [0128]). Substituting one known crusher type for another known crusher type constitutes the simple substitution of one known element for another to obtain predictable results. See MPEP § 2143 B which describes the prima facie obviousness of simple substitution of one known element for another to obtain predictable results.
With respect to the claim limitation in which the shear crushing provides a shearing action “in which a softer and more viscous material is crushed more coarsely to form the coarse powder high in resin and low in valuable metal, while a harder, more brittle material including a metal or Si is crushed more finely to form the fine powder low in resin and high in valuable metal,” this limitation merely describes the expected and predictable material behavior of mixed ductile and brittle components under shear crushing conditions.
It is well understood in the mechanical comminution arts that ductile or more viscous polymeric materials tend to deform and resist fine fracture under shear-dominant crushing conditions, whereas harder and more brittle materials such as silicon, glass, or metal-bearing brittle phase tend to fracture into smaller particles. As acknowledged in Applicant’s own specification (see Applicant’s disclosure as originally filed [0038]), known uniaxial crushers tend to avoid excessively finely crushing encapsulant resin and tend to suppress resin from being mixed into the fine powder. Thus, the recited formation of a high in resin coarse portion and a comparatively high in metal fine portion represents a predictable result of using a uniaxial crusher to perform crushing of a laminated photovoltaic structure comprising ductile encapsulant material and brittle silicon/metal components.
Accordingly, the aforementioned claim limitation does not patentably distinguish over the combination of Su, He and Maenaka, as the claimed compositional distribution of coarse and fine compositions is the natural and predictable outcome of performing known uniaxial crushing and classification on a mixed brittle/ductile photovoltaic laminate. Therefore, claim 1 is rendered obvious over examiner’s proposed combination of Su in view of He and Maenaka.
Claim 7:
Su in view of He and Maenaka renders obvious the metal recovery method according to claim 1, wherein in the crushing, the photovoltaic sheet structure (solar photovoltaic cell) is crushed so that the particle size of the debris is 10 mm or less (He, fig. 1, page 3, lines 1-2).
Claim 8:
Su in view of He and Maenaka renders obvious the metal recovery method according to claim 3, wherein the particle size of the particles resulting from crushing is less than 10 mm (He, fig. 1, page 3, lines 1-2). The claimed range of particle size of the fine powder is 4 mm or less overlaps or is inside the range disclosed by the prior art. Therefore, a prima facie case of obviousness exists and it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to provide that the fine powder is 4 mm or less as required of Applicant’s claimed invention.
See MPEP § 2144.05(I) which describes the prima facie obviousness of claimed ranges overlapping, approaching and similar ranges, amounts and proportions. The results would have been predictable because He discloses a range wherein the debris is 10 mm or less.
Claim 9:
Su in view of He and Maenaka renders obvious the metal recovery method according to claim 1; wherein in the crushing, a uniaxial crusher is used (Maenaka, page 9, para [0128]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Su in view of He and Maenaka as applied to claim 1 above, and further in view of Toma (JP 2003-071386-A) as provided by (JP 2003-071386-A) as an English language equivalent.
Claim 6:
Su in view of He and Maenaka renders obvious the metal recovery method according to claim 1, and Su in view of He and Maenaka fails to disclose a wind speed is 5 m/s or more and 20 m/s or less. Instead, Su in view of He and Maenaka is silent on the wind speed of the air-sorting.
Toma discloses an apparatus for sorting and recovering plastics (page 1, lines 12-15), wherein the wind speed of the air-sorting is as fast as 20 m/s (page 15, lines 18-24) which overlaps or is inside the claimed range of 5 m/s and 20 m/s.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to improve the metal recovery method of Su in view of He and Maenaka by limiting the air-sorting wind speed to as fast as 20 m/s as taught by Toma in order sort plastics and foreign matters such as glass chips and metals (page 15, lines 18-24). See MPEP § 2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results. The results would have been predictable because both prior art references are drawn to sorting glass chips and metals from other foreign matters.
Response to Arguments
Applicant’s arguments, see Applicant Arguments/Remarks Made in an Amendment, filed 27 May 2026, with respect to the 35 U.S.C. 112(b) rejection of claims 1 and 6-9 regarding the term “rich” have been fully considered and are persuasive. Applicant has amended the claimed invention to remove the term “rich.”
Applicant’s arguments, see Applicant Arguments/Remarks Made in an Amendment, filed 27 May 2026, with respect to the 35 U.S.C. 112(b) rejection of claims 1 and 6-9 regarding the term “valuable” have been fully considered and are not persuasive. The term “valuable” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, the 35 U.S.C. 112(a) rejection of claims 1 and 6-9 has been maintained.
Applicant’s arguments, see Applicant Arguments/Remarks Made in an Amendment, filed 27 May 2026, with respect to the 35 U.S.C. 103 rejection of claims 1 and 6-9 have been fully considered and are not persuasive.
On pages 7 and 8, Applicant argues the rejection of claim 1 under 35 U.S.C. § 103 as being unpatentable over Su in view of He and Maenaka is improper because Maenaka is non-analogous art since Maenaka is not directed to the same field of endeavor as Su, He and Applicant’s disclosure and Maenaka is not directed to solving a similar problem as Su and He and the present disclosure. Applicant’s arguments are not persuasive.
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). In this case, Maenaka is reasonably pertinent to the particular problem with which the inventor was concerned. Maenaka is narrowly relied upon to teach crushing inorganic materials using crushing equipment including a uniaxial crusher, a biaxial crusher, a hammer crusher, a ball mill or the like which is reasonably pertinent to the particular problem with which the inventor was concerned as articulated by Applicant’s disclosure as originally filed. Paragraph [0017] recites “[a] ninth aspect of the present disclosure is any of the first to eighth aspects, wherein in the crushing, a uniaxial crusher is used.” According to Applicant’s disclosure, the Applicant is particularly concerned with the use of a uniaxial crusher (¶17) and Maenaka is directed to using a uniaxial crusher. Therefore, Maenaka is reasonably pertinent to Applicant’s claimed invention and is consistent with examiner’s use of analogous prior art.
On pages 7 and 8, Applicant argues the rejection of claim 1 under 35 U.S.C. § 103 as being unpatentable over Su in view of He and Maenaka is improper because Su teaches away from obtaining a mixture of fine powder and coarse powder. Applicant’s arguments are not persuasive. There is no disclosure in Su stating: 1) coarse fractions are undesirable, 2) classification should not occur 3) particle size distributions should be avoided and/or 4) air sorting should not be used. Although Su may suggest a preferred embodiment, teaching away requires more than the prior art reference prefers something else.
On page 9, Applicant further argues the rejection of claim 1 under 35 U.S.C. § 103 as being unpatentable over Su in view of He and Maenaka is improper because Su fails to teach or suggest "crushing is a shear crushing, which provides a shearing action to obtain a fine powder with small particle size and a coarse powder with large particle size as the debris, in which a softer and more viscous material is crushed more coarsely to form the coarse powder high in resin and low in valuable metal, while a harder, more brittle material including a metal or Si is crushed more finely to form the fine powder low in resin and high in valuable metal," as recited in claim 1. Applicant’s arguments are not persuasive. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See 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).
Su, alone, was not relied upon to teach or fairly suggest "crushing is a shear crushing, which provides a shearing action to obtain a fine powder with small particle size and a coarse powder with large particle size as the debris, in which a softer and more viscous material is crushed more coarsely to form the coarse powder high in resin and low in valuable metal, while a harder, more brittle material including a metal or Si is crushed more finely to form the fine powder low in resin and high in valuable metal," as recited in claim 1.
On pages 9 and 10, Applicant further argues the rejection of claim 1 under 35 U.S.C. § 103 as being unpatentable over Su in view of He and Maenaka is improper because He fails to teach or suggest "crushing is a shear crushing, which provides a shearing action to obtain a fine powder with small particle size and a coarse powder with large particle size as the debris, in which a softer and more viscous material is crushed more coarsely to form the coarse powder high in resin and low in valuable metal, while a harder, more brittle material including a metal or Si is crushed more finely to form the fine powder low in resin and high in valuable metal," and “classifying the debris into the fine powder having smaller particle size and the coarse powder having larger particle size, thereby collecting the fine powder, and air-sorting the coarse powder obtained by the classifying to separate into heavy materials and other light materials, thereby collecting the heavy materials,” as recited in claim 1. Applicant’s arguments are not persuasive. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See 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).
He, alone, was not relied upon to teach or fairly suggest "crushing is a shear crushing, which provides a shearing action to obtain a fine powder with small particle size and a coarse powder with large particle size as the debris, in which a softer and more viscous material is crushed more coarsely to form the coarse powder high in resin and low in valuable metal, while a harder, more brittle material including a metal or Si is crushed more finely to form the fine powder low in resin and high in valuable metal," and “classifying the debris into the fine powder having smaller particle size and the coarse powder having larger particle size, thereby collecting the fine powder, and air-sorting the coarse powder obtained by the classifying to separate into heavy materials and other light materials, thereby collecting the heavy materials,” as recited in claim 1.
On page 10, Applicant further argues the rejection of claim 1 under 35 U.S.C. § 103 as being unpatentable over Su in view of He and Maenaka is improper because Maenaka neither discloses nor suggests the process carried out in the present disclosure, namely the classification and recovery of debris into coarse powder (e.g.-10+1 mm) and fine powder (e.g. -1 mm). Applicant’s arguments are not persuasive. The prior art of record was not relied upon to teach or fairly suggest the process carried out in the present disclosure, namely the classification and recovery of debris into coarse powder (e.g.-10+1 mm) and fine powder (e.g. -1 mm).
On page 11, Applicant further argues the rejection of claim 1 under 35 U.S.C. § 103 as being unpatentable over Su in view of He and Maenaka is improper because the Examiner impermissibly relies upon Applicant’s disclosure to assert that the crusher of Maenaka would result in the claimed mixture of fine powder and coarse powder. Applicant’s arguments are not persuasive.
It must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the Applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Maenaka is only relied upon to teach that a uniaxial crusher is a known crusher. Therefore, using a uniaxial crusher is not novel and knowledge of using a uniaxial crusher constitutes knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge that was only known to the Applicant at the time of the invention.
On page 11, Applicant further argues the rejection of claim 1 under 35 U.S.C. § 103 as being unpatentable over Su in view of He and Maenaka is improper because the target of the crushing process differs between Maenaka and the present disclosure. Applicant’s arguments are not persuasive. Maenaka is only relied upon to teach that a uniaxial crusher is a known crusher. Although Maenaka may disclose a different use of a uniaxial crusher does not negate the fact that Maenaka discloses a uniaxial crusher is a known crusher.
In view of the foregoing, the rejection of claim 1 under 35 U.S.C. § 103 as being unpatentable over Su in view of He and Maenaka has been maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure. Guo (CN 110747349) discloses a method for recycling and recycling waste photovoltaic materials.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lee Holly whose telephone number is (571)270-7097. The examiner can normally be reached Monday - Friday 8:00 to 5:00 EST.
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/Lee A Holly/Primary Examiner, Art Unit 3726
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