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 .
Status of Claims
Claims 1-5 are pending and are presented for this examination. Claims 1 and 4 are amended.
Status of Previous Rejections
All 101, 102 art rejections are maintained from previous office action of 12/23/2025.
112 2nd paragraph rejections are withdrawn in view of amendment of claims 1 and 4.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 09/08/2023 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
A detailed 101 analysis of instant claim 1 is presented as follows according to MPEP 2106.
First, according to MPEP 2106.04 Eligibility Step 2A, Prong One, identify the abstract ideas/law of nature/natural phenomenon according to MPEP 2106.04(a). In the instant case, mental steps done by computer processor are recited in claim 1: (1) receiving the plurality of composition measure is a mental data processing step, which is deemed an abstract idea; (2) determining an aggregate composition estimate is an estimate and thus is an evaluation, which is deemed an abstract idea; (3) selecting a selected target alloy is essentially making a choice and thus is an evaluation, which is deemed an abstract data; (4) determining a discrepancy estimate is an estimate and thus is an evaluation, which is deemed an abstract idea; and (4) determining an alloy supplement is also an evaluation, which is deemed an abstract idea.
Second, according to MPEP 2106.04 Eligibility Step 2A, Prong two, identify whether the recited abstract ideas has been integrated into a particular practical application. In the instant case, once the aggregate composition is determined, it is used to select an alloy, which is a non-practical application analogous to just “apply it” for the abstract idea according to MPEP 2106.05(e) and (f). Determining a discrepancy estimate appears to have no further tangible application as it is just baked into another downstream abstract idea/evaluation. As such, there is deemed no practical application. Finally, the determination of an alloy supplement appears to have no explicitly required application. For each of the abstract ideas, it is noted that the courts require a meaningful limit on the abstract idea rather than a drafting effort to monopolize it according to MPEP 2106.05(e). In the foregoing situations, it appears no practical applications are provided limiting the explicit/functional application via positively recited method steps.
Third, according to MPEP 2106.04 Eligibility Step 2B, identity whether claim 1 amounts to significantly more than the abstract ideas. In the instant case, structure features outside of the abstract idea such as a wheel transfer mechanism, a wheel processor, a non-transitory medium, a composition analyzer, a scale and a processor are considered. However, these features are well-understood, routine and conventional features as evidenced by Bitton (US20170173636). Hence, claim 1 does not amount to significantly more than the abstract ideas.
Based on the above analysis, instant claim 1 is rejected over 101.
Dependent claims 2-3 determining steps are menta evaluation steps. Hence, they are rejected for the same reason set forth above.
Dependent claim 4 required storing the value and cost information is data gathering which is considered an abstract idea. Selecting the target alloy based on the stored cost and value information is applying the abstract idea in a general way.
As a result of rejected claim 1, all dependent claims are rejected under the same statue.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by Bitton (US20170173636).
As for claims 1-4, Bitton discloses a system for recycling aluminum alloy rims (i.e. claimed alumina alloy wheel)
The system comprising the following structure limitations: (Claim 10)
An aluminum alloy rim transfer mechanism for providing a feed of a plurality of aluminum alloy rims [0007]
A shredder (Figure 2) which cuts or fragments the rims into shreds [0042] and the shreds is shot blasted to remove the dirt [0044]. Hence, the shredder reads on claimed aluminum alloy wheel processor.
A composition analyzer for measuring a composition of each rim in the plurality of aluminum alloy rims[0006]
A computer comprising a non-transient memory and a processor in electronic communication with the non-transient electronically readable memory (Figure 2 and [0005][0047])
A weight scale in electronic communication with the computer (claim 11) for determining a weight of each rim in the plurality of aluminum alloy rims.
Instant claimed how each structure limitation functions are limitations with respect to the manner in which the claimed apparatus is intended to be employed according to MPEP 2114.
If a prior art apparatus teaches all of the structural limitations of an apparatus claim, then, a recitation with respect to the manner in which the claimed apparatus is intended to be employed does not differentiate the claimed apparatus from the prior art apparatus. See MPEP 2114. In the instant case, Bitton discloses same system with all structural limitations as required by instant claim 1. Hence, Bitton’s system can inherently perform the claimed functional limitations.
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.
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) 5 is rejected under 35 U.S.C. 103 as being unpatentable over Bitton in view of Wen (CN102566526A).
As for claim 5, Bitton does not discloses claimed user interface.
Wen discloses a software system for recycling aluminum alloy comprising six functional module: alloy ingredient information management, alloy ingredient, technical operation parameter information management, inventory management, alloy raw material casting process report management and system management. The system management comprising a system login module and a system user management module. The system user management module comprises a user terminal placed in production management office for production manager (i.e. claimed user/operator). [0074][0078] Hence, Wen’s user terminal supports instant claimed user interface being in electronic communication with the software system.
How the user interface performs is functional limitation in an apparatus claim. Hence, it is rejected for the same reason set forth in claims 1-4.
Hence, it would have been obvious to one skill in the art, at the time the invention is made to add user interface of Wen, in the system of Bitton for the benefit of seamless interaction between humans and machines.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 10,821,479. Although the claims at issue are not identical, they are not patentably distinct from each other because both invention claims a system comprising an aluminum alloy wheel transfer mechanism, a shredder (i. an aluminum alloy wheel processor), a non-transient electronically readable memory, a composition analyzer, a weigh scale and a computer processor in electronic communication with the non-transient electronically readable memory, the weigh scale.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 11,691,182. Although the claims at issue are not identical, they are not patentably distinct from each other because both invention claims a system comprising an aluminum alloy wheel transfer mechanism, a shredder (i. an aluminum alloy wheel processor), a non-transient electronically readable memory, a composition analyzer, a weigh scale and a computer processor in electronic communication with the non-transient electronically readable memory, the weigh scale.
Response to Argument
In response to applicant’s argument that the human mind alone is not equipped to perform functions such as: "fragmenting the plurality of aluminum alloy wheels into a plurality of fragments, and then cleaning the plurality of fragments to provide a plurality of cleaned fragments"; "measuring a composition of at least some of the plurality of cleaned fragments to determine a plurality of composition measurements"; and "determining a mass of the plurality of cleaned fragments", argument is incommensurate in scope of 101 rejection as examiner takes the position that merely all the mental steps executed by claimed computer process can be performed by human mind, not the functions of fragmenting and cleaning performed by claimed wheel processor, and not the function of measuring performed by composition analyzer. Second, cited prior art Bitton discloses claimed wheel processor and composition analyzer are well known structural limitations in the claimed system. That is, applicant’s argument is merely allegation without an evidence support.
In response to applicant’s argument that claim 1 is directed towards a specific technical solution for "determining an alloying supplement" for "including with the plurality of cleaned fragments" of aluminum in order to "change the aggregate composition estimate (of the plurality of cleaned fragments) to an adjusted composition estimate wherein, for each element in the plurality of elements, the element concentration estimate of the adjusted composition estimate for that element is within the element range of the target alloy for that element", argument is completely incommensurate in scope of claim 1 which is directed towards an apparatus, not a process for "determining an alloying supplement" for "including with the plurality of cleaned fragments" of aluminum in order to "change the aggregate composition estimate (of the plurality of cleaned fragments) to an adjusted composition estimate wherein, for each element in the plurality of elements, the element concentration estimate of the adjusted composition estimate for that element is within the element range of the target alloy for that element". Since the steps of determining an alloying supplement" for "including with the plurality of cleaned fragments" of aluminum in order to "change the aggregate composition estimate (of the plurality of cleaned fragments) to an adjusted composition estimate wherein, for each element in the plurality of elements, the element concentration estimate of the adjusted composition estimate for that element is within the element range of the target alloy for that element is a recitation with respect to the manner in which the claimed apparatus is intended to be employed which does not differentiate the claimed apparatus from the prior art apparatus, because prior art teaches all the structural limitations in the claimed apparatus . See MPEP 2114.
Applicant further argues that claim 1 brings an improvement to the technical field of providing an aluminum alloy product for recycling purposes, it should be noted MPEP 2106.05(a) clearly recites "it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not (emphasis added) improve computers or technology."
In the instant case, once the adjusted composition estimate falls within the element ranges of the target alloy (see last three lines of claim 1), nothing is done. Simply making sure the adjusted composition estimate is within the target alloy element range is not an actual integration into a practical application. There can be no improvement as the supposed improvements would need to be actively applied in order for the improvements within the field of endeavor. This is NOT an improvement to the claimed computer processor based on the above MPEP recitation. In other words, how the adjusted composition estimate is actively applied is not recited in claim 1.
Applicant then also argues that the claims recite the specific means employed to achieve those outcomes, including: fragmenting aluminum alloy wheels into pieces and cleaning the fragments; measuring the composition of the fragments; determining an aggregate composition estimate of the fragments; selecting a target alloy at least partly based on the aggregate composition estimate; computing discrepancy estimates between element concentrations of the target alloy and the aggregate composition; and determining an alloying supplement with a defined mass and composition that, when added, adjusts each element's concentration of the aggregate to lie within the target alloy's specified range. These concrete, interrelated processing steps demonstrate a particular way of accomplishing a technical objective in alloy recycling, not a mere aspiration or results-oriented statement. Such argument is completely incommensurate in scope of claim 1 which is directed to an apparatus, not a process of fragmenting, measuring, determining, selecting, computing and determining. As long as prior art discloses all the specific means as required by claimed apparatus, then they are fully capable of performing the processing steps according to MPEP 2114.
Applicant also argues recited technical steps are clearly directed to the improvement of the field of metal recycling because the claimed steps control the physical properties of the resulting alloy or melt, demonstrating an improvement in the technical field of metal recycling and alloy formulation.
It should be noted after the examiner has consulted the specification and determined that the disclosed invention improves technology, the claim must be evaluated to ensure the claim itself reflects the disclosed improvement in technology. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316, 120 USPQ2d 1353, 1359 (Fed. Cir. 2016) (patent owner argued that the claimed email filtering system improved technology by shrinking the protection gap and mooting the volume problem, but the court disagreed because the claims themselves did not have any limitations that addressed these issues). That is, the claim must include the components or steps of the invention that provide the improvement described in the specification. However, the claim itself does not need to explicitly recite the improvement described in the specification (e.g., "thereby increasing the bandwidth of the channel"). The full scope of the claim under the BRI should be considered to determine if the claim reflects an improvement in technology (e.g., the improvement described in the specification). In making this determination, it is critical that examiners look at the claim "as a whole," in other words, the claim should be evaluated "as an ordered combination, without ignoring the requirements of the individual steps." When performing this evaluation, examiners should be "careful to avoid oversimplifying the claims" by looking at them generally and failing to account for the specific requirements of the claims. McRO, 837 F.3d at 1313, 120 USPQ2d at 1100.
In the instant case, once the adjusted composition estimate falls within the element ranges of the target alloy (see last three lines of claim 1), nothing is done. In other words, claim 1 neither recites the physical properties of the resulting alloy or melt is altered by the determined alloyed supplement, nor recites the determined alloying supplement is provided for manufacturing a metal alloy component or melted into a homogenous aggregate possessing the desired composition. Absent these altering or providing steps based on the adjusted composition estimate, applicant’s argument is completely incommensurate in scope of claim 1.
In response to argument that Bitton’s processor does not disclose claimed computer-implemented operation, argument is incommensurate in scope of maintained 101 rejection of claim 1 because claimed computer-implemented operation are all abstract ideas. As long as Bitton’s processor is fully capable of performing these mental steps, it meets claim 1.
In response to argument that neither US’479 nor US’182 discloses a shredder, argument is not persuasive because shredder is disclosed in US’479 col 10 line 25 and US’182 col 10 line 26 as illustrated in screen shot below
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Second, ODP rejection is based on a combination of claims and disclosure of single reference of US’479 or US’182.
In response to argument that neither US’479 nor US’182 discloses claimed computer implemented limitations, argument is not persuasive because claimed computer implemented limitations are functional limitation of claimed apparatus. As long as US’479 or US’182 discloses a computer processor, it is fully capable of performing these functional limitations. Second, these functional limitations are all mental steps and rejected under 101.
Conclusion
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 JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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/JENNY R WU/Primary Examiner, Art Unit 1733
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