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 .
Response to Amendment
The amendment filed January 19th, 2026 has been entered. Claims 1, 5, 7, 10, 12, 16 and 18-19 have been amended. Claims 2-4, 9, 11 and 14-15 have been canceled. Claims 1, 5-8, 10, 12-13 and 16-20 remain pending. Applicant’s amendments to the claims overcome the 112(b) rejections previously set forth in the Non-Final Office Action mailed August 18th, 2025.
Claim Objections
Claims 1 and 12 are objected to because of the following informalities:
In claim 1, “printed circuit (PCB) board” should read “printed circuit board (PCB)”
In claim 12, “two swelling agents comprising” should read “two swelling agents comprise”
Appropriate correction is required.
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.
Claims 1, 5-6, 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Carano et al. (US 5985040) in view of Chen et al. (US 9221114) and further in view of Crush et al. (US 2020/0263275).
Regarding claim 1, Carano et al. (US 5985040) teaches a method of delaminating a printed circuit board (Col. 1 lines 5-8), comprising:
comminuting the printed circuit (PCB) board (Col. 6 lines 43-45) wherein the PCB comprises an epoxy resin (Col. 1 lines 12-15);
soaking a comminuted PCB in a solvent system (Col. 6 lines 48-50) comprising at least two solvents (Col. 3 lines 18-32), wherein the solvent system is a system of reagents comprising at least two swelling agents (Col. 3 lines 18-32), the at least two swelling agents comprising n-methyl-2-pyrrolidone (NMP) (Col. 3 lines 27-31), or ethylene glycol and salicylic acid; and
separating solids (Col. 5 lines 49-51).
Carano et al. (US 5985040) lacks teaching the at least two swelling agents comprising n-methyl-2-pyrrolidone (NMP) and resorcinol.
Chen et al. (US 9221114) teaches a method of delaminating a printed circuit board (Col. 1 lines 23-27, 40-53) the at least two swelling agents comprising n-methyl-2-pyrrolidone (NMP) (Col. 16 line 56) and resorcinol (Col. 16 line 6).
Chen et al. (US 9221114) explains that passivating agent, such as resorcinol, reduces the composition’s attack on copper, preventing the thin gold plating on the copper from being undercut and lost as the copper dissolves (Col. 16 lines 38-42). Chen et al. (US 9221114) additionally explains that the composition comprises MSA, at least one organic solvent, and at least one passivating agent (Col. 17 lines 59-61).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Carano et al. (US 5985040) to include the at least two swelling agents comprising n-methyl-2-pyrrolidone (NMP) and resorcinol as taught by Chen et al. (US 9221114) in order to reduce the attack on copper, and prevent gold platting from being lost.
Carano et al. (US 5985040) lacks teaching electrostatically separating different specific solids from the separated solids.
Crush et al. (US 2020/0263275) teaches a method of delaminating a printed circuit board (Paragraph 0001 lines 1-3), comprising: electrostatically separating different specific solids from the separated solids (Paragraph 0154 lines 11-16).
Crush et al. (US 2020/0263275) explains that it may be beneficial to separate particles that are substantially free of metals from particles comprising metals, and explains that corona electrostatic separation is the most useful in producing a metallic and non-metallic mixture with little to no cross-contamination (Paragraph 0154 line 6-Paragraph 0155 line 4).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Carano et al. (US 5985040) to include electrostatically separating different specific solids from the separated solids as taught by Crush et al. (US 2020/0263275) in order to separate metallic and non-metallic particles with little to no cross-contamination.
Regarding claim 5, Carano et al. (US 5985040) teaches the method of claim 1, wherein the solvent system further comprises a diluent (Col. 4 lines 22-25).
Regarding claim 6, Carano et al. (US 5985040) teaches the method of claim 1, and further comprising agitating the solvent system (Col. 5 lines 32-35).
Regarding claim 8, Carano et al. (US 5985040) teaches the method of claim 1, wherein separating solids is followed by rinsing and drying (Col. 6 lines 57-64).
As stated previously, Carano et al. (US 5985040) lacks teaching electrostatically separating, and therefore lacks teaching wherein electrostatically separating is preceded by rinsing and drying.
Crush et al. (US 2020/0263275) teaches a method of delaminating a printed circuit board (Paragraph 0001 lines 1-3), comprising: electrostatically separating different specific solids from the separated solids (Paragraph 0154 lines 11-16).
Crush et al. (US 2020/0263275) explains that it may be beneficial to separate particles that are substantially free of metals from particles comprising metals, and explains that corona electrostatic separation is the most useful in producing a metallic and non-metallic mixture with little to no cross-contamination (Paragraph 0154 line 6-Paragraph 0155 line 4).
Had the modification been made to Carano et al. (US 5985040) to include electrostatically separating different specific solids from the separated solids as taught by Crush et al. (US 2020/0263275) as explained in claim 1, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include wherein electrostatically separating is preceded by rinsing and drying in order to remove any remaining solution which may alter the properties of the particles and therefore impact the step of electrostatically separating.
Regarding claim 10, Carano et al. (US 5985040) teaches the lacks teaching the method of claim 1, where separating solids comprises density separation.
Crush et al. (US 2020/0263275) teaches a method of delaminating a printed circuit board (Paragraph 0001 lines 1-3), comprising: where separating solids comprises density separation (Paragraph 0154 lines 8-13).
Crush et al. (US 2020/0263275) explains that particles containing significant amounts of metal will have a higher density than particles that are substantially free of metals, and it may be beneficial to separate particles that are substantially free of metals from particles comprising metals (Paragraph 0154 lines 1-8).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Carano et al. (US 5985040) to include where separating solids comprises density separation as taught by Crush et al. (US 2020/0263275) in order to separate metallic and non-metallic particles.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Carano et al. (US 5985040) in view of Chen et al. (US 9221114), Crush et al. (US 2020/0263275) and further in view of Shibata et al. (US 6962628).
Regarding claim 7, Carano et al. (US 5985040) lacks teaching the method of claim 1, wherein soaking in the solvent system further comprises soaking at a temperature of 110°C to 210°C.
Shibata et al. (US 6962628) teaches a method of delaminating a printed circuit board (Col. 1 lines 6-10, Col. 2 lines 21-39), wherein soaking in the solvent system further comprises soaking at a temperature of 110°C to 210°C (Col. 7 lines 31-38).
Shibata et al. (US 6962628) explains that a temperature ranging between the melting point and the boiling point of the solvent used is preferred (Col. 7 lines 13-15), and the treatment liquid may be used at an arbitrary temperature in order to control the treatment rate, and the treatment liquid preferably has a temperature of 250 degrees C or lower in order to avoid undesired thermal decomposition of the resin (Col. 7 lines 31-38).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Carano et al. (US 5985040) to include wherein soaking in the solvent system further comprises soaking at a temperature of 110°C to 210°C as taught by Shibata et al. (US 6962628) in order to control the treatment rate and avoid undesired thermal decomposition.
Claims 12-13, 16-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Carano et al. (US 5985040) in view of Chen et al. (US 9221114).
Regarding claim 12, Carano et al. (US 5985040) teaches a method of delaminating a printed circuit board (PCB) (Col. 1 lines 5-8), comprising:
shredding the PCB (Col. 6 lines 43-45) wherein the PCB comprises an epoxy resin (Col. 1 lines 12-15);
swelling the shredded PCB with a swelling agent bath (Col. 6 lines 48-50) comprising at least two swelling agents (Col. 3 lines 18-32) wherein the at least two swelling agents comprising n-methyl-2-pyrrolidone (NMP) (Col. 3 lines 27-31), or ethylene glycol and salicylic acid; and
agitating to assist in delaminating the swelled shredded PCB (Col. 5 lines 32-35).
Carano et al. (US 5985040) lacks teaching the at least two swelling agents comprising n-methyl-2-pyrrolidone (NMP) and resorcinol.
Chen et al. (US 9221114) teaches a method of delaminating a printed circuit board (PCB) (Col. 1 lines 23-27, 40-53) wherein the at least two swelling agents comprising n-methyl-2-pyrrolidone (NMP) (Col. 16 line 56) and resorcinol (Col. 16 line 6).
Chen et al. (US 9221114) explains that passivating agent, such as resorcinol, reduces the composition’s attack on copper, preventing the thin gold plating on the copper from being undercut and lost as the copper dissolves (Col. 16 lines 38-42). Chen et al. (US 9221114) additionally explains that the composition comprises MSA, at least one organic solvent, and at least one passivating agent (Col. 17 lines 59-61).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Carano et al. (US 5985040) to include wherein the at least two swelling agents comprising n-methyl-2-pyrrolidone (NMP) and resorcinol as taught by Chen et al. (US 9221114) in order to reduce the attack on copper, and prevent gold platting from being lost.
Regarding claim 13, Carano et al. (US 5985040) teaches the method of claim 12, and further comprising providing a diluent to the swelling agent bath (Col. 4 lines 22-25).
Regarding claim 16, Carano et al. (US 5985040) teaches the method of claim 12, and further comprising providing a diluent to the swelling agent bath (Col. 4 lines 22-25).
Regarding claim 17, Carano et al. (US 5985040) teaches the method of claim 12, and further comprising agitating the swelling agent bath (Col. 5 lines 32-35).
Regarding claim 18, Carano et al. (US 5985040) teaches a method of recovering components of a printed circuit board (PCB) (Col. 1 lines 5-8), comprising:
shredding the PCB (Col. 6 lines 43-45) wherein the PCB comprises an epoxy resin (Col. 1 lines 12-15);
delaminating the PCB with a solvent system (Col. 6 lines 48-50);
wherein delaminating comprises soaking in the solvent composition bath (Col. 6 lines 48-50) comprising a swelling agent (Col. 3 lines 18-32) and a diluent (Col. 4 lines 22-25), wherein the swelling agent is a combination of at least two reagents (Col. 3 lines 18-32) comprising n-methyl-2-pyrrolidone (NMP) (Col. 3 lines 27-31), or ethylene glycol and salicylic acid.
Carano et al. (US 5985040) lacks teaching wherein the swelling agent is a combination of at least two reagents comprising n-methyl-2-pyrrolidone (NMP) and resorcinol.
Chen et al. (US 9221114) teaches a method of recovering components of a printed circuit board (PCB) (Col. 1 lines 23-27, 40-53) wherein the swelling agent is a combination of at least two reagents (Col. 17 lines 59-61) comprising n-methyl-2-pyrrolidone (NMP) (Col. 16 line 56) and resorcinol (Col. 16 line 6).
Chen et al. (US 9221114) explains that passivating agent, such as resorcinol, reduces the composition’s attack on copper, preventing the thin gold plating on the copper from being undercut and lost as the copper dissolves (Col. 16 lines 38-42). Chen et al. (US 9221114) additionally explains that the composition comprises MSA, at least one organic solvent, and at least one passivating agent (Col. 17 lines 59-61).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Carano et al. (US 5985040) to include wherein the swelling agent is a combination of at least two reagents comprising n-methyl-2-pyrrolidone (NMP) and resorcinol as taught by Chen et al. (US 9221114) in order to reduce the attack on copper, and prevent gold platting from being lost.
Regarding claim 20, Carano et al. (US 5985040) teaches the method of claim 18, wherein the solvent system swelling agents comprise n- methyl-2-pyrrolidone (NMP) (Col. 3 lines 28-30).
Carano et al. (US 5985040) lacks teaching wherein the solvent system swelling agents comprise n-methyl-2- pyrrolidone (NMP) and resorcinol, in a by mass ratio of NMP to resorcinol of at least 8:1.
Chen et al. (US 9221114) teaches a method of recovering components of a printed circuit board (PCB) (Col. 1 lines 23-27) wherein the solvent system swelling agents comprise n-methyl-2- pyrrolidone (NMP) (Col. 16 line 56) and resorcinol (Col. 16 line 6), in a by mass ratio of NMP to resorcinol of at least 8:1 (Col. 16 lines 42-45, Col. 17 lines 23-24).
Chen et al. (US 9221114) explains that passivating agent, such as resorcinol, reduces the composition’s attack on copper, preventing the thin gold plating on the copper from being undercut and lost as the copper dissolves (Col. 16 lines 38-42). Chen et al. (US 9221114) further explains that the passivating agent may be provided in a range from about 0.01 to 5 wt%, and the organic solvent may be provided in a range from 0.01 to 25wt% (Col. 16 lines 42-45, Col. 17 lines 23-24).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Carano et al. (US 5985040) to include wherein the solvent system swelling agents comprise n-methyl-2- pyrrolidone (NMP) and resorcinol, in a by mass ratio of NMP to resorcinol of at least 8:1 as taught by Chen et al. (US 9221114) in order to reduce the attack on copper, and prevent gold platting from being lost.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Carano et al. (US 5985040) in view of Chen et al. (US 9221114) and further in view of Shibata et al. (US 6962628).
Regarding claim 19, Carano et al. (US 5985040) lacks teaching the method of claim 18, wherein the solvent system is used at a temperature of 110°C to 210°C.
Shibata et al. (US 6962628) teaches a method of recovering components of a printed circuit board (PCB) (Col. 1 lines 6-10, Col. 2 lines 21-39), wherein the solvent system is used at a temperature of 110°C to 210°C (Col. 7 lines 31-38).
Shibata et al. (US 6962628) explains that a temperature ranging between the melting point and the boiling point of the solvent used is preferred (Col. 7 lines 13-15), and the treatment liquid may be used at an arbitrary temperature in order to control the treatment rate, and the treatment liquid preferably has a temperature of 250 degrees C or lower in order to avoid undesired thermal decomposition of the resin (Col. 7 lines 31-38).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Carano et al. (US 5985040) to include wherein the solvent system is used at a temperature of 110°C to 210°C as taught by Shibata et al. (US 6962628) in order to control the treatment rate and avoid undesired thermal decomposition.
Response to Arguments
Applicant's arguments filed January 19th, 2026 have been fully considered but they are not persuasive.
Regarding the Applicant’s argument that neither Carano nor Crush et al. disclose such a PCB nor the use of a solvent system comprising NMP and resorcinol or ethylene glycol and salicylic acid, the Examiner would like to clarify the following. Carano et al. teaches the use of a solvent system comprising NMP for delaminating printed circuit board comprising epoxy resin as claimed by stating “An improved desmear process for removing resin smeared on an interior wall of a through hole drilled in a resinous substrate, especially resinous substrates made from epoxy, polyimide, cyanate ester resins and bis-maleimide triazine epoxy resins. The process involves contacting the resin smear with a solvent solution to soften the resin smear…The solvent solution comprises a mixture of at least two solvent components” (see Abstract), and “The solvent mixture also contains one or more solvents which are selected from a second group consisting of N-methyl-2-pyrrolidone” (Col. 3 lines 28-30).
Regarding the Applicant’s argument that Chen does not teach wherein two swelling agents comprise n-methyl-2-pyrrolidone and resorcinol as claimed, since Chen teaches the simple existence of these two components for completely different purposes than swelling agents and in no way makes obvious the use of a two component solvent system as swelling agents, the Examiner would like to clarify the following. Chen et al. explains that the solvent composition preferably comprises MSA, at least one organic solvent, and at least one passivating agent (Col. 17 lines 59-61), wherein NMP was listed as an organic solvent (Col. 16 line 56) and resorcinol was listed as a passivating agent (Col. 16 line 6). Therefore, Chen teaches the use of a solvent system comprising both of these components. Chen et al. explains that the passivating agent, such as resorcinol, reduces the composition’s attack on copper, preventing the thin gold plating on the copper from being undercut and lost as the copper dissolves (Col. 16 lines 38-42).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Molly K Devine whose telephone number is (571)270-7205. The examiner can normally be reached Mon-Fri 7:00-4:00.
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/MOLLY K DEVINE/ Examiner, Art Unit 3653