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 .
Election/Restrictions
Applicant’s election of group I, claims 1-12 and newly added claims 21-23, in the reply filed on 06/22/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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.
Claims 1-12 and 21-23 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 discloses “maintaining the removed one or more permanent magnets in a condition that is conducive for reuse” (lines 9-10; emphasis added). The reader is left to guess what step or steps may be necessary to enact the purported method step of “maintaining…in a condition that is conducive for reuse”. Does this mean simply not destroying the magnets? Or storing the magnets in a warehouse? Or cleaning them? Or stacking? Or aligning? Or placing in a holding/installation device? Or any other step? If there is an actual activity necessary for this “maintaining” step, then why is it not recited? Further, there is no way to know what “condition” is intended that would be “conducive for reuse”. In fact, it is also impossible to know what may or may not be considered a condition which is “conducive for reuse”. Accordingly, this ambiguous limitation renders the claim indefinite, as the reader cannot confidently ascertain the scope or metes and bounds of the inventive method. As best understood any of the above interpretations is held to be reasonable according to the currently presented claim language. Essentially, any activity or lack of activity which -after the fact- leaves the magnets in any usable state is held to anticipate this purported limitation.
Claims 2-12 and 21-23 are also rejected as indefinite, so rendered by virtue of their dependency upon the indefinite subject matter of claim 1.
Claim 3 is further rejected as indefinite, because the claim discloses “analyzing a structural integrity of the one or more permanent magnets to determine a suitability for repurposing the one or more permanent magnets” (lines 2-3; emphasis added). In part, this claim is indefinite for effectively the same reasons as claim 1. The reader cannot possibly know what criteria, data or information is analyzed, nor what result would qualify (or not qualify) as being suitable “for repurposing”. Further, the entire method of claim 3 appears to be nothing more than a mental process step. Any operator/user could analyze a magnet for suitability of use, especially given the vague and ambiguous criteria for suitability in this claim. If the prior art discloses that a removed magnet is being or can be used again, then it is held to anticipate this claim, because the prior art has shown that the magnet was deemed suitable, i.e. analyzed to determine suitability.
Claim 4 is further rejected as indefinite, because the claim discloses “the first rotor further comprises: one or more layers, wherein each layer of the one or more layers further comprises the plurality of cavities, the plurality of cavities of each respective layer being in substantially colinear alignment with other layers of the one or more layers” (lines 1-5; emphasis added). This claim is found to be indefinite for at least two reasons. First, the limitation “one or more layers” includes a reasonable interpretation of only one layer. In that reasonable interpretation the remainder of the claim makes no logical sense (there is only one layer, so there is no “substantially colinear alignment”, nor are there any “other layers”). Second, the reader cannot possibly guess what meant by “substantially colinear alignment”. There is no industry standard for, nor is there any further explanation in the original disclosure of what is or is not considered to fall within the realm of being “substantially colinear alignment”. Even if the specification uses the same term of degree as in the claim, a rejection is proper if the scope of the term is not understood when read in light of the specification. While, as a general proposition, broadening modifiers are standard tools in claim drafting in order to avoid reliance on the doctrine of equivalents in infringement actions, when the scope of the claim is unclear a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is proper. See MPEP 2173.05(b): Relative Terminology. The specification provides no information as to what degree of alignment is intended to satisfy this purported limitation. If there is some overlap at all, is this considered substantially aligned? Is a 51% alignment sufficient? What about 60% or 75% or 85% or 92% or any other percentage? That which is substantially aligned to one person in one situation may be considered unaligned to another, as it is a subjectively defined “limitation”. Accordingly, the claim is examined as best understood such that if there is overlap of more than one layer wherein the openings/cavities in the layers also overlap one another, they are held to be substantially aligned. Additionally, the first indefinite limitation makes it such that the substantial alignment limitation is not required at all if the prior art discloses one layer rather than a plurality of layers, as a reasonable interpretation of the claim as currently presented includes a single layer having cavities which do not need to be aligned with anything else.
Claim 11 is further rejected as indefinite, because the claim discloses that “the mechanical force comprises at least one of: a centrifugal force, a compressed air, and a ram” (lines 1-5; emphasis added). This claim is indefinite because the disclosed “centrifugal force” is not a real force, it is an imaginary (i.e. made-up) force. It seems possible that the Applicant actually intended a “centripetal force” which is caused by rotational motion; however, centripetal force really does not work the way many seem to misunderstand it (it directs force to the center of a circular path), and may not be what was intended. The claim is further found to be indefinite because “compressed air” and “a ram” are not forces either. They can produce or impart force, but they are not forces in and of themselves. Further, it is momentum which makes an object along a rotational trajectory “feel” like it is being pulled outward, but momentum is also not a force. Given that it is improper to read limitations into the claims, the claim has been examined as best understood to intend that: “the mechanical force comprises tension or compression; wherein the mechanical force can be imparted to the one or more permanent magnets by at least one of rotational motion, compressed air, and a ram”.
NOTE: All of the examined claims (i.e. claims 1-12 and 21-23) have been interpreted and examined as best understood according to the 112(b) rejections, above.
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.
Claims 1, 4-7, 9, 12, 21 and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Albrecht et al. (DE 10 2012 015 152 A1; machine translation concurrently provided, page and line numbers in citations below taken from the provided translation).
Regarding claim 1, Albrecht discloses a method comprising: obtaining a first rotor (14) comprising a plurality of permanent magnets (10) located in a plurality of cavities (12) arranged in the first rotor (Abstract; figs. 1a-2; pg. 4, lines 20-33), wherein *the first rotor is separated from a first AC motor (“permanently energized synchronous motor”: Title); heating the first rotor to a first temperature (Curie temperature of the magnetic elements) (fig. 3; pp. 5-6, lines 42-44 and 1-8); removing one or more permanent magnets from a respective cavity of the plurality of cavities by applying a force onto the one or more permanent magnets at the first temperature (fig. 3; pg. 6, lines 25-34); and maintaining the removed one or more permanent magnets in a condition that is conducive for reuse (pg. 6, lines 35-43).
*NOTE: the limitation directed to “the first rotor is separated from a first AC motor” is not a positively recited method step and is therefore not a required step of the claimed method. Further, it is not evident that there is any criticality to the type of motor the rotor may have been removed from (prior to the claimed method). Accordingly, as currently presented this language is found to be informative, but is not understood to further define the claimed method of disassembly.
Regarding claim 4, Albrecht discloses the method of claim 1, wherein the first rotor further comprises: one or more layers (annular disks, 16), wherein each layer of the one or more layers further comprises the plurality of cavities (fig. 2: two shown), the plurality of cavities of each respective layer being in substantially colinear alignment with other layers of the one or more layers (fig. 2; pg. 4, lines 20-33).
Regarding claim 5, Albrecht discloses the method of claim 1, wherein the one or more permanent magnets comprises polymer bonded permanent magnets, and wherein the first temperature is greater than a softening temperature of a polymer material of the polymer bonded permanent magnets (fig. 1a-1b; pg. 3, lines 7-9; pg. 4, lines 37-42).
Regarding claim 6, Albrecht discloses the method of claim 5, wherein the first temperature is greater than a glass transition temperature of the polymer material, wherein the first temperature is less than a melting temperature of the polymer material (pp. 2-3, lines 41-43 and 1-14).
Regarding claim 7, Albrecht discloses the method of claim 5, further comprising: separating the polymer material from a magnetic material of the one or more permanent magnets (figs. 1-3; pg. 6, lines 2-24).
Regarding claim 9, Albrecht discloses the method of claim 1, wherein the force applied to the one or more permanent magnets comprises gravity (fig. 3; pg. 6, lines 32-34).
Regarding claim 12, Albrecht discloses the method of claim 1, wherein the one or more permanent magnets comprises sintered permanent magnets, and wherein the first temperature is greater than a softening temperature of an adhesive retaining the sintered permanent magnets in the respective cavity (fig. 3; pg. 6, lines 2-16).
Regarding claim 21, Albrecht discloses the method of claim 1, wherein a heater device (38) is configured to heat the first rotor to the first temperature (pg. 5, line 42).
Regarding claim 23, Albrecht discloses the method of claim 7, wherein, after removing the one or more permanent magnets from the plurality of cavities of the first rotor, a separator device is configured to separate the polymer material from the magnetic material of the one or more permanent magnets (pg. 3, lines 15-17).
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 of this title, 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 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Albrecht, in view of Musselman et al. (US 2011/0210635 A1).
Regarding claim 2, Albrecht discloses all of the elements of the current invention as detailed above with respect to claim 1. Albrecht further discloses processing the one or more permanent magnets *for installation (recycling) into a second rotor for a second AC motor (Title; pg. 2, lines 12-25). Albrecht, however, does not explicitly disclose that processing the one or more permanent magnets further comprises grinding the one or more permanent magnets to enable installation of the one or more permanent magnets into the second rotor.
*NOTE: the language directed to the magnets being intended “for installation…” is not held to be a further definition or limitation of the claimed method, as there are no steps of installing the magnet(s) into any second rotor or second motor. Accordingly, if the prior art discloses the grinding processing step, then it is held to anticipate the required positively recited limitations of the claim.
Musselman teaches that it is well known that processing the one or more permanent magnets further comprises grinding the one or more permanent magnets to enable installation of the one or more permanent magnets into the second rotor (pars. 0047-0049).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have modified the current invention of Albrecht to incorporate the grinding preparation of the magnets of Musselman. POSITA would have realized that grinding or polishing can be easily and readily employed after removal of the magnets to achieve the desired precise geometry necessary for a functional motor, and to remove any residual coating/adhesive materials, which would also predictably otherwise be detrimental to reliable formation of a functional motor. Moreover, there is no indication in the instant disclosure that any special grinding step or device was devised or that any surprising results were derived from simply using the old method of Albrecht with the well-known grinding step of Musselman. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Regarding claim 3, Albrecht discloses all of the elements of the current invention as detailed above with respect to claim 1. Albrecht, however, does not explicitly disclose analyzing a structural integrity of the one or more permanent magnets to determine a suitability for repurposing the one or more permanent magnets.
Musselman teaches that it is well known to perform the step of analyzing a structural integrity of the one or more permanent magnets to determine a suitability for repurposing the one or more permanent magnets (par. 0068).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have modified the current invention of Albrecht to incorporate the analysis to determine structural suitability for use of the magnets of Musselman. POSITA would have realized that such analysis can be easily and readily employed to achieve the desired safe and consistent functionality of the new motor into which the used magnets are installed. In fact, it is quite unlikely that anyone in any manufacturing art, especially the manufacture of very tight tolerance motors would ever consider skipping analysis of structural integrity of such elements. To overlook such analysis would predictably lead to disastrous results which every POSITA would be aware of would endeavor to avoid as a matter of course. Moreover, there is no indication in the instant disclosure that any special analysis was devised or that any surprising results were derived from simply using the old method of Albrecht with the well-known structural analysis of Musselman. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Claims 8, 10-11 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Albrecht, in view of Kawabe (JP 2014-50296; machine translation concurrently provided, page and line numbers in citations below taken from the provided translation).
Regarding claim 8, Albrecht discloses all of the elements of the current invention as detailed above with respect to claim 7. Albrecht, however, does not explicitly disclose heating the one or more permanent magnets to a second temperature, wherein the second temperature is greater than the first temperature.
Kawabe teaches that it is well known to perform a similar method comprising: obtaining a first rotor (2) comprising a plurality of permanent magnets (6), wherein *the first rotor is separated from a first motor (fig. 3; pg. 3, lines 20-32); heating the first rotor to a first temperature (up to about 250˚C) (fig. 16; pg. 5, lines 29-35); removing one or more permanent magnets from a respective cavity of the plurality of cavities by applying a force onto the one or more permanent magnets (fig. 17; pg. 5, lines 7-10); and maintaining the removed one or more permanent magnets in a condition that is conducive for reuse (fig. 17; pg. 5, lines 11-19); and heating the one or more permanent magnets to a second temperature (310 ˚C), wherein the second temperature is greater than the first temperature (pg. 5, lines 29-35; pg. 6, lines 16-20).
NOTE: though citations employed above from Kawabe come from purportedly different “embodiments”, the express disclosure of Kawabe makes it clear that they are instead alternatives usable together. Regarding the “second embodiment” and “third embodiment”, Kawabe discloses that: “the items described in the first embodiment and not described in the present embodiment can be applied to the present embodiment unless there are special circumstances” (pg. 5, lines 20-22); and “the matters described in the first and second embodiments and not described in the present embodiment can be applied to the present embodiment unless there are special circumstances” (pg. 6, lines 21-23).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have modified the current invention of Albrecht to incorporate the heating to a second temperature of Kawabe. POSITA would have realized that multiple heating steps can be easily and readily employed to achieve the desired gradual heating in order to avoid deleterious stack delamination or damage to the magnetic materials, thus predictably decreasing recycling costs and decreasing failure rates. Moreover, there is no indication in the instant disclosure that any special second heating temperature was devised or that any surprising results were derived from simply using the old method of Albrecht with the well-known two heating temperatures of Kawabe. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Regarding claim 10, Albrecht discloses all of the elements of the current invention as detailed above with respect to claim 9. Albrecht, however, does not explicitly disclose applying a mechanical force onto the one or more permanent magnets to force each of the one or more permanent magnets out of the respective cavity.
Kawabe teaches that it is well known to perform the similar method as noted above with respect to claim 8, and further teaches applying a mechanical force (vibratory motion imparting tension force) onto the one or more permanent magnets to force each of the one or more permanent magnets out of the respective cavity (fig. 17, steps 5-6; pg. 9, lines 1-10).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have modified the current invention of Albrecht to incorporate the use of vibration to impart a force on the magnets of Kawabe. POSITA would have realized that Albrecht discloses that some type of pressing may be performed and that vibration can be easily and readily employed to achieve the desired rapid removal of magnets, whereby magnets which may have some residual adhesive/coating, and are therefore sticking to the rotor despite heating and gravity, can be easily and readily removed. Moreover, there is no indication in the instant disclosure that any special force application step/device was devised or that any surprising results were derived from simply using the old method of Albrecht with the well-known force application of Kawabe. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Regarding claim 11, Albrecht in view of Kawabe teaches the method of claim 10 as detailed above, and Kawabe further teaches that it is well known that the mechanical force comprises at least one of: a centrifugal force, a compressed air, and a ram (vibration chuck, 35, and vertical mechanism, 36, act as a ram); wherein the mechanical force acts on the one or more permanent magnets at a first side of the first rotor and the one or more permanent magnets is removed from a second side of the first rotor (fig. 17, steps 5-6; pg. 9, lines 1-12).
Regarding claim 22, Albrecht discloses all of the elements of the current invention as detailed above with respect to claim 1. Albrecht further discloses that when heated to the first temperature, a collector device (device 28, including catch element) is configured to remove the one or more permanent magnets from the plurality of cavities (fig. 3; pg. 6, lines 32-43). Albrecht, however, does not explicitly disclose that the collector device is configured to also apply the force onto the one or more permanent magnets.
Kawabe teaches that it is well known to perform the similar method as noted above with respect to claim 8, and further teaches that a collector device (42, including 35) is configured to apply the force onto the one or more permanent magnets (fig. 17; pg. 9, lines 1-12). Please refer to claim 10 for the rationale for combination of elements as it also applies to claim 22 in the same manner.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to the concurrently mailed PTO-892, as all of those cited references are considered to be pertinent to the claimed invention. For example, Heim et al. ("An Approach for the Disassembly of Permanent Magnet Synchronous Rotors to Recover Rare Earth Materials", 4/18/2023, Elsevier, Procedia CIRP 116 (2023), pp. 71-76) appears to disclose most if not all of the limitations of at least claim 1. Heim provides a method comprising: obtaining a first rotor comprising a plurality of permanent magnets located in a plurality of cavities arranged in the first rotor, wherein *the first rotor is separated from a first AC motor*; heating the first rotor to a first temperature; removing one or more permanent magnets from a respective cavity of the plurality of cavities by applying a force onto the one or more permanent magnets at the first temperature; and maintaining the removed one or more permanent magnets in a condition that is conducive for reuse (ALL: fig. 2; sections 3.1, 3.3, 3.4 on pages 73-74). The Heim reference is not currently applied as an anticipation rejection due to the completeness of the above applied art, and in order to avoid an overly long Office Action or duplicative rejections.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey T Carley whose telephone number is (571)270-5609. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh can be reached at (571)272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY T CARLEY/Primary Examiner, Art Unit 3729
