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 07/21/2026 has been entered. Claim(s) 1-20 is/are pending in this application, of which claims 14-20 are examined herein. Claim(s) 1-13 is/are withdrawn.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 14, 17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Drage (US 3885744 A, cited in IDS filed 10/31/2023).
Claim(s) 14, 17, and 20 remain(s) rejected as set forth in the Office Action dated 04/22/2026. Claim(s) 14, 17, and 20 has/have not been amended since that time. Therefore, the previously presented grounds of rejection set forth how the prior art teaches or suggests all of the limitations of the claim(s).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Drage as applied to claim 14 above, and further in view of B&H (“Eriez Shred1™ Ballistic Separators Generate Increased Revenue for Customers”, supplied with Office Action dated 04/22/2026).
Claim(s) 15 remain(s) rejected as set forth in the Office Action dated 04/22/2026. Claim(s) 15 has/have not been amended since that time. Therefore, the previously presented grounds of rejection set forth how the prior art teaches or suggests all of the limitations of the claim(s).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Drage as applied to claim 14 above, and further in view of Molteni (US 20090159511 A1, cited in IDS filed 10/31/2023).
Claim(s) 16 remain(s) rejected as set forth in the Office Action dated 04/22/2026. Claim(s) 16 has/have not been amended since that time. Therefore, the previously presented grounds of rejection set forth how the prior art teaches or suggests all of the limitations of the claim(s).
Claims 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Drage as applied to claim 14 above, and further in view of Daou (DE 102009001646 B3, original document and machine translation supplied with Office Action dated 04/22/2026).
Claim(s) 18-19 remain(s) rejected as set forth in the Office Action dated 04/22/2026. Claim(s) 18-19 has/have not been amended since that time. Therefore, the previously presented grounds of rejection set forth how the prior art teaches or suggests all of the limitations of the claim(s).
Response to Arguments
Applicant's arguments filed 07/21/2026 have been fully considered but they are not persuasive.
Regarding Applicant’s argument that the system of claim 14 being configured to continuously combine first, third, and fourth scrap steel fractions is a structural requirement, not a mere manner of operating (see pg. 7-8 of remarks), the Examiner respectfully disagrees.
While as Applicant notes, MPEP 2111.04 (I) notes that the term “adapted to” (analogous to configured to) may further limit a machine claim when supported by the written description such that it makes clear that the “adapted to” term has a narrower meaning relating to the design or construction of the machine, the instant specification does not disclose that the machine is designed or constructed with respect to its structure to be used for such a purpose. Instead the instant specification at most provides broad statements that the system is generically configured to do so without specifying any actual structure or unit operation that combines the scrap steel fractions (e.g., “The system is configured to continuously combine the first scrap steel, the third scrap steel fraction, and the fourth scrap steel fraction and to obtain: a combined scrap steel product…” at [0010], “continuously combining the first shredded scrap steel fraction, the third shredded scrap steel fraction, and the fourth shredded scrap steel fraction, to obtain a combined shredded scrap steel product” at [0023]). Therefore, while the instant claim may recite that the “system is configured to continuously combine the first scrap steel fraction, the third scrap steel fraction, and the fourth scrap steel fraction”, such a limitation is not tied by the instant specification to any structural limitation, and therefore can only be interpreted as a manner of operating the apparatus, as different fractions leaving the system could be kept separate or added to other fractions in any combination desired by the operators of the process, therefore the limitation does not differentiate the apparatus from the prior art.
While as Applicant notes Drage discloses combining non-magnetic from magnetic separators 10 and 20, with light fractions from air separator 6, Drage also directly discloses combining its first and third scrap steel fractions 12 and 22 respectively into a single recovered product (Fig. 1, Col. 4 lines 28-34). However as noted above, such a distinction is moot as the combining of first, third, and fourth scrap steel fractions comprises a method of operating the apparatus, as there is no structural limitation disclosed in the instant claims or instant specification that is responsible for or prerequisite for the combination of scrap steel fractions, and instead would arise from a method step of combining the products.
Regarding Applicant’s argument that the office action lacks clarity with respect to the asserted rejections as Drage is used to teach all of the structural limitations of and to teach claim 14 in its entirety, while allegedly failing to teach multiple recited limitations, (see pg. 6 of remarks), the Examiner notes that all of the recited limitations of claim 14 are taught by Drage directly, or would have been prima facie obvious as noted above.
Regarding Applicant’s argument that Drage is conceded by the Examiner to not teach a combined scrap steel product (see pg. 9 of remarks), the Examiner notes that Drage teaches all of the necessary structural limitations of claim 14, where a combination of scrap steel fractions to form a combined scrap steel product arises from a manner of operating the apparatus, therefore Drage teaches the necessary limitations to teach or suggest the system being configured to obtain a combined scrap steel product. Further, as the Examiner’s position is that it would have been obvious to add the ferrous product of Drage to an EAF to produce steel, which would necessarily include feeding the product to a single apparatus (the EAF), the EAF would intrinsically receive a combined scrap steel product.
Regarding Applicant’s argument that Daou does not teach pre-combining scrap and DRI (see pg. 9 of remarks), the Examiner notes that Daou teaches the conveyor to the electric arc furnace 51 may be loaded with scrap iron and DRI simultaneously, which would comprise pre-combining scrap and DRI (Daou: [0067]).
Regarding Applicant’s argument that
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 Nikolas T Pullen whose telephone number is (571)272-1995. The examiner can normally be reached Monday - Thursday: 10:00 AM - 6:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at (571)-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/NIKOLAS TAKUYA PULLEN/Examiner, Art Unit 1733
