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 .
Election/Restrictions
Claims 1-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group I, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 03/23/2026.
Applicant's election with traverse of claims 14-20 in the reply filed on 03/23/2026 is acknowledged. The traversal is on the grounds that the method of claims 1-13 could not be performed by hand or by hand with a magnetic separator and be automated and continuous; that merely stating the apparatus could be used to reduce contents of other non-magnetic materials does not establish that the apparatus can be used to practice another and materially different process; and that both Groups are classified in the same area and thus do not require different fields of search. This is not found persuasive because claim 1 only requires that the method comprise wherein the method is automated, which would include e.g., where only one or multiple steps are automated, but an activity of separating scrap steel in one or more of the separating or grinding steps could be performed by hand or by hand with a separator/grinder, and while the instant specification may disclose it is an objective of the instant invention to avoid manual operations, no such limitation is present in the instantly filed claims. While as applicant notes, the system of claim 14 is recited as configured to receive an amount of scrap steel containing copper metal, to obtain combined scrap steel product and enriched nonmagnetic metal fraction comprising copper and nonmagnetic material, nothing in the instant claims or instant specification sets forth the actual requirements or features of the system that enable such capabilities, therefore a system according to claim 14 would not be limited to solely scrap steel containing copper metal, but also would be capable of separating other materials such as plastic, aluminum, rubber, brass, etc. as noted in the Restriction Requirement, which all would comprise other materially different processes. While as Applicant notes, Groups I and II share the same CPC classification of C22B1/005,
the inventions would still require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries), as systems (i.e., apparatuses) are subject to different legal standards with respect to patentability with respect the prior art, and as a result are subject to different search strategies and search queries, thus a search burden would be present if the Groups were to be examined together.
The requirement is still deemed proper and is therefore made FINAL.
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.
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).
Regarding claim 14, Drage teaches an apparatus for crushing and separating scrap material (Title), a system for reducing copper metal content of scrap steel (Col. 1 lines 53-57). Drage teaches the system comprising a first separator 10 configured to continuously receive an amount of scrap steel containing copper metal (Col. 2 lines 19-23, Col. 4 lines 11-15, Fig. 1) to continuously provide a first scrap steel fraction and to provide a second fraction comprising iron and nonmagnetic material (Col. 2 lines 19-20, Col. 4 lines 3-7). Drage teaches a second separator 20 configured to continuously receive the second fraction from the first separator and to provide a third scrap steel fraction and a nonmagnetic fraction (Col. 2 lines 23-26, Col. 4 lines 28-30, Fig. 1). Drage teaches a third separator 26 configured to continuously receive the nonmagnetic fraction and to provide a fourth scrap steel fraction and an enriched nonmagnetic metal fraction (Col. 4 lines 53-62, Fig. 1). Drage teaches the enriched nonmagnetic metal fraction comprising copper and nonmagnetic metal (Col. 4 lines 53-57, Col. 2 lines 28-31, 38-44).
Drage does not teach wherein the system is a system for shredded scrap steel or wherein the system is configured to continuously combine the first, third, and fourth scrap steel fractions, however as claim 14 is directed to an apparatus, using shredded scrap steel or combining the first, third, and fourth scrap steel fractions results from a manner of operating the apparatus, rather than any structural feature of the apparatus itself. A manner of operating an apparatus does not differentiate an apparatus from the prior art. See MPEP § 2114 (II). As Drage teaches all of the structural limitations of claim 14, Drage teaches claim 14 in its entirety.
The Examiner notes that while Drage does not teach the system to be automated, it has long been held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art and presents a case of prima facie obviousness. See MPEP § 2144.04 (III). Therefore, Drage suggests wherein the system is automated as claimed.
Regarding claim 17, Drage teaches a crusher 13 (i.e., a grinder) configured to continuously receive the nonmagnetic fraction 11 from the second separator 10 (Col. 4 lines 11-15, 31-32, Fig. 1).
Regarding claim 20, Drage teaches wherein the system is configured to provide a non-magnetic fraction comprising copper (Col. 2 lines 19-23) from which copper can be recovered (i.e., separated, enriched copper product from the scrap steel) (Col. 2 lines 38-44).
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 herein).
Drage teaches the first separator may be a magnetic separator for separating ferrous material from copper (Drage: Col. 2 lines 3-7, 14-22, Col. 4 lines 1-3), but is silent to the type of magnetic separator does not teach wherein the first separator comprises a shredded scrap steel ballistic separator.
B&H teaches a Shred1 ballistic separator which upgrades shredded steel by segregating copper bearing materials form the rest of the ferrous materials (i.e., wherein the first separator comprises a shredded scrap steel ballistic separator) (paragraph 1), where the ballistic separator comprises a magnetic head pulley (i.e., is a type of magnetic separator) (paragraph 2), thus B&H and Drage are analogous to the instant application as both are directed to magnetic separators for separating copper from ferrous materials. B&H teaches the system upgrades shredded material increasing revenues and reducing overhead (paragraph 1), where the ferrous material is very desirable to steel mills, and results in more efficient picking of copper from the ferrous stream (paragraph 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a ballistic separator as taught by B&H as the magnetic separator of Drage as doing so would increase revenues and reduce overhead, and produce ferrous material desirable to steel mills and result in more efficient picking of copper. Further, because Drage is silent with respect to a suitable magnetic separator, in order to carry out the invention of Drage one of ordinary skill in the art would necessarily look to the art for a reference teaching magnetic separators suitable for use within the process of Drage, such as that of a magnetic ballistic separator as taught by B&H. As Drage and B&H both relate to magnetic separators for separating copper from ferrous materials, one of ordinary skill would be motivated to use the magnetic ballistic separator of B&H.
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).
Drage teaches the second separator comprises a magnetic separator (Drage: Col. 2 lines 3-7, 14-22, Col. 4 lines 28-32), but is silent to the type of the separator, and does not teach wherein the second separator comprises an electromagnetic separator
Molteni teaches an electromagnetic separator and separation method of ferromagnetic materials (Title), for separating ground ferromagnetic parts containing copper [0002-0003], thus Molteni and Drage are analogous to the instant application as both are directed to magnetic separators for separating ferrous materials and copper. Molteni teaches the electromagnetic separator allows the attraction of all types of ferromagnetic parts forming the ground material, comprising those having low form factors, i.e. the ratio between height and section diameter, such as rotors, for instance [0012].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used an electromagnetic separator as taught by Molteni as the magnetic separator of Drage as doing so would allow attraction of all types of ferromagnetic material. Further, because Drage is silent with respect to a suitable magnetic separator, in order to carry out the invention of Drage one of ordinary skill in the art would necessarily look to the art for a reference teaching magnetic separators suitable for use within the process of Drage, such as that of an electromagnetic separator as taught by Molteni. As Drage and Molteni both relate to magnetic separators for separating copper from ferrous materials, one of ordinary skill would be motivated to use the electromagnetic separator of Molteni.
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 herein).
Regarding claim 18, Drage teaches producing a ferrous product (Col. 4 lines 7-10), but does not teach an electric arc furnace configured to receive the combined scrap steel product.
Daou teaches a steelmaking apparatus comprising at least an electric arc furnace (EAF) for the cyclical melting of, in particular, crushed scrap iron parts (Title), where shredded steel is fed to the electric arc furnace (i.e., an electric arc furnace configured to receive the combined scrap steel product) [0018-0019] to produce steel [0016-0017], thus Daou and Drage are analogous to the instant application as both are directed to processes further processing shredded steel. Daou teaches the apparatus continuously feeds unpressed scrap in bulk, which avoids undesirable network feedback and produces exhaust gas useful for power generation sufficient to operate a shredding plant [0020], and that the electric arc furnace eliminates basket loading, eliminating time and energy losses due to heat radiation [0026].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added an EAF as taught by Daou to the system of Drage, as doing so would further process the ferrous product of Drage to produce steel, which would have been recognized by one of ordinary skill to be commercially valuable, while benefiting from avoiding undesirable network feedback and reduced time and energy losses; and would produce energy to operate the shredder of Drage.
Regarding claim 19, Drage in view of Daou teaches wherein the system comprises an electric arc furnace to which the scrap steel (i.e., the combined scrap steel product) and pre-reduced iron (i.e., direct reduced iron DRI) are fed (Daou: [0031, 0066-0067]). Daou teaches the conveyor 51 may be loaded with scrap iron and DRI simultaneously [0067], which would comprise combining the scrap steel product with DRI prior to introducing the combined scrap steel product to the electric arc furnace.
Conclusion
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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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/NIKOLAS TAKUYA PULLEN/Examiner, Art Unit 1733
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