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 .
Final Rejection
Applicant's arguments filed 1/20/2026 have been fully considered but they are not persuasive for reasons detailed below.
The prior art rejections are maintained or modified as follows:
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 1-10 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Bittner et al. (“Bittner”)(WO 20176037129 A1)(with text citations to English translation previously attached) in view of Suehara (US 2002/0033550), Muller et al. (“Muller”)(US 10,399,085), Weh et al. (“Weh”)(US 10,919,045) and legal precedent.
Bittner teaches a processing method for recycling a workpiece composed of galvanized plastic, which comprises the steps of:
(re: certain elements of claim 1) delaminating the workpiece by means of a fragmentation unit by employing a electrohydraulic effect to give a suspension formed of plastic pellets and coating pellets (p. 3 teaching that composite material, such as metal and polymer, is subjected to electrohydraulic comminution to separate said composite materials from each other and functions “to remove coatings from the substrates”, i.e., delaminate, wherein “comminution” can be regarded as creating pellets and plastic pellets), said fragmentation unit outputting a shock discharging a pulse energy or discharge energy at a high voltage of less than 50 KV (p. 3-4 teaching use of pulse current electric shock using a working voltage of 100kV maximum, preferably 30-50 kV, using at least two electrodes, wherein pulse energy is configured based on physical properties and electrical conductivity of materials to be separated); and
using a magnetic separator to separate the plastic pellets from the coating pellets by magnetic separation (p. 4 teaching that a variety of physical separation steps can be implemented after comminution—including “magnetic sheaths”, “density separation” and “eddy current sheaths”);
(re: claim 2) wherein the plastic pellets have a purity sufficient for direct recycling or direct reuse in a production of galvanized plastics (p. 5 teaching recycled polymer with purity of at least 99% by weight);
(re: claim 3) wherein the plastic pellets have a purity of greater than 99 % (Id.);
(re: claim 4) further comprises comminuting the workpiece into workpiece pellets before being fed into the fragmentation unit (p. 5, 6 teaching the mechanical pre-shredding is optional).
Bittner teaches an apparatus comprising:
(re: certain elements of claim 7) a fragmentation unit for electrohydraulic delamination of the workpiece (p. 3 teaching that composite material, such as metal and polymer, is subjected to electrohydraulic comminution to separate said composite materials from each other and functions “to remove coatings from the substrates”, i.e., delaminate; fig. 5 and p. 7 teaching recycling example of solar cell which includes “polymer with the metal” and using repeated electrohydraulic comminution to delaminate the materials and separate polymer film from the workpiece), said fragmentation unit outputting a shock discharging a pulse energy or discharge energy at a high voltage of less than 50 KV (p. 3-4 teaching use of pulse current electric shock using a working voltage of 100kV maximum, preferably 30-50 kV, using at least two electrodes); and
a magnetic separator for magnetic separation of the plastic pellets from the coating pellets (p. 7 teaching that subsequent “sorting processes” can then be implemented to recover various materials with high purity; with p. 4 teaching that a variety of physical separation steps can be implemented after comminution—including “magnetic sheaths”, “density separation” and “eddy current sheaths”);
(re: claim 8) wherein: said fragmentation unit has a comminution reactor having a vessel filled with a liquid and a pulsed current source with at least two electrodes immersed in the liquid, between which an underwater spark zone is formed, and which generates a shock discharge in the liquid by means of high-voltage pulses (p. 3 teaching that electrohydraulic comminution comprises introducing workpieces into a container with a liquid medium and subjecting said workpieces to pulse electric shock discharges via at least two electrodes); and
the workpiece is passed through the underwater spark zone (Id).
Bittner as set forth above teaches all that is claimed except for expressly teaching
(re: certain elements of claims 1, 7) said fragmentation unit outputting a shock discharging a pulse energy or discharge energy of between 2J and 50J;
a dryer for dewatering a suspension which comes from the fragmentation unit, the suspension containing plastic pellets and coating pellets;
(re: claim 5) recycling a liquid from the suspension into the fragmentation unit in a course of the dewatering;
(re: claim 6) conducting the method automatically;
(re: claim 9) wherein said pulsed current source has at least one electrode stack having three to four said electrodes;
(re: claim 10) wherein a number of pulsed current sources and/or a number of electrode stacks is scalable;
(re: claim 12) wherein said fragmentation unit has a comminution container that accommodates said comminution reactor;
(re: claim 13) wherein the workpiece is fed in via a roof of said comminution container in such a way that the workpiece is positioned directly in front of said electrodes of said comminution reactor under a force of gravity.
Here, it is noted that Bittner as cited above already teaches that the pulse energy is configured based on the physical properties and electrical conductivity of the material to be recycled and that at least two electrodes may be used and that the duration of the electrohydraulic comminution can also be configured, i.e., 1 to 500 pulses can be applied.
Muller further teaches that it is well-known to configure a fragmentation unit with electrode stacks and that the number of electrodes/pulsed current sources and the pulse energy are common operating parameters (fig. 1 showing sample electrode stack near 5 within reactor; col 1, ln. 15-col. 2, ln. 63 and col. 5, ln. 60-col. 6 and col. 8, ln. 23-36 teaching that configuration of pulse discharges ranging from low energy of around 10J up to 5000J and voltage of 20-100 Kv—within claimed ranges-- are known to one with ordinary skill in the art, wherein electrodes are scalable up to 10 and fig. 2 showing protective container accommodating reactor).
Weh also teaches that number of electrode stacks and the pulse and voltages setting are design/operating variables (col. 3, ln. 55-col. 4, ln. 47) and, moreover, that the system can integrate the reactor within another container with a top input to better control the flow of workpieces through the system (fig. 11 showing top gravity feed near 5 and fig. 13 showing reactor electrode stacks protected within another container near 16).
Suehara further teaches that it is well-known in the waste/plastic recycling arts to integrate a dryer for dewatering suspension after a comminuting step to prepare the comminuted fragments/pellets for magnetic separation (fig. 4 showing dewatering step 28 after crushing step 26; para. 56- 57 teaching use of dryer to dewater fragments to prepare pellets for dry magnetic separation steps that allows removal of coating pellets) and to recycle a process fluid during recycling providing the common-sense benefit of economic savings (fig. 5 near 43, 46a).
Indeed, the claimed features relating to the number of electrodes and/or stacks and the pulse energy specifics as well as automating the process can be regarded as common design parameters/operating variables controlled by the design incentives and/or economic considerations involved in this type of subject matter. This is especially applicable in the recycling arts as the type of material to be recycled controls variations in the specific device dimensions, features and/or recycling steps. Moreover, legal precedent teaches that variations in these type of common design parameters/operating variables are obvious and are the mere optimization of result-effective variables that would be known to one with ordinary skill in the art. See MPEP 2144.05 I.II (teaching ample motivation to optimize or modify result-effective variables based on “design need(s)” or “market demand”); see also MPEP 2144.04.III (teaching automatiing of known manual activity as obvious); 2144.04.V.D. and VI (teaching that the mere rearrangement or duplication of known elements, or making known elements adjustable, is not a patentable advance).
It would thus be obvious to one with ordinary skill in the art to modify the base reference with these prior art teachings—with a reasonable expectation of success—to arrive at the claimed invention. The rationale for this obviousness determination can be found
in the prior art itself as cited above, legal precedent as described above and from an analysis of the prior art teachings that demonstrates that the modification to arrive at the claimed invention would merely involve the substitution/addition of well-known elements (i.e., dryer functioning to dewater suspensions) with no change in their respective functions. Moreover, the use of prior art elements according to their known functions is a predictable variation that would yield predictable results (e.g., benefit produced by known function), and thus cannot be regarded as a non-obvious modification when the modification is already commonly implemented in the relevant prior art. See also MPEP 2143.I (teaching that simple substitution of one known element for another to obtain predictable results is known to one with ordinary skill in the art); 2144.06, 2144.07 (teaching as obvious the use of art recognized equivalences). Further, the prior art discussed and cited demonstrates the level of sophistication of one with ordinary skill in the art and that these modifications are predictable variations that would be within this skill level. Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the invention of Bittner for the reasons set forth above.
Response to Arguments
Applicant’s arguments that the prior art fails to teach the amended claim features are unpersuasive in view of the reformulated prior art rejection as set forth above. Applicant focuses on the pulse energy configuration by arguing that the combined references fail to teach or suggest pulse energy range of 2 to 50 J at voltages below 50 KV. Here, Examiner notes that the base reference already teaches the claimed voltage and, moreover, expressly teaches that it is known to configure the pulse energy based on the physical properties and electrical conductivity of the material to be recycled. Further, Muller expressly teaches that it is well-known in the electrohydraulic comminution arts to utilize a broad range of pulse energy ranging from a low of around 10J up to 5000 J when comminuting different types of materials. Applicant’s argument that Bittner teaches away is thus misplaced as pulse energy is configured based on the type of material to be recycled and it is known to use a low energy in the claimed range. Thus, Bittner cannot be seen as teaching away or non-functioning in the claimed range when the claimed range is shown as well-known and implemented in the electrohydraulic comminution arts. The mere possibility of the claimed range making a process less effective does not “teach away”, “change the principle of operation” or have “no reasonable expectation of success” for the combined references. Weh is merely used to reinforce the teaching that the number of electrode stacks and the pulse and voltage settings are well-known design/operating variables in the electrohydraulic comminution arts. Indeed, legal precedent teaches that variations in these type of common design parameters/operating variables are obvious and are the mere optimization of result-effective variables that would be known to one with ordinary skill in the art. Consequently, as a reasonable interpretation of the prior art undermines Applicant’s arguments, the claims stand rejected.
Examiner has maintained the prior art rejections, statutory rejections and drawing objections as previously stated and as modified above. Applicant's amendment necessitated any new grounds 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). The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 extension fee 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 date of this final action.
Conclusion
Any references not explicitly discussed but made of record during the prosecution of the instant application are considered helpful in understanding and establishing the state of the prior art and are thus relevant to the prosecution of the instant application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH C RODRIGUEZ whose telephone number is 571-272-3692 (M-F, 9 am – 6 pm, PST). The Supervisory Examiner is MICHAEL MCCULLOUGH, 571-272-7805.
Alternatively, to contact the examiner, send an E-mail communication to Joseph.Rodriguez@uspto.gov. Such E-mail communication should be in accordance with provisions of the MPEP (see e.g., 502.03 & 713.04; see also Patent Internet Usage Policy Article 5). E-mail communication must begin with a statement authorizing the E-mail communication and acknowledging that such communication is not secure and may be made of record. Please note that any communications with regards to the merits of an application will be made of record. A suggested format for such authorization is as follows: "Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me concerning any subject matter of this application by electronic mail. I understand that a copy of these communications will be made of record in the application file”.
Information regarding the status of an application may also be obtained from the Patent Center: https://patentcenter.uspto.gov/
/JOSEPH C RODRIGUEZ/Primary Examiner, Art Unit 3655
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March 24, 2026