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 8/12/2025 have been fully considered but they are not persuasive for reasons detailed below.
The 35 U.S.C. 112 rejections are maintained or modified as follows:
Here, Examiner notes that the previously made rejections are repeated below as Applicant’s had not addressed the issues previously noted.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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 7 recites the limitation "a second clearing separator". However, claim 7 and the dependent claims refer to “the second separator” as well “the second cleaner separator”, thus there is improper antecedent basis for these limitations in the claims. Examiner notes the difference between the language “clearing” and “cleaner”.
Claims 9 and 10 recite the limitation "the spiral screw". There is improper antecedent basis for this limitation in the claims.
Examiner requests clarification and recommends amending the claims with language that clearly sets forth the claimed invention. In the interim, and in the interests of compact prosecution, the claims have been interpreted as set forth below.
The objections and prior art rejections are maintained or modified as follows:
Specification
Claim Objections
The claims are objected to because of the following informalities:
Independent claims should being with “A” or ”An” and the claims depending therefrom should begin with “The”.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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; or
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 7-10, 12-13 and 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fendley (US 7,891,496).
Fendley (fig. 1-5) teaches a multi-spiral separator for separating waste material comprising:
(claim 7) a. a first separator with a upper end and a lower end (fig. 1 showing spiral; conveyor 24 extending from a lower to upper end);
b. a second [cleaner] separator positioned opposite to the blade direction of the first separator (fig. 3 showing separator near 25 positioned with arrows showing that blades are positioned in opposite rotational direction, i.e., rotating in opposite directions);
c. a trough (tank near 11, 12), wherein the first and second separators reside, with the first separator smaller than the second separator (fig. 3 showing separators within classifier tank and fig. 1 showing first separator having smaller length dimension).
Further, Applicant is respectfully reminded that claim language consisting of functional language and/or intended use phrasing is given little, if any, patentable weight as the apparatus must merely be capable of functioning, or being used, as claimed. See MPEP 2112.02, 2114. Moreover, Applicant is reminded that the patentability of apparatus claims must depend upon structural limitations, not mere statements of functions. See Galland-Henning Manufacturing Company et al. v. Dempster Brothers, Inc., 165 USPQ 688 (E.D. Tenn. 1970). Here, the device cited above is certainly capable of-
(re: certain elements of claim 7) separating waste material (col. 3, ln. 50+ teaching float-sink separation techniques that can be applied to a broad range of materials; see also fig. 1 near “R” and col. 4, ln. 33+ teaching that heavier “waste” particles are conveyed to discharge chute by screw conveyor 24 while lighter particles are conveyed to separate and opposite discharge).
Fendley further teaches
(re: claims 8-10, 18) wherein the second separator is a spiral screw (fig. 1 showing spiral flights near 25 that can be regarded as blades forming spiral/ribbon screw that extend from an upper to a lower end);
(re: claim 12) wherein the second separator is on the side opposite to the blade direction of the first separator (fig. 1);
(re: claim 13) wherein the first separator uses a right-handed screw (fig. 1);
(re: claims 16, 17) comprising a weir at the lower end (fig. 5, 6 showing weir near 45 wherein lighter material overflows said weir).
Claims 7, 8 and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Olivier (US 5,495,949).
Olivier (fig. 1-4) teaches a multi-spiral separator for separating waste material comprising:
(claim 7) a. a first separator with a upper end and a lower end (fig. 1 showing barrel 1 with spiral flights near 41, 42, 43, 44, 45 extending from an upper to a lower end; col. 4, ln. 5+ teaching that system is particularly suitable for treatment of waste water);
b. a second [cleaner] separator positioned opposite to the blade direction of the first separator (barrel 31 with spiral flights near 32, 33 shown as positioned with opposite blade direction in fig. 1);
c. a trough (within structure 6), wherein the first and second separators reside, with the first separator smaller than the second separator (fig. 1);
(re: claims 8, 10) wherein the second separator is a spiral screw (wherein spiral flights can be regarded as blades forming spiral screw);
(re: claim 12) wherein the second separator is on the side opposite to the blade direction of the first separator (fig. 1; col. 5, ln. 10-25);
(re: claim 13) wherein the first separator uses a right-handed screw (fig. 1, 2; col. 5, ln. 10+).
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 1-6, 11 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Fendley (US 7,891,496) in view of Adams et al. (“Adams”)(US 11,679,394) and legal precedent.
Fendley as set forth above teaches all that is claimed except for expressly teaching
(re: certain elements of claims 1-6, 19 and 20) a source of material a source of material that is incinerator ash, automobile shredder residue, whitegood shredder residue, e-waste, building components, waste-to-energy slag, steelmaking slag, ferrochrome slag, retrieved landfill material, or a combination thereof; and
wherein the nozzles deliver a stream of wash liquid the multi-spiral separator to push the light fraction in a direction opposite the heavy fraction.
(re: claim 11) wherein the first separator uses a left-handed screw.
Here, it is noted that Fendley already teaches multiple screws that convey materials in opposite directions and that what is key is that the respective conveyors are set at opposite conveying directions.
Adams further teaches that it is well-known to apply sink float separation techniques to waste material to achieve higher separation speeds and to utilize water nozzles as well as spiral screws to assist with processing and conveying the waste material (fig. 2-6 showing various spiral conveyors and fig. 6 showing water nozzles that assist in pushing lighting materials to overflow area of weir; col. 1, ln. 45-col. 4 teaching that a plurality of nozzles may be employed at various locations to assist with guiding materials during separation process and that multiple adjacent Archimedes screws may also be utilized as long as they rotate in opposite directions).
Indeed, the claimed features relating to the type of material to be processed, the angle of the spiral conveyor, the amount and the positioning of the water nozzles and/or the direction of the screw can be regarded as common design parameters/variables controlled by the design incentives and/or economic considerations involved in this type of subject matter. This is especially applicable in the waste separating arts as the type of material to be separated controls variations in the system features and/or separating steps. Moreover, legal precedent teaches that variations in these type of common design parameters/variables are obvious and that said parameters can be recognized as result-effective variables whose optimization would be known to one with ordinary skill in the art. See MPEP 2144.04.IV (teaching that changes in size, proportion or shape of known elements are 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); 2144.05 I.II (ample motivation to optimize or modify result-effective variables based on “design need(s)” or “market demand”).
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; in 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 (e.g., water nozzles or spiral screw with left or right direction) 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 Fendley for the reasons set forth above.
Response to Arguments
Applicant’s arguments that the prior art fails to teach the claim features are unpersuasive. In particular, Applicant argues that the prior art separators do not teach the limitation of rotating in “an opposite direction” (claim 1) or that the second separator has a blade direction “positioned opposite” of the first separator. Examiner disagrees and notes that figure 1 of Olivier clearly undermines Applicant’s arguments by showing blades pointing in opposite direction s.
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Figure 3 of Fendley also clearly shows two oppositely positioned separators within elongated trough 12 wherein the figure “arrows” show that blades are configured to rotate and convey materials in opposite direction.
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Further, as Fendley already teaches opposite rotation, there is no need to find this feature in the secondary reference Adams. Adams is merely relied on to that it is well-known to apply sink float separation techniques to waste material to achieve higher separation speeds. Thus, there is no need to fundamentally re-design the trough and destroy the functioning of Fendley as argued by Applicant. Adams is simply adding well-known features, such as water nozzles and spiral screws, that improve material conveyance during waste separation—a worthy rationale to combine the prior art. Consequently, as a reasonable interpretation of the prior art undermines Applicant’s amendments and 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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November 14, 2025