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 on June 29th, 2026 has been entered. Claims 1-8 and 16-27 remain pending. Claims 9-15 have been cancelled.
Applicant’s amendments to the Specification and the Drawings have overcome every objection previously set forth in the Non-Final Office Action mailed on April 7th, 2026.
Applicant’s amendments to the Claims, specifically the cancellation of claims 9-15, rendered the 112(b) rejections moot; accordingly, the rejections are withdrawn. However, the amended language has introduced a new set of rejections under 35 U.S.C. 112(a) for claims 1-8 and 16-27 as explained below.
Response to Arguments
Applicant’s arguments, see Pages of the Applicant Arguments/Remarks filed on June 29th, 2026, with respect to the rejections of claims 1-4, 6-8, and 18-20 are rejected under 35 U.S.C. 102(a)(1) and of claims 5, 9-12, and 14-17 are rejected under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, new grounds of rejection are made in view of previously applied and newly found art as explained below. These new grounds of rejection were necessitated by the claim amendments.
Claim Rejections - 35 USC § 112
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In the instant case, the specification doesn’t provide a written description for the “second electrostatic separation performed under a condition different from the first electrostatic separation (Claim 1, Lines 8-9). While the specification discusses how by adjusting the electrical field intensity, it is possible to fine tune the separation of materials across a spectrum of materials conductivity and how the electric field can be adjusted by controlling the difference in electric potential based upon the distance between electrodes, distance between the electrodes and the ground roller, temperature, and others (¶0049), there is no description of performing a second electrostatic separation under a condition different from the first ones based upon controlling the electrical field intensity.
Claims 2-8 and 16-27, which depend on Claim 1, are equally rejected.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claims 1-8 and 16-17, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Su et al. (CN113245341A), hereinafter "Su" in view of Yoshinori et al. (JP7091571B1), hereinafter "Yoshinori". For text citation of Su and Yoshinori refer to the machine translation provided by the Examiner with the Non-Final Office Action mailed on April 7th, 2026.
Regarding Claim 1, Su discloses a method (¶n0001) comprising: processing a used solar module (¶n0003-¶n0024) by glass removal of around greater than 90wt% (¶n0005-¶0008) to form a mixture (¶n0008-¶n0009) comprising a first particle (¶n0009) including a conductive material (¶n0045), and a second particle (¶n0009; ¶n0045) including a non-conductive material (¶n0009), wherein the processing comprises a first electrostatic separation (¶n0013-¶n0016; ¶n0043) subjecting the mixture to a force (¶n0013-¶n0016) in the presence of an electric field (¶n0013-¶n0016) having a first difference in potential (¶n0013-¶n0016) ; and separating the first particle from the mixture (¶n0013-¶n0016) by a second electrostatic separation (¶n0010; ¶n0049-¶n0050).
Su fails to disclose a second electrostatic separation performed under a condition different from the first electrostatic separation.
Nonetheless, Yoshinori teaches a second electrostatic separation (¶0047, Lines 8-15, “subsequent electrostatic separation”) performed under a condition (¶0047, Lines 8-15) different from the first electrostatic separation (¶0047, Lines 8-15, “preceding electrostatic separation”).
Su and Yoshinori are considered analogous to the claimed invention because they are in the same field of endeavor of methods for recycling photovoltaic components. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to incorporate the teachings of Yoshinori wherein a second electrostatic separation performed under a condition different from the first electrostatic separation into the method disclosed by Su to ensure that the material can be separated into flying material, falling material, and adhering material (¶0040, Lines 1-6) and to make sure that separation can be performed more effectively (¶0046, Lines 4-13).
Regarding Claim 2, the prior art combination of Su and Yoshinori renders the method of Claim 1 unpatentable as explained above.
The prior art of Su and Yoshinori further teaches wherein the conductive material (Su, ¶n0051) comprises between about 66% - 100% by mass (Su, ¶n0051) of the first particle (Su, ¶n0051).
Regarding Claim 3, the prior art combination of Su and Yoshinori renders the method of Claim 1 unpatentable as explained above.
The prior art of Su and Yoshinori further teaches wherein the force (Su, ¶n0013-¶n0016) comprises gravity (Su, ¶n0014-¶n0015).
Regarding Claim 4, the prior art combination of Su and Yoshinori renders the method of Claim 3 unpatentable as explained above.
The prior art of Su and Yoshinori further teaches wherein the gravity (Su, ¶n0014-¶n0015) is opposed by a resistance (Su, ¶n0014-¶n0015) of the first particle (Su, ¶n0014-¶n0015) moving through a medium (Su, ¶n0014-¶n0015).
Regarding Claim 5, the prior art combination of Su and Yoshinori renders the method of Claim 4 unpatentable as explained above.
After modifications, the prior art combination of Su and Yoshinori fails to teach wherein the medium comprises air.
Nonetheless, Yoshinori provides more details on what the electrostatic separation process entails and how the corona electrode works by generating a corona discharge that causes the air to be ionized (Yoshinori, ¶0034). Thus, teaching wherein the medium comprises air (Yoshinori, ¶0034).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to incorporate these teachings of Yoshinori of using air as a medium into the method disclosed by Su and modified by Yoshinori to generate a corona discharge (Yoshinori, ¶0034).
Regarding Claim 6, the prior art combination of Su and Yoshinori renders the method of Claim 1 unpatentable as explained above.
The prior art of Su and Yoshinori further teaches wherein the processing (Su, ¶n0003-¶n0024) comprises glass removal of around greater than 95wt% (Su, ¶n0005-¶0008).
Regarding Claim 7, the prior art combination of Su and Yoshinori renders the method of Claim 1 unpatentable as explained above.
The prior art of Su and Yoshinori further teaches wherein the processing (Su, ¶n0003-¶n0024) comprises glass removal of 100wt% (Su, ¶n0005-¶0008).
Regarding Claim 8, the prior art combination of Su and Yoshinori renders the method of Claim 1 unpatentable as explained above.
The prior art of Su and Yoshinori further teaches wherein the processing (Su, ¶n0003-¶n0024) comprises slicing (Su, ¶n0011-¶n0012).
Regarding Claim 16, the prior art combination of Su and Yoshinori renders the method of Claim 1 unpatentable as explained above.
After modifications, the prior art of Su and Yoshinori teaches processing comprising glass removal of 100%wt prior to separating. Thus, failing to teach wherein the nonconductive material comprises glass.
Nonetheless, Yoshinori further teaches wherein the nonconductive material (Yoshinori, ¶0038) comprises glass (Yoshinori, ¶0038).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to incorporate these teachings of Yoshinori of separating conductive and non-conductive material wherein the non-conductive material comprises glass into the method disclosed by Su and modified by Yoshinori in the case in which it has been determined that the glass is broken (Su, ¶n0035) and not all the powder has been collected (Su, ¶n0040) to remove the process complexity and potential inefficiency that comes from sorting and separating the broken glass (Yoshinori, ¶0004-¶0006).
Regarding Claim 17, the prior art combination of Su and Yoshinori renders the method of Claim 16 unpatentable as explained above.
After modifications, the prior art combination of Su and Yoshinori further teaches wherein the second particle (Yoshinori, ¶0061-0062) has a size greater than about 3mm (Yoshinori, ¶0061-0062) and the processing (Su, ¶n0003-¶n0024) does not include drying (Su, ¶n0011-¶n0012).
Regarding Claim 22, the prior art combination of Su and Yoshinori renders the method of Claim 1 unpatentable as explained above.
The prior art combination of Su and Yoshinori further teaches wherein the condition comprises a changed distance between electrodes creating the electric field (Yoshinori, ¶0032, Lines 12-16).
Claims 18 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Su in view of Yoshinori as applied to claim 1 above, and further in view of Ding (WO2019227789A1), hereinafter "Ding". For text citation of Ding refer to the machine translation provided by the Examiner.
Regarding Claim 18, the prior art combination of Su and Yoshinori renders the method of Claim 1 unpatentable as explained above.
The prior art combination of Su and Yoshinori fails to teach wherein the processing comprises one or more of drying, application of a fluid jet, and blasting.
Nonetheless, Ding teaches wherein the processing (¶0010-0013) comprises blasting (¶0011-0013).
Su, Yoshinori, and Ding are considered analogous to the claimed invention because they are in the same field of endeavor of methods for recycling photovoltaic components. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to incorporate the teachings of Ding wherein the processing comprises blasting into the method disclosed by Su and modified by Yoshinori to provide a method that is simple to operate, has low requirements for the recycling environmental and can ensure the safety of operators (¶0023, Lines 8-10).
Regarding Claim 27, the prior art combination of Su, Yoshinori, and Ding renders the method of Claim 18 unpatentable as explained above.
The prior art combination of Su, Yoshinori, and Ding further teaches wherein the blasting is with a particle comprising silica (Ding, ¶0013).
Claims 19-21 and 23-26 are rejected under 35 U.S.C. 103 as being unpatentable over Su in view of Yoshinori as applied to claim 1 above, and further in view of Webb et al. (US3970546A), hereinafter "Webb".
Regarding Claim 19, the prior art combination of Su and Yoshinori renders the method of Claim 1 unpatentable as explained above.
The prior art combination of Su and Yoshinori fails to teach wherein the separating comprises the second electrostatic separation performed at a different temperature condition than the first electrostatic separation.
Nonetheless, Webb teaches wherein ambient temperatures are normally sufficient for most separation applications, particularly where the moisture content of the material is high, temperature control measures may be advisable (Column 6, Lines 18-22). Thus, teaching that the second electrostatic separation can be performed at a different temperature condition depending on the moisture content (Column 6, Lines 18-22).
Su, Yoshinori, and Webb are considered analogous to the claimed invention because they are in the same field of endeavor of electrostatic separation methods. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to incorporate the teachings of Webb into the method disclosed by Su and modified by Yoshinori such that the second electrostatic separation performed at a different temperature condition than the first electrostatic separation to reduce the surface moisture content of the material stream and ensure that the resistivity of low conductivity conductive material is maintained at a high enough level for effective separation (Column 6, Lines 4-8).
Regarding Claim 20, the prior art combination of Su, Yoshinori, and Webb renders the method of Claim 19 unpatentable as explained above.
The prior art combination of Su, Yoshinori, and Webb further teaches wherein the first particle (Su, ¶n0014-¶n0015) contacts a grounded roller (Su, ¶n0014-¶n0015).
Regarding Claim 21, the prior art combination of Su, Yoshinori, and Webb renders the method of Claim 20 unpatentable as explained above.
The prior art combination of Su, Yoshinori, and Webb further teaches wherein the condition comprises a changed distance between the ground roller and electrodes creating the electric field (Yoshinori, ¶0032, Lines 12-16).
Regarding Claim 23, the prior art combination of Su, Yoshinori, and Webb renders the method of Claim 19 unpatentable as explained above.
The prior art combination of Su, Yoshinori, and Webb further teaches wherein the first particle comprises a metal (Su, Claim 10, Lines 1-2).
Regarding Claim 24, the prior art combination of Su, Yoshinori, and Webb renders the method of Claim 19 unpatentable as explained above.
The prior art combination of Su, Yoshinori, and Webb further teaches wherein the first particle comprises silicon (Su, Claim 10, Lines 1-2).
Regarding Claim 25, the prior art combination of Su, Yoshinori, and Webb renders the method of Claim 19 unpatentable as explained above.
The prior art combination of Su, Yoshinori, and Webb fails to teach wherein the first particle comprises glass.
After modifications, the prior art of Su, Yoshinori, and Webb teaches processing comprising glass removal of 100%wt prior to separating. Thus, failing to teach wherein the first particle comprises glass.
Nonetheless, Yoshinori further teaches wherein the first particle (Yoshinori, ¶0038, “bouncing particles”) comprises glass (Yoshinori, ¶0038).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to incorporate these teachings of Yoshinori of separating conductive and non-conductive material wherein the conductive material comprises glass into the method disclosed by Su and modified by Yoshinori in the case in which it has been determined that the glass is broken (Su, ¶n0035) and not all the powder has been collected (Su, ¶n0040) to remove the process complexity and potential inefficiency that comes from sorting and separating the broken glass (Yoshinori, ¶0004-¶0006).
Regarding Claim 26, the prior art combination of Su and Yoshinori renders the method of Claim 1 unpatentable as explained above.
The prior art combination of Su and Yoshinori fails to teach wherein the condition comprises a changed humidity.
Nonetheless, Webb teaches wherein reducing the surface moisture content of the material stream ensure that the resistivity of low conductivity conductive material is maintained at a high enough level for effective separation (Column 6, Lines 4-8) and wherein when the moisture content of the material is high, temperature control measures may be advisable (Column 6, Lines 18-22). Thus, teaching wherein the condition comprises a changed humidity (Column 6, Lines 4-8; Column 6, Lines 18-22).
Su, Yoshinori, and Webb are considered analogous to the claimed invention because they are in the same field of endeavor of electrostatic separation methods. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claim invention to incorporate the teachings of Webb into the method disclosed by Su and modified by Yoshinori such the condition comprises a changed humidity to reduce the surface moisture content of the material stream and ensure that the resistivity of low conductivity conductive material is maintained at a high enough level for effective separation (Column 6, Lines 4-8).
Conclusion
Applicant's amendment necessitated the 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).
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 ALONDRA MICHELLE ORTIZ-ORTIZ whose telephone number is (571)272-9539. The examiner can normally be reached M-Th 7-5PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher Templeton can be reached at (571) 270-1477. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.M.O./ Examiner, Art Unit 3725
/BOBBY YEONJIN KIM/ Primary Examiner, Art Unit 3725
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