DETAILED ACTION
This is the first office action for 18/704,481, filed 4/25/2024, which is a national stage entry of PCT/JP2022/041301, which claims priority to Japanese application JP2021-185122, filed 11/12/2021, after the request for continued examination filed 12/16/2025.
Claims 1-7 are pending, and are considered herein.
In light of the claim amendments, the double patenting rejections and prior art rejections are modified.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/16/2025 has been entered.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/013,077 in view of Lee (U.S. Patent Application Publication 2022/0194842 A1).
Claim 1-4 of copending Application No. 18/013,077 teach all of the limitations of Claims 1 and 6, except that the solar cell module is separated from the porous ceramic support by a gap during heating, wherein the resin back sheet of the solar cell module faces the porous ceramic support, and wherein the gap is an open space, or that the hot air is diffuses into the gap between the solar cell module and the porous ceramic support.
To solve the same problem of thermally decomposing the organic portions of a solar cell for the purposes of recovering valuable components of the device, Lee teaches a method in which the organic components of a solar cell are decomposed by directing hot air onto the rear of the solar cell (paragraphs [0053]-[0056]), and further heating the module with a mesh-shaped rack directly contacting the front and rear surfaces of the module itself (paragraphs [0061]-[0062], Fig. 7). This mesh-shaped rack comprises gaps (i.e. open spaces between the wires of the mesh), through which the hot air contacts the solar module.
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have used the hot air heating method of Lee and the direct heating method using the rack of Lee, Fig. 7, in the invention of 18/013,077 because Lee teaches that these are all suitable methods for thermally decomposing organic materials in a solar cell for the purpose of resource recovery.
This modification teaches the remaining limitations of Claim 1.
This is a provisional nonstatutory double patenting rejection.
Claims 1 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent 11,908,969 B2 in view of Lee (U.S. Patent Application Publication 2022/0194842 A1).
Claim 1-2 of U.S. Patent 11,908,969 B2 teach all of the limitations of Claims 1 and 6, except that the solar cell module is separated from the porous ceramic support by a gap during heating, wherein the resin back sheet of the solar cell module faces the porous ceramic support, and wherein the gap is an open space, or that the hot air is diffuses into the gap between the solar cell module and the porous ceramic support.
To solve the same problem of thermally decomposing the organic portions of a solar cell for the purposes of recovering valuable components of the device, Lee teaches a method in which the organic components of a solar cell are decomposed by directing hot air onto the rear of the solar cell (paragraphs [0053]-[0056]), and further heating the module with a mesh-shaped rack directly contacting the front and rear surfaces of the module itself (paragraphs [0061]-[0062], Fig. 7). This mesh-shaped rack comprises gaps (i.e. open spaces between the wires of the mesh), through which the hot air contacts the solar module.
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have used the hot air heating method of Lee and the direct heating method using the rack of Lee, Fig. 7, in the invention of U.S. Patent 11,908,969 B2, because Lee teaches that these are all suitable methods for thermally decomposing organic materials in a solar cell for the purpose of resource recovery.
This modification teaches the remaining limitations of Claim 1.
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.
Claim 7 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 7 recites “the porous material side of the porous material.” There is insufficient antecedent basis for “the porous material side,” because there is no prior recitation of “a porous material side.” Further, the limitation is indefinite, because the structure required by “the porous material side of the porous material” is unclear.
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.
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 1-2 and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Sasai, et al. (WO2020/031661 A1, with reference made to patent family document U.S. Patent Application Publication 2021/0305450 A1), in view of Lee (U.S. Patent Application Publication 2022/0194842 A1).
In reference to Claim 1, Sasai teaches a method for processing a waste solar cell (i.e. in a roller hearth kiln, paragraph [0063]) (Example 1, Fig. 1, paragraphs [0059]-[0063] and [0084]-[0092]).
The method of Sasai comprises a step of heating a solar cell module including a resin back sheet 3 and a sealing resin layer 4 in a pyrolysis furnace to melt and oxidatively decompose a resin component included in the solar cell module (Fig. 1, paragraph [0063]).
The method of Sasai comprises a step of placing the solar cell module 7 above a porous ceramic support 1 (Fig. 1, described as a “300 mm×200 mm×27.5 mmt ceramic filter … installed at the lowest stage” in paragraph [0062]).
The method of Sasai comprises a step of stacking the porous ceramic support on a porous material supporting a transition metal oxide (Fig. 1, shown as part of layer 2, described as ceramic filter piece (2) comprising chromium oxide in paragraphs [0061]-[0062]).
The method of Sasai comprises a step of sending hot air from a porous material side to insides of the porous material and the porous ceramic support (i.e. hot air is sent from the “lower side,” paragraph [0063]).
Sasai does not teach that the solar cell module is separated from the porous ceramic support by a gap during heating, wherein the resin back sheet of the solar cell module faces the porous ceramic support, and wherein the gap is an open space, or that the hot air is diffuses into the gap between the solar cell module and the porous ceramic support.
To solve the same problem of thermally decomposing the organic portions of a solar cell for the purposes of recovering valuable components of the device, Lee teaches a method in which the organic components of a solar cell are decomposed by directing hot air onto the rear of the solar cell (paragraphs [0053]-[0056]), and further heating the module with a mesh-shaped rack directly contacting the front and rear surfaces of the module itself (paragraphs [0061]-[0062], Fig. 7). This mesh-shaped rack comprises gaps (i.e. open spaces between the wires of the mesh), through which the hot air contacts the solar module.
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have disposed the heating rack of Lee on the front and rear surfaces of the module of Sasai, because Lee teaches that the wiring of the front and rear rack structures provides the benefit of directly heating the glass of the photovoltaic module, therefore increasing the work efficiency (paragraph [0062]).
Disposing the heating rack of Lee on the front and rear surfaces of the module of Sasai during the heating/thermal decomposition step of Sasai teaches the limitations of Claim 1, wherein the solar cell module is separated from the porous ceramic support by a gap during heating. This gap corresponds to one of the gaps between the wires forming the mesh of the heating rack of Lee (see Lee, Fig. 7).
Disposing the heating rack of Lee on the front and rear surfaces of the module of Sasai during the heating/thermal decomposition step of Sasai teaches the limitations of Claim 1, wherein the gap is an open space, corresponding to the open space between the wires forming the mesh of the heating rack of Lee (see Lee, Fig. 7).
Disposing the heating rack of Lee on the front and rear surfaces of the module of Sasai during the heating/thermal decomposition step of Sasai teaches the limitations of Claim 1, wherein, during the heating step, the hot air is sent from a porous material side to includes of the porous material and the porous ceramic support, wherein the hot air diffuses into the gap between the solar module and the porous ceramic support (i.e. one of the gaps between the wires forming the mesh of the heating rack of Lee, see Lee, Fig. 7).
Disposing the heating rack of Lee on the front and rear surfaces of the module of Sasai during the heating/thermal decomposition step of Sasai teaches the limitations of Claim 2, wherein the gap between the solar cell module and the porous ceramic support is provided by installing a spacer member (i.e. the rack of Lee) between the porous ceramic support 1 and the solar cell module 7.
Disposing the heating rack of Lee on the front and rear surfaces of the module of Sasai during the heating/thermal decomposition step of Sasai teaches the limitations of Claim 5, wherein the method further comprises installing a network structure (corresponding to the rack of Lee) under the solar cell module to prevent the solar cell module from falling.
In reference to Claim 6, Sasai teaches that the method comprise recovering a valuable material after the heating step, i.e. glass and inorganic powder (paragraph [0063]).
In reference to Claim 4, Sasai teaches that the pore size of the porous material is 0.1-5 mm (i.e. 0.004-0.2 inches, paragraph [0031]), and that the porosity of the porous material is 50-95% (paragraph [0031]). This results in a number of pores per inch ranging from 2.5 (for a 0.2 inch pore at a porosity of 50%) to 237.5 (for a 0.004 inch pre at a porosity of 95%).
Therefore, this disclosure teaches the limitations of Claim 4, wherein a number of pores on surfaces of each of the porous ceramic support and the porous material is in a range of 5-50 pores per inch.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 I. In the instant case, the claimed range of 5-50 pores per inch lies within the taught range of 2.5-237.5.
In reference to Claim 7, it is noted that Claim 7 is indefinite, as described above. The following rejection represents the Examiner’s best understanding of the indefinite claim limitations.
Sasai teaches that the hot air is blown “from the lower side” (paragraph [0063]).
It is the Examiner’s position that this disclosure teaches the limitations of Claim 7, wherein the hot air is blown against the porous material side of the porous material 1, because Sasai’s disclosure that layer 1 is a porous material teaches that all sides of the porous material are “porous material sides.”
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Sasai, et al. (WO2020/031661 A1, with reference made to patent family document U.S. Patent Application Publication 2021/0305450 A1), in view of Lee (U.S. Patent Application Publication 2022/0194842 A1), and further in view of Arima, et al. (U.S. Patent Application Publication 2008/0302776 A1).
In reference to Claim 3, Lee is silent regarding the thickness of the resistive heating rack. Therefore, modified Sasai does not teach the limitations of Claim 3.
To solve the same problem of providing a resistive heating element, Arima teaches a cylindrical resistive heating element with a diameter of 2-5 mm, comprising a coating of an insulating ceramic around a wiring structure (paragraph [0081]). Arima further teaches that the resistive heating element of his invention provides the benefit of having a decreased temperature difference between the ends of the heater (paragraph [0081]).
Therefore, absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art at the time the instant invention was filed to have formed the resistive heating lines of the mesh heater of Lee/modified Sasai to have the structure of the resistive heater taught by Arima, based on Arima’s disclosure that the resistive heater of his invention provides the benefit of having a decreased temperature difference between the ends of the heater (paragraph [0081]).
This modification teaches the limitations of Claim 3, wherein the gap between the solar cell module 7 and the porous ceramic support 1 is in a range of 3 to 50 mm (i.e. 2-5 mm).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 I. In the instant case, the claimed range of 3 to 50 mm lies within the taught range 2-5 mm.
Response to Arguments
Applicant's arguments filed 12/16/2025 have been fully considered but they are not persuasive.
The Applicant argues that modified Sasai does not teach that the “gap” is “an open space,” because the mesh of Lee directly contacts the back surface of the solar cell.
This argument is not persuasive. The Examiner respectfully maintains the position that the mesh support of Lee includes regions in which an open-space gap (corresponding to one of the openings in the mesh support of Lee) is formed between the porous support and the back of the solar cell.
Further, Claim 2 (and Fig. 3 of the instant specification) explicitly allows for a “spacer” to be present in the gap, which indicates that the “gap” as contemplated in the instant invention may further include regions in which spacer materials are present. Therefore, all arguments directed toward the position that the “gap” of Claim 1 precludes the presence of solid/spacer materials in said gap are not persuasive.
The Applicant argues that Lee does not teach that the heating rack contacts the back sheet, because, in the teachings of Lee, the back sheet is removed prior to contacting the module with the heating rack. Therefore, the Applicant argues, modifying the teachings of Sasai with the teachings of Lee does not properly teach the limitations of Claim 1.
This argument is not persuasive. First, the argument appears to be against the references individually. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See MPEP 2145 IV.
In the combination, the teachings of Lee were merely applied to motivate the application of the heating rack of Lee to the module of Sasai (which comprises a back sheet, per Fig. 1 of Sasai).
Therefore, the Examiner respectfully maintains the position that modified Sasai properly teaches the limitations of Claim 1.
Conclusion
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/SADIE WHITE/Primary Examiner, Art Unit 1721
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