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 .
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 30-31 and 40-43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11-14 of U.S. Patent No. 12,053,803. Although the claims at issue are not identical, they are not patentably distinct from each other as the instant claims merely broaden the patented claims by changing the conveyor elements to “paths” and by moving the crusher element to dependent claim 31. Moreover, one with ordinary skill in the art has ample rationale—i.e., seek broader claim scope--and know-how to broaden the claims as such.
Claim 30 is also rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,806,760. Although the claims at issue are not identical, they are not patentably distinct from each other as the instant claims merely broaden the patented claims by changing the conveyor elements to “paths”. Moreover, one with ordinary skill in the art has ample rationale—i.e., seek broader claim scope--and know-how to broaden the claims as such.
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.
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Latti (US 2015/0122705) in view of Rem et al. (“Rem”)(US 9,221,061).
Latti teaches a system for producing pieces of a product metal-bearing ore by processing pieces of an input metal-bearing ore, the input metal-bearing ore having a metal therein the product metal-bearing ore having a desired target average percentage by weight of the metal therein, said system comprising:
(re: certain elements of claim 30) a first path through which the input metal-bearing ore passes (fig. 1, 2 showing first path/conveyor 102 with copper ore particles thereon; para. 41-45);
a second path through which pieces of the product metal-bearing ore pass for collection after said system has processed the input metal-bearing ore (fig. 3 showing various collection paths from magnetic resonance sorting device 206—i.e., system 100 from fig. 1 and 2; para. 63, 71);
a first magnetic resonance analyzing unit (106) and an associated controller (108) configured for
measuring the percentage by weight of the metal in the input metal-bearing ore in said first path at successive points in time (para. 58-59 teaching taking continuous readings “on the fly” of successive parcels of particles to determine quality/quantity of copper ore present);
calculating the average percentage by weight of the metal in the input metal-bearing ore in said first path measured over first predetermined length intervals of time (para. 64 teaching calculating “mean” or average value of copper content over a “predetermined time”),
establishing a cut-off value of the average percentage by weight of the metal in the input metal-bearing ore in said first path for producing the product metal-bearing ore (para. 15, 62, 64 teaching establishing “cut-off point” for copper ores to be considered economically viable-ranging from 0.3 to 0.6% by weight),
producing select signals when the average percentage by weight of the metal in the input metal-bearing ore in said first path is equal to or greater than said cut-off value (para. 63 teaching sending sorting signals based on cut-off point);
generating an estimate of the average percentage by weight of the metal in the product metal-bearing ore (para. 65-67 teaching generating an “estimate” of the average grade of the ore particles passing through the sorter to ameliorate losses due to incorrect classifications), and
dynamically adjusting said cut-off value up or down to an adjusted value to produce said select signals if the average percentage by weight of the metal in the input metal-bearing in said first path is below or above the estimate of the average percentage by weight of the metal in the input metal-bearing ore in said first path (para. 66-67 teaching that sorting decision—i.e., cut-off value--can be adjusted when “estimate” indicates an average grade is developing);
a diverter (110) configured for receiving the input metal-bearing ore in said first path and directing the input metal-bearing ore in said first path to a collection path in response to said select signals when the average percent by weight of the metal in the input metal-bearing ore in said first path is equal to or greater than said adjusted value and directing the input metal-bearing ore in said first path to a waste path when the average percent by weight of the metal in the input metal-bearing ore on said first conveyor is less than said adjusted value (fig. 1, 2 near 110 and para. 63); and
a second magnetic resonance analyzing unit configured for measuring the percentage by weight of the metal in the product metal-bearing ore in said second path (para. 75-81).
Latti as set forth above teaches all that is claimed except for expressly teaching
(re: certain elements of claim 30) said second magnetic resonance analyzing (“MRA”) unit configured for providing to said controller signals to fine tune said adjusted value up or down to a tuned adjusted value to produce said select signals if the average percentage by weight of the metal in the product metal-bearing ore in said second path is below or above the desired target average percentage by weight of the metal in the product metal-bearing ore,
thereby causing said diverter to direct the input metal-bearing ore in said first path to said collection path when the average percent by weight of the metal in the input metal-bearing ore in said first path is equal to or greater than said tuned adjusted value and to direct of the input metal-bearing ore in said first path to said waste path when the average percent by weight of the metal in the input metal-bearing ore in said first path is less than said tuned adjusted value.
With respect to these certain elements in claim 30:
It is noted that Latti as cited above already teaches a second MRA and that an MRA may be used to adjust the sorting decisions based on a relationship between an average percentage by weight and a target value/cut-off value—and is merely silent about using data from the second MRA to fine tune sorting decisions in the first path and thereby adjust the diverter.
Rem teaches that it is well-known in the automated sorting arts to configure an analyzer to adjust/fine-tune controller signals when a target value has not been reached, thereby causing said sorting diverter to divert more or less particles to a desired path and thus optimize recovery of metal particles (fig. 6 showing sensor 218 along sorting path that is integrated with controller 16 and diverter 14; col. 10, ln. 10-54 teaching adjusting sorting decisions if amount of diverted metal particle fraction is below a pre-determined threshold, i.e., target value, or decreases during the separation operation).
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 as Latti already teaches a second MRA in a second path and Rem teaches that it is well-known to use sensor data from a second path to adjust sorting decisions and the connected sorting diverter when a target value has not been reached. The rationale for this obviousness determination can be found in the prior art itself as cited above that expressly teaches that this type of configuration optimizes recovery of desired particles. 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 Latti for the reasons set forth above.
Allowable Subject Matter
Claims 32-39 and 44-49 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any references not explicitly discussed above but made of record are regarded as helpful in establishing the state of the prior art and are thus considered 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”.
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/JOSEPH C RODRIGUEZ/Primary Examiner, Art Unit 3655
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December 1, 2025