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 3/02/2026 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:
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 1, 3, 7-15 and 17-20 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.
Regarding claim 1, the limitation “its” (ln. 12) lacks proper antecedent basis and is thus indefinite.
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 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, 3, 7, 12, 13, 15, 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Buske et al. (“Buske”)(US 5,957,298) in view of Sernee et al. (“Sernee”)(US 2019/0358645) and Miltenyi et al. (“Miltenyi”)(US 5,691,208).
Buske teaches a method of separating a mixture of scrap particles into fractions with different mass densities, comprising:
(re: certain elements of claims 1, 3) feeding the mixture of scrap particles into a volume of ferrofluid held in a magnetic field configured for magnetic density separation of the scrap particles in the volume of ferrofluid (col. 1, ln. 25-40 teaching density separation of scrap materials using magneto-fluids; fig. 2 showing feeding of scrap particles via conveyor 2a into volume of ferrofluid 8; col. 6, ln. 59-col. 7, ln. 50 teaching subjecting ferrofluid to magnetic field created by adjustable elements 6a, 6b thru 6g, 6h), wherein within the volume of ferrofluid, contour lines of the magnetic field extend substantially tilted, sloping downwardly from where the mixture of scrap particles is fed into the volume of ferrofluid, wherein a feeding direction of the feeding has a horizontal component (fig. 2 showing particles fed at angle with both horizontal and vertical components and col. 6, ln. 59-col. 7, ln. 52 teaching that magnetic field extends in a non-vertical direction as system is tilted and that particles can be inputted directly into ferrofluid and elements 6a, 6b have a tilt-thus the field can be regarded as sloping downwardly from where scrap particles are fed);
using the magnetic field, by the principle of magnetic density separation, causing the scrap particles in the volume of ferrofluid to become spatially distributed according to their mass densities along a separation direction having a horizontal component, wherein, as part of the separation, each of the particles will generally move to a position along the separation direction corresponding to (fig. 2 showing that angled application of magnetic field via magnet elements near 6a, 6b thru 6g, 6h leads to spatial distribution of scrap particles along a horizontal plane from 2a to 6a in the separation direction);
while at least partly maintaining the spatial distribution, removing the scrap particles along a removal direction out of the volume of ferrofluid, the removal direction being substantially transverse to the separation direction, wherein the removing is performed using the conveyor surface (fig. 5 showing conveyor 17 removing particles transverse to separation direction; col. 7, ln. 50-col. 8, ln. 25 teaching that scrap is removed and separated into fractions”);
and using the at least partially maintained spatial distribution, separating the removed scrap particles into fractions with different mass densities, wherein the feeding direction is substantially transverse with respect to the removal direction and substantially aligned with the separation direction (Cf. fig. 2 and 5);
(re: claim 7) wherein the scrap particles are removed from the volume of ferrofluid together with an adhering residue of ferrofluid (col. 6, ln. 28-60 and col. 8, ln. 18-25 teaching that the containers for the separated fractions and the removal conveyors have elements for “rinsing off of the magnetic fluid adhering to the objects”);
wherein the method further comprises recovering at least part of the residue of ferrofluid from the removed scrap particles for reuse of the ferrofluid (Id. teaching rinsing off of magnetic fluid and returning to the processing chamber 1);
(re: claim 20) wherein the residue of ferrofluid is diluted prior to and/or during the recovering (col. 6, ln. 28-58).
(re: certain elements of claim 8) wherein the recovering comprises:
capturing at least part of the driven off ferrofluid (Id. teaching capturing and recycling);
(re: certain elements of claim 9) wherein the residue of ferrofluid is diluted prior to and/or during the recovering (col. 6, ln. 28-60 teaching that repeated rinsing of magnetic fluids adhered to particles serves to dilute magnetic fluid, wherein rinsing is regarded as supplying water, e.g., spraying);
(re: certain elements of claim 10) wherein the diluting of the residue comprises supplying water (Id.);
(re: claim 12) wherein the recovered ferrofluid is fed back to the volume of ferrofluid (Id.).
Buske also a teaches a particle separation assembly for separating a mixture of scrap particles into fractions with different mass densities, comprising:
(re: certain elements of claim 13) a container (1) for holding a volume of ferrofluid (fig. 2 showing processing chamber 1 holding volume of ferrofluid 8);
a feeder (2a) for feeding the mixture of scrap particles into the volume of ferrofluid (col. 6, ln. 58-64);
a magnet (near 6g, 6h) configured to cause a magnetic field configured for magnetic density separation of the scrap particles in the volume of ferrofluid (fig. 2 and 3 and col. 7, ln. 8-25); and
a remover/conveyor (fig. 5 near 16, 17) configured to remove the scrap particles out of the volume of ferrofluid,
wherein the particle separation assembly is configured for use in the method according to claim 1 (see citations to claim 1 above);
(re: certain elements of claim 15) a diluent supply assembly configured to supply a diluent for the ferrofluid onto the removed scrap particles (fig. 2 near 2; col. 6, ln. 28-60).
Buske as set forth above teaches all that is claimed except for expressly teaching
(re: certain elements of claims 1, 13) wherein the conveyor surface is permeable to the ferrofluid and impermeable to the scrap particles;
(re: claim 17) wherein the particle separation assembly is configured to perform the method automatically;
With respect to certain elements of claim 1:
Sernee teaches that it is well-known in the magnetic separating arts to integrate a permeable surface when conveying particles to allow removal of the adhering liquid during particle conveying and thus easier recycling of the magnetic liquid (para. 29-30 teaching that permeable surface allows recycling and economic savings).
With respect to certain elements of claim 17:
Miltenyi teaches that it is well-known in the magnetic separation arts to automate the entire separation process via computer to provide more precise control over the flow of fluids and the magnetic field during the separation process (col. 12, ln. 58-68).
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., permeable conveyor surface) 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 Buske for the reasons set forth above.
Claims 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Buske, Sernee and Miltenyi (“Buske et al.”) as applied to the claims above, and further in view of Baker (US 2011/0203976) and legal precedent.
Buske et al. as set forth above teach all that is claimed except for expressly teaching
(re: certain elements of claim 8) wherein the recovering comprises: exposing the removed scrap particles to a flow of gas to thereby drive at least some of the residue of ferrofluid off the removed scrap particles;
(re: claim 11) wherein the supplying of the diluent is performed intermittently.
With respect to certain elements of claim 8:
Baker teaches that it is well-known in the magnetic separating arts to use a flow of gas, such as supplied by gas nozzles, to assist in cleaning during a magnetic separating process (fig. 2 near 155; para. 145, 151).
With respect to claim 11:
The claimed features relating to supplying the diluent intermittently 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 magnetic separating arts as evidenced by the control system taught discussed above that precisely controls fluid supplies and magnetic fields during the separating process. 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”).
It would thus be obvious to one with ordinary skill in the art to modify the combination of references with these prior art teachings—with a reasonable expectation of success—to arrive at the claimed invention as these modifications are already well-known and commonly implemented in the separating arts. The rationale for this obviousness determination can be found in the prior art itself as cited above and in legal precedent as described above.
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 Buske et al. 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’s arguments that the prior art does not show a “spatial distribution” according to “mass densities” along a “separation direction” and “at least partly maintaining the spatial distribution, the scrap particles are caused to land on a section of a conveyor surface extending in the volume of ferrofluid at positions corresponding to the spatial distribution” (claim 1). Examiner disagrees as Buske as cited above (and in figure 2 below) clearly shows that the scrap particles maintain a “spatial distribution” in the “separation direction” (i.e., feeding direction of vibratory conveyor 2a).
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Buske further (figure 5) a conveyor (16) configured to collect said particles according to the spatial distribution as said conveyor extends in the separation direction. Applicant’s further arguments focusing on the tilt and downward slope of the contour lines of the magnetic field are unpersuasive as figure 2 and 3 show multiple magnetic elements, such as 6a, 6b, 6g, 6h and 6c, 6d, that Buske expressly teaches “are adjustable in their angles”. Indeed, figure 2 shows the spatial distribution of the scraps aligning with the field created by elements 6a, 6b, thus it is unclear how Applicant’s can argue that no sloping magnetic field is created when the entire system is tilted and when the scraps are shown as distributed as above. Consequently, as a reasonable interpretation of the prior art undermines Applicant’s amendments and arguments, the claims stand rejected.
Allowable Subject Matter
Claim 14 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 18 and 19—based on the fan assembly features--would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
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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April 1, 2026
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