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 .
Summary
This is the initial Office action based on application 18936228 filed 11/4/2024.
Claims 1-18 are pending and have been fully considered.
Information Disclosure Statement
IDS filed on 11/10/25 and 11/6/2024 have been considered by the examiner and copies of the Form PTO/SB/08 are attached to the office action.
Drawings
The Drawings filed on 11/4/2024 are acknowledged and accepted by the examiner.
Specification
The Specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification. MPEP § 608.01
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 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 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.
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 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over SHIDELER JR ET AL. (US PG PUB 20140299684) in its entirety. Hereby referred to as SHIDELER.
Regarding claims 1-18:
SHIDELER teaches in para [0007] the method includes the steps of: providing a pre-engineered municipal solid waste stream; shredding the pre-engineered municipal solid waste stream; size-reducing the pre-engineered municipal solid waste stream in a primary hammer mill to a size that can pass through a 3/8'' screen; size-reducing the pre-engineered municipal solid waste stream in a secondary hammer mill to a size that can pass through a 1/4'' screen; and pneumatically conveying the pre-engineered municipal solid waste to a separator whereby the pre-engineered municipal solid waste is separated into a medium weight material substantially comprising fibers and a light weight material substantially comprising plastics.
SHIDELER teaches in para [0021] as used herein, the term "municipal solid waste" or "MSW" means waste that includes, but is not limited to, one or more of the following materials: heavy weight materials (i.e., aggregates, glass, textiles, rubber, etc. . . .), medium weight materials (i.e., fibers and rigid plastics), lightweight materials (i.e., foam plastics and film plastics), PVC plastics, ferrous and non-ferrous metals, inert residues, food waste, and very heavy and/or bulky materials. As used herein, the term "fibers" includes paper and/or cardboard and like materials, including but not limited to organic solids such as cellulose, hemicellulose, lignin, ash and other like unclassified organics, the term "clean plastics" includes rigid plastics, foam plastics and film plastics and like materials, and the term "undesirable plastics" means plastics that are known to contain high levels of chlorine (i.e., PVC plastics). As used herein, the term "pre-engineered municipal solid waste" or "PMSW" means municipal solid waste that has been previously size reduced and/or partially decontaminated such that all, substantially all, or some portion of the heavy weight materials, undesirable plastics, ferrous and non-ferrous metals, inert residues and very heavy and/or bulky materials have been removed, such that the municipal solid waste primarily comprises a mix of medium weight materials and lightweight materials. The pre-engineered municipal solid waste may be a waste stream that was originally intended for densification to form pelletized fuel before being directed to the presently disclosed system and method.
SHIDELER teaches in para [0018] FIG. 12 is a view of two circle graphs showing a significant increase in fiber content with corresponding reduction in moisture and plastics content in the medium weight materials exiting the separator described herein, according to certain illustrative embodiments.
SHIDELER teaches in para [0058] at the end of the system, one or two sorters may be used to separate the polyethylene terephthalate (PET) from the natural and colored high-density polyethylene (HDPE) plastics. [0060] Float-sinking is a process where, working on the principal of relative densities, materials could be separated based on density using a set of solutions with modified specific gravities to separate different materials. The results would be a series of "cuts" based on density, akin to an oil refinery defining cuts based on boiling point. The process would require separating particles when larger to prevent particles of different densities from sticking to each other and preventing an effective separation.
SHIDELER teaches in para [0009] the primary hammer mill and the secondary hammer mill can be disposed in a stacked arrangement. Also, the separator unit can be a cyclone separator, and the municipal solid waste stream can be pneumatically conveyed from the secondary hammer mill to the cyclone separator in a pneumatic conveyer. The method can include the additional step of adjusting the amount of air flow that is supplied to the pneumatic conveyer to control the separation of municipal solid waste in the cyclone separator. In certain illustrative embodiments, an inlet valve can be disposed on the pneumatic conveyer and exposed to outside atmospheric air. The method can include the additional step of opening the inlet valve and introducing outside atmospheric air into the pneumatic conveyer to adjust the amount of air flow that is supplied to the cyclone separator. The inlet valve can be a y-valve. In certain illustrative embodiments, the municipal solid waste can be pre-engineered to remove heavy weight materials prior to being introduced into the primary hammer mill as a pre-engineered municipal solid waste stream.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date, as evidenced by the references, especially in the absence of evidence to the contrary.
"The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). "If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability." Id. at 417. Furthermore, it has been held that obviousness is not rebutted by merely recognizing additional advantages or latent properties present in the prior art process and composition. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. Ex parte Obiaya, 227 USPQ 58, 60 (Bd.Pat. App. & Inter. 1985). “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical product, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Also see in re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963) (“From the standpoint of patent law, a compound and all its properties are inseparable.”)
Hence, an intended result of a process being claimed does not impart patentability to the claims when the general conditions of a claim are disclosed in the prior art.
Therefore, it would have been obvious to the person having ordinary skill in the art to have selected appropriate conditions, as guided by the prior art, in order to obtain the desired products. It is not seen where such selections would result in any new or unexpected results. Please see MPEP 2144.05, II: noting obviousness within prior art conditions or through routine experimentation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANTEL GRAHAM whose telephone number is (571)270-5563. The examiner can normally be reached on M-TH 9:00 am - 7:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached on 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHANTEL L GRAHAM/
Examiner, Art Unit 1771
/ELLEN M MCAVOY/Primary Examiner, Art Unit 1771
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