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 .
Applicant’s amendment filed 06/16/2026 is acknowledged. Claims 1, 3 and 4 are pending. Claim 2 is cancelled.
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, 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0101524 to Makino et al. (“Makino”).
Regarding claim 1, Makino teaches a method of extracting chemical substances from used molding sand (abstract, para [0013] – [0016]) comprising: a) preparing a mixture of used molding sand and liquid, wherein the used molding sand includes a sand material and at least one chemical substance (para [0013] – [0016], water, active clay and Oolitic layer); and b) cleaning the mixture via an ultrasonic cleaning process to separate and extract the at least one chemical substance from the sand material (para [0013] – [0016]).
Makino does not explicitly teach the method wherein a volume ratio of the used molding sand to the liquid is 1:10 in the mixture. However, Makino discloses that weight of the water is three to ten times the weight of the sand (para [0030]). Since dry sand is about 12.5 lb/gal and water is about 8.34 lb/gal, the sand to water density is about 1.5. So, for a 1:10 volume as recited, using 1 gallon of sand and 10 gallons of water yields 12.5 lbs of sand and 83.4 lbs of water, such that the water weight is about 6.7 times the weight of sand. And 6.7 falls within the recited range of 3-10.
In the case where claimed ranges overlap or lie inside ranges disclosed by the prior art, or where the claimed ranges or amounts do not overlap with the prior art but are merely close, a prima facie case of obviousness exists. MPEP 2145.05. Further, since too little water risks insufficient cleaning, while too much water risks waste, the amount of water used is a result-effective variable, and the skilled artisan would have found it obvious to optimize the amount of water through routine experimentation with predictable results.
Regarding claim 3, Makino does not explicitly teach the method wherein in the step b) of cleaning the mixture the ultrasonic cleaning process uses a frequency that ranges from 30 kHz to 50 kHz. However, Makino discloses a frequency that ranges from 20 kHz to 400 kHz (para [0030]). In the case where claimed ranges overlap or lie inside ranges disclosed by the prior art, or where the claimed ranges or amounts do not overlap with the prior art but are merely close, a prima facie case of obviousness exists. MPEP 2145.05.
Regarding claim 4, Makino does not explicitly teach the method wherein in the step b) of cleaning the mixture the ultrasonic cleaning process operates at a power that ranges from 60 W to 80 W. However, since an operating power that is too low risks insufficient cleaning, while an operating power that is too high risks waste and personal and equipment harm, the operating power is a result-effective variable and the skilled artisan would have found it obvious to optimize the operating power through routine experimentation with predictable results.
Response to Arguments
Applicant's arguments filed 06/16/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that the references fail to show certain features of the invention (remarks, page 5, last paragraph, page 6, second paragraph), it is noted that the features upon which applicant relies (i.e., true density, rather than bulk density, must be utilized; and at least one chemical substance is directly extracted from the sand material for use in industry) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Further, and with respect to the issue of what density must be used, it is noted that arguments of counsel cannot take the place of factually supported objective evidence. MPEP 2145.
Regarding applicant’s argument that the initial value of 3-10 the weight of sand may be inappropriate since, it is alleged, Makino discloses that the volume of liquid is variable (remarks, page 6, first paragraph), it is not clear how this distinguishes the claimed invention. Indeed, such variability suggests that broader Makino disclosure includes a broader range than 3-10, making it even more likely to overlap with the presently claimed ratio. Further, it is noted that the present claims do not require the ratio be limited to any particular point in time.
Conclusion
Applicant's amendment necessitated the new ground(s) 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 ERIC GOLIGHTLY whose telephone number is (571)270-3715. The examiner can normally be reached M-F: 10 am - 7 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kaj Olsen can be reached at (571) 272-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC W GOLIGHTLY/Primary Examiner, Art Unit 1714
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