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 .
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 38, 40-41, 43, 47 and 49 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A claim is indefinite under 35 U.S.C. § 112(b) when it contains words of phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1309 (Fed. Cir. 2014). “[D]uring patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.” In re Zletz, 893 F.3d 319, 321 (Fed. Cir. 1989).
A single claim directed to both an apparatus and method may be indefinite under 35 U.S.C. § 112(b) when the functional language does not define the apparatus’ structure by describing its capabilities, but instead describes steps to be performed. Ultimate Pointer, L.L.C. v. Nintendo Co., Ltd., 816 F.3d 816, 827 (Fed. Cir. 2016) (describing the nuances between acceptable and indefinite functional language); see also MasterMine Software, Inc. v. Microsoft Corporation, 874 F.3d 1307, 1313-1315 (2017) (same). A claim reciting both a system and method for using that system, i.e., a hybrid claim, was indefinite because the claims did not apprise the skilled artisan of its scope. IPXL Holdings. L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005). According to the IPXL court, if it is unclear whether infringement of a claim occurs when one creates a recited system, or when someone actually uses the system, the claim is invalid under § 112(b). Id.; see also In re Katz, 639 F.3d 1303, 1318 (Fed. Cir. 2011) (holding claims indefinite where they “create confusion as to when direct infringement occurs because they are directed both to systems and to actions performed by ‘individual callers.’”).
Here, the preamble of claim 38 recites a system, while the body of the claim recites both structural features and a method step. In particular, claim 38 recites, in part, a system that includes a tank, acid contained in the tank, an entire anode from a disassembled spent rechargeable lithium ion cell or battery, and a stream from the tank including the recovered graphene. Claim 38 further recites that “graphene in the stream is recovered from the acidic solution in the tank separate from the soluble metals in the acid.” Inclusion of this method step makes it unclear whether infringement of claim 38 would occur if one were to create a system having all the recited structural features, or if actual use of the system to recover graphene in the stream from the system’s acidic solution separate from soluble metals in the acid is necessary for infringement. Thus, like IPXL, the hybrid nature of claim 38 creates ambiguity as to the claim’s scope.
Response to Arguments
Applicant's arguments filed 9/15/2025 have been fully considered but they are not persuasive.
The applicant argues that they do not believe claim 38 is indefinite because it recited system capabilities on how the system operated functionally (e.g., recovered graphene is separate from soluble metals in the acid) which is distinguished from an independent user’s practicing a method (see Remarks filed 9/15/2025 on p.4-6).
This is not found to persuasive because, following the analysis of the Patent Board Decision dated 7/15/2025, claim 38 reciting that “graphene in the stream is recovered from the acidic solution in the tank separate from the soluble metals in the acid.” is still considered to be a method step and not mere capability. Thus, the hybrid nature of claim 38 creates ambiguity as to the claim’s scope. The claim amendment filed 9/15/2025 is not sufficient to overcome the rejection under 35 U.S.C. § 112(b).
Although the claim amendment filed 9/15/2025 introduces further structure in the form of a stream (“a stream from the tank including the recovered graphene”), the claim limitation “graphene in the stream is recovered from the acidic solution in the tank separate from the soluble metals in the acid.” merely shifts the method step of recovering graphene to the stream which still part of the apparatus. Thus, it is still unclear whether infringement of claim 38 would occur if one were to create a system having all the recited structural features, or if actual use of the system to recover graphene in the stream from the system’s acidic solution separate from soluble metals in the acid is necessary for infringement. The claim amendment does not adequately address the above nor does it change the method step to a mere capability of the apparatus.
Further with respect to applicant’s arguments directed to claim rejections under 35 U.S.C. §103 (see Remarks filed 9/15/2025 on p.6-11), these are arguments are moot because the Patent Board Decision dated 7/15/2025 procedurally reversed the obviousness rejections of claims 38, 40-41, 43, 47 and 49 having determined that the subject matter of the claims is indefinite (see Patent Board Decision dated 7/15/2025 on p.6-7).
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.
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/James Lee/Primary Examiner, Art Unit 1725 11/10/2025