DETAILED ACTION
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 § 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, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 5 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Rached (US 2018/0247779 A1) in view of Kramer et al. (WO 2014/187940 A1).
Regarding claims 1, 5 and 11-12, Rached teaches an electrical system (a medium or high-voltage electrical device with a sealed container or chamber for containing dielectric fluid) comprising an insulating dielectric fluid as electrical insulation and extinguishing medium for electric arcs elimination in a medium or high-voltage electrical substation appliances (instant claim 12); [2, 4, 9, 11, 18, 39, 70], comprising; a)- a gaseous medium; [19], i)- non-flammable hydrofluoroolefin such as cis or trans 1,1,1,4,4,4-hexafluoroolefin (HFO-1336mzzZ or HFO-1336mzzE); [44-45], ii)- one or more gaseous carriers (instant claim 5) such as N2, O2 and air; [25, 48], wherein the amounts of hydrofluoroolefin (instant claim 11) is chosen in any desired range including 1-15% as well; [68].
With respect to the limitation “a closed hermetic container”, it is properly noticed that both Rached and Kramer do indeed teach such chambers in their teaching. Rached teaches a “sealed chamber”; [abstract], or “leak-tight chamber”; [29, claim 25], and similarly Kramer teaches a high voltage switch-gear device with “closed container”; [pg. 6: 25-30, pg. 30: 20-25, pg. 31: 17-20], or insulated space; [abstract, pg.1: 1-25], which are construed as clearly a hermetic container, as instantly claimed.
Regarding claims 1, and 10, Rached does not teach a drying agent (b). However, the analogous art of Kramer teaches an electrical apparatus (high voltage switchgear; [pg.1: 13, 19, pg.27: 8, 21, pg.39: 21], containing an insulating fluid, comprising drying agents such as zeolite, calcium oxide (CaO) and molecular sieves with a pore sizes in the range of 3-13 A◦; [pg. 2: L1-20. 8: L1-5, 17-21]. At the time before the effective filing date of the claimed invention, it would have been obvious, to a person of ordinary skill in the art, to select the drying agents of Kramer with the same properties (as instantly claimed) and with the motivation of being able to adjust the insulating efficacy (i.e. arc-prevention) of the gaseous medium by removing/absorbing the water and other unwanted material as taught by Kramer above.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Rached (US 2018/0247779 A1), Kramer et al. (WO 2014/187940 A1), as applied to claim 1, and further in view of Kieffel et al. (US 2014/0196932 A1).
Regarding claims 2-4, Rached does not, expressly, teach the instantly claimed hydrofluoroolefin with 3 carbon atoms. However, the analogous art of Kieffel teaches a gaseous electrical insulation and/or electrical arc extinguishing medium comprising hydrofluorolefin with 3 carbon atoms such as trans-1,3,3,3, tetrafluoropropene (HFO-1234zeE); [29, claims 2, 9]. At the time before the effective filing date of the claimed invention, it would have been obvious, to a person of ordinary skill in the art, to also use (by adding) the tetrafluoropropene compound with the motivation of further enhancing the insulating properties of medium composition and also avoiding the global warming potential (GWP) of SF6 by replacing it with hydrofluoroolefin(s) as taught by Kieffel; [7, 15].
Response to Arguments
Applicant's arguments filed 2026/03/11 have been fully considered but they are not persuasive. Because;
In response to applicant’s argument (pages 7 to 8; 1st paragraph, 9) that; “The Examiner further acknowledges that Rached does not teach a drying agent. Never the less, the Examiner contends it would have been obvious to add drying agents taught by Kramer (e.g., molecular sieves) to Rached's system to remove water and improve insulating efficacy. The Applicant respectfully submits that such combination constitutes improper hindsight. The rationale used in making such rejection oversimplifies the technical problem solved by the present invention and ignores specific teachings in Kramer that would have led a person having ordinary skill in the art (PHOSITA) away from making the proposed combination.” and “The objective technical problem solved by the present invention is not merely to remove water, but rather to selectively remove water from a specific dielectric gas mixture without simultaneously degrading the composition and dielectric properties of that mixture through co-adsorption of its essential components”. It is noted that; I)- The assertion the combination constitutes an improper hindsight is not persuasive. Note that; it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). II)- The assertion “oversimplification” of instantly claimed system comprising the instant composition is misplaced and not commensurate with scope of the claims at hand. The very use of drying agent, for elimination of corrosion causing water and humidity, is well stablished technical fact which is exclusively limited to dielectric, insulating, fluids. 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. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). III)- The argument that “selectively remove water from a specific dielectric gas mixture without simultaneously degrading the composition and dielectric properties of that mixture….”, does not appear to be in any contradiction with the teaching of Kramer especially in view of the fact the no matter where a desiccant is placed its physio-chemical properties and function would be the same that of absorbance water and humidity. The claim language is directed to a composition which is identically taught by combination of prior arts of record. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant, In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 91 9 F.2d 688,16 USPQ2d 1897 (Fed. Cir. 1990) cert. denied, 500 U.S. 904 (1991). Also, while there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention, Ex parte Levengood, 28 USPQ2d 1300,1302 (Bd. Pat. App. & Inter. 1993).
In response to applicant’s argument (page 8) that; “Kramer addresses this same nuanced problem. However, Kramer's solution is not to simply mix
a desiccant with the insulation medium. Instead, Kramer teaches a complex mechanical arrangement where the drying agent (10) is isolated within a "contamination-reduction space" (12) and is physically separated from the main "insulation space" (6) by a semi-permeable membrane (14) (Kramer, Abstract; Fig. 1). Kramer explicitly states that this arrangement functions as a "pre-filter" and that "only the permeate of the pre-filtration is allowed to contact the molecular sieve" (Kramer, pg. 3, lines 20-31 ). This demonstrates that Kramer appreciated the risk of direct contact between the molecular sieve and the insulation medium. Kramer's entire apparatus is a teaching away from the simple combination proposed by the Examiner, as it instructs a PHOSITA that to avoid negative impacts on the insulation medium's integrity, physical separation is necessary.”, I)- The explanation above are related to the instrumental make up of the prior arts and directed to almost a method limitations which are not commensurate with scope of the claims at hand. In short, the features upon which applicant relies 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).
II)- it should be noted that, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant’s argument (page 8) that; “As explained in the present application as filed, this specific combination yields an unexpected and synergistic result. The polar surface of the claimed molecular sieve exhibits a strong preferential affinity for highly polar water molecules over the significantly less polar carrier gases (e.g., N2, 0 2) and the HFO molecules. This is supported by the disclosure at page 8, lines 18-20 which states, "The fact that Response to non-final Office Action dated Dec. 11, 2025 the surface is polar means that it attracts, with greater intensity, those more polar molecules with a preference over the less polar ones.”, I)- Note that; ]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.'~ In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). II)- Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d1091, 231 USPQ 375 (Fed. Cir. 1986) (differences in sedative and anticholinergic effects between prior art and claimed antidepressants were not unexpected). In In re Waymouth, 499 F.2d 1273, 1276, 182 USPQ 290, 293 (CCPA 1974), the court held that unexpected results for a claimed range as compared with the range disclosed in the prior art had been shown by a demonstration of “a marked improvement, over the results achieved under other ratios, as to be classified as a difference in kind, rather than one of degree.” Compare In re Wagner, 371 F.2d 877, 884, 152 USPQ 552, 560 (CCPA 1967) (differences in properties cannot be disregarded on the ground they are differences in degree rather than in kind); Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App.& Inter. 1992) (“we generally consider a discussion of results in terms of differences in degree’ as compared to differences in kind’ . . . to have very little meaning in a relevant legal sense”), [MPEP 716.02].
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Dr. M. Reza Asdjodi whose telephone number is (571)270-3295. The examiner can normally be reached on 10 AM- 7 PM Flex..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dr. Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.R.A./
Examiner, Art Unit 1767
2026/06/02
/MARK EASHOO/ Supervisory Patent Examiner, Art Unit 1767
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