The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 30, 2025 has been entered.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 9-10, 12-13, 15-18 and 20-22 are rejected under 35 U.S.C. 112(a), as failing to comply with the enablement or the written description requirements. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Alternatively, the claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed, had possession of the claimed invention. In claim 9, the furan concentration is quantified through a correction based on a correlation between a precise analysis and a simple analysis with regard to the color development degree of the extraction solution. The claim defines the precise analysis as a quantitative value through color column separation based on high performance liquid chromatography in a laboratory to analyze a furan compound in insulating oil of a transformer. In the cited Zhang paper (2006 IEEE PES Power Systems Conference and Exposition), the last paragraph in the left column on page 1089 teaches that the concentration of individual furans in transformer oil can be separately measured by high performance liquid chromatography (HPLC). The method is now standardized (IEC 1198), but requires time-consuming pre-extraction of the furans. A ‘direct-injection’ HPLC process has been proposed which allows a fivefold reduction in technician time. The cited Unsworth paper (IEEE Transactions on Electrical Insulation 1990) was one of references cited relative to the standardized method that requires pre-extraction of the furans and the cited Lessard paper (Proceedings of 1995 Conference on Electrical Insulation and Dielectric Phenomena 1995) was the reference cited relative to the ‘direct-injection’ HPLC process. In other words there are several different HPLC procedures from which one can obtain and/or derive the precise analysis concentration data. In looking through the instant disclosure, examiner was not able to determine if applicant intended the precise analysis to be derived from either of these HPLC methods or a different one that could be classified as utilizing a color column separation. If all HPLC methods produce equivalent results, then it shouldn't matter which method is utilized. However, that does not appear to be the case. The cited Liu paper (Chromatographia 2020) looked at the effects of furoic acid and furfuryl alcohol on the detection of furfural in transformer oil using the traditional liquid–liquid extraction combined with high-performance liquid chromatography (LLE-HPLC) technology, in which, methanol was used as extraction agent and a C18 column and an ultraviolet−visible detector were used as the separation and detection units for the determination of the furfural. The procedure used by Liu differs from that of Unsworth mainly in the extractant used. The results show that the presence of furfuryl alcohol or furoic acid increases the extraction efficiency of furfural from 42.07 to 73.21% and 65.33%, respectively. The extraction efficiency of furfural decreases when the concentrations of furfuryl alcohol increase from 0.2 to 0.6 mg L−1, but the extraction efficiency of furfural increases with the concentrations of furoic acid from 0.2 to 0.6 mg L−1. This indicated that the accuracy of detection and extraction efficiency of furfural in transformer oil by LLE-HPLC technology may be affected by the furfuryl alcohol or furoic acid dissolved in transformer oil. In addition to this, the cited Morais paper (IEEE Transactions on Dielectrics and Electrical Insulation 1999) teaches that furfural analysis by high performance liquid chromatography (HPLC) has gained increasing favor as a means of estimating degradation of insulating papers in power transformers. They studied this technique in some detail as applied to thermally upgraded kraft papers and found significant differences in the results for papers of several manufacturers, which could influence diagnosis after extended operation. As a result, they believe that the practice of simply identifying a transformer as manufactured with common or thermally upgraded paper will not be enough to interpret results at a later date. A detailed identification of the paper, and information on its accelerated aging behavior should be kept on record. In the Batista paper (Cellulose 2008) Table 3 on page 502 shows a comparison of HPLC measurement results and colorimetric reagent measurement results from the aniline method for insulator oil heated at 120 °C in the absence of paper that would normally give rise to furanic compounds. Of relevance to the instant claims is the fact that there is an increase in the aniline signal as the time goes on which points to an interference based on the oil itself. This would point to the aniline reagent test results not being reliable. In other words, the instant claims are not enabled due to the problems noted by Batista, Liu and Morais with respect to the interference from compounds produced from the oil, the extraction-HPLC method and the difference in the behavior of papers being used for insulation in the transformers. Additionally the lack of a disclosure of the specific HPLC procedure being used makes it difficult to say that applicant was actually in possession of the claimed invention. For example is the HPLC data taken on the same samples as the simple analysis and/or are the samples used for each test/measurement produced through the same extraction procedure or can one use data from a sample without extraction as the HPLC test? Additionally examiner notes that the fourth full paragraph on page 12 of the instant specification teaches that the column is packed with 500 µl (total volume) of predetermined resin. From the preceding paragraph on page 12, it is clear that this is an explanation of step S12 in figure 1 relating to the instantly claimed extraction procedure. The instant disclosure lacks any further description of what constitutes the predetermined resin. Thus there are questions related to its composition, purpose and possible effects on the oil sample components (e.g. adsorption of possible oil sample components). Claim 20 has the same sort of language so that the problems of claim 9 are also present in claim 20 and those dependent therefrom.
Claims 9-10, 12-13, 15-18 and 20-22 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. In claim 9, it is not clear what a quantitative value through color column separation based on high performance liquid chromatography is trying to identify. Is it an HPLC method of the aniline acetate reaction product, an HPLC analysis of the extraction product or an HPLC analysis of the oil through a direct injection process? For examination purposes, it will be treated by examiner as being met if the colorimetric results are compared to and found to correlate well with and HPLC measurement result. Additionally, with respect to claim 9, it is not clear if the specific wavelength range is for a specific reagent or if there are other reagents that can be measured in the wavelength range of 520 nm to 530 nm. For example the cited Ariffin paper shows a furfural aniline complex spectrum in figure 1 that has a maximum absorption at 518 nm. Page 137 of the paper teaches that the aniline acetate reagent is a composition including aniline, glacial acetic acid and 95%ethanol in 1:1:8 (v/v/v) ratios. In the Batista paper mentioned above Figure 4 shows a furfural aniline product spectra that the last paragraph on page 501 teaches as having a maximum at 520 nm. Page 499 of that paper teaches an aniline acetate composition of a 1:20 dilution of distilled aniline in a mixture of 55% (v/v) acetic acid and 45% (v/v) toluene. Additionally, in claim 9, the “mixed by shaken side to side at 90 degrees” language is not clear. Is the side to side shacking movement in a horizontal plane and the 90 degrees mean that in addition to moving back and forth in one direction there is an addition back and forth movement in a second direction that is perpendicular to the first direction (see the drawing below looking at the horizontal plane movement from a vertical vantage point)?
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Alternatively is applicant trying to capture the side to side (back and forth) rotation from the vertical direction shown in figure 26? Finally it is not clear if the deterioration diagnostic criteria are related to the correction being made based on the precise analysis or if they relate to how the deterioration results are presented. Do they require one to know the voltage levels that the transformer is operating at or does the analysis provide/display multiple results for different transformer operating voltages? Claim 20 has the same sort of language as found in claim 9 so that the problems of claim 9 are also present in claim 20 as well and those dependent therefrom. Claims 16-18 are dependent from a cancelled claim, claim 8. For examination purposes they will be treated as if dependent from claim 9.
Applicant's arguments filed December 30, 2025 have been fully considered but they are not persuasive. In response to the changes the rejections under 35 U.S.C. 112(a) and 35 U.S.C. 112(b) have been modified to account for the cancelation of claims and the amendment of the remaining independent claims. Examiner notes that there are arguments directed at anticipation and obviousness rejections that were withdrawn by examiner in the previous office action. With respect to the rejections under 35 U.S.C. 112(a) and 35 U.S.C. 112(b), applicant’s general statement that the removal of the work “shaken before 50 times to clarify aspect of the present application fails to respond to the specific things that examiner has pointed to in these rejections. For that reason, the argument is not persuasive. As an example of issues with the description, examiner points to the lack of a clear/full description of the predetermined resin explained above in the rejection under 35 U.S.C. 112(a). It is not clear if the resin is something that does not affect sample and/or reagent composition and is present for mixing purposes, if it adsorbs one or more of the sample components or affects the intensity of the furfural reaction product. In other words the description is actually critically incomplete. Additionally there are problems with the “insulating-oil sample and the extraction solvent are mixed and shaken side to side at 90 degrees for 1 minute or shaken 50 times by a sample mixer” language found in claim 9. The problem that examiner was referring to was not that it was being mixed and/or shaken a certain number of times or a certain length of time. The problem that examiner is pointing to is the clarity of the description of how it is to be shaken, “side to side at 90 degrees” portion is only clear if one looks at figure 26 or interprets it based on what is shown in figure 26 which shows the extraction container rotated side to side or back and forth through an angle of 90 degrees bisected by the vertical direction. Thus the arguments are not persuasive.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited art is related to transformer insulation aging and methods to determine a degree of polymerization.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Arlen Soderquist whose telephone number is (571)272-1265. The examiner can normally be reached 1st week Monday-Thursday, 2nd week Monday-Friday.
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/ARLEN SODERQUIST/ Primary Examiner, Art Unit 1797