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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2026/05/01 has been entered.
This Office action is in response to Applicant's amendment filed 2026/05/01. Applicant has amended claims 1 and 14. Claims 1-3 was canceled. Claims 11-13, 21-23 were withdrawn. Currently, the remaining claims 4-10, 14-20 and 24-29 are subject to examination.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5-6 (dependent on claim 4) state the limitations “halogenated gaseous of 70% which is much broader that the same limitations on claim 4 namely “less than 25%”.
Claim 8 states the amount of water content of diluent gas from 2.0 ppm to 6000.0 ppm which is more that the same limitations on independent claim 4.
Claims 15 and 16 have the higher amounts of halogenated olefins that their independent claim 14.
Claim 18 has the amount of water of 2 to 6000 ppm which is a corresponding higher amount of the water on independent claim 14.
Applicant is required to correct the above limitations.
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 4-10, 24, 26 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Robin (US 2013/0292599 A1) in view of Petrov et al. (US 2021/0139441 A1) as evidenced by TRI dry Air Testing Methods and Carbon dioxide water content data (2026-02).
(Note that Petrov et al is same as WO 2018/165623 A)
Regarding claims 4-6 and 10, Robin teaches a dielectric composition (abstract, 4, 12, 67, 74, claim 17) comprising (E)-1-chloro-2,3,3,3-tetrafluoropropene (HCFO-1224yd) and (E)- 1-chloro-3,3,3-trifluoropropene (HCFO-1233zd); [18, 64, claim 7], wherein Robin does not indicate any amount of water and thus the composition does not comprise any water (instant claim 4; less than 1000 ppm, includes zero amount) . Composition is also used for its extinguishing (instant claim 10) properties (i.e. arc or fire); [abstract, 67,73, 75, claim 16]. Composition is used in gaseous dielectrics; [4, 67], wherein fluorinated propene is present in concentrations (instant claim 5) of 1-99% or 67-72%; 55: table 7, table 8]. Note that (the current amendment (25% by volume) Robin indeed teaches any amount of combination of the instantly claimed E and Z isomers of halogenated olefins could/would be chosen (as well as any combinations or mixtures”) for the dielectric composition; [20].
Regarding claims 4 and 8, Robin does not teach the carbon dioxide as a diluent. However, the analogous art of Petrov teaches a dielectric composition (2, 4, 23, 24) comprising the very same (E) and (Z) isomers of 1-chloro-2,3,3,3-tetrafluoropro- pene as instantly claimed; [25128, 267, 688, claims 22, 75], wherein composition further comprises carbon dioxide as diluent; [25, 271, claim 75]. 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 include an inert diluent such as carbon dioxide with the motivation of adjusting the desired property of composition according to its intended application(s), i.e. insulator, arc extinguisher or a surface cleaning composition for specific devices as taught by Petrov. With respect to the higher than zero amounts of water in the composition; I)- It is noted that the presence of water in the systems operating with dielectric mediums (insulating agent) would adversely affect their insulating properties and thus it is obvious for the amount of water to be in minimal amount (i.e. arching effects). Therefor this is a matter experimental laboratory practice to lower the amount of water in the system, which does not impart patentability. II)- The TIR Water content Testing Method of dry air and CO2 water content(s) provides (please see the updated version of this reference) gaseous fluids such as air (a combination of mainly carbon dioxide, nitrogen and oxygen) is converted to its dry form with different methods (desiccant dryer or refrigerated dryer) wherein the water content of fluid (i.e. air) is in the ranges such as 67 ppm, 937 ppm and 3900 ppm; [page 3]. Furthermore note that the water content of CO2 gas (available industrially) could be as low as 10 ppm; [page 3]. At the time before the effective filing date of invention, it would have been obvious to utilize the available dry air and carbon dioxide with the instantly claimed water amount with the motivation of arriving at more efficient operation of the dielectric system of halogenated C2-C4 olefin (avoid arching and diminished insulation).
Regarding claim 7, The Office realizes that all the claimed effects or physical properties, such as “condensation temperature” are not positively stated by the reference. However, the reference teaches all of the claimed reagents, in the claimed ranges, was prepared under similar conditions, and that the original specification specifies that the properties arise from a combination of specific ingredients or process step and that it is rendered obvious by the applied art. Therefore, the claimed effects and physical properties, i.e. condensation temperature, would expectedly be achieved by a composition with all the claimed ingredients. If it is the applicants’ position that this would not be the case: (1) evidence would need to be presented to support applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients.
“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 structure, 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) [see MPEP 2112.01].
Regarding claim 9, it is noted that the composition of Robin as claimed would inherently have insulating properties for the mere reason of halogenated olefin being identical to what is claimed instantly.
Please note that; Fluorocarbons and their derivatives, like 1-chloro-2,3,3,3-tetrafluoropropene, are often used in insulation applications. Fluorocarbon liquids are marketed as insulants for electrical equipment, combining high dielectric strength and resistivity with low permittivity and dielectric loss. In addition, fluorocarbons are used as foam blowing agents to create high-performance and low-density insulation foams for building insulation and domestic appliances, please consult a general organic chemistry textbook(s) for fluorinated olefinic compounds.
Regarding claims 24, 26 and 28, Robin teaches a dielectric composition (abstract, 4, 12, 67, 74, claim 17) comprising (E)-1-chloro-2,3,3,3-tetrafluoropropene (HCFO-1224yd) and (E)- 1-chloro-3,3,3-trifluoropropene (HCFO-1233zd); [18, 64, claim 7], wherein composition does not include any water as further explained by claim 4 above. With respect to the amount of gaseous state by percent volume (instant claim 28), Robin does not teach this limitation expressly. However, it teaches the amount of gases in different mole percent. This is because a volume of any given gas (assuming ideal gas Law; PV= nRT) this volume is a function of temperature and pressure and the only constant parameter will be the number of moles in the above equation, which is construed as a matter of routine laboratory experimentation and does not impart patentability. It would have been obvious to select a required amount(s) of dielectric gases in a given P, V and T condition with the motivation of arriving a desired and intended insulation system.
Claims 14-20, 25, 27 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Robin (US 2013/0292599 A1) in view of Kieffel et al. (US 2021/0233159 A1) as evidenced by TRI dry Air Testing Methods and Carbon dioxide water content data (2026-02).
Regarding claims 14-16 and 20, Robin teaches a dielectric composition (abstract, 4, 12, 67, 74, claim 17) comprising (E)-1-chloro-2,3,3,3-tetrafluoropropene (HCFO-1224yd) and (E)- 1-chloro-3,3,3-trifluoropropene (HCFO-1233zd); [18, 64, claim 7], wherein composition is construed as being free of water (please see claim 4 above). Composition is used in gaseous dielectrics; [4, 67], wherein fluorinated propene is present in concentrations (instant claim 5) of 1-99% or 67-72%; 55: table 7, table 8]. Composition is also used for its extinguishing (instant claim 20) properties (i.e. arc or fire); [abstract, 67,73, 75, claim 16]. Note that (the current amendment (25% by volume) Robin indeed teaches any amount of combination of the instantly claimed E and Z isomers of halogenated olefins could/would be chosen (as well as any combinations or mixtures”) of such isomers for the dielectric composition; [20].
Regarding claims 14 and 29, Robin does not teach the air as a diluent. However, the analogous art of Kieffer teaches a dielectric composition, for use as an
Insulation and/or arch extinguishing medium and a gas insulated medium voltage electrical device comprising fluorinated olefins (abstract, 14-15) wherein composition further comprising dry air as diluent; [19, claims 5, 12]. The dry air is construed as having no water amount. 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 include an inert diluent such as dry air with the motivation of adjusting the desired property of composition according to its intended application(s), i.e. insulator or arc extinguisher composition for specific devices as taught by Kieffer. Note that regular clean air (a combination of water, oxygen, nitrogen and CO2 nitrogen and oxygen) is converted to its dry form with different methods (desiccant dryer or refrigerated dryer) wherein the water content of fluid (i.e. air) is in the ranges such as 67 ppm, 937 ppm and also as low as 10 ppm ppm; [pages 1-2], which is evidenced by TIR Water content Testing Method. “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected [the claimed product and a product disclosed in the prior art] to have the same properties.” Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). [MPEP 2131.03, R6].
Regarding claim 17, The Office realizes that all the claimed effects or physical properties, such as “condensation temperature” are not positively stated by the reference. However, the reference teaches all of the claimed reagents, in the claimed ranges, was prepared under similar conditions, and that the original specification specifies that the properties arise from a combination of specific ingredients or process step and that it is rendered obvious by the applied art. Therefore, the claimed effects and physical properties, i.e. condensation temperature, would expectedly be achieved by a composition with all the claimed ingredients. If it is the applicants’ position that this would not be the case: (1) evidence would need to be presented to support applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients.
“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 structure, 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) [see MPEP 2112.01].
Regarding claim 19, it is noted that the composition of Robin as claimed would inherently have insulating properties for the mere reason of halogenated olefin being identical to what is claimed instantly.
Please note that; Fluorocarbons and their derivatives, like 1-chloro-2,3,3,3-tetrafluoropropene, are often used in insulation applications. Fluorocarbon liquids are marketed as insulants for electrical equipment, combining high dielectric strength and resistivity with low permittivity and dielectric loss. In addition, fluorocarbons are used as foam blowing agents to create high-performance and low-density insulation foams for building insulation and domestic appliances, please consult a general organic chemistry textbook(s) for fluorinated olefinic compounds.
Regarding claims 25 and 27, Robin teaches a dielectric composition (abstract, 4, 12, 67, 74, claim 17) comprising (E)-1-chloro-2,3,3,3-tetrafluoropropene (HCFO-1224yd) and (E)- 1-chloro-3,3,3-trifluoropropene (HCFO-1233zd); [18, 64, claim 7], wherein composition does not include any water.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Robin (US 2013/0292599 A1) in view of Kieffel et al. (US 2021/0233159 A1) as evidenced by TRI dry Air Testing Methods and Carbon dioxide water content data (2026-02).
Regarding claim 18, Robin does not teach the water amount of diluent gas within 2.0 ppm to 6000 ppm. However as indicated above the diluent gas, namely air, is provided by Kieffel as combined with Robin. With respect to the higher than zero amounts of water in the composition; I)- It is noted that the presence of water in the systems operating with dielectric mediums (insulating agent) would adversely affect their insulating properties and thus it is obvious for the amount of water to be in minimal amount (i.e. arching effects). Therefor this is a matter experimental laboratory practice to lower the amount of water in the system, which does not impart patentability. II)- The TIR Water content Testing Method and CO2 provides gaseous fluids such as air (a combination of mainly carbon dioxide, nitrogen and oxygen) is converted to its dry form with different methods (desiccant dryer or refrigerated dryer) wherein the water content of fluid (i.e. air) is in the ranges such as 67 ppm, 937 ppm and 3900 ppm; [page 1]. At the time before the effective filing date of invention, it would have been obvious to lower the amount so water in the dielectric composition for arriving at more efficient operation of the system (avoid arching and diminished insulation).
Response to Arguments
Applicant's arguments filed 2025/10/30 have been fully considered but they are not persuasive. Because; Please note that the presented arguments are actually the same as previous ones, and thus will be responded briefly.
A- In response to applicant’s argument (pages 7-8) that; “Specifically, in the case in which the diluent gas contained in the dielectric composition is carbon dioxide, as shown in the evaluation results in Tables 3, 5, and 7 of the present application, it has been specifically confim1ed that if the water content is less than or equal to the upper limit of 1000 ppm and the content of the halogenated olefin in a gaseous state is less
than or equal to the upper limit of 25% by volume, the appearance of the metal pieces is
evaluated as grade A. In other words, as described in paragraph [0059], by using carbon dioxide as the diluent gas included in the dielectric composition, it is possible to suppress the hydrolysis of dielectric materials. As a result, the upper limit of the water content in the dielectric composition can be increased..”. This argument is identical to the one on previous action and is not persuasive. The prior art of Robin has no concern regarding presence of water, at all, and thus construed as being free of water in absence of any evidence to the contrary. Furthermore, regarding the instantly amount of 25% for the halogenated olefin(s), Robin’s teaching has rendered this obvious as well (please see the citation on the action above).
or similarly; “The technical concept of suppressing the hydrolysis of the dielectric present in the dielectric composition, by specifying the type of diluent gas and the water content in the dielectric composition, is neither disclosed nor suggested by Robin or Petrov”, it is noted that the above assertion/argument is actually concerned with the method of preparing the claimed composition wherein it is simply a composition claims and no more. The effects of controlling the moisture or water levels (i.e. lower or higher limits) is acknowledged, however this is only dependent on the diluent dielectric types (dry air or carbon dioxide) as directly construed from the claims and examined correspondingly. The prior arts of record do indeed teach the compositional conditions that provides applicant argued upper or lower limits of water content resulting from CO2 and H2O diluents correspondingly.
In response to applicant’s argument (page 8) that; “ However, Petrov is directed to the use of fluorinated epoxides for a wide variety of uses such as refrigeration and air conditioning, and the halogenated olefins of the present application are only used as minor components. Moreover, the use of carbon dioxide is only one element out of a long list of chemical species including several fluorinated hydrocarbon gases (at [0271] of Petrov). Therefore, lacking any details given in the references, the person of ordinary skill in the art would have had to test all the different laundry list of elements from Petrov to arrive at the use of carbon dioxide, creating polymers with all the different chemical components, and testing all of the recited gas environments, to possibly arrive at the present claims, which does not have a reasonable expectation of success”. It should be noted that; “the prior art’s mere disclosure of more than one alternative (i.e. laundry list) does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004), [MPEP 2141.02].
In response to applicant’s argument (page 9) that’ The rejection of claim 18 under 35 USC§ 103 as being unpatentable over Robin in view of US 2014/0233159 (Kieffel) as evidenced by TRI Air Testing Methods is respectfully traversed. Kieffel at most specifies that "dry air" can be used without providing a specific water content, ,whereas the present claims recite a diluent gas comprising carbon dioxide.”, it is noted that: I)- the absence of water limitation is already addressed by Robin and it is construed that no addition of another diluent should contain any water. II)- Furthermore, the term “dry air” is not commensurate with scope of the claims and actually a non-existent limitation which renders the argument moot.
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- 8 PM Flex..
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/M.R.A./
Examiner, Art Unit 1767
2026/05/15
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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