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 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 6000 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].
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 give 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 free of water. 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].
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.
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).
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.
Response to Arguments
Applicant's arguments filed 2025/10/30 have been fully considered but they are not persuasive. Because;
In response to applicant’s argument (pages 7-8) that; “In the case in which the diluent gas contained in the dielectric composition is carbon dioxide, as shown in the evaluation results shown in Tables 3, 5, and 7 of the present application, if the water content is less than or equal to the upper limit of 6000 ppm, the appearance of the metal pieces was evaluated as grade C or better. In other words, as described in paragraph [0059] of the present specification, 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. On the other hand, in the case in which the diluent gas contained in the dielectric composition is air, as is clear from the evaluation results shown in Tables 4, 6, and 8 of the present application, if the water content is less than or equal to the upper limit of 800 ppm, the appearance of the metal pieces was evaluated as grade C or better. As described in paragraph [0059] of the present application, in the case in which the diluent gas contained in the dielectric composition is air, the presence of air promotes hydrolysis of the dielectric contained in the dielectric composition. Therefore, the upper limit of the water content in the dielectric composition is lower in the case in which air is used as the diluent gas than in the case in which
carbon dioxide is used as the diluent gas. However, if air is used as a diluent gas, it is possible to limit the amount of water in the dielectric composition to 800 ppm or less.”, 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) concerning Kieffel it is noted that the argument is, basically, directed to prior arts of Robin and Petrov which are discussed and responded to above.
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- 8 PM Flex..
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/M.R.A./
Examiner, Art Unit 1767
2026/02/06
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767