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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Examiner Note
Applicant has changed “equals” to “is substantially equal to” in independent claims 15 and 33. The Examiner does not believe that this amendment substantively changes the claims scope. Adding “substantially” merely allows for real-life conditions of variations due to manufacturing variations that occur in fabricating the high-voltage device of claims 15 and 33. See Examiner’s definition of the term “substantially” below.
Response to Arguments
Specification (Applicant remarks of 12/29/25, p 9).
Applicant’s states “[t]he specification has not been amended in response to the specification objection. The specification refers to the "range of 1" which would be understood by a person of ordinary skill in the art as low permittivity. That is, close to 1--e.g., gases and materials such as PTFE (discussed in the application). The person of ordinary skill would understand the specification as describing the relative permittivity as above, but close to, 1--i.e., low.
Applicant appear to argue that PTFE has a permittivity of close to 1. PTFE is an abbreviation for polytetrafluoroethylene, and has a trade name of Teflon. Dielectric Permittivity is the ability of a material to store an electric field in the polarization of the medium, which is an absolute value. However, the values provided for PTFE are for its relative permittivity property , typically around 2.1, but can range from 2.0 to 2.4. The relative permittivity of PTFE is comparing the dielectric permittivity of PTFE to that of the dielectric permittivity of a vacuum. Based on PTFE having a relative permittivity of typically 2.1, the Examiner does not consider the permittivity of PTFE to be in the range of 1.
Drawing (Applicant remarks of 12/29/25, p 10).
Regarding the drawing objection asserting the drawing must show a "field strength," Applicant respectfully disagrees because the relevant claim limitation is specifying the element of insulating layer thickness and permittivity based on a relative field strength. However, Applicant would welcome any suggestion as to how to amend the drawing to properly depict a "field strength" in an effort to move prosecution forward.
Claims 15 and 33 require “a field strength at a surface of said at least one electrical conductor is substantially equal to a field strength at an outer surface of said insulating layer” which the result of the selecting “a thickness of said insulating layer and a dielectric permittivity of said insulating layer” to meet the claimed conditions. Cho (KR 10-134878)’s fig. 4 shows an example of illustrating field strength by the having even spacing between the field lines. The Examiner has questioned whether it is possible to even have a condition of a field strength at a surface of said at least one electrical conductor is substantially equal to a field strength at an outer surface of said insulating layer based upon field strength weakening based upon the distance from the electrical conductor; which is the real basis for raising this drawing objection.
35 U.S.C. 112a rejections (Applicant remarks of 12/29/25, pp. 10-11).
While claims 15 and 33 have amended “equals” to “substantially equal to,” the issue of whether “a field strength at a surface of said at least one electrical conductor is substantially equal to a field strength at an outer surface of said insulating layer” remains the same as raised in the prior action for “a field strength at a surface of said at least one electrical conductor equals a field strength at an outer surface of said insulating layer.” The Examiner does not believe that this condition can actually be met, which is why the 35 U.S.C. 112a rejection was initially raised and why it is being maintained. The Examiner in the previous action requested evidence that “a field strength at a surface of said at least one electrical conductor equals a field strength at an outer surface of said insulating layer” after a thickness of said insulating layer and a dielectric permittivity of said insulating layer being selected (see Non-final action dated 9/24/25, p. 13). This has been raised in the previous action’s 35 USC 112a rejection and is repeated in the instant action.
“SUBSTANTIALLY EQUAL FIELD STRENGTH” (Applicant remarks of 12/29/25, pp. 12-13).
The Examiner has questioned whether this condition is even possible in the 35 USC 112a rejection(s) below. Even if evidence is provided that this condition is possible, the combination of Cho and Sun discloses the same structure, so the same property of “substantially equal field strength” should exist with the same disclosed structure. In this case, the “substantially equal field strength” if anything is “[t]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. See MPEP 2112 (I).
Regarding “CLEAN AIR.”
“CLEAN AIR” (Applicant remarks of 12/29/25, pp. 13-15).
Whether the insulating gas is “clean air” or another insulating gas determines what the gas’ insulating properties are. The better the insulating properties are, the distances between components can be reduced. Since the distances and the geometries of the components relevant to each other are not claimed, the insulating gas being “clean air” does not appear to affect whether the other conditions of the claim can be met.
Definition
The term “field strength” refers to refers to “a value in a vector-valued field (e.g., in volts per meter, V/m, for an electric field E).” The Examiner understands that the field strength around a conductor carrying an electric current is inversely proportional to the distance from the conductor. Since an outer layer of an insulating layer surrounding a conductor will always be a distance away from the conductor, how can “a field strength at a surface of said at least one electrical conductor is substantially equal to a field strength at an outer surface of said insulating layer” as independent claims 15 and 33 requires?
Applicant respectfully asserts that "clean air" and the other synonym phrases would be understood by a person of ordinary skill in the art as an air where dust, moisture, and other additional parts are filtered out, humidity is reduced, and the main parts are 80% N2 and 20% 02. (Applicant’s remarks dated 8/19/25, p. 3).
Claim Interpretation
Claims 15 and 33 include the term “substantially.” In the instant application of the term “substantially” in the phrase “substantially equal to,” is interpreted by the Examiner as “equal to” but for manufacturing tolerances necessary for fabrication of the claimed high voltage device.
Objections to the Claims and Specification
There is a lack of correspondence between the claimed subject matter, the detailed written description and the summary of invention as to:
a. Claim 15, line 9-11 requires “a field strength at a surface of said at least one electrical conductor is substantially equal to a field strength at an outer surface of said insulating layer” and claim 16, lines 2-3 requires “said at least one electrical conductor is completely coated with said insulating layer along an entire length of said at least one electrical conductor.” Page 7, lines 29-33 of the specification states “[t]he thickness and the dielectric permittivity of the insulating layer can be selected in such a way that the field strength at the surface of the electrical conductor, in particular in uncoated areas, and at the outer surface of the insulating layer are equal (emphasis added). If the electrical conductor is completely coated with said insulating layer along its entire length, then there would not be any uncoated areas. Therefore, can this condition be met with electrical conductor be completely coated with the insulating layer along its entire length?
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “field strength” at the surface of said electrical conductor, the “field strength” at an outer surface of said insulating layers” (claim 15 and 33) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 15-22, 24, 26-31, 33, and 35 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains 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.
Claim 15 requires “a thickness of said insulating layer and a dielectric permittivity of said insulating layer being selected such that a field strength at a surface of said at least one electrical conductor is substantially equal to a field strength at an outer surface of said insulating layer” and Claim 33 requires “selecting a thickness of said insulating layer and a dielectric permittivity of said insulating layer such that a field strength at a surface of said at least one electrical conductor is substantially equal to a field strength at an outer surface of said insulating layer.”
Page 5, lines 18-34 of the specification states:
In a gas-insulated circuit breaker, for example, having an electrical conductor in a bushing into or out of the encapsulation housing, the highest field strength occurs at the surface of the electrical conductor. A coated dielectric material results due to the insulating layer applied to the electrical conductor, by which the point of the otherwise highest field strength on the surface of the electrical conductor is reduced and, with an optimally selected insulating layer thickness, the electrical field strength in the critical area is made approximately uniform. In addition, the probability of free strong electrons for initiating an electrical flashover is inhibited by the insulating layer. Local field elevations due to surface roughness are reduced or prevented. The reliability and service life of the high-voltage device are thus increased, and maintenance intervals can be reduced, by which personnel and cost expenditure are reduced. (emphasis added).
Page 6, lines 19-34 of the specification states:
The insulating layer can have a relative permittivity in the range of 1, in particular greater than 1. Due to the insulating layer applied to the electrical conductor, the relative permittivity of which is somewhat greater than that of gas, thus is greater than 1, a coated dielectric material results, due to which the point of the otherwise highest field strength at the surface of the in particular metallic inner conductor is reduced and, with an optimally selected insulating layer thickness, the electrical field strength in the critical area is made approximately uniform. Due to the optimization of the dielectric permittivity of the insulating layer material and the thickness of the layer, the field strength can be set so that the electrical field strength at the metallic inner conductor, i.e., at the electrical conductor, and at the surface of the applied insulating layer are identical. (emphasis added).
Page 7, lines 29-35 of the specification states:
The thickness and the dielectric permittivity of the insulating layer can be selected in such a way that the field strength at the surface of the electrical conductor, in particular in uncoated areas, and at the outer surface of the insulating layer are equal. Flashovers through the insulating layer and between conductor and insulating layer are thus minimized or precluded. (emphasis added).
Page 16, lines 29-35 of the specification (dated 12/29/25) states:
The insulating layer 5 on the electrical conductor 4 is formed, for example, as a layer or as a layer stack made up of multiple layers5a, 5b, 5n. The layers 5a, 5b, 5n can have differing permittivity, in particular decreasing permittivity from layer to layer, for example with the highest permittivity of the layer 5a directly in connection with the at least one electrical conductor 4. Due to the application of further insulating layers 5a, 5b, 5n having different relative permittivity, wherein, for example, the permittivity of the inner layer 5a is highest and each further layer is formed having a lower or having decreasing permittivity, but always having a permittivity greater than the permittivity of gas, i.e., greater than 1, more pronounced equalization of the electrical field can be achieved in comparison to only one layer, to thus further relieve the critical areas dielectrically. (emphasis added).
2164.01(a) Undue Experimentation Factors [R-01.2024]
In order to determine compliance with the enablement requirement of 35 U.S.C. 112(a), the Federal Circuit developed a framework of factors in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), referred to as the Wands factors to assess whether any necessary experimentation required by the specification is “reasonable” or is “undue.” Consistent with Amgen Inc. et al. v. Sanofi et al., 598 U.S. 594, 2023 USPQ2d 602 (2023), the Wands factors continue to provide a framework for assessing enablement in a utility application or patent, regardless of technology area. See Guidelines for Assessing Enablement in Utility Applications and Patents in View of the Supreme Court Decision in Amgen Inc. et al. v. Sanofi et al., 89 FR 1563 (January 10, 2024). These factors include, but are not limited to:
• (A) The breadth of the claims;
• (B) The nature of the invention;
• (C) The state of the prior art;
• (D) The level of one of ordinary skill;
• (E) The level of predictability in the art;
• (F) The amount of direction provided by the inventor;
• (G) The existence of working examples; and
• (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
The claims requires in one form or another that “a thickness of said insulating layer and a dielectric permittivity of said insulating layer being selected such that a field strength at a surface of said at least one electrical conductor is substantially equal to a field strength at an outer surface of said insulating layer.”
Regarding the factor of “[t]he amount of direction provided by the inventor.” Besides disclosing that the insulating layers can be a plurality of layers and the insulating layers having decreasing permittivity, and the material of the insulating layer(s) includes silicone, polytetrafluoroethylene (PTFE), and/or polychlorotrifluoroethylene (PCTFE), there is no disclosure of how a layer or a plurality of layers are selected to meet the claimed limitation and how these materials are arranged to the requirement of “a field strength at a surface of said at least one electrical conductor is substantially equal to a field strength at an outer surface of said insulating layer.”
Regarding the factor of “[t]he existence of working examples.” No working examples are provided in the originally filed application.
Regarding the factor of “[t]he quantity of experimentation needed to make or use the invention based on the content of the disclosure.” Since there is no disclosure of any examples to support the limitation of “a thickness of said insulating layer and a dielectric permittivity of said insulating layer being selected such that a field strength at a surface of said at least one electrical conductor is substantially equal to a field strength at an outer surface of said insulating layer,” one of ordinary skill in the art would have to figure out how an insulation layer or layers that include silicone, PTFE, and/or PCTFE without a disclosed thickness or thicknesses and a combination of materials which include but not limited to silicone, PTFE, and/or PCTFE as currently claimed would achieve the claim limitation of independent claims 15 and 33.
Further based upon the review of the disclosure, is the objective of the inventions appears to be to make the field strength uniform (equalization of the electrical field), rather making the “a field strength at a surface of said at least one electrical conductor is substantially equal to a field strength at an outer surface of said insulating layer” as claimed?
Claims 15-22, 24, 26-31, 33, and 35 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 15, line 11; and Claim 33, line 13 use the term “approximately.” What is the metes and bounds of “approximately uniform electric field distribution”? Whan is the electric field approximately uniform, and when is the electric field not approximately uniform?
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 of this title, 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.
Claims 15-22, 24, 26-31, 33, and 35, as best understood, are rejected under AIA 35 U.S.C. 103 as being unpatentable over Cho (KR 10-1034878), Hoshina (JP 2002-152927) and Son (WO 2016/0108592).
With respect to Claim 15, Cho teaches a high-voltage device (see title), comprising: an encapsulation housing (fig. 5, 120); a bushing (fig. 1, 3b; fig. 2, 100) for guiding at least one electrical conductor (110) into said encapsulation housing and/or out of said encapsulation housing; and an insulation layer (140) coated on said at least one electrical conductor, and a field distribution (see fig. 4) in a region of said bushing (¶[0001], l. 3). Cho fails to disclose a thickness of said insulating layer and a dielectric permittivity of said insulating layer being selected such that a field strength at a surface of said at least one electrical conductor is substantially equal to a field strength at an outer surface of said insulating layer; so as to provide am at least approximately uniform field distribution in a region, and wherein said encapsulation housing and/or said bushing are being filled with clean air. Hoshina teaches said encapsulation housing (2) [is] filled with clean air (40, ¶[0020], dry air). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Cho with the clean air of Hoshina for the “insulating performance is improved, even if an insulating gas other than SF6 gas is used, the insulating performance can be ensured to be equal to or higher than that of the conventional gas insulated switchgear. This allows the amount of expensive SF6 gas used to be reduced, making the process economical and environmentally friendly” (¶[0010]). Son teaches a thickness (fig. 2, sum of d1 and d2) of said insulating layer (10,20) and a dielectric permittivity (combined dielectric permittivity of 10,20) of said insulating layer being selected (see fig. 2) such that a field strength at a surface (fig. 2, surface of 2) of said at least one electrical conductor (2) is substantially equal to a field strength at an outer surface (fig. 2, outer surface of 20) of said insulating layer (see 35 USC 112a rejection, above). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Cho with the insulating layer of Son for “[t]he reason why the first permittivity has a relatively high permittivity relative to the second permittivity is to relatively relax the electric field in the surface layer of the conductor 2 so as to minimize the diffusion of the electric field into the case where the insulating gas is injected. to be. The second dielectric layer is composed of a second dielectric constant and has a range as described above to lower the electric field generated from the insulating gas. When the second dielectric layer is configured with different dielectric constants, the electric field is concentrated in a specific conductor located inside the case. This is because stable insulation performance can be maintained to reduce the maximum electric field of insulation gas.” Son fails to specifically disclose a thickness of said insulating layer and a dielectric permittivity of said insulating layer being selected such that a field strength at a surface of said at least one electrical conductor is substantially equal to a field strength at an outer surface of said insulating layer and so as to provide an at least approximately uniform electric field distribution in a region of the bushing. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made to for one to select a thickness and dielectric permittivity to obtain field strengths of the at a surface if said at least one electrical conductor and an outer surface if said insulating layer being substantially equal, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). The combination of Cho and Son would result in an at least approximately (see 35 USC 112b rejection) uniform electric field distribution above) in a region of said bushing (see fig. 4 of Cho that illustrates parallel field lines in at least portion that represent at least approximately uniform field distribution), .
Even though Son fails to specifically disclose the limitation of “a thickness of said insulating layer and a dielectric permittivity of said insulating layer being selected such that a field strength at a surface of said at least one electrical conductor is substantially equal to a field strength at an outer surface of said insulating layer.” Son discloses an insulating layer having the same properties as the claimed invention including “said insulating layer comprises at least one polymer selected from the group consisting of silicone, PTFE, and/or PCTFE” (claim 35) and “said plurality of layers have a decreasing permittivity from layer to layer” (claim 21). Therefore, Son having an insulation layer of the same properties (i.e., material and permittivity) as the claimed invention would therefore have the same properties, and would also provide an at least approximately uniform electric field.
Further Applicant has not disclosed any specific example of “a thickness of said insulating layer and a dielectric permittivity of said insulating layer being selected such that a field strength at a surface of said at least one electrical conductor is substantially equal to a field strength at an outer surface of said insulating layer”. If this is critical characteristic of the invention, the Applicant is welcome to submit evidence that there is a specific thickness and a specific dielectric permittivity of the insulating layer where the field strength at a surface of said at least one electrical conductor is substantially equal to a field strength at an outer surface of said insulating layer.
With respect to Claim 33, Cho teaches a method of increasing a dielectric strength in a high-voltage device (see title), the method comprising: providing the high-voltage device with an encapsulating housing (fig. 5, 120) and a bushing (fig. 1, 3b) for guiding at least one electrical conductor (110) into said encapsulation housing and/or out of said encapsulation housing; coating the at least one electrical conductor with an insulating layer (140) in a region (see fig. 2) of the bushing through which the at least one electrical conductor is guided into, or out of, the encapsulation housing of the high-voltage device. Cho fails to disclose filling the encapsulating housing and/or said bushing with clean air; and selecting a thickness of said insulating layer and a dielectric permittivity of said insulating layer such that a field strength at a surface of said at least one electrical conductor is substantially equal to a field strength at an outer surface of said insulating layer. Hoshina teaches filling the encapsulating housing and/or said bushing with clean air(40, ¶[0020], dry air). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Cho with the clean air of Hoshina for the “insulating performance is improved, even if an insulating gas other than SF6 gas is used, the insulating performance can be ensured to be equal to or higher than that of the conventional gas insulated switchgear. This allows the amount of expensive SF6 gas used to be reduced, making the process economical and environmentally friendly” (¶[0010]). Son teaches selecting (see fig. 2) a thickness (fig. 2, sum of d1 and d2) of said insulating layer (10,20) and a dielectric permittivity (combined dielectric permittivity of 10,20) of said insulating layer such that a field strength at a surface (fig. 2, surface of 2) of said at least one electrical conductor (2) is substantially equal to a field strength at an outer surface of said insulating layer. (see 35 USC 112a rejection, above). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Cho with the insulating layer of Son for “[t]he reason why the first permittivity has a relatively high permittivity relative to the second permittivity is to relatively relax the electric field in the surface layer of the conductor 2 so as to minimize the diffusion of the electric field into the case where the insulating gas is injected. to be. The second dielectric layer is composed of a second dielectric constant and has a range as described above to lower the electric field generated from the insulating gas. When the second dielectric layer is configured with different dielectric constants, the electric field is concentrated in a specific conductor located inside the case. This is because stable insulation performance can be maintained to reduce the maximum electric field of insulation gas.” Son fails to specifically disclose selecting a thickness of said insulating layer and a dielectric permittivity of said insulating layer such that a field strength at a surface of said at least one electrical conductor is substantially equal to a field strength at an outer surface of said insulating layer and so as to provide an at least approximately uniform electric field distribution in a region of the bushing. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made to for one to select a thickness and dielectric permittivity to obtain field strengths of the at a surface if said at least one electrical conductor and an outer surface if said insulating layer being substantially equal, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). The combination of Cho and Son would result in an at least approximately (see 35 USC 112b rejection) uniform electric field distribution above) in a region of said bushing (see fig. 4 of Cho that illustrates parallel field lines in at least portion that represent at least approximately uniform field distribution), .
With respect to Claims 16, 26-28, 30, and 31, Cho further teaches said at least one electrical conductor is completely coated (see fig. 5) with said insulating layer along an entire length of said at least one conductor (claim 16), said encapsulation housing includes a flange (fig. 1, 3b) and an insulator (4) fastened in a mechanically stable manner (see fig. 1) on said flange (claim 26), said insulator is a hollow-tubular (see fig. 1) made of silicone (¶[0004], l. 12), and having ribs (fig. 1, 6) formed on an outer circumference thereof, and wherein a center axis of said insulator is coaxial (see fig. 1) with a longitudinal axis of said at least one electrical conductor (claim 27), at least one electrode (fig. 1, 7, fig. 2, 130) at ground potential (¶[0004], l.. 9, 3b at ground potential and is connected to conductive 130) with is enclosed by said bushing (claim 28), said at least one electrical conductor consists of a metal ¶[0025], ll. 4-5) and has a shape of a bar (see fig. 2) (claim 30) and said metal is selected from the group consisting of aluminum (¶[0025], l. 4, Al), said bar is circular-cylindrical (¶[0035], l. 3, diameter is a property of circular/cylinder) (claim 31).
With respect to Claims 17 and 18, Cho, Hoshina and Son disclose the claimed invention except for said at least one electrical conductor is coated with said insulating layer exclusively in a region of said bushing (claim 17) and said at least one electrical conductor is coated with said insulating layer exclusively at an opening in said encapsulation housing (claim 18). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, to omit the insulating coating in regions that do not require the insulation protection of the electrical conductor in order to minimize the amount of the insulating material used, since it has been held that omission of an element and its function in a combination where the remaining elements perform the same functions as before involves only routine skill in the art. In re Karlson, 136 USPQ 184.
With respect to Claims 19-22, Cho and Hoshina disclose the claimed invention except for the insulating layer has a relative permittivity greater than 1 (claim 19), said insulating layer is formed of a plurality of layers, and the thickness of the insulating layer being a combined thickness of the plurality of layers (claim 20), said plurality of layers have a decreasing permittivity from layer to layer (claim 21) and a layer of the plurality of layers that is in direct contact with said at least one electrical conductor has a highest dielectric permittivity (claim 22). Son teaches the insulating layer has a relative permittivity of said insulating layer is greater than 1 (10- “first dielectric constant is characterized by being formed to be at least 3.0 and at most 9.0”, 20 - “second dielectric constant is characterized by being formed to be at least 2.0 and at most 5.0”) (claim 19), said insulating layer is formed of a plurality of layers (fig. 2, 10,20) , and the thickness of the insulating layer being a combined thickness (combined thickness of 10,20) of the plurality of layers (claim 20), said plurality of layers have a decreasing permittivity from layer to layer (1st layer has greater relative permittivity that 2nd layer; “first dielectric constant is characterized by being formed to be at least 3.0 and at most 9.0”, “second dielectric constant is characterized by being formed to be at least 2.0 and at most 5.0”) (claim 21) and a layer (10) that is in direct contact with said electrical conductor (2) has a highest dielectric permittivity (10 has a higher dielectric permittivity than 20; note that dielectric permittivity is an absolute value that is proportionate to relative permittivity because relative permittivity is compared to what the dielectric permittivity of a vacuum is) (claim 22). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Cho with the insulating layer of Son for purpose of having an insulating layer with a relative permittivity value of greater than 1 (where a value of 1 is only obtainable if there is a vacuum) so that the insulating layer provides insulation for the electrical conductor to prevent arcing between the electrical conductor and the grounded encapsulation housing, the first insulating layer closest to the electrical conductor having a higher relative permittivity so as to alleviate the electric field at the surface layer of the conductor and minimize the electric field from spreading into the interior of the case into which the insulating gas is injected..
With respect to Claim 24, Cho and Hoshina disclose the claimed invention except for said insulating layer has a layer thickness in a range of millimeters or in a range of centimeters. Son teaches said insulating layer has a layer thickness in a range of millimeters (1st layer “up to 1mm” and 2nd layer “up to 10mm). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made to modify the device of Cho and Hoshina with the insulation layer of Son for the thickness of the insulating layer to be sufficient to provide effective amount of insulation for the voltage carried by the electrical conductor to prevent shorting or arcing within the device, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
With respect to Claim 29, Cho discloses the claimed invention including which comprises at least one switching unit (switching unit of ¶[0003], ll. 1-2) of a high-voltage circuit breaker (¶[0003], ll. 1-2) connected via said at least one electrical conductor to lines (¶[0005], l. 2, transmission capacity). Cho, Hoshina and Son fail to specifically disclose a power grid. Admitted prior art that it is well known in the art to have a power grid (lines are connected to power grids) (since the applicant’s transverse of the rejection does not specifically address the examiner’s assertion of official notice, the transverse is not adequate and is taken as admitted prior art. MPEP 2144.03). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Cho, Hoshina and Son with a well-known power grid for the purpose of distributing high voltage transmitted through the conductor to either from generators of power or to consumers of the power.
With respect to Claim 35, Cho discloses the claimed invention except for said insulating layer consists of at least one polymer material selected from the group consisting of silicone, polytetrafluoroethylene (PTFE), and polychlorotrifluoroethylene (PCTFE); or said insulating layer comprises at least one polymer selected from the group consisting of silicone, PTFE, and/or PCTFE. Hoshina teaches said insulating layer comprises at least one polymer of PTFE (¶[0019]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made to for the insulating layer to be PTFE having good insulating properties, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious choice. In re Leshin, 125 USPQ 416.
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 extension fee 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 date of this final action.
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RJH 1/13/2026
/ROBERT J HOFFBERG/
Primary Examiner, Art Unit 2835