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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-16) in the reply filed on 10/7/2025 is acknowledged.
During a telephone conversation with Attorney Barry Davison on 10/20/2025 a provisional election was made without traverse to prosecute the invention of Species A (claim 7). Affirmation of this election was made by applicant in the response of 3/9/2026. Species B-F (claims 8-12) are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to non-elected species.
Claim Status
The claims filed on 6/10/2026 has been entered. No claim(s) is/are currently amended. Claim(s) 6 and 17-29 has/have been cancelled. Claims 1-5 and 7-16 are pending with claim(s) 8-12 withdrawn from consideration. Claim(s) 1-5, 7 and 13-16 is/are under examination in this office action.
Response to Arguments
Applicant's argument, filed on 3/9/2026, with respect to 103 rejection has been fully considered but is moot in view of the new grounds of rejection presented below.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries 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.
Claim(s) 1-5 and 13-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bertini et al (US 8101034 B2) in view of Chen et al (CN 103804687A, machine translation is referenced herein).
Regarding claims 1-5 and 13, Bertini teaches a method for imparting excellent long-term dielectric performance to an in-service electrical cable section having a stranded conductor surrounded by a conductor shield encased in a polymeric insulation and having an interstitial void volume in the region of the conductor, the method comprising injecting a dielectric enhancement fluid composition into the interstitial void volume [abstract], wherein the composition comprises a Class 1 component of a water-reactive organosilane monomer having at least two water-reactive groups (i.e., the organosilane can undergo hydrolysis and subsequent condensation) [col.2 lines 15-19, col.24 lines 53-57], including tolylethylmethyldimethoxysilane and 2-cyanobutylmethyldimethoxysilane [col.25 lines 49-53].
The examiner submits that the tolylethylmethyldimethoxysilane and 2-cyanobutylmethyldimethoxysilane reads on the claimed a, at least one organoalkoxysilane, as specified in claims 1 and 13.
Bertini teaches that the composition further comprises a condensation catalyst known to promote the hydrolysis and condensation of organoalkoxysilanes [col.25 lines 54-58], but does not teach that the catalyst is the ones specified in the instant claims 1-5 and 7.
Pertinent to the same problem, Chen teaches catalysts for silicon hydroxyl condensation reaction including phosphorus pentoxide [0038], which reads on the claimed b, one or more aprotic hydrolysis/condensation catalysts for said organoalkoxysilane(s), as specified in claims 1.
It would have been obvious to one of ordinary skill in the art at the time of filing to select phosphorus pentoxide as the condensation catalyst in Bertini’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Formulae (i), (ii), (iv), (v), (vi) and claims 2-5 do not need to be addressed since phosphorus pentoxide meets the claimed b.
Regarding claim 14, the recited “corrosion of the conductor during treatment with the dielectric enhancement fluid is reduced or eliminated by the use of the one or more aprotic hydrolysis/condensation catalysts relative to use of protic strong acid catalysts” is a property of the product. “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. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present. Nonetheless, Bertini teaches that the combination of the organoalkoxysilane components and the condensation catalyst does not corrode copper or aluminum conductors [col.25 lines 56-60].
Regarding claim 15, Bertini teaches that the conductor comprises aluminum [col.14 lines 48-49]. The recited “wherein corrosion of the aluminum is reduced or eliminated” is a property of the product. “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. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present. Nonetheless, Bertini teaches that the combination of the organoalkoxysilane components and the condensation catalyst does not corrode copper or aluminum conductors [col.25 lines 56-60].
Regarding claim 16, the recited PE retention is a property of the product. “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. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Allowable Subject Matter
Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Dependent claim 7 is directed to a method for enhancing the dielectric properties of an electrical cable having a central stranded conductor encased in a polymeric insulation jacket and having an interstitial void volume in the region of the conductor, the method comprising introducing a dielectric enhancement fluid composition into the interstitial void volume, wherein the composition comprises: a. at least one organoalkoxysilane; and b. one or more aprotic hydrolysis/condensation catalysts for said organoalkoxysilane(s), wherein the one or more aprotic hydrolysis/condensation catalyst comprises at least one selected from TIPS triflate (triisopropyl silyltrifluoromethanesulfonate), and DTBS ditriflate (Di-tert-butylsilylbis(trifluoromethanesulfonate). There is no prior art that teaches or makes obvious the aforementioned limitations as claimed.
The closest prior art is the disclosure of Bertini et al (US 8101034 B2) in view of Chen et al (CN 103804687A, machine translation is referenced herein). The prior art teaches the claimed method as stated in the 103 rejection. However, the prior art does not teach or suggest that the one or more aprotic hydrolysis/condensation catalyst comprises at least one selected from TIPS triflate (triisopropyl silyltrifluoromethanesulfonate), and DTBS ditriflate (Di-tert-butylsilylbis(trifluoromethanesulfonate).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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