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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Di-Gianni et al (US 2016/0225486 A1), in view of Li et al. (JOURNAL OF GEOPHYSICAL RESEARCH, VOL. 105, NO. D3, Pages 4019-4029, February 16, 2000), as further evidenced by Handbook-Data (C4-FN MIXTURES FOR HIGH-VOLTAGE EQUIPMENT, 2025).
Regarding claim 1, Di-Gianni teaches a dielectric composition for being used in an electrical device (high voltage switchgear); [2-3, 58, 65], comprising a dielectric fluorinated organic nitrile, fluoroethers and hydrofluoromonoethers composition; [49, 66], and carrier gases selected from oxygen, carbon dioxide, nitrogen and combination thereof; [73, claim 22].
Di-Gianni does not teach the instantly claimed fluoroether of trifluoromethyl trifluorovinyl ether (CF3OCFCF2). However the analogous art of Li et al. teaches a physio-chemical study of fluorinated dielectric CF3OCFCF2 proving its excellent superiority of its lifetime in atmosphere when compared to traditionally used dielectric SF6 ; [abstract, pages 4022, 4027-28; summary]. Li and Di-Gianni are related/analogous arts that of application of fluorinated organic compounds in dielectric science and technology. At the time before the effective filing date of invention, it would have been obvious to a person of ordinary skill in the art to employ (both by addition or substitution) the fluoroether of Li in Di-Gianni’s composition with the motivation of using a composition with much shorter atmospheric life time as taught by Li above. It should be noted that the greatest concern with SF is its 3200 year atmospheric lifetime and very significant global warming potential (GWP) of about 22,200 times the global warming potential of carbon dioxide. This is further evidenced by Handbook-Data (C4-FN MIXTURES FOR HIGH-VOLTAGE EQUIPMENT, 2025).
Regarding claim 2, The Office realizes that all the claimed effects or physical properties, “dielectric strength’s synergistic effect C defined by equation 1”, are not positively stated by the references Di-Gianni or Li. 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, synergistic effect C defined by equation 1, 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 claims 3-5, Di-Gianni does not, expressly, teach the instantly claimed amount of each claimed dielectric gases (including carriers). However, it teaches the ratio of carbon dioxide to oxygen is from 50/50 to 100/1; [75, claim 25]. Considering this ratio and the fact that not all of dielectric fluid made out of these two gases, it is obvious that any amounts of carbon dioxide and oxygen can be assumed to be present in the composition as long as their ratio is within 1:1 to 100:1. Considering the applicant’s disclosure on Fig.7 of submitted specification and correspondingly the instant limitations of claim 4, this values of CO2 and O2 can be assumed to be true, as long as the instantly claimed limitation for fluoroether, namely 1-60%, is met. It is thus obvious to approximate the, exemplary, calculated amounts of (x, y, z), being equal to (fluoroether, CO2, O2), such as (75, 20, 5), (50, 30, 20) or (20, 40, 40) which meets the instant claim 4 and also the presented Fig.7 (outside of explosion region).
Regarding claims 6-7, Di-Gianni teaches the apparatus comprises a housing enclosing an insulating space and an electrically conductive part arranged in the insulating space, said insulating space containing a dielectric insulation medium, [abstract, 3, 12].
Response to Arguments
Applicant's arguments filed 2025/12/16 have been fully considered but they are not persuasive. Because,
Applicant’s argument and remarks regarding prior art of Luly is considered and thus the corresponding 35 USC § 102 rejection is withdrawn.
In response to applicant’s argument (pages 11-12) that; “Applicant once again respectfully disagrees at least because the claimed subject matter is not a simple optimization of known parameters, but rather defines a specific, non-intuitive technical regime not only characterized by environmental and safety constraints, but also a quantitatively defined dielectric synergy condition that yields unexpected results. Applicant incorporates, herein, the remarks previously advanced to further demonstrate the criticality and unexpected nature of the claimed subject matter and to rebut the Office Action's primafacie case. Nothing in Di-Gianni, Li, and Perret leads one of ordinary skill in the art to any other result. In fact, Di-Gianni is acknowledged as not teaching or suggesting Applicant's claimed mixed gas oftrifluoromethyl trifluorovinyl ether (ClhOCFCh) and a carrier gas, see, e.g., Office Action 5---6, and Li, at best, merely indicates that CF3OCF=CF2 has a very low GWP due to rapid atmospheric degradation, but is otherwise divorced from the claimed subject matter. Even considering Perret's supporting evidence that SFG presents significant global warming potential that must be overcome, the combination of Di-Gianni, Li, and Perret does not lead one of ordinary skill in the art any closer to Applicant's claimed subject matter, nor overcome its unexpected, nonobvious nature.”, it is noted that, the fundamental premise of applicant’s invention and claims are based of the fact that a specific combination of dielectric gaseous composition, as instantly stated with specific quantities and their ratios, results in a dielectric compound with innovative minimal global warming potential. As to this end, applicant’s remarks are considered and acknowledged. The above presumed novelty of the instantly claimed composition, if understood correctly, is result of a very specific quantity of gaseous components of trifluoromethyl trifluorovinyl ether (CF3OCFCF2), carbon dioxide and oxygen (instant claims 3-5) as defined by Fig. 7. The determination of optimized quantities of correspondingly claimed gases, even though innovative, is a direct result of an obvious experimental laboratory experimentation, as construed, and does not impart patentability. The Office action’s assumption on obtainability of fluoroether, CO2, O2 ratios, such as (75, 20, 5), (50, 30, 20) or (20, 40, 40), is based on available information by prior arts’ disclosure and points to the same safe region (Fig. 7) in which composition is safe to function and provide the instantly claimed GWP. All the claimed subject matter are, fundamentally, disclosed by combination of prior arts of record which have rendered the claims obvious. Please note that; it would have been obvious to one of ordinary skill in the art at the time before effective filing date of invention to optimize its ingredient’s proportions to achieve the desired safe fluid by experimentation for best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir), [MPEP 2144.05].
Applicant is, respectfully, suggested to further provide a corresponding amendment that would clearly distinguish the instant composition from that of prior art of record.
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
2026/03/21
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767