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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 8 and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Di-Gianni et al (US 2016/0225486 A1).
Regarding claims 8 and 11-13, Di-Gianni teaches a teaches a dielectric composition for being used in an electrical device (high voltage switchgear); [2-3, 58, 65], comprising a dielectric fluorinated organic nitrile, preferably such as perfluoroisobutyro- nitrile (or heptafluoroisobutyronitrile, (CF3)2CFCN or C4F7N) composition; [56, 63, 67, 71], and carrier gases such as oxygen, carbon dioxide and nitrogen; [73, claim 22].
Claims 19-20 are rejected under 35 U.S.C. 103 as being 35 U.S.C. 102(a)(1) as being anticipated by Costello et al. (US 2015/0083979 A1), as further evidenced by Di-Gianni et al (US 2016/0225486 A1).
Regarding claims 19-20, Costello teaches a switchgear unit containing (i.e. compartment) dielectric fluid, comprising heptafluoroisobutyronitrile (C4F7N), and carrier gases such as carbon dioxide, air (oxygen), He and Ne; [abstract, 2, 18-19, 32]. Note that all electric devices such as switchgear are placed inside a compartment or insulation space that comprises a dielectric composition as evidenced by Di-Gianni; [claim 1].
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, 3-7 and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Di-Gianni et al (US 2016/0225486 A1) in view of Mantilla et al. (US 2013/0277334 Al), as additionally evidenced by Handbook-Data (C4-FN MIXTURES FOR HIGH-VOLTAGE EQUIPMENT, 2025).
Regarding claims 1, and 3-7, Di-Gianni teaches a teaches a gas insulated metal encapsulated high voltage switchgear apparatus/device (instant claims 6-7); [2-3, 58, 65], comprising a dielectric fluorinated organic nitrile, preferably such as perfluoroisobutyro-nitrile (or heptafluoroisobutyronitrile, (CF3)2CFCN or C4F7N) composition; [56, 63, 67, 71], and carrier gases such as oxygen and carbon dioxide; [73, claim 22], wherein the ratio of carbon dioxide to oxygen (instant claim 2) is from 50/50 to 100/1; [claim 25]. I)- Generally, this is construed in the art as a ratio in terms of %moles, but even in case of being a “wt.%” still due to proximity of molecular weights of CO2 (44 gr/mole) and that of O2 (32 gr./mole) the instantly claimed molar percentage of oxygen is rendered obvious with a considerable overlap. This calculation is correct with the assumption (not expressly taught by Di-Gianni) that the amount of the claimed fluorinated nitrile is usually much less than carrier(s) for being used in electric apparatuses.
Regarding claim 1, Di-Gianni does not teach the amount of oxygen being twice the molar percentage of the fluorinated nitrile. However, the analogous art of Mantilla teaches a dielectric insulating fluid for switchgear applications comprising fluorinated composition (i.e. ketone); [95-96], wherein the molar concentration of oxygen is twice that of fluorinated component; [100, claim 37]. 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 select the instantly claimed ratio of oxygen to fluorinated dielectric fluid with the motivation of optimizing arc-extinction properties of fluid and also decreasing the carbon deposition due to decomposition of fluorinated dielectric (i.e. similarly fluorinated nitrile) as taught by Mantilla; [98-100]. This is additionally evidenced by Hand Book of C4 -FN (or C4F7N) teaches that this organic fluoronitrile is utilized for energy-transfer equipment with the motivation of reducing the adverse Global Warming Potentials of SF6 compound as a carrier for dielectric composition used in energy -transfer equipment by a great margin as presented in the Hand-book; [table Fig. 5 page 8, page 16: 2.1]. Hand Book teaches a mixtures of C4-FN/O2/CO2 (page 24 & 30], and the amount of C4 -FN (or C4F7N) at 8 mole% or oxygen up to 30% and C4 -FN is up to 10%; [page 30, page 63: table 20]. At the time before the effective filing date of invention, it would have been obvious to adjust the oxygen and the dielectric fluids amount with the motivation of improving the performance of switchgear for transfer of energy as taught by the C4 -FN Handbook above.
Regarding claims 21-23, Di-Gianni teaches selection of a corresponding amounts of fluorinated nitrile, oxygen and carbon dioxide with a ratios that would prevent decomposition of fluorinated dielectric gases and thus their decomposition on the electrodes; [72-75]. Mantilla similarly teaches a similar make up of dielectric insulating fluid; [98-100]. Consequently, .it is well established in the art to optimize result effective variables, MPEP 2144(05). A particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). 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 select the instantly claimed ratio of oxygen to fluorinated dielectric fluid with the motivation of optimizing arc-extinction properties of fluid and also decreasing the carbon deposition due to decomposition of fluorinated dielectric (i.e. similarly fluorinated nitrile) as taught by Mantilla as well; [98-100]
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Di-Gianni et al (US 2016/0225486 A1), as applied to claim 8 and further in view of Costello et al. (US 2015/0083979 A1).
Regarding claims 9-10, Di-Gianni teaches does not teach the instantly claimed noble gases. However the analogous art of Costello teaches a dielectric fluid, identically comprising heptafluoroisobutyronitrile (C4F7N) comprising carrier gases such as He Ne; [abstract, 2, 18-19], for switchgear transformers; [2-3, 34]. At the time, before the effective filing date of invention, it would have been obvious to include (by adding or partially substituting) the noble gas of helium with the motivation of improving the carrier gas’ stability by presence of an inert and unreactive molecule, as taught by Costello above.
Claims 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Di-Gianni et al (US 2016/0225486 A1) in view of Mantilla et al. (US 2013/0277334 Al), as additionally evidenced by Handbook-Data (C4-FN MIXTURES FOR HIGH-VOLTAGE EQUIPMENT, 2025).
Regarding claims 14-18, Di-Gianni teaches a teaches a gas insulated metal encapsulated high voltage switchgear apparatus/device (instant claims 6-7); [2-3, 58, 65], and a dielectric fluorinated organic nitrile, preferably such as perfluoroisobutyro-nitrile (or heptafluoroisobutyronitrile, (CF3)2CFCN or C4F7N) composition; [56, 63, 67, 71], and carrier gases such as oxygen, carbon dioxide and nitrogen; [73, claim 22], wherein the ratio of carbon dioxide to oxygen is from 50/50 to 100/1; [claim 25]. Generally, this is construed in the art as a ratio in terms of %moles, but even in case of being a “wt.%” still due to proximity of molecular weights of CO2 (44 gr/mole) and that of O2 (32 gr./mole) the instantly claimed molar percentage of oxygen is rendered obvious with a considerable overlap. This calculation is correct with an obvious assumption (not expressly taught by Di-Gianni) that the amount of the claimed fluorinated nitrile is usually much less than amount of carrier in composition used in electric apparatuses.
Regarding claim 14, Di-Gianni does not teach the amount of oxygen being twice the molar percentage of the fluorinated nitrile. However, the analogous art of Mantilla teaches a dielectric insulating fluid for switchgear applications comprising fluorinated composition (i.e. ketone); [95-96], wherein the volume fraction of oxygen is about 40% or less; [101], as construed approximately in the same range of molar fraction. 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 select the instantly claimed ratio of oxygen to fluorinated dielectric fluid with the motivation of optimizing arc-extinction properties of fluid and also decreasing the carbon deposition due to decomposition of fluorinated dielectric (i.e. similarly fluorinated nitrile) as taught by Mantilla; [98-100].
This is additionally evidenced by Hand Book of C4 -FN (or C4F7N) teaches that this organic fluoronitrile is utilized for energy-transfer equipment with the motivation of reducing the adverse Global Warming Potentials of SF6 compound as a carrier for dielectric composition used in energy -transfer equipment by a great margin as presented in the Hand-book; [table Fig. 5 page 8, page 16: 2.1]. Hand Book teaches a mixtures of C4-FN/O2/CO2 (page 24 & 30], and the amount of C4 -FN (or C4F7N) oxygen up to 30% and C4 -FN is up to 10%; [page 30; last paragraph]. At the time before the effective filing date of invention, it would have been obvious to adjust the oxygen and the dielectric fluids amount with the motivation of improving the performance of switchgear for transfer of energy as taught by the C4 -FN Handbook above.
Response to Arguments
Applicant’s arguments with respect to claims 1, 2-8, and 14-18 have been considered but are moot because the new ground of rejection does not rely on combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. However, the relevant arguments are responded to briefly.
A- In response to applicant’s argument (page 5 on last paragraph) that; 1)- “Applicant respectfully traverses each of these rejections, the characterizations of the
pending claims, and each and every implicit and/or explicit potential reliance on Official Notice”, it should be noted that contrary to the above assertion there is no actual or even potential use of official notice is observed. 2)- the assertion that; “Specifically, Applicant respectfully submits that Di-Gianni fails to teach or suggest the recited composition for use in an electrical device. Turning to Claim 22 of Di-Gianni as cited by
the Office Action (see page 2), the composition recited therein provides an apparatus having a dielectric insulation medium "wherein the insulation medium, comprises air Q! at least one air component selected from the group consisting of oxygen (02), nitrogen (N2), carbon dioxide (CO2), and mixtures thereof' (emphasis added). In contrast, the composition of Claim 8 of the present application provides "a gas mixture comprising a fluorinated nitrile, carbon dioxide, oxygen and a gas selected from dry air, nitrogen and/or a noble gas (emphasis added).", it should be noted that the claim 22 of Di-Gianni is in fact dependent on the very claim 1 of Di-Gianni which clearly states a “fluorinated nitrile” !
B- In response to applicant’s argument (page 6, first paragraph) that; Additionally, Applicant respectfully submits that Costello fails to teach or suggest the
recitations of Claims 19 and 20. Costello states, "In some embodiments, the present disclosure further provides a dielectric fluid comprising a mixture of a heptafluoroiso-butyronitrile or 2,3,3,3-tetrafluoro-2-(trifluoromethoxy) propanenitrile and an inert gas, such as nitrogen, carbon dioxide, nitrous oxide (N2O), helium, argon or air." In contrast, the recited inventive concept is directed to "a gas-insulated compartment containing a gas mixture comprising a fluorinated nitrile, carbon dioxide and oxygen and a gas selected from dry air, nitrogen and/or a noble gas.", it should be noted that the above heptafluoro isobutyronitrile with the formula of C4F7N is indeed a fluorinated nitrile as identically cited on the applicant’s instant claim 3.
C- Applicant’s arguments (pages 7-8) with respect to claims 1 and 2-7 (even though unpersuasive) are moot in view of new ground of rejection and are not responded to.
D- In response to applicant’s argument (page 7; 2nd paragraph) that; “Further, referring to FIG. 3 of the present application, under test conditions with 10% C4FN, 10mm contact gap and between 1 and 2bar, the dielectric strength of the alternative gas
mixture does not change when the oxygen concentration is around 26% to 30%.”, is not commensurate with scope of the claims and thus unpersuasive.
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 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
2026/04/28
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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