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 .
Election/Restrictions
Claims 9-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2026/05/06.
Claims 1-8 and 16-20 are subject to examination.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
Claims 16-20 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.
In the present instance, claim 16 recites the broad recitation 0.001 wt.% to 90 wt.%, and the claim also recites 0.001 wt.% to 40 wt.% which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Yin (US 2013/0285781 A1) in view of Cho et al. (Chemical Eng. Journal (2017) 314-357) , as evidenced by Li Jiao et. al. (CN 108396585 A) and Mansour et al. (2019 21st International Middle East Power Systems Conference (MEPCON) Tanta University, Egypt).
Regarding claims 1-3, Yin teaches a dielectric fluid composition, for improving thermal conductivity in electrical equipment such as power transformers (abstract, 4, 18-19, 24-25) comprising metal oxide nanoparticles such as titanium oxide TiO2 in the amounts of 0.1 to 5 wt%; [24-25], which are coated/covered by organofunctional silane polymer; [26].
Regarding claims 1 and 4-6, Yin does not teach the same instantly claimed formula of R1Si(OR2)3. However, the related art of Cho et al. teaches coating of nanoparticles multifunctional super-hydrophobic coatings, made of silane polymers with enhanced water/oil separation, self-cleaning, anti-corrosion, and anti-biological adhesion such as tri-ethoxy octyl silane wherein R1 is an alkyl such as octyl and R2 is ethyl thus meeting the instant claims; [abstract, Pages. 348-349 & 352: Columns 1]. Yin and Cho are related arts that of using the silane polymers for covering nanoparticle for the purpose of their optimal performance in fluid material. At the time before the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to coat the titanium oxide of Yin with the silane polymer of Cho with the motivation of enhancing the transparency of the fluid by particle self-cleaning property and enhancing the thermal conductivity of the fluid. I)- This is further evidenced by Jiao in the Method for improving thermal stability of power transformer’s insulating paper in presence of surface treated nanoparticles; [abstract, 2, 4, 7, 16]. II)- As a related evidence, the prior art of Mansur et al. teaches effects of modification of titania (TiO2) nanoparticle with silane polymers for the power transformer & distribution equipment by enhancing their stability and operation; [abstract, pages; 1199, 1200, 1201].
III)- The Office realizes that all the claimed effects or physical properties (increasing insulating paper’s lifetime) 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. increasing insulating paper lifetime), 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 7-8, Yin teaches that the nanoparticle composition is associated with power transformers and distribution transformers; [3-4, 18-19, 32, 34].
Claims 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Yin (US 2013/0285781 A1) in view of Cho et al. (Chemical Eng. Journal (2017) 314-357) , as evidenced by Li Jiao et. al. (CN 108396585 A) and Mansour et al. (2019 21st International Middle East Power Systems Conference (MEPCON) Tanta University, Egypt).
Regarding claims 16-18 and 20, Yin teaches a transparent dielectric fluid composition, for improving thermal conductivity in electrical equipment such as power transformers (instant claim 20); [abstract, 3-4, 18-19, 24-25, 32], comprising metal oxide nanoparticles such as titanium oxide TiO2 in the amounts of 0.1 to 5 wt%; [24-25], which are coated/covered by organofunctional silane polymer; [26].
Regarding claims 16-18, Yin does not teach the same instantly claimed formula of R1Si(OR2)3. However, the related art of Cho et al. teaches coating of nanoparticles multifunctional super-hydrophobic coatings, made of silane polymers with enhanced water/oil separation, self-cleaning, anti-corrosion, and anti-biological adhesion such as tri-ethoxy octyl silane wherein R1 is an alkyl such as octyl and R2 is ethyl thus meeting the instant claims; [abstract, Pages. 348-349 & 352: Columns 1]. Yin and Cho are related arts that of using the silane polymers for covering nanoparticle for the purpose of their optimal performance in fluid material. At the time before the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to coat the titanium oxide of Yin with the silane polymer of Cho with the motivation of enhancing the transparency of the fluid by particle self-cleaning property and enhancing the thermal conductivity of the fluid. I)- This is further evidenced by Jiao in the Method for improving thermal stability of power transformers’ insulating paper in presence of surface treated nanoparticles; [abstract, 2, 4, 7, 16]. II)- As a related evidence, the prior art of Mansur et al. teaches effects of modification of titania (TiO2) nanoparticle with silane polymers for the power transformer & distribution equipment by enhancing their stability and operation; [abstract, pages; 1199, 1200, 1201].
III)- The Office realizes that all the claimed effects or physical properties (increasing insulating paper’s lifetime) 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. increasing insulating paper lifetime), 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, Yin teaches a mixture of transparent dielectric fluid with a nanoparticles of titanium oxide coated with silane and in a heated environment of power transformer; [3, 14]. Furthermore, the claim’s language is a product by process one. It should be noted that; when product by process claims are rejected over a prior art product that appears to be the same, the burden is shifted to the Applicant to establish an unobviousness difference, even if the production processes are different. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), [MPEP 2112.02].
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 9 AM- 6 PM.
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, Dr. Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.R.A./
Examiner, Art Unit 1767
2026/08/01
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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