Prosecution Insights
Last updated: April 19, 2026
Application No. 18/682,799

HIGH VOLTAGE GAS INSULATED SWITCHGEAR, HV GIS, FOR SINGLE OR THREE PHASE OPERATION

Final Rejection §112
Filed
Feb 09, 2024
Examiner
HOFFBERG, ROBERT JOSEPH
Art Unit
2835
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Hitachi Energy Ltd.
OA Round
2 (Final)
72%
Grant Probability
Favorable
3-4
OA Rounds
2y 3m
To Grant
95%
With Interview

Examiner Intelligence

Grants 72% — above average
72%
Career Allow Rate
656 granted / 908 resolved
+4.2% vs TC avg
Strong +23% interview lift
Without
With
+23.1%
Interview Lift
resolved cases with interview
Typical timeline
2y 3m
Avg Prosecution
38 currently pending
Career history
946
Total Applications
across all art units

Statute-Specific Performance

§101
0.1%
-39.9% vs TC avg
§103
38.0%
-2.0% vs TC avg
§102
26.2%
-13.8% vs TC avg
§112
30.5%
-9.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 908 resolved cases

Office Action

§112
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 Request The Office requests Applicant’s cooperation with reviewing and correcting any other remaining informalities present in the claims, but not made of record in the instant action. Patent quality is the joint responsibility of the USPTO and the Applicant. Response to Arguments Applicant's arguments filed 2/16/26 have been fully considered but they are not persuasive. Applicant states “[i]n response to the Office Action's rejections under Sec. 112(b), Applicant has amended the claims” (applicant’s remarks of 2/16/26, p. 9). The Patent and Trademark Office (“PTO”) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827, 1830] (Fed. Cir. 2004). See MPEP 2111 “Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. see MPEP 2111.01 (II). The Examiner believes the only way to truly understand the scope of the claimed invention(s) is to import from Applicant’s written disclosure (the specification and drawings) into the intended claim scope(s). Therefore, despite Applicant’s amendments to address the formality issues raised in the non-final office action dated 12/8/25, the scope of the claims are still not clear. The remaining issues are raised as objection(s) and rejection(s) below. 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, a disconnector module comprising “a disconnector” (claim 1, lines 4-5 and claim 12, line 6) and “a circuit breaker and/or an earthing switch” (claim 8, line 2 and claim 18, line 2) 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 Objections Claims 3, 9, 10, 14, and 15, and 20 are objected to because of the following informalities: Claim 3, line 2, “with” should be “by”; Claim 10, line 2; and Claim 20, line 2, “a mixture of dry air an fluoroketones” should be “a mixture of dry air and fluoroketones”; Claim 14, lines 2, “as respective one” should be “a respective one”; Claim 15, line 1-2, ”the at least two auxiliary modules” should be ”the at least two of the auxiliary modules”; Claim 15, line 1-2, ”the at least two disconnector modules” should be ”the at least two of the disconnector modules”. Appropriate correction is required. 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. Claims 1 and 3-20 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. Claim 1, lines 7-8; Claim 11, line 8; and Claim 12, line 9, “the respective phase” lacks antecedent basis and probably should be “a respective one of each phase”; Claim 1, lines 15-16; Claim 11, lines 15-16; and Claim 12, lines 17-18 require “at least two of the disconnector modules and at least two of the auxiliary modules . . . comprise a coupling connection.” Based upon this claim limitation, that at a minimum of two disconnectors and two auxiliary modules (or a minimum of four modules) requires a coupling connection. Whereas the disclose appears to require each pair of a disconnector module 1 and an auxiliary module 7 are connected to each other by a coupling connection 9 (see fig. 1 and the specification, p. 7 at lines 21-22 states “[e]ach one respective main housing 3 and auxiliary housing 6 are connected together with a respective coupling connection 9); Claim 1, lines 16-18; Claim 11, lines 16-18; and Claim 12, lines 18-20 require “a coupling connection connecting the main bus bar and the auxiliary bus bar between the respective at least two of the disconnector modules and the respective at least two of the auxiliary modules.” First “the respective” of lines 17 and 18 (for claims 1 and 11) and lines 19 and 20 (for claim 12) each lack antecedent basis. Second, is this limitation intend to require “a coupling connection connecting the main bus bar and the auxiliary bus bar between a respective one of at least two of the disconnector modules and a respective one of at least two of the auxiliary modules” which the Examiner believes is consistent with the disclosure? d. Claim 5, line 3; and Claim 15, line 3, “the respective coupling connection” lacks antecedent basis. Note that claims 1 and 12 only requires “a coupling connection”; e. Claim 6, line 1-3; and Claim 16, lines 1-3 require “all of the disconnector modules and all of the auxiliary modules are connected by a respective coupling connection” and Is there just a respective (i.e., one) coupling connection for all of the disconnector modules and all of the auxiliary modules? Did Applicant intend for each of the disconnector modules is connected to a respective one of the auxiliary modules by a respective one of the coupling connection? f. Claims 6, lines 4-6; and Claim 16, lines 4-6 require “each of the disconnector modules and each of the respective auxiliary modules are connected in regular intervals by a respective coupling connection.” Is there just a respective (i.e., one) coupling connection for each of the disconnector modules and each of the respective auxiliary modules? Did Applicant intend for each of the disconnector modules is connected to a respective one of the auxiliary modules in regular intervals by a respective one of the coupling connection? g. Claim 6, lines 2-3 and 6 require “a respective coupling connection.” Are these the same or different respective coupling connections? h. Claim 8, lines 1-2; and Claim 18, lines 1-2 require “each of the disconnector modules comprises a circuit breaker and/or an earthing switch” and Claim 1, lines 4-5 requires “each of the disconnector modules comprises a disconnector.” Does each of the disconnector modules comprise a disconnector and a circuit breaker and/or an earthing switch, or does each of the disconnector modules comprise a disconnector and disconnector comprise a circuit breaker and/or an earthing switch? If each of the disconnector modules comprise a disconnector and a circuit breaker and/or an earthing switch, the comprises” of claim 8 should be “further comprises”; and i. Claim 16, lines 2-3 and 6 require “a respective coupling connection.” Are these the same or different respective coupling connections? REASONS FOR ALLOWANCE Claims 1, and 3-20 would be allowable if rewritten or amended to overcome the claim objection(s) and the rejection(s) under 35 U.S.C. 112(b0 or 35 U.S.C. 2nd paragraph, set forth in thew instant office action. The reasons indicating allowable subject matter set forth in the previous office action. 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 ROBERT J HOFFBERG whose telephone number is (571) 272-2761. The examiner can normally be reached on Mon - Fri 9 AM - 5 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jayprakash Gandhi can be reached on (571) 272-3740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. RJH 3/5/2026 /ROBERT J HOFFBERG/ Primary Examiner, Art Unit 2835
Read full office action

Prosecution Timeline

Feb 09, 2024
Application Filed
Nov 25, 2025
Examiner Interview (Telephonic)
Nov 29, 2025
Non-Final Rejection — §112
Feb 16, 2026
Response Filed
Mar 05, 2026
Final Rejection — §112 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

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MODULAR SWITCHGEAR AND METHOD OF ASSEMBLING THE SAME
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Patent 12575065
A HEAT SINK APPARATUS FOR AN INTERFACE MODULE
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Patent 12548985
SWITCHGEAR DEVICE WITH GROUNDING DEVICE AND RELATED METHODS
2y 5m to grant Granted Feb 10, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
72%
Grant Probability
95%
With Interview (+23.1%)
2y 3m
Median Time to Grant
Moderate
PTA Risk
Based on 908 resolved cases by this examiner. Grant probability derived from career allow rate.

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