Prosecution Insights
Last updated: May 29, 2026
Application No. 18/687,184

ELECTRIC APPARATUS FOR THE GENERATION, THE TRANSMISSION AND/OR THE DISTRIBUTION OF ELECTRICAL ENERGY

Non-Final OA §103§112
Filed
Feb 27, 2024
Priority
Aug 09, 2022 — EU 22189374.6 +1 more
Examiner
BOLTON, WILLIAM A
Art Unit
2831
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Hitachi Energy Ltd.
OA Round
1 (Non-Final)
89%
Grant Probability
Favorable
1-2
OA Rounds
0m
Est. Remaining
95%
With Interview

Examiner Intelligence

Grants 89% — above average
89%
Career Allowance Rate
668 granted / 750 resolved
+21.1% vs TC avg
Moderate +6% lift
Without
With
+5.7%
Interview Lift
resolved cases with interview
Fast prosecutor
1y 10m
Avg Prosecution
19 currently pending
Career history
775
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
85.0%
+45.0% vs TC avg
§102
10.9%
-29.1% vs TC avg
§112
1.8%
-38.2% vs TC avg
Black line = Tech Center average estimate • Based on career data from 750 resolved cases

Office Action

§103 §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 . 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, the “electrical apparatus for the generation, the transmission and/or the distribution of electrical energy comprising a housing enclosing an electrical apparatus interior space, at least a portion of the electrical apparatus interior space forming an insulation space, in which an electrical component is arranged” of claim 1, along with the other structures of dependent claims 2-14, must be shown or the feature(s) canceled from the claim(s). Also Figs. 1-2 should be of solid black lines. 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. Specification “at %” used throughout description, is unclear, since it has not been defined. Claim Objections Claims 1-5, 8-10, 12-15, 18 and 19 are objected to because: Claim 1, lines 1-2, “the generation, “the transmission” and “the distribution” lack antecedent basis. Claim 1, phrase, “use/or” used throughout the claim renders scope of claim unclear. Claim 1, line 7, “part” should be -part of-. Claim 1, lines 9-11, “at %” should be -wt %-. Claims 2-11, lines 1, “An electrical apparatus” should be -The electrical apparatus-. Claim 2, lines 1-2, “the electric apparatus” lacks antecedent basis. Claim 3, line 2, “at %” should be -wt %-. Claim 4, line 2, “at %” should be -wt %-. Claim 5, line 2, “at %” should be -wt %-. Claim 8, line 3, “the total weight” lacks antecedent basis. Claim 9, line 2, “the range” lacks antecedent basis. Claim 10, line 3, phrase, “use/or” renders scope of claim unclear. Claim 12, phrase, “use/or” used throughout the claim renders scope of claim unclear. Claim 12, lines 4-6, “at %” should be -wt %-. Claim 12, line 7, “the generation, “the transmission” and “the distribution” lack antecedent basis. Claims 13-14, lines 1, “A method” should be -The method-. Claim 13, lines 3-5, “at %” should be -wt %-. Claim 14, lines 1-2, “the electric apparatus” lacks antecedent basis. Claim 15, lines 1-2, “the generation” lacks antecedent basis. Claim 15, line 3, “part” should be -part of-. Claim 15, phrase, “use/or” used throughout the claim renders scope of claim unclear. Claim 15, lines 5-6, “at %” should be -wt %-. Claims 17-19, line 2, “at %” should be -wt %-. 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 10, and 13 and 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. Claims 10 and 13, “in particular” renders the claim indefinite, leaving the scope of the claim unascertainable. Claim 20, phrase, “approximately devoid ” renders the claim indefinite, leaving the scope of the claim unascertainable. Appropriate correction is required. 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. Claims 1-6, 10 and 12-19 are rejected under 35 U.S.C. 103 as being unpatentable over Di-Gianni et al, US 20180005727 [Di-Gianni]. Regarding claim 1, Di-Gianni discloses an electrical apparatus for the generation, the transmission and/or the distribution of electrical energy comprising a housing enclosing an electrical apparatus interior space, at least a portion of the electrical apparatus interior space forming an insulation space, in which an electrical component is arranged and which contains an insulation medium surrounding the electrical component, the insulation medium containing an organofluorine compound [para. 0024] and the electrical apparatus further comprising an adsorber comprising a zeolite [para. 0013] for removing at least a part a contaminant and/or decomposition product resulting from arcing and/or partial discharge in the insulation space [para. 0070]. Di-Gianni fails to explicitly disclose the apparatus wherein the zeolite contains: less than 0.5 wt.% of magnesium (Mg), less than 0.5 wt.% of calcium (Ca), and less than 0.5 wt.% of iron (Fc). However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to include a zeolite compound, having magnesium (Mg) less than 0.5 wt%, calcium (Ca) less than 0.5 wt% and iron (Fc) less than 0.5 wt%, thus assisting with the removal of contaminant and/or decomposition product resulting from arcing and/or partial discharge in the insulation space, since it has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 203 USPQ 215 (CCPA 1980). Regarding claim 2, Di-Gianni further discloses the electric apparatus being: a gas insulated switchgear (GIS) being a GIS for transmission or sub-transmission, or an integrated GIS; a gas-insulated line; a hybrid switchgear (gas insulated modules); a circuit breaker being a live tank breaker, a dead tank breaker, or an interrupter unit; a switch being a grounding or earthing switch, an isolation switch or disconnector, or a fast-acting earth switch; a transformer being an instrument or measurement transformer, a power transformer or a distribution transformer; a gas-insulated surge arrester; or extensions, upgrades or retrofits or a component or combinations thereof [para. 0087]. Regarding claim 3, Di-Gianni fails to disclose wherein the adsorber contains less than 0.25 wt% of Mg. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to include an adsorber containing magnesium (Mg) less than 0.25 wt%, thus assisting with the removal of contaminant and/or decomposition product resulting from arcing and/or partial discharge in the insulation space, since it has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 203 USPQ 215 (CCPA 1980). Regarding claim 4, Di-Gianni fails to disclose wherein the adsorber, contains less than 0.25 wt% of Ca. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to include an adsorber containing calcium (Ca) less than 0.25 wt%, thus assisting with the removal of contaminant and/or decomposition product resulting from arcing and/or partial discharge in the insulation space, since it has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 203 USPQ 215 (CCPA 1980). Regarding claim 5, Di-Gianni fails to disclose wherein the adsorber, contains less than 0.25 wt% Fe. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to include an adsorber containing iron (Fe) less than 0.25 wt%, thus assisting with the removal of contaminant and/or decomposition product resulting from arcing and/or partial discharge in the insulation space, since it has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 203 USPQ 215 (CCPA 1980). Regarding claim 6, Di-Gianni further discloses where the organofluorine compound is perfluoroisobutyronitrile [para. 0060]. Regarding claim 10, Di-Gianni further discloses where the insulation medium further comprises a carrier gas selected from the group of air, an air component [para.0062]. Regarding claim 12, Di-Gianni inherently perform a method comprising, using an adsorber [para.0022] for removing at least a part of a contaminant and/or decomposition product resulting from arcing or partial discharge [para.0070], in an electrical apparatus for the generation, the transmission and/or the distribution of electrical energy. Di-Gianni fails to explicitly perform the method of the adsorber containing: less than 0.5 at% of magnesium (Mg), less than 0.5 at% of calcium (Ca), and less than 0.5 at% of iron (Fe) However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to include an adsorber, having magnesium (Mg) less than 0.5 wt%, calcium (Ca) less than 0.5 wt% and iron (Fc) less than 0.5 wt%, thus assisting with the removal of contaminant and/or decomposition product resulting from arcing and/or partial discharge in the insulation space, since it has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 203 USPQ 215 (CCPA 1980). Regarding claim 13, Di-Gianni would necessarily perform the method, in that the adsorber comprises a zeolite [para.0013], containing less than 0.5 wt% of magnesium (Mg),less than 0.5 wt% of calcium (Ca), and less than 0.5 wt% of iron (Fc). However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to include an adsorber, having magnesium (Mg) less than 0.5 wt%, calcium (Ca) less than 0.5 wt% and iron (Fc) less than 0.5wat%, thus assisting with the removal of contaminant and/or decomposition product resulting from arcing and/or partial discharge in the insulation space, since it has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 203 USPQ 215 (CCPA 1980). Regarding claim 14, Di-Gianni would further the method of the electric apparatus being: a gas insulated switchgear (GIS) being a GIS for transmission or sub-transmission, or an integrated GIS; a gas-insulated line; a hybrid switchgear (gas insulated modules); a circuit breaker being a live tank breaker, a dead tank breaker, or an interrupter unit; a switch being a grounding or earthing switch, an isolation switch or disconnector, or a fast-acting earth switch; a transformer being an instrument or measurement transformer, a power transformer or a distribution transformer; a gas-insulated surge arrester; or extensions, upgrades or retrofits or a component or combinations thereof [para.0087]. Regarding claim 15, Di-Gianni discloses an adsorber for an insulation medium for an electrical apparatus for the generation, transmission and/or distribution of electrical energy, the adsorber comprising: a zeolite [para.0070] for removing at least a part a contaminant and/or decomposition product resulting from arcing and/or partial discharge in an insulation space of the electrical apparatus [para.0024]. Di-Gianni fails to disclose the zeolite containing less than 0.5 wt% of magnesium (Mg), less than 0.5 wt% of calcium (Ca), and less than 0.5 wt% of iron (Fe). However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to include a zeolite compound, having magnesium (Mg) less than 0.5 wt%, calcium (Ca) less than 0.5 wt% and iron (Fc) less than 0.5 at%, thus assisting with the removal of contaminant and/or decomposition product resulting from arcing and/or partial discharge in the insulation space, since it has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 203 USPQ 215 (CCPA 1980). Regarding claim 16, Di-Gianni further discloses where the insulation medium comprises an organofluorine compound [para.0008]. Regarding claim 17, Di-Gianni fails to disclose wherein the adsorber contains less than 0.10 wt% of Mg. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to include an adsorber containing magnesium (Mg) less than 0.10 wt%, thus assisting with the removal of contaminant and/or decomposition product resulting from arcing and/or partial discharge in the insulation space, since it has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 203 USPQ 215 (CCPA 1980). Regarding claim 18, Di-Gianni fails to disclose wherein the adsorber, contains less than 0.10 wt% of Ca. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to include an adsorber containing calcium (Ca) less than 0.10 wt%, thus assisting with the removal of contaminant and/or decomposition product resulting from arcing and/or partial discharge in the insulation space, since it has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 203 USPQ 215 (CCPA 1980). Regarding claim 19, Di-Gianni fails to disclose wherein the adsorber, contains less than 0.15 wt% Fe. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to include an adsorber containing iron (Fe) less than 0.15 wt%, thus assisting with the removal of contaminant and/or decomposition product resulting from arcing and/or partial discharge in the insulation space, since it has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 203 USPQ 215 (CCPA 1980). Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Di-Gianni in view of Hagio et al, US 11008219 [Hagio]. Regarding claim 7, Di-Gianni fails to disclose wherein the zeolite has a pH less than 8. Hagio discloses a method of manufacturing zeolite having a pH less than 8. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the zeolite of Di-Gianni with the zeolite of Hagio, thereby providing a method of synthesis for an aluminophosphate-based zeolite membrane that enhances characteristics of the membrane synthesis. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Di-Gianni in view of Suzuki et al. US 4336414 [Suzuki]. Regarding claim 8, Di-Gianni fails to explicitly disclose wherein an amount of clay contained in the zeolite is less than 3 wt-%, based on the total weight of the zeolite. Suzuki discloses (fig.1) an electrical apparatus (10) where an amount of clay contained in zeolite (filter, 34) is less than (0%) 3 wt-%, based on the total weight of the zeolite [synthetic zeolite contains no clay]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the zeolite of Di-Gianni with the teaching of the zeolite of Suzuki, thereby providing superior cation exchange capacity, adsorption and stability. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Di-Gianni in view of Serra Alfaro et al, US 20090266237 [Serra Alfaro]. Regarding claim 9, Di-Gianni fails to disclose wherein an average pore size diameter of the zeolite is in the range from 0.25 nm to 0.55 nm. Serra Alfaro discloses where an average pore size diameter of a zeolite is in a range from 0.25 nm to 0.55 nm (0.2nm to 0.45 nm). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the zeolite of Di-Gianni with the range of the zeolite of Serra Alfaro, thereby providing a separating device for gas-phase separation with porosities of gas mixtures with the required range. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Di-Gianni in view of Hyrenbach et al, US 9196431 [Hyrenbach]. Regarding claim 11, Di-Gianni fails to disclose wherein the electrical apparatus is energized with a voltage higher than 1 kV. Hyrenbach discloses where an electrical apparatus (2) is energized with a voltage higher than 1 kV [col.6, lines 15-20]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the electrical apparatus of Di-Gianni with the electrical apparatus of Hyrenbach, thereby providing an apparatus configured to safely operate in the high voltage ranges successfully. Regarding claim 20,as best understood, Di-Gianni fails to disclose wherein the zeolite is approximately devoid of clay. Suzuki discloses (fig.1) an electrical apparatus (10) where a zeolite (filter, 34) is approximately devoid of clay [synthetic zeolite contains no clay]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the zeolite of Di-Gianni with the teaching of the zeolite of Suzuki, thereby providing superior cation exchange capacity, adsorption and stability. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kato et al, Bauer et al, da Silva et al, Khivantsev et al, Seo et al, Chen et al, Kieffel et al and Adachi et al are examples of electrical apparatuses comprising adsorbers configured similar to the present invention. Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM A BOLTON whose telephone number is (571)270-5887. The examiner can normally be reached Mon-Fri: 7:30AM - 5:00PM. 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, Renee S. Luebke can be reached at 571-272-2009. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. 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. /WILLIAM A BOLTON/Primary Examiner, Art Unit 2831
Read full office action

Prosecution Timeline

Feb 27, 2024
Application Filed
Apr 22, 2026
Non-Final Rejection mailed — §103, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
89%
Grant Probability
95%
With Interview (+5.7%)
1y 10m (~0m remaining)
Median Time to Grant
Low
PTA Risk
Based on 750 resolved cases by this examiner. Grant probability derived from career allowance rate.

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