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 .
The amendment dated 04/20/2026 has been considered and entered. The response has been considered and found to be persuasive over Papin et al. (WO 2014/173844) for failing to recite the functionalized succinimides of the claims. Therefore, the previous rejections are maintained.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/20/2026 has been entered.
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 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, 5, 6, 11 – 16, 18 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Papin et al. (WO 2014/173844) in view of Selvidge et al. (US 2006/0130394)
In regards to claim 1, Papin teaches additive for improving oxidation stability and/or storage stability of fuels comprising a Mannich reaction product of alkylphenol-aldehyde and an alkylamine or alkylpolyamine (abstract). The aldehyde has a 1 to 8 carbon atoms, i.e., formaldehyde, amine is a 1 to 30 carbon alkyl amine or polyamine, and the alkylphenol is a 1 to 30 carbon monoalkyl phenol such as nonylphenol (page 3 lines 14 – page 4 lines 32). Papin teaches additives such as succinimides detergents (i.e., deposit control agents) but does not particularly recite the functionalized succinimides of the claims (page 10 lines 18 – 22).
Harle et al. (WO2010/150040) teaches polyisobutenyl succinimide quaternary ammonium salt [0038 – 0041]. Therefore, it would have been obvious for persons of ordinary skill in the art at the time the claim was filed to have used the detergents of Harle in the composition of Papin, as Harle allows for use of succinimide detergents in the composition.
Papin teaches the fuel can be diesel fuel comprising the Mannich alkylphenol product at from 5 to 5000 ppm and can comprise various additives such as antioxidants, corrosion inhibitors, biocides, stabilizers, etc. (page 5 lines 10 – 34). In the examples, the additive composition comprises 2,6-di-tert-butyl-4-nonylphenol and the Mannich phenol mixed at 50:50 ratio (Table 2). Thus, it is obvious to use both phenolic compounds at similar amounts in the composition.
Thus, phenol containing additive (i) are provided by the Mannich product and the tert-butyl-nonylphenol. The composition can comprise other additives such as alkyl nitrates such as 2-ethylhexyl nitrate and alkyl peroxide which provides limitation (ii) of the claim (page 10 lines 10 – 13). The amount of the alkyl nitrate or alkyl peroxide which are conventionally known to be cetane improvers in fuels are not particularly recited, but will be present at low amounts as they are optional ingredients.
Selvidge teaches diesel fuels can comprise cetane improvers such as alkyl nitrates or alkyl peroxides in amounts of from 100 to 6000 ppm [0013]. Thus, persons of ordinary skill in the art at the time the claims were filed would have found it obvious to have used the nitrates and peroxides in the composition of Papin in amounts recited by Selvidge, as Selvidge provides useful amounts for such ingredients in diesel fuels.
When the phenolic compound such as the Mannich additive and the cetane improvers are used in the amounts discussed above, they will provide ratios overlapping the claimed range. By mixing the claimed additives in the diesel fuel which is a liquid fuel, the method for reducing emissions of nitrogen oxides and carbon monoxide and unburnt hydrocarbon pollutants in fuels would be intrinsically provided.
In regards to claims 5, 6, Papin and Selvidge provide the claimed method and composition having the Mannich reaction product as previously discussed. All the amines are primary amines, thus providing the at least two primary amines, and the alkyl groups of the alkylamine or alkylpolyamine have from 1 to 30, or 4 to 30 carbon atoms which are fatty alkyl groups (page3 line 20 – page 4 line 23).
In regards to claim 11, 19, Papin and Selvidge provide the method and teach the composition having the phenol additive(s) in amounts of from 5 to 5,000ppm as previously stated. While Papin teaches the presence of other additives such as succinimides, the amount in the composition is not particularly recited. Jung et al. (US 2014/0338253) teaches fuel additive composition comprising succinimides which are useful in fuels such as diesel fuels in amounts of from 10 to 500 ppm [0054]. Thus, persons of ordinary skill in the art at the time the claims were filed would have found it obvious to have used succinimide in the amounts recited by Jung in the composition of Papin, as Jung teaches useful amounts of such ingredients in fuels. When both additives are used in the amounts recited above, they would provide ratios overlapping the claimed range.
In regards to claim 12, Papin and Selvidge provide the method and composition. Papin teaches the fuel can be diesel, biodiesel, gas oil, gasoline, jet fuels etc. (page 22 lines 16 – 21).
In regards to claims 13, 14, Papin and Selvidge provide the method and composition with the claimed additives and would be expected to possess the same properties of reducing the emissions solid particles and unburnt hydrocarbons as claimed.
In regards to claims 15, 16, 20, Papin and Selvidge provide the method and composition useful in diesel engines and thus would have been obvious to have used their additives in the diesel engines of the claims. According to KSR rationale, choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is a basis for obviousness. In this case, it would have been obvious to try the additives of Papin in the engines of the claims with a reasonable expectation of success as they are generally known additives for use in various fuels including diesel fuels of a wide variety of applications. Papin in view of Selvidge teaches the composition of the claims and which are useful in internal combustion engines and thus intrinsically provides the claimed method.
In regards to claim 18, Papin and Selvidge provide the method and composition having claimed ingredients at 50:50 or 1:1 ratio as previously stated.
Response to Arguments
Applicant's arguments have been fully considered but they are moot in view of the new grounds of rejections made above.
Applicant argues that the claimed composition possesses improved and unexpected results over the prior art. The response has been considered but was not found to be persuasive.
The sole inventive example G2 is not commensurate in scope with the claims.
The sole inventive example is drawn to fuel comprising ethyl hexyl nitrate at 300 ppm, polyisobutylene succinimide functionalized with quaternary ammonium deposit control compound at 42 ppm, polyisobutylene succinimide functionalized with a triazole deposit control component at 30 ppm and a phenolic additive having a specific ratio of 2,6-di-t-butyl-4-methyl phenol at 15% and 2,4-dimethyl-6-t-butyl phenol and 2,5-dimethyl-4-t-butyl phenol at 85% by weight of the phenolic additive. The amount of the phenolic mixture is not recited.
While the claim allows for at least one phenol component at any suitable amount and a cetane improver at any suitable amount provided the ratio of the phenol and cetane improvers are 1:3 and 3:1, the inventive example is drawn to a specific blend of phenolic compounds used at a specific unknown amount, and a specific ethyl hexyl nitrate cetane compound at a specific amount of 300 ppm which does not support the breadth of the claims.
While the claims all for the use of at least one deposit control agent at any suitable amount, the inventive examples require two specific deposit control agents at specific amounts which does not support the breadth of the claims.
While the claims allow for a ratio of the phenol additive and the cetane improver to be at 1:3 to 3:1, the inventive example requires one specific ratio 350:300 which does not support the breadth of the claims nor demonstrates criticality of the claimed range.
The result is not persuasive.
Applicant argues that the presence of phenolic compounds which are generally known in the art to provide the function of antioxidants in the inventive G2 improved Nox emissions over the prior art G1 that had no phenolic compound, and thus demonstrated unexpected results. The presence of an additive which improves oxidation properties as providing improved combustion properties is not a demonstration of unexpected results. Applicant merely demonstrates that the phenolic antioxidants inherently improve Nox emissions.
Thus, applicant fails to provide inventive examples that are commensurate in scope with the claims and that provides superior and unexpected results sufficient to rebut the case of obviousness.
Conclusion
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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