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 amendments filed 4/17/26 do not overcome the rejection set forth in the office action mailed 11/17/25, which is maintained below. The discussion of the rejection has been updated as necessitated by the amendments.
Claim Rejections - 35 USC § 103
Claims 1 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Cunningham (U.S. PG Pub. No. 2008/0086936) in view of Oswald (U.S. Pat. No. 3,880,613), Cunningham (U.S. Pat. No. 5,279,626, “Cunningham ‘626”), Voelkel (U.S. PG Pub. No. 2010/0236140), and Fabre (U.S. PG Pub. No. 2017/0121621).
In paragraph 15 Cunningham discloses fuel additive agents for various ethanol-containing fuels. In paragraphs 23-24 Cunningham discloses a fuel additive concentrate comprising a diluent. In paragraphs 21 and 27 Cunningham discloses that suitable additives for the additive composition include various amines, and specifically discloses dicyclohexylamine, which is an aliphatic amine having 12 carbon atoms, meeting the limitations of the aliphatic amine of claim 1. Cunningham further discloses in paragraphs 21 and 27 that hindered phenolics are suitable additives, and in paragraph 30 specifically a sterically hindered phenolic antioxidant, meeting the limitations of the antioxidant recited in amended claim 1. In paragraphs 23-24 Cunningham discloses that the diluent for the additive concentrate can comprise ethanol, which is a polar solvent recited in amended claim 1, and various hydrocarbon-containing solvents. The fuel additive concentrate of Cunningham is combined with the ethanol-containing fuel composition, indicating that the additive concentrate is effective for gasohol blends, as recited in claim 9, and leading to fuel compositions comprising a fuel mixture of ethanol and gasoline and the fuel additive concentrate, as in claims 12-13. The differences between Cunningham and the currently presented claims are:
i) Cunningham does not disclose the inclusion of a quaternary ammonium salt in the fuel additive concentrate. Cunningham does disclose in paragraph 22 that the fuel additive can comprise a dehazer.
ii) Cunningham discloses a fuel additive concentrate for ethanol-gasoline blends which can comprise a hindered phenolic antioxidant, but does not disclose the specific hindered phenolic antioxidant species of amended claim 1.
iii) Cunningham does not specifically disclose that the diluent can be a mixture of a polar solvent (ethanol) and a hydrocarbon-based solvent.
iv) Cunningham does not disclose the specific concentrations of the components of the fuel additive concentrate.
With respect to i), Oswald discloses in column 2 lines 32-44 that liquid hydrocarbons containing ammonium salts having one higher alkyl substituent and three methyl substituents have improved antihaze and antibacterial properties. In column 3 lines 34-53, Oswald discloses that the counterion of the ammonium salt can be a halide, most preferably chloride. The ammonium salts of Oswald are tetraalkyl ammonium halides, meeting the limitations of the quaternary ammonium salts of claim 1. In column 4 lines 8-22 Oswald teaches that the liquid hydrocarbons can be fuels such as gasoline. In column 5 lines 42-53 Oswald discloses that the ammonium salts can be added to a liquid hydrocarbon as a concentrate in a polar solvent, and can be used in conjunction with additional additives.
It would have been obvious to one of ordinary skill in the art to include the quaternary ammonium salts of Oswald in the fuel additive concentrate and fuel composition of Cunningham, since Oswald teaches that they impart antihaze and antibacterial properties to liquid hydrocarbons, such as the gasoline present in the fuel composition of Cunningham.
With respect to ii), Fabre, in paragraph 18, discloses a concentrated fuel additive package which can comprise an antioxidant. In paragraph 102 Fabre discloses that the fuel can be a mixture of gasoline and ethanol. In paragraph 92 Fabre discloses that the antioxidant can be a hindered phenolic antioxidant, and in paragraph 96 discloses that suitable hindered phenolic antioxidants include 2-methyl-6-tert-butylphenol, 2,4-dimethyl-6-tert-butylphenol, 4-(N,N-di-methylaminomethyl)-2,6-di-tert-butylphenol, 4-ethyl-2,6-di-tertbutylphenol, 2-tert-butyl-4,6-dimethylphenol, 2,6-di-tert-butyl-4-ethylphenol, and 2,6-di-tert-butyl-4-n-butylphenol, all as recited in amended claim 1.
It would have been obvious to one of ordinary skill in the art to include at least one of the hindered phenolic antioxidants of Fabre as the hindered phenolic antioxidant in the composition of Cunningham, since Fabre teaches that they are suitable hindered phenolic antioxidants for similar additive concentrates for similar fuels.
With respect to iii), In column 1 lines 43-50, Cunningham ‘626 discloses a fuel additive concentrate comprising a solvent stabilizer composition. In column 2 lines 13-37 Cunningham ‘626 discloses that the solvent stabilizer comprises a combination of an aromatic solvent, which is particularly preferably xylene, as recited in amended claim 1, and an alkyl or cycloalkyl alcohol solvent, can be ethanol, as disclosed by Cunningham and recited in amended claim 1, as well as butanol, also recited in amended claim 1. The additive packages of Cunningham ‘626 include a detergent/dispersant and a demulsifier, which can be succinimides and glycols respectively, within the classes of additives disclosed in paragraphs 21 and 27 of Cunningham. In column 5 lines 64-68, Cunningham ‘626 discloses that the additive package can comprise various additional additives including antioxidants. In column 3 lines 20-39 Cunningham ‘626 discloses that any sequence of addition can be used to prepare the additive packages, including combining the additives with the alcohol (polar solvent) prior to addition of the hydrocarbon, corresponding to the method recited in claim 11.
It would have been obvious to one of ordinary skill in the art to include the solvent stabilizer composition of Cunningham ‘626, comprising a mixture of an aromatic hydrocarbon solvent and a polar alcohol solvent, in the additive concentrate of Cunningham, since Cunningham ‘626 teaches that the inclusion of the solvent stabilizer composition improves the shelf-life stability of a fuel additive concentrate comprising a detergent/dispersant in line with the additives disclosed by Cunningham.
With respect to iv), in paragraphs 98-109, Voelkel discloses additive packages which can comprise a solvent mixture (carrier oils, solvents, co-solvents), as well as co-additives. In paragraph 97 Voelkel discloses that the co-additives can be amine or phenolic antioxidants in accordance with those disclosed by Cunningham, and that the composition can also comprise amines as lubricity improvers or pH adjusters. In paragraphs 110 and 115 Voelkel discloses that the additive packages can be used in ethanol-containing gasoline fuels. Based on the amounts disclosed by Voelkel for the required components of the additive package in paragraphs 100-106, the concentrations of amine and antioxidant will at least overlap the ranges recited in claims 1 and 11-12. In paragraph 109 Voelkel discloses that the additive packages are added to the fuel in an amount to provide 5 to 2000 ppm, or 10 to 500 ppm of the reaction product component of the additive package to the fuel; since Voelkel discloses in paragraph 101 that the reaction product can be 10 to 40% of the additive package, the concentration of the additive package in the fuel will range from 12.5 to 20000 ppm, or 25 to 5000 ppm, overlapping the range recited in claim 12.
It would have been obvious to one of ordinary skill in the art to include amine and antioxidant components in the additive concentrate of Cunningham in the amounts indicated by Voelkel, since Voelkel teaches suitable concentrations for components of an additive package comprising similar components and useful in similar ethanol-gasoline blends.
In columns 2 lines 38-62, Cunningham ‘626 discloses that the ratio of the polar solvent (alcohol) and non-polar solvent is a result-effective variable, since it affects the solubility of the additives depending on their polarity. Cunningham ‘626 discloses in column 2 lines 58-62 that the relative amounts of polar and non-polar solvents effective in enhancing the stability of an additive package can be found “by a simple trial and error procedure”. In column 3 lines 11-16 Cunningham ‘626 more teaches that the ratio of hydrocarbon to solvent “can be readily determined by simple experimentation” when the polar/non-polar characteristics of the additive package differ from those of the specific packages disclosed in Cunningham ‘626, and can therefore be adapted to a wide variety of additive packages.
In column 3 lines 57-65, Oswald discloses that the concentration of the ammonium salt will depend on the major hydrocarbon component of the fuel composition and the properties desired.
It is therefore the examiner’s position that the concentrations of hydrocarbon solvent, polar solvent, and quaternary ammonium salt in the additive concentrate of Cunningham, Oswald, Cunningham ‘626, and Voelkel are result effective variables because Cunningham ‘626 and Oswald disclose that changing them will affect the type of product obtained. See MPEP § 2144.05 (B). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Additionally, differences in concentration or temperature generally will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It therefore would have been obvious to one of ordinary skill in the art to formulate the additive concentrate of Cunningham, Oswald, Cunningham ‘626, and Voelkel to contain the amine, antioxidant, quaternary ammonium salt, polar solvent, and hydrocarbon-based solvent in the amounts and ratios recited in claims 1 and 11-12, and to include the additive concentrate in a fuel in the amount recited in claim 12. While the references do not specifically disclose that the additive concentrate is used as a corrosion inhibitor, since it meets the compositional limitations of the claims will be capable of performing the intended use recited in claim 9, and to have the properties recited in claim 10.
In light of the above, claims 1 and 9-13 are rendered obvious by Cunningham, Oswald, Cunningham ‘626, Voelkel, and Fabre.
Response to Arguments
Applicant's arguments filed 4/17/26 have been fully considered but they are not persuasive.
Regarding the Oswald reference, applicant argues that Oswald discloses the claims are drawn to a composition for corrosion inhibition, while Oswald discloses the quaternary ammonium salt as an antihaze additive. As discussed in the rejection, Cunningham a composition which can comprise a dehazer, and Oswald provides motivation for one of ordinary skill in the art to include the claimed quaternary ammonium salt as a dehazer. The fact that the inventor has recognized another advantage, such as corrosion inhibition, which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Applicant could overcome the prima facie case of obviousness with a sufficient showing of unexpected results in accordance with the requirements laid out in MPEP 716.02, but as discussed in the office action mailed 11/17/25 applicant has not done so, and does not present further arguments regarding unexpected results in the remarks filed 4/17/25.
Regarding the Fabre reference, applicant argues that a person of ordinary skill in the art would have no reason or motivation to include the antioxidant in the claimed composition in the claimed concentration. However, Fabre is cited simply to provide motivation for using the specific recited antioxidants as the hindered phenolic antioxidant of Cunningham; the motivation for including the antioxidants in the claimed concentration range comes from Voelkel. Applicant has not provided any reasoning or evidence to suggest that the specific choice of antioxidant would affect the effective concentration range.
Regarding the Cunningham ‘626 reference, applicant argues that Cunningham ‘626 teaches away from the claimed concentration and ratio of polar solvent to hydrocarbon-based solvent. The examiner maintains the positions taken in the rejection and in previous office actions. Cunningham ‘626, in column 2 lines 39-62, discloses that the ratio of aromatic hydrocarbon solvent to polar solvent (alcohol) is a key feature of the invention, discloses the specific effects of varying the ratio in either directions, and explicitly teaches that a “simple trial and error procedure” can be used to enhance the stability of additive packages by adjusting the amounts of non-polar (hydrocarbon) and polar solvents in the composition. Cunningham ‘626 therefore provides a clear teaching that the ratio and amounts of hydrocarbon solvent and polar solvent are result-effective variables, and optimizing them would be a matter of routine experimentation in accordance with Aller, and within the scope of ordinary skill in the art in accordance with Boesch.
Applicant also argues that corrosion inhibitors and other additives are optional components in the composition of Cunningham ‘626, but the rejection does not contemplate including these additives of Cunningham ‘626 in the composition of Cunningham, and in any case optional does not equate to non-obvious.
Regarding the Voelkel reference, applicant alleges that one of ordinary skill in the art would not have been motivated to prepare a composition having the claimed concentration of C4 to C18 aliphatic amine based on the teaching of Voelkel, but Voelkel teaches in paragraph 97 the inclusion of dicyclohexylamine, which is a C12 aliphatic amine within the scope of the amended claim, and the same aliphatic amine disclosed by Cunningham. Based on the amounts disclosed by Voelkel for the required components of the additive package, the concentrations of the optional components, such as the dicyclohexylamine, will at least overlap the claimed ranges.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, PREM SINGH can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771
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