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 8/1/25 overcome the rejection set forth under 35 USC 112(d) in the previous office action. The amendments also overcome the rejection set forth over Cunningham, Oswald, Cunningham ‘626, and Voelkel, but do not overcome the rejection set forth over Cunningham, Oswald, Cunningham ‘626, Voelkel, and Fabre, which is extended to the remainder of the pending claims as necessitated by the amendments.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/3/25 has been entered.
Claim Rejections - 35 USC § 103
Claims 1, 3 and 7-13 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, as recited in claim 1, including dicyclohexylamine, which is an amine having aliphatic groups with a number of carbon atoms within the range recited in claim 3. 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 as recited in claims 1 and 7, and various hydrocarbon-containing solvents as recited in claim 1. The blends disclosed in paragraph 15 of Cunningham comprise ethanol in amounts within the range recited in claim 9. The fuel additive concentrate of Cunningham is combined with the ethanol-containing fuel composition, 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 can be various hydrocarbon solvents recited in claims 1 and 8, and an alkyl or cycloalkyl alcohol solvent, which is a polar solvent as recited in claim 1, and can be specific alcohols recited in claim 7. 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, 3 and 7-13 are rendered obvious by Cunningham, Oswald, Cunningham ‘626, Voelkel, and Fabre.
Response to Arguments
Applicant's arguments filed 11/3/25 have been fully considered but they are not persuasive. Applicant argues that the claimed compositions produce unexpectedly superior results, and points to the data presented in the specification as demonstrating the criticality of the claimed additive concentration and the weight ratio of polar solvent to hydrocarbon-based solvent in leading to superior corrosion resistance.
In order to successfully rebut a prima facie case of obviousness, applicant must demonstrate unexpected results commensurate in scope with the claims. In response to the examiner’s statement in the office action mailed 8/1/25 that applicant exemplifies just one specific inventive inhibitor formulation (Inventive Example 1 in Table A), applicant asserts that Inventive Example 1 represents not a single discrete composition but a “representative group of compositions”. However, the results reported for the Inventive Example in the specification must have been obtained for a specific (but unspecified) composition. Additionally, even the scope of the “representative group of compositions” in Inventive Example 1 is far narrower than the scope of the claims. The claimed compositions comprise 0.1 to 4% by weight of an amine, 0.1 to 4% of a quaternary ammonium salt, and 0.1 to 3% of an antioxidant. Inventive Example 1 contains a total of 4 to 5% by weight of these additives, without even reporting specific amounts for the individual additives. There would be no basis for one of ordinary skill in the art to conclude, based on the data provided in the specification, that superior results would be maintained across the full scope of the claims, which allow for the corrosion inhibitor composition to comprise any amine, any polar solvent, any hydrocarbon-based solvent, and broad classes of quaternary ammonium salts and antioxidants, each across broad concentration ranges.
Applicant argues that Cunningham and Cunningham ‘626 do not teach the specific 1:1 ratio of polar to hydrocarbon solvent recited in the amended claims. However, as discussed in the rejection, Cunningham ‘626 clearly teaches that the ratio of polar to non-polar solvent can be optimized depending on the mix of polar and non-polar additives. One of ordinary skill in the art would therefore be led to optimize the ratio of polar to hydrocarbon solvent. It is noted that while Cunningham ‘626 teaches a solvent mixture preferably comprising more than 50% of the non-polar solvent, a preferred embodiment does not constitute a teaching away from the broader disclosure of Cunningham ‘626, and the additive compositions of Cunningham and the other references include polar additives (amine, quaternary ammonium salt, hindered phenol), leading one to increase the amount of polar solvent relative to the preferred embodiment of Cunningham ‘626.
Applicant argues that one of ordinary skill in the art would not combine Oswald with the cited references because it is directed to microbial degradation and demulsification, but the compositions of Cunningham comprise liquid hydrocarbons and Oswald teaches that the quaternary ammonium salt imparts its advantages to liquid hydrocarbons. The fact that the inventor has recognized another advantage 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 argues that Voelkel does not teach a synergistic ternary inhibitor system or critical solvent ratio, but as discussed above, applicant has not provided sufficient evidence of unexpected results to overcome the prima facie case of obviousness. A motivation for combining Voelkel with the other cited references has been set forth in the rejections.
Applicant argues that Fabre discloses that antioxidants are optional components. An optional component is still non-obvious. In this case where the primary reference, Cunningham, teaches the inclusion of a hindered phenolic, and Fabre teaches specific suitable hindered phenolic antioxidant compounds.
The examiner also recommends that the upper bounds of the concentration ranges for the polar solvent and the hydrocarbon-based solvent of claim 1 be lowered to reflect the claim amendment, since the polar solvent and hydrocarbon-based solvent can’t be present in amounts of 60% by weight each when present in a 1:1 weight ratio. Since the amine, quaternary ammonium salt, and antioxidant have to be present in a total of at least 0.3% by weight, the maximum concentration for both solvents is 49.85% each.
Conclusion
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771