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 .
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.
Claim(s) 1 and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Tanev et al (US 2021/0283581) in view of Yu et al. (US 2021/0363440).
Claim 1
Tanev discloses a process for improving the sustainability of a dual-fuel engine system operated with a first liquid fuel and a second gaseous fuel, said process comprising providing to the engine system a first liquid diesel fuel and a methane based gas as the second gaseous fuel, and combusting said fuels in an internal combustion engine system, wherein exhaust gases from combusting said fuels are contacted with a methane oxidation catalyst provided in the exhaust system of said internal combustion engine system, wherein the exhaust gases are contacted with the methane oxidation catalyst such that methane present in the exhaust gases and oxygen are present in an O2:CH4 ratio of at least 2:1 (see paragraphs [0010], [0011] and [0067]-[0070]).
While Tanev discloses providing a diesel fuel, Tanev does not explicitly disclose that the diesel fuel is an EN15940 compliant paraffinic gasoil liquid fuel.
However Yu discloses the process of producing high paraffinic EN15940 compliant diesel fuels wherein said EN15940 compliant paraffinic gasoil comprises a Fischer-Tropsch derived paraffinic gasoil (see paragraphs [0069] and [0070]), a hydrotreated vegetable oil derived paraffinic gasoil (see Yu, paragraph [0004]) or mixtures thereof and wherein the paraffinic gasoil consists of at least 95% w/w of paraffinic components.
It would have been obvious to one having ordinary skill in the art to modify the process disclosed by Tanev with the specific use of a high paraffinic EN15940 compliant diesel fuel as disclosed by Yu in order to meet environmental regulations.
Claim 4
Tanev/Yu disclose a process as claimed in claim 3, wherein the EN15940 compliant paraffinic gasoil consists essentially of one or more hydrotreated vegetable oil derived paraffinic gas oils (see Yu, paragraph [0004]).
Claim 5
Tanev/Yu do not explicitly disclose a process as claimed in claim 1, wherein the methane-based gas is provided by methane from biogas production or from a power-to-gas plant.
However the use of bio-methane is well known to one having ordinary skill in the art and would have been obvious to implement in order to replace natural gas and provide a fully renewable dual fuel system.
Claim 6
Tanev/Yu disclose a process as claimed in claim 1, wherein the first liquid fuel comprises an hydrotreated vegetable oil derived paraffinic gasoil (see Yu, paragraph [0004]), and
Tanev/Yu do not explicitly disclose a process wherein the second gaseous fuel comprises a biomass-derived methane.
However the use of bio-methane is well known to one having ordinary skill in the art and would have been obvious to implement in order to replace natural gas and provide a fully renewable dual fuel system.
Claim 7
Tanev/Yu disclose a process as claimed in claim 1, wherein the methane oxidation catalyst is produced from noble metals and zirconia (see Tanev paragraphs [0011], [0021]-[0027]).
Claim 8
A process for reducing the emissions of methane from an engine system, comprising providing one or more hydrotreated vegetable oil derived, EN15940-compliant paraffinic gas oils as a liquid fuel to a dual-fuel engine system, in which a methane-based gas is used as a gaseous fuel, and providing a methane oxidation catalyst to an exhaust system of said engine system (see rejection of Claim 1 above).
Response to Arguments
Applicant's arguments filed 4/17/2026 have been fully considered but they are not persuasive.
In re applicant’s arguments that the cited references ‘address different technical problems in unrelated technical contexts and therefore the person skilled in the art would have had no motivation to combine the teachings therein”, the argument is not persuasive because it mischaracterizes the scope of Tanev. Tanev explicitly discusses a methane oxidation catalyst for treating exhaust from a “dual fuel, i.e. diesel and LNG, fueled vehicle” (paragraph [0003]), teaches a natural gas fueled engine fueled by “a mixture of compressed natural gas or liquefied natural gas with diesel or gasoil” (paragraph [0067]), and teaches contacting the methane containing exhaust with a catalyst at an 02CH4 ratio of at least 2:1 (paragraph [0070]), the exact ratio claimed in the exact ratio claimed by the applicant. Taney and Yu are in the same field and are pertinent to the same problem, and are therefore analogous art.
In re applicant’s arguments that “The proposed combination therefore relies on impermissible hindsight in order to arrive at the present invention”, the argument is not persuasive. Tanev calls generically for “diesel or gasoil” but doesn’t specify any further, Yu supplies a known commercially available EN15940-compliant high paraffinic diesel that “burns cleaner than conventional crude-oil based diesel fuels” (paragraph [0004]), and reduces harmful emissions. One of ordinary skill would have been motivated to combine the two to meet environmental emission regulations and reduce emissions.
In re applicant’s argument that “a skilled person would have had no reasonable expectation that substituting EN19940 paraffinic gasoil for conventional diesel would improve methane combustion completeness or reduce the level of uncombusted methane presented to a downstream oxidation catalyst”, the argument is not persuasive. The question is whether one would be motivated to combine Tanev and Yu, not whether they would have expected to achieve the specific methane-slip benefit, and the reason to combine has been outlined in the office action and arguments above.
In re applicant’s argument that “The claimed invention provides unexpected advantages not suggested by he prior art including improved combustion completeness of methane through specific selection of highly paraffinic diesel fuel as pilot fuel and enhanced effectiveness of methane oxidation by reducing uncombusted methane entering the exhaust”, the argument is not persuasive as presented. MPEP 716.02(b) states “The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration."); Ex parte C, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992)”. The applicant is welcome to submit more evidence of unexpected results, for example a declaration under 37 CFR 1.132 at which point further consideration of the results can be taken into consideration.
Finally, the new claim limitations do not distinguish over the applied combination. Applicant has not identified, nor does the record establish, that Yu’s EN15940-compliant product fails to meet the “at least 95% w/w of paraffinic components” threshold.
Conclusion
THIS ACTION IS MADE FINAL. 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 SIZO BINDA VILAKAZI whose telephone number is (571)270-3926. The examiner can normally be reached 10am-6pm.
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/SIZO B VILAKAZI/Primary Examiner, Art Unit 3747
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