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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 3, 2026 has been entered.
This Office action is in response to the amendment filed June 3, 2026 in which claims 2, 5, 6, 12, 16, 37 and 38 were amended.
The rejections of claim 2 and its dependents under 35 USC 103 are withdrawn in view of the amendment to the claims and Applicant’s arguments.
The nonstatutory double patenting rejection is withdrawn in view of the amendment to the claims and Applicant’s arguments.
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 17-19 and 35-36 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 17-19 are rejected because the compounds set forth in these claims are not the products of a hydrocarbyl substituted carboxylic acid acylating agent and a nitrogen-containing reagent nor are the compounds the reaction product of an amine or polyamine, a nitrogen-containing reagent and an aldehyde.
Regarding claim 35, the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 36, the phrase "e.g.” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 37-40 are rejected under 35 U.S.C. 103 as being unpatentable over Fang (US 20120102826) (appears on previous PTO-892).
Fang is directed to certain diesel fuel additives and to diesel fuels and diesel fuel additive concentrates that include the additive. In particular the disclosure is directed to methods for improving the fuel economy and cleanliness of fuel injectors, filters, and fuel delivery systems for compression ignition engines (see abstract).
Fang teaches that the indirect injection diesel engine has now given way in the market place almost entirely to more modern direct injection light duty diesel engines for reasons of fuel economy, performance, and low emissions (see para 0002). The diesel fuels of Fang may be applicable to the operation of both stationary diesel engines (e.g., engines used in electrical power generation installations, in pumping stations, etc.) and ambulatory diesel engines (e.g., engines used as prime movers in automobiles, trucks, road-grading equipment, military vehicles, etc.)(see para 0022).
Direct injection engines may also use a high pressure common rail fuel system or a unity injection system. By "high pressure" herein is meant those pressures in diesel fuel systems that are equal to or greater than 15,000 psi (greater than or equal to 1000 bar)(see para 0003).
The additive is a reaction product of (i) a hydrocarbyl-substituted acylating agent and (ii) a reactant selected from the group consisting of a nitrogen-containing compound that provides a reaction product selected from the group consisting (1) a mono-amide/mono-acid or metal free mono-acid salt thereof (see para 0006).
The hydrocarbyl substituent of the hydrocarbyl-substituted acylating agent may be derived from an alpha-olefin, internal-olefin, or polyolefin having more than 12 carbon atoms. Polyolefins include polymers of isobutylene. Suitable polyisobutenes for use herein include those formed from polyisobutylene. The average number molecular weight of the hydrocarbyl substituent may vary over a wide range, for example from about 100 to about 2300, as determined by GPC (see para 0018).
The carboxylate component of the acylating agent may be selected from a dicarboxylic acid or anhydride thereof. For example, the carboxylate component may be a succinic acid or anhydride made from maleic acid or anhydride (see para 0019).
The nitrogen-containing compound may be selected from an amine, a polyamine, ammonia, aminoguanidine, piperazine and piperazine derivatives, aminotriazole, morphine, aminotetrazole, hydrazine, guanidine, amino-pyrimidine, and the like (see para 0026).
In Fang, the additive component may include compounds of following formulas:
PNG
media_image1.png
186
178
media_image1.png
Greyscale
PNG
media_image2.png
182
248
media_image2.png
Greyscale
PNG
media_image3.png
169
244
media_image3.png
Greyscale
R represents a hydrocarbyl group having 10 or more atoms and R1 represents an amine or polyamine. When PIB has a lower molecular weight, the above compounds would contain at least 4% by mass of nitrogen (see para 0029).
The fuel may contain an amount of additive ranging from about 10 to about 10,000 ppmw per volume of fuel (see para 0031). The fuel compositions may contain antifoam agents, additional dispersants, detergents, antioxidants, thermal stabilizers, carrier fluids, metal deactivators, dyes, markers, corrosion inhibitors, biocides, antistatic additives, drag reducing agents, friction modifiers, demulsifiers, emulsifiers, dehazers, anti-icing additives, antiknock additives, surfactants, cetane improvers, corrosion inhibitors, cold flow improvers, pour point depressants, solvents, demulsifiers, lubricity additives, extreme pressure agents, viscosity index improvers, seal swell agents, amine stabilizers, combustion improvers, dispersants, conductivity improvers, organic nitrate ignition accelerators, manganese tricarbonyls compounds, and mixtures thereof. In some aspects, the fuel additive compositions may contain about 10 wt. % or less based on the total weight of the additive or fuel composition, of one or more of the above additives (see para 0033). Fang teaches a conventional detergent in comparative example 1 which is the reaction product of polyisobutylene succinic anhydride with a polyamine (TEPA) (see para 0035). Fang meets the limitations of the claims other than the differences that are set forth below.
Fang does not specifically the ratio of the nitrogen-containing compound to detergent additive is from 9:1 to 1:9. However, no unobviousness is seen in this difference because Fang teaches that the detergent may be present in the fuel in an amount up to 10 wt %. A prima facie case of obviousness exists because it would have been obvious to one of ordinary skill in the art to optimize the proportions of the detergent and nitrogen-containing compound through routine experimentation for the best results. As to optimization of results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). See also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990).
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant arguments are mainly directed to the rejection of claim 2 and its dependents. The rejection of claim 2 and its dependents has been withdrawn and therefore, Applicant’s arguments are moot.
With respect to Fang and a detergent additive, Fang teaches that one or more additional additives may be present in the fuel composition and he discloses detergents (see para 0033). Fang also teaches the use of the detergent additives in the examples.
Claims 2, 5, 6, 12-13, 16, 20-23, 30-34 are allowed in view of the amendment to the claims and Applicant’s arguments.
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to CEPHIA D TOOMER whose telephone number is (571)272-1126. The examiner can normally be reached Monday-Friday.
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/CEPHIA D TOOMER/ Primary Examiner, Art Unit 1771 18859441/20260808
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