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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8, 2026 has been entered.
This Office action is in response to the amendment filed June 8, 2026 in which claims 2, 6-7, 10, 12-14, 16-17, and 29-30 were amended.
The nonstatutory double patenting rejection is withdrawn in view of the amendment to the claims.
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 2-4, 6-7, 10, 12-14, 18 AND 21-32 are rejected under 35 U.S.C. 103 as being unpatentable over Fang (US 20120102826) in view of Kevin’s Auto Repairs (https://kevinsautos.com/faq/do-all-engines-have-egr-valves.html (Year: 2015) (appears on the 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
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186
178
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Greyscale
PNG
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182
248
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Greyscale
PNG
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169
244
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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 teach the exhaust gas recirculation system. However, Kevin’s Auto Repair( hereinafter referred to as “KAR”) meets this limitation.
KAR teaches that diesel engines typically have EGR valves as a standard feature. Diesel engines produce higher combustion temperatures and pressures compared to gasoline engines, leading to increased NOx emissions. The EGR valve helps mitigate this by lowering the oxygen concentration and peak temperatures in the combustion chamber. KAR teaches that “Diesel engines without EGR valves would not be able to meet modern emissions standards” (see EGR Values in Diesel Engines section).
It would have been obvious to one of ordinary skill in the art to use the nitrogen-containing compounds as an additive in a diesel fuel composition in a diesel engine containing an exhaust gas recirculation system because KAR teaches that typically all diesel engines have EGR valves as a standard feature and therefore the additive of Fang would pass through this system and reduce the impact of deposits in the EGR system.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that Fang does not teach or suggest the use of additives as defined in amended claim 2. Applicant argues that the only heterocyclic example in Fang that specifies an Mn value is Example 7, which uses a polyisobutylene having an Mn of 950. Applicant argues that none of the fuel additives disclosed in Fang comprise the reaction product of a hydrocarbyl substituted acylating agent of formula
(a1) wherein R1 is an optionally substituted alkyl, alkenyl or aminoalkyl group having a molecular weight (Mn) of up to 600. Applicant’s position is that the skilled person reading Fang would not have been motivated to include an additive as defined in amended claim 2 in a diesel fuel composition being combusted in a diesel engine.
It is well settled that a reference is considered for all that it teaches and it not limited to the examples therein. In the instant case, Fang teaches that heterocyclic compounds are reacted with hydrocarbyl substituted acylating agents wherein the R group may be PIB and the only requirement is that R have 10 or more carbon atoms. That Fang exemplifies a PIB that has a Mn of 950 does not discount that one skilled in the art may use a PIB that has a Mn of less than 950, especially of view of Fang teaching that the R group must have at least 10 carbon atoms.
Applicant argues that the method of amended claim 2 is carried out using an engine having an EGR system, in order to obtain the stated reduction in deposit impact thereon. Applicant challenges the Examiner's assertion that direct injection engines (such as those disclosed in Fang) inherently contain "post combustion systems such as EGR". Applicant argues that Fang provides no explicit disclosure of any post combustion system (PCS) being present in the engine used therein. Moreover, even if Fang did disclose a PCS, contrary to the Examiner's implication the skilled person would appreciate that EGR systems are not a type of PCS but are instead a distinct and separate part of a diesel engine system. Gases passing through the EGR system re-enter the combustion chamber and an EGR system is thus, by definition, not a part of or
type of post combustion system where exhaust gases only pass after finally leaving the combustion system. Thus, Applicant concludes that Fang does not disclose the use of an engine having an EGR system as required by amended claim 2 and does not teach or suggest the use of the claimed additives in a diesel fuel to reduce the impact of deposits on the EGR system.
KAR teaches that EGR systems became mandatory for all heavy-duty diesel engines in the United States in model year 2007 to meet new EPA emissions standards, although some manufacturers had introduced cooled EGR systems earlier in the 2004-2007 period. For passenger diesel trucks, the EGR valve was incorporated much earlier, around 2003 or earlier (see KAR Section “What year did EGR become mandatory?”). Therefore, the ambulatory diesel engines of Fang (e.g., engines used as prime movers in automobiles, trucks, road-grading equipment, military vehicles, etc.) (see Fang para 0022), would be equipped with EGR.
The examiner maintains that Fang in view of KAR teaches the claimed method and compositions. it should be pointed out that since Fang teaches the additive, it would be reasonable to expect that upon combustion of the additive that deposits in the EGR system of the diesel engine would be reduced.
Applicant argues that the present inventors have surprisingly found that the additives as defined in amended claim 2 reduce the impact of deposits on the EGR system of a diesel engine combusting a diesel fuel composition, as shown by the Examples of the specification as filed. Applicant argues that this effect is clearly advantageous and could not have been predicted from the disclosure of Fang.
As discussed above, modified Fang uses additives that are within the scope of the present invention and uses the additives in diesel engines that would contain EGR systems. Therefore, the results obtained by Applicant would be expected to be obtained when the additive is used in Fang.
Claims 16-17 and 19-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art does not teach or suggest the claimed nitrogen containing reagents as set forth in the above claims.
3. 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6368. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CEPHIA D TOOMER/Primary Examiner, Art Unit 1771 18859448/20260819
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