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 .
This Office action is in response to the amendment filed December 10, 2025 in which claim 1 was canceled and claim 7 was amended.
The rejections of the claims under 35 USC 101 and 112 are withdrawn in view of the amendment to the claims.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-40 of copending Application No. 18/859,441 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the purpose of the additive is to reduce deposits when combusted in a diesel engine. Both the present claims and those of the copending claims perform this function. It would be more than reasonable to expect that upon combustion of the additive that the additive would reduce deposits on any surface that the additive would come into contact. This would include EGR systems, as well as post combustion systems.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 2-15, 18, 21-27 and 29-32 are rejected under 35 U.S.C. 103 as being unpatentable over Fang (US 20120102826) in view of Farhan (Post injection strategies for performance improvement and emissions reduction in DI diesel engines- A review) (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, Farhan meets this limitation.
Farhan teaches that diesel engines are fuel efficient because of their high compression ratio. Farhan teaches that after-treatment devices have been adopted to minimize emissions and that such devices include Diesel Particulate Filter (DPF), Selective Catalytic Reduction (SCR), and Diesel Oxidation Catalyst (DOC). Farhan also teaches that vehicles with a turbocharger and Exhaust Gas Recirculation (EGR) are efficient for energy utilization and less harmful emissions production (see first paragraph of Introduction).
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 Fang uses the additives to reduce emissions in direct injection diesel engine and Farhan teaches that diesel engines of this type contain exhaust gas recirculation systems to reduce such emissions.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that the use of the claimed additive to reduce deposits in the exhaust gas recirculation (EGR) system of a diesel engine is not disclosed. Applicant argues that there is no teaching, suggestion, or motivation that exists in Fang that the additives disclosed therein would be effective at reducing the impact of deposits in the EGR system of a diesel engine. Applicant argues that Farhan is directed to emissions control while Fang is directed to deposit control. Applicant argues that Fang does not disclose the combination of a nitrogen-containing compound and a detergent additive as defined in claims 29 and 30.
Fang teaches using the diesel fuel composition of his invention in direct injection diesel engines for reasons of fuel economy, performance and low emissions. It is well settled that direct injection engines contain post combustion systems such as EGR, as shown by the secondary reference. The examiner maintains that the system of Fang would indeed contain this post combustion system, absent evidence to the contrary. Farhan teaches that various after-treatment devices and techniques, such as EGR are useful for reducing emissions. Fang teaches that those skilled in the art are concerned with reducing emissions with the use of direct injection engines. Thus, this teaching combined with Farhan provides motivation for the addition of a post combustion system, such as EGR to a direct injection engine. Farhan teaches that these devices have been adopted to minimize emissions. Furthermore, the only step required in the present method is the step of combusting in the engine a diesel fuel composition comprising the additive. Fang meets this limitation. Therefore, 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. Hence, the examiner maintains that modified Fang meets the limitations of the claims with respect to the post combustion system.
With respect to Fang not teaching the combination of the nitrogen-containing compound 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)
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 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 18859448/20260311