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 .
The amendment dated 04/14/2026 has been considered and entered. The amendment overcomes the rejections based on indefiniteness and obviousness double patenting which are hereby withdrawn. The amendment does not overcome the rejections in view of Brewer (US 2014/0173973) which are hereby maintained.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/14/2026 has been entered.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2, 4, 5, 7 – 19 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Brewer (US 2014/0173973) or, in the alternative, under 35 U.S.C. 103 as obvious over Brewer (US 2014/0173973)
In regards to claims 2, 15, 16, 19, Brewer teaches liquid fuel composition having diesel base fuel (abstract). The fuel is used in engines having EGR (Exhaust Gas Recirculation) system [0132]. The composition comprises one or more nitrogen-based detergents (i.e., detergent dispersants) such as polyisobutylene succinimides which are acylated products of polyamines, Mannich reaction products of phenols, aldehyde and polyamine, and quaternary ammonium compounds for removing, reducing or slowing the build-up of engine deposits which anticipates the claim or at least makes it obvious [0019, 0086 – 0091].
Brewer provides the method and teaches the fuel and the EGR system comprising it and thus provides for the method of reducing the impact of deposits in the EGR system by adding the fuel to the EGR [0019]. By adding the fuel comprising the detergent/dispersants nitrogen additives to the EGR system, similar properties as claimed such as the reduction in deposits by similar amounts, reduction in the formation of deposits on a cooler of the EGR system and/or reduction in deposits in the EGR system, improvements in power generation, torque, emissions, fuel efficiency, drivability etc., will be intrinsically provided.
In regards to claim 4, Brewer provides the method and teach the EGR system useful in off-road, railroad, stationary and marine engines which are similar to those in applicant’s disclosure and would be expected to use similar high pressure EGR systems of the claims (See applicant’s specification page 38 lines 33 – 34).
In regards to claims 5, 7, 8, Brewer teaches the composition having the claimed ingredients as previously stated. The succinimide is a reaction product of hydrocarbyl-substituted acylating agent with amine as previously discussed.
In regards to claim 9, 11, Brewer provides the method and teaches the composition having the quaternary ammonium salts comprising reaction products of PIBSA having Mw of 1000 with dimethyl aminopropylamine and methyl salicylate as discussed in WO2011/110860A1 which Brewer incorporates by reference [0090].
In regards to claim 10, Brewer teaches the fuel composition comprising quaternary ammonium compounds but does not particularly recite the compound of the claim. However, Taylor et al. (US 2021/0024844) teaches fuel compositions cand additives comprising quaternary ammonium salts which are prepared from reaction of alkyl carboxylate (such as methyl salicylate, oxalate etc.) and an imide or amide prepared from a amine of formula IV and hydrocarbyl acylating agent such as fatty acids including stearic, oleic, palmitic, myristic etc. which provides the claimed limitations [0041, 0047 and 0051]. It would have been obvious for persons of ordinary skill in the art at the time the claim was filed to have used the quaternary ammonium salt of Taylor in the composition of Brewer, as Brewer allows for the use of such compounds in the composition.
In regards to claim 12, Brewer provides the method and teaches the composition having succinimides which are reaction products of polyisobutene succinic anhydride and polyethylene polyamines of the claims as discussed in several prior arts incorporated by reference such as GB 960493 [0087].
In regards to claim 13, Brewer provides the method and teach the composition having Mannich detergent/dispersants prepared from formaldehyde, polyethylene polyamine and substituted phenol [0090]. Mannich detergents prepared from para-monoalkyl phenols of the claims are well known as discussed by EP 0385633 and which would have been obvious to have been used in Brewer as additives in fuels (see abstract & page 2 lines 37 – 49).
In regards to claim 14, Brewer provides the method and teaches the composition comprising additives such as detergents as previously stated. Additives can be present in the composition at from 0 to 10,000 ppmw in the composition which makes the claimed amounts obvious [0102].
In regards to claims 17, 18 Brewer provides the method and teaches the composition having the claimed limitations as previously stated. The diesel engine is an off-road engine [0075].
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that there is no teaching of fuel with the claimed additives used in an EGR system and providing a reduction in the formation of deposits by at least 5%. The argument is not persuasive.
Brewer teaches fuel composition used in an engine with EGR and having the claimed quaternary ammonium salt and would be expected to provide the same performance as claimed.
Applicant argues that the quaternary ammonium salt of the claims is not taught. The argument is not persuasive.
As discussed above, Brewer teaches quaternary ammonium salts.
Applicant previously argued that using the deposit controlling agents provided surprising reduction in deposit control. The argument was not persuasive.
The reduction in deposit control using conventional deposit controlling agents which are nitrogen compounds such as amine compounds are well known in the art for providing deposit control. For instance, paragraph 0086 of Brewer clearly recites the function of deposit removal and reduction by the detergents.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAIWO OLADAPO whose telephone number is (571)270-3723. The examiner can normally be reached 8-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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