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 09/26/2025 has been considered and entered. The response was considered but was not found to be persuasive. Therefore, the previous prior art rejections are maintained.
The rejections of claims 9, 11 – 14 based on indefiniteness was overcome by the amendment. The amendment does not overcome the rejection of claim 10 based on indefiniteness which is maintained.
The amendment also necessitates new grounds of rejections based on obviousness double patenting.
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.
Claim 10 is 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.
Also claim 10 recites a compound of formula (II) but does not provide the recited structure which is indefinite.
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 – 9, 11 – 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, 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 – 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 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].
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, 5 – 9, 17, 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 27 – 31 of copending Application No. 18/859,448 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application teaches method for reducing deposits in the EGR of a diesel engine using a fuel comprising at least 4% of one or more nitrogen compounds including Mannich reaction products of an aldehyde and an amine, reaction products of a carboxylic acid acylating agent and an amine, Quaternary ammonium salt of methyl salicylate or dimethyl oxalate with a reaction product of dimethylaminopropylamine and polyisobutylene succinic anhydride, wherein the PIB has a molecular weight (Mn) of from 700 to 1300. Since the same additives of the claims are taught, the composition would be expected to have similar properties as recited in claim 19.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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. The argument is not persuasive.
Brewer teaches fuel composition and additives for the fuel having the limitations a), b) and c) of the claims. The fuel composition is useful in a diesel engine comprising EGR. The additives comprise deposit controlling agents of the claims and would be expected to provide the effect of controlling deposits as claimed.
Applicant argues that using the deposit controlling agents provided surprising reduction in deposit control. The argument is not persuasive.
The reduction in deposit control using conventional deposit controlling agents which are nitrogen compounds such as succinimides, Mannich detergent/dispersants 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
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 TAIWO OLADAPO whose telephone number is (571)270-3723. The examiner can normally be reached 8-5pm.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771