Jacqueline Reid et al.

Patent Trials and Appeals Board

May 10, 2021

2020003364 (P.T.A.B. May. 10, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/583,024 10/01/2012 Jacqueline Reid 27073-55 1030
26486 7590 05/10/2021
BURNS & LEVINSON, LLP
125 HIGH STREET
BOSTON, MA 02110
EXAMINER
MCAVOY, ELLEN M
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
05/10/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@burnslev.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACQUELINE REID and VINCENT BURGESS
Appeal 2020-003364
Application 13/583,024
Technology Center 1700
Before JULIA HEANEY, MONTÉ T. SQUIRE, and
JANE E. INGLESE, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5, 13, 17, 20, and 22–25. See
Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Innospec Limited.
Appeal Br. 3.
Appeal 2020-003364
Application 13/583,024
2
CLAIMED SUBJECT MATTER
The claims are directed to a fuel composition comprising detergent
and quaternary ammonium salt additive. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of reducing deposits in a diesel engine, the method
comprising combusting in the engine a diesel fuel composition
comprising
a detergent additive which is not a quaternary ammonium
salt or a Mannich reaction product; and
a quaternary ammonium salt additive comprising the
reaction product of nitrogen containing species having at least
one tertiary amine group and a quaternizing agent;
wherein the nitrogen containing species is the reaction
product of a hydrocarbyl-substituted acylating agent and a
compound comprising at least one tertiary amine group and a
primary amine, secondary amine or alcohol group;
wherein the detergent additive is made by reacting a
poly(isobutene)-substituted succinic acid-derived acylating
agent with a mixture of ethylene polyamines;
wherein the poly(isobutene) substituent has between about
12 to about 200 carbon atoms and the mixture of ethylene
polyamines have about 3 to about 9 amino nitrogen atoms per
ethylene polyamine and about 1 to about 8 ethylene groups;
wherein the diesel fuel composition comprises less than
250 ppm of the detergent additive and less than 250 ppm of the
quaternary ammonium salt additive; and
wherein the weight ratio of the quaternary ammonium salt
additive to the detergent additive is from 1:4 to 4:1; and
wherein the quaternizing agent is selected from the group
consisting of: (a) hydrocarbyl epoxides, optionally in
combination with an acid; and (b) a compound of formula (III)

Appeal 2020-003364
Application 13/583,024
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wherein R is a substituted alkyl, alkenyl, aryl, or alkylaryl
group; and R1 is a C1 to C22 alkyl, aryl or alkylaryl group;
wherein the compound (III) is an ester of a carboxylic acid
selected from group consisting of oxalic acid, phthalic acid,
salicylic acid, maleic acid, malonic acid, citric acid, nitrobenzoic
acid, aminobenzoic acid and 2, 4, 6-trihydroxybenzoic acid; and
wherein the hydrocarbyl epoxide is selected from group
consisting of styrene oxide, ethylene oxide, propylene oxide,
butylene oxide, stilbene oxide and C2-50 epoxide; and
wherein the method provides improved performance when
using the diesel fuel composition in a modern diesel engine
having a high pressure fuel system and when using the diesel fuel
composition in a traditional diesel engine, wherein in a diesel
engine having a high pressure fuel system the engine has a fuel
pressure of more than 1350 bar.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Steckel US 6,299,655 B1 Oct. 9, 2001
Grundy US 6,733,550 B1 May 11, 2004
Barton US 7,947,093 B2 May 24, 2011
Barton US 7,951,211 B2 May 31, 2011
Barton US 8,147,569 B2 Apr. 3, 2012
MacMillan WO 2009/040586 A1 Apr. 2, 2009

REJECTIONS
Claims Rejected 35 U.S.C. § Reference(s)/Basis
1–3, 5, 13, 17, 20,
22–25
103 Barton,2 Steckel,
MacMillan

2 The Examiner rejects the claims based on each Barton reference
alternatively as the primary reference, but refers to the Barton references
collectively as “Barton” in discussing the rejections. Final Act. 2–3. The
Examiner relies upon the disclosure of Barton ’569 for the discussion of the
primary reference. Id. at 3. We do likewise.
Appeal 2020-003364
Application 13/583,024
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1–3, 5, 13, 17, 20,
22–25
103 Barton, Grundy,
MacMillan
OPINION
We review the appealed rejections for reversible error based on the
arguments and evidence presented by Appellant. 37 C.F.R.
§ 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (explaining that even if the Examiner had failed to make a prima
facie case, “it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”).
We address the claims separately to the extent they are so argued by
Appellant. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Barton teaches quaternary ammonium salt
detergents and their use in a fuel composition to reduce diesel engine intake
valve deposits and to remove or clean-up existing deposits. Final Act. 3.
The Examiner finds that Barton teaches a method of fueling an
internal combustion engine by supplying a fuel containing quaternary
ammonium salt comprising a reaction product of:
(a) the reaction of a hydrocarbyl substituted acylating agent and
a compound having an oxygen or nitrogen atom capable of
condensing with said acylating agent and further having a
tertiary amino group, and
(b) a quaternizing agent suitable for converting the tertiary
amino group to a quaternary nitrogen, wherein the quaternizing
agent is selected from the group consisting of dialkyl sulfates,
benzyl halides, hydrocarbyl substituted carbonates, hydrocarbyl
epoxides in combination with an acid or mixtures thereof.
Id. (citing Barton ’569 col. 2, ll. 20–40).
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The Examiner finds that Examples 1, 2, and 4 in Barton ’569 add
ammonium salt detergents in amounts less than 250 ppm to diesel fuel. Id.
The Examiner further finds that Barton satisfies the claimed method of
reducing deposits in a diesel fuel engine when the nitrogen containing
species is (i) the reaction product of a hydrocarbyl-substituted acylating
agent and a compound comprising at least one tertiary group. Id. at 3–4.
The Examiner also finds that Barton teaches some of the
quaternizing agents of claim 1. Final Act. 4 (citing Barton ’569 col. 7, l. 36
to col. 8, l. 12). The Examiner finds that Barton permits including detergent
additives as other conventional fuel composition additives. Final Act. 4
(citing Barton ’569 col. 8, ll. 34–68). The Examiner finds that Barton
discloses N-substituted long chain alkenyl succinimides as dispersants. Id.
(citing Barton ’569 col. 8, ll. 64–65).
The Examiner finds additionally that succinimides are conventional in
the diesel fuel additive art as evidenced by Steckel or Grundy. Final Act. 4.
Because Barton allows detergents and dispersants as performance additives,
the Examiner finds that it would have been obvious to add a nitrogen-
containing dispersant of Steckel or Grundy, since hydrocarbyl-substituted
succinimides are known in the lubricant art for providing both detergent and
dispersant properties. Id. at 5.
Appellant argues that the appealed claims recite very specific
combinations of diesel fuel composition additives which achieve improved
performance in both traditional and modern diesel engines that operate at
relatively high fuel pressures. Appeal Br. 5. Appellant argues that the
results in Barton relied upon by the Examiner (i.e., Examples 1 and 2 in
traditional engines; and Example 4 in modern engines having high pressure
fuel greater than 1350 bar) would not have led a person of ordinary skill in
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the art to expect that the claimed combination of additives would be
effective in reducing deposits in a traditional diesel engine and a modern
diesel engine. Id. at 10–11.
To the extent Appellant’s argument rests on interpreting “improved
performance ... when using the diesel fuel composition in a traditional diesel
engine” as a requirement of the claimed method, we do not find it
persuasive. Rather, for the reasons discussed below, we determine that the
following recitation of claim 1, with respect to use of the claimed fuel
composition in a traditional diesel engine, is merely an intended use:
wherein the method provides improved performance when
using the diesel fuel composition in a modern diesel engine
having a high pressure fuel system and when using the diesel
fuel composition in a traditional diesel engine, wherein in a
diesel engine having a high pressure fuel system the engine has
a fuel pressure of more than 1350 bar.
Appeal Br. 15–16 (Claims Appendix).
Appellant’s Specification explains that measuring an “improvement in
performance” depends upon the type of engine and whether the metric is
“keep clean” and/or “clean up” performance. Spec. 33, ll. 8–10. For
“modern” engines having a high pressure fuel system, improved “keep
clean” performance occurs when power loss is less than five percent after 32
hours, as measured by the standard CEC F-98-08 (“DW10 test”). Id. at 34,
ll. 16–21, 32–35. Improved “clean up” performance occurs when the power
of a fouled engine is “returned to within 1% of the level achieved when
using clean injectors within 8 hours in the DW10 test.” Id. at 34, l. 37–35,
l. 2.
For a “traditional diesel engine,” improved performance is measured
by test method CEC F-23-A-01 (“XUD9 test”). Spec. 34, ll. 29–30; 37,
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l. 10–38, l. 6. The Specification explains that the XUD9 test measures
injector nozzle coking, e.g., carbon deposit formation, by comparing the
injector air flow before and after the test to calculate a percentage of airflow
reduction for all nozzles. Id.
Because the Specification’s description of “improved performance”
does not quantify how much airflow reduction would be an improvement
under the XUD9 test, we interpret “improved performance ... when using the
diesel fuel composition in a traditional diesel engine” as merely an intended
use.

Unexpected Results
Appellant argues that Declarations I and II3 demonstrate the method
of claim 1 achieves unexpected results in reducing deposits in traditional and
modern diesel engines by using a detergent additive and a quaternary
ammonium salt in combination, as compared to a quaternary ammonium salt
or a succinimide alone. Appeal Br. 8.
Concerning Declaration I, Appellant argues that quaternary
ammonium salt Q5 is the reaction product of PIBSA (product of
polyisobutylene with maleic anhydride) and dimethylaminopropyl amine
(DMAPA); and succinimide detergent A2 is a detergent additive prepared
according to Example 4 of the Specification. Decl. I ¶¶ 4, 5; Spec. 38, ll.
20–26. Appellant argues that paragraphs 8 and 10 of Declaration I
respectively demonstrate that a combination of Q5 and A2 did not result in

3 Declarations of Vincent Burgess under 37 C.F.R. § 1.132 dated February 3,
2014 (“Declaration I”) and December 23, 2014 (“Declaration II”).
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any flow loss and is more effective for cleaning fouled injectors over time as
compared to A2 alone. Appeal Br. 6–7.
Appellant argues that paragraphs 11 and 12 of Declaration I show no
fuel injector sticking for a combination of Q5 and A2, each at 120 ppm,
while the fuel injector stuck after 32 hours using Q5 alone (240 ppm).
Appeal Br. 7.
The Examiner finds that the results of paragraphs 8 and 10 of
Declaration I are not unexpected because Barton teaches use of quaternary
ammonium salt additives for reducing deposits in fuel intake valves or
removing existing deposits. Answer 7–8. The Examiner further finds that
the results of paragraphs 11 and 12 of Declaration I are not commensurate in
scope with the claimed composition because they test a single quaternary
ammonium salt, Q5. Id. at 8–9.
Concerning Declaration II, Appellant argues that Q6 is the quaternary
ammonium salt of Example 1 in Barton ’569 (styrene oxide quaternary
ammonium salt) and satisfies claim 1. Appeal Br. 7; Barton ’569 col. 11,
ll. 8–15. Appellant argues that Declaration II paragraph 10 shows that no
fuel injectors stuck with a combination of A2 and Q6 (200 ppm each), but all
four fuel injectors did after eight hours with Q6 alone (400 ppm). Appeal
Br. 7–8. Appellant argues that the data of Declarations I and II is
commensurate in scope with the method of claim 1, even though it is based
upon a single embodiment of a hydrocarbyl epoxide or of a compound of
formula (III) as quaternizing agent, because those skilled in the art would
reasonably expect similar results when practicing the method of claim 1 with
other hydrocarbyl epoxides or compounds of formula (III) as quaternizing
agents based upon their common structure. Id.
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The Examiner finds that Barton ’569 already teaches that Q6
effectively reduces intake valve deposits and removing or cleaning existing
deposits on diesel engine intake valves. Answer 9.
Having considered the evidence and arguments presented, we are not
persuaded that Appellant has met its burden of showing unexpected results
of the method of claim 1 over Barton. An affidavit or declaration under 35
C.F.R. § 1.132 must compare the claimed subject matter with the closest
prior art to be effective to rebut a prima facie case of obviousness. In re
Burckel, 592 F.2d 1175, 1179 (CCPA 1979); MPEP § 716.02(e) (9th ed.
Rev. 10.2019, rev. June 2020). Further, “objective evidence of
nonobviousness must be commensurate in scope with the claims which the
evidence is offered to support.” In re Clemens, 622 F.2d 1029, 1035 (CCPA
1980). In other words, the showing of unexpected results must be
demonstrate that the results occur over the entire claimed range. Id. at 1036;
see also In re Peterson, 315 F.3d 1325, 1329–31 (Fed. Cir. 2003) (data
showing improved alloy strength with the addition of 2% rhenium did not
evidence unexpected results for the entire claimed range of about 1–3%
rhenium); In re Grasselli, 713 F.2d 731, 741 (Fed. Cir. 1983) (Claims were
directed to certain catalysts containing an alkali metal. Evidence presented
to rebut an obviousness rejection compared catalysts containing sodium with
the prior art. The court held this evidence insufficient to rebut the prima
facie case because experiments limited to sodium were not commensurate in
scope with the claims.).
Barton is the closest prior art of record. Example 1 is a styrene oxide
quaternary ammonium salt (reaction product of dimethylaminopropylamine
succinamide and styrene oxide), which is a quaternary ammonium salt based
upon a nitrogen containing species and a quaternizing agent of claim 1.
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Barton ’569 col. 11, ll. 5–15. Example 1 is subjected to testing XUD9 test
or in a High Speed Injector Test in amounts of 17.5 or 35 ppm according to.
Id. at Tables 1, 2, and 5. Appellant acknowledges that Barton applies its
quaternary ammonium salt in both traditional and modern engines. Appeal
Br. 10–11. Barton ’569 compares its quaternary ammonium salt to two
commercial detergents—polyisobutylene succinimide of DMAPA
(Comparative Example 1) and polyisobutylene succinimide of
tetraethylenepentamine (Comparative Example 2), which are tested in
amounts of 38.25 or 51 ppm. Barton ’569 col. 12, ll. 61–67, Table 2, 5. We
find that Barton ’569 teaches that its inventive quaternary ammonium salts
have equivalent or superior flow performance and lower average injector
blockage as compared to commercial detergents or fuel without additives.
Id. at col. 12, ll. 32–38.
We also find that Barton’s broader disclosure supports combining its
quaternary ammonium salt with N-substituted long chain alkenyl
succinimide treated with carboxylic acids or epoxides as dispersants in
amounts of 0 to 25 weight percent relative to the fuel composition. Barton
’569 col. 8, ll. 43–45, 64 to col. 9, l. 2.
We find that the tests of Declaration I paragraphs 8 and 10 are not
comparable to Barton, because the data compares a detergent additive alone
(A2) as compared with a combination of detergent additive A2 with a
quaternary ammonium salt (Q5). Barton already teaches a quaternary
ammonium salt and its advantages over fuels with a detergent additive or
nonadditive fuels.
While Declaration I paragraphs 11 and 12 compare Q5 alone to its 1:1
combination with A2, we find that this data is not reasonably commensurate
in scope with claim 1. As a single experiment, the data does not reasonably
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Application 13/583,024
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account for other relative amounts, or other species of quaternary
ammonium salt and detergent additive encompassed by claim 1. See In re
Kollman, 595 F.2d 48, 56 (CCPA 1979) (nonobviousness of a broader genus
or claimed range can be supported by evidence based on unexpected results
from testing a narrower range if one of ordinary skill in the art would be able
to determine a trend in the exemplified data which would allow the artisan to
reasonably extend the probative value thereof); MPEP § 716.02(d).
Further, the data only observes injector sticking rather than measuring power
loss according to the DW10 test, and, so, fails to show improved “keep
clean” or “clean up” performance in modern engines. Moreover, a single
data point is inadequate to establish any trend of probative value such that a
person of ordinary skill in the art would reasonably find it demonstrates the
nonobviousness of the broader amounts or species of claim 1.
We likewise find the comparative data of Declaration II paragraph 10
insufficient to demonstrate unexpected results over Barton because it only
compares quaternary ammonium salt Q6 to its 1:1 combination with A2. As
above, this is not reasonably commensurate in scope with claim 1 because it
is a single comparative experiment. Declaration II further does not show
improved “keep clean” or “clean up” performance in modern engines since it
does not measure power loss under the DW10 test. Taken alone or with
Declaration I, a person of ordinary skill in the art would also not find that
Declaration II reflects a trend of probative value with respect to other
relative amounts, or other species of the quaternary ammonium salt and
detergent additive of claim 1.
Declarations I and II fail to rebut the Examiner’s finding of
obviousness because the data does not establish an unexpected difference
between Barton and the claimed invention.
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Because Appellant has not demonstrated unexpected results based
upon Declarations I and II, we do not reach the merits of Appellant’s
arguments concerning Steckel, Grundy, and MacMillan.
We accordingly affirm the rejections of Claims 1–3, 5, 13, 17, 20, and
22–25 over Barton in view of Steckel and MacMillan; and over Barton in
view of Grundy and MacMillan.
CONCLUSION
The Examiner’s rejections are affirmed.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5, 13,
17, 20, 22–
25
103 Barton, Steckel,
MacMillan
1–3, 5, 13,
17, 20,
22–25

1–3, 5, 13,
17, 20, 22–
25
103 Barton, Grundy,
MacMillan
1–3, 5, 13,
17, 20,
22–25

Overall
Outcome
1–3, 5, 13,
17, 20,
22–25

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED