BASF SE

Patent Trials and Appeals Board

Sep 2, 2020

15055851 - (D) (P.T.A.B. Sep. 2, 2020)

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.
15/055,851 02/29/2016 Markus HANSCH 467603US99DIV 5844
22850 7590 09/02/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
OLADAPO, TAIWO
ART UNIT PAPER NUMBER
1771
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARKUS HANSCH, HARALD BOEHNKE,
LUDWIG VOELKEL, WOLFGANG GRABARSE, and
JAN STRITTMATTER
Appeal 2019-006611
Application 15/055,851
Technology Center 1700
Before CATHERINE Q. TIMM, DONNA M. PRAISS, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
TIMM, 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, 2, 4, 6, 8, 10, and 11.2 We have
jurisdiction under 35 U.S.C. § 6(b).

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 BASF SE.
Appeal Br. 2.
2 The Examiner’s and Appellant’s listings of the claims contain
typographical errors. Final Act. 1; Appeal Br. 2. We base our listing of the
pending claims filed in the Amendment of March 17, 2017, which presents
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Application 15/055,851
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We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to the use of quaternized alkylamines as
additives in fuels and lubricants. Spec. 1:17–14; claim 1. Particularly, the
claims are directed to adding a diesel or biodiesel fuel containing the
additive to a direct injection diesel engine. Id. The additive is said to reduce
or prevent internal diesel injector deposits (IDID) in particular parts of the
injectors, such as at the nozzle needle, at the control piston, at the valve
piston, at the valve seat, in the control unit, and in the guides of these
components. Spec. 2:29–3:3. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method for reducing and/or preventing internal
diesel injector deposits in a direct injection diesel engine under
conditions that lead to the internal injector deposits, the method
comprising
adding, to the direct injection diesel engine which is
affected or is at risk of being affected by conditions that lead to
the internal injector deposits, a diesel or biodiesel fuel
comprising a reaction product comprising a quaternized
nitrogen compound, or a fraction of said reaction product which
comprises the quaternized nitrogen compound and which is
obtained from the reaction product by purification, in an
amount effective for reducing and/or preventing internal diesel
injector deposits,
wherein said reaction product is obtained by

claims 1–11, and the Amendment of October 2, 2018, which identifies
claims 3, 5, 7, and 9 as canceled. Although neither the Amendment of
October 2, 2018 nor the Claims Appendix to the Appeal Brief reproduce
claim 11, it has not been canceled and the Examiner maintains a rejection of
it. Ans. 4.
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reacting a quaternizable alkylamine comprising at least
one quaternizable tertiary amino group with a quaternizing
agent which converts the at least one quaternizable tertiary
amino group to a quaternary ammonium group,
wherein the quaternizable alkylamine comprises at least
one compound of the following formula 3
RaRbRcN (3)
in which
at least one of the Ra, Rb [sic] and Rc radicals is a
straight-chain or branched, saturated or unsaturated C8-C40-
hydrocarbyl radical and the remaining radicals are identical or
different, straight-chain or branched, saturated or unsaturated
C1-C6-hydrocarbyl radicals; or
in which all Ra, Rb [sic] and Rc radicals are identical or
different, straight-chain or branched, saturated or unsaturated
C8-C40-hydrocarbyl radicals, and
the quaternizing agent is the alkyl ester of a
cycloaromatic or cycloaliphatic mono- or polycarboxylic acid,
or of an aliphatic polycarboxylic acid, a hydrocarbyl epoxide,
optionally in combination with a free acid, or a dialkyl
carbonate.
Appeal Br. 23–24
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Fang US 9,574,149 B2 Feb. 21, 2017

REJECTIONS
The Examiner maintains the following rejections:
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Claims 1, 2, 4, 6, 8, 10, and 11 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Fang. Final Act. 4.
Claims 1, 2, 4, 6, 10, and 11 are provisionally rejected on the ground
of nonstatutory double patenting as being unpatentable over claims 21–35,
and 38 of copending Application No. 15/022,6813 and in view of Fang.

OPINION
Obviousness over Fang
Appellant opens the arguments against the Examiner’s rejection of
claims 1, 2, 4, 6, 8, 10, and 11 as obvious over Fang with general arguments
not directed to any particular claim. Appeal Br. 6–17.4 We select claim 1 as
representative to decide the issues presented in these generalized arguments.
In a bolded portion of a paragraph, Appellant refers to claims 4, 6, 9,
and 10 as separately argued. Appeal Br. 17. Appellant further refers to claim
2 as separately argued. Appeal Br. 20. We note that claim 9 has been
canceled. Thus, we do not consider any arguments against claim 9. To the
extent the arguments identify sufficiently specific separate errors in the
Examiner’s rejection of claims 2, 4, 6, and 10, we consider the rejections of
those claims separately.

3 Application No. 15/022,681 issued as US 10,370,610 on August 6, 2019.
The Examiner also provisionally rejected these claims over claims 2–15 of
Application No. 14/628,421 along with Fang, but Application No.
14/628,421 has been abandoned. Thus, the provisional rejection relying on
Application No. 14/628,421 is moot.
4 Appellant’s listing of the rejected claims contains a typographical error.
Appeal Br. 6 (“20” should be “10”).
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Claim 1
The Examiner’s obviousness conclusion is based on a finding that
Fang teaches adding, to a direct injection diesel engine, a diesel fuel
containing a quaternized alkylamine additive of a genus that overlaps with
the genus recited in claim 1 and in amounts within the range used by
Appellant to solve injector deposit problems. Final Act. 3–4; Ans. 9.
Appellant contends that (1) the Examiner has failed to consider the full
claim in assessing obviousness, and, particularly, the Examiner has failed to
properly consider the objective of the claim and the problem Appellant’s
additive is solving and (2) Fang’s genus of compounds is too broadly set
forth to provide a reasonable expectation of success. Appeal Br. 6–20.
Appellant’s arguments are not persuasive of reversible error.
Fang is directed to fuel additives that improve the performance of
direct fuel injected engines. Fang col. 1, ll. 7–12. Fang discloses that “fuel
compositions for direct fuel injected diesel engines often produce
undesirable deposits in the engines” and that those in the art desire
“improved compositions that can prevent deposit build up, maintaining ‘as
new’ cleanliness for the vehicle life.” Fang col. 1, ll. 51–55. Fang uses a
quaternary ammonium salt having a thermogravimetric analysis (TGA)
weight loss of greater than 50% at 350 °C as the additive for accomplishing
the desired cleaning effect. Fang col. 1, l. 60–col. 2, l. 6.
Like Appellant’s quaternized alkylamine additive, Fang’s additive is
the reaction product of tertiary amine (Appellant’s alkylamine of formula 3)
with quaternizing agent. Fang col. 2, l. 66–col. 3, l. 30. Fang’s tertiary amine
has three hydrocarbyl groups (i.e., alkyl or alkenyl) chains with chain
lengths of 1 to 50 carbon atoms. Id. Fang teaches using the tertiary amine
and quaternizing agent to form a reaction product having at least one group
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with 8 to 50 carbon atoms and from one to three groups with 1 to 4 carbon
atoms. Fang col. 2, l. 66–col. 3, l. 30. These ranges overlap greatly with
those of claim 1, which requires at least one hydrocarbyl group with 8 to 40
carbon atoms and remaining groups with 1 to 6 carbon atoms. There is no
dispute that Fang teaches using a quaternizing agent meeting the
requirements of claim 1. Compare Final Act. 4, with Appeal Br. 6–20.
There is no dispute that Fang teaches adding the additive in
concentrations (5–200 ppm) within the concentration range Appellant
specifies (10–5000 ppm) for their additive. Compare Appeal Br. 6–20, with
Final Act. 3, and Ans. 9; compare also Spec. 24:27–30 (“This effective
content (dosage) is generally 10 to 5000 ppm by weight, preferably 20 to
1500 ppm by weight, especially to 1000 ppm by weight, in particular 30 to
750 ppm by weight, based in each case on the total amount of fuel.”), with
Fang col. 2, ll. 9–15 (“from about 5 to about 200 ppm”).
Given that Fang teaches a genus of quaternary ammonium salts
greatly overlapping with those of claim 1 as a diesel fuel additive used in
direct injection diesel engines (Fang col. 1, ll. 7–12) for cleaning the fuel
injectors, and using the additive in amounts within the range Appellant states
the additive would reduce and/or prevent internal diesel injector deposits, a
preponderance of the evidence supports the Examiner’s conclusion of
obviousness.
Contrary to Appellant’s arguments (Appeal Br. 7–17), that Fang does
not expressly state that the deposits are internal deposits does not defeat the
rejection. There is no persuasive evidence on this record that the objective of
“for reducing and/or preventing internal diesel injector deposits” recited in
claim 1 confers a further limitation on the method over and above the step of
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adding, to the direct injection diesel engine, the additive-containing fuel
required by claim 1.
First, the direct injection diesel engine need only be “at risk of being
affected by conditions that lead to the internal injector deposits.” See claim 1
(adding step). The claim does not require the engine be operated in a manner
that results in internal injector deposits.
Second, the Specification provides evidence that it is the chemical
composition of the additive that results in the reduction and/or prevention of
internal deposits. Spec. 4:32–36 (“Surprisingly, the inventive additives, as
illustrated more particularly by the appended use examples, are surprisingly
effective in common rail diesel engines and are notable for their particular
suitability as an additive for reducing power loss resulting from external
deposits and cold start problems resulting from internal deposits.”). In other
words, the objective, in fact, does not impose an additional requirement on
the claimed invention, i.e., does not narrow the claim, but is a property
necessarily present due to other aspects of the claimed invention, namely,
the additive composition. As such the objective cannot confer patentability.
See In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009); Alcon Research, Ltd.
v. Apotex Inc., 687 F.3d 1362, 1369 (Fed. Cir. 2012).
Nor do we agree with Appellant that Fang’s genus of compounds is
too broadly set forth to provide a reasonable expectation of success as a fuel
additive that reduces deposits in direct injection diesel engines and improves
power recovery as taught by Fang. Fang col. 2, ll. 43–47. Although Fang’s
genus of compounds is somewhat broader than claim 1’s genus, the fact that
a reference “discloses a multitude of effective combinations does not render
any particular formulation less obvious.” Merck & Co., Inc. v. Biocraft
Labs, 874 F.2d 804, 808 (Fed. Cir. 1989) (citing In re Corkill, 771 F.2d
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1496, 1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in
light of prior art teaching that “hydrated zeolites will work” in detergent
formulations, even though “the inventors selected the zeolites of the claims
from among ‘thousands’ of compounds”)); see also, In re Susi, 440 F.2d
442, 445 (CCPA 1971) (obviousness rejection affirmed where the disclosure
of the prior art was “huge, but it undeniably include[d] at least some of the
compounds recited in appellant's generic claims and it is of a class of
chemicals to be used for the same purpose as appellant's additives”).
Appellant has not identified a reversible error in the Examiner’s
conclusion of obviousness.

Claims 4, 6, and 10
Appellant purports to argue claims 4, 6, and 10 separately on the basis
that each of these claims defines more specifically the quaternizing agent.
Appeal Br. 17–18. First, claim 6 does not further limit the quaternizing
agent. Claim 6 further limits the quaternizable tertiary amine. Last, the
argument is the same as that advanced for claim 1. Appellant does not
discuss the limitations of claim 4 with the specificity required for us to
review the rejection for error. Appellant has not identified a reversible error
in the rejection of these claims.

Claim 2
Claim 2 recites that the adding step of claim 1 “further reduces and/or
prevents valve sticking in the direct injection diesel engine.”
Appellant contends that Fang does not address this problem. Appeal
Br. 20. But just as the reduction and/or prevention property of claim 1 is not
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an additional limitation on the claim, nor is the property of claim 2. The
effect is the result of the composition of the additive.
Appellant has not identified a reversible error in the rejection of claim
2.

Non-Statutory Double Patenting
Appellant’s sole argument against the provisional rejection of claims
1, 2, 4, 6, 10, and 11 on the ground of nonstatutory double patenting over
claims 21– 35 and 38 of copending Application No. 15/022,681 and in view
of Fang is that Fang fails to teach the use of a similar fuel composition in
direct injection engines. Appeal Br. 20–21. For the reasons discussed above,
we do not find this argument persuasive of reversible error.
CONCLUSION
The Examiner’s decision to reject claims 1, 2, 4, 6, 8, 10, and 11 is
AFFIRMED.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 6, 8,
10, 11
103(a) Fang 1, 2, 4, 6, 8,
10, 11

1, 2, 4, 6,
10, 11
Provisional Non-
statutory Double
Patenting over
S.N. 15/022,681,
Fang
1, 2, 4, 6,
10, 11

Overall
Outcome
1, 2, 4, 6, 8,
10, 11

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