Ex Parte Garner et al

Patent Trial and Appeal Board

Nov 24, 2014

11560489 (P.T.A.B. Nov. 24, 2014)

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.
11/560,489 12/07/2006 Terence Garner PF2005M018 5889
25553 7590 11/24/2014
INFINEUM USA L.P.
P.O. BOX 710
LINDEN, NJ 07036
EXAMINER
PO, MING CHEUNG
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
11/24/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TERENCE GARNER and MARTIN JAMES WILLIS
____________

Appeal 2013-002340
Application 11/560,489
Technology Center 1700
____________

Before PETER F. KRATZ, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1 and 4–20. We have jurisdiction
pursuant to 35 U.S.C. § 6.
Appellants’ claimed invention is directed to a method of operating a
diesel engine utilizing different fuels at two differing operating periods, one
of the fuels having a relatively high sulfur content compared to the other
fuel.
Claim 1 is illustrative and reproduced below:
1. A method of operating a marine or stationary diesel engine
comprising the steps of: (a) fueling the engine for a first period
of operation with a low sulphur fuel having a sulphur content of
less than or equal to 1.5 mass %, based on the total mass of fuel
Appeal 2013-002340
Application 11/560,489

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without adding to said low sulphur fuel an overbased detergent
having a base number of greater than 150 mg KOH/g; (b)
fueling the engine for a second period of operation with a high
sulphur fuel having a sulphur content of greater than 1.5 mass
%, based on the total mass of fuel; (c) lubricating said engine
with a single cylinder lubricant having a total base number
(TBN) of less than 70 mg KOH/g that is fed at a substantially
constant feed rate to the engine during each of said first period
of operation and said second period of operation; and (d)
adding to said high sulphur fuel at least one overbased
detergent having a base number of greater than 150 mg KOH/g.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Nemec et al. US 2,940,435 Jun. 14,1960
(hereafter “Nemec”)
Hammond et al. USPGPUB 2002/0183212 A1 Dec. 5, 2002
(hereafter “Hammond”)
Van Leest et al. USPGPUB 2003/0163948 A1 Sept. 4, 2003
(hereafter “Van Leest”)
Chambard et al. USPGPUB 20050153847 A1 July 15, 2005
(hereafter “Chambard”)

The Examiner maintains the following grounds of rejection:
Claims 1 and 4–20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nemec in view of Chambard, Van Leest, and Hammond.
We affirm the stated rejection substantially for the reasons, factual
findings, and rebuttal as set forth by the Examiner in the Answer. We add
the following for emphasis.
Appellants argue the rejected claims together as a group (App. Br. 4–
7). Accordingly, we select claim 1 as the representative claim on which we
decide this appeal.
Appeal 2013-002340
Application 11/560,489

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There is no dispute that the applied prior art, including Nemec and
Chambard, teaches or suggest the use of at least a dual fuel system for
operating a diesel engine wherein the engine is switched from one fuel to
another at different periods of time during its operation (App. Br. 4–5; Ans.
4–5; Nemac, col. 1, ll. 26–71; Chambard, ¶¶ 2–35).
As reasonably determined by the Examiner and contrary to
Appellants’ argument, one of ordinary skill in the art would have been led to
employ a relatively high grade and low sulfur fuel with a sulfur loading of
less than about one percent by weight when operating a marine diesel engine
during one operating time period, such as at start-up and/or near a coastal
area and then switching the operation to a higher sulfur content fuel, such as
a fuel having at or above 3.5 percent sulfur content, during another operating
time period as the engine reaches a desired operating characteristic, such as a
desired horsepower, and/or has cleared the coastal area based on the
combined teachings of Nemec and Chambard (Ans. 5, 8, and 9).
The Examiner turns to Van Leest and Hammond to teach or suggest
the use of a lubricant and detergent additives corresponding to those required
by representative claim 1 (Ans. 5–7).1
Appellants argue that Van Leest would have suggested that one of
ordinary skill in the art should limit the metal content of the detergent
employed in a combustion chamber by, in part, limiting nonmetal detergent
employed to a detergent having a Total Base Number (TBN) of 150 or less
(App. Br. 6). In essence, Appellants appear to be arguing that the proposed

1 The Examiner inadvertently refers to paragraph 96 instead of paragraph 86
of Van Leest with respect to a Total Base Number disclosure of Van Leest at
page 6 of the Answer.
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Application 11/560,489

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combination of disclosures advanced by the Examiner, particularly the
Examiner’s use of Hammond, in combination with Van Leest, for suggesting
the addition of an overbased detergent additive having a TBN above 150 to
the high sulfur fuel would have been militated against by this disclosure of
Van Leest.
For substantially the reasons as stated by the Examiner, we are not
persuaded of reversible error in the Examiner’s obviousness rejection by this
argument (Ans. 9–11). In particular, we observe that Hammond teaches the
use of a detergent additive having a relatively high TBN value, including
values greater than 150, and that such an additive is particularly useful as a
detergent additive when employing a residual fuel with a higher sulfur
loading for mitigating so called “black paint” problems ((Hammond, ¶¶ 44-
47; 2, 4-6). While Van Leest may generally suggest utilizing a detergent
having a TBN of 150 or less for neutral alkaline earth metal compounds and
neutral alkali metal compounds, Van Leest also teaches that overbased
compounds can be utilized (¶¶ 36-38, 86). Moreover, Van Leest fairly
suggests the addition of detergent additives can advantageously be made
directly to the fuel, such as a residual fuel (¶¶ 6-8, 13, 23, 143, 144).
Accordingly, for reasons well-stated by the Examiner, we affirm.

ORDER
The Examiner’s decision to reject the appealed claims is affirmed.

Appeal 2013-002340
Application 11/560,489

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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