INNOSPEC LIMITED

Patent Trials and Appeals Board

May 10, 2021

2021000780 (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.
14/816,313 08/03/2015 Jacqueline Reid 27073-55CON 4871
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 2021-000780
Application 14/816,313
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 1–6, 8–13, and 16–24. 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.
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Application 14/816,313
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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 modern 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 selected from:
(i) 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;
(ii) a Mannich reaction product comprising a tertiary
amine group; and
(iii) a polyalkylene substituted amine having at least one
tertiary amine group;
wherein the detergent additive is the reaction product of a
carboxylic acid derived acylating agent and an amine; and
wherein the method provides control of deposits within the
injector body of a modern diesel engine having a high pressure
fuel system to prevent injector sticking;
wherein the engine has a fuel pressure of more than 1350
bar and comprises a fuel injector having a plurality of apertures,
each aperture having an inlet and an outlet which are tapered
such that the inlet diameter is greater than the outlet diameter, the
outlet diameter being less than 200μm, and having an operating
tip temperature in excess of 250°C; and
wherein the detergent additive is made by reacting a
poly(isobutene)-substituted succinic acid derived acylating agent
wherein the poly(isobutene) substituent has between about 12 to
about 200 carbon atoms with a mixture of ethylene polyamines
having about 3 to about 9 amino nitrogen atoms per ethylene
polyamine and about 1 to about 8 ethylene groups, wherein
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the molar ratio of acylating agent: amino compound is from 2:1
to 1:1.
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
1–6, 8–13, 16–24 103 Barton,2 Steckel,
MacMillan
1–6, 8–13, 16–24 103 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

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.
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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.

Final Act. 3. (citing Barton ’569 col. 2, ll. 20–40).
The Examiner 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. Final
Act. 3–4.
The Examiner further finds that Barton permits including detergent
additives as other conventional fuel composition additives. Id. at 4 (citing
Barton ’569 col. 8, ll. 34–68). The Examiner further finds that Barton
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discloses N-substituted long chain alkenyl succinimides as dispersants. Id.
(citing Barton ’569 col. 8, ll. 64–65).
The Examiner also finds 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 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 the art to expect that the
claimed combination of additives would be effective in reducing deposits in
a modern diesel engine. Id. at 9–10.
To the extent that Appellant’s argument rests on interpreting
“provides control of deposits within the injector body of a modern diesel
engine having a high pressure fuel system to prevent injector sticking” 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 modern
diesel engine of a certain structure, is merely an intended use:
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wherein the method provides control of deposits within
the injector body of a modern diesel engine having a high
pressure fuel system to prevent injector sticking;
wherein the engine has a fuel pressure of more than 1350
bar and comprises a fuel injector having a plurality of apertures,
each aperture having an inlet and an outlet which are tapered
such that the inlet diameter is greater than the outlet diameter,
the outlet diameter being less than 200µm, and having an
operating tip temperature in excess of 250°C.
Appeal Br. 14 (Claims Appendix).
Appellant’s Specification explains that controlling fuel deposits is
important for addressing problematic injector sticking in modern diesel
engines. Spec. 31, ll. 21–24. The Specification describes “keep clean”
performance and “clean up” performance respectively as metrics for deposit
inhibition and removal. Spec. 32, ll. 17–21. 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”). Spec. 34, ll. 1–4.
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, ll. 6–9.
Because the Specification’s description does not quantify the degree
of sticking to be prevented for modern engines with a particular structure,
we interpret “provides control of deposits within the injector body of a
modern diesel engine having a high pressure fuel system to prevent injector
sticking” and the accompanying engine structure merely as an intended use.

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Unexpected Results
Appellant argues that Declarations I and II3 demonstrate that using
combinations of succinimide detergent and quaternary ammonium salt of
claim 1 achieves unexpected results in reducing injector deposits in modern
diesel fuel engines as compared to a quaternary ammonium salt alone.
Appeal Br. 5.
Appellant argues that Declaration I shows 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. Id. at 6; Decl. I ¶¶ 4, 5; Spec. 37, ll. 20–26. Appellant argues
that the first experiment compared deposit formation for a fuel containing
Q5 alone to one containing Q5 and A2. Appeal Br. 6.
Appellant argues that Q6 is the quaternary ammonium salt of Example
1 in Barton ‘569 (styrene oxide quaternary ammonium salt) and satisfies
claim 1. Id.; Barton ’569 col. 11, ll. 8–15. Appellant argues that a second
experiment compared deposit formation for a fuel containing Q6 alone to
one containing Q6 and A2. Appeal Br. 6.
Appellant argues that detergent agent A2 was prepared by reacting
acylating agent (PIBSA) to amine (polyethylene polyamine) at a molar ratio
of 2:1 to 1:1. Decl. II ¶ 10. Declaration II otherwise addresses rejections
and prior art references that are not at issue. Id. at ¶ 3.
Appellant argues Q5 and Q6 are encompassed by claim 1, and that the
experiments in Declaration I show that Q5 or Q6 alone ineffectively

3 Declarations of Vincent Burgess under 37 C.F.R. § 1.132 dated August 17,
2016 (“Declaration I”) and January 12, 2018 (“Declaration II”).
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prevented sticking in any of the tested injectors after eight hours. Appeal Br.
6. Appellant further argues that the results of Declaration I are
commensurate in scope with the claims. Id.
The Examiner finds that the results in Declaration I are not
unexpected because the data is not commensurate in scope with the claims.
Answer 8. The Examiner further finds that Barton ’569 already teaches that
Q6 effectively reduces intake valve deposits and removing or cleaning
existing deposits on diesel engine intake valves. Id. at 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, 1178, MPEP § 716.02(e). Moreover, “objective
evidence of non-obviousness must be commensurate in scope with the
claims which the evidence is offered to support.” In other words, the
showing of unexpected results must be reviewed to see if the results occur
over the entire claimed range. In re Clemens, 622 F.2d 1029, 1035 (CCPA
1980). 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.).
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Barton is the closest prior art of record. Example 1 tests a styrene
oxide quaternary ammonium salt (reaction product of
dimethylaminopropylamine succinamide and styrene oxide), which is a
quaternary ammonium salt based upon nitrogen containing species (i) and a
quaternizing agent of claim 1. Barton ’569 at col. 11, ll. 5–15. Appellant
acknowledges that Barton applies its quaternary ammonium salt in high
pressure modern engines (e.g., above 1350 bar) in a high speed injector test.
Appeal Br. 10. 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). Id. at 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. Id. at col. 8, l. 64 to col. 9, l. 2.
We are not persuaded that Appellant has met its burden of showing
unexpected results of the method of claim 1 over Barton. Even if
Declaration I shows injector sticking with Q5 or Q6 alone, the data is not
reasonably commensurate in scope with claim 1. As a single experiment,
the data does not reasonably account for other quaternizing ammonium salts
comprising the reaction product of a quaternizing agent with other nitrogen
containing species of (i), (ii), or (iii) of 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
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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). The data also only
reflect one detergent additive A2 prepared from non-specific ratio of
acylating agent to amino compound, generally falling within a range of 2:1
to 1:1. One of ordinary skill of art would not find that each experiment
taken alone or together establishes a trend of probative value of using
combinations of a detergent additive and a quaternary ammonium salt of
claim 1.
We, consequently, find that the evidence of record does not establish
an unexpected difference between Barton and the claimed invention, and so
fails to rebut the Examiner’s finding of obviousness.
Because Appellant has not demonstrated unexpected results based
upon Declarations I and II, we do not reach the merits of the Appellant’s
arguments concerning Steckel, Grundy, and MacMillan.
We thus affirm the rejections of Claims 1–6, 8–13, 16–24 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
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8–13,
16–24
103 Barton, Steckel,
MacMillan
1–6, 8–13,
16–24

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1–6, 8–13,
16–24
103 Barton, Grundy,
MacMillan
1–6, 8–13,
16–24

Overall
Outcome
1–6, 8–13,
16–24

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