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 .
DETAILED ACTION
Claims 1, 3, and 7-11 are pending. Claims 2 and 4-6 have been canceled. Note that, Applicant’s amendment and arguments filed April 9, 2026, have been entered.
Claims 8-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 12, 2025.
Objections/Rejections Withdrawn
The following objections/rejections set forth in the Office action mailed 5/19/26 have been withdrawn:
The rejection of claims 1, 3, 4, and 7 under 35 U.S.C. 103 as being unpatentable over Hischier et al (US2014/0261555) in view of Arters et al (US 6,193,767), has been withdrawn.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed 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.
Claims 1 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO2021/078753.
With respect to independent, instant claim 1, ‘753 teaches a method of
reducing intake valve deposits in a spark ignition internal combustion engine. In particular, the method involves introducing an aqueous based composition into the spark ignition internal combustion engine, wherein the aqueous based composition comprises (i) water, (ii) from 0 vol% to 40 vol% of freezing point suppression
agent, (iii) from 0 vol% to 10 vol% of surfactant, and (iv) an amine compound in a blending amount of from 0 ppmw to 1000 ppmw.. See page 1, lines 1-10 and page 4, lines 10-20. Suitably, the amine compound is selected from polyalkylene based amine compounds, polyetheramine compounds, and mixtures thereof. Suitable polyalkylene based amine compounds include polyisobutylene amines, polypropylene amines, Mannich amines, polyisobutylene succinimides, polypropylene succinimides and mixtures thereof. A particularly preferred amine compound for use herein is a polyetheramine, such as an alkyl or alkyaryl polyetheramine. Suitable alkyl or alkylaryl
polyetheramines contain amino groups attached to a polyether backbone. The polyether backbone is based on an alkylene oxide moiety, such as propylene oxide (PO),
ethylene oxide (EO), butylene oxide (BO), mixed BO / PO / EO,and the like. Examples of suitable polyetheramines are compounds comprising polyoxy-C2-C4-alkylene moieties which are obtainable by reacting C2-C60-alkanols, C6-C30- alkanediols, mono- or di-C2-C30-alkylamines, C1-C30-alkylcyclohexanols or C1-C30-alkylphenols with from 1 to 30 mol of ethylene oxide and/or propylene oxide and/or butylene oxide per hydroxyl group or amino group, and, by subsequent reductive amination with ammonia, monoamines or polyamines. For example, the polyether amines used may be poly-C2-C6-alkylene oxide amines or functional derivatives thereof. The amine is preferably from 100 ppmw to 450 ppmw, more preferably from 200 ppmw to 400 ppmw, even more preferably from 300 ppmw to 400 ppmw. See pages 9 and 10.
The aqueous based composition is preferably prepared by mixing the amine compound and the surfactant in a first step, followed by addition of the freezing point
suppression agent, and finally adding the water to produce a clear dispersed solution, e.g. a microemulsion or a continuous phase. In one method, the engine is fueled by a gasoline fuel composition and the aqueous based composition is introduced into the engine, for example via an injection system or otherwise. The aqueous based composition can be introduced into the engine either before or during normal operation of the engine. The aqueous based composition can be introduced into the engine in any appropriate manner, preferably in such a way that it creates a washing action on the back of the intake valves, for example via injection into the cylinder, onto the valves or into the manifold. The aqueous based composition is preferably stored in a separate tank on-board the vehicle, and injected separately from the fuel. See page 11. The aqueous based composition described herein is used for the purpose of reducing intake valve deposits. In a preferred embodiment herein, the aqueous based
composition described herein is used for the dual purpose of reducing intake valve deposits and reducing engine knock. See page 12, lines 1-10. Specifically, ‘753 teaches compositions containing 378.5 ppm of polyetheramine, 0.5 vol % of Surfonic L24-12, 1 vol% of ethanol and 98.5% of water. Note that, the Examiner asserts that the polyetheramine-water solution as specifically taught by ‘753 would inherently have the same solubility as recited by the instant claims because ‘753 teach water-soluble polyetheramines that fall within the broad scope of “water-soluble polyetheramine” in combination with water as recited by the instant claims and further, ‘753 teaches water-based compositions which form a clear dispersed solution in general. ‘753 discloses the claimed invention with sufficient specificity to constitute anticipation.
Accordingly, the teachings of ’753 anticipate the material limitations of independent, instant claim 1 and the respective dependent claims.
Claims 1, 3, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Hischier et al (US2014/0261555) in view of Arters et al (US 6,193,767) and WO2021/078753.
With respect to independent, instant claim 1, Hischier et al teach a cleaning composition and process to remove carbon deposits from an intake manifold of an engine. The de-carbonizing composition is packaged in certain embodiments in an aerosol propellant. The inventive composition is also readily used as a liquid or an atomized mist that is readily introduced into the intake manifold through a tube tolerant of engine inlet operational temperatures and conditions. The invention introduces the composition by a novel process that precludes the need for engine disassembly. See para. 6. By introducing a cleaning composition into the intake manifold of a gasoline engine or a diesel engine during engine operation, the inventive composition so applied degasses and wets the metal engine parts with the de-carbonizing cleaning composition. With the carbon deposit freed from engine surfaces, such deposits and the cleaning composition are carried into a combustion chamber of the engine, where these materials chemically react under combustion conditions. See para. 9. An inventive composition particularly well suited for cleaning an intake manifold of an engine is also provided. The composition is a solvent mixture of aromatic hydrocarbons, lipophilic solvent, and a mutual solvent. C.sub.10-C.sub.28 fatty acid methyl esters represent a majority of the lipophilic solvent in certain inventive embodiments. Glycol ethers and esters represent the mutual solvent in certain inventive embodiments. The solvent mixture includes a quantity of ammonium soap and water present in amount of more than 5 weight percent of the composition. For the purposes of determining solvent weight percent, only the hydrophobic solvents phase components are considered. The hydrophobic solvent phase for weight percent computation is distinct from the surfactants and the aqueous phase. In some embodiments, water is present from 6 to 10 total weight percent, while in other embodiments from 10 to 25 total weight percent. See para. 19.
Hischier et al do not teach the use of a specific polyetheramine, the use of a tank for the PEA-water solution, or a method for cleaning an air intake valve of a gasoline direct injection engine during operation using a polyetheramine-water solution as recited by independent, instant claim 1 and the respective dependent claims.
‘753 is relied upon as set forth above.
Arters et al teach a fuel additive composition comprising at least one amine, wherein said at least one amine contains at least one polyolefin group and at least one polyetheramine. These compositions are useful as fuel additives for reducing intake valve deposits. In addition, these compositions do not contribute to an increase in combustion chamber deposits in port fuel injected internal combustion engines. See Abstract. The polyetheramines having one primary amino group include those represented by the formula R2O(CH2CH(R)O)nR¹NH₂ wherein R2 is a hydrocarbyl group having 1 to 50 carbon atoms, R independently is selected from the group consisting of hydrogen, hydrocarbyl groups of 1 to about 16 carbon atoms, and mixtures thereof; R¹ independently is selected from the group consisting of a hydrocarbylene group containing 2 to about 18 carbon atoms, etc. See column 8. Note that, the Examiner asserts that Arters et al teach polyetheramines which are the same as recited by the instant claims. The polyetheramine is present at a level of about 50 ppm to about 1000ppm based on the weight of the liquid fuel, preferably 75-750 ppm, especially preferred being 100-500 ppm. See column 13.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use a fuel additive mixture containing at least one amine containing at least one polyolefin group and at least one polyetheramine in the composition taught by Hischier et al in the specific amounts as recited by the instant claims, with a reasonable expectation of success, because Arters et al teach that the use of a fuel additive mixture containing at least one amine containing at least one polyolefin group and at least one polyetheramine in a similar composition reduces intake valve deposits and further, such properties would be desirable in the composition taught by Hischier et al.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use a tank for a PEA-water solution wherein the solution is injected from the tank into an engine in the method taught by Hischier et al, with a reasonable expectation of success, because ‘753 teaches the use of a tank for a PEA-water solution wherein the solution is injected from the tank into an engine in a similar cleaning process and further, Hischier et al teach the use of PEA-water solutions in general to clean intake valves. Note that, the Examiner asserts that the broad teachings of Hischier et al in view of Arters et al would suggest compositions having the same water solubility as recited by the instant claims because Hischier et al in view of Arters et al teach PEA-water solutions which are the same as recited by the instant claims and further, such properties would flow naturally from the teachings of Hischier et al in view of Arters et al.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to clean an air intake valve of a gasoline direct injection engine during operation using a polyetheramine-water solution as recited by independent, instant claim 1 and the respective dependent claims, with a reasonable expectation of success and similar results with respect to other disclosed components, because the broad teachings of Hischier et al in view of Arters et al and ‘753 suggest cleaning an air intake valve of a gasoline direct injection engine during operation using a polyetheramine-water solution as recited by independent, instant claim 1 and the respective dependent claims.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over WO2021/078753 as applied to claims 1 and 7 above, and further in view of Arters et al (US 6,193,767).
‘753 is relied upon as set forth above. However, ‘753 does not teach the use of the specific polyetheramine as recited by instant claim 3.
Arters et al are relied upon as set forth above.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use a specific polyetheramine as recited by instant claim 3 in the composition taught by ‘753, with a reasonable expectation of success, because Arters et al teach that the use of a fuel additive mixture containing at least one amine containing at least one polyolefin group and at least one polyetheramine in a similar composition reduces intake valve deposits and further, ‘753 teaches the use of a wide variety of polyetheramines in general.
Response to Arguments
With respect to the rejection of the instant claims under 35 USC 103 using Hischier et al (US2014/0261555) in view of Arters et al (US 6,193,767), Applicant states that Hischier et al do not disclose selecting a polyether amine based on water-solubility, nor does Hischier et al disclose or suggest a PEA-water solution having at least 1% water solubility under ambient temperatures. In response, note that, the Examiner asserts that the broad teachings of Hischier et al in view of Arters et al would suggest compositions having the same water solubility as recited by the instant claims because Hischier et al in view of Arters et al teach PEA-water solutions which are the same as recited by the instant claims and further, such properties would flow naturally from the teachings of Hischier et al in view of Arters et al. The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985) (The prior art taught combustion fluid analyzers which used labyrinth heaters to maintain the samples at a uniform temperature. Although appellant showed an unexpectedly shorter response time was obtained when a labyrinth heater was employed, the Board held this advantage would flow naturally from following the suggestion of the prior art.). See also Lantech Inc. v. Kaufman Co. of Ohio Inc., 878 F.2d 1446, 12 USPQ2d 1076, 1077 (Fed. Cir. 1989), cert. denied, 493 U.S. 1058 (1990) (unpublished — not citable as precedent) ("The recitation of an additional advantage associated with doing what the prior art suggests does not lend patentability to an otherwise unpatentable invention."). See MPEP 2145(II.).
Additionally, Hischier et al clearly teach a that composition is readily used as a liquid or an atomized mist that is readily introduced into the intake manifold through a tube tolerant of engine inlet operational temperatures and conditions and that the process taught by Hischier et al introduces the composition by a novel process that precludes the need for engine disassembly (See para. 6 of Hischier et al). Additionally, Hischier et al clearly teach that In a particularly embodiment, a composition
is sprayed into the intake manifold while the engine is running and that a cleaning composition is introduced into the intake manifold of a gasoline engine or a diesel engine during engine operation (See paras. 9 and 10 of Hischier et al), wherein these teachings would clearly fall within the broad scope of “A method for cleaning an air intake valve of a gasoline direct injection (GDI) GDI engine during engine operation” as recited by the instant claims.
Additionally, the Examiner asserts that Arters et al and WO2021/078753 are analogous prior art relative to Hischier et al and the claimed invention since they are drawn to the same field of endeavor, namely engine treatment/cleaning compositions and that one of ordinary skill in the art clearly would have looked to the teachings of Arters et al and ‘753 to cure the deficiencies of Hischier et al. Arters et al is a secondary reference relied upon for its teaching of a specific polyetheramine and ‘753 is a secondary reference relied upon for its teaching of the use of a tank for the PEA-water solution. While Applicant states that one of ordinary skill in the art would not be motivated to use the polyetheramine compound as taught by Arters et al in the composition taught by Hischier et al which contains water, the Examiner does not concur; the composition taught by Hishier et al is largely based on hydrocarbon and organic solvents and the polyetheramine compound as taught by Arters et al would be expected to be suitable and stable in these solvents. The Examiner asserts that one of ordinary skill in the art clearly would have been motivated to use a fuel additive mixture containing at least one amine containing at least one polyolefin group and at least one polyetheramine in the composition taught by Hischier et al in the specific amounts as recited by the instant claims, with a reasonable expectation of success, because Arters et al teach that the use of a fuel additive mixture containing at least one amine containing at least one polyolefin group and at least one polyetheramine in a similar composition in the specific amounts as recited by the instant claims reduces intake valve deposits and further, such properties would be desirable in the composition taught by Hischier et al. Obviousness does not require certainty of success; it requires only a reasonable expectation of success. PAR Pharm., Inc. v. TWE Pharm., Inc., 773 F.3d 1186, 1198 (Fed. Cir. 2014) (“The reasonable expectation of success requirement for obviousness does not necessitate an absolute certainty for success.”). Additionally, the Examiner asserts that one of ordinary skill in the art clearly would have been motivated to use a tank for a PEA-water solution wherein the solution is injected from the tank into an engine in the method taught by Hischier et al, with a reasonable expectation of success, because ‘753 teaches the use of a tank for a PEA-water solution wherein the solution is injected from the tank into an engine in a similar cleaning process and further, Hischier et al teach the use of PEA-water solutions in general to clean intake valves. Thus, the Examiner asserts that the teachings of Hischier et al in view of Arters et al and’753 are sufficient to render the claimed invention obvious under 35 USC 103.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Remaining references cited but not relied upon are considered to be cumulative to or less pertinent than those relied upon or discussed above.
Applicant is reminded that any evidence to be presented in accordance with 37 CFR 1.131 or 1.132 should be submitted before final rejection in order to be considered timely.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY R DEL COTTO whose telephone number is (571)272-1312. The examiner can normally be reached M-F, 8:30am-6:00pm, EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGORY R DELCOTTO/Primary Examiner, Art Unit 1761
/G.R.D/October 7, 2026
