DETAILED ACTION
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 .
Claim Status
Claims 1-6 are currently pending.
Response to Arguments
Applicant's arguments filed on 06/14/2026 have been fully considered but they are not persuasive.
The applicant argues that Tanaka measures detergency by the panel coking method according to Federal Test Method 791B.3462, and that this method evaluates resistance to carbon deposit formation and not the ability to solubilize or remove existing carbon deposits.
However, this argument is not persuasive. Tanaka teaches that two-engines were operated (column 3, lines 29-30) to evaluate the oil composition properties, and that for the panel coking method the engines were operated for 3 hours (column 3, lines 36-42). A person of ordinary skill in the art would understand that operating the engine means running the engine on gasoline fuel, which is known to produce carbon deposits.
Moreover, since Tanaka teaches that the oil composition provide a good detergency (column 1, line 25 of Tanaka), and the method disclosed by Tanaka/Park discloses the same processing steps and components (oil composition comprising at least one chemical selected from the group of alpha-pinene, beta-pinene and/or dipentene (column 1, lines 61-66 of Tanaka)) as instantly claimed, it is reasonably expected that the method and oil composition disclosed by Tanaka/Park would solubilize at least some of the carbon deposits into the oil composition.
Furthermore, the limitation “for the intended purpose of solubilizing at least some of the carbon deposits” is the intended result or outcome of performing the method steps recited in the claims. The combination of Tanaka/Park discloses the same processing steps and components claimed (oil composition comprising at least one chemical selected from the group of alpha-pinene, beta-pinene and/or dipentene (column 1, lines 61-66 of Tanaka)). The applicant does not assert that Tanaka/Park’s method lacks those recited method steps. As such the applicant fails to distinguish Tanaka/Park.
In addition, the applicant argues that Tanaka does not teach using terpenes to clean the engine.
However, this argument is not persuasive. As explained above, the combination of Tanaka/Park discloses the same processing steps and components claimed (oil composition comprising at least one chemical selected from the group of alpha-pinene, beta-pinene and/or dipentene (column 1, lines 61-66 of Tanaka)). The applicant does not assert that Tanaka/Park’s method lacks those recited method steps. As such the applicant fails to distinguish Tanaka/Park.
Moreover, Tanaka teaches that its oil composition has detergency (“oil compositions are required to have… good detergency”, column 1, lines 24-25, and “use of an oil composition according to this invention… will provide good detergency”, column 5, line 25). A person of ordinary skill in the art would understand that Tanaka’s oil composition would clean the engine.
Furthermore, the applicant argues that there is not evidentiary support for reasonably expecting success from the Office’s combination of references.
In this case, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). The references of Tanaka and Park are directed to two-cycle engines, and the use of an oil composition in the two-cycle engines. Tanaka teaches a two-cycle engine oil composition comprising good detergency (column 5, line 25 of Tanaka), which can be applied to separate oiling engines and mixed oiling engines in general (column 3, lines 19-21 of Tanaka), and Park teaches a two-cycle engine in which the gasoline and engine oil are supplied separately, wherein the engine oil is sucked and scattered to provide lubrication on moving parts such as the piston and piston ring (English translation, page 8, lines 1-5 of Park), and that the engine oil can be a typical two-cycle engine oil (English translation, page 13, lines 15-16).
Moreover, the applicant argues that there is no motivation to combine Tanaka and Park, and that Tanaka’s terpene-heavy composition to Park’s lubrication system would reasonably be expected to alter the viscosity and lubrication characteristics of Park’s engine oil.
In this case, the reference of park was presented to show that a two-cycle engine can comprise an induction system, combustion chambers, and separate fuel delivery and lubricating system, wherein the lubricating system includes an engine lubricating fluid and means to continuously circulate the lubricating fluid through the engine to the lubricated components while the engine is running.
Tanaka teaches that the two-cycle engine oil composition has detergency (column 5, line 25 of Tanaka), and that oil composition may be applied to both separate oiling engines and mixed oiling engines in general (column 3, lines 19-21 of Tanaka). The reference of Park teaches a two-cycle engine including an induction system, combustion chambers (see figures 5 and 7), a separate fuel delivery system (figure 7, #20) and lubricating system (English translation, page 7, line 13 to page 8, line 5), wherein the lubricating system includes an engine lubricating fluid (oil composition) (English translation, page 13, lines 15-16) and means to continuously circulate (oil pump, figure 7, #400, and distributor figure 7, #422) the lubricating fluid through the engine to the lubricated components while the engine is running (see figure 7, and English translation, page 7, line 13 to page 8, line 5). In addition, Park teaches that it is desirable to use CC oil (engine oil), which is a typical two-cycle engine oil as the engine oil (English translation, page 13, lines 15-16).
Therefore, it would have been obvious to one of ordinary skill in the art to perform the method of operating a two-cycle engine using the oil composition as disclosed by Tanaka wherein the two-cycle engine comprises an induction system, combustion chambers, and separate fuel delivery and lubricating system, the lubricating system including an engine lubricating fluid and means to continuously circulate the lubricating fluid through the engine to the lubricated components while the engine is running as taught by Park, with a reasonable expectation of success, since Tanaka teaches that the two-cycle engine oil composition may be applied to both separate oiling engines and mixed oiling engines (column 3, lines 19-21 of Tanaka), and Park teaches a two-cycle engine in which gasoline and engine oil are supplied separately, wherein the engine oil is sucked and scattered to provide lubrication on moving parts such as the piston and piston ring (English translation, page 8, lines 1-5 of Park).
Furthermore, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
The applicant argues that the combination of Tanaka/Park does not teach that the method is for removing carbon deposits and sludge from at least one of sticking piston rings, sticking lifters, sticking camshaft phasers, sticking oil valves, sticking timing chain tensioner, and restricted lubricating screens.
This is not persuasive. Tanaka teaches that the oil composition provides good detergency (column 5, line 25 of Tanaka) and comprises terpenes (column 1, lines 46-67, and column 3, lines 26-34), a solvent, and the steps of adding the at least one chemical to the lubricating fluid (oil) (column 1, lines 54-60), and running the engine (column 3, lines 29-34). Park teaches that the two-cycle engine comprises a piston (figures 6 and 7, #3 of Par) and a piston ring (figure 6, #3A of Park), and that the engine oil is sucked in and scattered to provide lubrication on moving parts such as the inner wall of a cylinder, the outer wall of the piston and the piston ring (English translation, page 8, lines 1-5 of Park). In this case, since the processing conditions, process steps, and the chemical component (alpha-pinene, beta-pinene, dipentene, and/or d-limonene (reads on “R-(+)-limonene) (column 1, lines 61-66 of Tanaka)) disclosed by Tanaka/Park are similar to those instantly claimed, and Tanaka teaches that the oil composition provides good detergency (column 1, line 25 of Tanaka), and the pistons are in contact with the oil composition, it would be reasonably expected that the method disclosed by Tanaka/Park removes carbon deposits and sludge from sticking piston rings.
Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform the method disclosed by Tanaka/Park for removing carbon deposits from lubricated components in an internal combustion engine, wherein the at least one chemical is added to the lubricating fluid to remove at least some of the carbon deposits from at least one of sticking lifters, sticking camshaft phasers, sticking oil control valves, sticking timing chain tensioner, and restricted lubricating screens, with a reasonable expectation of success, since Tanaka teaches that the engine oil composition has good detergency (column 1, lines 47-53, and column 5, line 25 of Tanaka), and that the oil composition may be applied to both separate oiling engines and mixed oiling engines (column 3, lines 19-21 of Tanaka).
Moreover, the applicant argues that adding a generic oil-change step disclosed by Ishii to a composition that is not shown to solubilize carbons deposits does not result in a method for removing carbon deposition from the lubricated engine components.
This argument is not persuasive. The reference of Ishii is merely relied upon that it is known in the art to run an engine after filling the engine with an engine oil cleaning composition, circulating the cleaning composition through the engine components, and changing the oil and the filter (column 5, lines 36-52 of Ishii).
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 should recite “A method of removing carbon deposits from lubricated components in an internal combustion engine”, instead of “A method of removing carbon deposits and from lubricated components in an internal combustion engine” in lines 1-2.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over US 4,759,860 to Tanaka et al. (hereinafter “Tanaka”) in view of KR 10087056 to Park et al. (hereinafter “Park”).
Regarding claim 1, Tanaka teaches a method of operating a two-cycle engine using an oil composition comprising one or more terpenes to clean the engine (column 1, lines 46-67, and column 3, lines 26-34), the method comprising the steps of selecting at least one chemical selected from the group of alpha-pinene, beta-pinene and/or dipentene (column 1, lines 61-66), adding the at least one chemical to the lubricating fluid (oil) (column 1, lines 54-60), and running the engine (column 3, lines 29-34). Moreover, Tanaka teaches that the two-cycle engine oil composition may be applied to both separate oiling engines and mixed oiling engines (column 3, lines 19-21).
Tanaka does not teach that the two-cycle engine comprises an induction system, combustion chambers, and separate fuel delivery and lubricating system, wherein the lubricating system includes an engine lubricating fluid and means to continuously circulate the lubricating fluid through the engine to the lubricated components while the engine is running.
However, Park teaches a two-cycle engine including an induction system, combustion chambers (see figures 5 and 7), a separate fuel delivery system (figure 7, #20) and lubricating system (English translation, page 7, line 13 to page 8, line 5), wherein the lubricating system includes an engine lubricating fluid (oil composition) (English translation, page 13, lines 15-16) and means to continuously circulate (oil pump, figure 7, #400, and distributor figure 7, #422) the lubricating fluid through the engine to the lubricated components while the engine is running (see figure 7, and English translation, page 7, line 13 to page 8, line 5). Moreover, Park teaches that it is desirable to use CC oil (engine oil), which is a typical two-cycle engine oil as the engine oil (English translation, page 13, lines 15-16).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform the method of operating a two-cycle engine using the oil composition disclosed by Tanaka, wherein the two-cycle engine comprises an induction system, combustion chambers, and separate fuel delivery and lubricating system, wherein the lubricating system includes an engine lubricating fluid and means to continuously circulate the lubricating fluid through the engine to the lubricated components while the engine is running as taught by Park, with a reasonable expectation of success, since Tanaka teaches that the two-cycle engine oil composition may be applied to separate oiling engines and mixed oiling engines (column 3, lines 19-21 of Tanaka), and Park teaches that a two-cycle engine can include induction system, combustion chambers (see figures 5 and 7 of Park), a separate fuel delivery system (figure 7, #20 of Park) and lubricating system (English translation, page 7, line 13 to page 8, line 5 of Park), wherein the lubricating system includes an engine lubricating fluid (oil composition) (English translation, page 13, lines 15-16 of Park) and means to continuously circulate (oil pump, figure 7, #400, and distributor figure 7, #422 of Park) the lubricating fluid through the engine to the lubricated components while the engine is running (see figure 7, and English translation, page 7, line 13 to page 8, line 5 of Park), and that it is desirable to use a typical two-cycle engine oil as the engine oil (English translation, page 13, lines 15-16 of Park).
Tanaka/Park does not explicitly teach the step of continuously circulating the oil composition (reads on “at least one chemical and the lubricating oil”) through the engine to the lubricated components while the engine is running for the intended purpose of solubilizing at least some of the carbon deposits into the at least one chemical and the lubricating fluid.
However, since Tanaka/Park teaches the step of operating the engine using the oil composition (column 3, lines 29-30 of Tanaka, and English translation, page 8, lines 1-5 of Park), it would be reasonably expected that while the engine is running the oil composition is continuously circulated through the engine to the lubricated components.
Moreover, since Tanaka teaches that the oil composition provide a good detergency (column 1, line 25 of Tanaka), and the method disclosed by Tanaka/Park discloses the same processing steps and components (oil composition comprising at least one chemical selected from the group of alpha-pinene, beta-pinene and/or dipentene (column 1, lines 61-66 of Tanaka)) as instantly claimed, it is reasonably expected that the method and oil composition disclosed by Tanaka/Park would solubilize at least some of the carbon deposits into the oil composition (reads on “at least one chemical and the lubricating fluid”).
Regarding claims 2 and 3, Tanaka/Park further teaches that the oil composition can comprise more than one terpene (reads on “other chemical”) including alpha-pinene, beta-pinene, dipentene, and/or d-limonene (reads on “R-(+)-limonene) added to the oil composition (reads on the limitation “added to form a mixture, wherein the step of adding is the step of adding the mixture to the lubricating fluid”) (column 1, lines 61-66 of Tanaka), and that the engine is operated using the oil composition (column 3, lines 29-30 of Tanaka, and English translation, page 8, lines 1-5 of Park).
Regarding claim 4, Tanaka teaches that the oil composition provides good detergency (column 5, line 25 of Tanaka). Moreover, Park teaches that the two-cycle engine comprises a piston (figures 6 and 7, #3 of Par) and a piston ring (figure 6, #3A of Park), and that the engine oil is sucked in and scattered to provide lubrication on moving parts such as the inner wall of a cylinder, the outer wall of the piston and the piston ring (English translation, page 8, lines 1-5 of Park).
Tanaka/Park does not explicitly teach that the method is for removing carbon deposits and sludge from at least one of sticking piston rings, sticking lifters, sticking camshaft phasers, sticking oil valves, sticking timing chain tensioner, and restricted lubricating screens.
However, since the processing conditions, process steps, and the chemical component (alpha-pinene, beta-pinene, dipentene, and/or d-limonene (reads on “R-(+)-limonene) (column 1, lines 61-66 of Tanaka)) disclosed by Tanaka/Park are similar to those instantly claimed, and Tanaka teaches that the oil composition provides good detergency (column 1, line 25 of Tanaka), it would be reasonably expected that the method disclosed by Tanaka/Park removes carbon deposits and sludge from sticking piston rings.
Regarding claim 6, Tanaka/Park does not teach that the method is for removing carbon deposits and sludge from at least one of sticking lifters, sticking camshaft phasers, sticking oil valves, sticking timing chain tensioner, and restricted lubricating screens.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform the method disclosed by Tanaka/Park for removing carbon deposits and from lubricated components in an internal combustion engine, wherein the at least one chemical is added to the lubricating fluid to remove at least some of the carbon deposits from at least one of sticking lifters, sticking camshaft phasers, sticking oil control valves, sticking timing chain tensioner, and restricted lubricating screens, with a reasonable expectation of success, since Tanaka teaches that the engine oil composition has good detergency (column 1, lines 47-53, and column 5, line 25 of Tanaka), and that the oil composition may be applied to both separate oiling engines and mixed oiling engines (column 3, lines 19-21 of Tanaka).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over US 4,759,860 to Tanaka et al. (hereinafter “Tanaka”) in view of KR 10087056 to Park et al. (hereinafter “Park”), and in further view of US 5,998,343 to Ishii (hereinafter “Ishii”).
Regarding claim 5, Tanaka/Park further teaches that the lubricating system includes a filter (English translation, page 17, lines 6-13 of Park).
Tanaka/Park does not teach the steps of changing the lubricating fluid and the lubricating filter.
However, Ishii teaches that it was known in the art to run an engine after filling the engine with an engine oil cleaning composition, circulating the cleaning composition through the engine components, and changing the oil and the filter (column 5, lines 36-52).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method disclosed by Tanaka/Park with the step of changing the lubricating fluid and the lubricating filter, with a reasonable expectation of success, in order to ensure that the whole engine is cleaned and to prolong the life of the engine as disclosed by Ishii (column 5, lines 53-61 of Ishii).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARLYN I RIVERA-CORDERO whose telephone number is (571)270-7680. The examiner can normally be reached Monday to Friday, 9:00 AM to 2:00 PM.
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, Kaj Olsen can be reached at 571-272-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.I.R/Examiner, Art Unit 1714
/KAJ K OLSEN/Supervisory Patent Examiner, Art Unit 1714
Prosecution Insights