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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 10 (and all claims that depend therefrom) are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claims 1 and 10 line 23 recite that “the exhaust gas is discharged through both the upper exhaust port and the lower exhaust port regardless of a communication area between the upper exhaust channel and the lower exhaust channel.” As detailed in the disclosure, it is the communication area between the channels that allows the exhaust gas to pass from the upper channel to the lower channel to be discharged from the lower exhaust port. Without the communication area, no exhaust could reach the lower exhaust port, and as such, this limitation is not enabled by the disclosure.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 10 (and all claims that depend therefrom) are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 10 line 23 recite that “the exhaust gas is discharged through both the upper exhaust port and the lower exhaust port regardless of a communication area between the upper exhaust channel and the lower exhaust channel.” As detailed in the disclosure, it is the communication area between the channels that allows the exhaust gas to pass from the upper channel to the lower channel to be discharged from the lower exhaust port. It is unclear how the exhaust gas could be discharged through the lower port when the communication area is not aligned, i.e. in the non-communication state. For the purposes of this action, this will be interpreted as the exhaust gas can be discharged through both the upper exhaust port and the lower exhaust port via the communication area in the communication state.
Claim Rejections - 35 USC § 103
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.
Claims 1-18, 21, 22 and 25-28 as best understood are rejected under 35 U.S.C. 103 as being unpatentable over Alby US 10,800,502 in view of Fujimoto US 5,224,888, Lundqvist US 8,808,045 and Kato US 6,632,110.
Regarding claims 1 and 10, Alby teaches an outboard motor 20 comprising:
an outboard motor body including:
an engine 22;
a propeller shaft 40;
a propeller 43 attached to the propeller shaft;
a transmission to transmit rotation of the engine to the propeller shaft;
an upper accommodation body 29 that accommodates at least a portion of the engine;
a lower accommodation body 38 that accommodates at least a portion of the propeller shaft; and
a steering 46, 56 to cause the lower accommodation body to rotate about a steering axis with respect to the upper accommodation body;
a suspension 23 to suspend the outboard motor body from a transom of a hull of a boat (column 4, lines 42-47);
wherein the upper accommodation body includes an upper exhaust channel 204 including an upper exhaust port that communicates with the engine; and
the lower accommodation body includes a lower exhaust channel 206 including a lower exhaust port.
Alby does not teach that the suspension includes a pair of clamp brackets, a tilt shaft, and a connection bracket. Fujimoto teaches an outboard motor 10 comprising:
an outboard motor body including:
PNG
media_image1.png
384
270
media_image1.png
Greyscale
an engine 20;
a propeller shaft;
a propeller 32 attached to the propeller shaft;
a transmission to transmit rotation of the engine to the propeller shaft;
an upper accommodation body 56 that accommodates at least a portion of the engine;
[AltContent: textbox (Figure 1- Fujimoto Figure 3)]a lower accommodation body 28 that accommodates at least a portion of the propeller shaft; and
a steering 51 to cause the lower accommodation body to rotate about a steering axis with respect to the upper accommodation body;
a suspension to suspend the outboard motor body from a transom of a hull of a boat, the suspension including a pair of clamp brackets 13, a tilt shaft 12, and a connection bracket 15.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the motor of Alby with the suspension as taught by Fujimoto in order to facilitate attachment of the motor to a boat.
Alby does not teach that the upper exhaust channel and the lower exhaust channel are switchable between a communication state where the upper exhaust channel and the lower exhaust channel communicate with each other, and a non-communication state where the upper exhaust channel and the lower exhaust channel do not communicate with each other based on a rudder angle of the steering. Lundqvist teaches a motor comprising:
an engine;
a propeller shaft 125;
a propeller attached to the propeller shaft;
a transmission to transmit rotation of the engine to the propeller shaft;
an upper accommodation body 410;
a lower accommodation body 415 that accommodates at least a portion of the propeller shaft; and
a steering to cause the lower accommodation body to rotate about a steering axis with respect to the upper accommodation body;
wherein the upper accommodation body includes an upper exhaust channel 110 including an upper exhaust port that communicates with the engine;
the lower accommodation body includes a lower exhaust channel including a lower exhaust port 115; and
the upper exhaust channel and the lower exhaust channel are switchable between a communication state where the upper exhaust channel and the lower exhaust channel communicate with each other and the exhaust gas is discharged through the lower exhaust port via a communication area 50, 60 between the upper exhaust channel and the lower exhaust channel, and a non-communication state where the upper exhaust channel and the lower exhaust channel do not communicate with each other and the exhaust gas is not discharged through the lower exhaust port based on a rudder angle of the steering (column 4 line 34- column 5 line 7).
PNG
media_image2.png
262
400
media_image2.png
Greyscale
Figure 2- Lundqvist Figure 4
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the motor of Alby with the switchable exhaust channels of Lundqvist in order to reduce or entirely eliminate any noise, vibrations and other undesired effects caused by exhaust gasses hitting the bottom of the boat (column 1, lines 16-26).
Note that Lundqvist does not explicitly depict a total non-communication state, but this would be achieved by continued turning of the lower accommodation body. If applicant disagrees, then it would have been obvious to one having ordinary skill in the art at the time the invention was made to rotate the lower housing until no exhaust is communicated in order to maximize the effect, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
PNG
media_image3.png
241
400
media_image3.png
Greyscale
Figure 3- Lundqvist Figures 5 and 6
Alby does not teach that the upper exhaust port is located above a waterline, above a connection between the upper exhaust channel and the lower exhaust channel, and configured to discharge exhaust gas directly into the air. Kato teaches an outboard motor comprising an upper exhaust port 328 that communicates with the engine 72, is located above a waterline WL, and configured to discharge exhaust gas directly into the air (column 12, lines 55-67). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the motor of Alby with the selectably closable exhaust channels (including the upper exhaust port) of Kato in order to provide more exhaust options, send more exhaust to the upper muffler when necessary (at lower speeds) and enable the use of a smaller catalyst. As modified, the upper exhaust port is above a connection between the upper exhaust channel and the lower exhaust channel, the exhaust gas can be discharged through both the upper exhaust port and the lower exhaust port in the communication state (half throttle, steering straight), and the exhaust gas is discharged through the upper exhaust port but not the lower exhaust port in the non-communication state (high steering angle).
Regarding claims 2 and 11, Alby, Fujimoto, Lundqvist and Kato teach the invention as claimed as detailed above with respect to claims 1 and 10. Lundqvist also teaches that the upper exhaust channel 110 and the lower exhaust channel are operable to be brought into the communication state when the rudder angle is equal to or smaller than a specified value, and to be brought into the non-communication state when the rudder angle is larger than the specified value.
Regarding claims 3 and 12, Alby, Fujimoto, Lundqvist and Kato teach the invention as claimed as detailed above with respect to claims 1 and 10. Lundqvist also teaches that:
one of the upper exhaust channel and the lower exhaust channel includes a first communication port 50;
the other of the upper exhaust channel and the lower exhaust channel includes a second communication port 60 that extends along a circumferential portion around the steering axis;
and the second communication port communicates with the first communication port in the communication state and does not communicate with the first communication port in the non-communication state.
Regarding claims 4 and 13, Alby, Fujimoto, Lundqvist and Kato teach the invention as claimed as detailed above with respect to claims 3 and 12. Lundqvist also teaches that the second communication port 60 is rotatable about the steering axis relative to the first communication port during steering.
PNG
media_image4.png
225
450
media_image4.png
Greyscale
Figure 4- Lundqvist Figures 7a, 7c and 7f
Regarding claims 5 and 14, Alby, Fujimoto, Lundqvist and Kato teach the invention as claimed as detailed above with respect to claims 3 and 12. Lundqvist also teaches that an area of the second communication port 60 is larger than an area of the first communication port 50.
Regarding claims 6 and 15, Alby, Fujimoto, Lundqvist and Kato teach the invention as claimed as detailed above with respect to claims 5 and 14. Lundqvist also teaches that in the communication state, an entirety of the first communication port 50 is included within the second communication port 60 when seen in an up-down direction (see Lundqvist figure 7a).
Regarding claims 7 and 16, Alby, Fujimoto, Lundqvist and Kato teach the invention as claimed as detailed above with respect to claims 1 and 10. Neither Alby, Fujimoto nor Lundqvist teach a switch to restrict a flow of exhaust gas from the upper exhaust channel to the lower exhaust channel when a speed of the engine is equal to or lower than a specified value.
Kato teaches an outboard motor comprising a switch 144 to restrict a flow of exhaust gas from an upper exhaust channel 308, 310 to a lower exhaust channel 314, 316 when a speed of the engine is equal to or lower than a specified value (column 14, lines 44-51, column 16 line 66- column 17 line 15). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the motor of Alby with the selectably closable exhaust channels of Kato in order to send more exhaust to the muffler when necessary (at lower speeds) and enable the use of a smaller catalyst.
Regarding claims 8 and 17, Alby, Fujimoto, Lundqvist and Kato teach the invention as claimed as detailed above with respect to claims 7 and 16. Kato also teaches that the switch 144 includes a switching valve 334, 336.
Regarding claims 9 and 18, Alby, Fujimoto, Lundqvist and Kato teach the invention as claimed as detailed above with respect to claims 1 and 10. Alby, Fujimoto and Lundqvist also teach a boat comprising: a hull; and the outboard motor according to claims 1 and 10 attached to the transom of the hull (Alby column 4, lines 43-47).
Regarding claims 21 and 25, Alby, Fujimoto, Lundqvist and Kato teach the invention as claimed as detailed above with respect to claims 1 and 10. Neither Alby, Fujimoto nor Lundqvist teach that when the speed of the engine is equal to or lower than a specified value, a flow of exhaust gas is discharged from the upper exhaust port but not the lower exhaust port; and when the speed of the engine is higher than the specified value, the flow of exhaust gas is discharged from both the upper exhaust port and the lower exhaust port.
Kato teaches an outboard motor comprising a switch 144 to restrict a flow of exhaust gas from an upper exhaust channel 308, 310 to a lower exhaust channel 314, 316 when a speed of the engine is equal to or lower than a specified value, such that a flow of exhaust gas is discharged from the upper exhaust port but not the lower exhaust port; and when the speed of the engine is higher than the specified value, the flow of exhaust gas is discharged from both the upper exhaust port and the lower exhaust port (column 14, lines 44-51, column 16 line 66- column 17 line 15). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the motor of Alby with the selectably closable exhaust channels of Kato in order to send more exhaust to the muffler when necessary (at lower speeds) and enable the use of a smaller catalyst.
Regarding claims 22 and 26, Alby, Fujimoto, Lundqvist and Kato teach the invention as claimed as detailed above with respect to claims 1 and 10. Neither Alby, Fujimoto nor Lundqvist teach a switching valve in the upper exhaust channel configured to discharge a flow of exhaust gas from the upper exhaust port whether the switching valve is open or closed.
Kato teaches an outboard motor comprising a switching valve 334, 336 to restrict a flow of exhaust gas from an upper exhaust channel 308, 310 to a lower exhaust channel 314, 316 when a speed of the engine is equal to or lower than a specified value (column 14, lines 44-51, column 16 line 66- column 17 line 15), and configured to discharge a flow of exhaust gas from the upper exhaust port whether the switching valve is open or closed (column 14, lines 34-43). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the motor of Alby with the selectably closable exhaust channels of Kato in order to send more exhaust to the muffler when necessary (at lower speeds) and enable the use of a smaller catalyst.
Regarding claims 27 and 28, Alby, Fujimoto, Lundqvist and Kato teach the invention as claimed as detailed above with respect to claims 1 and 10. Neither Alby, Fujimoto nor Lundqvist teach a switching valve in the upper exhaust channel to open and close the upper exhaust channel; wherein the switching valve is configured to close in the non-communicating state so that the upper exhaust channel and the lower exhaust channel do not communicate with each other.
Kato teaches an outboard motor comprising a switching valve 334, 336 in the upper exhaust channel 308, 310 to open and close the upper exhaust channel; wherein the switching valve is configured to close in the non-communicating state (or whenever the throttle opening is low) so that the upper exhaust channel and the lower exhaust channel do not communicate with each other (column 14, lines 44-51, column 16 line 66- column 17 line 15, figure 13). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the motor of Alby with the selectably closable exhaust channels of Kato in order to send more exhaust to the muffler when necessary (at lower speeds) and enable the use of a smaller catalyst.
Response to Arguments
Applicant's arguments filed 4/13/26 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, the applicant argues that Lundqvist does not teach the above-waterline upper exhaust port, and as such cannot discharge exhaust into the air when the upper and lower exhaust channels are in the communication state. However, the above-waterline exhaust port (and exhaust valves) are taught by Kato. As explained above, in the device as taught, the upper exhaust port is above a connection between the upper exhaust channel and the lower exhaust channel, the exhaust gas can be discharged through both the upper exhaust port and the lower exhaust port in the communication state (half throttle, steering straight), and the exhaust gas is discharged through the upper exhaust port but not the lower exhaust port in the non-communication state (high steering angle).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Marc Burgess whose telephone number is (571)272-9385. The examiner can normally be reached M-F 08:30-15:00.
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, Marc Jimenez can be reached at 517 272-4530. 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.
/MARC BURGESS/Primary Patent Examiner, Art Unit 3615
Prosecution Insights