DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 102/103
Claims 1-2, 4-6, and 8-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by, and/or under 35 U.S.C. 103 as being unpatentable over, Samuelson (US 1,894,710).1
Regarding the claims, the prior art discloses the following:
Claim 1 (currently amended): An outboard motor (1) comprising: a main body (as shown by fig. 1, the exact component is not numbered, so element “1” is mapped to both the outboard motor and the main body) including a power source (3); a bracket (7) to be attached (fig. 1 shows the claimed configuration) to a stern (4) of a hull of a marine vessel (5) and including a rotating shaft (unlabeled pivot point of 14, nearest 3); a lift (6) to move the main body (1) and the rotating shaft (14) in a vertical direction of the marine vessel; and a propeller shaft (fig. 1) to rotate a propeller (2) at a lower portion of the main body (1); wherein the main body (1) is attached to the bracket (7) and configured to be rotatable in a first direction (e.g., counter-clockwise as shown) or a second direction (e.g., clockwise as shown) in response to an operating instruction during cruising of the marine vessel (e.g., according to written instructions or a vocal command by the captain); in the first direction, the main body is rotatable about the rotating shaft such that an upper portion of the main body moves toward a front of the marine vessel and the lower portion of the main body moves toward a rear of the marine vessel (the motion of 1 about 14 is clear to a POSTIA by fig. 1); in the second direction, the main body is rotatable about the rotating shaft such that the upper portion of the main body moves toward the rear of the marine vessel and the lower portion of the main body moves toward the front of the marine vessel (the motion of 1 about 14 is clear to a POSTIA by fig. 1); when the marine vessel is cruising (conditional limitation), a first distance from the rotating shaft to an upper end of the stern in the vertical direction of the marine vessel is equal to or longer than a second distance from the rotating shaft to the propeller shaft in the vertical direction of the marine vessel (the prior art is capable of the conditional limitation as claimed by at least page 2, col. 1, lines 29-36, insomuch as the motor 1 is adjustably lowered a desired distance along 6 away from the top-surface of stern 4); and with respect to a fore-and-aft direction of the hull, the rotating shaft (14) is more rearward (figs. 1, 3 show the claimed configuration, where 14 is external to stern 4) than a rear end of the stern (4).
Regarding claims 1-2, although the Examiner contends that the prior art inherently meets the claimed limitations as mapped above, in the interest of compact prosecution, the limitation of Claim 1 “when the marine vessel is cruising, a first distance from the rotating shaft to an upper end of the stern in the vertical direction of the marine vessel is equal to or longer than a second distance from the rotating shaft to the propeller shaft in the vertical direction of the marine vessel“ and the limitation of Claim 2 “wherein, when the marine vessel is cruising, the first distance is twice or more as long as the second distance” are further considered obvious over Samuelson by the rationale below. Regarding claims 4-5, although the Examiner contends that the prior art inherently meets the claimed limitations insomuch as the figures of the prior art appear to show the claimed angular range, in the interest of compact prosecution, the respective limitations of Claims 4-5 are further considered obvious over Samuelson by the rationale below.
The respective distances and/or angles as recited in the respective limitations are inherently a function of the dimensionality of the system (e.g., for claims 1-2: the height of the boat at the stern, the angle of the bracket, the length of the motor, and the positioning of the pivot point; for claims 4-5: the length of the groove/slot that the motor pivots along, the length of the motor, the distance of the bracket from the stern, etc.). However, it has been held to be well-within the skill of one of ordinary skill in the art to resize a device according to design specifications. The claimed dimensions do not appear to change the function of the claimed device, and applying the dimensions, as claimed, to the device of the prior art would not change the function in any way. Therefore, since the only difference between the structure of the prior art and that of the claimed device is a recitation of relative dimensions, and since the claimed device having the relative dimensions would not function differently than the device of the prior art, the claimed device is not patentably distinct from the device of the prior art. 2
Claim 6 (original): The outboard motor according to claim 1, wherein a posture control plate that rotates with respect the vertical direction of the marine vessel is not provided at the stern of the hull (fig. 1).
Claim 8 (currently amended): The outboard motor according to claim 1, wherein the lift (6) is operable to change a position of the main body (1) in the vertical direction of the marine vessel when the marine vessel is cruising (page 2, col. 1, lines 29-36).
Claim 10 (currently amended): The outboard motor according to claim 1, wherein, to store the marine vessel (intended use), the lift (6) is configured to raise the main body (1), and the main body is configured to rotate in the first direction (the prior art is capable of performing the claimed functions).
Regarding claims 12-13, the disclosure of the prior art is not complex in comparison to the instant disclosure and is in sufficient proximity to the scope of the claimed limitations that the pertinence of the prior art is considered apparent by the explanations of the prior art already provided above. Further mapping of the art is therefore unnecessary by 37 C.F.R. 1.104(c)(2) (i.e., the rejection of claims is mapped to the art when a reference is complex or shows or describes inventions other than that claimed by the applicant), e.g. the limitations of the respective claims are considered to flow naturally from the art.3
Claim Rejections - 35 USC § 103
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Samuelson (US 1,894,710), in view of Volvo (WO 2021/032277).
Regarding claim 9, Samuelson discloses the outboard motor according to claim 1, wherein the lift (6) is operable to move the main body (1) downward to a lower side of the hull (page 2, col. 1, lines 29-36) when the marine vessel is foilborne cruising (conditional limitation); but does not disclose the marine vessel includes hydrovanes.
However, hydrovanes were old and well-known in the marine/watercraft arts.
Volvo teaches the use of a hydrofoil system that can be operated between stowed and operative positions, which provides the known benefits of hydrofoil systems while solving the problem of increased drag experienced by fixed hydrofoil vessels. Thereafter, it would have been obvious to one of ordinary skill in the art prior to the time of effective filing to use the hydrofoil system of Volvo in combination with the structure of Samuelson, in order to provide the well-known expected advantages of hydrofoil systems without increased drag.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Samuelson (US 1,894,710), in view of Phillips (US 1,789,415).
Samuelson does not disclose the limitations of claim 11.
However, it was old and well-known to use electric motors as power sources. Phillips teaches the use of an electric motor (1). It would have been obvious to one of ordinary skill in the art prior to the time of effective filing to use an electric motor, such as taught by Haschke, instead of the motor of undisclosed power-source of Samuelson, for the expected benefit of environmental sustainability.
Response to Arguments
Applicant's arguments filed 05/15/2026 have been fully considered but they are not persuasive.
The thrust of Applicant’s arguments are that the amended limitations “the main body is attached to the bracket and configured to be rotatable about the rotating shaft … in response to an operating instruction during cruising of the marine vessel” overcome the art of record. This is not persuasive. The scope of the phrasing appears to be in dispute. The prior art meets the scope of the claimed limitations insomuch as the motor is capable of being rotated about the pivot-point of 14, and that the phrasing “operating instruction” includes a written instruction booklet, a vocal command from the captain of a ship, etc.
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 T. S. FIX whose telephone number is (571)272-8535. The examiner can normally be reached M-Th 10a-3p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Minnah Seoh can be reached at 5712707778. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T. SCOTT FIX/Primary Examiner, Art Unit 3618
1 MPEP 2112(III): “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.” In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic.
2 MPEP 2144.04(IV): In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert, denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
3 See In re Jung, 637 F.3d 1356 (Fed. Cir. 2011) which states “There has never been a requirement for an examiner to make an on-the-record claim construction of every term in every rejected claim and to explain every possible difference between the prior art and the claimed invention in order to make out a prima facie rejection. This court declines to create such a burdensome and unnecessary requirement. […] “Section 132 merely ensures that an applicant at least be informed of the broad statutory basis for the rejection of his claims, so that he may determine what the issues are on which he can or should produce evidence.” Chester, 906 F.2d at 1578 (internal citation omitted)
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