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 § 103
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.
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 1-9 and 11 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Fitzgerald US 1,822,573 or, in the alternative, under 35 U.S.C. 103 as obvious over Fitzgerald US 1,822,573 in view of Carlsson US 2023/0036549.
Regarding claim 1, Fitzgerald discloses an oil guide structure for an outboard motor (base of housing 33), which is used for the outboard motor capable of switching a position between a first position state and a second position state and guides oil for lubrication to a lubricated portion 60,
wherein the first position state is a position state when a marine vessel on which the outboard motor is mounted is sailing,
the second position state is a position state in which a rear side of the outboard motor mounted on a rear of the marine vessel is lifted further upward than the first position state (motor is “hinged or otherwise pivotally secured” at 3- page 1, lines 29-33),
in the first position state, a screw propeller 67 that is provided on the outboard motor and propels the marine vessel is submerged in water,
in the second position state, an axis of the screw propeller is tilted,
the oil guide structure for the outboard motor comprises:
an oil accumulation part that accumulates the oil; and:
a discharge hole 54 that is provided to fluidly communicate with the oil accumulation part and is arranged at a higher position than the lubricated portion in the first position state,
the discharge hole is arranged such that the oil is dropped to the lubricated portion in the first position state; and
the oil accumulation part (front of base 33) is arranged such that the oil accumulated in the oil accumulation part in the second position state flows out from the discharge hole in the first position state.
[AltContent: connector][AltContent: textbox (Oil Accumulation Part)][AltContent: oval][AltContent: connector][AltContent: oval][AltContent: textbox (Oil Guide Member)]
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Figure 1- Fitzgerald Figure 1 in First Position State
Please note that the outboard engine is not positively recited. If applicant disagrees and/or does not consider Fitzgerald to be an outboard motor, then Carlsson teaches a stern drive setup in which electric drive motors 205-206 are located in the stern drive housing 201, forming an electric outboard motor. It would have been obvious to one or ordinary skill in the art at the time the invention was filed to modify the stern drive of Fitzgerald with motors in the outboard housing as taught by Carlsson in order to eliminate the need for a hole and seal on the transom and utilize more efficient, smaller electric motors while maintain a standard engine mounting [0018].
Regarding claim 2, Fitzgerald alone or alternatively in view of Carlsson teaches the invention as claimed as detailed above with respect to claim 1. Fitzgerald also teaches that the oil accumulation part comprises:
a bottom wall portion that is arranged at a further forward side than the discharge hole;
a front wall portion that stands upward from a front end section of the bottom wall portion; and
[AltContent: textbox (Inclination Passage)][AltContent: textbox (Regulation Wall)]a pair of side wall portions that close right and left sides of the front wall portion and the bottom wall portion.
[AltContent: arrow][AltContent: textbox (Oil Preparation Chamber)][AltContent: arrow][AltContent: textbox (Bottom Wall Portion)][AltContent: textbox (Front Wall Portion)][AltContent: arrow][AltContent: arrow]
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Figure 2- Fitzgerald Figure 1 (excerpt)
[AltContent: arrow][AltContent: textbox (Oil Preparation Chamber)][AltContent: arrow][AltContent: textbox (Regulation Wall)][AltContent: textbox (Bottom Wall Portion)][AltContent: arrow][AltContent: textbox (Drainage Hole)][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Side Wall Portions)][AltContent: arrow][AltContent: textbox (Front Wall Portion)]
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Figure 3- Fitzgerald Figure 3 (excerpt)
Regarding claim 3, Fitzgerald alone or alternatively in view of Carlsson teaches the invention as claimed as detailed above with respect to claim 2. Fitzgerald also teaches that a regulation wall that regulates a flow of the oil that flows rearward beyond the discharge hole is provided on a rear section of the bottom wall portion. Please note that either the front of shaft housing 21, the sloped portion of the bottom wall, or even the aftmost pointed portion of housing 33 can be considered the regulation wall, as they will regulate the flow of oil to some degree.
Regarding claim 4, Fitzgerald alone or alternatively in view of Carlsson teaches the invention as claimed as detailed above with respect to claim 3. Fitzgerald also teaches that the teach that at least part of the regulation wall (interpreted as the aftmost pointed portion of housing 33) is formed in a V shape in plan view that is inclined rearward from both right and left sides toward a rear portion of the discharge hole.
Alternatively, Fitzgerald does not teach that at least part of the regulation wall (interpreted as the front of shaft housing 21, the sloped portion of the bottom wall) is formed in a V shape in plan view that is inclined rearward from both right and left sides toward a rear portion of the discharge hole. It would have been an obvious matter of design choice to make the different portions of the regulation wall/drive shaft housing V-shaped or of whatever form or shape was desired or expedient in order to address space concerns, simplify manufacturing or influence oil flow. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Regarding claim 5, Fitzgerald alone or alternatively in view of Carlsson teaches the invention as claimed as detailed above with respect to claim 1. Fitzgerald also teaches an oil preparation chamber that is arranged such that the oil is stored in the oil preparation chamber in the first position state and is arranged such that the oil that is stored in the oil preparation chamber flows out to the oil accumulation part in the second position state (see annotated figures above).
Regarding claim 6, Fitzgerald alone or alternatively in view of Carlsson teaches the invention as claimed as detailed above with respect to claim 5. Fitzgerald also teaches an inclination passage in which a portion close to the oil accumulation part is at a higher position than a portion close to the oil preparation chamber in the first position state and that allows the oil to flow out from the oil preparation chamber to the oil accumulation part in the second position state is arranged between the oil preparation chamber and the oil accumulation part (see annotated figures above).
Regarding claim 7, Fitzgerald alone or alternatively in view of Carlsson teaches the invention as claimed as detailed above with respect to claim 6. Fitzgerald does not teach that the oil is used for cooling an electric motor for driving the screw propeller, and at least part of the oil preparation chamber is arranged below the electric motor at a drop position of the oil that has cooled the electric motor. Carlsson teaches a stern drive setup in which electric drive motors 205-206 are located in the stern drive housing 201, forming an electric outboard motor, and cooling oil is circulated between the lower gearbox and the electric motors. It would have been obvious to one or ordinary skill in the art at the time the invention was filed to modify the stern drive of Fitzgerald with motors in the outboard housing as taught by Carlsson in order to eliminate the need for a hole and seal on the transom and utilize more efficient, smaller electric motors while maintain a standard engine mounting [0018]. As modified, at least part of the oil preparation chamber is arranged below an electric motor for driving a screw 61 at a drop position of the oil that has cooled the electric motor.
Regarding claim 8, Fitzgerald in view of Carlsson teaches the invention as claimed as detailed above with respect to claim 7. Fitzgerald also teaches:
a support portion of a bearing that supports a rotation shaft of the electric motor (lower bearing supported in the bottom of 21),
wherein the oil preparation chamber is formed of a groove having a U shape in plan view that is arranged outside the support portion of the bearing and is arranged such that each of a pair of end portions of the groove having the U shape faces forward (note that the base of 33 can be considered to be a U shape- the back and sides forming the U), and
the oil accumulation part is arranged between a pair of end regions of the groove having the U shape.
Regarding claim 9, Fitzgerald teaches a drive system capable of switching a position between a first position state and a second position state,
wherein the first position state is a position state when a marine vessel on which the outboard motor is mounted is sailing,
the second position state is a position state in which a rear side of the outboard motor mounted on a rear of the marine vessel is lifted further upward than the first position state (motor is “hinged or otherwise pivotally secured” at 3- page 1, lines 29-33),
in the first position state, a screw propeller 67 that is provided on the outboard motor and propels the marine vessel is submerged in water,
in the second position state, an axis of the screw propeller is tilted,
the drive system comprises:
an apparatus 60 that requires lubrication at a time of operation; and
an oil guide structure that guides oil for lubrication to a lubricated portion of the apparatus;
the oil guide structure comprises:
an oil accumulation part that accumulates the oil; and:
a discharge hole 54 that is provided to fluidly communicate with the oil accumulation part and is arranged at a higher position than the lubricated portion in the first position state,
the discharge hole is arranged such that the oil is dropped to the lubricated portion in the first position state; and
the oil accumulation part (front of base 33) is arranged such that the oil accumulated in the oil accumulation part in the second position state flows out from the discharge hole in the first position state.
Regarding claim 11, Fitzgerald alone or alternatively in view of Carlsson teaches the invention as claimed as detailed above with respect to claim 1. Fitzgerald also teaches that the oil accumulation part is arranged at a lower position than the discharge hole 54 in the second position state.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Fitzgerald US 1,822,573 in view of Carlsson US 2023/0036549 and Burger US 9,758,229.
Regarding claim 10, Fitzgerald in view of Carlsson teaches the invention as claimed as detailed above with respect to claim 9. Fitzgerald also teaches:
a drive source for driving a screw 67; and
a pump device 61 that operates by receiving power of the drive source and supplies oil to an upper portion of the oil guide member.
Fitzgerald does not teach that the apparatus that requires lubrication at the time of operation includes an electric motor for steering driving, and a power transmission device that transmits power of the electric motor to a steering portion, and the lubricated portion is an engagement portion by a gear between the power transmission device and the electric motor.
Burger teaches an outboard motor which comprises a steerable lower housing and an electric motor for steering driving, and a power transmission device 28 that transmits power of the electric motor to a steering portion 32’’, wherein a lubricated portion is an engagement portion between a first gear 28 driven by the electric motor and a second gear of the power transmission device (column 5, lines 23-30). It would have been obvious to one or ordinary skill in the art at the time the invention was filed to modify the stern drive of Fitzgerald with the steerable lower housing as taught by Burger in order to simplify the mounting of the engine or reduce complexity of the watercraft. Note that as modified, the steering gear of Burger would be lubricated by the system of Fitzgerald. Also as modified, the steering would be performed by an electric motor. If applicant disagrees, then it would have been obvious to one or ordinary skill in the art at the time the invention was filed to modify the steering motor of Fitzgerald and Burger with an electric motor as taught by Carlsson in order to simplify maintenance or reduce cost of the watercraft.
Response to Arguments
Applicant's arguments filed 2/13/26 have been fully considered but they are not persuasive. In this case, the applicant argues that Fitzgerald does not teach three particular recited limitations. They are:
(i) The oil accumulation part. This is identified as the lower front region of casing 33, which has been highlighted by a dashed circle in Fitzgerald figure 1 above and below.
(ii) The discharge hole is arranged at a higher position than the lubricated portion in the first position state. It can also be seen in Fitzgerald figure 1 (which shows the first position state) that the discharge hole 54 is arranged at a higher position than the lubricated portion 60.
(iii) The oil is accumulated in the second position state and the flows out in the first position state. As can be seen in Fitzgerald figure 1, if the drive system were to be pivoted upward about the hinged bracket 3, oil would accumulate in the lower front of casing 33 (which has been highlighted by a dashed circle in Fitzgerald figure 1 above and below) because that region would be below the discharge hole 54. When the drive is returned to the first position state, the height difference would be lessened, and oil would flow out of the discharge hole.
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Figure 4- Fitzgerald Figure 1 in Second Position State
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 Marc Burgess whose telephone number is (571)272-9385. The examiner can normally be reached M-F 08:30-15:00.
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/MARC BURGESS/Primary Patent Examiner, Art Unit 3615
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