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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
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.
Claim 2 (and all claims that depend therefrom) is 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.
Claim 2 line 2 recites “a tubular oil channel member is provided in the heat exchanging part.” However parent claim 1 previously recites “inside the heat exchanging part, an oil channel is formed.” It is unclear if the “oil channel inside the heat exchanging part” is the same component as the “tubular oil channel member in the heat exchanging part.” For the purposes of this action, they will be interpreted as the same component.
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.
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Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wahl US 1,446,775.
Regarding claim 1, Wahl discloses an outboard engine comprising:
a motor contained in a top cover (lines 8-12; the outer casing of the motor is interpreted as the cover);
a vertical shaft h that is rotationally driven by the motor, the vertical shaft being contained in an extension casing a; and
a propeller that is rotationally driven by the vertical shaft, the propeller being provided at a gear casing f, wherein a
heat exchanging part (e, front of f) is provided inside a front portion of the gear casing, and
inside the heat exchanging part, an oil channel is formed that cooling oil for cooling the motor flows through.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dudney US 5,009,622.
Regarding claim 1, Dudney discloses an outboard engine 10 comprising:
a motor contained in a top cover;
a vertical shaft that is rotationally driven by the motor, the vertical shaft being contained in an extension casing 24; and
a propeller (column 2, lines 28-30) that is rotationally driven by the vertical shaft, the propeller being provided at a gear casing 36, wherein a
heat exchanging part 20 is provided inside a front portion of the gear casing, and
inside the heat exchanging part, an oil channel is formed that cooling oil for cooling the motor flows through.
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 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Wahl US 1,446,775 alone, or alternately in view of Ferguson US 4,768,580.
Regarding an alternate interpretation of claim 1, Wahl teaches an outboard engine comprising:
a motor (lines 8-12);
a vertical shaft h that is rotationally driven by the motor, the vertical shaft being contained in an extension casing a; and
a propeller that is rotationally driven by the vertical shaft, the propeller being provided at a gear casing f, wherein a
heat exchanging part (e, front of f) is provided inside a front portion of the gear casing, and
inside the heat exchanging part, an oil channel is formed that cooling oil for cooling the motor flows through.
In this interpretation, Wahl does not explicitly teach a top cover. Ferguson teaches an outboard engine comprising:
a motor 30 contained in a top cover 45;
a vertical shaft 36 that is rotationally driven by the motor, the vertical shaft being contained in an extension casing 46; and
a propeller 28 that is rotationally driven by the vertical shaft, the propeller being provided at a gear casing (lower portion of 46).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the engine of Wahl with the cover of Ferguson in order to ensure that all components are protected or obtain the desired aesthetic appearance.
Regarding claim 5, Wahl alone or in view of Ferguson teaches the invention as claimed as detailed above with respect to claim 1. Wahl does not teach a plurality of inflow-side or outflow-side oil channels, however it would have been obvious to one having ordinary skill in the art at the time the invention was made to add additional channels in order to improve cooling capacity or provide redundancy, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Dudney US 5,009,622 in view of Ferguson US 4,768,580.
Regarding an alternate interpretation of claim 1, Dudney teaches an outboard engine comprising:
a motor contained in a top cover;
an extension casing 24; and
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a propeller (column 2, lines 28-30) that is rotationally driven by the vertical shaft, the propeller being provided at a gear casing 36, wherein a
heat exchanging part 20 is provided inside a front portion of the gear casing, and
inside the heat exchanging part, an oil channel is formed that cooling oil for cooling the motor flows through.
If applicant does not agree that Dudney’s heat exchanger is provided inside a front portion of the gear casing, then it would have been obvious to one having ordinary skill in the art at the time the invention was made to locate the heat exchanger closer to the front of the gear casing in order to obtain the desired local flow, cooling characteristics or appearance, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Dudney does not explicitly teach a vertical shaft that is rotationally driven by the motor, the vertical shaft being contained in an extension casing. Ferguson teaches an outboard engine comprising:
a motor 30 contained in a top cover 45;
a vertical shaft 36 that is rotationally driven by the motor, the vertical shaft being contained in an extension casing 46; and
a propeller 28 that is rotationally driven by the vertical shaft, the propeller being provided at a gear casing (lower portion of 46).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the engine of Dudney with the vertical shaft and gearing of Ferguson in order to ensure that the torque is properly transferred to the propeller.
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Regarding claim 2, Dudney alone or in view of Ferguson teaches the invention as claimed as detailed above with respect to claim 1. Dudney teaches that the heat exchanger can be inside or outside the gear case (column 2, lines 46-52), but otherwise does not teach particulars of the heat exchanger. Ferguson teaches a heat exchanger in which a tubular oil channel member 100 is provided in the heat exchanging part 72, in the oil channel member, an inflow-side oil channel is formed that allows oil fed from the heat source to flow through, and between an inner surface of the heat exchanging part and an outer surface of the oil channel member, an outflow-side oil channel 104 is formed that returns the oil to the heat source. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the heat exchanger of Dudney with the input/output and flow channels as taught by Ferguson in order to ensure that heated oil can be cooled by passing water. Note that while Ferguson teaches a cooler for hydraulic oil, when this teaching is applied to Dudney it will be used to cool oil from the engine.
Regarding claim 3, Dudney and Ferguson teach the invention as claimed as detailed above with respect to claim 2. Ferguson also teaches that a part of the oil channel member 100 is in contact with an inner surface of the heat exchanging part 72 (as it is mounted to the top).
Regarding claim 4, Dudney and Ferguson teach the invention as claimed as detailed above with respect to claim 2. Ferguson also teaches that the heat exchanging part 72 is formed into a shape that meets an outer shape of the oil channel member 100 (as they meet at an interface).
Regarding claim 5, Dudney alone or in view of Ferguson teaches the invention as claimed as detailed above with respect to claim 1. Dudney does not teach a plurality of inflow-side or outflow-side oil channels, however it would have been obvious to one having ordinary skill in the art at the time the invention was made to add additional channels in order to improve cooling capacity or provide redundancy, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lane US 3,452,701 teaches a closed-loop heat exchanger mounted on a ship’s rudder.
Austen US 3,476,070 teaches a closed-loop heat exchanger formed in the shroud of a propeller.
Pilgrim US 5,383,803 and Coller US 10,364,010 teach closed-loop heat exchanger mounted on ships’ outboard engines.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Samuel (Joseph) Morano can be reached at 517 272-6684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARC BURGESS/Primary Patent Examiner, Art Unit 3615