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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “adapter” in claim (synonymous with “means for adapting” or “that nonspecific thing that adapts”, a nonce with no generally accepted meaning in this context and is defined only by the function “adapt.”).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 1, 12 are rejected under 35 U.S.C. 102a1 as being anticipated by Muller (US 20100190392 A1).
Regarding Claim 1, Muller discloses an electromotive sail drive comprising: a drive unit (Element P); an electromotive motor that is configured to drive the drive unit; and a pump (Element 1) that is configured to circulate, via the electromotive motor, a lubricant oil inside the drive unit (Element 3) wherein the electromotive motor has a motor cool oil path configured to enable flow of the lubricant oil. (Element F)
Regarding Claim 12, Muller discloses an ship comprising the electromotive sail drive according to claim 1. (paragraph 001)
Claim 1, 3 are rejected under 35 U.S.C. 102a1 as being anticipated by Li (US 20190249590 A1)
Regarding Claim 1, Li discloses an electromotive sail drive comprising: a drive unit (Element 800); an electromotive motor (Element 101) that is configured to drive the drive unit; and a pump (Element 100) that is configured to circulate, via the electromotive motor, a lubricant oil inside the drive unit (Element 4), wherein the electromotive motor has a motor cool oil path configured to enable flow of the lubricant oil. (See Fig. 3.)
Regarding Claim 3, Li discloses an electromotive sail drive according to claim 1, further comprising: a motor control unit configured to control the electromotive motor, and wherein the pump is configured to circulate the lubricant oil via the motor control unit (paragraph 52, circuit board).
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 3, 5 are rejected under 35 U.S.C. 103 as being unpatentable over Muller (US 20100190392 A1) in view of Sewell (US 20220315174 A1)
Regarding Claim 3, Muller disclose the electromotive sail drive according to claim 1, but does not explicitly disclose further comprising: a motor control unit configured to control the electromotive motor, and wherein the pump is configured to circulate the lubricant oil via the motor control unit.
Sewell discloses an electromotive sail drive further comprising: a motor control unit configured to control the electromotive motor, and wherein the coolant is circulated the lubricant oil via the motor control unit. (paragraph 64) It would have been obvious at the time of filing for a person of ordinary skill in the marine art to use the oil system of Muller to also circulate oil to a motor controller which can be accomplished with a reasonable expectation of success. The motivation to modify Muller is that the motor controller also generates heat that needs dissipating. (Sewell, paragraph 56)
Regarding Claim 5, Muller in view of Sewell discloses electromotive sail drive according to claim 3, wherein the motor control unit includes: an inverter that is configured to supply power to the electromotive motor; and a controller that is configured to control the inverter. (Sewell, paragraph 57)
Response to Arguments
Applicant's arguments filed 19 Dec 2025 have been fully considered but they are not persuasive.
Applicant argues that feature of “a pump that is configured to circulate, via the electromotive motor, a lubricant oil inside the drive unit". Applicant neglected to attempt any claim construction the phrase “is configured to circulate, via the electromotive motor”. Applicant neglected to attempt to explain how the phrase is satisfied by Applicant’s invention. Instead, as evidence Applicant argues “Muller also does not describe that the hydrodynamic clutch 3 circulates the oil inside the drive motor 1” This is true. It is also unclaimed. Applicant also argues Mueller does not disclose “that the drive motor 1 circulates the oil inside the hydrodynamic clutch 3” which is untrue. The clutch that acts as a pump is on the motor’s shaft and driven by the motor’s shaft. The pump circulates the oil via the motor via the shaft. In Mueller oil is in the interior space 4, 4’ which is adjacent to and cools the motor. The space adjacent to the motor is the path where the oil flows. The claim language does not require the cool oil path be inside the motor. The Examiner maintains the rejection.
Allowable Subject Matter
Claims 13-19 are allowed.
Claims 4, 6-11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 ANDREW POLAY whose telephone number is (408)918-9746. The examiner can normally be reached M-F 9-5 Pacific.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joe Morano can be reached at 5712726684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW POLAY/Primary Examiner, Art Unit 3615 6 May 2026
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