DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
A preliminary amendment was filed by applicant on 07/12/2023.
Claims 3 and 5-9 are amended.
The amended Specification is accepted, except as otherwise noted.
Claims 1-9 are remaining in the application.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the claimed feature limitation: “the posture switching mechanisms are arranged above the waterline of the ship” must be shown (no waterline is shown in the drawing figures and it is suggested that such be shown with an appropriate reference character corresponding to this feature(s) in the specification) or the feature(s) canceled from the claim(s). Appropriate correction is required.
The drawings are objected to under 37 CFR 1.83(a) because they fail to show the above feature(s) (with appropriate reference characters corresponding to the feature(s) in the written description) consistent with the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. No new matter should be entered.
In addition to Replacement Sheets containing the corrected drawing figure(s), applicant is required to submit a marked-up copy of each Replacement Sheet including annotations indicating the changes made to the previous version. The marked-up copy must be clearly labeled as “Annotated Sheets” and must be presented in the amendment or remarks section that explains the change(s) to the drawings. See 37 CFR 1.121(d)(1). Failure to timely submit the proposed drawing and marked-up copy will result in the abandonment of the application.
Specification
The disclosure is objected to because of the following informality:
The Specification does not refer to the drawings regarding the feature indicated in paragraphs 6 and 7 of this Office Action.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
11. The following is a quotation of 35 U.S.C. 112(b):
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.
12. Claims 1-9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor, regards as the invention.
13. The claimed features “the lower side”, “the lengths”, “the shape”, “the posture switching mechanism”, “the lower surface”, “the outer wall” and “the waterline” lack sufficient antecedent basis as recited in the claims (independent claim 1 and subsequent dependent claims).
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 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) 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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f), 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f), 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), 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), 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), 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: “posture switching mechanism(s)” in independent claim 1 and subsequent dependent claims.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f), 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), applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) (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).
Claim element “posture switching mechanism(s)” is considered to invoke 35 U.S.C. 112(f). However, the written description fails to clearly link or associate the disclosed structure, material, or acts to the claimed function such that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function. The Specification does not clearly specify distinct structure associated to the feature(s); therefore, the feature limitations as claimed is not clear with respect to scope, structure or limiting effect in light of the Specification.
In claim 2, the term “long” in claim limitation “long strip” is a relative term which renders the claim indefinite. The term “long” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, the claim limitation “long strip” is rendered indefinite by the relative term “long”.
Claim Rejections - 35 USC § 102
19. 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.
As best understood by the examiner, claims 1-3, 5 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by D1: US 3985106 A (ROSS), cited by applicant.
Regarding claims 1-3, 5 and 9, D1 discloses a ship (sailboat) [10] (see the embodiment of Fig. 5; described in col. 4, lines 10-26) that can sail on water and has a hull part (hull) [12], in which the hull part includes a fuselage (body) extending in fore-and-aft direction of the hull part, navigation members (keels) [86, 88] on the body which have an elongated shape, and receive water flow when the ship sails, and posture (orientation) switching mechanisms for switching the orientation of the keel between a first orientation and a second orientation by rotating the keel around an axis [90, 92] on one end side of the keel [86, 88], the first orientation is an orientation in which the keel extends toward the lower side of the body, and the second orientation is an orientation in which the keel extends along the fore-and-aft direction of the hull part and the length of extension toward the lower side of the body is shorter than in the first orientation.
As best understood by the examiner, claims 1-3 and 5-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by D1: US 3985106 A (ROSS), cited by applicant.
Regarding claims 1-3, 5-7 and 9, D1 discloses a ship (sailboat) [10] that can sail on water and has a hull part (hull) [12], in which the hull part includes a fuselage (body) extending in fore-and-aft direction of the hull part, navigation members which include a keel (centerboard) [70] on the body which has an elongated shape, and receives water flow when the ship sails, and an posture (orientation) switching mechanism for switching the orientation of the keel between a first orientation and a second orientation by rotating the keel around an axis [72] on one end side of the keel [70], the first orientation is an orientation in which the keel extends toward the lower side of the body, the second orientation is an orientation in which the keel extends along the fore-and-aft direction of the hull part and the length of extension toward the lower side of the body is shorter than in the first orientation, the body has a groove (center board trunk) [74] in the lower surface thereof, the keel [70] is accommodated in the groove when in the second orientation, and the orientation switching mechanism is provided further inward than the outer wall of the body. With respect to claim 8, it can be seen from Fig. 2 that the orientation switching mechanism(s) is/are provided above the waterline of the ship, with the ship in the position on its side, as shown in the figure.
Claim Rejections - 35 USC § 103
22. 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.
As best understood by the examiner, claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over D1: US 3985106 A (ROSS), cited by applicant. Regarding claim 8, D1 discloses all claimed features as indicated previously, except wherein the posture switching mechanisms are arranged above the waterline of the ship. Arrangement of the switching mechanisms would have been considered a matter of preference to facilitate operation, access, balance, stability and other factors, as would have been recognized by one of ordinary skill in the art. Therefore, it would have been considered obvious 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 to provide such arrangement to facilitate at least operation, access, balance, and/or stability of the device as desired with a reasonable expectation of success, as would have been recognized by one of ordinary skill in the art. The rejection combines known features to achieve expected results; no unknown features or unexpected results are achieved for the claimed subject matter.
Allowable Subject Matter
As best understood by the examiner, claim 4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
25. The prior art cited and not relied upon is considered pertinent to applicant’s disclosure.
The prior art references cited by the examiner disclose retractable centerboards and/or keels.
26. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL V VENNE whose telephone number is (571) 272-7947. The examiner can normally be reached between M-F, 7am-3:30pm Flex. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Samuel J. Morano can be reached on (571) 272-6684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
27. If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (USA OR CANADA) or 571-272-1000.
/Daniel V Venne/
Senior Examiner, Art Unit 3615
10/22/2025