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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 16 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 16 recites that “the idle relief outlet is disposed between the watercraft body and the watercraft portion of the transom bracket along a longitudinal direction of the watercraft.”
[AltContent: arrow][AltContent: textbox (Longitudinal Axis)][AltContent: textbox (Idle Relief Outlet)][AltContent: arrow][AltContent: textbox (Transom Bracket)][AltContent: arrow]
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[AltContent: textbox (Watercraft Body)][AltContent: arrow]
Figure 1- Current Application Figure 1
As seen above, the idle relief outlet is located on the opposite side of the transom bracket from the watercraft body, and is therefore not disposed between the watercraft body and the watercraft portion of the transom bracket. It is unclear what orientation is being recited by claim 16.
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 1-3, 5, 6, 10, 13 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Anderson US 10,995,648.
[AltContent: textbox (Figure 2- Anderson Figure 5)]
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Regarding claim 1, Anderson discloses an outboard engine assembly for a watercraft, comprising:
an engine unit 29 including:
an engine unit housing 34;
an internal combustion engine disposed in the engine unit housing, the engine defining at least one combustion chamber;
a gearcase 36 connected to the engine unit housing; and
an exhaust system including:
an exhaust passage 50 fluidly communicating with the at least one combustion chamber,
the exhaust passage having an exhaust outlet 44, the exhaust passage extending through the gearcase, the exhaust passage being configured for supplying exhaust gases from the at least one combustion chamber to an exterior of the gearcase via the exhaust outlet; and
an idle relief passage 68 fluidly communicating with the exhaust passage,
the idle relief passage having an idle relief outlet 48, the idle relief passage extending through the engine unit housing for supplying exhaust gases from the at least one combustion chamber to an exterior of the engine unit housing via the idle relief outlet,
the idle relief outlet being disposed vertically higher than the exhaust outlet and vertically lower than a waterline when the outboard engine assembly is mounted to a watercraft and the watercraft is at rest (column 6, lines 10-23); and
a propulsion device 42 operatively connected to the engine, and
wherein the idle relief passage is configured to provide an alternate exhaust gas flow path during idle or low speed operation when water present in a lower portion of the exhaust system impedes flow of exhaust gases through the exhaust outlet, thereby relieving exhaust back pressure and maintaining stable engine operation.
Please note that while Anderson teaches an idle relief exhaust 47, the “tertiary exhaust” 49 meets the claims as written.
Regarding claim 2, Anderson discloses the invention as claimed as detailed above with respect to claim 1. Anderson also discloses that the idle relief outlet 48 is disposed vertically higher than the gearcase 36.
Regarding claim 3, Anderson discloses the invention as claimed as detailed above with respect to claim 1. Anderson also discloses an anti-ventilation plate 29 connected to the gearcase; and wherein the idle relief outlet 48 is vertically higher than the anti-ventilation plate.
Regarding claim 5, Anderson discloses the invention as claimed as detailed above with respect to claim 1. Anderson also discloses that the engine unit further includes:
a driveshaft 32 operatively connected to and driven by the internal combustion engine 29; and
the propulsion device includes:
a propeller shaft 40 disposed at least in part in the gearcase, the propeller shaft being operatively connected to and driven by the driveshaft; and
a propeller 43 operatively connected to and driven by the propeller shaft.
Regarding claim 6, Anderson discloses the invention as claimed as detailed above with respect to claim 1. Anderson also discloses that the internal combustion engine further comprises a crankshaft operatively connected to the driveshaft 32 for driving the driveshaft, the crankshaft defining a crankshaft axis; and the idle relief outlet 48 is disposed between the crankshaft axis and an axis of the propeller shaft. Note that the ICE must have a crankshaft, and as shown, the outlet 48 is between the propeller shaft and the ICE.
Regarding claim 10, Anderson discloses the invention as claimed as detailed above with respect to claim 1. Anderson also discloses that:
the idle relief passage 68 includes an inlet;
the exhaust passage is a high-rise exhaust passage having an apex (top of the tube 50); and
the inlet of the idle relief passage is positioned downstream from the apex of the high-rise exhaust passage.
Regarding claim 13, Anderson discloses a watercraft comprising:
a watercraft body (not shown, but disclosed as being attached to the engine); and
an outboard engine assembly 28 pivotably connected to the watercraft body, the outboard engine comprising:
an engine unit 29 including:
an engine unit housing 34;
an internal combustion engine disposed in the engine unit housing, the engine defining at least one combustion chamber;
a gearcase 36 connected to the engine unit housing; and
an exhaust system including:
an exhaust passage 50 fluidly communicating with at least one combustion chamber,
the exhaust passage having an exhaust outlet 44, the exhaust passage extending through the gearcase, the exhaust passage being configured for supplying exhaust gases from the at least one combustion chamber to an exterior of the gearcase via the exhaust outlet; and
an idle relief passage fluidly communicating with the exhaust passage,
the idle relief passage 68 having an idle relief outlet 48, the idle relief passage extending through the engine unit housing for supplying exhaust gases from the at least one combustion chamber to an exterior of the engine unit housing via the idle relief outlet,
the idle relief outlet being disposed vertically higher than the exhaust outlet and vertically lower than a waterline when the watercraft is at rest (column 6, lines 10-23); and
a propulsion device 42 operably connected to the engine; and
wherein the idle relief passage is configured to provide an alternate exhaust gas flow path during idle or low speed operation when water present in a lower portion of the exhaust system impedes flow of exhaust gases through the exhaust outlet, thereby relieving exhaust back pressure and maintaining stable engine operation.
Please note that while Anderson teaches an idle relief exhaust 47, the “tertiary exhaust” 49 meets the claims as written.
Regarding claim 20, Anderson discloses the invention as claimed as detailed above with respect to claim 13. Anderson also discloses that the outboard engine assembly further comprises an anti-ventilation plate 29 connected to the gearcase; and the idle relief outlet 48 is vertically higher than the anti-ventilation plate.
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 1-7, 9-13, 16-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Jaszewski US 9,376,195 in view of Konakawa US 7,556,548.
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Figure 3- Jaszewski Figure 1
Regarding claims 1 and 13, Jaszewski discloses a watercraft comprising:
a watercraft body 9;
an outboard engine assembly pivotably connected to the watercraft body, the outboard engine comprising:
an engine unit 12 including:
an engine unit housing 16 (and upper housing);
an internal combustion engine disposed in the engine unit housing, the engine defining at least one combustion chamber;
a gearcase 24 connected to the engine unit housing; and
an exhaust system including:
an exhaust passage 18 fluidly communicating with the at least one combustion chamber,
the exhaust passage having an exhaust outlet (in the propeller hub, column 3, lines 15-28), the exhaust passage extending through the gearcase, the exhaust passage being configured for supplying exhaust gases from the at least one combustion chamber to an exterior of the gearcase via the exhaust outlet; and
an idle relief passage 36 fluidly communicating with the exhaust passage,
the idle relief passage having an idle relief outlet 34, the idle relief passage extending through the engine unit housing for supplying exhaust gases from the at least one combustion chamber to an exterior of the engine unit housing via the idle relief outlet,
the idle relief outlet being disposed vertically higher than the exhaust outlet; and
a propulsion device 26 operatively connected to the engine.
Jaszewski does not teach that the idle relief outlet is vertically lower than a waterline when the outboard engine assembly is mounted to a watercraft and the watercraft is at rest. Konakawa teaches a watercraft comprising:
a watercraft body 3;
an outboard engine assembly pivotably connected to the watercraft body, the outboard engine comprising:
an engine unit 4 including:
an engine unit housing 13;
an internal combustion engine 11 disposed in the engine unit housing, the engine defining at least one combustion chamber;
a gearcase connected to the engine unit housing; and
an exhaust system including:
an exhaust passage 48 fluidly communicating with the at least one combustion chamber,
the exhaust passage having an exhaust outlet (in the propeller hub, 48a/b), the exhaust passage extending through the gearcase, the exhaust passage being configured for supplying exhaust gases from the at least one combustion chamber to an exterior of the gearcase via the exhaust outlet; and
an idle relief passage 54 fluidly communicating with the exhaust passage,
the idle relief passage having an idle relief outlet 48c/d, the idle relief passage extending through the gearcase for supplying exhaust gases from the at least one combustion chamber to an exterior of the engine unit housing via the idle relief outlet,
the idle relief outlet being disposed vertically higher than the exhaust outlet and vertically lower than a waterline 2a when the outboard engine assembly is mounted to a watercraft 1 and the watercraft is at rest; and
a propulsion device 10 operatively connected to the engine; and
wherein the idle relief passage is configured to provide an alternate exhaust gas flow path during idle or low speed operation when water present in a lower portion of the exhaust system impedes flow of exhaust gases through the exhaust outlet, thereby relieving exhaust back pressure and maintaining stable engine operation.
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Figure 4- Konakawa Figure 2
It would have obvious to one of ordinary skill in the art at the time the invention was filed to modify the idle relief outlet of Jaszewski by placing it under the waterline but above the hub exhaust as taught by Konakawa in order to reduce the exhaust noise (column 11, lines 40-46) while reducing the amount of back pressure that must be overcome compared to the hub exhaust. As modified, the idle relief passage is configured to provide an alternate exhaust gas flow path during idle or low speed operation when water present in a lower portion of the exhaust system impedes flow of exhaust gases through the exhaust outlet, thereby relieving exhaust back pressure and maintaining stable engine operation.
Regarding claim 2, Jaszewski and Konakawa teach the invention as claimed as detailed above with respect to claim 1. Konakawa also teaches that the idle relief outlet 48c/d is disposed vertically higher than the gearcase.
Regarding claim 3, Jaszewski and Konakawa teach the invention as claimed as detailed above with respect to claim 1. Jaszewski also teaches a ventilation plate. Konakawa also teaches an anti-ventilation plate 52 connected to the gearcase; and wherein the idle relief outlet 48c/d is vertically higher than the anti-ventilation plate.
Regarding claim 4, Jaszewski and Konakawa teach the invention as claimed as detailed above with respect to claim 1. Neither Jaszewski nor Konakawa teach that the idle relief outlet is disposed on a front side of the engine unit housing, however it would have been obvious to one having ordinary skill in the art at the time the invention was made to locate the outlet on a front side of the engine unit housing in order to make space for other components or place the exhaust at a desired position relative to the boat, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Regarding claim 5, Jaszewski and Konakawa teach the invention as claimed as detailed above with respect to claim 1. Jaszewski has a propulsion device, but does not go into detail. Konakawa teaches that:
the engine unit further includes:
a driveshaft 12 operatively connected to and driven by the internal combustion engine; and
the propulsion device includes:
a propeller shaft disposed at least in part in the gearcase, the propeller shaft being operatively connected to and driven by the driveshaft; and
a propeller 10 operatively connected to and driven by the propeller shaft.
It would have obvious to one of ordinary skill in the art at the time the invention was filed to modify the motor of Jaszewski with the propulsion components as taught by Konakawa in order to enable the engine to drive the vessel.
Regarding claim 6, Jaszewski and Konakawa teach the invention as claimed as detailed above with respect to claim 5. Jaszewski and Konakawa both teach that the internal combustion engine further comprises a crankshaft operatively connected to the driveshaft for driving the driveshaft (as that is how ICE function), the crankshaft defining a crankshaft axis; and as modified the idle relief outlet 48c/d is disposed between the crankshaft axis and an axis of the propeller shaft.
Regarding claim 7, Jaszewski and Konakawa teach the invention as claimed as detailed above with respect to claim 1. Jaszewski has a motor mount, but does not go into detail. Konakawa teaches a lower motor mount (the base of bracket 6); but does not teach that the idle relief outlet is aligned with the lower motor mount. It would have been obvious to one having ordinary skill in the art at the time the invention was made to locate the lower motor mount closer to the bottom of the boat in order to gain the desired center of gravity or clearance (such that it aligns with the outlet), since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Regarding claim 9, Jaszewski and Konakawa teach the invention as claimed as detailed above with respect to claim 1. Konakawa does not specifically teach that the idle relief outlet is disposed between 6 inches to 8 inches below the waterline, however it would have been obvious to one having ordinary skill in the art at the time the invention was made to locate the outlet 6 inches to 8 inches below the waterline in order to dampen the sound while ensuring that back pressure is not too high, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 10, Jaszewski and Konakawa teach the invention as claimed as detailed above with respect to claim 1. Jaszewski also teaches that:
the idle relief passage includes an inlet 36;
the exhaust passage is a high-rise exhaust passage having an apex 20; and
the inlet of the idle relief passage is positioned downstream from the apex of the high-rise exhaust passage.
Regarding claim 11, Jaszewski and Konakawa teach the invention as claimed as detailed above with respect to claim 1. Jaszewski also teaches that the idle relief passage 36 further comprises a tube 32 disposed outside the engine housing; and the tube defines the idle relief outlet 34 and (as modified) is sized such that the idle relief outlet is below the waterline.
Regarding claim 12, Jaszewski and Konakawa teach the invention as claimed as detailed above with respect to claim 1. Jaszewski has a propulsion device, but does not go into detail. Konakawa teaches:
a transom bracket 6;
wherein the propulsion device further comprises a driveshaft 12 operatively connected to and driven by the internal combustion engine 11; and
the idle relief outlet 48c/d is disposed below the transom bracket when an axis of the driveshaft is vertical.
It would have obvious to one of ordinary skill in the art at the time the invention was filed to modify the motor of Jaszewski with the propulsion components and transom bracket as taught by Konakawa in order to enable the engine to drive the vessel.
Regarding claim 16 as best understood, Jaszewski and Konakawa teach the invention as claimed as detailed above with respect to claim 13. Jaszewski teaches that the outboard engine assembly further comprises: a transom bracket 69 having a watercraft portion connected to the watercraft body; but neither Jaszewski nor Konakawa the idle relief outlet is disposed between the watercraft body and the watercraft portion of the transom bracket along a longitudinal direction of the watercraft. It would have been obvious to one having ordinary skill in the art at the time the invention was made to locate the outlet longitudinally between the watercraft portion of the transom bracket and the watercraft body in order to make space for other components or place the exhaust at a desired position relative to the boat, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Regarding claim 17, Jaszewski and Konakawa teach the invention as claimed as detailed above with respect to claim 13. Jaszewski also teaches that the idle relief passage 36 further comprises a tube 32 disposed outside the engine housing; and the tube defines the idle relief outlet 34 and (as modified) is sized such that the idle relief outlet is below the waterline.
Regarding claim 18, Jaszewski and Konakawa teach the invention as claimed as detailed above with respect to claim 13. Jaszewski has a propulsion device, but does not go into detail. Konakawa teaches that:
the internal combustion engine includes a crankshaft;
the engine unit includes a driveshaft 12 operatively connected to and driven by the crankshaft;
the propulsion device includes:
a propeller shaft disposed at least in part in the gearcase, the propeller shaft being operatively connected to and driven by the driveshaft; and
a propeller 10 operatively connected to and driven by the propeller shaft; and
the idle relief outlet 48c/d is disposed between an axis of the crankshaft and an axis of the propeller shaft.
It would have obvious to one of ordinary skill in the art at the time the invention was filed to modify the motor of Jaszewski with the propulsion components as taught by Konakawa in order to enable the engine to drive the vessel.
Regarding claim 20, Jaszewski and Konakawa teach the invention as claimed as detailed above with respect to claim 13. Jaszewski also teaches a ventilation plate. Konakawa also teaches an anti-ventilation plate 52 connected to the gearcase; and wherein the idle relief outlet 48c/d is vertically higher than the anti-ventilation plate.
Claims 8 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Jaszewski US 9,376,195 in view of Konakawa US 7,556,548 and Strang US 3,911,853.
Regarding claims 8 and 19, Jaszewski and Konakawa teach the invention as claimed as detailed above with respect to claims 1 and 13. Jaszewski and Konakawa teach that the internal combustion engine comprises an engine block; but neither Jaszewski nor Konakawa teach that the idle relief outlet is disposed between an upper side and a lower side of the engine block. Strang teaches an outboard motor with an internal combustion engine 61 comprising an engine block 67; wherein the engine block sits below water level. It would have obvious to one of ordinary skill in the art at the time the invention was filed to modify the motor of Jaszewski and Konakawa with an engine block that sits below water level as taught by Strang in order to obtain a low profile and center of gravity (column 2, lines 7-17).
As modified, the idle relief outlet is disposed between an upper side and a lower side of the engine block. If applicant disagrees, then would have been obvious to one having ordinary skill in the art at the time the invention was made to adjust the relative positions of the engine block and/or the outlet in order to obtain the desired center of gravity or exhaust dispersion, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Jaszewski US 9,376,195 in view of Konakawa US 7,556,548 and Broughton US 11,492,088.
Regarding claim 14, Jaszewski and Konakawa teach the invention as claimed as detailed above with respect to claim 13. Jaszewski does not teach that the watercraft body comprises a rear platform; or that the outboard engine assembly is connected below the rear platform. Broughton teaches a watercraft body which comprises a rear platform 30; and an outboard engine assembly 100 is connected below the rear platform. It would have obvious to one of ordinary skill in the art at the time the invention was filed to modify the watercraft of Jaszewski with platform above the engine as taught by Broughton in order to gain more usable space on the boat deck.
Regarding claim 15, Jaszewski, Konakawa and Strang teach the invention as claimed as detailed above with respect to claim 14. As taught, the idle relief outlet is disposed below the rear platform.
Response to Arguments
Applicant's arguments filed 3/9/2026 have been fully considered but they are not persuasive.
In response to applicant’s argument that Anderson’s secondary outlet 46 is above the waterline during operation (page 9), please see above. Anderson’s “tertiary exhaust” 49 is mapped to the Idle relief, and meets the claims as written.
In response to applicant's argument that “Anderson’s tertiary outlet 48 functions independently of the idle relief operation” (page 10) and later that “neither Jaszewski nor Konakawa recognize the problem addressed by the present technology” (page 12), the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Anderson’s tertiary outlet 48 meets the recited structural limitations of the idle relief outlet, and would provide an underwater exhaust outlet that can function when the main exhaust outlet is blocked by back pressure.
Similarly, the applicant argues that “Konakawa does not disclose or suggest an idle relief passage configured to provide an alternate exhaust gas flow path during idle or low speed operation when water impedes flow of exhaust gas through the main exhaust outlet” (page 11). As with Anderson, the examiner disagrees. Konakawa’s submerged outlet meets the recited structural limitations of the idle relief outlet, and would provide an underwater exhaust outlet that can function when the main exhaust outlet is blocked by back pressure.
Where applicant argues that “Anderson's tertiary outlet 48 does not extend through the engine unit housing” (page 10), the examiner has two responses.
First, it is not claimed that the outlet extends through the engine unit housing- only that the passage does, which is met by Anderson.
Second, without further limitation the division of engine unit housing and driveshaft housing is arbitrary.
In response to applicant's argument that “Achieving such a configuration would require substantial structural modification of the exhaust systems and is not suggested by the teachings of Jaszewski and Konakawa” (page 12), the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, where Jaszewski teaches the general engine configuration (including primary and secondary exhaust ports), Konakawa teaches benefits to submerging a secondary exhaust port. One of ordinary skill in the art would understand how the relief exhaust of Jaszewski could be extended in order to enable such advantages.
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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