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 .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
the filter is located and configured to be removably attached forwardly from a front end of the inlet channel (claims 1 and 9)
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.
Claims 1-11 are 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.
In claims 1 and 9 (line 11, respectively), the limitation “the filter is located and configured to be removably attached forwardly from a front end of the inlet channel” renders the claim indefinite for being vague and confusing. With the phrasing currently used in the claim, it is not sufficiently clear whether this limitation means that the filter is located
In claims 1 (line 11), the limitation “the filter is located and configured to be removably attached forwardly from a front end of the inlet channel” (emphasis added) renders the claim indefinite for being unclear. It is noted that on line 7, the claim previously recites “an inlet channel of the cooling water flow path from the intake port” (emphasis provided). In view of this limitation, it is unclear whether “the front end of the inlet channel” is different from the “inlet port”. Applicant is requested to provide a clarification and/or correction.
In claim 9 (line 12), the limitation “the inlet channel” (emphasis added) lacks proper antecedent basis, thereby rendering the claim indefinite.
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 1-2, 4-5 and 9, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over McChesney et al. (US 8,333,629 B2) in view of Sugiyama et al. (US 10,106,236 B2), both previously cited in PTO-892.
Regarding claim 1 and claim 9, McChesney et al. shows an outboard motor (Fig 3), comprising: a cooling water flow path including an intake port [104] to take in cooling water from outside the outboard motor and through which cooling water flows; and a water pump [102] including an impeller (col. 8, lines 4-5). It is noted that claims 1 and 9 do not recite a propeller shaft. Therefore, in the present case, a shaft [56] that drives a propeller also drives the water pump (see col. 5, lines 10-11), wherein such shaft is broadly considered to be the pump shaft. An inlet channel of the cooling water flow path from the intake port to the water pump extends along a rotation axis of the pump shaft in front of the water pump. (Note: Claim 1 requires the inlet channel to extend along a rotation axis of the pump shaft, wherein the limitation “extend along” does not necessarily mean being coaxial, and is broadly interpreted to mean “in the same direction; beside; or in parallel”).
McChesney et al., however, fails to show a filter located inside the inlet channel to prevent entry of foreign objects.
Sugiyama et al. shows an outboard motor (Fig 2), comprising: a cooling water flow path including an intake port [54] to take in cooling water from outside the outboard motor, an inlet channel extending from the intake port to a water pump, wherein a filter [54] is provided inside the inlet channel to prevent entry of foreign objects. The filter includes a holder [542] including a through hole and fixed inside the inlet channel, and a filter body [541] inside the through hole to allow the passage of the cooling water.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to provide the inlet channel of McChesney et al. with a filter, as taught by Sugiyama et al. Having such a modification would have prevented entry of debris into the cooling water flow path, thereby protecting the flow path from clogging with foreign objects.
Further, although Sugiyama et al. does not expressly disclose how the filter could be detached from the outboard motor, the exploded view shown in Fig 7 of Sugiyama et al. suggests that the filter is removable from within the inlet channel by displacing it in a forwardly or outwardly direction from a front end of the inlet channel. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to make the filter removable from within the modified inlet channel of McChesney et al. by displacing it in a forwardly or outwardly direction from a front end of the inlet channel. Having such an arrangement would have provided a simple and easy way to replace the filter without having to disassemble the outboard motor body.
Re claim 2, in an alternative interpretation, McChesney et al. discloses the pump as being driven by a gear reduction arrangement offset from the axis of the propeller shaft (see col. 5, lines 9-15), thereby suggesting that the pump is driven by another shaft that is separate from the propeller shaft. The outboard motor (see Fig 2) comprises: a drive shaft [48] rotationally driven by a drive unit [44]; the propeller shaft [56] to rotate together with a propeller; wherein the drive shaft is rotatable in both a forward direction and a reverse direction, wherein the water pump is a non-volumetric centrifugal pump (see abstract).
Re claim 4, the water pump is a non-volumetric centrifugal pump (see abstract).
Re claim 5, the water pump is located on the rotation axis of the propeller shaft.
Re claim 9, with the interpretation of pump shaft described above, the filter is considered located on a rotation axis of the pump shaft in front of the water pump.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over McChesney et al. (US 8,333,629 B2) in view of Sugiyama et al. (US 10,106,236 B2), and further in view of Honda (US 12,103,653 B2).
McChesney et al., as modified above by Sugiyama et al., shows an outboard motor with a drive shaft [48] rotationally driven by a drive unit in the form of an engine.
Modified McChesney et al., however, fails to disclose the drive unit being an electric motor to be driven by electric power supplied from a power source.
Honda shows an outboard motor having a drive shaft [18] rotationally driven by a drive unit [15], and a propeller shaft [23] rotatable together with a propeller [26], wherein the drive unit can be either an internal combustion engine or an electric motor (col. 5, lines 14-15), thereby establishing an equivalence between the two types of drive units.
It would have also been obvious to a person having ordinary skill in the art before the effective filing date of the invention to use an electric motor as a drive unit for powering the drive shaft of modified McChesney et al., as further taught by Honda. Having such an arrangement would have provided an eco-friendly option with low-noise operations, zero emissions, low maintenance, quick acceleration, and low operational costs. It would have also been obvious to a person having ordinary skill in the art before the effective filing date of the invention to provide a power source that would have been necessary to power the electric motor.
Claims 6-8 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over McChesney et al. (US 8,333,629 B2) in view of Sugiyama et al. (US 10,106,236 B2).
McChesney et al., as modified above by Sugiyama et al., shows an outboard motor, comprising: a filter [54] located inside an inlet channel, as described above. The filter includes a retaining holder [542] having a through hole and fixed inside the inlet channel, and a filter body [541] inside the through hole to allow the passage of the cooling water and prevent entry of foreign objects.
Modified McChesney et al., however, is silent on the material used for making the filter or the filter holder. Specifically, modified McChesney et al. is silent on making the filter with resin (claim 6), glass fiber reinforced plastic (claim 7) or metal (claim 8). Modified McChesney et al. is also silent on making the filter holder with resin (claim 8).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to use any one of resin, glass fiber reinforced plastic and metal for making the filter and the holder of modified McChesney et al. as a matter of routine design choice because use of all such materials for making outboard motor components is common and well known in the marine art. Making the filter of modified McChesney et al. with resin would have resulted in an inexpensive, light-weight and durable product, while making such filter with glass fiber reinforced plastic would have yielded an extremely strong and durable product. Likewise, alternatively making such filter with metal would have provided an inexpensive and durable product. Similarly, making the filter holder of modified McChesney et al. with resin too would have resulted in an inexpensive, lightweight and durable product.
Re claims 10-11, although not expressly disclosed by modified McChesney et al., mounting outboard motors on boat transoms is old and extremely well known in the marine art. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to mount the outboard motor of modified McChesney et al. on a boat transom at a rear end of the boat hull. Having such an arrangement would have provided a cost-effective and versatile solution for powering small boat, which would have freed-up interior deck space within the hull and allowed excellent low-speed maneuverability of the boat.
Response to Arguments
Applicant’s arguments with respect to claims 1-11 have been considered but they are moot in view of new grounds of rejection.
Additionally, regarding the rejection based on Kissel made in previous Office action, applicant has argued that Kissel does not teach or suggest that the filter could be removed from a front end of the intake port (emphasis added), However, it is noted that the amended claim 1 and claim 9 do not recite “a front end of the intake port” as being argued, but instead set forth “a front end of the inlet channel”.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 AJAY VASUDEVA whose telephone number is (571)272-6689. The examiner can normally be reached 6:00 am - 3:00 pm.
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/AJAY VASUDEVA/Primary Examiner, Art Unit 3615
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