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 .
Election/Restrictions
Applicant’s election of species 1 in the reply filed on 6/17/2026 is acknowledged.
The claims (11-12 and 17) withdrawn by Applicant from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected species 2-3, there being no allowable generic or linking claim are acknowledged. Applicant timely traversed the restriction/election requirement in the reply filed on 6/17/2026.
Response to Arguments/Traversal: Applicant's election with traverse is acknowledged. The traversal is on the ground(s) that independent claim 1 is believed to be generic and readable upon each disclosed embodiment (i.e., Figures 1-3). This is not found persuasive because a generic claim is irrelevant to the requirement for restriction between distinct species. To reiterate the 2/17/2026 office action: Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim. The requirement is still deemed proper and is therefore made FINAL.
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 “driveshaft coupling” must be shown or the feature(s) canceled from the claim(s), or specifically prior art including a driveshaft coupling or demonstrating the distinction from a driveshaft bracket. See claim 13 No new matter should be entered.
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.
Claim Rejections - 35 USC § 112
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors. For example, instances of “collectively directing force”, “connected to direct”, “a force directed” (at least claims 5-6 and 15-16) are describing particular configurations, standard English claim writing practice is suggested, i.e. the interlinked components of the propulsion system are configured to direct force from… to…, etc. Correction/clarification of all instances of translation errors is required.
Additionally, the office notes terms such as “most of”, “providing an advantage”, “thereby enabling”, “designed to”, “thin” are not standard US claim terminology as they typically result in limitations that are indefinite, e.g., unclear metes and bounds. The claims must be reviewed for all instances of translation errors resulting in indefinite claim language. Correction is required for all instances discovered.
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 claims (5-6 and 16) are rejected under 35 U.S.C. 112(b) as they recite terminology in a limitation, in which there is insufficient antecedent basis for in the claims:
Claim 5, “the watercraft base” (For example, how does this term (a base) differ from a structural base? Use consistent terminology through out to avoid confusion).
Claims 5, 6, and 16 “components” (For example, the term components of the propulsion system were never previously claimed or clearly established, list out exactly which claim elements to which the limitation is referring, e.g., the electric motor and the sterndrive unit). Additionally, the office notes “a propulsion system” is never positively claimed, only a fixation system for a propulsion system.
Claim 6, “the structural base” (For example introduce similarly to claims 5 and 7, i.e., “a structural base”). Claim 16 is likewise rejected for the term “the structural base”).
Claims 6, 8 and 13 are each 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 or a joint inventor regards as the invention:
In claim 6, the term “most of” in claim 6 is a relative term which renders the claim indefinite, “most of” 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. It is unclear how much of most of is actually required to constitute infringement. Correction is required.
In claim 8 the terminology “a structural base” renders the limitation unclear, specifically is the term “a structural base” referring to the same “a structural base” introduced in parent claim 7 or to an additional and distinct structural base? Correction/clarification is required, specifically “a” or “the”.
In claim 13, the terminology “a drive shaft coupling” renders the claim indefinite as it is unclear to what the term is referring. For example, how does a drive shaft coupling differ from the “drive shaft bracket”? Correction/clarification is required.
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 1-7 and 13-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by a first embodiment of Jesewitz et al. (US 12,097,936 B2), hereinafter Jesewitz.
Regarding claim 1, Jesewitz discloses a sterndrive fixation system (Fig. 1A), comprising:
a sterndrive bracket configured to couple to a sterndrive unit of a propulsion system (the office notes the sterndrive bracket of the mounting system 200 coupled to transmission box 470 of propulsion system 100, Fig. 1A) and further configured to couple to a stern wall of a watercraft on an outside of the watercraft (the office notes the sterndrive bracket is further coupled to the outside of boat transom 103, Fig. 1A); and
a driveshaft bracket configured to couple to an electric motor of the propulsion system (the office notes the driveshaft bracket of the mounting system 200 coupled to the electric motor 301A/301B, Fig. 1A) and further configured to couple to the stern wall of the watercraft on an inside of the watercraft (the office notes the driveshaft bracket is further coupled to the inside of boat transom 103, Fig. 1A; as is best indicated by the inside of the boat hull depicted in Fig. 1C).
Regarding claim 2, Jesewitz discloses the sterndrive fixation system of claim 1, further comprising: the sterndrive unit (470).
Regarding claim 3, Jesewitz discloses the sterndrive fixation system of claim 2, further comprising: the electric motor (301a/301b).
Regarding claim 4, Jesewitz discloses the sterndrive fixation system of claim 3, wherein the electric motor is configured to provide power to the sterndrive unit (col. 7, line 31: In operation in this exemplary embodiment, the torque from the axial flux motor (301) may be applied to the transmission shaft (410) that is then coupled to the transmission box (470) via the transmission box stub (475). The transmission box (470) may then transmit the torque to the propeller shaft (449) that turns the propeller (450) and provides propulsion for the relevant boat (101). This chain of torque transfer may allow the relevant boat (101) to be propelled in water).
Regarding claim 5, Jesewitz discloses the sterndrive fixation system of claim 4, wherein the components of the propulsion system are interlinked (Fig. 1A-1C; Examiner notes 112b rejection associated with the limitation), and
collectively direct force to a structural base of the watercraft thereby enabling a direct application of force from the sterndrive to the watercraft base (the office notes the components of the propulsion system, particularly the stern drive unit and the electric motor collectively direct force to a structural base of the watercraft naturally enabling a direct application of force from the sterndrive to the watercraft base, particularly the structural base: a boat substructure, as is evidenced by col. 6, line 64: motor mounts (406) may be attached to the hull of the relevant boat (101) or to some other structure, such as a boat substructure).
Regarding claim 6, Jesewitz discloses the sterndrive fixation system of claim 4, wherein components of the propulsion system are connected (Fig. 1A-1C; Examiner notes 112b rejection associated with the limitation) to direct most of a propulsion force to the structural base of the watercraft instead of the stern wall (the office notes the components of the propulsion system, particularly the stern drive unit and the electric motor collectively direct force to a structural base of the watercraft particularly a boat substructure, as is evidenced by col. 6, line 64: motor mounts 406 may be attached to the hull of the relevant boat 101 or to some other structure, such as a boat substructure).
Regarding claim 7, Jesewitz discloses the sterndrive fixation system of claim 3, wherein the electric motor is coupled to a structural base of the watercraft (particularly a boat substructure, as is evidenced by col. 6, line 64: motor mounts (406) may be attached to the hull of the relevant boat (101) or to some other structure, such as a boat substructure).
Regarding claim 13, Jesewitz discloses the sterndrive fixation system of claim 7, wherein a drive shaft coupling is not required as the electric motor is coupled to the structural base of the watercraft (col. 6, line 64; Examiner notes 112b rejection associated with the limitation).
Regarding claim 14, Jesewitz discloses the sterndrive fixation system of claim 3, wherein a configuration of the sterndrive fixation system reduces a required propulsion system space, providing increased space on the inside of the watercraft (The office notes the sterndrive configuration reduces a required propulsion system space, specifically inside the hull, as compared to the jet drive configuration, for example, as portions of the system are mounted outside of the boat hull; see ABSTRACT).
Regarding claim 15, Jesewitz discloses the sterndrive fixation system of claim 7, further providing an advantage by enabling installation on a thin stern wall as a force from the sterndrive is directed to the structural base of the watercraft (the office notes the components of the propulsion system, particularly the stern drive unit and the electric motor collectively direct force to a structural base of the watercraft naturally enabling a direct application of force from the sterndrive to the watercraft base and enabling installation on a thin stern wall as a force from the sterndrive is directed to the structural base of the watercraft, particularly the structural base: a boat substructure, as is evidenced by col. 6, line 64: motor mounts (406) may be attached to the hull of the relevant boat (101) or to some other structure, such as a boat substructure).
Regarding claim 16, Jesewitz discloses a system (Fig. 1A), comprising:
a sterndrive unit of a propulsion system positioned outside of a watercraft (470, Figs. 1A-1C);
a sterndrive bracket facilitating a connection between the sterndrive unit and inner components of the propulsion system (the office notes the sterndrive bracket of the mounting system 200 coupled to transmission box 470 of propulsion system 100, Fig. 1A; the office notes the sterndrive bracket is further coupled to the outside of boat transom 103); and
a drive shaft bracket establishing a connection between the sterndrive bracket and
an electric motor of the propulsion system, the electric motor configured to provide power to the system (the office notes the driveshaft bracket of the mounting system 200 coupled to the electric motor 301A/301B, Fig. 1A; the office notes the driveshaft bracket is coupled to the inside of the boat transom 103 and an electric motor 301 and therefore establishes a connection between the stern drive bracket and the electric motor 301 as both brackets are coupled to the transom of the, see the inside of the boat hull depicted in Fig. 1C);
wherein all components of the propulsion system components are interlinked and collectively direct force to the structural base of the watercraft, thereby enabling a direct application of force form the sterndrive unit to the structural base of the watercraft instead of to a stern wall of the water craft (the office notes the components of the propulsion system, particularly the stern drive unit and the electric motor collectively direct force to a structural base of the watercraft particularly a boat substructure, as is evidenced by col. 6, line 64: motor mounts (406) may be attached to the hull of the relevant boat (101) or to some other structure, such as a boat substructure, a configuration that naturally allows a direct application of force form the sterndrive unit to the structural base of the watercraft instead of to a stern wall of the watercraft).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Jesewitz, as applied to claims 7 and 1, and further in view of Brown et al. (US 3,532,319), hereinafter Brown.
Regarding claim 8, Jesewitz discloses the sterndrive fixation system of claim 7, wherein the electric motor is coupled to a structural base of the watercraft using mountings (col. 6, ln. 64), but does not appear to specifically disclose mountings designed to absorb noise and vibration from the propulsion system.
However, Brown teaches a vibration isolating mount in the same field of endeavor specifically designed to absorb noise and vibration from the propulsion system (Figs. 1-4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the fixation system disclosed by Jesewitz with the mountings designed to absorb noise and vibration from the propulsion system, as taught by Brown, with a reasonable expectation of success, so that the electric motor is coupled to the structural base of the watercraft using the mountings designed to absorb noise and vibration from the propulsion system. The benefit being the predicted outcome of providing optimum vibration isolation between the two connected members (first line, Brown).
Regarding claim 9, Jesewitz discloses the sterndrive fixation system of claim 1, but does not appear to specifically disclose a first rubber pad positioned between the sterndrive bracket and the stern of the watercraft and a second rubber pad positioned between the driveshaft bracket and the stern of the watercraft.
However, Brown teaches vibration isolating mounts in the same field of endeavor specifically in the form of rubber pads, each configured to be positioned between two connected members.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the fixation system disclosed by Jesewitz with the rubber pads, each configured to be positioned between two connected members, as taught by Brown, with a reasonable expectation of success, so that a first rubber pad is positioned between the sterndrive bracket and the stern of the watercraft and a second rubber pad is positioned between the driveshaft bracket and the stern of the watercraft. The benefit being the predicted outcome of providing optimum vibration isolation between two connected members (first line, Brown).
Regarding claim 10 particularly, claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over modified Jesewitz, as applied to claim 1, and further in view of Berton (US 11,396,355 B2).
Regarding claim 9, Jesewitz discloses the sterndrive fixation system of claim 1, but does not appear to specifically disclose:
a first rubber pad positioned between the sterndrive bracket and the stern of the watercraft; and
a second rubber pad positioned between the driveshaft bracket and the stern of the watercraft.
However, Berton teaches a compliant rubber pad (610, Fig. 6) configured for a bracket (600, Fig. 6) coupled to a stern wall of a watercraft (702, 704; Fig. 7), in the same field of endeavor.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the sterndrive bracket and the driveshaft bracket disclosed by Jesewitz with the rubber pad configured for a bracket coupled to a stern wall of a watercraft as taught by Berton, with a reasonable expectation of success, so that each bracket comprises the rubber pad positioned on it therefore having a first rubber pad positioned between the driveshaft bracket and the stern/stern-wall/transom of the watercraft, and a second rubber pad positioned between the driveshaft bracket and the stern/stern-wall/transom of the watercraft. The benefit being the predicted outcome of providing water intrusion resistance and vibration damping (col. 10, line 22).
Regarding claim 10, modified Jesewitz discloses the sterndrive fixation system of claim 9, wherein the first rubber pad and the second rubber pad prevent water from an outside of the watercraft from entering the watercraft via the stern wall (col. 10, line 22) and (col. 7, line 1: the compliant pad can help to exclude water from penetrating the holes created for the bolts 15 [in the transom]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Harley (US 7,431,620) teaches an articulating frame assembly including transom gusset braces to further distribute thrust loads as they are applied to the transom. The braces further distribute such thrust loads to stringers, thereby increasing the strength of the novel installation.
Daniels (US 3,057,320) teaches a boat transom propulsion unit including a flexible boot 38 preferably molded from a synthetic rubber composition such as neoprene has its larger end connected to a transom bracket, the boot is used for merely closing an opening in the transom so as to prevent water from entering the engine compartment. However, this boot permits the propeller shaft therein to move freely in horizontal and vertical directions as may be required.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANNA DANIELLE GLOVER whose telephone number is (571)272-8861. The examiner can normally be reached Monday - Friday 7:00 -4:30, see teams for updates.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Huson can be reached at 571-270-5301. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.D.G./Examiner, Art Unit 3642 /JOSHUA D HUSON/Supervisory Patent Examiner, Art Unit 3642
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