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.
Claims 1, 6-9 and 11-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 1 (line 10) sets forth “the merging exhaust pipes extend from upper portions of the exhaust openings at a highest in the respective banks through an upper portion on a side of the cylinder head, and merge outside on the side of the cylinder head” (emphasis added).
The claim, as currently phrased, implies that the merging exhaust pipes merge on the same side of the cylinder head where such merging exhaust pipes are attached to the exhaust openings. However, as described in the disclosure, the merging exhaust pipes extend from the exhaust openings on outer sides of the cylinder head, and then the merging exhaust pipes extend rearwardly to merge on a rear side of the cylinder head. Therefore, the attachment and the merging of the merging exhaust pipes occur on different sides, and not the same side as implied in the claim.
Therefore, in absence of adequate guidance in the specification, a person skilled in the art would not be able to make and/or use the claimed invention.
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.
Claim 1, 6-9 and 11-13 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 claim 1 (line 10), the limitation “the merging exhaust pipes extend from upper portions of the exhaust openings at a highest in the respective banks” (emphasis added) renders the claim indefinite for being vague and confusing. It is not sufficiently clear what such “highest” is referring to? Highest of what? Did the applicant intend this limitation to be phrased as “the merging exhaust pipes extend from [[a highest one of the exhaust openings [[
In claim 7 (line 2), the limitation “cooling water piping” renders the claim indefinite. It is not sufficiently clear if such piping is same or different from the external piping set forth in the preceding claim 6.
In claim 12 (line 1), the limitation “An outboard unit” renders the claim indefinite because it is not clear if such outboard unit is same or different from the one recited on line 7 and line 14 of the preceding claim 1.
In claim 13 (line 1), the limitation “A watercraft” renders the claim indefinite because it is not clear if such watercraft is same or different from the one recited on line 14 of the preceding claim 1.
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 and 12-13, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakayama et al. (US 9,745,037 B2).
Nakayama et al. show a V-type engine [7] of an outboard unit in which cylinders with pistons [32] are arranged in a V-shape and a crankshaft [33] driven by driving of the pistons is disposed vertically, the V-type engine comprising: exhaust pipes [50] communicating with exhaust openings [43] in respective banks of a cylinder head. The exhaust pipes in the respective banks are each arranged so as to extend in an up-down direction on opposite sides of the V-type engine, wherein a merging exhaust pipe [65] is connected to an upper end portion of each exhaust pipe (see Fig 1 and Fig 6). As best understood from the current claim language, the merging exhaust pipes extend from a highest one of the exhaust openings in the respective banks through an upper portion on a side of the cylinder head, the merging exhaust pipes merging outside on a side of the cylinder head located on a rear of the engine in a traveling direction of a watercraft to which the outboard unit is attached. A catalyst holding portion [56], considered to be catalyst holder, that holds a catalyst [57] is provided in a merge portion of the exhaust pipes.
Re claims 12-13, the V-type engine is an outboard motor attachable to a 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.
Claim 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Nakayama et al. (US 9,745,037 B2) in view of George et al. (US 9,403,588 B1).
Nakayama et al. show an outboard engine comprising a catalyst holder with a cooling mechanism [25, 61], but fails to disclose the cooling system as having a radiator that cools and circulates cooling water taken in via external piping.
George et al. show an outboard engine [12] with a cooling system (see Fig 1) having cooling water piping [30, 32], and a separate cooling unit in the form of a water-to-water heat exchanger [46], which is broadly considered to be the radiator. The radiator is configured to slightly preheat cold water extracted from a body of water [14] prior to delivering it to the cooling circuit of the outboard engine, wherein the cooling water taken in via piping that is external to the engine, which therefore is broadly considered to be external piping. The cooling water piping is provided with cooling water supply device having a pump [36].
It would have been obvious to a person with ordinary skill in the art before the effective filing date of the invention to provide the cooling system of Nakayama et al. with a heat exchanger, as taught by George et al. Having such a modification would have allowed the cooling water to quickly reach sufficient warmth even during extremely cold weather, at which temperature both the engine and the catalyst would function at optimum efficiency.
Re claim 7, with the above modification in view of George et al., cooling water piping where part of cooling water to be delivered to the cylinder head is delivered would be connected to the catalyst holder, and the cooling water piping being provided with the cooling water supply device [36] in the form of a pump that delivers the cooling water to the catalyst holder.
Re claim 8, the cooling water supply device of George et al. comprises a pump [36] connected to the engine, which operates upon start-up of the engine to supply water for cooling the catalyst, and thereby acts as a catalyst temperature adjuster.
Re claim 9, the cooling mechanism is provided outside an engine.
Allowable Subject Matter
Claim 11 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) and 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 5/20/2026 have been fully considered but either they are not persuasive and/or they are moot in view of new ground of rejection.
Applicant’s Arguments: Applicant has argued that Nakayama et al. do not show the merging exhaust pipes extending from upper portions of the exhaust openings at a highest in the respective banks. The argued limitation is considered indefinite for the reasons described above in paragraph, but has been interpreted to mean that Nakayama et al. fail to show the merging exhaust pipes extending from a highest one of the exhaust openings in the respective banks.
Response: Although Nakayama et al. do not show the merging exhaust pipes attached to and extending upwardly from an upper end of the respective exhaust pipes, Fig 1 and Fig 6 of Nakayama et al. clearly show that the merging exhaust pipes [65] extend from at least a highest one of the exhaust openings [43, 64] in the respective banks.
Conclusion
Examiner’s Note: Applicant may optionally consider amending claim 1 as follows to overcome the existing rejection under 35 U.S.C. 112(a) and 112(b), as well as the rejection under 35 U.S.C. 102(a)(1) based on Nakayama et al.:
“… a merging exhaust pipe is connected to an upper end [[upwardly from [[a highest one of the exhaust openings [[an outer side of the cylinder head, [[the merging exhaust pipes extending upwardly from and above the upper end of the respective exhaust pipes to merge outside [[at a rear side of the engine in a traveling direction …”.
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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