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 .
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 following must be clearly shown and identifying all relevant parts with proper reference numbers, or the feature(s) canceled from the claim(s). No new matter should be entered.
an exhaust passage of a casing that is connected to the exhaust pipe on a downstream side of a catalyst holder (claim 3)
the catalyst holder being directly attached to the cylinder head (claim 4)
an attaching jig that attaches the catalyst holder to the cylinder head (claim 5)
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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s).
See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-8 and 12-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-7 of U.S. Patent No. 12,291,988 B2 (‘988).
Although the claims at issue are not identical, they are not patentably distinct from each other because all limitations of the instant claims are encompassed in the claims of the ‘988 Patent.
Claims 1-8 and 12-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,228,058 B2 (‘058).
Although the claims at issue are not identical, they are not patentably distinct from each other because all limitations of the instant claims are encompassed in the claims of the ‘058 Patent.
Claims 1-9 and 12-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. US 12,158,091 B2 (‘091).
Although the claims at issue are not identical, they are not patentably distinct from each other because all limitations of the instant claims are encompassed in the claims of the ‘091 Patent.
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 5 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 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 5 sets forth an attaching jig attaching the catalyst holder to the cylinder head. However, the disclosure is silent on the structure of such attaching jig and does not provide sufficient information how it is used for attaching the catalyst holder to the cylinder head. 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 10 is 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 10, the limitation “the cooling mechanism separately supplies cooling water from water to the catalyst holder and releases the cooling water into the water” (emphasis added) renders the claim being vague and confusing. It is not clear whether the “cooling water” is same or different from the “water”. Did the applicant intend this limitation to be “the cooling mechanism separately supplies cooling water from a body of water to the catalyst holder and releases the cooling water into the body of water”?
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 1-13 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] 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, wherein the exhaust pipes in the respective banks are merged on a side of the cylinder head (Fig 2), and 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 claim 2, the exhaust pipes communicating with the exhaust openings in the respective banks of the cylinder head extend from the exhaust openings at higher positions in the respective banks through an upper portion on the side of the cylinder head and merge outside on the side of the cylinder head (see Fig 1)
Re claim 3, the exhaust pipe on a downstream side of the catalyst holder is connected to an exhaust passage of a casing.
Re claims 4-5, the catalyst holder is directly attached to the cylinder head via an intermediate structure 53, which is broadly considered to be an attaching jig (see Fig 2-4).
Re claim 6, the catalyst holder comprises a cooling mechanism [25, 61].
Re claim 7, cooling water piping [25] where part of cooling water to be delivered to the cylinder head is delivered is connected to the catalyst holder, and the cooling water piping is provided with a cooling water supply device [23] in the form of a pump that delivers the cooling water to the catalyst holder.
Re claim 8, the cooling water supply device comprises a pump [23] 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.
Re claim 11, the cooling mechanism separately supplies cooling water from a body of water to the catalyst holder and releases the cooling water back into the body of water from the catalyst holder.
Re claims 12-13, the V-type engine is an outboard motor configured to be attached 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 10 is 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 with a cooling system having cooling water piping, but fails to disclose the cooling system as having a separate cooling unit.
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] that 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.
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nakayama (US 10,012,144); Habeck et al. (US 9365275); Ochiai et al. (US 9,260,171); and Ochiai et al. (US 9,120,549) each shows a V-type engine and a catalyst holder with a catalyst in a merge portion of the engine exhaust pipes.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Samuel J. Morano can be reached at 571-272-6684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AJAY VASUDEVA/Primary Examiner, Art Unit 3615