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
Claims 8, 9 and 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/19/2026.
Claim Rejections - 35 USC § 102/103
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.
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, 10-17, 19 and 20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Åsberg US 5,580,289 in view of Ebihara US 10,144,495.
Regarding claims 1 and 12, Åsberg teaches an outboard motor comprising:
a drive source (column 2, lines 30-32);
a propeller (column 2, line 67-column 4, line 3); and
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[AltContent: textbox (Figure 1- Åsberg Figure 3 (corrected))]a transmission to transmit a drive power of the drive source to the propeller, the transmission including:
a propeller shaft (not shown) extending in a first direction and rotatable together with the propeller;
an input shaft 1 connected to the drive source and rotatable by the drive power of the drive source;
a first output shaft 3, spaced apart from the input shaft, to transmit power to the propeller shaft; and
a first winding transmission (2, 6, 11-17, 23, 28-35, 40-42, etc.) to transmit rotation of the input shaft to the first output shaft.
[AltContent: textbox (Figure 2- Ebihara Figure 1)]
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In an alternate interpretation, Åsberg does not explicitly teach the engine components outside of the transmission, such as the drive source, propeller shaft, etc. Ebihara teaches an outboard motor comprising:
a drive source 11;
a propeller 5, 6; and
a transmission to transmit a drive power of the drive source to the propeller, the transmission including:
a propeller shaft 16 extending in a first direction and rotatable together with the propeller;
an input shaft 14 connected to the drive source and rotatable by the drive power of the drive source;
a first output shaft 15, spaced apart from the input shaft, to transmit power to the propeller shaft; and
a first (winding) transmission 13 to transmit rotation of the input shaft to the first output shaft.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the outboard motor of Åsberg with the drive source, propeller, propeller shaft (and overall motor layout) of Ebihara in order to effectively power a marine craft.
Regarding claims 2 and 13, Åsberg alone or in view of Ebihara teaches the invention as claimed as detailed above with respect to claims 1 and 12. Åsberg also teaches that the first output shaft 3 is located on one side of the input shaft 1 in the first direction.
Regarding claims 3 and 14, Åsberg alone or in view of Ebihara teaches the invention as claimed as detailed above with respect to claims 2 and 13. Åsberg does not teach a first case accommodating at least a portion of the first output shaft and the propeller shaft and rotatable about the first output shaft. Ebihara teaches a first case 4 accommodating at least a portion of the first output shaft 15 and the propeller shaft 16 and rotatable about the first output shaft. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the outboard motor of Åsberg with the motor casing of Ebihara in order to protect the internal components from the outside environment.
Regarding claims 4 and 15, Åsberg alone or in view of Ebihara teaches the invention as claimed as detailed above with respect to claims 1 and 12. Åsberg also teaches a transmission shifter (all elements of Åsberg figure 3) on the first output shaft 3.
Regarding claims 5 and 16, Åsberg alone or in view of Ebihara teaches the invention as claimed as detailed above with respect to claims 4 and 15. Åsberg does not teach a first case accommodating at least a portion of the first output shaft and the propeller shaft and rotatable about the first output shaft; and a second case connected to the first case and accommodating the transmission shifter. Ebihara teaches a first case 4 accommodating at least a portion of the first output shaft 15 and the propeller shaft 16 and rotatable about the first output shaft; and a second case 3 connected to the first case and accommodating the transmission shifter 13. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the outboard motor of Åsberg with the motor casing of Ebihara in order to protect the internal components from the outside environment.
Regarding claim 6, Åsberg alone or in view of Ebihara teaches the invention as claimed as detailed above with respect to claim 1. Åsberg also teaches that the first winding transmission includes:
a first input side sprocket 40 around the input shaft 1, 2, 6;
a first output side sprocket 41 around the second output shaft 20; and
a first chain 42 connecting the first input side sprocket to the first output side sprocket.
Åsberg does not teach that the first input side sprocket is around the input shaft 1; or that the first output side sprocket is around the first output shaft. It would have been obvious to one having ordinary skill in the art at the time the invention was made to attach shaft 1 directly to the input sprocket 40, and first output shaft 3 directly to the output sprocket 41 in order to obtain the desired form factor for packaging and/or simplify assembly and maintenance, 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 claims 7 and 17, Åsberg alone or in view of Ebihara teaches the invention as claimed as detailed above with respect to claims 2 and 13. Åsberg does not teach a driven device to be driven by the drive power of the drive source, the driven device located below the input shaft and on one side of the first output shaft in the first direction. Ebihara teaches a driven device to be driven by the drive power of the drive source 11, the driven device 12, 40 or 41 located below the input shaft 14 and on one side/in front of the first output shaft 15 in the first direction. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the outboard motor of Åsberg with the driven devices of Ebihara in order to ensure power is transferred to the propeller shaft or enable the pumping of coolant throughout the motor.
Regarding claims 10 and 19, Åsberg alone or in view of Ebihara teaches the invention as claimed as detailed above with respect to claims 7 and 17. Åsberg does not teach that the driven device includes a water pump. As stated above, Ebihara teaches that the driven device 41 includes a water pump. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the outboard motor of Åsberg with the water pump of Ebihara in order to enable the pumping of coolant throughout the motor.
Regarding claims 11 and 20, Åsberg alone or in view of Ebihara teaches the invention as claimed as detailed above with respect to claims 1 and 12. Åsberg also teaches a hull; and the outboard motor according to claim 1/12 mounted to a rear of the hull (as it is intended to propel a boat). Alternatively, Ebihara teaches a hull; and the outboard motor according to claim 1/12 mounted to a rear of the hull (column 5, lines 41-48). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the outboard motor of Åsberg by attaching it the rear of a boat hull as taught by Ebihara in order utilize the motor as marine vehicle propulsion.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bielefeld US 11,203,401 teaches an outboard motor with a transmission comprising parallel geared shafts.
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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