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 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 1-8 and 10-17 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 16), the newly added limitation “wherein a first tail cone member and a first nose cone member having a first profile are configured to be coupled to the center body” (emphasis added) renders the claim indefinite for being vague and confusing. It is not sufficiently clear if the “first tail cone member” and the “first nose cone member” are same or different from the “modular tail cone member” and the “modular nose cone member” previously recited on line 10 and line 7, respectively.
In claim 1 (line 16), the limitation “wherein a first tail cone member and a first nose cone member having a first profile” (emphasis added) renders the claim indefinite for being vague and confusing. It is not sufficiently clear if both of the “first tail cone member” and the “first nose cone member” have the same “first” profile. Did the applicant intend this limitation to be “wherein a first tail cone member and a first nose cone member each having a respective first profile”? Applicant is requested to provide a clarification and/or correction.
In claim 1 (line 16), the newly added limitation “wherein a first tail cone member and a first nose cone member having a first profile are configured to be coupled to the center body for a first boating condition, and replaced on the center body with a second tail member and a second nose member having a different profile for a second boating condition” renders the claim indefinite for being vague and confusing. From the current phrasing used in the claim, it is not sufficiently clear whether the claim positively recites the first tail cone member, the first nose cone member, the second tail member, and the second nose member as being a part of the lower unit, or if such cone members have been recited merely in terms of being attachable (i.e., as a capability statement) without being a part of the combination in claim 1. Applicant is requested to provide a clarification and/or correction.
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 1-3, 7-8, 10-13 and 17, as best understood, are rejected under 35 U.S.C. 102(a1) as being anticipated by Ware (US 3593050 A).
As best understood, the newly added limitations “a first tail cone member” and “a first nose cone member” have been interpreted as referring to the modular tail cone member and the modular nose cone member, as previously recited on line 10 and line 7 of the claim. The amended claim 1 has further been interpreted to mean that the modular tail cone member and the modular nose cone member are replaceable by a differently-shaped second tail member and second nose member, but such second tail and second nose members are not a part of the combination set forth in claim 1.
Regarding claim 1, with the above-described interpretation, Ware discloses a marine propulsion apparatus (see Fig 2), comprising: a lower unit having a center body [42], a modular nose cone member [46], and a modular tail cone member [44], and a skeg [32]. The center body comprises a leading edge disposed at a first end of the center body and a trailing edge disposed at a second end of the center body, defining a substantially cylindrical portion therebetween. The modular nose cone member is releasably coupled to the leading edge of the center body and comprises a first curved conical surface and a first mating surface. The modular tail cone member is releasably coupled to the center body and comprises a second conical surface and a second mating surface, wherein the second mating surface is oriented towards and parallel to the first mating surface. The skeg is affixed to a bottom side of the center body.
Further, the nose cone has a recess [122] that accommodates a coil [110] (see Fig 3). The space within the nose cone that is not occupied by the coil – i.e., the first space between a front vertical surface of the coil and a rear vertical face of the annular retaining member [72], as well as the second space between a rear vertical surface of the coil and a front vertical face the insulating board [86] – is considered to be the void space.
Additionally, as noted above, the second tail member and the second nose member are not positively recited in the claim, and therefore interpreted in terms of a capability statement. In the present case, the modular tail cone member and the modular nose cone member can be replaced by a second tail member and second nose member having differently-shaped outer profiles, as long as such second tail and nose members each has a coupling edge/rim that is similar to a coupling edge/rim of the replaced modular tail and nose cone members respectively, thereby allowing a coupling with the trailing and leading edges of the center body.
Re claim 2, the lower unit comprises a propeller shaft [30] disposed axially with the center body.
Re claim 3, the lower unit comprises a propeller [28] affixed to the propeller shaft aft of the center body.
Re claim 7, the modular nose cone is considered affixed to the center body via at least a first fastener [56].
Re claim 8, the modular tail cone is considered affixed to the center body via at least a second fastener [58].
Re claim 10, the void space comprises a fluid in the form of air.
Re claim 11, the propulsion apparatus is constructed as a watertight housing, and is therefore, the fluid within the housing is considered to be air (see the abstract, col. 1, lines 52-69; and col. 3, lines 3-7).
Re claim 12, the modular nose cone comprises a curved conical surface having a constant radius.
Re claim 13, the modular tail cone comprises a curved conical surface having a constant radius.
Re claim 17, the fluid in the form of air is considered to be a coolant.
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 4, 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ware (US 3,593,050 A) in view of Johnson (US 4,175,605 A).
Ware discloses a marine propulsion apparatus (see Fig 2), comprising: a torpedo having a center body [42], a modular nose cone member [46], and a modular tail cone member [44], a skeg [32], a propeller shaft [30], and a propeller [28] rotatably fixed to the propeller shaft aft of the modular tail cone and comprising a plurality of blades. The center body comprises a leading edge disposed at a first end of the center body and a trailing edge disposed at a second end of the center body, defining a substantially cylindrical portion therebetween. The modular nose cone member is releasably coupled via at least one fastener [56] to the leading edge of the center body and further comprises a first curved conical surface and a first mating surface, wherein the first mating surface has a first diameter substantially the same as the leading edge. The modular tail cone member is releasably coupled via at least one fastener [58] to the trailing edge and further comprises a second conical surface and a second mating surface, wherein the second mating surface is oriented towards and parallel to the first mating surface and wherein the second mating surface comprises a second diameter substantially the same as the trailing edge of the center body. The propeller shaft is disposed axially within the center body, terminating at the modular nose cone at a first end, and extending through the trailing edge at a second end. The skeg is affixed to a bottom side of the cylindrical portion of the center body
Ware however does not expressly disclose how the propeller is attached to the propeller shaft. Ware also fails to disclose any tail faring affixed to the propeller shaft aft of the center body (claim 4) or propeller cone rotatably fixed to the propeller shaft aft of the propeller (claim 18).
Johnson shows a mechanism for attaching a propeller to a propeller shaft [12], comprising a self-locking nut [10] shaped as a conical fairing or a propeller cone, which is rotatably affixed to the propeller shaft aft of the center body and the propeller (see the abstract; and Fig 3).
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 propulsion system of Ware with a self-locking nut with a conical fairing for attaching the propeller to the propeller shaft, as taught by Johnson. Having such an arrangement would have provided an inexpensive and efficient self-locking fastener that would resist vibrations.
Re claim 20, with the above modification in place, the propeller shaft of Ware would be rotatably coupled to a motor [68], the motor configured to rotate the propeller shaft, and in turn, rotate the propeller.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Ware (US 3,593,050 A) in view of Gearhart (US 4,798,547 A), as cited by Applicant.
Ware discloses a marine propulsion apparatus with a tail cone member with an outer conical surface, as described above. Ware however fails to disclose the tail cone as having pre-swirl vanes disposed on the outer conical surface.
Gearhart shows a marine propulsion apparatus with pre-swirl vanes [18, 20, 24] disposed at an immediate upstream location ahead of a propeller.
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 propulsion system of Ware with pre-swirl vanes at an immediate upstream location ahead of the propeller, as taught by Gearhart. Having such a modification would have created a pre-swirl in the water upstream of the propeller to provide a swirl-free slipstream behind the propeller, which would have improved the hydrodynamic characteristics and fuel efficiency of the propulsion system. It would have also been obvious to a person with ordinary skill in the art before the effective filing date of the invention to position such pre-swirl vanes on the outer conical surface of the tail cone, which would have been an obvious and preferred location for fixing such fins immediately ahead of the propeller.
Re claim 6, with the above modification in place, the modular tail cone of Ware would comprise a rotary shaft seal [78] disposed at an aft portion of the modular tail cone, wherein the rotary shaft seal would be configured to allow the propeller shaft to rotate and prevent an ingress of water.
Claims 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Ware (US 3,593,050 A) in view of Burton et al. (US 10,377,459 B2).
Ware discloses a marine propulsion apparatus with a nose cone member, as described above. Ware however fails to disclose the nose cone as comprising a fluid sensor within an integrated sensor housing, as set forth in claims 14-16.
Burton et al. discloses a marine propulsion apparatus comprising a nose cone member, wherein a sensor within its sensor housing [210, 220] is disposed inside the nose cone for measuring different water quality features such as depth and temperature (see Fig 3a; and col. 11, lines 7-27).
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 nose cone of Ware with a sensor inside a sensor housing, as taught by Burton et al. Providing a sensor to integrate water sensing functions with the propulsion feature would have made the marine propulsion apparatus of Ware versatile and improved its marketability.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Ware (US 3,593,050 A) in view of Johnson (US 4,175,605 A), as applied to claim 18 above, and further in view of Gearhart (US 4,798,547 A).
Ware, as once modified above by Johnson, discloses a marine propulsion apparatus with a tail cone member with an outer conical surface. Modified Ware however fails to disclose the tail cone as having pre-swirl vanes disposed on the outer conical surface.
Gearhart shows a marine propulsion apparatus with pre-swirl vanes [18, 20, 24] disposed at an immediate upstream location ahead of a propeller.
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 propulsion system of Ware, as modified by Johnson, with pre-swirl vanes at an immediate upstream location ahead of the propeller, as further taught by Gearhart. Having such a modification would have created a pre-swirl in the water upstream of the propeller to provide a swirl-free slipstream behind the propeller, which would have improved the hydrodynamic characteristics and fuel efficiency of the propulsion system. It would have also been obvious to a person with ordinary skill in the art before the effective filing date of the invention to position such pre-swirl vanes on the outer conical surface of the tail cone of modified Ware, which would have been an obvious and preferred location for fixing such fins immediately ahead of the propeller.
Response to Arguments
Applicant's arguments filed 7/06/2026 have been fully considered but they are either not persuasive, and/or moot in view of new grounds of rejection.
Applicant’s Arguments: Applicant has argued that Ware does not disclose a modular nose cone and modular tail cone each releasably coupled independently to a center body (emphasis added). In Ware, bolts 56 and 58 extend through the entire length of the motor housing, from end cap (44), through tubular portion (42), and are threaded into end cap (46). This configuration creates a dependent coupling arrangement wherein both end caps are joined together by the same set of through bolts. The through bolts do not independently couple each end cap to the center body. This arrangement is in complete contrast to the presently claimed arrangement in which the modular nose cone and modular tail cone are each independently releasably coupled to the center body.
Response: It is first noted that claims 1 and 18 do not require that the modular nose cone and modular tail cone are each independently releasably coupled to the center body, as being argued.
Further, the examiner acknowledges that two bolts [56, 58] extend through the entire length of the motor housing -- from the nose cone member [46], through the tubular center body [42], to the tail cone member [44]. However, claim 18 merely recites that the modular nose cone member is releasably coupled via at least one fastener to the leading edge of the center body, and the modular tail cone member is releasably coupled via at least one (i.e., another) fastener to the trailing edge of the center body. In the present case, the first fastener [56] is considered as affixing the modular nose cone to the center body, and the second fastener [58] is considered as affixing the modular tail cone to the center body.
Applicant’s Arguments: Applicant has argued that Ware fails to disclose the modular nose cone as having a void space to house a fluid volume. The nose cone 46 of Ware is completely filled with critical components necessary for the device's operation (Fig 2), including bearing 70 held within end cap 46 by annular retaining member 72, thrust washer 74 abutting the end of armature shaft 30, the electrical resistance coil 110 positioned within cylindrical recess 122 in end cap 46, and insulating board 86 fixed to end cap 46 supporting brush holders 88 and 90 with spring-biased brushes 92 and 94 for contacting commutator means 82. There is no void space within end cap 46 available for housing a fluid volume because the interior is occupied by the bearing assembly, the resistance coil conforming to the walls of the recess, and the brush/commutator assembly.
Response: The nose cone has a recess [122] that accommodates a coil [110] (see Fig 3). Contrary to applicant's assertion, the critical components do not completely fill the entire space within the recess. The space within the nose cone that is not occupied by the coil or the shaft – i.e., the first space between a front vertical surface of the coil and a rear vertical face of the annular retaining member [72], as well as the second space between a rear vertical surface of the coil and a front vertical face the insulating board [86] – is considered to be the void space.
Applicant’s Arguments: Applicant has also argued that Ware does not disclose or suggest that a first tail cone member and a first nose cone member having a first profile are configured to be coupled to the center body for a first boating condition, and replaced on the center body with a second tail member and a second nose member having a different profile for a second boating condition. Ware's device is a submersible electric motor with fixed end caps designed to house electrical and mechanical components. Ware is not designed for modular replacement of nose and tail cones to suit different operating conditions.
Response: It is first noted that a use of the limitation “a first tail cone member" and "a first nose cone member" has rendered claim 1 indefinite because it is not sufficiently clear if such are same or different from the “modular tail cone member” and the “modular nose cone member” respectively. However, as best understood, the newly added limitations “a first tail cone member” and “a first nose cone member” are being interpreted as referring to the “modular tail cone member” and the “modular nose cone member”, respectively.
Further, as noted above in ¶5 of this Office action, the second tail member and the second nose member are not positively recited in the claim, and therefore interpreted in terms of a capability statement. In the present case, the modular tail cone member and the modular nose cone member can be replaced by a second tail member and second nose member having differently-shaped outer profiles, as long as such second tail and nose members each has a coupling edge/rim that is similar to a coupling edge/rim of the replaced modular tail and nose cone members respectively, thereby allowing a coupling with the trailing and leading edges of the center body.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marc Jimenez can be reached at 571-272-4530. 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
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