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 § 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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Claim(s) 1-6, 9, 12-15 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Takada et al. (US20030224672A1).
Regarding claim 1, Takada et al. discloses an outboard motor comprising:
a first drive source 16;
a drive shaft 80 to transmit power from the first drive source;
an upper case (rear portion of case 62 as shown by the dotted lines) accommodating a drive shaft housing that accommodates a portion of the drive shaft;
a shift actuator including a second drive source 42;
a cover to cover at least a portion of the shift actuator (respectively front portions of both extension case 62 and gear case 82 as shown by the dotted lines); and
a forward-reverse switching mechanism 94 to switch a rotation direction of the power transmitted from the drive shaft to the propeller shaft by an output from the shift actuator; wherein
the second drive source 42 is located outside a cowl 18 accommodating the first drive source, outside a lower case 82 accommodating the forward-reverse switching mechanism 90, and outside the drive shaft housing.
Please note that without further limitation, the rear of upper case 62 can be interpreted as the drive shaft housing, and the second drive source 42 is outside of the drive shaft housing.
Regarding claim 2, Takada et al. discloses the invention as claimed as detailed above with respect to claim 1. Takada et al. also teaches the second drive source 42 is forward of the drive shaft housing in a front-rear direction of the outboard motor.
Regarding claim 3, Takada et al. discloses the invention as claimed as detailed above with respect to claim 1. Takada et al. also teaches wherein the second drive source 42 is closer to a lower mount 58 than to an upper mount (upper portion of mount frame 56 as shown by the dotted lines) that support a main body of the outboard motor.
Regarding claim 4, Takada et al. discloses the invention as claimed as detailed above with respect to claim 1. Takada et al. also teaches:
a shift cam 112 to transmit the output from the shift actuator 42 to the forward-reverse switching mechanism 94
wherein the shift actuator 42 includes an output shaft 90 to output a rotational force
And the forward-reverse switching mechanism 90 is drivable by the shift cam 112 being rotated by the rotational force of the output shaft to switch the rotation direction of the power transmitted from the drive shaft 80 to the propeller shaft 84
Regarding claim 5 Takada et al. discloses the invention as claimed as detailed above with respect to claim 4. Takada et al. also teaches wherein the output shaft 90 extends from inside the upper case 62 to outside the upper case 62.
Regarding claim 6, Takada et al. discloses the invention as claimed as detailed above with respect to claim 4. Takada et al. also teaches wherein the output shaft is outside the drive shaft housing.
Regarding claim 9, Takada et al. discloses the invention as claimed as detailed above with respect to claim 1. Takada et al. also teaches wherein the shift actuator 42 is fixed to the upper case 62.
Regarding claim 12, Takada et al. discloses the invention as claimed as detailed above with respect to claim 1. Takada et al. also teaches wherein the cover includes a plurality of parts (respectively front portions of both extension case 62 and gear case 82 as shown by the dotted lines).
Regarding claim 13, Takada et al. discloses the invention as claimed as detailed above with respect to claim 1. Takada et al. also teaches wherein the cover (respectively front portions of both extension case 62, and gear case 82 as shown by the dotted lines) is fixed to the upper case 18.
Regarding claim 14, Takada et al. discloses the invention as claimed as detailed above with respect to claim 13. Takada et al. also teaches:
a lower mount 58 and an upper mount (upper portion of 56 as shown by the dotted lines) that support a main body of the outboard motor;
an apron (back portions of extension case 62 as shown by the dotted lines) that covers at least a portion of the lower mount 58; wherein
the cover is fixed to the apron (back portions of extension case 62 as shown by the dotted lines).
Regarding claim 15, Takada et al. discloses the invention as claimed as detailed above with respect to claim 1. Takada et al. also teaches:
a lower mount 58 and an upper mount (upper portion of 56 as shown by the dotted lines) that support a main body of the outboard motor; wherein
the cover includes a stepped portion below the lower mount 58;
and the stepped portion includes a clearance portion to avoid interference of the cover with the lower mount 58.
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:
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[AltContent: textbox (Figure 2- Takada et al. Figure 3)][AltContent: oval]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(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takada et al. 20030224672A1).
Regarding claim 7, Takada et al. discloses the invention as claimed as detailed above with respect to claim 4. Takada et al. also discloses wherein at least a portion of the output shaft is inside the upper case 62; but does not teach that an opening is provided in the upper case such that the output shaft is able to be manually rotated through the opening.
Takada et al. teaches in another section an opening (detachable protective cover 78) is provided in the upper case 18 such that the output shaft (knob 76) is able to be manually rotated through the opening.
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[AltContent: textbox (Figure 3- Davenport et al. Figure 2)][AltContent: oval][AltContent: oval][AltContent: oval]It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the upper case with an opening to allow the output shaft to be manually rotated as taught by another section of Takada et al. in order to allow manual control by an operator to perform tasks such as adjusting the shift position and/or to improve the aesthetic appearance of the device.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takada et al. (US20030224672A1) in view of Davenport et al. US9180950.
Regarding claim 8, Takada et al. discloses the invention as claimed as detailed above with respect to claim 1. Takada et al. does not teach wherein the second drive source is outside a casing of the outboard motor.
Davenport et al. teaches an outboard motor wherein select components (those within service tray 121) are located outside a main casing 100 of the outboard motor via a top cover 120 which covers service area 119 and cap 121.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the casing of the outboard motor as taught by Takada by adding a removable part to access the internal components inside a separate compartment as taught by Davenport et al. in order to make an actuator easily accessible to improve maintainability and/or to improve the aesthetic appearance of the device.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takada et al. (US20030224672A1) in view of Inaba (US20100167604A1).
Regarding claim 11, Takada et al. discloses the invention as claimed as detailed above with respect to claim 10 Takada et al. also discloses that the invention further comprising a lower mount 58 and an upper mount (upper portion of 56) that support a main body of the outboard motor; but does not teach wherein the cover covers at least a portion of the lower mount.
Inaba teaches an outboard motor comprising:
a first drive source E;
a drive shaft 10 to transmit power from the first drive source E;
an upper case 7 accommodating a drive shaft housing that accommodates a portion of the drive shaft 10;
a propeller shaft 11 rotationally drivable by power transmitted from the drive shaft;
a shift actuator including a second drive source 36; and
a forward-reverse switching mechanism 35 to switch a rotation direction of the power transmitted from the drive shaft 10 to the propeller shaft 11 by an output from the shift actuator;
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[AltContent: textbox (Figure 4- Inaba Figure 1)][AltContent: oval][AltContent: oval][AltContent: oval][AltContent: oval]wherein the second drive source 36 is located outside a cowl accommodating the first drive source E, outside a lower case accommodating the forward-reverse switching mechanism 35, and outside the drive shaft housing; and
further comprising a lower mount and an upper mount (upper and lower portions of 23 and 24) that support a main body of the outboard motor; wherein the cover (front portion of 7) covers at least a portion of the lower mount.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the front portion of the upper case of Takada to cover the portion of the lower mount as taught by Inaba in order to provide additional protection for the lower mount from exposure to the elements, and/or to improve the aesthetic appearance of the device.
Response to Arguments
Applicant's arguments filed 22 July 2026 have been fully considered but they are not persuasive.
Applicant argues the following:
“With respect to Applicant's claim 10, the features of which have been incorporated into claim 1 herein, the Examiner alleged that the front portions of the upper case 62 and the lower case 82 of Takada define a cover for the shift actuator 42. However, Applicant's recited cover is a separate and distinct element from Applicant's recited upper case and lower case. Accordingly, the upper case 62 and the lower case 82 of Takada cannot also correspond to Applicant's recited cover.”
“The Examiner relied upon Davenport and Inaba to allegedly cure the deficiencies of Takada. However, Davenport and Inaba also fails to teach or suggest the features of Applicant's claim 1 discussed above. Thus, Applicant respectfully submits that Davenport and Inaba fails to cure the deficiencies of Takada described above.”
In response to applicant’s argument of their recited cover is a separate and distinct element. The applied reference, Takada et al. (US20030224672A1), anticipates the claimed invention as set forth in the rejection supra (as the cover, mapped respectively front portions of both extension case 62 and gear case 82, covers at least a portion of shift actuator 42). Therefore, the rejection under 35 U.S.C 102(a)(2) as being anticipated by Takada et al. (US20030224672A1) is maintained and remains in full force. It should be noted the rejection also covers claims 12-15 as they were previously dependent on the present canceled claim 10 and to the amended claim 1.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, in regard to claim 11 however, Inaba teaches a
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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 MICHAEL KENNETH P FIGUEROA whose telephone number is (571)270-0397. The examiner can normally be reached 0800-1700.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marc Jimenez can be reached at 5712724530. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL KENNETH POTICANO FIGUEROA/Examiner, Art Unit 3615
/MARC BURGESS/Primary Patent Examiner, Art Unit 3615
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