***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 Objections
Claims 1-12 are objected to because of the following informalities:
37 CFR 152 requires claims (v) Presented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming processes and electronic capture by use of digital imaging and optical character recognition.
Applicant cannot submit in red with MS Word track changes, the Office’s OCR software cannot read it. (Yeah, I know, it’s 2026 and all, but it’s the system we have. Please tell your admin staff or whomever uploads the documents to convert the documents to black and white before uploading. You shouldn’t see gray type when the docs are in PAIR.) Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are
“an attachment” (synonymous with “means for attaching”, a nonce defined by its function of attaching with no standard meaning in this context).
“an actuator” (synonymous with “means for actuating”, a nonce defined by its function of attaching with no standard meaning in this context).
“a load detector” (synonymous with “means for detecting a load”, a nonce defined by its function of attaching with no standard meaning in this context).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 6 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.
Claim limitation “load detector” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. No corresponding is identified. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181. (You can probably use external evidence to establish knowledge in the art from Honda’s other work.)
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)(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.
Claims 1-5, 8, 10, 12 are rejected under 35 U.S.C. 102a1 as being anticipated by Broughton (US 11492088 B1).
Regarding Claim 1, Broughton discloses a vessel comprising: a hull; and an electric outboard motor, wherein the electric outboard motor comprises: an outboard motor body comprising a propeller and an electric motor configured to drive the propeller (C9, L53); and an attachment (Element 60) configured to attach the outboard motor body to a rear part of the hull, the vessel further comprising: a hull deck (Element 16) that overlaps at least a portion of the rear part of the hull in top view; and an outboard motor deck (Element 42)that is provided above the outboard motor body and that overlaps at least a portion of the outboard motor body in top view.
Regarding Claim 2, Broughton discloses a vessel according to claim 1, wherein the hull deck and the outboard motor deck are continuously adjacent to each other without an obstacle protruding, between the two decks, upward above an upper surface of the hull deck. (See Fig. 1. There are no obstacles between the two decks,)
Regarding Claim 3, Broughton discloses a vessel according to claim 1, wherein an upper surface of the hull deck and an upper surface of the outboard motor deck are flush with each other (See Fig. 3. They are “flush” in at least the context of decks.).
Regarding Claim 4, Broughton discloses a vessel according to claim 1, wherein the outboard motor deck is configured to be rotatable about a rotation axis, the rotation axis being located on one side of the outboard motor deck in top view. (Element 50, Fig. 6.)
Regarding Claim 5, Broughton discloses a vessel according to claim 4, wherein the attachment comprises an actuator (Element 74) configured to tilt the outboard motor body, and when the actuator tilts the electric outboard motor up, the electric outboard motor presses the outboard motor deck, thereby causing the outboard motor deck to rotate in conjunction with tilt up of the outboard motor body. (Fig 6.)
Regarding Claim 8, Broughton discloses a vessel according to claim 5, wherein in a state where the outboard motor body is not tilted up, an upper surface of the outboard motor body contacts a lower surface of the outboard motor deck. (See Fig. 3.)
Regarding Claim 10, Broughton discloses a vessel according to claim 1, wherein the outboard motor deck does not overlap the outboard motor body in side view as viewed in a vessel width direction. (See Fig. 1.)
Regarding Claim 12, Broughton discloses a vessel according to claim 1, wherein the outboard motor deck is configured to be rotatable about a front side thereof (Fig. 4.), and the bull deck extends to a rear of the front side along a side of the outboard motor deck. (Fig. 1.3)
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 9 isrejected under 35 U.S.C. 103 as being unpatentable over Broughton in view of Daikoku (US 20120115376 A1).
Regarding Claim 1, Broughton the vessel according to claim 1, but does not explicitly disclose wherein the outboard motor deck comprises a side wall protruding along a side of the outboard motor body, and the side wall overlaps at least a portion of an upper part of the outboard motor body in side view as viewed in a vessel width direction.
Daikoku discloses wherein the outboard motor deck comprises a side wall protruding along a side of the outboard motor body, and the side wall overlaps at least a portion of an upper part of the outboard motor body in side view as viewed in a vessel width direction. (See Fig. 1.) It would have been obvious at the time of filing for a person of ordinary skill in the marine art to add a sidewall such that the outboard motor deck comprises a side wall protruding along a side of the outboard motor body, and the side wall overlaps at least a portion of an upper part of the outboard motor body in side view as viewed in a vessel width direction which can be accomplished with a reasonable expectation of success. The motivation to modify Broughton as disclosed by Daikoku paragraph 67 is appearance as is “The engine case 100 also functions as an exterior member constituting the appearance of the outboard motor 10, and exhibits a solid appearance as a whole.”
Allowable Subject Matter
Claims 7 and 11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 6 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW POLAY whose telephone number is (408)918-9746. The examiner can normally be reached M-F 9-5 Pacific.
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, Joe Morano can be reached at 5712726684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW POLAY/Primary Examiner, Art Unit 3615 26 Sept 2026
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