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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-7 and 11-12 is/are rejected under 35 U.S.C. 102(a)(2) as being clearly anticipated by Onoue (US 5088945; cited by Applicant). With respect to claims 1, 11-12, Onoue discloses the claimed outboard propulsion system with a first portion having an engine 43 with crankshaft 63, a second portion with at least one propeller shaft 109 with a longitudinal axis along the elongated length of the at least one propeller shaft, a fixing mechanism (including 35, 37, 39) configured to attach the first portion to the stern of a boat, with the at least one propeller shaft connected to the crankshaft via at least one drive shaft, the drive shaft having a drop shaft 97 with the drop shaft being substantially perpendicular to the at least one propeller shaft, with the second portion able to pivot relative to the first portion about a steering axis (at 51), the steering axis intersecting the longitudinal axis of the at least one propeller shaft at an angle between and including 90 and 180 degrees (Figures 4-5), and the first portion and the second portion able to tilt together about a single axis of rotation (at pin 37) substantially parallel to the stern of the boat and the first portion being fixed about a substantially vertical axis (Figure 4). With respect to claims 2-5, note Onoue, shaft 91 and Figures 3-4. With respect to claims 6-7, note Onoue, transmission area at transmission bellows 88.
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(s) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Onoue (US 5088945; cited by Applicant) in view of Stevens (US 4355986; cited by Applicant). With respect to claims 9-10, Onoue does not disclose the claimed angle. Stevens teaches the claimed angle (note the Figure, shafts 69, 73) for considerably reduced height of the outboard motor (column 3, last paragraph). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to form the device of Onoue with the claimed angle as taught by Stevens with a high likelihood of success for considerably reduced height of the outboard motor. The combination combines known features to achieve predictable results.
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 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12129004. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are encompassed by the patented claims. Note in particular claims 1 and 2 of 12129004.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Beachy Head (US 2012/0329346) show a marine drive.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN AVILA whose telephone number is (571)272-6678. The examiner can normally be reached Mon-Thu 6-4.
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 Q. 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
STEPHEN AVILA
Primary Examiner
Art Unit 3617
/STEPHEN P AVILA/Primary Examiner, Art Unit 3615
Prosecution Insights