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 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) 1-12, 14 and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 756031; cited by Applicant) in view of Havins (US 5017165; cited by Applicant) and Tanner et al (US 2014/0183907). With respect to claimed 1, 10, 18, Lee discloses the basic claimed structure including a work boat (launch) with a hull and deck (inherently) with a bearing sleeve 9, a propeller with blades 13, first, second and third fins 10 (Figures 2-3; page 2, lines 56-67) including cutting blades 10a. Not disclosed by Lee is a lower outdrive assembly of an outboard drive assembly and the fin being mounted on the motor housing and side plates defining a channel into which a bracket may be inserted and fixed with grease bolt fasteners. However, Havins teaches a pair of drive lower outdrive assemblies of an outboard drive assembly and the fin being mounted on the motor housing (Figures 13-16; column 9, line 36-column 11, line 52) and an upper drive assembly and drive arm (Figures 13-16) and side plates 33 defining a channel into which a bracket may be inserted and fixed with fasteners (Figures 6, 14). Tanner et al teach a grease bolt 80. 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 Lee with a pair of lower outdrive assemblies of an outboard drive assembly and the fin being mounted on the motor housing and an upper drive assembly and drive arm and side plates with fasteners as taught by Havins with a high likelihood of success because such an arrangement would free up valuable space inside the hull and on the deck by positioning the drive outside the hull and provide greater ease of movement of the propeller vertically and improved fastening to the work boat and to form the fasteners as grease bolts as taught by Tannner et al with a high likelihood of success for improved reliability and durability via improved lubrication. The combinations combine known features to achieve predictable results. With respect to claims 2-7, 9-10, 12-15, note Lee, Figures 2-3; page 2, lines 56-67; Havins, Figures 6, 8, 14), It would have been an obvious choice of engineering design to a person of ordinary skill in the art before the effective filing date of the claimed invention to form the cutters with a pair of cutters for improved weed and debris cutting to result in a more reliable propeller system especially in shallow water. Note also that duplication of parts would not have been patentable. Further note that a person of ordinary skill in the art before the effective filing date of the claimed invention would have years of experience and advanced degrees. Such a person would have been familiar with various mounting and fastener systems and would have found the combination to have been obvious. With respect to claim 8, it would have been an obvious choice of engineering design to a person of ordinary skill in the art before the effective filing date to form the bolt of ¾ inch for improved durability.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 756031; cited by Applicant) in view of Havins (US 5017165; cited by Applicant) and Tanner et al (US 2014/0183907), as applied to claim 1 above, and further in view of Molotzak (US 3808998; cited by Applicant). Not disclosed by Lee is a bow work tool. However, Molotzak teaches a bow work tool (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 Lee with a bow work tool as taught by Molotzak with a high likelihood of success because such an arrangement would help to free up debris and provide greater ease of movement of the boat through the water. The combination combines known features to achieve predictable results. Note that a person of ordinary skill in the art before the effective filing date of the claimed invention would be familiar with various work tool mounts for boats and would have found the combination to have been obvious.
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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11840321 and over claims 1-16 of U.S. Patent No. 12145704 both in view of Tanner et al (US 2014/0183907). 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 the claims 11840321 and 12145704 with grease bolts fasteners as taught by Tannner et al with a high likelihood of success for improved reliability and durability via improved lubrication. The combinations combine known features to achieve predictable results.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Provost (US 2004/0180588) shows 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.
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STEPHEN AVILA
Primary Examiner
Art Unit 3617
/STEPHEN P AVILA/ Primary Examiner, Art Unit 3615
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