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 .
Status of Claims
This is a Non-Final Rejection office action in response to application Serial No. 19/274,715. Claim(s) 1-16 have been examined and fully considered, and are pending in Instant Application.
Priority
Examiner acknowledges Applicant’s claim to priority benefits of JP2021-144772 filed 09/06/2021; and CIP of 17/885,594 filed 08/11/2022.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 07/21/2025 is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is/are being considered if signed and initialed by the Examiner.
Double Patenting
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.
Claim(s) 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. US 12386363B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the inventions for both applications are similar as claim(s) 1-4 of the instant application and claim(s) 1-4 are directed to similar limitations as presented below.
Regarding claim(s) 1 of the instant application, claim(s) 1 of U.S. Patent No. US 12386363B2 teaches:
A system for controlling a behavior of a watercraft, the system comprising:
a marine propulsion device including a trim shaft and that is pivotably attachable to the watercraft about the trim shaft;
an actuator to cause the marine propulsion device to perform a trim motion in a trim-up direction and a trim-down direction by causing the marine propulsion device to pivot about the trim shaft;
a pitch angle sensor to detect at least either of a pitch angle of the watercraft or an angular velocity of the pitch angle;
a trim angle sensor to detect a trim angle of the marine propulsion device; and
a controller communicably connected to the actuator and configured or programmed to:
obtain the at least either of the pitch angle of the watercraft or the angular velocity of the pitch angle;
obtain the trim angle of the marine propulsion device;
selectively set either the trim-up direction or the trim-down direction as a trim direction based on the trim angle of the marine propulsion device and at least either of the pitch angle of the watercraft or the angular velocity of the pitch angle; and
control the actuator to cause the marine propulsion device to perform the trim motion in the trim direction.
Regarding claim(s) 2 of the instant application, claim(s) 2 of U.S. Patent No. US 12386363B2 teaches:
wherein the controller is configured or programmed to:
calculate a parameter based on the trim angle of the marine propulsion device and at least either of the pitch angle of the watercraft or the angular velocity of the pitch angle, the parameter periodically varying during an occurrence of porpoising of the watercraft; and
selectively set either the trim-up direction or the trim-down direction as the trim direction based on the parameter.
Regarding claim(s) 3 of the instant application, claim(s) 3 of U.S. Patent No. US 12386363B2 teaches:
wherein the parameter periodically varies between a first value and a second value; and the controller is configured or programmed to:
set the trim-up direction as the trim direction when the parameter becomes the first value; and
set the trim-down direction as the trim direction when the parameter becomes the second value.
Regarding claim(s) 4 of the instant application, claim(s) 4 of U.S. Patent No. US 12386363B2 teaches:
wherein the controller is configured or programmed to control the actuator to cause the marine propulsion device to perform the trim motion in the trim direction when it is determined that the pitch angle or the angular velocity of the pitch angle periodically varies at about 0.1 Hz or greater.
Terminal Disclaimer
A terminal disclaimer may be effective to overcome a nonstatutory double patenting rejection over a reference patent (37 CFR 1.321(b) and (c)). 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. 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/PatentForms. The filing date of the application will determine what form 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/TerminalDisclaimer.
Potentially Allowable Subject Matter
Claim(s) 1-4 would be allowable when a Terminal Disclaimer is filed to overcome nonstatutory double patenting rejection, set forth in this Office action.
Allowable Subject Matter
Claim(s) 5-16 are allowed over the prior art of record.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claim(s) 5, the claim features below are rendered to be novel and non-obvious, in light of the prior art of record, in combination of either individually and/or dependently on other prior art which does not teach the claim features
the method comprising: obtaining at least either of a pitch angle of the watercraft and an angular velocity of the pitch angle; obtaining a trim angle of the outboard motor; selectively setting either the trim-up direction or the trim- down direction as a trim direction based on the trim angle of the outboard motor and at least either of the pitch angle of the watercraft and the angular velocity of the pitch angle; and controlling the actuator to cause the outboard motor to perform the trim motion in the trim direction.
With respect to claim(s) 13 the claim features below are rendered to be novel and non-obvious, in light of the prior art of record, in combination of either individually and/or dependently on other prior art which does not teach the claim features
a controller connected to the actuator in a communicable manner and being configured or programmed to: obtain at least either of the pitch angle of the watercraft and the angular velocity of the pitch angle; obtain the trim angle of the marine propulsion device; selectively set either the trim-up direction or the trim- down direction as a trim direction based on the trim angle of the marine propulsion device and at least either of the pitch angle of the watercraft and the angular velocity of the pitch angle; and control the actuator to cause the marine propulsion device to perform the trim motion in the trim direction.
Any comments considered necessary by applicant must be submitted no later
than the payment of the issue fee and, to avoid processing delays, should preferably
accompany the issue fee. Such submissions should be clearly labeled “Comments on
Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Prior art, Anschuetz (Patent No.: US 10,112,692 B1) teaches systems and methods of controlling trim position for a propulsion device on a marine vessel includes receiving a running trim position for the propulsion device, receiving at least one of a steering input value or a roll angle of the marine vessel, and determining a magnitude of the steering input value or a magnitude of the roll angle of the marine vessel.
Prior Art, Andrasko et al. (Patent No.: US 9, 919, 781) teaches systems and methods disclosed herein control position of a trimmable drive unit with respect to a marine vessel.
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/B.U./Examiner, Art Unit 3663
/ABBY J FLYNN/Supervisory Patent Examiner, Art Unit 3663
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