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 .
Response to Arguments
Applicant's arguments filed 05/26/26 have been fully considered but they are not persuasive.
On page 8 Applicant argues against the “claim structure”, referencing an appeal decision 09/015146 made 11/27/2024.
The Examiner respectfully notes that no 112f or claim interpretation has been put on the record. The Examiner also notes there are no appeals related to the instant application, making this statement unclear.
On pages 8-9 regarding claim priority, Applicant argues the amened claims have priority to 12/01/2014, arguing that “by necessity an earpiece must have an ambient microphone, a speaker, a memory, and a processor” and argues the provisional application discloses a hearing aid that has an ASM.
The Examiner respectfully disagrees, noting nothing in the record which supports Applicant’s statement that an earpiece “must have” the recited elements. This is accordingly unpersuasive. Further, statements regarding a hearing aid are unclear, since there is no hearing aid in the claimed invention.
On page 9 regarding claim, specification, and drawing objections Applicant argues amendments overcome objections of record.
The Examiner respectfully agrees and withdraws claim, drawing, and specification objections which were addressed.
On page 10 regarding 12 rejections, Applicant argues amendments overcome the 112 rejections of record.
The Examiner respectfully agrees and withdraws 112 rejections.
On pages 10-11 regarding prior art rejections, Applicant argues amendments are made to ensure the application has support back to 12/01/2014, meaning Usher cannot be used as prior art, since it has a priority date of 03/10/2018.
The Examiner respectfully disagrees, noting the claim still includes reference to an earpiece comprising a speaker, ambient sound microphone, memory, and processor which the originally filed disclosure still has no support to. The instant claims accordingly still have a priority to 06/30/2021, making this unpersuasive.
Priority
Claims 1-13 have priority to their filing date: 06/30/21 since the parent applications fail to have support for the independent claim, including:
an earpiece comprising a speaker, the earpiece comprising an ambient sound microphone, and a memory and processor being part of the earpiece.
Drawings
The drawings are objected to because item 15 is used to designate both “bend” and “curvature profile”
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Usher et al. (US 20190278556 A1) hereinafter known as Usher in view of Couvillion (US 20030236445 A1).
Regarding claim 1 Usher discloses an earpiece ([0037]) comprising;
a speaker ([0037], [0032]),
an ambient sound microphone ([0037]),
and a stem ([0046], Figure 9 item 970),
but is silent with regards to two contraction/expansion elements embedded within the stem, and a memory and processor that signal the first element to contract/expand to bend the stem.
However, regarding claim 1 Couvillion teaches that medical devices can include a contraction/expansion first element and a contraction/expansion second element (Figure 1 item 12 (Fig 6a-e items 610, 612) indicate the presence of at least one electroactive polymer (EAP) in the active member within each actuator; and also indicate there can be many actuators) which are embedded in the device (Figures 6a-e; [0057]-[0058] the actuators are embedded within the device),
and a memory that stores instructions ([0008]), with a processor ([0014]) that executes the instructions to send a signal to the first element so that the first element contracts or expands bending the device (Abstract; [0036], [0038]). Usher and Couvillion are involved in the same field of endeavor, namely medical devices which traverse tortuous lumens. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the earpiece of Usher so that it’s stem includes contraction/expansion elements which enable the stent to bend such as is taught by Couvillion in order to provide the stem a way to traverse tortuous lumens into which it is implanted, such as an ear canal.
Regarding claim 2 the Usher Couvillion Combination teaches the earpiece of claim 1 substantially as is claimed,
wherein Usher further teaches the instructions include sending a signal to the second element so it contracts or expands, resulting in bending the device [stem] ([0008]; Abstract).
Regarding claim 3 the Usher Couvillion Combination teaches the earpiece of claim 2 substantially as is claimed,
wherein Couvillion further teaches a sensor coupled to the [device] ([0083]), wherein the sensor is configured to determine a distance of the stem from a wall of a tubular structure when inserted therein (this is stated as a functional limitation of the sensor (see the explanation above). See also [0082]-[0087]).
Regarding claim 4 the Usher Couvillion Combination teaches the earpiece of claim 3 substantially as is claimed,
wherein Usher further discloses the tubular structure is an ear canal of a user (This is stated as an “intended use” of the claimed device. The applicant is advised that a recitation of the intended use of an invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02 (II). In this case, the patented structure of Usher was considered capable of performing the cited intended use. See, for example Figure 11 which shows the stem within the ear canal).
Regarding claim 5 the Usher Couvillion Combination teaches the earpiece of claim 4 substantially as is claimed,
wherein Usher further discloses the instructions include receiving a microphone signal ([0078]).
Regarding claim 6 the Usher Couvillion Combination teaches the earpiece of claim 5 substantially as is claimed,
wherein Usher further discloses the instructions include sending an audio signal to the speaker ([0082]).
Claims 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Usher and Couvillion as is applied above, further in view of Applicant’s Admitted Prior Art ("Artificial Muscles from Fishing Line and Sewing Thread", Carter S. Haines et al., Science 343, 868 (2014)), hereinafter known as AAPA.
Regarding claim 8 the Usher Couvillion Combination teaches the earpiece of claim 6 substantially as is claimed,
wherein Couvillion further teaches the first element is composed of polymer ([0034]),
but is silent with regards to the polymer being twisted and the expansion/contraction being controlled by heating.
However, regarding claim 8 AAPA teaches expanding/contracting elements which can be twisted polymer which is controlled by heating (page 869 column 1; twisted/coiled fibers; page 870 column 2 electrothermically driven muscles with an electrical heating element). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the expansion/contraction element material as is taught by AAPA it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. See MPEP 2144.07. Further, the courts have held that choosing from a finite number of identified, predictable solutions with a reasonable expectation of success results in a prima facie case of obviousness. See MPEP 2143 (I)(E). The Examiner understands any actuatable material obvious to try.
Regarding claim 9 the Usher Couvillion Combination teaches the earpiece of claim 8 substantially as is claimed,
wherein AAPA further teaches the twisted first element is further composed of conductive thread (page 870 column 2 electrical heating element with metal-coated sewing thread).
Regarding claim 10 the Usher Couvillion Combination teaches the earpiece of claim 9 substantially as is claimed,
wherein Couvillion further teaches the first element’s expansion and contraction are controlled by the processor sending current through the [actuator] ([0036], [0038]).
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 Jacqueline Woznicki whose telephone number is (571)270-5603. The examiner can normally be reached M-Th 10am-6pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jerrah Edwards can be reached on 408-918-7557. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jacqueline Woznicki/Primary Examiner, Art Unit 3774 06/08/26
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