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 Amendment
Claim 5 is withdrawn.
Claims 6-15 are cancelled.
In view of the amendment, filed on 12/10/2025, the following objections/ rejections are withdrawn from the previous office action, mailed on 09/10/2025.
Objection to claims 21-22
Rejection of claims 16, 19, and 26 under 35 U.S.C. 112(b)
Rejection of claims 1-2 and 16-26 under 35 U.S.C. 102(a)(1) / (a)(2) as being anticipated by Hermann (US 5,146,051)
New Grounds of the Rejections
Claim Objections
Claims 19 and 27 are objected to because of the following informalities:
Amended claim 19, in 3rd line, after “an extension direction of the” and prior to “profiled section”, should be inserted --at least one non-detachable-- for the purpose of the claim language consistency.
New claim 27, in 11th line, recites “the produced ear piece (100)” wherein it needs to be modified as to “the ear piece (100)” for the claim language consistency as prior to the cited limitation, claim 27, in 1st line, recites “an ear piece (100)”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4 and 16-26 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Amended claim 1 recites “the inner surface (10) comprises at least one non-detachable profiled section (20)” which was not described in the specification. Even though the specification, in page 2, line 24; page 4, line 24; and page 5, line 11 recites “a casting form” have a “particular profiled section”, specification or disclosure of the invention does not describe that the inner surface of the casting form necessarily comprises “at least one non-detachable profiled section”. As a result, claim 1 contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor. Therefore, claim 1 fails to comply with the written description requirement.
It should also be noted that according to case law that “negative limitations in the claims must have explicit support in the specification to satisfy the description requirement of 35 USC 112, In re Grasselli, 231 USPQ 393.
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 27 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.
New claim 27 recites the limitation of “the generation of an ear piece” in first line. There is insufficient antecedent basis for this limitation in the claim because prior to the citation, claim 27 fails to define “a generation of an ear piece”.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or non-obviousness.
Claim(s) 1-4 and 16-27 are rejected under 35 U.S.C. 103 as being unpatentable over Hermann (US 5,146,051).
Hermann (US ‘051) discloses a form (5) and a housing shell (18) which anticipates the claimed subject matter of the instant application as shown in the following annotated figures:
[AltContent: textbox (A flexible silver (11))][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (A casting form)]
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[AltContent: textbox (An inner surface and inner volume (10))][AltContent: textbox (At least one texturing element (14, 15))]
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102
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[AltContent: arrow][AltContent: arrow][AltContent: textbox (A non-contact section (20))][AltContent: arrow][AltContent: textbox (A contact section )][AltContent: textbox (An ear piece (18))][AltContent: arrow]
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144
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[AltContent: textbox (Structural element (19) which is in the shape of a burl, a groove, a bar, a recess, or a cavity)][AltContent: arrow][AltContent: arrow][AltContent: arrow]
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As to claim 1, Hermann (US ‘051) discloses a casting form (see the above annotated fig. 3) for the generation of an ear piece (a housing shell 18, col. 5, line 4), wherein the ear piece (18) comprises a contact section (see annotated fig. 5) and a non-contact section (casting rest 20, col. 5, line 17), characterized in that the casting form (the annotated fig. 3) comprises an inner surface (a cavity 10, col. 4, line 28) delimiting an inner volume (10) for receiving a casting material, wherein the inner volume (10) is at least a part of the contact section (see annotated fig. 5), wherein the inner surface (10) comprises at least one profiled section (a flexible silver 11, col. 4, lines 35-56) comprising at least one texturing element (a plurality of small spheres 14, beads or the like and detents or bays 15 between the spheres or balls 14, see col. 4, lines 37-51), wherein the at least one texturing element (14, 15) generates at least one structure element (channel 19, col. 5, lines 15-28) in the produced ear piece (18), wherein the at least one structure element (channel 19, col. 5, lines 15-28) is a burl, a groove, a bar, a recess, or a cavity. However, Hermann (US ‘051) is silent on disclosing that the profiled section (a flexible silver 11, col. 4, lines 35-56) in the inner surface (a cavity 10, col. 4, line 28) of the casting form is necessarily non-detachable, as claimed in claim 1.
It would have been obvious for one of ordinary skill in the art, prior to the time of the invention, to modify the profiled section (a flexible silver 11) of Hermann (US ‘051) through forming a non-detachable profiled section in the inner surface (10) of the casting form since it has been held that making in one piece an article which has formerly been formed in multiple pieces involves only routine skill in the art. One would have been motivated to form
a non-detachable profiled section in the inner surface (10) of the casting form in order to easier manufacture of in-the-ear hearing aid through providing a more secure mold release of the hardened part of the housing shell.
As to claim 2, Hermann (US ‘051) teaches the inner volume (a cavity 10, col. 4, line 28) extends along a central axis, wherein the at least one texturing element (a plurality of small spheres 14, beads or the like and detents or bays 15 between the spheres or balls 14, see col. 4, lines 37-51) protrudes towards the central axis into the inner volume (a cavity 10, col. 4, line 28). (see the above annotated Figs. 3-4)
Hermann (US ‘051) further discloses the channel for the ventilation or the venting channel can be generated in one step with the casting or molding of the blank of the housing shell. Thereby, this channel or several such channels corresponding to the space available, for the hearing aid can be laid out as desired in the negative form and adjusted. The spatial conditions, the size of the vent (channel length, channel course and channel diameter) can already be taken into consideration in the negative form and varied, i.e. the channel location, channel size, channel shape, etc can already be determined in the negative form. (See col. 3, lines 16-27) Hermann (US ‘051) is silent that the at least one texturing element (14, 15; see col. 4, lines 37-51) has a height (32) and/or a width and/or a length of at least 25 μm, as claimed in claim 3. However, it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a cause effective variable such as a height and/or a width and/or a length of the texturing element (14, 15; see col. 4, lines 37-51) through routine experimentation in the absence of a showing of criticality in the claimed size. Further, Hermann (US ‘051) discloses the advantages of providing the texturing element (14, 15; see col. 4, lines 37-51) with such physical properties in order to form a uniform wall thickness of the channel relative to the housing shell. (see col. 3, lines 27-29)
Hermann (US ‘051) is silent on disclosing that the at least one profiled section (a flexible silver 11, col. 4, lines 35-56) is comprised or consisting of a material for 3D printing, as claimed in claim 4. However, it would have been obvious for one of ordinary skill in the art, prior to the time of Applicant’s Invention, to alter the at least one profiled section (20), as disclosed by Hermann (US ‘051), to be comprised or consist of a material for 3D printing as the patentability of a product does not depend on its method of production (see In re Pilkington, 162 USPQ 145, 147 and In re Thorpe, 227 USPQ 964 (CAFC 1985)) and the determination of patentability is based on the product apparatus itself (see In re Brown, 173 USPQ 685, 688). See MPEP 2113.
As to claim 16, Hermann (US ‘051) discloses the material for 3D printing is capable of being a cured photoreactive material for 3D printing as the material or article worked upon does not limit apparatus claims. See MPEP 2115.
As to claim 17, Hermann (US ‘051) discloses the formed burls or cavities (channel 19) have circular cross sections. (See col. 5, lines 15-28 and Figs. 5-6)
As to claim 18, Hermann (US ‘051) discloses the formed grooves (channel 19) or the bar (a thread12) comprises an elongated cross section. See col. 5, lines 13-28 and Figs. 5-6.
As to claim 19, Hermann (US ‘051) teaches the bar (a thread 12, col. 4, lines 38-59) has an elongated cross section (see annotated Fig. 5) that extends along a circumferential direction of the contact section or along an extension direction of the profiled section (a flexible silver 11, col. 4, lines 35-56). See annotated Figs. 5-6.
As to claim 20, Hermann (US ‘051) discloses the cavity (the generated channel 19; col. 5, lines 14-25) is a depression. See annotated Figs. 5-6.
As to claim 21, Hermann (US ‘051) teaches the at least one structure element (19; col. 5, lines 14-25) is selected from the group consisting of the burl, the cavity, the groove (channel 19) and the bar (a core or metal thread 12; col. 4, lines 38-59). See annotated Figs. 3-4.
As to claim 22, Hermann (US ‘051) discloses the at least one structure element (generated channel 19; col. 5, lines 14-25) is selected from the group consisting of the burl, the cavity, and the bar. See annotated Figs. 3-4.
As to claim 23, Hermann (US ‘051) teaches the profiled section (a flexible silver 11; col. 4, lines 27-34) comprises a plurality of equal structure elements (channel 19, col. 5, lines 15-28). See annotated Figs.
As to claim 24, Hermann (US ‘051) discloses the profiled section (a flexible silver 11; col. 4, lines 27-34) comprises a plurality of structure elements (channel 19, col. 5, lines 15-28), wherein one structure element (channel 19, col. 5, lines 15-28) differs in at least one property from at least one other structure element of the plurality of structure elements. See annotated Figs. 4-5.
As to claim 25, Hermann (US ‘051) discloses the profiled section (a flexible silver 11; col. 4, lines 27-34) comprises a plurality of lamellas. See Fig. 4.
As to claim 26, Hermann (US ‘051) teaches the texturing element (
a plurality of small spheres 14, beads or the like and detents or bays 15 between the spheres or balls 14, see col. 4, lines 37-51) generates the at least one structure element (channel 19, col. 5, lines 15-28) is capable of: increasing a user’s convenience when the ear piece is positioned in the user’s ear; improving ventilation of the user’s ear when the ear piece is positioned in the user’s ear; improving sealing of the ear piece when the ear piece is positioned in the user’s ear; providing noise control when the ear piece is positioned in the user’s ear; or decreasing a water intake into the ear of the user when the ear piece is positioned in the user’s ear. All the above limitations are directed to “intended use” of the at least one claimed structural element of the texturing element. It is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). The manner or method in which a machine is to be utilized is not germane to the issue of patentability of the machine itself, In re Casey 152 USPQ 235.
As to claim 27, Hermann (US ‘051) discloses a casting form (see the above annotated fig. 3) for the generation of an ear piece (a housing shell 18, col. 5, line 4), wherein the ear piece (18) comprises a contact section (see annotated fig. 5) and a non-contact section (casting rest 20, col. 5, line 17), characterized in that the casting form (the annotated fig. 3) comprises an inner surface (a cavity 10, col. 4, line 28) delimiting an inner volume (10) for receiving a casting material, wherein the inner volume (10) is at least a part of the contact section (see annotated fig. 5), wherein the inner surface (10) comprises at least one profiled section (a flexible silver 11, col. 4, lines 35-56) comprising at least one texturing element (a plurality of small spheres 14, beads or the like and detents or bays 15 between the spheres or balls 14, see col. 4, lines 37-51), wherein the at least one texturing element (14, 15) generates at least one structure element (channel 19, col. 5, lines 15-28) in the produced ear piece (18), wherein the at least one structure element (channel 19, col. 5, lines 15-28) is a burl, a groove, a bar, a recess, or a cavity.
Hermann (US ‘051) is silent on disclosing that the at least one profiled section (a flexible silver 11, col. 4, lines 35-56) is comprised or consisting of a material for 3D printing.
However, it would have been obvious for one of ordinary skill in the art, prior to the time of Applicant’s Invention, to alter the at least one profiled section (20), as disclosed by Hermann (US ‘051), to be comprised or consist of a material for 3D printing as the patentability of a product does not depend on its method of production (see In re Pilkington, 162 USPQ 145, 147 and In re Thorpe, 227 USPQ 964 (CAFC 1985)) and the determination of patentability is based on the product apparatus itself (see In re Brown, 173 USPQ 685, 688). See MPEP 2113.
Response to Arguments
Applicant's arguments, filed on 12/10/2025, have been fully considered but they are not persuasive.
Applicant’s main remark relies on argument that contrary to Hermann, claimed invention includes a “casting form (1) comprises an inner surface (10) …, wherein the inner surface (10) comprises at least one non-detachable profiled section (20) comprising at least one texturing element (30)”. See remarks: page 7, second paragraph.
This is not found persuasive. As it has been also explained in the body of the rejection above, even though Hermann (US ‘051) is silent on disclosing that the profiled section (a flexible silver 11, col. 4, lines 35-56) in the inner surface (a cavity 10, col. 4, line 28) of the casting form is necessarily non-detachable, as claimed in claim 1. It would have been obvious for one of ordinary skill in the art, prior to the time of the invention, to modify the profiled section (a flexible silver 11) of Hermann (US ‘051) through forming a non-detachable profiled section in the inner surface (10) of the casting form since it has been held that making in one piece an article which has formerly been formed in multiple pieces involves only routine skill in the art. One would have been motivated to form
a non-detachable profiled section in the inner surface (10) of the casting form in order to easier manufacture of in-the-ear hearing aid through providing a more secure mold release of the hardened part of the housing shell.
Applicant argues that Hermann describes “beads or the like”, “spheres” and “small balls” and corresponding “detents” and “bays” in between the spheres/beads/balls, wherein the detents or bays enable flexibility of the silver. However, in and of themselves, they do not generate a structure element. This is contrary to claim 1, which recites: “wherein the at least one texturing element (30) generates at least one structure element (140) in the produced ear piece (100) or the part of the ear piece (100)”. In view of such, Hermann does not anticipate the claimed invention. (see page 7, 4th paragraph)
This is not found persuasive. As it can be seen in figure 3 of Hermann, a flexible silver 11, as to claimed at least profiled section, is part of the form that generates at least a channel 19, as to claimed structural element, in the produced ear piece 18 wherein as it can be seen in figures 5-6, the elements that form the channel 19 have a shape that can be considered in the shape of a burl, a groove, a bar, a recess, or a cavity. It should be noted that the claimed subject matter does not provide any further details on defining a specific structure for the claimed burl, groove, bar, recess, or cavity. Therefore, in absence of further claimed details, Hermann fully discloses the claimed subject matter of the at least one texturing element (14, 15) generates at least one structure element (channel 19, col. 5, lines 15-28) in the produced ear piece (18), wherein the at least one structure element (channel 19, col. 5, lines 15-28) is a burl, a groove, a bar, a recess, or a cavity.
Applicant also argues “Applicant fails to see where Hermann describes “a plurality of lamellas”, as recited in claim 25, nor does applicant find where Hermann describes the defined functions of the texturing element which generates the structural element, as recited in claim 26.” (see page 7, 4th paragraph)
This is not found persuasive. First, regarding claim 25, similar to the above discussion, channel 19 formed by a flexible silver (11) have a shape that can be considered in the shape of lamellas (See Figs. 5-6), in absence of any further claimed details regarding the claimed lamellas. Second, in respect to the arguments regarding claim 26, the limitations are directed to “intended use” of the at least one claimed structural element of the texturing element. It is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). The manner or method in which a machine is to be utilized is not germane to the issue of patentability of the machine itself, In re Casey 152 USPQ 235.
In respect to applicant’s arguments regarding claim 3, the arguments are not found persuasive because as it has been defined above in the body of the rejection, even though Hermann (US ‘051) is silent that the at least one texturing element (14, 15; see col. 4, lines 37-51) has a height (32) and/or a width and/or a length of at least 25 μm, as claimed in claim 3, it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a cause effective variable such as a height and/or a width and/or a length of the texturing element (14, 15; see col. 4, lines 37-51) through routine experimentation in the absence of a showing of criticality in the claimed size. Further, Hermann (US ‘051) discloses the advantages of providing the texturing element (14, 15; see col. 4, lines 37-51) with such physical properties in order to form a uniform wall thickness of the channel relative to the housing shell. (see col. 3, lines 27-29)
Finally, after a full review of the submitted remarks in view of prior art rejections, it has been concluded that there are differences in interpreting the claimed subject matter and the cited references between the Applicant and the Office. Therefore, Examiner would like to suggest that if Applicant’s Counsel believes an interview can benefit the prosecution of the instant application, Applicant’s Counsel is kindly invited to contact the undersigned examiner.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 SEYED MASOUD MALEKZADEH whose telephone number is (571)272-6215. The examiner can normally be reached M-F 8:30AM-5:00PM.
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, SUSAN D. LEONG can be reached at (571)270-1487. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEYED MASOUD MALEKZADEH/Primary Examiner
Art Unit 1754 04/02/2026