Claim Rejections - 35 USC § 112
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, 12, and dependents therein 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.
Applicant lacks possession of a “support configured to be pressed against said ear”, with the bone conduction device “adjustable between a first position forward of said ear, a second position below said ear, and a third position behind said ear”. Specifically, the elected embodiment of Fig. 4 is adjustable forward of said ear as illustrated, and behind said ear, as illustrated in Fig. 5 and described in [0069] and [0071 – 0072]. The elected embodiment is not adjustable below said ear, as evident by the description found in paras. [0071 – 0072], as well as comparison of Figs. 4 and 5, in which moving the bone conduction device from the forward to rearward positions causes the bone conduction device to pass over rather than below said ear. The support 90 in Fig. 4 would be pressed against the ear, as cited in claim 1, and thus the bone conduction transducer atop the support would be pressed against the ear as well. The support cannot press against the ear while simultaneously holding the perched bone conduction device below the user’s ear.
Paragraph [0009] of the instant specification states that the bone conduction transducer may be positioned in front of a user’s ear, below a user’s ear, or behind a user’s ear. The generic teaching of placement below the user’s ear, however, applies to the non-elected embodiment of Fig. 7, see para. [0075], as well as the aforementioned Fig. 4, paras. [0071 – 0072]. The non-elected embodiment to Fig. 7 is a cylinder mounted on the inflatable harness, rather than a support having a first end coupled to said inflatable tube and a second end coupled to said bone conduction device. Applicant lacks possession of such support holding the bone conduction device below said ear, because the second end coupled to said bone conduction device passes over the ear, as explained in the paragraph above.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 BRADLEY H PHILIPS whose telephone number is (571)270-5180. The examiner can normally be reached 8:00 - 5:00 M-F.
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/BRADLEY H PHILIPS/Primary Examiner, Art Unit 3799
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