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 .
DETAILED ACTION
This is in response to Applicants Request for Reconsideration filed 12/5/25 which has been entered. No claims have been amended. No Claims have been cancelled. No Claims have been added. Claims 1-5 are still pending in this application, with Claim 1 being independent and claims 6-13 being withdrawn.
Claim Rejections - 35 USC § 103
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) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ho US Publication No. 20150023541 in view of Yang US Publication No. 20140286521, Matsumura US Publication No. 20210377644, and Azmi et al. US Publication No. 20140205131.
Referring to claim 1, Ho teaches an acoustic device to be worn on an ear for use (Figs. 8-10: in ear headphone 1’), the acoustic device comprising: a nozzle (Fig. 9: main body 10’) having a transducer installed therein, the transducer serving as a sound source (Fig. 10: speaker 30 installed in main body 10’); and wherein when the acoustic device is worn on the ear with a distal end of the nozzle inserted into an earhole (para 0021: “The contour of the ear pad 20 conformingly contacts the listener's ear canal.” – Examiner notes that when the contour of earpad 20 contacts the ear canal, the adjacent end of main body 10’ will be inserted into the ear canal as well) and the base portion of the nozzle positioned outside of the earhole (para 0030: “The chamber 13 and the space between the speaker 30 and the ear canal”; - Examiner notes that if the space (of chamber 13) is between an element and the ear canal, then at least some of that space would be outside of the ear canal and therefore, the end of main body 10’ opposite to earpad 20 (the ear canal end) would be positioned outside of the ear canal), a passage that continuously extends between the base portion and the distal end of the nozzle is secured (Figs. 8-10: chamber 13/ gap 14 continuously extends between ends of main body 10’) to allow an external sound to be taken in through the passage (para 0023: “One end of the gap 14 is communicable to external environment and therefore the ambient sound can be delivered therefrom.”).
However, Ho does not teach details of the transducer, but Yang teaches the transducer includes a diaphragm (Fig. 1: diaphragm of speaker 120) and a recessed portion (Fig. 1: hole 122 is recessed in speaker 120); a supporting board (Fig. 1: yoke bottom of speaker 120; Fig. 3: boards of second housing 150), wherein the transducer is supported by the supporting board (Fig. 1: speaker 120 supported by yoke bottom; Fig. 3: speaker 120 supported by second housing 150 ), and the supporting board has an air escape hole formed under the diaphragm and the recessed portion of the transducer (Fig. 1: hole 122 in yoke of speaker 120 and formed under diaphragm and upper hole 122; Fig. 3: tuning hole 152 in board of housing 150 that is under diaphragm and hole 122 of speaker 120). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include a diaphragm, as taught in Yang, in the device of Ho et al. because it allows for sound to be produced. Further, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include a hole placement(s) of the speaker, as taught in Yang, in the device of Ho because, it “can adjust the sound field characteristic of the earphone as required, thus the performance of the earphone is improved.”
However, Ho and Yang do not teach a battery and circuit, but Matsumura teaches a housing attached to a base portion of the nozzle (Fig. 5: first housing 12c attached to external part of conduit 13c) and having an electronic circuit and a battery housed therein (Fig. 5: control circuit 16 and battery 17 inside first housing 12c), the electronic circuit being configured to drive the transducer (para 0077: “a control circuit 16 for controlling driving of the speaker unit 11”). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include a battery and control circuitry in an earphone housing, as taught in Matsumura, in the device of Ho and Yang because it allows for a wireless earpiece to be used and for proper usage of the speaker.
However, Ho, Yang, and Matsumura do not teach a longitudinal direction of the transducer coincides with a longitudinal direction of the passage, but Azmi et al. teaches a longitudinal direction of the transducer coincides with a longitudinal direction of the passage (Fig. 2A: longitudinal directions of transducers 16, 18 coincide with longitudinal direction of passage of housing 1/cap 12). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to orient the longitudinal directions of the transducer and passage in the same way, as taught in Azmi et al., in the device of Ho, Yang, and Matsumura because it utilizes space in the ear device housing more efficiently.
Referring to claim 2, Ho teaches the nozzle has a partition disposed therein, the partition divides the passage into a first passage and a second passage each of which extends in a direction in which the nozzle extends (Figs. 8-10: wall between chamber 13 and gap 14 in main body 10’, where chamber 13 and gap 14 extend in a direction in which main body 10’ extends), the second passage being open at the base portion of the nozzle (Fig. 9: gap 14 open by 12’), and the transducer is installed in the first passage (Fig. 10: speaker 30 installed in chamber 13 , and the second passage continuously extends from the base portion to the distal end of the nozzle to allow the external sound to be taken in through the second passage when the acoustic device is worn on the ear (Figs. 8-10: gap 14 continuously extends along entirety of length of main body 10’; para 0023: “One end of the gap 14 is communicable to external environment and therefore the ambient sound can be delivered therefrom.”).
Referring to claim 3, Ho teaches the second passage has a cross-sectional area greater than a cross-sectional area of the first passage (Figs. 9-10: cross sectional area of gap 14 near upper end greater than cross sectional area of chamber 13 near opening 131).
Referring to claim 4, Ho teaches an earpiece having flexibility and surrounds a predetermined range of the nozzle, the predetermined range extending from the distal end toward the base portion, wherein the nozzle is capable of being fitted to the ear through the earpiece fitted into an ear canal through the earhole (Fig. 10: earpad 20 surrounds main body 10’ from ear canal end toward external end by lid 16; para 0021: “The ear pad 20 can be plugged into the user's ear canal (not shown)…The ear pad 20 is made of flexible and soft materials”).
Referring to claim 5, Ho teaches the nozzle is arranged to secure the passage continuously which extends between the base portion and the distal end of the nozzle outside of the nozzle along an ear canal, and the nozzle occupies only a part of a cross-section of the ear canal to allow the external sound to be taken in through the passage when the acoustic device is worn on the ear, the passage being open at the base portion (Figs. 9-10: gap 14 continuously extends along entirety of length of main body 10’ on outer side of main body 10’, gap 14 occupies only a part of cross section of the ear canal due to the presence of earpad 20 and opening 131 and walls of main body 10’; Fig. 9: gap 14 open at end by 12’; 0023: “One end of the gap 14 is communicable to external environment and therefore the ambient sound can be delivered therefrom.”).
Response to Arguments
Applicant's arguments filed 12/5/25 have been fully considered but they are not persuasive.
Applicant states on pages 14-15 of the remarks:
“Further, MPEP § 2143.01(V) states "[i]f proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984)". In the present case, combining Ho with Azmi would necessitate alterations in Azmi that would directly contradict with the design principles of Azmi and that would cause incompatibility of the structural configurations of Azmi.
With regard to the direct contradiction in design principles, in order to arrive at the claimed subject matter, it would require a modification of Azmi such that the gap 14 disclosed in Ho is introduced into the multi-driver configuration of Azmi. However, such a modification would amount to combining the fundamental design principle of blockinq sound disclosed in Azmi to pursue high audio quality with the principle of deliberately incorporatinq sound disclosed in Ho to ensure safety, thereby creating a direct technical contradiction. In particular, the introduction of the gap 14 disclosed in Ho into the design disclosed in Azmi would compromise the airtight seal that is essential to the intended operation described in Azmi, resulting in the loss of accurate low-frequency reproduction and effective noise isolation. Such a modification would materially impair the very advantages that Azmi was designed to achieve and would therefore constitute a regressive alteration that diminishes, rather than improving, the performance of Azmi's invention.
With regard to incompatibility of structural configurations, in order to arrive at the claimed subject matter, it would require a modification of Azmi such that the concentric double-wall structure and the gap disclosed in Ho are introduced into the densely packed multi-driver earbud configuration disclosed in Azmi. However, such a modification would amount to combining two fundamentally incompatible structural concepts i.e., the simple concentric wall design of Ho for a single speaker and the highly compact, stacked multi-driver earbud configuration of Azmi. In particular, attempting to create gaps, similar to that in Ho, around the multi-driver configuration of Azmi would require significant redesign, increase the overall size of the earbud, and eliminate the advantage of the compact housing that Azmi was specifically designed to achieve. Therefore, a person skilled in the art would not combine the teaching of Ho and Azmi.
Therefore, the Applicant respectfully submits that the rationale proffered to combine the teachings Ho, Yang, Matsumura, and Azmi whether taken individually or in combination is improper.
Therefore, the rejections based on the proposed combinations of Ho, Yang, Matsumura and Azmi are improper and should be withdrawn.
Accordingly, the combination of Ho, Yang, Matsumura, and Azmi does not teach, suggest, or render obvious at least, for example, the feature of "a nozzle having a transducer installed therein ... a passage that continuously extends between the base portion and the distal end of the nozzle ... a longitudinal direction of the transducer coincides with a longitudinal direction of the passage," as recited in independent claim 1.”
Examiner respectfully disagrees. First off, Examiner does not rely on a rejection that modifies Azmi with Ho. The rejection is the other way around; Azmi modifies Ho. And the only part of Azmi that the Examiner relies upon is that a longitudinal direction of the transducer coincides with a longitudinal direction of the passage. Ho is modified merely with a shape and orientation of how a transducer fits in a passage, nothing else. This modification of Azmi utilizes space more efficiently in Ho. Ho simply cannot render Azmi unsatisfactory, though, because Azmi is not the reference being modified. Further, the Applicant has provided arguments of substance regarding modifying Ho or anything regarding Yang and Matsumura. Therefore, the combination of Ho in view of Yang, Matsumara, and Azmi do indeed teach the limitations of the claims, as detailed in the rejections above.
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 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.
Examiner respectfully requests, in response to this Office Action, support be shown for language added to any original claims on amendment and any new claims. That is, indicate support for newly added claim language by specifically pointing to page(s) and line number(s) in the specification and/or drawing figure(s). This will assist Examiner in prosecuting the application.
When responding to this Office Action, Applicant is advised to clearly point out the patentable novelty which he or she thinks the claims present, in view of the state of the art disclosed by the references cited or the objections made. He or she must also show how the amendments avoid such references or objections. See 37 CFR 1.111(c).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE A FALEY whose telephone number is (571)272-3453. The examiner can normally be reached on Monday to Wednesday, 9am-5pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ahmad Matar can be reached on (571)272-7488. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Any response to this action should be mailed to:
Commissioner of Patents and Trademarks
P.O. Box 1450
Alexandria, Va. 22313-1450
Or faxed to:
(571) 273-8300, for formal communications intended for entry and for
informal or draft communications, please label “PROPOSED” or “DRAFT”.
Hand-delivered responses should be brought to:
Customer Service Window
Randolph Building
401 Dulany Street
Arlington, VA 22314
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KATHERINE A FALEY/Primary Examiner, Art Unit 2693
Prosecution Insights