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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements filed 10/19/23, 1/17/24, 4/1/24, 8/28/24, 9/16/24, 4/10/25, 5/5/25, 7/29/25, 9/11/25 and 10/20/25 have been considered.
Drawings
The drawings filed 3/17/23 are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the structure used to simultaneously provide sound waves to ears of a user, specifically the claimed earphone as set forth in claims 10, 12, 13 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-9 and 14-16 are rejected under 35 U.S.C. 101 because:
the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because a “method/process” must be 1) tied to another statutory class (such as an article or apparatus) or 2) transform underlying subject matter (such as an article or materials) to a different state or thing. Claims 1-9 and 14-16 although setting forth a method, this method as set forth does not satisfy either of conditions 1) or 2) and therefor directed to non-statutory subject matter. As such, the claimed invention is directed to no more that and abstract idea of providing different sound waves to ears of a user that are performed by a human. There is no automation and no device set forth to perform the claimed method.
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.
Claims 1-3, 6, 10 and 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 4, 1 and 15-17 respectively of copending Application No. 18/305,612 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
The claims of application 18/185,406 include all the limitations of the instant application claims, respectively. The claims of application 18/185,406 also include additional limitations, specifically claim 1 of application 18/185,406 sets forth the use of an earphone set and that the frequency difference automatically and cyclically changes along with time, not set forth in claim 1 of the instant application. Hence the instant application claims are generic to the species of invention covered by the respective claims of application 18/185,406. As such, the instant application claims are anticipated by the claims of application 18/185,406 and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, “a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim”, In re Goodman, 29 USPQ2d 2010. “Thus, the generic invention is ‘anticipated’ by the species of the patented invention” and the instant “application claims are generic to the species of invention covered by the patent claims of application 18/185,406, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”). The limitations of claims 2-3, 6, 10 and 14-16 are found in claims 2-3, 4, 1 and 15-17 of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2, 4-6, 10, 14-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Meissner (U.S. Patent 5,135,468), cited by applicant.
Re claim 1: Meissner teaches a brain wave induction method, comprising: simultaneously providing a first sound wave to a left ear of a user and a second sound wave to a right ear of the user (see discussion in column 6, lines 46-51), wherein there is a frequency difference between a first frequency of the first sound wave and a second frequency of the second sound wave ( note the left ear receives frequency signals 0f 200Hz and the right ear receives frequency signals between 230Hz and 200 Hz), and the frequency difference is automatically changed along with time (See discussion in column 6, line 46 – column 7, line 2 by toggling the signals applied to each ear)
Re claim 2: note each toggling between signals to the left ear and the right ear is achieved by the changing of the frequency differences being used as discussed in column 6, line 46 – column 7, line 2 satisfying as set forth multi-segmentally changed with time.
Re claims 4-6: note discussion in column 6, line 46 – column 7, line 2 in which the frequency difference toggle is 1 Hz (from 230 Hz to 229 Hz) satisfying the alternative language “0.1 Hz, 0.2 Hz, 0.5 Hz or 1 Hz” set forth in claim 4; the language “between .1 Hz and 1 Hz”, claim 5 and the alternative language “between 0.5 Hz and 4 Hz, between 4 Hz and 8 Hz, between 8 Hz and 12 Hz, or between 12 Hz and 20 Hz” claim 6.
Re claim 10: note column 8, lines 19-32 teaching the use of earphone(s) allowing a person to listen to the audio sound wave signals
Re claim 14: note the that sound waves including the first frequencies in an initial scan period (predetermined time) are stopped in order to provide a set of sound waves having different frequencies during the next scan as discussed in column 6, line 46 – column 7, line 2.
Re claim 15: see circuit arrangements of figures 3 and 8 used to produce the change in frequencies in the sound waves which is initiated by the user via on/off switch (106) as discussed in column 8, lines 33-55 and column 12, lines 28-39.
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.
Claim(s) 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Meissner in view of Ko et al. (US 11,218,789 B1).
Re claim 11: the teaching of Meissner is discussed above and incorporated herein. Meissner teaching the use of an earphone does not teach that this earphone has an active noise cancellation (ANC) function. Ko et al. teaches in a similar environment to include an active noise cancellation function by the use of a microphone (300) and another component (ANC module) column 3, lines 51-57 in order to remove ambient noise while listening to a desired audio (column 1, lines 19-44). It would have been obvious to one of ordinary skill in the art before the filing of the invention to incorporate such an ANC function as taught by Ko et al. into the earphone arrangement of Meissner to predictably remove ambient noise while listening to a desired audio. Therefor the claimed subject matter would have been obvious before the filing of the invention.
Re claims 12-13: the teaching of Meissner is discussed above and incorporated herein. Meissner teaching the use of an earphone does not teach that this earphone is a wireless earphone (claim 12) or a Bluetooth earphone (claim 13). Ko et al. teaches in a similar environment that earphones can be wireless/Bluetooth by using wireless modules/Bluetooth modules (column 3, lines 40-45) when listening to audio (column 1, lines 19-29). It would have been obvious to one of ordinary skill in the art before the filing of the invention to incorporate wireless/Bluetooth modules as taught in Ko et al. into the earphone of Meissner to predictably provide a wireless earphone arrangement when listening to audio. Therefore, the claimed subject matter would have been obvious before the filing of the invention.
Allowable Subject Matter
If applicant amends the claims to overcome the 35 U.S.C. 101 and Double patenting rejections; claims 3, 7-9 and 16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The claimed method including in combination those features of claim 1 that additionally includes a frequency difference that remains unchanged for 5 seconds to 120 seconds after each change as set forth in claim 3 is neither taught by nor an obvious variation of the art of record. The claimed method including in combination those features of claim 1 that additionally gradually reduces the frequency difference from 12 HZ to 0.5 Hz as set forth in claim 7 is neither taught by nor an obvious variation of the art of record. The limitations of claims 8-9 depend upon those features of claim 7/1. The claimed method including in combination those features of claim 1 that further comprising: providing a first background sound wave to the left ear of the user and a second background sound wave to the right ear of the user while providing the first sound wave and the second sound wave, wherein the frequency difference is provided between a third frequency of the first background sound wave and a fourth frequency of the second background sound wave as set forth in claim 16 is neither taught by nor an obvious variation of the art of record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW SNIEZEK whose telephone number is (571)272-7563. The examiner can normally be reached Monday-Friday 7:00 AM-3:30 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ahmad Matar can be reached at 571-272-7488. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW SNIEZEK/ Primary Examiner, Art Unit 2693
/A.S./Primary Examiner, Art Unit 2693 1/12/26