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 .
Double Patenting
2. 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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
3. Claims 1-20 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 10625531, claims 1-19 of U.S. Patent 11376881 and claims 1-19 of U.S. Patent 11633973. Although the claims at issue are not identical, they are not patentably distinct from each other because claim in the pending application is broader than the one in patents. For example, the subject matter claimed in claim 1 of the pending application, which reciting a controller for controlling the safe mode and the recipient mode switching feature and continuously playing a message till the battery being out of power, is covered by claim 1 of the above three patents. Therefore, the pending claim 1 is anticipated by the claim 1 and/or its dependent claims of the above three patents.
Claim Rejections - 35 USC § 103
4. 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.
5. 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 teach 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.
6. Claim(s) 1, 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mayer et al (US 2012/0304509) in view of Nibun (JP 2006-188835).
Consider claim 1 and 7. MAYER discloses a greeting card having a sound module configured to produce and play back a pre-recorded audio message. MAYER further discloses a speaker, circuit board, integrated circuit, microprocessor, memory device, power source, switches, and a pre-loaded digital audio file. See MAYER, (Abstract); para [0004]. MAYER states: “The sound module may include a speaker, circuit board, integrated circuit, microprocessor, memory device, power source, at least one switch mechanism and at least one pre-loaded digital audio file.” para [0004]. MAYER therefore teaches a battery-powered or otherwise powered sound-producing system having the components necessary to play a pre-recorded sound through a speaker.
MAYER also discloses receiving an indication of user manipulation of a switch. MAYER describes a slide switch mechanism positioned over a fold line such that opening the greeting card activates the pre-recorded audio. MAYER states: “A slide switch mechanism may be placed over a fold line between the sentiment panel and the foam body such that when the greeting card is opened by moving the sentiment panel away from the foam body, the slide trigger activates the pre-recorded audio.” para [0027]. The slide switch mechanism corresponds to the claimed mode-of-operation switch, and movement of the greeting card provides an indication of user manipulation received by the sound module or associated controller.
MAYER further discloses switching between different operating modes using a pull tab or third switch. MAYER explains: “This third switch 27 controls whether the greeting card 10 is in a first mode, wherein a user can test the card functionality by recording and previewing the recorded message without the ability to play the message a second time . . . or a second mode, wherein the user has purchased the greeting card, and removed the pull tab 27 thereby permitting the user to record a message which is then saved within the sound module and is thereby available for playback.” para [0028]. MAYER’s first mode corresponds to the claimed safe mode, and MAYER’s second mode corresponds to the claimed recipient mode. Removal of the pull tab switches the greeting card from the first mode to the second mode.
MAYER additionally discloses a trigger for initiating operation of the multimedia player. MAYER states: “The multimedia player device may be activated by a push button switch 53 located on the front or back surface of the foam body 52.” para [0033]. The push-button switch corresponds to the claimed trigger. Thus, MAYER teaches initiating operation of a speaker-based multimedia player in response to actuation of a trigger. MAYER further discloses a subsequent user actuation after an operating mode has been established. MAYER states: “Pressing the ‘preview’ button 29 initiates a recording session, regardless of whether the pull tab 27 has been removed or not para [0028]. The preview button corresponds to a subsequent actuation of the claimed trigger or another user-operated input.
MAYER does not expressly disclose that playback continues continuously or intermittently until the battery is discharged, or that playback continues regardless of subsequent manipulation of the trigger or mode-of-operation switch.
NIBUN discloses an anti-theft safe having an internal sound generator that is activated after a triggering event, such as an interruption of AC power. NIBUN teaches that the sound generator continues to emit sound until the storage battery is completely discharged. NIBUN states: “When the AC power source is cut off, an inside detector is operated to turn the sound generation device ON, and a sound is continuously made until the battery has discharged.” (Abstract). NIBUN further explains: “Sound continues to be emitted until the battery is completely discharged, and cannot be stopped from outside the safe.” para [0005] of the provided translation. NIBUN therefore teaches non-interruptible sound playback that continues until battery discharge. This teaching corresponds to the limitation requiring continued playback of the pre-recorded sound until the battery powering the speaker is discharged and notwithstanding subsequent external inputs or attempted interruption.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify MAYER’s sound-module greeting card to incorporate NIBUN’s battery-exhaustion and non-interruptible playback behavior. Applying NIBUN’s teaching that sound continues until the battery is completely discharged would have provided the predictable benefit of ensuring that an initiated audio message continues to play despite subsequent manipulation of a switch or actuation of a trigger.
Claim(s) 2-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mayer et al (US 2012/0304509) in view of Nibun (JP 2006-188835 A) as applied to claims 1, 7 above, and further in view of Lien et al (8,719,033).
Consider claims 2 and 8. Mayer in view Nibun does not clearly teach the controller is configured to respond to a switch of operation only one.
Lien’s switch 60 is a one-time use switch (see columns 5, line 48-55).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to modify the teachings of Mayer in view of Nibun by incorporating LIEN’s one-time tear-switch or arming mechanism, controller operation, and disabling of recording inputs. The proposed combination would have involved applying known mode-control and recording-protection techniques to Mayer’s in view of Nibun’s known battery-powered sound-producing apparatus.
Consider claims 3 and 9. see Lien’s trial mode panel 26, fig.1.
Consider claims 4 and 10. see Lien column 7, lines 51-55.
Consider claims 5 and 11. it is inherent that the tab (trial mode panel of Lien) is attached to the insulator.
Consider claims 6 and 12. see Lien’s column 7, lines 1-6 discloses that the user recorded sound is only played once during the trial mode.
Claim(s) 1, 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mayer et al (US 2012/0304509) in view of Dudkin (EP 1318497).
Consider claims 1 and 7. MAYER et al. discloses a greeting card having electronic components configured to produce and play sound. MAYER et al. discloses electronic components, including a speaker, circuit board, and power source, located in cavities of a foam body of the greeting card. MAYER et al. further discloses that the electronic components enable the greeting card to produce sound and record and play back a personalized message. See MAYER et al., Abstract; para [0004], [0006]. MAYER et al. therefore teaches a battery-powered sound-producing device capable of playing a pre-recorded sound through a speaker. MAYER et al. discloses receiving an indication of user manipulation of a mode-of-operation switch. MAYER et al. describes a slide switch mechanism positioned over a fold line between a sentiment panel and a foam body. When the greeting card is opened, movement of the sentiment panel activates a slide trigger that causes playback of pre-recorded audio. MAYER et al. states: “A slide switch mechanism may be placed over a fold line between the sentiment panel and the foam body such that when the greeting card is opened by moving the sentiment panel away from the foam body, the slide trigger activates the pre-recorded audio.” para [0027]. The slide switch mechanism therefore teaches a switch responsive to user manipulation and provides an indication to the sound module or associated controller. MAYER et al. further discloses switching between first and second operating modes using a pull-tab switch 27. MAYER et al. explains: “This third switch 27 controls whether the greeting card 10 is in a first mode, wherein a user can test the card functionality by recording and previewing the recorded message without the ability to play the message a second time or to hear the message upon pressing the ‘play’ button, or a second mode, wherein the user has purchased the greeting card, and removed the pull tab 27 thereby permitting the user to record a message which is then saved within the sound module and is thereby available for playback upon pressing the ‘play’ button 28.” para [0028]. MAYER et al.’s first mode corresponds to the claimed safe mode, and MAYER et al.’s second mode corresponds to the claimed recipient mode. Removal of the pull tab causes the greeting card to transition from the restricted first mode to the second mode in which the message is available for playback. MAYER et al. also discloses a trigger for initiating operation of the multimedia player. MAYER et al. states: “The multimedia player device may be activated by a push button switch 53 located on the front or back surface of the foam body 52.” para [0033]. MAYER et al. further discloses a hardware configuration including a microprocessor, speaker, and power source. See MAYER et al., para [0006]. Thus, MAYER et al. teaches that, while the device is in an operative mode, actuation of a push-button trigger activates a battery-powered multimedia player capable of playing pre-recorded audio through a speaker. MAYER et al. discloses a preview button 29 that may be actuated after the operating state associated with the pull tab has been established. MAYER et al. states: “Pressing the ‘preview’ button 29 initiates a recording session, regardless of whether the pull tab 27 has been removed or not.” para [0028]. The preview button therefore teaches a trigger that may be actuated subsequent to establishment of the operating mode.
MAYER et al., however, does not expressly disclose that the pre-recorded sound continues to play until the battery is discharged or that playback continues notwithstanding a subsequent actuation or release of a trigger.
DUDKIN discloses a second key 7 associated with operation of an audio-reproducing device. DUDKIN states: “a user can terminate his/her activation of second switch 7, which then will unlock, but the message will be played back till the end” (para 46). DUDKIN therefore teaches that, after playback has been initiated, the playback continues to completion notwithstanding a subsequent release or manipulation of the trigger. This disclosure corresponds to the limitation requiring continued playback of the pre-recorded sound regardless of a subsequent indication associated with actuation of the trigger.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to modify the trigger-controlled, battery-powered sound module of MAYER et al. to incorporate DUDKIN’s teaching that playback continues to completion notwithstanding subsequent release or manipulation of the playback key. Applying DUDKIN’s playback-control technique to MAYER et al.’s sound module would have provided the predictable benefit of ensuring completion of an initiated audio message without requiring the user to maintain actuation of the trigger or permitting a subsequent trigger manipulation to interrupt playback.
Claim(s) 13-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Furuya et al. (JP-S63317898) in view of Lien et al. (US 8719033).
Consider claim 13. FURUYA discloses an apparatus configured to play a pre-recorded sound through a speaker using battery power (In case of a single singing tone mode, a singing tone part 29 drives a sounding element 31 and a simple intermittent tone is repeatedly radiated. In case of a melody playing mode, a melody playing signal set beforehand in a melody playing part 30 is generated and a melody playing tone is emitted from the sounding element 31. A melody set in a melody playing part 30 is arbitrarily selected to meet an ambient environment and a purpose-usage in which a pocket pager is used and the desire of users; see the abstract). FURUYA further discloses a control unit 24 connected to the sound-generation unit, melody-performance unit, sound-producing element, mode-setting switch, and power-supply battery. FURUYA teaches: The display unit 25 and display element 26, the vibration unit 27 and vibration element 28, the sound generation unit 29, melody performance unit 30, and sound-producing element 31, and the light-emitting diode 32 are respectively connected to the output signal side of the control unit 24. The local address setting unit 33 is connected to the address verification unit 23. The mode setting switch 34 and power supply battery 35 are connected to the setting signal side of the control unit 24 (e.g., a waveform shaping unit 22, and an address matching unit 23 are sequentially connected to an input signal side of a control unit 24. On the output signal side of the lung part 24, a display part 25 and a display element 26, a vibrating part 27 and a vibrating eight element 28, a sound Δ part 29 and a main part, It is connected.; see para 1 of the machine-translation). FURUYA’s control unit therefore corresponds to the claimed controller and is configured to control the mode-setting switch, battery, and sound-producing circuitry.
FURUYA does not expressly disclose a switch configured to transition an apparatus only once from a safe mode to a recipient mode and not from the recipient mode back to the safe mode.
LIEN, however, teaches a tear switch 60 that produces a one-time, irreversible change in the operating state of an audio device. LIEN explains that detaching a trial-mode panel tears a strip and breaks a circuit path, thereby changing the tear switch from a closed-circuit state to an open-circuit state. LIEN further states: “When the trial mode panel 26 is detached from the greeting card 10 . . . the strip 62 is torn into two pieces and the path 64 is broken. As a result, the tear switch 60 is moved from a closed circuit to an open circuit, the change in the state of the tear switch 60 is recognized by the audio device 48, and the audio device 48 functions in a use mode.” (col. 5, lines 47–54). LIEN’s tear switch therefore teaches a switch configured to cause a one-time transition from a trial or safe mode to a use or recipient mode. Because the circuit path is physically broken, the device is prevented from returning to the original mode through ordinary user manipulation of the switch.
LIEN further teaches preventing user manipulation from modifying recorded audio after the device has been placed in an armed or use condition. LIEN discloses that the audio device ignores activation of a record button when a switch is in an open position. LIEN states: “Similarly, the audio device 48 is configured to ignore activation of the record button 80 when the second switch 68 is in its open position (i.e., when the greeting card 10 is closed). This also prevents accidental recording over the intended song should the record button be pressed during the mailing process.” (col. 7, lines 34–39). LIEN’s disabling or ignoring of the record input teaches configuring the controller to prevent modification of the stored audio in response to user manipulation of an input switch.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to modify FURUYA’s pocket pager by incorporating LIEN’s one-time tear-switch or arming mechanism, controller operation, and disabling of recording inputs. The proposed combination would have involved applying known mode-control and recording-protection techniques to FURUYA’s known battery-powered sound-producing apparatus.
Consider claim 14. see cavity/pocket 34 in Fig.2 and column 4, line 2 of Lien.
Consider claims 15 and 16. see Lien, Fig.2 for two panels 14 and 20; and the fold line 24.
Consider claim 17. see Lien’s trial mode panel 26, fig.1.
Consider claim 18. see Lien column 7, lines 51-55.
Consider claim 19. the trial mode panel 26 (tab) of Lien is pulled out by the user.
Consider claim 20. see Lien, Fig.4 of the claimed slit between 62 and 60.
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 DUC NGUYEN whose telephone number is (571)272-7503. The examiner can normally be reached 6:30AM-3:45PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Duc Nguyen can be reached at 571-272-7503. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DUC NGUYEN
Supervisory Patent Examiner
Art Unit 2691
/DUC NGUYEN/Supervisory Patent Examiner, Art Unit 2691
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