DETAILED ACTION
Double Patenting
1. 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
2. Claims 1-7, 9-23 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1, 3-7, 12, 13 and 17-29 of U.S. Patent No. 11,902,730 in view of over Haller et al, U.S. Patent No. 6,295,366 (hereinafter Haller) and Yamamoto, U.S. Patent Application Publication No. 2016/0182990 (hereinafter Yamamoto).
Regarding claim 1 of the instant application, claims 1 and 12 of U.S. Patent No. 11,902,730 discloses a cushion configured to be secured to an ear cup of a headset and/or hearing protection device, wherein the cushion defines an inner opening and comprises
a contact surface along a periphery proximal part of the cushion, the contact surface configured to abut against and contact a user's head around an ear of the user when the headset and/or hearing protection device is worn by the user, wherein
the contact surface of the cushion has a predetermined height profile where respective height values of the predetermined height profile at a plurality of locations of the contact surface vary about the inner opening and/or a centre or centre point of the cushion, and
a first height of the predetermined height profile is a globally largest height of the respective height values at the plurality of locations, where the plurality of locations is located at least nearest or towards and about the inner opening and/or the centre or centre point and where the first height is located in an upper front-facing part of the cushion.
Further regarding claim 1 of the instant application, claim 1 of U.S. Patent No. 11,902,730 does not explicitly state that the cushion being a non-actuated passive cushion. All the same, Haller discloses that the cushion being a non-actuated passive cushion (from column 3, see The acoustic seal, and using ear cup seal 38 as an example, includes an inner cushion 62 of a dense, resilient foam, best seen in the cut-away portions of FIGS. 5 and 10. This structure allows the seal to conform to the wearer's head when in place, and to resume its original configuration after it is removed from the wearer's head. An outer covering 60 of the seal is formed, in the preferred embodiment, of 30 mil expanded vinyl, and is both vacuum formed and precut to the desired configuration, which will be described in more detail later herein. Covering 60 is coated, in the preferred embodiment, with a one mil thick layer of urethane ink, to provide additional environmental durability, i.e., to protect covering 60 from the effects of atmospheric and skin-carried contaminants. Interior filling 62 is formed of four-pound per cubic foot scythed urethane foam, formed in the desired shape and enclosed within covering 60, without over stuffing). Therefore, it would have been obvious to one of ordinary skill in the art to modify claim 1 of U.S. Patent No. 11,902,730 wherein the cushion being a non-actuated passive cushion as taught by Haller. This modification would have improved marketability by providing acoustically tunable headphones that are simple in construction and economical to manufacture as suggested by Yamamoto (see paragraph 0007).
Regarding claim 2 of the instant application, claim 13 of U.S. Patent No. 11,902,730 teaches a second height of the predetermined height profile is a locally largest height of the respective height values at the plurality of locations where the second height is located in a lower back-facing part of the cushion.
Regarding claim 3 of the instant application, claim 3 of U.S. Patent No. 11,902,730 teaches a third height of the predetermined height profile is a globally smallest height of the respective height values where the third height is located in a lower part of the cushion, or in a lower front-facing part of the cushion, or in a lower back-facing part of the cushion.
Regarding claim 4 of the instant application, claim 4 of U.S. Patent No. 11,902,730 teaches a fourth height of the predetermined height profile is a locally smallest height of the respective height values where the fourth height is located in a back-facing part of the cushion or in an upper back-facing part of the cushion.
Regarding claim 5 of the instant application, claim 5 of U.S. Patent No. 11,902,730 teaches wherein the fourth height is located in an upper back-facing part of the cushion and wherein the respective height values of the predetermined height profile in the upper back-facing part includes at least a non-monotonic segment.
Regarding claim 6 of the instant application, claim 6 of U.S. Patent No. 11,902,730 teaches a first difference in height between the first height and the third height is about 4 millimetres to about 10 millimetres, or about 6 millimetres to about 8 millimetres, or about 7 millimetres, and/or wherein a second difference in height between the second height and the third height is about 3 millimetres to about 9 millimetres, or about 5 millimetres to about 7 millimetres, or about 6 millimetres, and the second difference in height is smaller than the first difference in height, and/or wherein a third difference in height between the fourth height and the third height is about 1 millimetres to about 6 millimetres, or about 2 millimetres to about 4 millimetres, or about 3 millimetres, and the third difference in height is smaller than the first difference in height, and, if the cushion comprises a second height, the third difference in height is furthermore smaller than the second difference in height.
Regarding claim 7 of the instant application, claim 7 of U.S. Patent No. 11,902,730 teaches a second difference in height between the second height and the third height is about 70% to about 90%, or about 75% to about 85%, or about 78% to about 82%, or about 80%, of a first difference in height between the first height and the third height, and/or a third difference in height between the fourth height and the third height is about 35% to about 60%, or about 40% to about 55%, or about 45% to about 50%, or about 47%, of a first difference in height between the first height and the third height.
Regarding claim 9 of the instant application, claim 17 of U.S. Patent No. 11,902,730 teaches the predetermined height profile comprises a first inner height and a first outer height and where a third inner height of the predetermined height profile is a globally smallest inner height of the respective height values and where a third outer height of the predetermined height profile is a globally smallest outer height of the respective height values, where the third inner and outer heights are located in a lower part of the cushion, or in a lower front-facing part of the cushion or in a lower back-facing part.
Regarding claim 10 of the instant application, claim 18 of U.S. Patent No. 11,902,730 teaches a first inner difference in height between the first inner height and the third inner height is about 3 millimetres to about 8 millimetres, or about 4 millimetres to about 7 millimetres or about 6 millimetres, and/or a first outer difference in height between the first outer height and the third outer height is about 7 millimetres to about 12 millimetres, or about 8 millimetres to about 11 millimetres, or about 9 millimetres to about 10 millimetres, or about 9.4 millimetres.
Regarding claim 11 of the instant application, claim 19 of U.S. Patent No. 11,902,730 teaches a second inner height of the predetermined height profile is a locally largest inner height of the respective height values, where the second inner height is located in a lower back-facing part of the cushion, and a second outer height of the predetermined height profile is a locally largest outer height of the respective height values or a globally largest outer height of the respective height values, where the second outer height is located in a lower back-facing part.
Regarding claim 12 of the instant application, claim 20 of U.S. Patent No. 11,902,730 teaches a second inner difference in height between the second inner height and the third inner height is about 2 millimetres to about 7 millimetres, or about 3 millimetres to about 6 millimetres, or about 4 millimetres, and/or a second outer difference in height between the second outer height and the third outer height is about 7 millimetres to about 11 millimetres, or about 8 millimetres to about 10 millimetres, or about 9 millimetres, and wherein the second inner difference in height is smaller than the first inner difference in height.
Regarding claim 13 of the instant application, claim 21 of U.S. Patent No. 11,902,730 discloses a fourth inner height of the predetermined height profile is a locally smallest inner height of the respective height values, and a fourth outer height of the predetermined height profile is a locally smallest outer height of the respective height values, and where the fourth inner and outer heights are located in a back-facing part of the cushion, or in an upper back-facing part of the cushion.
Regarding claim 14 of the instant application, claim 22 of U.S. Patent No. 11,902,730 discloses a third inner difference in height between the fourth inner height and the third inner height is about 1 millimetres to about 5 millimetres, or about 2 millimetres to about 4 millimetres, or about 3 millimetres, and/or a third outer difference in height between the fourth outer height and the third outer height is about 2 millimetres to about 6 millimetres, or about 3 millimetres to about 5 millimetres, or about 4 millimetres, and wherein the third inner difference in height is smaller than the first inner difference in height, and/or wherein the third outer difference in height is smaller than the first outer difference in height, and if the cushion comprises a second height, the third inner difference in height is smaller than the second inner difference in height and/or the third outer difference in height is smaller than the second outer difference in height.
Regarding claim 15 of the instant application, claim 23 of U.S. Patent No. 11,902,730 discloses a second inner difference in height between the second inner height and the third inner height is about 75% to about 95%, or about 80% to about 90%, or about 75% to about 85%, or about 80%, of a first inner difference in height between the first inner height and the third inner height, and/or wherein a third inner difference in height between the fourth inner height and the third inner height is about 35% to about 65%, or about 40% to about 60%, or about 45% to about 55%, or about 50%, of a first inner difference in height between the first inner height and the third inner height.
Regarding claim 16 of the instant application, claim 24 of U.S. Patent No. 11,902,730 discloses the second outer difference in height between the second outer height and the third outer height is about 100% to about 115%, or about 105% to about 110%, or about 107%, of a first outer difference in height between the first outer height and the third outer height, and/or wherein the third outer difference in height between the fourth outer height and the third outer height is about 35% to about 60%, or about 40% to about 55%, or about 45% to about 50%, or about 47%, of a first outer difference in height between the first outer height and the third outer height.
Regarding claim 17 of the instant application, claim 25 of U.S. Patent No. 11,902,730 discloses the contact surface has generally positive slopes in radial or transverse directions away from the inner opening and/or the centre or centre point of the cushion at or near the first height and/or at or near the second height, and wherein the contact surface has generally negative or declining slopes in radial or transverse directions away from the inner opening and/or the centre or centre point of the cushion at or near the third height and/or at or near the fourth height.
Regarding claim 18 of the instant application, claim 26 of U.S. Patent No. 11,902,730 discloses the varying slopes of the contact surface in radial or transverse directions away from the inner opening and/or the centre or centre point of the cushion has a global minimum value near or at a boundary between the lower back-facing part and the lower front-facing part.
Regarding claim 19 of the instant application, claim 27 of U.S. Patent No. 11,902,730 discloses the overall shape of the cushion as seen in the proximal, or in the distal direction, is generally oval and/or the cushion is integrally formed.
Regarding claim 20 of the instant application, claim 28 of U.S. Patent No. 11,902,730 discloses the cushion comprises a central, or radially offset, track, slit, or groove in the contact surface about the centre or centre point.
Regarding claim 21 of the instant application, claim 29 of U.S. Patent No. 11,902,730 discloses the cushion comprises a number of alignment elements arranged on a distal side of the cushion in a predetermined pattern, where the predetermined pattern is asymmetrical in relation to upper and lower directions and/or to front-facing and back-facing directions of the cushion, where the alignment elements are configured to mate or fit with a number of corresponding alignment elements of an ear cup of a headset and/or hearing protection device that the cushion is to be fitted to.
Regarding claim 22, claim 1 of U.S. Patent No. 11,902,730 as modified by Haller discloses the upper front-facing upper part is toward a front of a face of the user when wearing the headset and/or hearing protection device and toward an upper part of the ear (from column 3, see Ear cup seal 38 has an irregular shape in order to easily conform to a wearer's head. The seal has a thickness of between 0.85" and 0.65", and is thickest in the region in contact with the wearer's head about the lower margins of the wearer's ears and to the rear thereof. The thinnest portion of the ear cup seal is located in front of the wearer's ear, and adjacent to lower margin thereof, extending along the jaw line. This configuration provides the improved acoustic seal of the invention, which is in full contact with the wearer's head along the contours thereof, particularly along the jaw line and neck, which are areas subject to gaps with conventional ear seals. The configuration also provided an ear seal of minimal thickness).
Regarding claim 23, claim 1 of U.S. Patent No. 11,902,730 as modified by Haller discloses the plurality of locations are arranged about an entirety of the periphery proximal part of the contact surface (from column 3 of Haller, see Ear cup seal 38 has an irregular shape in order to easily conform to a wearer's head. The seal has a thickness of between 0.85" and 0.65", and is thickest in the region in contact with the wearer's head about the lower margins of the wearer's ears and to the rear thereof. The thinnest portion of the ear cup seal is located in front of the wearer's ear, and adjacent to lower margin thereof, extending along the jaw line. This configuration provides the improved acoustic seal of the invention, which is in full contact with the wearer's head along the contours thereof, particularly along the jaw line and neck, which are areas subject to gaps with conventional ear seals. The configuration also provided an ear seal of minimal thickness).
Claim Rejections - 35 USC § 103
3. 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.
4. Claims 1, 3, 19 and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Haller in view of Yamamoto, U.S. Patent Application Publication No. 2016/0182990 (hereinafter Yamamoto).
Regarding claim 1, Haller discloses a cushion (from Figure 1, see 38, 40) configured to be secured to an ear cup (from Figure 1, see 24, 26) of a headset (from Figure 1, see 20) and/or hearing protection device, wherein the cushion defines an inner opening and comprises:
a contact surface (from Figure 4, see 60) along a periphery proximal part of the cushion, the contact surface configured to abut against and contact a user’s head around an ear of the user when the headset and/or hearing protection device is worn by the user,
wherein the contact surface of the cushion has a predetermined height profile where respective height values of the predetermined height profile at a plurality of locations of the contact surface vary about the inner opening and/or a centre or centre point of the cushion (from column 3, see Ear cup seal 38 has an irregular shape), and
a first height of the predetermined height profile is a global largest height of the respective height values at the plurality of locations, where the plurality of locations is located at least nearest or towards and about the inner opening and/or the centre or centre point (from column 3, see The seal has a thickness of between 0.85" and 0.65", and is thickest in the region in contact with the wearer's head about the lower margins of the wearer's ears and to the rear thereof), the cushion being a non-actuated passive cushion (from column 3, see The acoustic seal, and using ear cup seal 38 as an example, includes an inner cushion 62 of a dense, resilient foam, best seen in the cut-away portions of FIGS. 5 and 10. This structure allows the seal to conform to the wearer's head when in place, and to resume its original configuration after it is removed from the wearer's head. An outer covering 60 of the seal is formed, in the preferred embodiment, of 30 mil expanded vinyl, and is both vacuum formed and precut to the desired configuration, which will be described in more detail later herein. Covering 60 is coated, in the preferred embodiment, with a one mil thick layer of urethane ink, to provide additional environmental durability, i.e., to protect covering 60 from the effects of atmospheric and skin-carried contaminants. Interior filling 62 is formed of four-pound per cubic foot scythed urethane foam, formed in the desired shape and enclosed within covering 60, without over stuffing).
Still on the issue of claim 1, Haller does not teach the first height is located in an upper front-facing part of the cushion. However, the reversal or rearrangement of parts is considered a matter of design choice which a person of ordinary skill in the art would have found obvious per MPEP 2144.04 VI. Therefore, it would have been obvious to one of ordinary skill in the art to modify Haller wherein the first height is located in an upper front-facing part of the cushion. This modification would have improved the convenience of the headset by allowing the user to rotate the ear pad to various positions for the purposes of adjusting the acoustics as suggested by Yamamoto.
Regarding claim 3, the combination of Haller and Yamamoto discloses a third height of the predetermined height profile is a globally smallest height (from column 3 of Haller, see The thinnest portion of the ear cup seal) of the respective height values where the third height is located in a lower part of the cushion, or in a lower front-facing-part of the cushion (from abstract of Yamamoto, see By rotating the ear pad), or in a lower back-facing part of the cushion.
Regarding claim 19, Haller discloses the overall shape of the cushion as seen in the proximal, or in the distal direction, is generally oval and/or the cushion is integrally formed (see Figure 4).
Regarding claim 21, Haller discloses wherein the cushion comprises a number of alignment elements arranged on a distal side of the cushion in a predetermined pattern, where the predetermined pattern is asymmetrical in relation to upper and lower directions and/or to front facing and back-facing directions of the cushion, where the alignment elements are configured to mate or fit with a number of corresponding alignment elements of an ear cup of a headset and/or hearing protection device that the cushion is to be fitted to (from column 4 of Haller, see Referring now specifically to FIGS. 5 and 10, a backing plate 66 is located within ear cup seal 38 to attach the seal to the ear cup. Backing plate 66 includes a flat annular ring 68 having a central orifice 70 therein. Ring 68 has a series of snap hook structures 72 protruding from the rear surface thereof, which cooperate with a groove 76 extending about the inner periphery of each ear cup, also referred to herein as an ear cup seal receiver, to hold the ear cup seal on the ear cup. As best shown in FIG. 10, covering 60 includes a formed portion 60a and a backing portion 60b. Backing portion 60b is precut from the vinyl material and has holes formed therein to allow passage of snap hook structures 72. Formed portion 60a is attached to backing portion 60b, in the preferred embodiment by RF welding, with backing plate 66 and inner cushion 62 sealed therein, and with snap hook structures 72 extending through holes formed in backing portion 60b).
Regarding claim 22, Haller discloses the upper front-facing upper part is toward a front of a face of the user when wearing the headset and/or hearing protecting device and toward an upper part of the ear (from column 3, see Ear cup seal 38 has an irregular shape in order to easily conform to a wearer's head. The seal has a thickness of between 0.85" and 0.65", and is thickest in the region in contact with the wearer's head about the lower margins of the wearer's ears and to the rear thereof. The thinnest portion of the ear cup seal is located in front of the wearer's ear, and adjacent to lower margin thereof, extending along the jaw line. This configuration provides the improved acoustic seal of the invention, which is in full contact with the wearer's head along the contours thereof, particularly along the jaw line and neck, which are areas subject to gaps with conventional ear seals. The configuration also provided an ear seal of minimal thickness).
Regarding claim 23, Haller discloses the plurality of locations are arranged about an entirety of the periphery proximal part of the contact surface (from column 3, see Ear cup seal 38 has an irregular shape in order to easily conform to a wearer's head. The seal has a thickness of between 0.85" and 0.65", and is thickest in the region in contact with the wearer's head about the lower margins of the wearer's ears and to the rear thereof. The thinnest portion of the ear cup seal is located in front of the wearer's ear, and adjacent to lower margin thereof, extending along the jaw line. This configuration provides the improved acoustic seal of the invention, which is in full contact with the wearer's head along the contours thereof, particularly along the jaw line and neck, which are areas subject to gaps with conventional ear seals. The configuration also provided an ear seal of minimal thickness).
5. Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Haller combined with Yamamoto in further view of Kuvalik et al, U.S. Patent No. 11,343,604 (hereinafter Kuvalik).
Regarding claim 20, the combination of Haller and Yamamoto does not teach the cushion comprises a central, or radially offset, track, slit, or groove in the contact surface about the centre or centre point. All the same, Kuvalik discloses a central, or radially offset, track, slit, or groove in the contact surface about the centre or centre point (see Figure 10). Therefore, it would have been obvious to one of ordinary skill in the art to further modify the combination of Haller and Yamamoto with a central, or radially offset, track, slit, or groove in the contact surface about the centre or centre point as taught by Kuvalik. This modification would have improved the system’s convenience by allowing for the accommodation of eyewear as suggested by Kuvalik.
Allowable Subject Matter
6. Claims 2, 4-7 and 9-18 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.
Response to Arguments
7. Applicant’s arguments have been considered but are deemed to be moot in view of the new grounds of rejection.
Conclusion
8. Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. 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 extension fee 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 date of this final action.
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLISA ANWAH whose telephone number is 571-272-7533. The examiner can normally be reached Monday to Friday from 8.30 AM to 6 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Carolyn Edwards can be reached on 571-270-7136. The fax phone numbers for the organization where this application or proceeding is assigned are 571-273-8300 for regular communications and 571-273-8300 for After Final communications.
Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to the receptionist whose telephone number is 571-272-2600.
Olisa Anwah
Patent Examiner
February 26, 2026
/OLISA ANWAH/Primary Examiner, Art Unit 2692