DETAILED ACTION
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 .
Acknowledgements
This Office Action is in response to the amendment received on 02/19/2026.
Claims 1 and 2 were canceled.
Claims 3-6 were newly introduced
Claims 3-6 are pending.
Claims 3-6 were examined.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Claim 3 recites “means for preventing dislodging of the mute from its soundproofing position”. However, Claim 3 also recites the following structural limitations: “a rim (8) that supports a removable connection (7) of the mute said rim is formed by two circumferential arcs (9) that respectively emerge from each side of a window (4) of the recorder, and said arcs are arranged symmetrically along at least one part of the contour of the head (1) of the recorder in a section thereof located in a transverse plane that contains an edge (3.1) of the mute's bevel (3)” (Emphasis added).
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
The newly introduced claims recite the term “rim”. This term is not lexicographically defined by the specification as filed. One of ordinary skill in the art would reasonably define a “rim” as “the outer often curved or circular edge or border of something”1, i.e. the outer edge of a recorder.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 was newly introduced to recite “A recorder with a mute comprising means for preventing dislodging of the mute from its soundproofing position”. However, from the claim language, it is unclear whether the “means” are a structural element of a recorder (i.e. a recorder comprising means), of the mute (i.e. a mute comprising means), or a combination of these elements (i.e. a recorder with a mute, (both) comprising means…). This duality renders the scope of the claims unclear, as one of ordinary skill in the art would not be able to reasonably determine which element (i.e. recorder, mute, or combination) comprises the “means”. For purposes of Examination, the ”means” is considered as comprised by the recorder. Dependent claims 4-6 are also rejected since they depend on claim 3.
The claims comprise reference characters. “Reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims. The reference characters, however, should be enclosed within parentheses so as to avoid confusion with other numbers or characters which may appear in the claims. Generally, the presence or absence of such reference characters does not affect the scope of a claim” - see MPEP 608.01. Examiner notes that while the presence or absence of such reference characters is optional, subject matter from the specification as filed shouldn’t be unduly imported into the claims.
Claim 3 recites “the contour of the head” in line 7. There is insufficient antecedent basis for this language in the claim. Dependent claims 4-6 are also rejected since they depend on claim 3.
Claim 3 recites “the mute's bevel” in line 8. There is insufficient antecedent basis for this language in the claim. Dependent claims 4-6 are also rejected since they depend on claim 3.
Claim 3 recites “said means is in the form of a rim (8) that supports a removable connection (7) of the mute said rim is formed by two circumferential arcs (9) that respectively emerge from each side of a window (4) of the recorder, and said arcs are arranged symmetrically along at least one part of the contour of the head (1) of the recorder in a section thereof ” in line 7. This language is unclear as the term "thereof" is not defined. For instance, it is unclear whether "a section thereof" is directed to a "a recorder with a mute", "a recorder", "a mute", "the contour", "the head", "the contour of the head". Therefore, the term "thereof" raises a duality in the claim language and one of ordinary skill in the art would not be able to reasonably determine what the term encompasses. Dependent claims 4-6 are also rejected since they depend on claim 3.
Claim 4 recites “the circumferential arcs of the section” in line 2. There is insufficient antecedent basis for this language in the claim.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 3-6 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Montemurro et al. (US 2010/0031801 A1), hereinafter Montemurro.
With respect to claim 3, Montemurro teaches a recorder with a mute (see Mute for a recorder, Figs. 2-3, recorder 22, mute 1, paragraph [0013]: “...the mute according to the present invention can be simply attached and removed from the recorder and is applicable to all of the commercially available recorders.”) comprising:
means for preventing dislodging of the mute from its soundproofing position, said means is in the form of a rim that supports a removable connection of the mute said rim is formed by two circumferential arcs that respectively emerge from each side of a window of the recorder, and said arcs are arranged symmetrically along at least one part of the contour of the head of the recorder in a section thereof located in a transverse plane that contains an edge of the mute's bevel (see Figs. 3 and 4, the "rim" is the outer diameter of the recorder in which the mute is attached to and touches the left side of the clip of the mute. Examiner notes the outer edges of the recorder form a ring, the outer edges "emerge" from each of the sides of a window of the recorder. These arcs are arranged symmetrically along at least one part of the contour of the head of the recorder (i.e. part in which the mute is attached to) and a section thereof is located in a transverse plane that contains an edge of the mute's bevel - i.e. Fig. 3, section represented by the section in the recorder aligned with the left side of the mute's clip. Note that at this section, the clip does not touch the upper part of the recorder head surface where the window is located, unlike in Fig. 4).
Examiner provides the interpretation of the section/circumferential arcs (marked in red), as follows:
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With respect to claim 4, Montemurro et al. teaches all the subject matter of the recorder with a mute as described above with respect to claim 3. Furthermore, Montemurro disclose a recorder with a mute wherein each of the two circumferential arcs of the rim has a length of less than half the circumferential arcs of the section, said circumferential arcs of the rim each run from one side of the window (4) along a circumferential arc of the section to the opposite side of the window (see Fig. 3, recorder section aligned with left side of mute's clip. Note that, because of the window, the arches are each smaller than half the arc of the section (i.e. smaller than half of the total perimeter as shown by the right side of the mute's clip).
With respect to claim 5, Montemurro et al. teaches all the subject matter of the recorder with a mute as described above with respect to claim 3. Furthermore, Montemurro disclose a recorder with a mute wherein the two circumferential arcs of the rim are joined such that the rim (8) covers the entire contour of the section from one side of the window (4) to the opposite side of the window (see Fig. 3, recorder section aligned with left side of mute's clip. Examiner notes the "contour of the section" is interpreted as the contour formed by the outer diameter of the recorder minus the window area not touched by the mute's clip on its left side). Regarding the BRI of the claim, Examiner notes that claim 5 recites “ such that...”. This language merely states the result of a limitation in the claim and adds nothing to the patentable or substance of the claim. “Such that” does not have patentable weight (see Texas Instruments Inc. v. International Trade Commission 26, USPQ2d 1010 (Fed Cir 1993); Griffin v. Bertina, 62 USPQ2d 1431 (Fed Cir 2002); Amazon.com Inc. v. Barnesandnoble.com Inc., 57 USPQ2d 1747 (CAFC 2001).
With respect to claim 6, Montemurro et al. teaches all the subject matter of the recorder with a mute as described above with respect to claim 3. Furthermore, Montemurro disclose a recorder with a mute wherein the rim is disposed below the mute (see Figs 3, note the Rim indicated is disposed below the mute 1. For instance, the lower edge of the recorder is below the lower edge of the mute).
Response to Arguments
Claim rejections - 35 USC § 102
Applicant’s amendments and arguments (see remarks, page 1, filed on 02/19/2026), with respect to the rejection of claims 1-2 under 35 USC § 102 have been fully considered, but are moot because the arguments do not apply to the reference being used in the current rejection of newly introduced claims 3-6.
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 EDUARDO D CASTILHO whose telephone number is (571)270-1592. The examiner can normally be reached Mon-Fri 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patrick McAtee can be reached at (571) 272-7575. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDUARDO CASTILHO/Primary Examiner, Art Unit 3698
1 See “Rim.” Merriam-Webster.com Dictionary, Merriam-Webster, https://www.merriam-webster.com/dictionary/rim.