DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed, has been entered. Claims 1-20 are pending.
Terminal Disclaimer
The terminal disclaimer filed on 10/14/2024 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent Nos. 10194230, 11223893 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 9 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In this instance, the disclosure does not support the newly claimed limitation “applying of at least one adjustment based on a thermal condition associated with an area.”
Applicant’s specification (paragraph 0014-0019): “The inflation component 210 may be continually inflated, and the additional air may force out old air, thus keeping the earphone 200 and ear canal cool.”
As best understood, the inflating adjustment is made, then the result of “coolness” is realized. The terminology “based on” means that this condition would need to occur prior to the adjustment. The disclosure does not support a thermal condition being used as a source of inspiration for why the adjustment occurs.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a1/a2) as being anticipated by Goldstein (US Publication No. 20140146989).
Regarding claim 1, 3-5, Goldstein teaches an apparatus capable of performing a method comprising: assessing, based on information relating to a user of an audio output element (214, speaker) and a user, wherein at least portion of the audio output element (speaker, 214) is in contact with the user (¶0053-0057, wherein the physical parameters of occlusion are obtained, the parameters are used to select the amount of attenuation needed); and determining based on the assessing, one or more adjustments applicable to the audio output element (speaker, 214), wherein: wherein: at least one adjustment applies to positioning of the at least portion of the audio output element relative to the user; and the determining comprises setting or modifying the at least one adjustment based on effects of the positioning of the at least a portion of the audio output element on one or both of the outputting of the audio signals and the contact between the audio output element and the user (para 0072-0082; wherein the overall system is represented as an electrical system which shows the velocity (value/time) being used to show the condition adjustment); and configuring the audio output element, or an element or component associated with the audio output element, to apply at least one adjustment based on a thermal condition associated with an area where the audio output element is in contact with the user (¶0003-0007, occlusion to prevent noise and damage to the ear by pressure; ¶0037, inflate/deflate the audio output element which has the added effect of allowing airflow, thus a cooling effect).
Regarding claim 2, Goldstein teaches the method of claim 1, wherein the assessing comprises assessing one or more of: ambient noise, and one or more characteristics associated with at least one component of the audio output element that is used in controlling the contact (occlusion to prevent noise and damage to the ear by pressure; ¶0003-0007).
Regarding claim(s) 6-7, Goldstein teaches the method of claim 4 and 6 respectively, wherein the one or more positioning components (220; inflation component) comprise at least one physically-adjustable component, and wherein the modifying of one or more characteristics comprises making at least one physical adjustment in the at least one physically-adjustable component.
Regarding claim 8, Goldstein teaches the method of claim 7, wherein modifying the inflation of the at least one element comprise adjusting one or more both of injection of a substance into and releasing of the substance from the at least one inflation element (¶0053-0115; wherein it is taught to apply and how to apply adjustments for positioning).
Regarding claim 9, 11-12, Goldstein teaches a system comprising: an audio output element (speaker, 214) that is configured to output audio signals, wherein at least portion of the audio output element (speaker, 214); at least one circuit that is configured to: assess, based on the obtained information, one or both of outputting of the audio signals and contact between the audio output element and the user (occlusion to prevent noise and damage to the ear by pressure; ¶0003-0007; ¶0053-0057, wherein physical parameters of occlusion are obtained, the parameters are user to select the amount of attenuation needed); and determine, based on the assessing, one or more adjustments applicable to the audio output element, wherein: at least one adjustment applies to positioning of the at least portion of the audio output element relative to the user; and
the determining comprises setting or modifying the at least one adjustment based on effects of the positioning of the at least a portion of the audio output element on one or both of the outputting of the audio signals and the contact between the audio output element (speaker, 214) and the user (¶0063-0115; wherein it is taught to apply and how to apply adjustments for positioning); configure, the audio output element, or an element or component associated with the audio output element, to apply at least one adjustment based on a thermal condition associated with an area where the audio output element is in contact with the user (¶0003-0007, occlusion to prevent noise and damage to the ear by pressure; ¶0037, inflate/deflate the audio output element which has the added effect of allowing airflow, thus a cooling effect).
Regarding claim 10, Goldstein teaches the system of claim 9, wherein the at least one circuit is configured to assess, based on the obtained information, one or more of: ambient noise, and one or more characteristics associated with at least one component of the audio output element that is used in controlling the contact (occlusion to prevent noise and damage to the ear by pressure; ¶0003-0007).
Regarding claim 13, Goldstein (220) teaches the system of claim 12, wherein at least one of the one or more positioning elements (220) is incorporated into or coupled to the audio output element (speaker, 214).
Regarding claim 14, Goldstein teaches the system of claim 12, further comprising an adjuster (220) configured to generate a force for modifying at least one of the one or more characteristics of at least one of the one or more positioning components.
Regarding claim 15, Goldstein teaches the system of claim 14, wherein the adjuster (220) is configured to generate the force based on activities of the user.
Regarding claim 16, Goldstein teaches the system of claim 12, wherein the one or more positioning components comprise at least one physically-adjustable component, and wherein modifying the one or more characteristics comprises making at least one physical adjustment in the at least one physically-adjustable component (¶0063-0115, wherein it is taught to apply and how to apply adjustments for positioning).
Regarding claim 17, Goldstein teaches the system of claim 16, wherein the at least one physically-adjustable component comprises an inflation element, and wherein modifying the one or more characteristics comprises modifying inflation of the at least one inflation element to affect the contact with the user (¶0053-0115; wherein it is taught to apply and how to apply adjustments for positioning).
Regarding claim 18, Goldstein teaches the system of claim 17, comprising an inflation adjuster (220) that is configured to adjust the inflation of the at least one inflation element.
Regarding claim 19, Goldstein teaches the system of claim 18, wherein the inflation adjuster (220) is configured to modify the inflation of the at least one element by adjusting one or more both of injection of a substance into and releasing of the substance from the at least one inflation element.
Regarding claim 20, Goldstein teaches the system of claim 19, wherein the audio output element comprises one or more of: a headphone, a headset, an in-ear headphone, and an earbud (earpiece device, which could include all of the above, ¶0005).
Examiner’s Note
The referenced citations made in the rejection(s) above are intended to exemplify areas in the prior art document(s) in which the examiner believed are the most relevant to the claimed subject matter. However, it is incumbent upon the applicant to analyze the prior art document(s) in its/their entirety since other areas of the document(s) may be relied upon at a later time to substantiate examiner’s rationale of record. A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). However, “the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Response to Arguments
Applicant's arguments filed, have been fully considered but they are not persuasive.
With respect to the Applicant’s arguments dated 12/4/2025 pertaining to claim 1 and 9 that Goldstein fails to teach “configuring applying of at least one adjustment based on a thermal condition associated with an area where the audio output element is in contact with the user. As per the 35 USC 112 rejection (above), the Examiner could not find within the original disclosure of the present Application support for these new limitations. Furthermore, the Applicant did not provide reference of any supporting sections of the disclosure for the newly claimed language.
Based on the Applicant’s statements 12/4/2026, page 8, the Applicant states
“In this regard, Applicant notes that the specification teaches at, e.g., 56 that "[i]n some instances, the inflation component 210 may be continually inflated, and the additional air may force out old air, thus keeping the earphone 200 and ear canal cool ... [thus] the inflation component 210 may be configured to allow some air to escape even in inflated state." Applicant submits that a person having ordinary skill in the art would readily understand and appreciate that "keeping the earphone 200 and ear canal cool" would constitute a teaching of "a thermal condition associated with an area where the audio output element is in contact with the user," and that the inflation component 210, which is clearly a "an element or component associated with [an] audio output element (earphone 200)" would have to be configured to allow some air to escape even in an inflated state, to facilitate achieving such objective (keeping area cool) would constitute a teaching of applying at least one adjustment (allowing air to escape in an inflated state) and configuring thereof (configuring the inflation component 210 to do so).”
It is clear from the Applicant’s arguments and specification that the “coolness” is a result of/by product of the adjustment by the element; however, the claims state “…based on a thermal condition.
The terminology “based on” means that it is the foundation or inspiration or source of the action to be performed. In this case, the action is the adjustment by the element. So essentially, the claim is saying that the adjustment is not going to be performed unless the condition (lack of coolness) is detected beforehand. The Applicant does not have support in the specification for the adjustment being performed after lack of coolness is detected.
As best understood, the adjustment occurs first, and then the result “coolness” is realized. Therefore, the 35 USC 112 1st is maintained.
Conclusion
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January 3, 2025
/PHYLESHA DABNEY/Patent Examiner, Art Unit 2653