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 .
Response to Arguments
Applicant’s arguments with respect to claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 9,898,245. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant set of claims are generally broader version of the patented claims, which anticipate the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the species or sub-genus should the genus issue as a patent after the species or sub-genus. Both the patent and the application are directed toward adjusting volume based on a trigger event, and reverting the volume back to original levels once the trigger event ends.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 10,437,553. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant set of claims are generally broader version of the patented claims, which anticipate the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the species or sub-genus should the genus issue as a patent after the species or sub-genus. Both the patent and the application are directed toward adjusting volume based on a trigger event, and reverting the volume back to original levels once the trigger event ends.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,789,690. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant set of claims are generally broader version of the patented claims, which anticipate the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the species or sub-genus should the genus issue as a patent after the species or sub-genus. Both the patent and the application are directed toward adjusting volume based on a trigger event, and reverting the volume back to original levels once the trigger event ends.
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)(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 – 5, 7 – 12, 14 – 18, and 20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Fadell et al. (hereinafter Fadell, U.S. Patent Application Publication 2018/0286424).
Regarding Claim 1, Fadell discloses:
A control system (e.g. device for volume control; see summary, abstract) comprising:
one or more processors (e.g. processor; [0010]);
a network interface (e.g. communications interface; [0058]; further note communications link and interfaces in Fig. 4 as well); and
tangible, non-transitory computer-readable media comprising instructions encoded therein, wherein the instructions, when executed by the one or more processors, cause the control system to perform functions (e.g. computer readable medium and program instructions for implementing; [0010]) comprising:
detecting occurrence of a trigger condition, wherein the trigger condition relates to an emergency condition detected by a sensor (e.g. triggering ducking; [0022]; further note detect an indication of an “emergency” siren; [0094]; done using a microphone {“sensor”}; [0021], [0022]);
after an emergency alarm corresponding to the detected trigger condition has been activated (e.g. see step 506 of Fig. 5; further note, configured in response to detection and identification of certain specific sounds... detect an indication of an emergency siren such as from an ambulance or fire truck; [0094]), and while two or more playback devices are configured into a playback group (e.g. note use of one or more bone conduction transducers; [0026]; and Fig. 3 detailing each housing 306 includes a BCT; [0054]-[0057]; in other words two BCTs, or a “group” of BCTs) and playing audio content at a volume level at or below a first volume limit for the playback group (e.g. first audio signal may include, for example, music content that is played back to the user of the device 300 via the BCTs; [0074]; note first volume limit interpreted as the maximum volume the device of Fadell can sustain), cause the playback group to activate a second volume limit (e.g. device 300 detects when volume adjustments are desirable and ducks the audio accordingly; [0075]), wherein the second volume limit is lower than a volume of the emergency alarm (e.g. responsively duck the first audio signal to increase the user’s aural awareness; [0094]); and
when the volume level is already below the second volume limit, forgoing trigger condition-based volume level changes to the two or more playback devices (e.g. At block 514, responsive to the determination that the second ambient noise is indicative of ambient speech, the device 300 may continue the ducking of the first audio signal; [0087]; in essence, while the first audio signal is being ducked in 510 and a second ambient noise is received and determined to be of interest in 512, the ducking that was initiated earlier in 508 is continued in 514, or simply put, the volume is unchanged).
Regarding Claim 2¸in addition to the elements stated above regarding claim 1, Fadell further discloses:
wherein when the volume level at which the playback group is playing the audio content exceeds the second volume limit (e.g. device 300 detects when volume adjustments are desirable and ducks the audio accordingly; [0075]), causing the playback group to activate the second volume limit additionally causes the playback group to reduce the volume level at which the playback group is playing the audio content to a volume level that is at or below the second volume limit (e.g. detect in the second audio signal an indication of an emergency siren... responsively duck the first audio signal to increase the user's aural awareness; [0094]; See further step 508 of Fig. 5 as well).
Regarding Claim 3¸in addition to the elements stated above regarding claim 1, Fadell further discloses:
wherein the first volume limit is configurable (e.g. user may wish to adjust a volume of the music content that is played back from the first audio signal; [0075]; and/or user may not desire to adjust the volume of their music playback; [0080]), and wherein the second volume limit is configurable (e.g. device is “configured” to duck the first audio signal in response to detection of certain sounds; {0094]).
Regarding Claim 4¸in addition to the elements stated above regarding claim 1, Fadell further discloses:
wherein the functions further comprise: after detecting deactivation of the trigger condition relating to the emergency condition detected by the sensor, causing the playback group to return to the volume level at which the playback group was playing the audio content before activation of the second volume limit (e.g. when the device determines that the conversation has ended, for instance when it detects no ambient speech, it may return the audio content to its original volume; [0023]; device 300 may duck the first audio signal temporarily, such that the first audio signal will eventually resume to its previous playback state; [0083]; note continued ducking unless speech not detected in subsequent paragraphs as well).
Regarding Claim 5, in addition to the elements stated above regarding claim 1, Fadell further discloses:
wherein the volume level is configurable independently of the first volume limit and the second volume limit (e.g. user may wish to adjust a volume of the music content that is played back from the first audio signal; [0075]; and/or user may not desire to adjust the volume of their music playback; [0080]; note ability for user to manually adjust volume and/or play/pause controls of the device; [0095]).
Regarding Claim 7, in addition to the elements stated above regarding claim 1, Fadell further discloses:
wherein the control system comprises one of a smart phone (e.g. mobile phone [0026], [0038], [0061]), tablet (e.g. tablet computer; [0004], [0061]), or network device (e.g. laptop computer, desktop computer; [0061]) configured to control the playback group (see control operations effected by above devices detailed in Fig. 5, and paras [0071]+).
Regarding Claim 8, claim 8 is directed to the method corresponding to the system presented in claim 1 and is rejected under the same grounds stated above.
Regarding Claim 9, claim 9 is directed to the method corresponding to the system presented in claim 2 and is rejected under the same grounds stated above.
Regarding Claim 10, claim 10 is directed to the method corresponding to the system presented in claim 3 and is rejected under the same grounds stated above.
Regarding Claim 11, claim 11 is directed to the method corresponding to the system presented in claim 4 and is rejected under the same grounds stated above.
Regarding Claim 12, claim 12 is directed to the method corresponding to the system presented in claim 5 and is rejected under the same grounds stated above.
Regarding Claim 14, claim 14 is directed to the method corresponding to the system presented in claim 7 and is rejected under the same grounds stated above.
Regarding Claim 15, claim 15 is directed to the computer readable medium corresponding to the system presented in claim 1 and is rejected under the same grounds stated above.
Regarding Claim 16, claim 16 is directed to the computer readable medium corresponding to the system presented in claim 2 and is rejected under the same grounds stated above.
Regarding Claim 17, claim 17 is directed to the computer readable medium corresponding to the system presented in claim 3 and is rejected under the same grounds stated above.
Regarding Claim 18, claim 18 is directed to the computer readable medium corresponding to the system presented in claim 4 and is rejected under the same grounds stated above.
Regarding Claim 20, claim 20 is directed to the computer readable medium corresponding to the system presented in claim 7 and is rejected under the same grounds stated above.
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 6, 13 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fadell et al. (hereinafter Fadell, U.S. Patent Application Publication 2018/0286424) in view of Ganatra (U.S. Patent Application Publication 2015/0171813).
Regarding Claim 6, in addition to the elements stated above regarding claim 1, Fadell further discloses:
wherein the second volume limit corresponds to a second playback volume that is less than the first playback volume (e.g. ducking the audio corresponds to lowering the volume; [0075]).
Fadell, however, fails to explicitly disclose:
wherein the playback group is configurable to play audio content at a maximum playback volume, wherein the first volume limit corresponds to a first playback volume that is less than the maximum playback volume.
In a related field of endeavor (e.g. ambient audio volume compensation), Ganatra discloses:
wherein the playback group is configurable to play audio content at a maximum playback volume, wherein the first volume limit corresponds to a first playback volume that is less than the maximum playback volume (e.g. in some cases, the adjustment amount may be subject to a maximum amount such that the output volume ceases to increases in corresponding increases of the intensity of the ambient sound; [0036]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate ambient sound compensation with volume limits as taught by Ganatra with the device of Fadell, because doing so would have caused the listener's attention to focus on the first category of sounds, and, as such, ought not be concealed or ignored by the listener (e.g., due to interference with the audio) and such that the output volume ceases to increases in corresponding increases of the intensity of the ambient sound ([0033] and [0036] of Ganatra).
Regarding Claim 13, claim 13 is directed to the method corresponding to the system presented in claim 6 and is rejected under the same grounds stated above.
Regarding Claim 19, claim 19 is directed to the computer readable medium corresponding to the system presented in claims 5 and 6 and is rejected under the same grounds stated above.
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 Andrew C Flanders whose telephone number is (571)272-7516. The examiner can normally be reached M-F 8:30-5:00.
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The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW C FLANDERS/ Supervisory Patent Examiner, Art Unit 2655
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