DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
Status of Claims
Claims 1-6 and 8-9 are rejected. Claims 7 and 10 are canceled.
Response to Arguments
Priority
Applicant's arguments filed 1/14/26 have been fully considered but they are not persuasive.
Applicant asserts that “a housing adapted to fit in an ear of a user” is disclosed in U.S. Provisional Patent Application 60818260 in Fig. 13 (ear phone 180) and page 83, line 45-page 84, line 8 (page 4). However, the Examiner disagrees. An ear phone is not the same as “a housing adapted to fit in an ear of a user.” There is not support for fitting inside an ear of a user. As shown in Fig. 13, ear phone 180 surrounds the ear and is not “a housing adapted to fit in an ear of a user” as claimed.
Applicant asserts that “a wireless transceiver disposed in the housing” is disclosed in U.S. Provisional Patent Application 60818260 in Fig. 13 (module 186) and page 83, line 45 and page 84, line 8 (network communication electronics) (page 4). However, the Examiner disagrees. While 186 is a mesh network communication electronics as disclosed on page 84, line 2, there is not support for this being in the housing that is adapted to fit in an ear of a user as claimed. As shown in Fig. 13, 186 is not adapted to fit in an ear of a user.
Applicant asserts that “wherein the accelerometer measures movement of the housing along three axes” is disclosed in U.S. Provisional Patent Application 60818260 in Fig. 13; page 48, lines 20-25; page 72, lines 33-36; page 83, line 45-page 84, line 8; page 105, lines 25-27; and page 109, lines 5-6 (page 4-5). However, the Examiner disagrees. While there is support for an accelerometer measuring in the x, y, and z axes as disclosed on page 72, lines 34-35 and an accelerometer as a part of 186 on the ear phone 180 in Fig. 13, see page 84, lines 2-4, there is not support for “the accelerometer measures movement of the housing” where the housing is adapted to fit in an ear of the user. There is no mention of an accelerometer being adapted to fit in an ear of a user that measures three axes.
Drawings
Applicant's arguments filed 1/14/26 have been fully considered but they are not persuasive.
Applicant asserts that some of the elements of claim 1 are shown in Fig. 13, and other elements not shown are not necessary to be shown in the drawings for understanding by one of ordinary skill in the art of the subject matter to be patented (page 5). However, the Examiner disagrees. However, 37 CFR 1.83(a) states:
(a) The drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box).
In this case, the elements indicated under the Drawing objection are not conventional features and must be shown for a proper understanding of the invention.
Claim Rejections - 35 USC § 112
Applicant's arguments filed 1/14/26 have been fully considered but they are not persuasive. Applicant argues that there are thousands of issued patents that include the term “Bluetooth” in the claims and that one of ordinary skill in the art would understand the claim limitation (page 6). However, the Examiner cites Applicant to MPEP 2173.05(u):
If the trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of the 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). See also Eli Lilly & Co. v. Apotex, Inc., 837 Fed. Appx. 780, 784-85, 2020 USPQ2d 11531 (Fed. Cir. 2020).
The 112(b) rejection is maintained.
Claim Rejections - 35 USC § 103
Applicant's arguments filed 1/14/26 have been fully considered but they are not persuasive.
Applicant asserts that Boesen ‘705 fails to disclose or suggest use of a three-dimensional/axis accelerometer as the inertial sensor 30 (page 7). However, the Examiner disagrees. Boesen ‘705 discloses:
¶29-the inertial sensor 30 can be a multiple axis accelerometer or other accelerometer; ¶25-although, the graphs of FIG. 2A-2C are only two-dimensional in nature, the present invention contemplates that additional more complex relationships and indicators can be monitored.
This teaching shows that there can be a three-dimensional/axis accelerometer.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 112(a) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 60/818260 (Provisional), Application No. 11/512630 (Continuation), Application No. 15/626022 (Continuation), Application No. 15/625483 (Continuation), and Application No. 16/781956 (Divisional), fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Claim 1 recites the following limitations that lack support in the above listed applications that the instant application claims priority to:
“a housing adapted to fit in an ear of a user”
“a wireless transceiver disposed in the housing” and
“wherein the accelerometer measures movement of the housing along three axes.”
While the applications recited above disclose a housing, they do not disclose being adapted to fit in an ear of a user. An ear phone embodiment is not the same as fitting inside an ear of a user because an ear phone only surrounds the ear. While the applications recited above disclose a wireless transceiver, they do not disclose the wireless transceiver disposed in the housing of the ear phone embodiment. While the applications received above disclose an x, y, and z axis accelerometer, they do not disclose the accelerometer measuring movement of the housing along three axes in the ear phone embodiment.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims.
The limitation of “a housing adapted to fit in an ear of a user” in claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The limitation of “a speaker disposed in the housing” in claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. The instant specification discloses “in addition, a speaker (not shown) is provided to enable voice communication over the mesh network” (page 2).
The limitation of “a wireless transceiver disposed in the housing” in claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The limitation of “a processor disposed in the housing” in claim 5 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The limitation of “a push-button disposed in the housing” in claim 6 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The limitation of “a rechargeable battery” in claims 8-9 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim 2 is 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 2 contains the trademark/trade name Bluetooth. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe wireless communication and, accordingly, the identification/description is indefinite.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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.
Claims 1-5 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Boesen ‘705 (US 20030002705 filed on 9/6/02) in view of Beaumont (WO 03073924 filed on 3/3/03).
Regarding claim 1, Boesen ‘705 teaches a wearable appliance, comprising: a housing adapted to fit in an ear of a user (¶9-an earpiece housing adapted for fitting to an ear of the user); a wireless transceiver disposed in the housing (¶30-a transceiver within the earpiece housing 14), wherein the wireless transceiver is adapted to communicate with a cellular telephone over a wireless personal area network (¶34-the voice communication device 10 may be in communication with a remote unit 40 that includes a short range transceiver 42 and a telephone transceiver 44 such as a cellular telephone that can also be electrically connected to a PDA 46; ¶33-Bluetooth wireless standard or any particular wireless standard or protocol; ¶39); an accelerometer disposed in the housing (¶21-an earpiece with an inertial sensor; ¶29-the inertial sensor 30 can be an accelerometer; Fig. 3-inertial sensor 30 is a part of housing 14), wherein the accelerometer measures movement of the housing along three axes (¶29-the inertial sensor 30 can be a multiple axis accelerometer or other accelerometer; ¶25-although, the graphs of FIG. 2A-2C are only two-dimensional in nature, the present invention contemplates that additional more complex relationships and indicators can be monitored); a microphone disposed in the housing (¶28-the air conduction sensor 26 can be an ear microphone); and a speaker disposed in the housing (¶40-speaker within the earpiece; ¶31-speaker 24). Boesen ‘705 does not teach an optical transmitter disposed in the housing and an optical receiver disposed in the housing.
Beaumont relates to a sensing device suitable for the non-invasive monitoring of physiological factors, the device being particularly suitable for location within the ear canal. The invention also relates to provision for duplex audio communication for use with said sensing device (Abstract). Beaumont further teaches the invention using the following steps:
an optical transmitter disposed in the housing and an optical receiver disposed in the housing (claim 6-wherein the physiological sensing means comprises pulse oximetry optical transmitters and receiver; claim 1-a sensing device comprising: a) physiological sensing means; and b) locating means to locate the sensing means inside an ear canal).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective
filing date of the claimed invention to modify the invention of Boesen ‘705 to include an optical transmitter disposed in the housing and an optical receiver disposed in the housing of Beaumont in order for non-invasive monitoring of physiological factors (Beaumont, page 1, lines 3-4).
Regarding claim 2, the combination of Boesen ‘705 and Beaumont teaches the wearable appliance of claim 1, wherein the wireless transceiver is a Bluetooth® transceiver (Boesen ‘705, ¶33-the control unit 34 includes a single chip containing a processor 35 and a transceiver 37. One example of such a chip is the Blue Core-2-ROM single chip Bluetooth system available from CSR, Bluetooth wireless standard).
Regarding claim 3, the combination of Boesen ‘705 and Beaumont teaches the wearable appliance of claim 1, further comprising: a temperature sensor (Boesen ‘705, ¶38-a temperature sensor in the earpiece).
Regarding claim 4, the combination of Boesen ‘705 and Beaumont teaches the wearable appliance of claim 1, further comprising: a physiological sensor (Boesen ‘705, ¶38-a temperature sensor in the earpiece).
Regarding claim 5, the combination of Boesen ‘705 and Beaumont teaches the wearable appliance of claim 1, further comprising: a processor disposed in the housing (Boesen ‘705, ¶9-a processor is operatively connected to the inertial sensor and disposed within the earpiece).
Claim 6 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Boesen ‘705 in view of Beaumont as applied to claim 1 above, and further in view of Boesen ‘068 (US 20030115068 filed on 12/13/01).
Regarding claim 6, the combination of Boesen ‘705 and Beaumont teaches the wearable appliance of claim 1. However, the combination of Boesen ‘705 and Beaumont does not teach a push-button disposed on the housing.
Boesen ‘068 teaches a push-button disposed on the housing (¶27-earpiece unit according to the present invention, this embodiment using an input switch 64; Fig. 5).
Boesen ‘068 relates to a voice communication device with foreign language translation. Given the widespread availability of travel the need for foreign language translation has increased. The present invention has applications in numerous areas and instances where foreign language translation is desirable (¶1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Boesen ‘705 to include a push-button disposed on the housing of Boesen ‘068 in order for the input switch to allow one of the plurality of microphones to be selected (Boesen ‘068, ¶27).
Claims 8-9 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Boesen ‘705 in view of Beaumont as applied to claim 1 above, and further in view of Sacha (US 20050033384 filed on 8/4/04).
Regarding claim 8, the combination of Boesen ‘705 and Beaumont teaches the wearable appliance of claim 1. However, the combination of Boesen ‘705 and Beaumont does not teach a rechargeable battery disposed in the housing.
Sacha teaches a rechargeable battery disposed in the housing (¶22-to power this cochlear implant, a conventional hearing aid battery can be used, or a rechargeable lithium based, or other chemistry battery).
Sacha relates to a transcanal, transtympanic cochlear implant device ideally suited for those profoundly deaf, where conventional hearing aids are of limited or no value (¶2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective
filing date of the claimed invention to modify the invention of Boesen ‘705 to include a rechargeable battery disposed in the housing of Sacha in order to charge the cochlear implant and add to the user's convenience and ease of operation (Sacha, ¶22).
Regarding claim 9, the combination of Boesen ‘705, Beaumont, and Sacha teaches the wearable appliance of claim 8, wherein the rechargeable battery is recharged by inductive coupling (Sacha, ¶22-the recharging of this battery can be accomplished using induction methods in which the primary coil, located in the exterior ear module, is configured to receive the induction recharge energy; ¶57).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective
filing date of the claimed invention to modify the invention of Boesen ‘705 to include wherein the rechargeable battery is recharged by inductive coupling of Sacha in order to charge the cochlear implant and add to the user's convenience and ease of operation (Sacha, ¶22).
Conclusion
THIS ACTION IS MADE FINAL. 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 LAURA HODGE whose telephone number is (571) 272-7101. The examiner can normally be reached M-F: 8:00 am-5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, UNSU JUNG can be reached at (571) 272-8506. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/L.N.H./Examiner, Art Unit 3792
/UNSU JUNG/Supervisory Patent Examiner, Art Unit 3792
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