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 .
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.
Claims 1 – 18 are rejected under 35 U.S.C. 103 as being unpatentable over Schumaier (US 9,730,837) in view of Sheng (CN 203837447), and further in view of Williams (US 5,573,015).
With respect to claim 1, Schumaier teaches an earplug comprising a tapered body portion (Fig.2), comprising a central shaft (Fig.2, Item 20) comprising a hollow sheath and an attenuator (Fig.1, Item 14) disposed within the hollow sheath, and a plurality of contact structures (Fig.2, Items 18) arranged about an exterior of the central shaft, the contact structures being flexible and having a successively smaller size moving from a lateral end of the tapered body portion to a medial end of the tapered body portion (Fig.2); and a stopper portion (Fig.1, Item 16) attached to the lateral end of the tapered body portion, wherein the earplug is configured to be placed in an ear such that the medial end of the tapered body portion is securely disposed within an ear canal by contact between the contact structures and an interior surface of the ear canal and the stopper portion is rigid and securely disposed in an exterior portion of the ear.
However, Schumaier fails to disclose wherein the attenuator is made from bamboo wood and wherein the bamboo attenuator is a rod which extends throughout an entirety of a length of the central shaft.
On the other hand, Sheng teaches that bamboo wood has sound absorbing and sound insulation properties (Specification: language reading “Bamboo wood itself has sound-absorbing, sound insulation”).
Williams teaches an earplug (Figs.2 and 4) comprising a central shaft comprising a hollow shaft having a constant cross-sectional size and extending throughout an entirety of a body portion (Figs. 2 – 4) and an attenuator being a rod (Fig.4, Item 12) which extends throughout an entirety of a length of a central shaft (Fig.4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ bamboo wood as the Schumaier attenuator because bamboo wood has sound absorbing and sound insulation properties, as taught by Sheng, and extending a sound attenuator along the length of an earplug, as taught by Williams, would provide structural rigidity and would help tune the earplug to provide a predetermined acoustic performance as necessitated by the specific requirements of the particular application.
With respect to claim 2, Schumaier teaches wherein the earplug comprises at least three contact structures (Fig.2, Items 18).
With respect to claims 3 and 4, Williams teaches wherein a contact structure (Fig.4, Item 14) is formed from an elastomer (Col.4, Lines 33 – 55). Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
With respect to claims 5 and 6, Schumaier teaches wherein the stopper portion (Fig.1, Item 16) is formed from a rigid material and wherein the rigid material is a rigid rubber (Col.3, Lines 19 – 34). Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
With respect to claims 7 and 9, Schumaier teaches wherein each of the contact structures (Fig.2, Items 18) is disposed about an entirety of a circumference of the central shaft (Fig.2, Item 20), and wherein the contact structures have a rounded trough cross-sectional shape having a rounded trough bottom oriented toward the medial end of the tapered body portion and an open trough top oriented toward the lateral end of the tapered body portion (Fig.2).
With respect to claim 8, The Examiner considers that it would have been an obvious matter of design choice to provide the contact structures having an elliptical shape about the exterior of the central shaft because it would provide an user-preferred comfort-fit. Furthermore, it has been held by the courts that a change in shape or configuration, without any criticality, is nothing more than one of numerous shapes that one of ordinary skill in the art will find obvious to provide based on the suitability for the intended final application. See In re Dailey, 149 USPQ 47 (CCPA 1976).
With respect to claim 10, Williams teaches wherein the attenuator is a cylindrical rod (Figs.3 and 4, Item 12).
With respect to claims 11 and 13 – 17, The Examiner considers that it would have been an obvious matter of design choice to provide the earplug with desired dimensions and attenuation level because it would permit the earplug to comply with predetermined design constraints as necessitated by the specific requirements of the particular application. Furthermore, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
With respect to claim 12, Schumaier and Williams teach wherein the earplug is devoid of electrical components (see figures of respective patents).
With respect to claim 18, The Examiner takes official notice that it is well-known in the art to provide a hearing protection device, comprising a first earplug; a second earplug; and a connecting cord attached to the stopper portion of each of the first earplug and the second earplug because it would permit for the pair of earplugs to stay together, preventing losing one of the earplugs when not in use, as disclosed by Magidson et al. (US 6,440,339), Falco (US 5,668,354) or Westerdal (US 4,314,553).
Response to Arguments
Applicant’s arguments with respect to claims have been considered but are moot because the new ground of rejection relies on a reference that was not applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The Examiner respectfully reminds the Applicant that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Furthermore, the test for combining references is what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art. In re McLaughlin, 170 USPQ 209 (CCPA 1971) The references are evaluated by what they suggest to one versed in the art, rather than by their specific disclosures. In re Bozek, 163 USPQ 545 (CCPA 1969).
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.
The attached hereto PTO Form 892 lists prior art made of record that the Examiner considered it pertinent to applicant's disclosure.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDGARDO SAN MARTIN whose telephone number is (571)272-2074. The examiner can normally be reached on 9:00 - 5:00 M - F.
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/Edgardo San Martin/
Edgardo San Martín
Primary Examiner
Art Unit 2837
June 11, 2026
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