DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 1-26 are pending.
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.
Claim(s) 1, 3, 8 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1, 6-8, 12 of U.S. Patent No. 11974084 (US Application No. 18510603). Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of the claims in the present application are covered by the scope of the claims in the patent with obvious wording variations as shown in the table below, for example:
18613067
18510603
Claims 1. An open earphone, wherein at least one dimension of the open earphone in a wearing state is different from the at least one dimension of the open earphone in a non-wearing state, the open earphone includes a sound production component (56, receiver element) including a transducer and a housing accommodating the transducer; and an ear hook (10, earhook) configured to be at least partially hung between an auricle and a head of a user (as shown in fig. 1c), and extend towards a side of the auricle away from the head of the user to fix the sound production component in a position near an ear canal of the user but not blocking the ear canal (as shown in fig. 1c); wherein in the wearing state, a minimum distance between the sound production component and a first portion of the ear hook is not less than 2 mm, in the non-wearing state, the minimum distance between the sound production component and the first portion of the ear hook is not greater than 3 mm.
Claim 1. An earphone, comprising: a sound production component, including a transducer and a housing accommodating the transducer; and an ear hook, including a first portion and a second portion, wherein the first portion is hung between an auricle and the head of a user, and the second portion extends toward a side of the auricle away from the head and is connected to the sound production component, the sound production component is worn near an ear canal without blocking an opening of the ear canal; wherein, in a non-wearing state, the ear hook and the sound production component form a first projection on a first plane; in a wearing state, the ear hook and the sound production component form a second projection on a sagittal plane of a human body; each of the first projection and the second projection includes an outer contour, a first end contour, an inner contour, and a second end contour; the outer contour, the first end contour, the second end contour, and a tangent segment connecting the first end contour and the second end contour of the first projection jointly define a first closed curve; and the outer contour, the first end contour, the second end contour, and a tangent segment connecting the first end contour and the second end contour of the second projection jointly define a second closed curve; the first closed curve has a first area, and the second closed curve has a second area, the first area being smaller than the second area; in the wearing state, the housing and the first portion of the ear hook clamp the auricle of the user and provide a clamping force of 0.03 N to 1 N to the auricle of the user.
6. The earphone of claim 1, wherein a difference between a minimum distance from the sound production component to the first portion in the wearing state and a minimum distance from the sound production component to the first portion in the non-wearing state is not smaller than 1 mm.
7. The earphone of claim 6, wherein in the non-wearing state, the minimum distance from the sound production component to the first portion is not greater than 3 mm.
8. The earphone of claim 6, wherein in the wearing state, the minimum distance from the sound production component to the first portion is not smaller than 2 mm.
Allowable Subject Matter
Claim(s) 4-7, 9-10, 13-14, 16, 18-24, 26 is/are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHYLESHA DABNEY whose telephone number is (571)272-7494. The examiner can normally be reached Monday - Wednesday and Friday 10:30-4:30PM.
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October 16, 2025
/PHYLESHA DABNEY/
Patent Examiner, Art Unit 2694 Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHYLESHA DABNEY whose telephone number is (571)272-7494. The examiner can normally be reached Monday - Wednesday and Friday 10:30-4:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fan Tsang can be reached at 5712727547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
December 19, 2025
/PHYLESHA DABNEY/Patent Examiner, Art Unit 2694