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 Objections
Claim 1 is objected to because of the following: on line 6, before “driving”, “first” should be deleted for the consistency.
Claim 20 is objected to because of the following: on line 7, before “driving”, “first” should be deleted for the consistency.
Appropriate correction is required.
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 1-19 of U.S. Patent No. 11,310,601, claims 1-20 of U.S. Patent No. 11,570,550 and claims 1-20 of U.S. Patent No. 11,991,513. Although the claims at issue are not identical, they are not patentably distinct from each other because they are claiming a bone conduction speaker, comprising a driving device or driving devices configured to generate a driving force, and a panel transmissibly connected to the driving device, all or part or a region of the panel being configured to interact, to contact or abut a user's body to conduct sound, wherein a region where the panel contacting or abutting the user's body has a normal line, an axis of the driving force or a straight line where the driving force is located is not parallel to the normal line.
Claims 1-19 of U.S. Patent No. 11,310,601, claims 1-20 of U.S. Patent No. 11,570,550 and claims 1-20 of U.S. Patent No. 11,991,513 do not specifically claim that an area of the region occupies more than 50% of an area of the panel. However, providing an area of the region where the panel contacting or abutting the user’s body occupies more than 50% of an area of the panel is known in the art. Further claims 1-19 of U.S. Patent No. 11,310,601, claims 1-20 of U.S. Patent No. 11,570,550 and claims 1-20 of U.S. Patent No. 11,991,513 do estimate an area of the region where the panel contacting or abutting the user’s body (note claim 17 of U.S. Patent No. 11,310,601; claim 10 of U.S. Patent No. 11,570,550; and claim 10 of U.S. Patent No. 11,991,513).
Therefore, it would have been obvious to one skilled in the art to provide any contact area of the region where the panel contacting or abutting the user’s body as claimed in claims 1-19 of U.S. Patent No. 11,310,601, claims 1-20 of U.S. Patent No. 11,570,550 and claims 1-20 of U.S. Patent No. 11,991,513 such as providing an area of the region occupying more than 50% of an area of the panel for providing a better area for contacting the user’s body and conducting sound in the system.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 2024/0244375 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are claiming a bone conduction speaker comprising a driving device configured to generate a driving force, and a panel transmissibly connected to the driving device, all or part of the panel being configured to contact or abut a user's body to conduct sound, wherein a region where the panel contacting or abutting the user's body has a normal line, a straight line where the driving force is located is not parallel to the normal line, or an angle between a straight line where the driving force is located and the normal line of the region is an acute angle.
Claims 1-20 of copending Application No. 2024/0244375 (reference application) do not specifically claim that an area of the region occupies more than 50% of an area of the panel. However, providing an area of the region where the panel contacting or abutting the user’s body occupies more than 50% of an area of the panel is known in the art. Further claims 1-20 of copending Application No. 2024/0244375 (reference application) do estimate an area of the region where the panel contacting or abutting the user’s body (note claim 1).
Therefore, it would have been obvious to one skilled in the art to provide any contact area of the region where the panel contacting or abutting the user’s body as claimed in claims 1-20 of copending Application No. 2024/0244375 such as providing an area of the region occupying more than 50% of an area of the panel for providing a better area for contacting the user’s body and conducting sound in the system.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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)(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.
Claims 1-2 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Westerkull (US 2016/0234613).
Regarding claim 1, Westerkull teaches a bone conduction speaker (figures 1, 4, 6, 8) comprising a driving device (102, 602, 802) configured to generate a driving force, and a panel (104, 105, 108, 404, 604, 804, figures 1, 4, 6, 8) transmissibly connected to the driving device (102, 602, 802, figures 1, 6, 8), all or part of the panel being configured to contact or abut a user's body to conduct sound (figures 1, 2, 6); wherein a region where the panel contacting or abutting the user's body has a normal line, and a straight line where the driving force of the driving device (102, 602, 802) is located is not parallel to the normal line of the contacting region (figure 6), and an area of the region occupies more than 50% of an area of the panel (figure 6).
Regarding claim 2, Westerkull shows that the straight line has a positive direction pointing out of the bone conduction speaker via the panel, the normal line has a positive direction pointing out of the bone conduction speaker, and an angle between the straight line and the normal line in the positive direction is an acute angle as claimed (figure 6).
Regarding claim 18, as broadly claimed, Westerkull shows that the region where the panel contacting or abutting the user's body is a plane (figures 1, 4, 6, 8).
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.
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.
Claims 3-5, 13, 15-17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Westerkull (US 2016/0234613).
Regarding claim 3, Westerkull teaches the driving device (102, 602, 802), wherein the straight line where the driving force of the driving device (102, 602, 802) is located is not parallel to the normal line of the contacting region (figure 6). Westerkull does not specifically disclose the driving device comprising a coil and a magnetic system, and an axis of the coil and the magnetic system as claimed.
However, the Examiner takes the Office Notice that providing a driving device in a speaker or a bone conduction speaker comprising a coil and a magnetic system is well known in the art.
Since Westerkull does not restrict to any type for the driving device (paragraph [0066]); it therefore would have been obvious to one skilled in the art to provide any type for the driving device in the system of Westerkull such as providing the driving device comprising a coil and a magnetic system, wherein an axis of the coil and the magnetic system is not parallel to the normal line, and the axis is perpendicular to at least one of a radial plane of the coil or a radial plane of the magnetic system for greater application.
Regarding claim 4, Westerkull teaches the bone conduction speaker comprising a housing (note the housing of the hearing aid device 101, 601, 801 and the vibrator 102, 602, 802), wherein the housing is connected to the panel via a connection medium (103, 105, 603, 605, 803, 805, figures 1, 6, 8) or the housing and the panel are integrally formed (figures 1, 6, 8).
Regarding claim 5, it is obvious that the coil in the system Westerkull can be connected to at least one of the panel or the housing (figures 1, 6) through a first transmission path and the magnetic system can be connected to at least one of the panel or the housing through a second transmission path (figures 1, 6).
Regarding claim 13, Westerkull teaches a driving device (102, 602, 802, figures 1, 6, 8), wherein the straight line where the driving force of the driving device (102, 602, 802) is located is not parallel to the normal line of the contacting region (figure 6). Westerkull does not specifically disclose that a count of driving devices is at least two as claimed. However, it would have been obvious to one skilled in the art to provide a plurality of driving devices or any count for the driving devices such as providing a count of driving devices being at least two, wherein the straight line where a resultant force composed of driving forces generated by the driving devices is located is not parallel to the normal line depending on the applications and the desired frequency characteristics in the system.
Regarding claims 15-16, Westerkull does not specifically disclose the dimensions for the panel (104, 604, 804, figures 1, 6, 8) with an area and a length of a side length of the panel as claimed. However, Westerkull does not restrict to any dimensions for the panel; it therefore would have been obvious to one skilled in the art to provide any dimensions for the panel in the system of Westerkull such as providing an area of the panel that is in a range from 20 mm2 to 1000 mm2, and a length of a side length of the panel that is in a range from 5 mm to 40 mm, 18 mm to 25 mm, or 11 to 18 mm for an alternate choice depending on the applications and the desired frequency characteristics in the system.
Regarding claim 17, Westerkull does not specifically disclose the angle between the straight line where the driving force is located and the normal line being a value as claimed. However, Westerkull does not restrict to any position and/or location of the driving device in relation to the panel and the contacting region to the skin of the user.
Therefore, it would have been obvious to one skilled in the art to provide any angle between the straight line where the driving force is located and the normal line in the system of Westerkull such as providing the angle that is a value satisfying one of between 5° and 80°, between 15° and 70°, between 25° and 50°, between 25° and 40°, between 28° and 35°, between 27° and 32°, between 30° and 35°, between 25° and 60°, between 28° and 50°, between 30° and 39°, between 31° and 38°, between 32° and 37°, between 33° and 36°, 33° and 35.8°, or 33.5° and 35° for better fitting to the individuals, depending on the applications and the desired frequency characteristics in the system.
Regarding claim 20, Westerkull teaches a bone conduction speaker (figures 1, 4, 6, 8), wherein the bone conduction speaker includes a driving device (102, 602, 802) configured to generate a driving force, and a panel (104, 105, 108, 404, 604, 804, figures 1, 4, 6, 8) transmissibly connected to the driving device (102, 602, 802, figures 1, 6, 8), all or part of the panel being configured to contact or abut a user's body to conduct sound (figures 1, 2, 6); wherein a region where the panel contacting or abutting the user's body has a normal line, and a straight line where the driving force of the driving device (102, 602, 802) is located is not parallel to the normal line of the contacting region (figure 6), and an area of the region occupies more than 50% of an area of the panel (figure 6).
Westerkull does not specifically disclose a bone conduction earphone comprising the bone conduction speaker as claimed. However, providing a bone conduction earphone comprising a bone conduction speaker is well known in the art.
Therefore, it would have been obvious to one skilled in the art to provide any type of a hearing device or an audio device for the bone conduction speaker of Westerkull such as providing a bone conduction earphone for greater application.
Allowable Subject Matter
Claims 6-12, 14 and 19 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Zheng et al. (US 11,115,751) teaches a bone conduction speaker including a magnetic circuit component for providing a magnetic field, a vibration component located in the magnetic field and a case, wherein the case includes a case panel facing a human body side and a case back opposite to the case panel and accommodate the vibration component that causes the case panel and the case back to vibrate.
Qi et al. (US 12,302,080) teaches a bone conduction speaker comprising a vibration conductive plate (1) and a vibration board (2), wherein the vibration conductive plate is set to be a first torus, and the vibration board is set as the second torus, wherein the vibration conductive plate is fixed with the vibration board, the first torus is fixed on a magnetic system, and the second torus comprises a fixed voice coil, which is driven by the magnetic system.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUYEN D LE whose telephone number is (571)272-7502. The examiner can normally be reached 9:30 am-6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fan Tsang can be reached at (571) 272-7547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HUYEN D LE/Primary Examiner, Art Unit 2694 HL
June 11, 2026
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