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 43 is objected to because of the following informalities: Claim 43 sets forth a rear hook assembly that includes the metal body, the metal connector and a wire; however it appears that the metal body is a wire (as disclosed) and not as provided a metal body and a wire (distinct from one another). 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 34, 35, 36, 38, 40, 41, 47, 49, 50, 51, 52 and 54 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9/1, 13, 13, 14, 11, 12, 16, 16, 15, 17, 17 and 1 of U.S. Patent No. 12,212,908 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
The patent claims include all the limitations of the instant application claims with only difference being obvious wording variations describing the same feature. Claim 9/1 of the patent includes all the features of claim 34 of the present application. The patent claims also include additional limitations. Specifically, claim 9/1 of the patent additionally sets forth at least two sub-functional assemblies, an ear hook assembly and antenna not present in claim 34 of the application. Hence the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, “a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim”, In re Goodman, 29 USPQ2d 2010. “Thus, the generic invention is ‘anticipated’ by the species of the patented invention” and the instant “application claims are generic to the species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”). The limitations of claims 35, 36, 38, 40, 41, 47, 49, 50, 51, 52 and 54 are set forth in claims 13, 13, 14, 11, 12, 16, 16, 15, 17, 17 and 1 of the patent.
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) 34-35 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Zou (US 2021/0368253 A1).
Re claim 34: Zou teaches an acoustic output device (figures 1-7), comprising:
a speaker assembly, configured to convert audio signals into vibration signals (left earphone (111) and right earphone (112); a functional assembly (151, 152) electrically connected to the speaker assembly; and
a supporting structure(13), configured to be connected to the speaker assembly and the functional assembly, wherein the supporting structure includes a metal body (1111) and a metal connector (1101)sleeved and fixed on one end of the metal body (see discussion in paragraph [0072], noting that magnetic contact member (1101) is inherently formed from a metal, and the end of the metal body is electrically connected to the functional assembly via the metal connector (figures 1-7).
Re claim 35: see arrangement of figure 7
Claim Rejections - 35 USC § 103
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.
Claim(s) 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zou in view of Essabar et al. (US 2011/0135134 A1).
Re claim 36: The teaching of Zou is discussed above and incorporated herein. Zou does not teach to weld connections between metal parts as set forth. Essabar et al. teaches in a similar environment to use connector welding (see discussion in paragraph [0024] so that the parts being welded to not readily come apart. It would have been obvious to one of ordinary skill in the art to incorporate such a welding taught by Essabar et al. into the arrangement of Zhou to predictably provide a connection between metal parts that do not readily come apart. Therefor the claimed subject matter would have been obvious before the filing of the invention.
Allowable Subject Matter
Claim 37-42, 43-45 and 47-54 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 and if any double patenting rejection has been overcome.
The following is a statement of reasons for the indication of allowable subject matter: The claimed acoustic output device including in combination those features of claim 36/34 wherein an end of the metal body is further exposed from an outer end face of the metal connector, and a welding point of the metal body and the metal connector is formed between an exposed part of the metal body and the outer end face of the metal connector as set forth in claim 37 is neither taught by nor an obvious variation of the art of record. The claimed acoustic output device including in combination those features of claim 34 wherein the metal body is connected to the metal connector by die casting as set forth in claim 38 is neither taught by nor an obvious variation of the art of record. The claimed acoustic output device including in combination those features of claim 34 wherein a deformation of a first part of the metal body located inside the metal connector relative to a second part of the metal body located outside the metal connector is less than or equal to a first deformation threshold, and the first deformation threshold is within a range of 0 ~ 10% as set forth in claim 39 is neither taught by nor an obvious variation of the art of record. The limitations of claims 40-42 depend on those limitations of claim 39/34. The claimed acoustic output device including in combination those features of claim 34 wherein the supporting assembly includes a rear hook assembly, the rear hook assembly includes the metal body, the metal connector, and a wire as set forth in claim 43 is neither taught by nor an obvious variation of the art of record. The limitations of claims 44-45 and 47-53 depend upon those features of claim 43/34. The claimed acoustic output device including in combination those features of claim 34, wherein the metal body is further acted as an antenna of the acoustic output device as set forth in claim 54 is neither taught by nor an obvious variation of the art of record.
Response to Arguments
Applicant’s arguments, with respect to the rejection(s) of claim(s) 34 under 35 § USC 102 (Essabar et al. ) and (35 USC §103 (Lie in view of Essabar et al.) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Zou teaching the newly set forth combination of limitations as amended.
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.
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/ANDREW SNIEZEK/ Primary Examiner, Art Unit 2693
/A.S./Primary Examiner, Art Unit 2693 6/29/26
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