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 .
Double Patenting – Statutory
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 9-18 and 20 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 10-20 of prior U.S. Patent No. 12075208 B2. This is a statutory double patenting rejection. Specifically, claims 9-18 and 20 of the pending application are substantial duplicates of claims 10-20 of the patent, as both sets of claims cover the same thing, despite a slight difference in wording. The claim mapping is as follows:
Current Application
U.S. Patent No. 12075208 B2
Claim 9
Claim 10
Claim 10
Claim 11
Claim 11
Claim 12
Claim 12
Claim 13
Claim 13
Claim 14
Claim 14
Claim 15
Claim 15
Claim 16
Claim 16
Claim 17
Claim 17
Claim 18
Claim 18
Claim 19
Claim 20
Claim 20
Double Patenting – Nonstatutory
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 1-8 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12075208 B2. The claim mapping is as follows:
Current Application
U.S. Patent No. 12075208 B2
Claim 1
Claim 1
Claim 2
Claim 2
Claim 3
Claim 3
Claim 4
Claim 4
Claim 5
Claim 5
Claim 6
Claim 6
Claim 7
Claim 7
Claim 8
Claim 8
Claim 19
Claim 9
Although the claims at issue are not identical, they are not patentably distinct from each other. Mainly, the claims of the pending application are broader than the corresponding claims of the patent. Claim 1 recites a method for tuning a loudspeaker system as similarly recited in claim 1 of the patent, but it does not disclose substantially attenuating an open pipe resonance and improving a midrange performance of the loudspeaker system with the ETF structure. In addition, the limitations in dependent claims 2-8 and 19 parallel those of dependent claims 2-9 of the patent. As such, they are rejected under obviousness-type double patenting over the previously patented narrower claim(s). In re Van Ornum, 686 F.2d 937, 214 USPQ 761.
Allowable Subject Matter
6. Claims 1-8 and 19 would be allowable pending the filing of a terminal disclaimer to overcome the nonstatutory double patenting set forth in this Office action.
7. The following is a statement of reasons for the indication of allowable subject matter:
Independent claim 1 recites a method for tuning a loudspeaker system, the loudspeaker system comprising a loudspeaker enclosure with a port opening and an interior volume, a driver supported by the enclosure, and a vent lumen associated with the port opening and configured to provide communication between the interior volume and the environment. The loudspeaker system further comprises an Eigen Tone Filter (“ETF”) structure comprising a first pipe segment, a second pipe element substantially coaxially aligned with the first pipe segment, and a circumferential slot or sidewall gap between the first and second pipe segments and being positioned within the vent lumen.
The closest prior art, cited by Applicant, disclose various ported loudspeaker systems having port or vent structures that can include pipe elements in a substantially coaxially aligned arrangement, but do not disclose or suggest, either alone or in combination, a loudspeaker system and corresponding method as recited in the claims, including an Eigen Tone Filter (“ETF”) structure comprising a first pipe segment, a second pipe element substantially coaxially aligned with the first pipe segment, and a circumferential slot or sidewall gap between the first and second pipe segments and being positioned within the vent lumen.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SABRINA DIAZ whose telephone number is (571)272-1621. The examiner can normally be reached Monday-Friday 9am-5pm.
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, Ahmad Matar can be reached at 5712727488. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SABRINA DIAZ/Examiner, Art Unit 2693
/AHMAD F. MATAR/Supervisory Patent Examiner, Art Unit 2693