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 . See 35 U.S.C. § 100 (note).
Art Rejections
Anticipation
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.
(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.
Claims 1–3, 11–15, 17–19, 21, 22 and 24 are rejected under 35 U.S.C. 102(a)(1), (2) as being anticipated by CN 114666696 (published 23 December 2020) (“Bu”).
Claim 1 is drawn to “an earpiece.” The following table and figures illustrate the correspondence between the claimed earpiece and the Bu reference.
Claim 1
The Bu Reference
“1. An earpiece comprising:
The Bu reference similarly describes an earphone, or earpiece. Bu at Abs., pp.36–38, FIG.11.
“an electro-acoustic transducer;
Bu’s earphone includes electro-acoustic transducer 20, which is an electrodynamic low-frequency speaker. Bu at FIG.11.
”a housing supporting the electro-acoustic transducer such that the housing and the electro-acoustic transducer together define a first acoustic volume and a second acoustic volume, the electro-acoustic transducer being arranged such that a first radiating surface of the transducer radiates acoustic energy into the first acoustic volume and such that a second radiating surface of the transducer radiates acoustic energy into the second acoustic volume;
The earphone has a main body part 111 that defines a cavity 101 split into a front cavity 102 and rear cavity 104 by speaker 20. Bu at pp.36–38, FIGs.10, 11
“a mesh disposed along an outlet of the housing and arranged to inhibit debris from entering the first acoustic volume;
Bu depicts a mesh covering outlet 103 and that will prevent large debris from entering front cavity 102. See Figure 2, below.
“a first microphone supported in the housing, the first microphone comprising a first microphone port for sensing pressure; and
Bu’s main body part 111 houses a microphone 30 with a port aligned with a sound pickup hole 15 in circuit board 60. Bu at pp.36–38, FIGs.13, 14.
“a chimney surrounding the first microphone port and mechanically coupling the first microphone to the mesh,
Circuit board 60 acts as the claimed chimney by surrounding the microphone port and mechanically coupling microphone 30 to the mesh component. See id. at pp.36–38, FIG.11.
“wherein the housing defines a nozzle,
Bu’s earphone includes a nozzle as seen in Figures 1 and 2, below.
“wherein the first acoustic volume is acoustically coupled to an acoustic passage in the nozzle such that the electro-acoustic transducer is acoustically coupled to a user’s ear canal when the earpiece is worn, and
Front cavity 102 is coupled to a sound outlet, or acoustic passage, 103 in the nozzle region. Id. at pp.36–38, FIG.11,
“wherein the mesh is secured directly to the nozzle.”
Bu’s mesh is directly secured to the nozzle. See Figures 1 and 2, below.
Table 1
PNG
media_image1.png
673
1403
media_image1.png
Greyscale
Figure 1: Marked-up copy of Bu at FIG.11 (edited to show correspondence with the claimed invention).
PNG
media_image2.png
356
412
media_image2.png
Greyscale
Figure 2: Marked-up copy of Bu at FIG.10 (edited to show correspondence with the claimed invention).
For the foregoing reasons, the Bu reference anticipates all limitations of the claim.
Claim 2 depends on claim 1 and further requires the following:
“further comprising a channel extending through a wall of the chimney and acoustically coupling the first microphone port to the first acoustic volume.”
Circuit board 60 similarly has channels 604 extending through its sidewalls to couple microphone 30 to first volume 102 via sound outlet 103b. Bu at FIGs.11, 12, 13. For the foregoing reasons, the Bu reference anticipates all limitations of the claim.
Claim 3 depends on claim 2 and further requires the following:
“wherein the channel has an acoustic impedance that is greater than an acoustic impedance of the chimney.”
Channel 604 is narrower than the portions 103a and 103b of chimney 60, so channel 604 inherently has a greater acoustic impedance (i.e., less air can flow through it at once). Bu at FIG.12. For the foregoing reasons, the Bu reference anticipates all limitations of the claim.
Claim 11 depends on claim 10 [sic, claim 1] and further requires the following:
“further comprising a resonant tube disposed within the nozzle and defining the acoustic passage, wherein the resonant tube and the first acoustic volume together define a Helmholtz resonator.”
Bu’s nozzle 113 includes an opening 103b that together with volume 102 will inherently define a Helmholtz resonator (i.e., imagine a jug: opening 103b acts as the neck of the jug leading into volume 102, which acts as the jug’s internal volume, or resonant volume). See Bu at FIGs.11, 12. For the foregoing reasons, the Bu reference anticipates all limitations of the claim.
Claim 12 depends on claim 11 and further requires the following:
“further comprising a channel extending through a wall of the chimney and acoustically coupling the first microphone port to the first acoustic volume, wherein the channel acoustically couples the first microphone port to the first acoustic volume via the acoustic passage of the nozzle.”
Circuit board 60 similarly has channels 604 extending through its sidewalls to couple microphone 30 to first volume 102 via sound outlet 103b. Bu at FIGs.11, 12, 13. For the foregoing reasons, the Bu reference anticipates all limitations of the claim.
Claim 13 depends on claim 10 [sic, claim 1] and further requires the following:
“further comprising an ear tip supported on the nozzle and configured to form a tight acoustic seal with a user's ear canal when the earpiece is worn.”
Bu’s earphone includes an ear sleeve 50 supported on nozzle 113 in order to tightly and acoustically seal the user’s ear canal. See Bu at FIGs.9, 11. For the foregoing reasons, the Bu reference anticipates all limitations of the claim.
Claim 14 depends on claim 1 and further requires the following:
“wherein the housing includes a receptacle for receiving wiring for powering the electro-acoustic transducer.”
Housing 111 includes a space, or receptacle, in rear volume 104 for battery and associated wires for power. Bu at FIG.11. For the foregoing reasons, the Bu reference anticipates all limitations of the claim.
Claim 15 depends on claim 1 and further requires the following:
“wherein the housing includes a receptacle for receiving wiring for powering the first microphone.”
Housing 111 includes a space, or receptacle, in rear volume 104 for battery and associated wires for power. Bu at FIG.11. For the foregoing reasons, the Bu reference anticipates all limitations of the claim.
Claim 17 depends on claim 1 and further requires the following:
“wherein the electro-acoustic transducer is a moving coil transducer.”
Bu’s speaker 20 is also described as a moving coil transducer. See Bu at FIG.11. For the foregoing reasons, the Bu reference anticipates all limitations of the claim.
Claim 18 depends on claim 1 and further requires the following:
“further comprising a second microphone supported by the housing, wherein the first microphone is a feedback microphone for sensing pressure in a user's ear canal and providing a first microphone signal for feedback noise reduction, and wherein the second microphone is a feedforward microphone for sensing pressure external to a user's ear canal and providing a second microphone signal for feedforward noise reduction.”
Bu similarly describes providing feedback and feedforward noise reduction by using microphone 30 as a feedback microphone and combining it with a feedforward microphone 71 supported by the earphone’s housing and that senses pressure external to the user’s ear canal. Bu at Abs., Background, p.34. For the foregoing reasons, the Bu reference anticipates all limitations of the claim.
Claim 19 depends on claim 1 and further requires the following:
“wherein the chimney is mechanically secured to the first microphone so as to form an acoustic seal therebetween.”
One of ordinary skill in the art would have understood that Bu is describing circuit board 60 and microphone 30 as being sealably connected. In particular, microphone 30 receives sound through an opening 15 in circuit board 60. See Bu at FIG.13. For the foregoing reasons, the Bu reference anticipates all limitations of the claim.
Claim 21 depends on claim 1 and further requires the following:
“wherein chimney is mechanically secured to the mesh via adhesive or heat staking.”
The Bu reference describes adhering circuit board 60 to nozzle 113, which includes the mesh. Bu at p.37. For the foregoing reasons, the Bu reference anticipates all limitations of the claim.
Claim 22 depends on claim 1 and further requires the following:
“wherein the first microphone is mounted on a first surface of a printed wiring board such that the first microphone port is aligned substantially concentrically with a hole that extends through the printed wiring board, and wherein the chimney surrounds the hole in the printed wiring board and is mechanically coupled to an opposite, second surface of the printed wiring board, such that the chimney is mechanically coupled to the first microphone via the printed wiring board.”
Bu mounts microphone 30 on a first surface of printed circuit board 60, aligning the microphone port with a hole 15 extending through board 60. Bu at. FIGs.11, 13, 15. The remaining thickness of board 60, on the opposite side, forms a chimney that surrounds hole 15. Bu at FIGs.11, 13. For the foregoing reasons, the Bu reference anticipates all limitations of the claim.
Claim 24 depends on claim 1 and further requires the following:
“wherein the nozzle is configured to be coupled to an eartip.”
Likewise, Bu’s nozzle piece couples with an ear sleeve 50, or eartip. Bu at FIG.11. For the foregoing reasons, the Bu reference anticipates all limitations of the claim.
Obviousness
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 4–7 and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over the Bu.
Claims 8 and 9 are rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Bu and US Patent Application Publication 2021/0099791 (filed 26 September 2019) (“Grinker”).
Claim 16 is rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Bu and US Patent Application Publication 2021/0409879 (effectively filed 25 June 2020) (“Reimer”).
Claim 4 depends on claim 1 and further requires the following:
“wherein the channel has an acoustic impedance that is greater than 2x an acoustic impedance of the chimney.”
The Bu reference depicts channel 604 as more than twice as narrow as portions 103a and 103b, considered individually or together. Bu at FIGs.12, 13. This would have reasonably suggested to one of ordinary skill in the art forming channel 604 and portions 103a and 103b as shown, resulting in channel 604 as having an inherent acoustic impedance greater than twice an acoustic impedance of circuit board 60. For the foregoing reasons, the Bu reference makes obvious all limitations of the claim.
Claim 5 depends on claim 1 and further requires the following:
“further comprising: a front port configured to couple a user's ear canal to a space outside the housing so as to relieve pressure in the user's ear canal when the earpiece is worn.”
The Bu reference teaches and suggests including an air vent 116 to couple a front volume 102 to the ambient. Bu at p. 35. Bu describes air vent 116 in connection with an alternative embodiment that is different from the one discussed in connection with claim 1. However, one of ordinary skill in the art would have reasonably recognized that the same principles apply in both embodiments, and that it would be beneficial to include an air vent in both of Bu’s embodiments to prevent discomfort due to pressure imbalances between front volume 102 and the ambient. Accordingly, it would have been obvious for one of ordinary skill in the art at the time of filing to have modified each of Bu’s earphone embodiments to include an air vent 116 that equalizes pressure between the user’s ear canal and front volume 102 and the ambient. For the foregoing reasons, the Bu reference makes obvious all limitations of the claim.
Claim 6 depends on claim 5 and further requires the following:
“wherein a first, inlet end of the front port extends to the mesh.”
In Bu’s first embodiment, front port 116 includes an inlet located near the sound outlet 103. Applying this to Bu’s second embodiment, one of ordinary skill would have reasonably located it near sound outlet 103, which is located at and faces the mesh. See Bu at FIGs.11, 12. For the foregoing reasons, the Bu reference makes obvious all limitations of the claim.
Claim 7 depends on claim 6 and further requires the following:
“wherein the first, inlet end of the front port is mechanically secured to the mesh via an adhesive or heat staking.”
The Bu reference teaches and suggests throughout its disclosure the use of adhesives to mechanically couple its elements together. See Bu at p.37. This would have reasonably suggested to one of ordinary skill in the art using adhesive to connect the inlet end of port 116 to the mesh portion (i.e., the area surrounded by and connected to ear sleeve 50). For the foregoing reasons, the Bu reference makes obvious all limitations of the claim.
Claim 8 depends on claim 6 and further requires the following:
“further comprising: a rear port coupling the second acoustic volume to the space outside the housing, wherein respective outlet ends of the rear port and the front port combine before exiting the housing via a combined exit volume and an exit port.”
Claim 9 depends on claim 1 and further requires the following:
“further comprising: a front port coupling the first acoustic volume to a space outside the housing; and
“a rear port coupling the second acoustic volume to the space outside the housing, wherein respective outlet ends of the rear port and the front port combine before exiting the housing via a combined exit volume and an exit port.”
Claims 8 and 9 are addressed together. Bu does not describe a rear port and does not describe combining a front port and rear port into an exit volume connected to an exit port. However, the Grinker reference expands and Bu’s earphone design by teaching and suggesting adding a rear vent that allows for expansion of the earphone’s rear volume, improving frequency response. Grinker at ¶¶ 3, 4, FIG. 24–28, FIG.2. Grinker further teaches and suggests combining front and rear ports in a combined volume that vents to the ambient through a shared exit port, allowing further control over frequency response and pressure equalization. Id. Accordingly, it would have been obvious for one of ordinary skill in the art at the time of filing to have modified Bu’s earphone to include the claimed ports and volumes, configured as claimed. For the foregoing reasons, the combination of the Bu and the Grinker references makes obvious all limitations of the claims.
Claim 16 depends on claim 1 and further requires the following:
“16. A hearing aid comprising the earpiece of claim 1, the hearing aid further comprising: a casing configured to sit behind a user's pinna when worn; and wiring coupling the casing to the earpiece.”
Though described as a wireless earphone, one of ordinary skill in the art would have recognized that the Bu reference teaches various techniques for implementing earpieces, generally. One of ordinary skill would have thus reasonably considered and expected that Bu’s earphone design would be useful in the related field of hearing aids, particularly for a receiver-in-the-ear (RITE) hearing aid that has an earpiece connected by a wire to a BTE unit whose casing sits behind a user’s pinna. See, e.g., Reimer at Abs., ¶ 148, FIG.5. Accordingly, it would have been obvious for one of ordinary skill in the art at the time of filing to have applied Bu’s teachings to any similar device, such as Darbut’s RITE hearing aid. For the foregoing reasons, the combination of the Bu and the Reimer references makes obvious all limitations of the claim.
Claim 20 depends on claim 1 and further requires the following:
“wherein the chimney is mechanically secured to the first microphone via adhesive.”
The Bu reference teaches and suggests throughout its disclosure the use of adhesives to mechanically couple its elements together. See Bu at p.37. This would have reasonably suggested to one of ordinary skill in the art using adhesive to connect the circuit board 60 to microphone 30. For the foregoing reasons, the Bu reference makes obvious all limitations of the claim.
Summary
Claims 1–9, 11–22 and 24 are rejected under at least one of 35 U.S.C. §§ 102 and 103 as being unpatentable over the cited prior art. 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.
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 C.F.R. § 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.
Allowable Subject Matter
Claim 23 is objected to for reciting allowable subject matter while depending on a rejected base claim. The claim would be allowable if rewritten in independent from, including all limitations of its base claim and any and all intervening claims.
Claim 23 depends on claim 1 and further requires the following:
“wherein the chimney is secured directly to the mesh.”
Bu does not fairly disclose, teach or suggest securing its PCB/chimney 80 directly to its mesh since that would prevent fitting of loudspeaker 80 between the chimney 80 and the mesh. See Figure 1, above. For the foregoing reasons, the claim contains allowable subject matter.
Issues Under 35 U.S.C. § 112
Indefiniteness
The following is a quotation of 35 U.S.C. § 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 11–13 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 11–13 lack antecedent basis because they depend on cancelled claim 10. This would prevent one of ordinary skill from reasonably understanding the scope of the claims. For the foregoing reasons, the claims are rejected.
Double Patenting
Basis
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).
Rejection
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of US Patent 12,069,442 (the ‘442 Patnt). Although the claims at issue are not identical, they are not patentably distinct from each other.
The following table illustrates the correspondence between claim 1 of this Application and claims 1, 22 and 24 of the ‘442 Patent.
This Application
The ‘442 Patent
“1. An earpiece comprising:
“1. An earpiece comprising:
“an electro-acoustic transducer;
“an electro-acoustic transducer;
”a housing supporting the electro-acoustic transducer such that the housing and the electro-acoustic transducer together define a first acoustic volume and a second acoustic volume, the electro-acoustic transducer being arranged such that a first radiating surface of the transducer radiates acoustic energy into the first acoustic volume and such that a second radiating surface of the transducer radiates acoustic energy into the second acoustic volume;
“a housing supporting the electro-acoustic transducer such that the housing and the electro-acoustic transducer together define a first acoustic volume and a second acoustic volume, the electro-acoustic transducer being arranged such that a first radiating surface of the transducer radiates acoustic energy into the first acoustic volume and such that a second radiating surface of the transducer radiates acoustic energy into the second acoustic volume;
“a mesh disposed along an outlet of the housing and arranged to inhibit debris from entering the first acoustic volume;
“a mesh disposed along an outlet of the housing and arranged to inhibit debris from entering the first acoustic volume;
“a first microphone supported in the housing, the first microphone comprising a first microphone port for sensing pressure; and
“a first microphone supported in the housing, the first microphone comprising a first microphone port for sensing pressure; and
“a chimney surrounding the first microphone port and mechanically coupling the first microphone to the mesh,
“a chimney surrounding the first microphone port and mechanically coupling the first microphone to the mesh,
“wherein the housing defines a nozzle,
“22. The earpiece of claim 1, wherein the housing defines a nozzle configured to be coupled to an eartip…
“wherein the first acoustic volume is acoustically coupled to an acoustic passage in the nozzle such that the electro-acoustic transducer is acoustically coupled to a user’s ear canal when the earpiece is worn, and
“24. The earpiece of claim 22, wherein the chimney comprises wall that surrounds the first microphone port…wherein the wall and the nozzle together define a second acoustic passage that extends between the first acoustic volume and the mesh.
“wherein the mesh is secured directly to the nozzle.”
“[22.] wherein the mesh is secured directly to the nozzle.
“[1.] wherein the chimney is secured directly to the mesh via adhesive or heat staking.”
Table 2
The table above illustrates that claims 1, 22 and 24 of the ‘442 Patent correspond very closely to the claimed invention. The ‘442 Patent’s claims are narrower in some aspects, but would anticipate the claimed invention if they were available as prior art. Accordingly, the claims are rejected on the basis of nonstatutory double-patenting.
Summary
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.
Conclusion
This is a continuation of applicant's earlier Application No. 17/670,046. All claims are identical to, patentably indistinct from, or have unity of invention with the invention claimed in the earlier application (that is, restriction (including lack of unity) would not be proper) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 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 C.F.R. § 1.17(a)) pursuant to 37 C.F.R. § 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WALTER F BRINEY III whose telephone number is (571)272-7513. The examiner can normally be reached M-F 8 am-4:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Carolyn Edwards can be reached on 571-270-7136. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Walter F Briney III/
/CAROLYN R EDWARDS/Supervisory Patent Examiner, Art Unit 2692
Walter F Briney IIIPrimary ExaminerArt Unit 2651
2/13/2026