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 1-21 are pending.
Terminal Disclaimer
The terminal disclaimer filed on 7/27/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 12167206 (US Application No. 18528738) has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 20-21 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. With the respect to the Applicant’s new limitation of claims 20-21, the Applicant fails to support the newly added limitations presented in the amendment dated 7/27/2026 and the specification fails to teach direction of the membranes relative to each other.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-8, 10, 14-15, 18-19 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Shennib (WO 2009/023738).
Regarding claims 1-4 and 19, Shennib teaches an earpiece (20) for insertion into an ear canal of a user, comprising: an earpiece housing (20) having a distal end, a proximal end, and an outer surface extending between the distal end and the proximal end, the earpiece housing having a sound outlet at the proximal end and a microphone inlet (23); a receiver (24) configured to provide an audio output signal to the ear canal when the earpiece is inserted into the ear canal, wherein the receiver has a receiver axis, the receiver axis being a longitudinal axis of the receiver; and a microphone configured to provide a first microphone input signal, the microphone comprising a microphone membrane (diaphragm), wherein the microphone has a microphone axis that is perpendicular to the microphone membrane, the receiver axis and the microphone axis are non-parallel and form a first angle that is larger than 5 degrees.
Regarding claims 5-6, Shennib teaches the earpiece according to claim 1, wherein the earpiece housing (20) has an outlet axis perpendicular to the sound outlet (outlet, 25), the outlet axis forming a second angle with respect to the receiver axis of the receiver, wherein the second angle is larger than 5 degrees.
Regarding claim 7, Shennib teaches the earpiece according to claim 1, wherein the receiver (24) comprises a receiver outlet at a proximal end of the receiver.
Regarding claim 8, Shennib teaches the earpiece according to claim 7, further comprising a sound tube (25, outlet) for guiding sound from the receiver outlet towards the sound outlet of the earpiece, wherein at least a part of the sound tube and the receiver axis form an angle that is larger than 5 degrees.
Regarding claim 10, Shennib teaches the earpiece according to claim 1, the earpiece housing having a cable outlet (31, handle), the cable outlet being distal to the microphone inlet.
Regarding claim 14, Shennib teaches the earpiece according to claim 1, further comprising a dome (surrounding battery, 27), wherein the dome extends circumferentially along the outer surface of the earpiece housing.
Regarding claim 15, Shennib teaches the earpiece according to claim 1, further comprising a vent mechanism (25 sound outlet) in the earpiece housing, wherein the vent mechanism is proximal to the receiver (24).
Regarding claim 18, Shennib teaches the earpiece according to claim 1, wherein the receiver axis is parallel to a primary direction of sound output (25 outlet) of the receiver (24).
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.
Claim(s) 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shennib.
Regarding claim 20-21, Shennib fails to teach the earpiece according to claim 1, wherein the microphone membrane is non-perpendicular to a receiver membrane of the receiver (claim 20); or the microphone membrane is parallel to a receiver membrane of the receiver (claim 21).
However, the Examiner takes Official Notice that changing directions of the diaphragm in the audio devices to affect the response sound waves received/transmitted.
It would have been obvious matter of design choice to alter the sound wave sensitivity based on the angle of the diaphragm in the reception/transmittal audio device since Applicant has not disclosed that having the particular orientation solves any stated problem or is for any particular purpose and it appears that the invention would perform well with an orthogonal or parallel diaphragms as claimed [In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)].
Allowable Subject Matter
Claim(s) 9, 11-13, 16-17 is/are allowed.
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive.
With respect to the Applicant’s argument pertaining to the location of the axes being non-parallel to each other, the Examiner disagrees.
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As shown above, three dimensional Cartesian representation of an object has three axes. In the instance of Shennib, the receiver and microphone objects have 3 dimensions (lateral, longitudinal, and depth). So, for example, there are instances where the lateral axis of the receiver will be perpendicular (non-parallel) to the longitudinal axis of the microphone. Therefore, Shennib anticipates what is claimed.
Also as shown in the left picture, the angle between the 3 axes is 90 degrees. As shown in the right picture (fig. 5) of Shennib, it shows between solid line and dashed lines that an angle greater than 5 degrees is possible. Therefore, Shennib anticipates what is claimed.
Conclusion
THIS ACTION IS MADE FINAL. 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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October 2, 2026
/PHYLESHA DABNEY/Patent Examiner, Art Unit 2653
