DETAILED ACTION
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
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, 17, and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,108,203 (the ‘203 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 13-14 of the ‘203 Patent recites all the features of Claims 1, 17, and 19-20. A nonstatutory double patenting rejection is appropriate where a claim in an application under examination claims subject matter that is different, but not patentably distinct, from the subject matter claimed in a prior patent or a copending application. The claim under examination is not patentably distinct from the reference claim(s) if the claim under examination is anticipated by 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, 1052, 29 USPQ2d 2010, 2015-16 (Fed. Cir. 1993). Here, Claims 13-14 of the ‘309 Patent only differs because it is more narrow than Claim 1 of the present application. See the table below for a comparison of claim language.’
Instant Application
The ‘203 Patent
1. An apparatus for audio signal output, comprising1:
a bone conduction assembly configured to generate a bone conduction acoustic wave2;
an air conduction assembly configured to generate an air conduction acoustic wave3, wherein the bone conduction acoustic wave and the air conduction acoustic wave represent a same audio signal4, and a phase difference between the bone conduction acoustic wave and the air conduction acoustic wave is smaller than a threshold5; and
a housing configured to accommodate at least a portion of the bone conduction assembly and the air conduction assembly6;
wherein the air conduction assembly includes a first vibration diaphragm7 physically connected with the bone conduction assembly and a second vibration diaphragm physically connected with the housing8;
the air conduction acoustic wave is generated based on the first vibration diaphragm, the second vibration diaphragm9, and a vibration of at least one of the bone conduction assembly or the housing when the bone conduction assembly generates the bone conduction acoustic wave.
17. The apparatus of claim 1, wherein at least one of the first vibration diaphragm and the second vibration diaphragm includes10:
a main portion physically connected with the bone conduction assembly11, the main portion including a base plate and a sidewall formed a sub-space to accommodate at least a portion of the bone conduction assembly12; and
an auxiliary portion physically connected with the housing13.
19. The apparatus of claim 1, wherein at least one of the first vibration diaphragm and the second vibration diaphragm includes an annular structure14, an inner wall of the annular structure surrounds the bone conduction assembly, and an outer wall of the annular structure is physically connected with the housing15.
1. An apparatus for audio signal output, comprising1:
a bone conduction assembly configured to generate a bone conduction acoustic wave2;
an air conduction assembly configured to generate an air conduction acoustic wave3, wherein the air conduction assembly includes one or more vibration diaphragms7 physically connected with at least one of the bone conduction assembly or the housing, the air conduction acoustic wave generating based on the one or more vibration diaphragms9 and the vibration of the at least one of the bone conduction assembly or the housing when the bone conduction assembly generates the bone conduction acoustic wave10, the bone conduction acoustic wave and the air conduction acoustic wave represent a same audio signal4, and a phase difference between the bone conduction acoustic wave and the air conduction acoustic wave is smaller than a threshold5; and
a housing configured to accommodate at least a portion of the bone conduction assembly and the air conduction assembly6;
wherein at least one of the one or more vibration diaphragms includes10 a main portion physically connected with the bone conduction assembly11 and an auxiliary portion physically connected with the housing13, the main portion including a base plate and a sidewall formed a sub-space to accommodate at least a portion of the bone conduction assembly12; or,
at least one of the one or more vibration diaphragms includes an annular structure14, an inner wall of the vibration diaphragm surrounds the bone conduction assembly, and an outer wall of the vibration diaphragm is physically connected with the housing15.
13. The apparatus of claim 1, wherein the one or more vibration diaphragms include a first vibration diaphragm7 physically connected with the bone conduction assembly and a second vibration diaphragm physically connected with the housing8.
20. The apparatus of claim 1, wherein a bottom surface of the housing1 that is opposite to a sidewall of the housing that contacts with a user2 when the user wears the apparatus3 includes a resonance frequency4 less than a threshold5.
14. The apparatus of claim 13, wherein a resonance frequency4 of a bottom surface of the housing1 when a user wears the apparatus3 is less than a threshold5, the bottom surface of the housing being opposite to a sidewall of the housing that contacts with the user2.
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kunimoto et al., U.S. Patent No. 10,469,935, patented on November 5, 2019 (Kunimoto).
As to Claim 1, Kunimoto discloses an apparatus [1] for audio signal output, comprising: a bone conduction assembly [25, 28, 29] configured to generate a bone conduction acoustic wave (the bone conduction assembly generates mechanical vibrations; col. 3, line 67-col. 4, lines 1-3); an air conduction assembly [16, 26] configured to generate an air conduction acoustic wave (col. 3, lines 62-67), wherein the bone conduction acoustic wave and the air conduction acoustic wave represent a same audio signal (the signal is fed to coil [27], which causes both assemblies to vibrate; col. 3, lines 59-61), and a phase difference between the bone conduction acoustic wave and the air conduction acoustic wave is smaller than a threshold (the phase difference here would be zero, since they are generated simultaneously); and a housing [11, 12, 14, 15, 22, 23] configured to accommodate at least a portion of the bone conduction assembly [25, 28, 29] and the air conduction assembly [16, 26]; wherein the air conduction assembly [16, 26] includes a first vibration diaphragm [26] physically connected with the bone conduction assembly [25, 28, 29] and a second vibration diaphragm [16] physically connected with the housing [22, 23] (see Fig. 3); the air conduction acoustic wave is generated based on the first vibration diaphragm [26], the second vibration diaphragm [16] (col. 3, lines 59-61), and a vibration of at least one of the bone conduction assembly [25, 28, 29] or the housing [22] when the bone conduction assembly [25, 28, 29] generates the bone conduction acoustic wave (col. 3, line 67-col. 4, lines 1-3).
Allowable Subject Matter
Claims 2-16 and 18 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. The following is a statement of reasons for the indication of allowable subject matter: Claim 2 recites the unique features of a first cavity and a second cavity defined by the first vibration diaphragm, the second vibration diaphragm is located in the second cavity, a first portion of the housing around the first cavity is physically connected with the bone conduction assembly and configured to transfer a vibration of the bone conduction assembly, and the air conduction acoustic wave is led out from the second cavity. The closest prior art does not disclose or suggest such features.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ryan Robinson whose telephone number is (571) 270-3956. The examiner can normally be reached on Monday through Friday from 9 am to 5 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Fan Tsang, can be reached on (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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/RYAN ROBINSON/Primary Examiner, Art Unit 2694
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