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 .
DETAILED ACTION
Applicant is advised that the new art unit number is 2692. Please use the new art unit number for all future communications.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/30/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification - Title
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, line 6: “not block” should be --do not block--.
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 1, 6, 17 (hereinafter instant claims 1, 6, 17) are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 & 9 of U.S. Patent No. 11,671,738. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 1, 6, 17: Patent claims 1 & 9 includes all of the limitations of instant claims 1, 6, 17. Hence, instant claims 1, 6, 17 are generic to the species of invention covered by patent claim 1 & 9. Therefore, instant claims 1, 6, 17 are anticipated by patent claim 9 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 species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims").
Claims 1, 2, 11, 16 (hereinafter instant claims 1, 2, 11, 16) are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 15 & 16 of U.S. Patent No. 12,126,953. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 1, 2, 11, 16: Patent claim 16 includes all of the limitations of instant claims 1, 2, 11, 16. Hence, instant claims 1, 2, 11, 16 are generic to the species of invention covered by patent claims 1, 15 & 16. Therefore, instant claims 1, 2, 11, 16 are anticipated by patent claims 1, 15 & 16 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 species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims").
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, 4, 6-10, 17-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Karkkainen et al (US 2013/0051585).
Regarding claim 1, Karkkainen discloses an acoustic output apparatus (Figs. 10/11), comprising:
at least one acoustic driver (Fig. 11: 64) configured to output sounds through at least two sound guiding holes (60a and 60b), the at least two sound guiding holes including a first sound guiding hole (60a) and a second sound guiding hole (60b) (see Fig. 11 and ¶ 0050); and
a supporting structure (Fig. 10: 52) configured to support the at least one acoustic driver, both the supporting structure and the at least one acoustic driver approach but not block a user's ear canal when a user wears the acoustic output apparatus (see Figs. 10/11), wherein:
a ratio of a distance between the user's ear canal and a sound guiding hole that is closer to the user's ear canal among the first and second sound guiding holes to a distance between the first and second sound guiding holes is less than or equal to 1 (as seen in Fig. 10, the lower 60 (i.e. 60b) is to the left slightly more than 60a, and thus 60b can be considered closer to the ear canal) (from the viewing angle in Fig. 11, 60b and the ear canal overlap and thus the distance between them can be considered to be zero; and the ratio of 0/X is 0 for any value of X, so the ratio is less than or equal to 1), the distance between the first sound guiding hole and the second sound guiding hole is less than or equal to 3 centimeters (Figs. 10 and 11 show 60a and 60b being a distance less than 3 cm apart), and
the sounds output by the acoustic driver through the first sound guiding hole and the second sound guiding holes have opposite phases (¶ 0050).
Regarding claim 4, Karkkainen discloses the acoustic output apparatus of claim 1, wherein a hook (54) is provided on the supporting structure (50), and a shape of the hook matches a shape of a user's auricle, and the acoustic output apparatus is worn on a user's ear through the hook (see Fig. 10).
Regarding claim 6, Karkkainen discloses the acoustic output apparatus of claim 1, wherein the first and second sound guiding holes are located on a same side of the user's ear canal (see Fig. 11).
Regarding claim 7, Karkkainen discloses the acoustic output apparatus of claim 1, wherein the ratio of the distance between the user's ear canal and the sound guiding hole that is closer to the user's ear canal among the first and second sound guiding holes to the distance between the first and second sound guiding holes is less than or equal to 0.6 (0/X=0 as already set forth above in the claim 1 rejection).
Regarding claim 8, Karkkainen discloses the acoustic output apparatus of claim 7, wherein the ratio of the distance between the user's ear canal and the sound guiding hole that is closer to the user's ear canal among the first and second sound guiding holes to the distance between the first and second sound guiding holes is less than or equal to 0.3 (0/X=0 as already set forth above in the claim 1 rejection).
Regarding claim 9, Karkkainen discloses the acoustic output apparatus of claim 1, wherein a distance between the first sound guiding hole and the second sound guiding hole is less than or equal to 2 centimeters (Figs. 10 and 11 show 60a and 60b being a distance less than 2 cm apart).
Regarding claim 10, Karkkainen discloses the acoustic output apparatus of claim 9, wherein the distance between the first sound guiding hole and the second sound guiding hole is less than or equal to 1 centimeter (Figs. 10 and 11 show 60a and 60b being a distance less than 1 cm apart).
Regarding claim 17, Karkkainen discloses the acoustic output apparatus of claim 1, wherein the at least one acoustic driver includes a vibration diaphragm (64), a first acoustic route (58a) from the vibration diaphragm to the first sound guiding hole (60a) is different from a second acoustic route (58b) from the vibration diaphragm to the second sound guiding hole (60b) (see Fig. 11 and ¶ 0050).
Regarding claim 18, Karkkainen discloses the acoustic output apparatus of claim 17, wherein
a first side of the vibration diaphragm is provided with a first chamber for transmitting sound, the first chamber (Fig. 11: right half of 66) being acoustically coupled with the first sound guiding hole (60a), and
a second side of the vibration diaphragm is provided with a second chamber (Fig. 11: left half of 66) for transmitting sound, the second chamber being acoustically coupled with the second sound guiding hole (60b) (see Fig. 11 and ¶ 0050).
Regarding claim 19, Karkkainen discloses the acoustic output apparatus of claim 18, wherein a ratio of a length of the first acoustic route (58a) to a length of the second acoustic route (58b) is 0.5-2 (As seen in Fig. 11, route 58b is slightly longer than route 58a meaning that the ratio is less than 1; and it is also clear from Fig. 11 that route 58b is less than twice as long as route 58a meaning that the ratio is greater than 0.5. Thus, based on this analysis it can be said that the ratio is somewhere inside the range of 0.5-1, which meets the claim limitation of 0.5-2).
Regarding claim 20, Karkkainen discloses the acoustic output apparatus of claim 1, wherein the acoustic output apparatus is integrated into a phone (definitions of “phone” in the Merriam-Webster dictionary include “a device that converts electrical energy into sound waves and is worn over or inserted into the ear” which is what the apparatus of Figs. 10/11 is), and a housing of the phone is used as the supporting structure (see Figs. 10/11).
Allowable Subject Matter
Claims 2, 11, 16 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if the Double Patenting rejection involving US Patent No. 12,126,953 is overcome.
Claims 3, 5, 12-15 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:
In regard to claim 2, the prior art of record (excluding Double Patenting reference US Patent No. 12,126,953) alone or in combination fails to teach or suggest the following limitations of the claim in combination with the rest of the limitations of the claim:
“wherein the acoustic output apparatus further includes a controller configured to control a phase of the sounds generated by the at least one acoustic driver using a control signal such that the sounds output by the at least one acoustic driver through the first sound guiding hole and the second sound guiding hole have opposite phases.”
In regard to claim 3, the prior art of record alone or in combination fails to teach or suggest the following limitations of the claim in combination with the rest of the limitations of the claim:
“wherein the controller is configured to control an amplitude of the sounds generated by the at least one acoustic driver using the control signal such that the sounds output by the at least one acoustic driver through the first sound guiding hole and the second sound guiding hole have different amplitudes.”
In regard to claim 5, the prior art of record alone or in combination fails to teach or suggest the following limitations of the claim in combination with the rest of the limitations of the claim:
“wherein the first sound guiding hole and the second sound guiding hole are located on both sides of a user's auricle, respectively.”
In regard to claim 11, the prior art of record (excluding Double Patenting reference US Patent No. 12,126,953) alone or in combination fails to teach or suggest the following limitations of the claim in combination with the rest of the limitations of the claim:
“wherein
the supporting structure includes a baffle, the first sound guiding hole and the user's ear canal being located on one side of the baffle,
the second sound guiding hole is located on the other side of the baffle, and
a length of an acoustic route from the first sound guiding hole to the user's ear canal is less than a length of an acoustic route from the second sound guiding hole to the user's ear canal.”
In regard to claim 12, the prior art of record alone or in combination fails to teach or suggest the following limitations of the claim in combination with the rest of the limitations of the claim:
“wherein a ratio of a height of the baffle to the distance between the first and second sound guiding holes is less than or equal to 5.”
In regard to claim 15, the prior art of record alone or in combination fails to teach or suggest the following limitations of the claim in combination with the rest of the limitations of the claim:
“wherein a ratio of a distance between a center of the baffle and a connection line between the first and second sound guiding holes to a height of the baffle is less than or equal to 2.”
In regard to claim 16, the prior art of record (excluding Double Patenting reference US Patent No. 12,126,953) alone or in combination fails to teach or suggest the following limitations of the claim in combination with the rest of the limitations of the claim:
“wherein the at least two sound guiding holes include a third sound guiding hole and a fourth sound guiding hole, and a ratio of a distance between the third sound guiding hole and the baffle to a distance between the fourth sound guiding hole and the baffle is less than or equal to 2/3.”
Claims 13-14 is/are dependent upon base claims having allowable subject matter.
Conclusion
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/MARK FISCHER/Primary Examiner, Art Unit 2692
/CAROLYN R EDWARDS/Supervisory Patent Examiner, Art Unit 2692
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