DETAILED ACTION
Response to Election/Restriction
This communication is responsive to the provisional election made with traverse on 08/04/2026. The traversal is found to be persuasive; therefore, the requirement has been vacated.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 10,357,403. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-22 of U.S. Patent No. 10,357,403 are clearly anticipated or similar in scope to the rejected claims 1-21 of the U. S. Pat. App (No. 18/899,011) with only obvious wording variations. For example:
U. S. Pat. App No. 18/899,011
U.S. Patent No. 10,357,403
1. A battery-free magnetic induction earplug comprising: a housing defining: a main cavity; a sound output channel connected to the main cavity; and an expansion cavity; a receiver in the main cavity, the receiver including a bobbin and a coil of wire wound upon the bobbin; and a speaker in the main cavity adjacent the receiver, the speaker acoustically coupled to the sound output channel, the speaker having a diaphragm and a volume upstream from the diaphragm, the speaker having a vent from the volume to the expansion cavity.
1. A wireless communications earplug for use with a magnetic field transmitter, comprising: a) a receiver comprising a coil of wire wound upon a bobbin of magnetic material; and b) a speaker having a case, an acoustic output, and an electrical input, the case being at least partially made of magnetic material, the electrical input being coupled to the wire of the receiver, wherein the bobbin of the receiver is mounted in sufficiently close proximity to the case of the speaker and oriented such that flux lines passing through the speaker also pass through the coil of the receiver.
Furthermore, regarding claim 1, Parkins claimed (in U.S. Patent No. 10,357,403) a similar structured earplug, comprising a receiver having a coil and a bobbin, and so on. In contrast, Parkins lacks teaching of an expansion cavity as claimed (in U. S. Pat. App No. 18/889,011). Since providing suitable cavity means for an earplug is very well known in the art, it therefore would have been obvious to one skilled in the art at the time the invention was made to be motivated to provide suitable cavity means, such as an expansion cavity, for the earplug taught by Parkins (in U.S. Patent No. 10,357,403), in order to desirably reduce some noise and/or protect the diaphragm of the earplug.
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 9,774,946. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-22 of U.S. Patent No. 9,774,946 are clearly anticipated or similar in scope to the rejected claims 1-21 of the U. S. Pat. App (No. 18/899,011) with only obvious wording variations. For example:
U. S. Pat. App No. 18/899,011
U.S. Patent No. 9,774,946
1. A battery-free magnetic induction earplug comprising: a housing defining: a main cavity; a sound output channel connected to the main cavity; and an expansion cavity; a receiver in the main cavity, the receiver including a bobbin and a coil of wire wound upon the bobbin; and a speaker in the main cavity adjacent the receiver, the speaker acoustically coupled to the sound output channel, the speaker having a diaphragm and a volume upstream from the diaphragm, the speaker having a vent from the volume to the expansion cavity.
1. A wireless communications earplug for use with a magnetic field transmitter, comprising: a) a receiver comprising a coil of wire wound upon a bobbin of magnetic material; and b) a speaker having a case at least partially made of magnetic material, an acoustic output and an electrical input coupled to the wire of the receiver; wherein the bobbin of the receiver is mounted in sufficiently close proximity to the case of the speaker such that a measured inductance of the coil of the receiver is increased compared to an inductance of the coil of the receiver when the receiver is not mounted to the speaker, and the receiver is oriented such that flux lines passing through the speaker are directed to pass through the coil of the receiver.
Furthermore, regarding claim 1, Parkins claimed (in U.S. Patent No. 9,774,946) a similar structured earplug, comprising a receiver having a coil and a bobbin, and so on. In contrast, Parkins lacks teaching of an expansion cavity as claimed (in U. S. Pat. App No. 18/889,011). Since providing suitable cavity means for an earplug is very well known in the art, it therefore would have been obvious to one skilled in the art at the time the invention was made to be motivated to provide suitable cavity means, such as an expansion cavity, for the earplug taught by Parkins (in U.S. Patent No. 9,774,946), in order to desirably reduce some noise and/or protect the diaphragm of the earplug.
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 9,516,404. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-17 of U.S. Patent No. 9,516,404 are clearly anticipated or similar in scope to the rejected claims 1-21 of the U. S. Pat. App (No. 18/899,011) with only obvious wording variations. For example:
U. S. Pat. App No. 18/899,011
U.S. Patent No. 9,516,404
1. A battery-free magnetic induction earplug comprising: a housing defining: a main cavity; a sound output channel connected to the main cavity; and an expansion cavity; a receiver in the main cavity, the receiver including a bobbin and a coil of wire wound upon the bobbin; and a speaker in the main cavity adjacent the receiver, the speaker acoustically coupled to the sound output channel, the speaker having a diaphragm and a volume upstream from the diaphragm, the speaker having a vent from the volume to the expansion cavity.
1. A wireless communications earplug for use with a magnetic field transmitter, comprising: a) a receiver comprising a coil of wire wound upon a bobbin of magnetic material; and b) a speaker having a case at least partially made of magnetic material, an acoustic output and an electrical input coupled to the wire of the receiver; wherein the receiver is mounted within 0.005 inches of the case of the speaker and oriented such that flux lines passing through the speaker are directed through the coil of the receiver and a measured inductance of the coil of the receiver is increased compared to an inductance of the coil of the receiver when the receiver is not mounted to the speaker.
Furthermore, regarding claim 1, Parkins claimed (in U.S. Patent No. 9,516,404) a similar structured earplug, comprising a receiver having a coil and a bobbin and others. In contrast, Parkins lacks teaching of an expansion cavity as claimed (in U. S. Pat. App No. 18/889,011). Since providing suitable cavity means for an earplug is very well known in the art, it therefore would have been obvious to one skilled in the art at the time the invention was made to be motivated to provide suitable cavity means, such as an expansion cavity, for the earplug taught by Parkins (in U.S. Patent No. 9,516,404), in order to desirably reduce some noise and/or protect the diaphragm of the earplug.
Allowable Subject Matter
Claims 1-21 are rejected under nonstatutory double patenting rejection, but would be allowable if 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUHAN NI whose telephone number is (571)272-7505. The examiner can normally be reached on Monday to Friday from 10:00 am to 6:30 pm.
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/SUHAN NI/Primary Examiner, Art Unit 2691
Prosecution Insights