CTNF 18/907,278 CTNF 88909 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 08-33 AIA 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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12114127 B2. The claim mapping is as follows: Current Application U.S. Patent No. 12114127 B2 Claim 1 Claim 1 Claim 2 Claim 2 Claim 3 Claim 3 Claim 4 Claim 1 Claim 5 Claim 1 Claim 6 Claim 7 Claim 7 Claim 8 Claim 8 Claim 8 Claim 9 Claims 4-5 Claim 10 Claim 6 Claim 11 Claim 9 Claim 12 Claim 1 Claim 13 Claim 10 Claim 14 Claim 11 Claim 15 Claim 12 Claim 16 Claim 13 Claim 17 Claim 14 Claim 18 Claim 15 Claim 19 Claims 16-17 Claim 20 Claims 18-19 Although the claims at issue are not identical, they are not patentably distinct from each other. Mainly, the claims of the pending application are broader than the corresponding claims of the patent. Claims 1 and 13 of the pending application recite a portable electronic device and valve assembly, respectively, comprising an electromechanical valve including a number of flaps, the flap being configured to open or close a vent or enclosure opening, and the flap comprising a first material layer, a second material layer, and a third material layer. The pending claims however do not disclose additional features recited in the corresponding patented claims, including the flap coupled to the enclosure via a hinge and configured to rotate about the hinge, nor the hinge biasing the flap to a closed position, and the enclosure wall having a structure such that a voltage required to transition the flap to an open position is reduced. As such, they are rejected under obviousness-type double patenting over the previously patented narrower claim(s). In re Van Ornum , 686 F.2d 937, 214 USPQ 761. In addition, the limitations in dependent claims 2-12 and 14-20 of the pending application parallel those of the patented claims as mapped out above. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim (s) 1-9 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Pub No 2016/0330546 A1 to Barrentine et al. (“ Barrentine ”) in view of US Patent Pub No 2016/0352309 A1 to Xu et al . (“ Xu ”) . As to claim 1 , Barrentine discloses a portable electronic device comprising: an enclosure having an enclosure wall that forms an interior chamber and a sound output port to an ambient environment (see figures 3 and 10; pg. 3, ¶ 0034); a transducer positioned within the interior chamber and dividing the interior chamber into a front volume chamber coupling a first side of the transducer to the sound output port and a back volume chamber coupled to a second side of the transducer (see figure 10; pg. 3, ¶ 0034); and an electromechanical valve comprising a number of flaps operable to open and close a vent to the interior chamber, the front volume chamber or the back volume chamber (see figure 10; pg. 10, ¶ 0071, ¶ 0073). Barrentine discloses the valves can be MEMS devices, piezoelectric devices, or other forms of actuators activated by application of a signal (see pg. 10, ¶ 0073), but does not expressly disclose at least one flap of the number of flaps comprises a first material layer, a second material layer and a third material layer. However such a configuration is known in the art, as taught by Xu , which discloses a similar MEMS flap structure that can be actuated by the application of a signal, the flap including an electrode layer, a piezoelectric layer, and a support layer (see figure 7; pg. 4, ¶ 0062, ¶ 0064 - ¶ 0066). It would therefore have been an obvious choice before the effective filing date of the claimed invention to incorporate the layer structure as taught by Xu in the device as taught by Barrentine . The motivation being as a matter of design, as Barrentine already discloses the use of a MEMS structure as an actuating valve, and further as the layer configuration of the MEMS structure as taught by Xu allows the application of a voltage to enable the deformation of the piezoelectric layer and achieve the actuation or movement of the flap ( Xu pg. 4, ¶ 0062, ¶ 0064 - ¶ 0066). As to claim 2 , Barrentine in view of Xu further discloses wherein the number of flaps are operable to open or close the vent to the ambient environment upon application of a voltage ( Barrentine pg. 10, ¶ 0073). As to claim 3 , Barrentine in view of Xu further discloses wherein the vent comprises a first opening and a second opening, and the number of flaps comprise a first flap operable to open and close the first opening, and a second flap operable to open and close the second opening ( Barrentine figure 10; pg. 10, ¶ 0071). As to claim 4 , Barrentine in view of Xu further discloses wherein the first material layer, the second material layer and the third material layer comprise different materials ( Xu pg. 4, ¶ 0066). As to claim 5 , Barrentine in view of Xu further discloses wherein the first material layer is an electrode layer and the second material layer is a structural material layer ( Xu electrode and support layers, see figure 7; pg. 4, ¶ 0062, ¶ 0066). As to claim 6 , Barrentine in view of Xu further discloses wherein the third material layer is a piezoelectric layer ( Xu piezoelectric layer, see figure 7; pg. 4, ¶ 0062, ¶ 0066). As to claim 7 , Barrentine in view of Xu further discloses further comprising a fourth material layer comprising a same material as the first material layer ( Xu top and bottom electrodes, see figure 7; pg. 4, ¶ 0062, ¶ 0066). As to claim 8 , Barrentine in view of Xu further discloses wherein the first material layer comprises a metal material, the second material layer comprises a structural material, the third material layer comprises a piezoelectric material and a fourth material layer comprises a metal material ( Xu figure 7; pg. 4, ¶ 0062, ¶ 0066). As to claim 9 , Barrentine in view of Xu further discloses wherein the at least one flap is coupled to a support member having a first portion arranged perpendicular to the flap ( Barrentine 1044, see figure 10; pg. 10, ¶ 0071), and upon application of a voltage, the flap transitions from a closed position to an open position in which it is coupled to the first portion by an electrostatic force ( Barrentine open position 1051, see figure 10; pg. 10, ¶ 0073; Xu pg. 4, ¶ 0065). As to claim 12 , Barrentine in view of Xu does not expressly disclose wherein the vent comprises a first polygonal shape and the at least one flap comprises a second polygonal shape different than the vent. However such a configuration is considered obvious given the teachings of Barrentine in view of Xu , particularly as it discloses varying shapes for the flap ( Xu figures 6A-6E), and further as it has been held that changes in shape are a matter of choice for a person of ordinary skill in the art. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). In this case, the shapes of the vent and the flap can depend on various factors, such as the type of portable electronic device, the shape of the enclosure, and the positioning of the vent in said electronic device or enclosure, as long as the vent provides communication to ambient environment and the flap is configured to open and close the vent, as already taught by Barrentine in view of Xu ( Barrentine pg. 10, ¶ 0073) . 07-21-aia AIA 6. Claim (s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barrentine in view of Xu , and further in view of US Patent Pub No 2017/0029267 A1 to Jenkins et al. (“ Jenkins ”) . As to claim 10 , Barrentine in view of Xu discloses the portable electronic device of claim 9. Barrentine in view of Xu does not expressly disclose wherein the support member further comprises a second portion that runs perpendicular to the first portion and is positioned above the flap, and upon application of a voltage, the flap is coupled to the second portion to close the vent. However it does disclose a second portion where the flap is coupled to in a closed position upon application of a voltage ( Barrentine closed position 1053, figure 10; pg. 10, ¶ 0073). In addition, the use of a perpendicular portion to contact the flap is known in the art, as taught by Jenkins , which discloses a similar flap element for a valve, and further discloses the structure including a perpendicular portion for the flap to contact (see figures 6b and 8b; pg. 8, ¶ 0110; pg. 10, ¶ 0127). The proposed modification is therefore considered obvious before the effective filing date of the claimed invention, the motivation being to provide the support member with a portion that can act as a stop for the flap and prevent too much travel of the membrane ( Jenkins pg. 8, ¶ 0110) . 07-21-aia AIA 7. Claim (s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barrentine in view of Xu , and further in view of US Patent Pub No 2009/0226023 A1 to Akino . As to claim 11 , Barrentine in view of Xu discloses the portable electronic device of claim 1. Barrentine in view of Xu discloses does not expressly disclose wherein the valve is a first valve, and the device further comprises a second valve having a flap operable to open in an opposite direction to at least one flap of the number of flaps of the first valve to cancel a net air pressure generated by the first valve when transitioning to an open position. Akino discloses a similar audio device with valves, and further discloses the use of first and second valves comprising first and second flaps configured to open in opposite directions for eliminating pressure differences (see figures 5A-5C; pg. 1, ¶ 0021). Barrentine in view of Xu and Akino are analogous art because they are drawn to portable electronic devices. It would have been an obvious choice before the effective filing date of the claimed invention to incorporate additional valves in opposing configurations as taught by Akino in the device as taught by Barrentine in view of Xu . The motivation being to provide a means for eliminating pressure differences and ensure the device components are not negatively affected due to changes in pressure ( Akino pg. 1, ¶ 0013, ¶ 0021) . 07-21-aia AIA 8. Claim (s) 13-16 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barrentine in view of US Patent Pub No 2020/0100033 A1 to Stoppel et al . (“ Stoppel ”) . As to claim 13 , Barrentine discloses a valve assembly for a portable electronic device, the valve assembly comprising: a support member coupled to an enclosure opening (structures 1044, see figure 10; pg. 10, ¶ 0071); and an electromechanical flap movably coupled to the support member, and wherein upon application of a voltage, the electromechanical flap is operable to transition between a closed configuration in which the electromechanical flap covers the enclosure opening and an open configuration in which the electromechanical flap uncovers the enclosure opening (valve 1050/1052, see figure 10; pg. 10, ¶ 0071, ¶ 0073). Barrentine discloses the valves can be MEMS devices, piezoelectric devices, or other forms of actuators activated by application of a signal (see pg. 10, ¶ 0073), but does not expressly disclose the support member having an insulating layer, nor the electromechanical flap comprising a first material layer, a second material layer, a third material layer, and a fourth material layer. However such a configuration is known in the art, as taught by Stoppel , which discloses a similar MEMS flap structure that can be actuated by the application of a signal, the flap including electrode layers, a piezoelectric layer, and a structural passive layer (see figures 11a-11d; pg. 4, ¶ 0050; pg. 8, ¶ 0122), and the flap structure being coupled to a support member having an insulating component and/or layer (see figures 11a-11d; pg. 9, ¶ 0123). It would therefore have been an obvious choice before the effective filing date of the claimed invention to incorporate the layer structure as taught by Stoppel in the device as taught by Barrentine . The motivation being as a matter of design, as Barrentine already discloses the use of a MEMS structure as an actuating valve, and further as the layer configuration of the MEMS structure as taught by Stoppel allows the application of a voltage to enable the deformation of the piezoelectric layer and achieve the actuation or movement of the flap ( Stoppel pg. 4, ¶ 0050). As to claim 14 , Barrentine in view of Stoppel further discloses wherein the first material layer is an electrode layer and the second material layer is a structural layer comprising a polysilicon, a silicon nitride, or a single crystalline silicon ( Stoppel pg. 8, ¶ 0104, ¶ 0122). As to claim 15 , Barrentine in view of Stoppel further discloses wherein the third material layer comprises a piezoelectric material ( Stoppel figures 11a-11d; pg. 8, ¶ 0122). As to claim 16 , Barrentine in view of Stoppel further discloses wherein the fourth material layer is an electrode layer ( Stoppel figures 11a-11d; pg. 8, ¶ 0122). As to claim 19 , Barrentine in view of Stoppel further discloses wherein the electromechanical flap comprises a first electromechanical flap and a second electromechanical flap ( Barrentine figure 10; Stoppel figure 1a, 3b, 5 and 11d) . 07-21-aia AIA 9. Claim (s) 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barrentine in view of Stoppel , and further in view of US Patent Pub No 2018/0091892 A1 to Taylor et al . (“ Taylor ”) . As to claim 17 , Barrentine in view of Stoppel discloses the valve assembly of claim 13. Barrentine in view of Stoppel does not expressly disclose wherein the insulating layer is coupled to a tapered surface of the support member running perpendicular to the enclosure opening. However such a configuration is considered obvious given the teachings of Barrentine in view of Stoppel , and further as it has been held that changes in shape are generally recognized as being within the level of ordinary skill in the art and therefore a matter of design choice (see In re Dailey , 357 F.2d 669, 149 USPQ 47 (CCPA 1966)). In this case, a support member having a tapered surface running perpendicular to the enclosure opening would still perform the function of the support member as taught by Barrentine in view of Stoppel , and therefore such a configuration is considered a matter of design, as long as the support member provides support for the flap when moving from a closed position to an open position ( Barrentine figure 10; pg. 10, ¶ 0071). Barrentine in view of Stoppel further discloses the valve can be configured in a variety of ways and using various materials or actuators ( Barrentine pg. 10, ¶ 0073), but it does not expressly disclose the flap rotates about a hinge toward the insulating layer to the open configuration. However such a configuration is known in the art, as taught by Taylor , which discloses a similar electromechanical valve for use in acoustic devices, and further discloses the valve configured to be coupled to an enclosure wall by a hinged portion, the valve flap thus configured to rotate about the hinge to open or close (see figures 1-2B; pg. 4, ¶ 0028). The proposed modification is therefore considered obvious before the effective filing date of the claimed invention, the motivation being as a matter of design, as the use of a hinge for coupling the flap to the enclosure wall is merely a straightforward possibility from which a skilled person would select when coupling the valve flap to the wall portion, particularly to configure the valve to transition from an open position to a closed position and vice versa with a simple movement and in a stable, controlled manner ( Taylor figures 2A-2B; pg. 4, ¶ 0028 - ¶ 0029). As to claim 18 , Barrentine in view of Stoppel and Taylor further discloses wherein the insulating layer is coupled to a surface of the support member running parallel to the enclosure opening and positioned above the flap ( Stoppel substrate extending above flap as a mechanical stop, see figure 13d), and wherein the flap rotates about a hinge toward the insulating layer to the closed configuration ( Taylor figures 1-2B; pg. 4, ¶ 0028 - ¶ 0029) . 07-21-aia AIA 10. Claim (s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barrentine in view of Stoppel , and further in view of Akino . As to claim 20 , Barrentine in view of Stoppel discloses the valve assembly of claim 19. Barrentine in view of Stoppel further discloses wherein the support member comprises a first end and a second end opposite the first end, the first electromechanical flap is coupled to the first end, and the second electromechanical flap is coupled to the second end ( Stoppel figure 1a, 3b and 11d), but does not expressly disclose wherein the second electromechanical flap opens in a direction opposite to the first electromechanical flap to cancel a net air pressure generated by the first electromechanical flap when transitioning to an open position. Akino discloses a similar audio device with valves, and further discloses the use of first and second valves comprising first and second flaps configured to open in opposite directions for eliminating pressure differences (see figures 5A-5C; pg. 1, ¶ 0021). Barrentine in view of Stoppel and Akino are analogous art because they are drawn to devices with valve assemblies. It would have been an obvious choice before the effective filing date of the claimed invention to incorporate additional valves in opposing configurations as taught by Akino in the device as taught by Barrentine in view of Stoppel . The motivation being to provide a means for eliminating pressure differences and ensure the device components are not negatively affected due to changes in pressure ( Akino pg. 1, ¶ 0013, ¶ 0021). Conclusion 11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SABRINA DIAZ whose telephone number is (571)272-1621. The examiner can normally be reached Monday-Friday 9am-5pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ahmad Matar can be reached at 5712727488. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /SABRINA DIAZ/Examiner, Art Unit 2693 /AHMAD F. MATAR/Supervisory Patent Examiner, Art Unit Application/Control Number: 18/907,278 Page 2 Art Unit: 2693 Application/Control Number: 18/907,278 Page 3 Art Unit: 2693 Application/Control Number: 18/907,278 Page 4 Art Unit: 2693 Application/Control Number: 18/907,278 Page 5 Art Unit: 2693 Application/Control Number: 18/907,278 Page 6 Art Unit: 2693 Application/Control Number: 18/907,278 Page 7 Art Unit: 2693 Application/Control Number: 18/907,278 Page 8 Art Unit: 2693 Application/Control Number: 18/907,278 Page 9 Art Unit: 2693 Application/Control Number: 18/907,278 Page 10 Art Unit: 2693 Application/Control Number: 18/907,278 Page 11 Art Unit: 2693 Application/Control Number: 18/907,278 Page 12 Art Unit: 2693 Application/Control Number: 18/907,278 Page 13 Art Unit: 2693 Application/Control Number: 18/907,278 Page 14 Art Unit: 2693
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