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 .
Response to Amendment
The examiner acknowledges applicant’s arguments in the Response dated August 14, 2026 directed to the Non-Final Office Action dated June 16, 2026. Claims 1 and 3-9 are pending in the application and subject to examination as part of this office action.
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.
Claim1 and 2-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,151,157 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they vary slightly in terms of language.
Application 18/919,513
U.S. Patent 12,151,157 B2
An input device comprising:
Claim 1 An input device comprising:
a first microphone;
Claim 1 a first microphone;
an exterior member that accommodates the first microphone;
Claim 1 an exterior member having an interior surface and an exterior surface, where the first microphone is located within the exterior member in proximity to the interior surface;
a right held section and a left held section configured to be held by user's hands and separated in a left-right direction;
Claim 9 a left input member and a right input member that are separated from each other in a left-right direction
a right input member and a left input member configured to be operated by user's fingers and located on the right held section and the left held section, respectively;
Claim 9 a left input member and a right input member that are separated from each other in a left-right direction
a center section located between the right held section and the left held section; and
Claim 9 a center section positioned between the left input member and the right input member
a first sound hole penetrating the exterior member to be connected to the first microphone,
Claim 1 a first sound hole extending from the bottom surface of the exterior member to the interior surface of the exterior member proximate to the first microphone
wherein: an exterior surface of the exterior member has a recessed portion, wherein an inner surface of the recessed portion serves as one or more wall portions that surround the first sound hole,
Claim 1 a recessed portion disposed at the exterior surface of the exterior member, recessing toward the interior surface, and terminating at a bottom surface;
Claim 2 the recessed portion includes an inner surface extending from the exterior surface of the exterior member and terminating at, and surrounding, the bottom surface
the first sound hole is located in the center section and formed on a bottom surface of the recessed portion on a lower surface of the input device,
Claim 9 a center section positioned between the left input member and the right input member and having the first sound hole;
Claim 8 the first sound hole is formed in a lower surface of the input device;
Claim 1 a first sound hole extending from the bottom surface;
the exterior member has, inside the recessed portion, the bottom surface extending from an opening edge of the first sound hole to the inner surface of the recessed portion, and
Claim 1 a region of the first sound hole is substantially smaller than an area a region of the bottom surface, such that a majority of the region of the bottom surface surrounds the region of the first sound hole;
Claim 2 an inner surface extending from the exterior surface of the exterior member and terminating at, and surrounding, the bottom surface
a region surrounded by the one or more wall portions is elongated in the left-right direction or a forward-rearward direction.
Claim 9 wherein the region of the bottom surface is elongated in one of the left-right direction and a forward-rearward direction
Prior Art Rejections
There are currently no prior art rejections against claims 1 and 3-9.
Response to Arguments
Applicant’s arguments regarding the rejections under 35 USC 112 are persuasive in light of the amendments dated August 14, 2026.
Applicant’s arguments regarding the rejections under 35 USC 103 are persuasive in light of the amendments dated August 14, 2026.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WERNER G GARNER whose telephone number is (571)270-7147. The examiner can normally be reached M-F 7:30-15:30 EST.
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, DAVID LEWIS can be reached at (571) 272-7673. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WERNER G GARNER/Primary Examiner, Art Unit 3715
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