The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Applicant's election with traverse of Species II (Figure 4), claims 1, 9-11, 27, and 28 readable thereon, in the reply filed on June 21, 2206 is acknowledged. The traversal is on the grounds that: “these species are not patentably distinct”; and “no serious burden of search exists in the examination of the present invention”. This is not found persuasive.
Regarding the applicants’ remarks that the species are not patentably distinct, the applicant makes the argument that “there exists a linking/generic claim among these species [and that] each specie is merely a different specific example (illustrating embodiment) falling under the independent claim”, but provides no further argument as to why the species are not patentably distinct. Arguing that there exists generic claim(s) among species does not support the applicants’ argument that the species are not patentably distinct, but rather that there exists broadly written claim(s) which encompass a plurality of the patentably distinct species. The species, as identified by the examiner, are patentably distinct species because the species are disclosed as different embodiments of the invention having different configurations and/or components which are not disclosed as usable together in the same device. In addition, these species are not obvious variants of each other based on the current record.
Regarding the applicants’ remarks that there is no serious burden of search in the examination of the present invention, the applicant argues that “the search queries and the scope of prior art documents would naturally cover the other species, without incurring a substantial, independent, and additional search burden”. The examiner respectfully disagrees. Although the twenty-seven patentably distinct species, as identified by the examiner in the restriction requirement, may share common elements, components, and/or configurations, each of the species further include distinct elements which would add significantly to the burdensome nature of the search and examination of the application if the examiner were required to examine all the patentably distinct species in the application.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1 and 27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 19 of copending Application No. 18/939,466 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because: as noted by the Federal Circuit in Eli Lilly v. Barr, “[a] a patentable distinction does not lie where a later claim is anticipated by an earlier one” (see also In re Berg and In re Goodman which established that a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim). The copending reference application claims 1 and 19 recite each and every limitation recited in the application claims 1 and 27. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of copending Application No. 18/942,755 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because: as noted by the Federal Circuit in Eli Lilly v. Barr, “[a] a patentable distinction does not lie where a later claim is anticipated by an earlier one” (see also In re Berg and In re Goodman which established that a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim). The copending reference application claims 1 and 4 recite each and every limitation recited in the application claim 1 (note that in the copending reference application claims 1 and 4, the panel is connected to the shell via an elastic element, the shell is connected to the magnetic circuit assembly, and the magnetic circuit assembly is connected to the additional element, and thus the additional element is elastically connected to the panel through a vibration path at least including one elastic element as claimed in application claim 1). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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.
Claims 1, 27, and 28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al. (WO 2021/196795 A1).
Regarding claim 1, Zhang discloses an acoustic output device 1100 (see figure 11, for example), comprising: a transducer 1111, 1113 configured to generate a mechanical vibration based on an electrical signal; and a housing 1120, 1112 configured to accommodate the transducer 1111, 1113, the housing 1120, 1112 including a panel 1112 and a shell 1120, the transducer 1111, 1113 being connected to the panel 1112, and the transducer 1111, 1113 transmitting the mechanical vibration to a user through the panel 1112 (see para. 0097, regarding “at least one of the one or more vibration plates 512 may be physically connected with the housing 520 that may contact the skin of a user (e.g., the skin on the head of the user), and transfer the bone conduction acoustic waves to a cochlea of the user when the user wears the acoustic output device”). The acoustic output device 1100 further includes an additional element 1133 elastically connected to the panel 1112 through a vibration path (via at least elements 1131, 1120, and 1111, for example) at least including one elastic element 1131, wherein the additional element 1133 includes an air conduction speaker. Note that at least some vibration is transmitted between the air conduction speaker 1133 and the panel 1112 through a vibration path at least including the elastic element 1131 as claimed.
Regarding claim 27, an angle between a vibration direction of a diaphragm in the air conduction speaker 1133 and a vibration direction of the transducer 1111, 1113 is between 75º - 100º (approximately 90º). See figure 11.
Regarding claim 28, along the vibration direction of the diaphragm 1133, a distance between the air conduction speaker 1133 and the transducer 1111, 1113 is not less than 0.8 mm. See figure 2B regarding a contact surface 21 of earphone cores 50, and see figure 11 regarding a contact surface 1112 of the acoustic output device 1100, which teaches in whole that a distance between the air conduction speaker 1133 and the transducer 1111, 1113 has the minimum distance as claimed.
Claims 1 and 9-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhu (CN 211406274 U, in view of the English Language Translation (ELT)).
Regarding claim 1, Zhu discloses an acoustic output device (see figures 2-3, for example), comprising: a transducer 100 configured to generate a mechanical vibration based on an electrical signal; and a housing configured to accommodate the transducer 100, the housing including a panel 172 and a shell 110, 1112, the transducer 100 being connected to the panel 172, and the transducer 100 transmitting the mechanical vibration to a user through the panel 172 (see ELT, page 6, regarding “in operation, the vibration generated by the vibration plate 160 is transmitted to the conductive plate 172 through the conductive pillar 171, and the conductive plate 172 transmits sound through the bone conduction principle”). The acoustic output device further includes an additional element 200 elastically connected to the panel 172 through a vibration path (via at least elements 210, 110, 1112, 160, 171, and 190 for example) at least including one elastic element 190, wherein the additional element 200 includes an air conduction speaker. Note that at least some vibration is transmitted between the air conduction speaker 200 and the panel 172 through a vibration path at least including the elastic element 190 as claimed.
Regarding claim 9, the elastic element 190 is a ring structure with elasticity. The panel 172 is sealed and connected to the shell 110, 1112 through the ring structure to form an accommodation cavity for accommodating the transducer 100. The additional element 200 being rigidly connected to the shell 110, 1112.
Regarding claim 10, a ratio of a sum of masses of the panel 172 and elements rigidly connected to the panel 172 to a sum of masses of the shell 110, 1112 and elements fixedly connected to the shell 110, 1112 is in a range of 0.16-7 as claimed. See figures 2-3, for example.
Regarding claim 11, the acoustic output device further includes a support structure configured to wear the acoustic output device at an ear or a head region of the user without blocking an ear canal of the user. The support structure being rigidly connect to the shell 110, 1112 or the panel 172. See ELT, page 2, regarding “the bone conduction earphone is used, the ear is not required to be plugged, the ear is opened, …” See also, ELT, page 6, regarding “in operation, the vibration generated by the vibration plate 160 is transmitted to the conductive plate 172 through the conductive pillar 171, and the conductive plate 172 transmits sound [though the head region of the user] through the bone conduction principle”.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL W HUBER whose telephone number is (571)272-7588.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Duc Nguyen, can be reached at telephone number 571-272-7503. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/PAUL W HUBER/Primary Examiner, Art Unit 2691
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July 1, 2026
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