DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
Claim(s) 2, 9, 16 rejected on the ground of nonstatutory double patenting as being unpatentable over claim (s) 1 of U.S. Patent No. (9,916,830) and Rosenberg (US 9,509,269 B1). Although the claims at issue are not identical, they are not patentably distinct from each other because instant application is merely an obvious variation of the patented claim(s) although, the prior patent disclose of most features, except of the limitation as “causing the at least one speaker to output a second portion of the first content at a second volume that is less than the first volume”.
However, Rosenberg disclose of a device including such aspect related to causing the at least one speaker to output a second portion of the first content at a second volume that is less than the first volume (col.8 line 32-67). Thus, one of the ordinary skills in the art could have modified the playback device by adding such the specific related to causing the at least one speaker to output a second portion of the first content at a second volume that is less than the first volume so as to allow the user to being able to hear communication of other party.
Claim(s) 2, 9, 16 rejected on the ground of nonstatutory double patenting as being unpatentable over claim (s) 1, 8, 15 of U.S. Patent No. (10, 534,649) and Rosenberg (US 9,509,269 B1). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims is more of a broader variation of the patented claim(s) and furthermore, although, the prior patent disclose of most features, except of the limitation as “causing the at least one speaker to output a second portion of the first content at a second volume that is less than the first volume”.
However, Rosenberg disclose of a device including such aspect related to causing the at least one speaker to output a second portion of the first content at a second volume that is less than the first volume (col.8 line 32-67). Thus, one of the ordinary skills in the art could have modified the playback device by adding such the specific related to causing the at least one speaker to output a second portion of the first content at a second volume that is less than the first volume so as to allow the user to being able to hear communication of other party.
Claim(s) 2, 9, 16 rejected on the ground of nonstatutory double patenting as being unpatentable over claim (s) 1 of U.S. Patent No. (11, 488,591) and Rosenberg (US 9,509,269 B1). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims is more of a broader variation of the patented claim(s) and furthermore, although, the prior patent disclose of most features, except of the limitation as “causing the at least one speaker to output a second portion of the first content at a second volume that is less than the first volume”.
However, Rosenberg disclose of a device including such aspect related to causing the at least one speaker to output a second portion of the first content at a second volume that is less than the first volume (col.8 line 32-67). Thus, one of the ordinary skills in the art could have modified the playback device by adding such the specific related to causing the at least one speaker to output a second portion of the first content at a second volume that is less than the first volume so as to allow the user to being able to hear communication of other party.
Claim(s) 2, 9, 16 rejected on the ground of nonstatutory double patenting as being unpatentable over claim (s) 1 of U.S. Patent No. (12,170,087). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims is more of a broader variation of the patented claim(s) and thus, said instant claim(s) would have been anticipated by the prior patented claim as presented.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
Claim(s) 16-17, 20 is/are rejected under pre-AIA 35 U.S.C. 102 (a) as being anticipated by Rosenberg (US 9,509,269 B1).
Claim 16the prior art as in Rosenberg disclose of A device comprising: at least one speaker; at least one microphone; one or more processors; and computer-readable media storing computer-executable instructions that, when executed on the one or more processors, cause the device to perform operations (fig.1 (100);col.4 line 50-67 & col.6 line 1-25),the operations comprising: causing the at least one speaker to output a first portion of first content at a first volume (col.8 line 32-36 & col.8 line 55-65/the device is currently playing audio content at certain volume); receiving, while the at least one speaker outputs the first portion of the first content at the first volume, a first input audio signal generated by the at least one microphone based at least in part on first sound from a user (fig.2 (201-203); col.6 line 1-10; col.7 line 60 -col.8 line 12); performing processing on the first input audio signal to identify user speech (col.8 line 1-5 & line 12-30); causing the at least one speaker to output a second portion of the first content at a second volume that is less than the first volume (col.8 line 32-67); and 3receiving, while the at least one speaker outputs the second portion of the first content at the second volume, a second input audio signal generated by the at least one microphone based at least in part on second sound from the user (col.9 line 50-67).
17. (New) The device of claim 16, causing the at least one speaker to output the second portion of the first content at the second volume is based at least in part on identifying the user speech (col.8 line 1-20).
20. (New) The device of claim 16, wherein the second volume comprises a predefined percentage of the first volume (col.8 line 35-67).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim (s) 18-19 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Rosenberg (US 9,509,269 B1) and Beckley et al. (US 9,881,616 B2).
18. (New) The device of claim 16, but Rosenberg never mentioned that the second input audio signal represents a voice command, and the computer-readable media further store computer-executable instructions that, when executed on the one or more processors, cause the device to perform operations comprising: performing speech recognition using the second input audio signal to determine a voice command.
However, Beckley et al. disclose of a similar input audio signal represents a voice command, and the computer-readable media further store computer-executable instructions that, when executed on the one or more processors, cause the device to perform operations comprising: performing speech recognition using the second input audio signal to determine a voice command (fig.2 (190); col.5 line 25-50). Thus, one of the ordinary skills in the art could have modified the art by adding such specific aspect related to input audio signal represents a voice command, and the computer-readable media further store computer-executable instructions that, when executed on the one or more processors, cause the device to perform operations comprising: performing speech recognition using the second input audio signal to determine a voice command so as to control the device as per user’s voice.
19. (New) The device of claim 18, wherein the computer-readable media further store computer-executable instructions that, when executed on the one or more processors, cause the device to perform an operation comprising causing, based at least in part on the voice command, to implement a certain function as noted therein (Beck-fig.2 (190); col.5 line 25-50).
However, the art never limit such aspect as based on voice command to cause, the at least one speaker to output second content different from the first content. However, the examiner takes official notice implementing such voice command to cause speaker to output different content is notoriously well known in the art. Thus, one of the ordinary skills in the art could have modified the prior art by adding such noted voice command to cause, the at least one speaker to output second content different from the first content so as to control operation of varying content according to user’s voice commands.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DISLER PAUL whose telephone number is (571)270-1187. The examiner can normally be reached 9:00-6:00 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chin, Vivian can be reached at (571) 272-7848. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DISLER PAUL/Primary Examiner, Art Unit 2695
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