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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4 and 16-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 4 recites “a coronal axis of the user” in lines 3-4 of the claim. It is unclear if this limitation is referring to the coronal axis now recited in line 17 of parent claim 1. Appropriate correction or clarification is required.
Claim 16 recites the limitations “the connection end” in line 2 and “the free end” and in line 3. There is insufficient antecedent basis for these limitations in the claim. For the purpose of examination, the claim has been interpreted as being dependent on claim 3 in order to provide antecedent basis for these elements. Appropriate correction or clarification is required.
Claim 17 recites the limitations “the core” in line 1 and “the battery” in line 2. There is insufficient antecedent basis for these limitations in the claim. For the purpose of examination, the claim has been interpreted as being dependent on claim 7 in order to provide antecedent basis for these elements. Appropriate correction or clarification is required.
Claim 18 is dependent on claim 17 and is therefore also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the same reason as parent claim 17.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1 and 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Pub No 2020/0314518 A1 to Hatfield et al. (“Hatfield”).
As to claim 1, Hatfield discloses an earphone, comprising a hook portion and a retention portion connected to the hook portion (clip 116 and housing 114 with bridge 112, see figures 1B-3; pg. 2, ¶ 0025), wherein at least a part of the hook portion is hung between a rear side of an ear and the head of a user (clip 116, see figure 2; pg. 2, ¶ 0026), the retention portion is configured to contact a front side of the ear (housing 114 with bridge 112, see figure 2; pg. 2, ¶ 0026), the retention portion includes a thickness direction, a length direction, and a width direction, each of which is orthogonal to another, the thickness direction is defined as a direction in which the retention portion close to or far away from the ear in a wearing state (see figures 1B-3), the hook portion includes a connection segment connected to the retention portion and a free segment connected to the connection segment, the connection segment and the free segment are located on opposite sides of the retention portion in the width direction, respectively (clip 116 coupled to bridge 112 on one end, see pg. 2, ¶ 0025), wherein in the wearing state, when viewed along a direction where a coronal axis of the user is located, an angle between the length direction and a direction where a sagittal axis of the user is located is in a range of 15°-60° (see figures 1B and 3; pg. 3, ¶ 0028).
Hatfield does not expressly disclose on a reference plane perpendicular to the thickness direction, a maximum spacing between the connection segment and the retention portion in the width direction is in a range of 10 mm-17 mm. However such a configuration is considered obvious given the teachings of Hatfield, which discloses the earpiece can be customized to accommodate variations in ear sizes (see pg. 4, ¶ 0037), and further as it has been held that changes in size and/or relative dimensions are a matter of ordinary skill and not sufficient to patentably distinguish over the prior art. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) and Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In this case, an earphone with the claimed dimensions would not perform differently than the prior art device and is therefore not considered patentably distinct, as the earphone would still be configured to engage with the ear, as already taught by Hatfield (see pg. 4, ¶ 0037).
As to claim 8, Hatfield further discloses wherein the retention portion has a free end that is not connected to the hook portion and a connection end that is connected to the hook portion, and in the wearing state, the free end of the retention portion is further away from a top of the head of the user than the connection end so that a part of the retention portions extends into a concha cavity of the ear (see figures 1B and 3; pg. 3, ¶ 0028).
As to claim 9, Hatfield does not expressly disclose wherein a ratio of a mass of the hook portion to a mass of the retention portion is in a range of 1/9-1/2. However it does disclose the retention portion as being larger than the hook portion (see figures 1B-3). The ratio of a mass of the hook portion to a mass of the retention portion being in a range of 1/9-1/2 is therefore considered obvious given the teachings of Hatfield, given the differences in size and the housing configuration of the retention portion as already taught by Hatfield, and further as a lighter hook portion relative to the retention portion can provide comfort and stability to the earpiece when clipped or engaged to the ear via the hook portion (see figures 1B-3; pg. 2, ¶ 0025 - ¶ 0026).
As to claim 10, Hatfield does not expressly disclose wherein in the wearing state, a gripping force exerted by the retention portion and the hook portion on the ear is in a range of 0.1N-0.5N. However a gripping force exerted by the retention portion and the hook portion on the ear being in a range of 0.1N-0.5N is merely a straightforward possibility which a skilled person would select when designing and earphone as taught by Hatfield, as the specific amount of gripping force can vary based on various factors such as the size and shape, mass, and selected material of both the retention portion and the hook portion, as well as the clipping or engagement configuration of the hook portion relative to the retention portion, as long as the earphone can be securely and comfortably engaged to the user’s ear via the hook and retention portions (see figures 1B-3; pg. 1, ¶ 0020; pg. 2, ¶ 0026).
As to claim 11, Hatfield does not expressly disclose wherein a length of the retention portion is in a range of 25mm to 32mm. However such a configuration is considered obvious given the teachings of Hatfield, and further as it has been held that changes in size and/or relative dimensions are a matter of ordinary skill and not sufficient to patentably distinguish over the prior art. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) and Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In this case, an earphone having a length of the retention portion in a range of 25mm to 32mm is considered merely a straightforward possibly which a skilled person would select when designing an earphone as taught by Hatfield, and further depending on various factors such as the size and shape of the earpiece, the size and shape of the ear, as well as the size and shape of the various components to be housed within the earphone. An earphone with the claimed dimensions would not perform differently than the prior art device and is therefore not considered patentably distinct from the prior art.
Claim(s) 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hatfield in view of US Patent Pub No 2009/0095566 A1 to Leong et al. (“Leong”).
As to claim 20, Hatfield discloses the earphone of claim 1.
Hatfield does not disclose wherein the retention portion includes a housing and an elastic overlay encasing the housing. However such a configuration is considered obvious, as taught by Leong, which discloses a similar earphone device, and further discloses the device can include a material overlay and/or sleeve that can be made of plastic or rubber type material (see pg. 5, ¶ 0098; pg. 7, ¶ 0116 - ¶ 0117). 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 such a configuration can provide a functional or aesthetic purpose for the earphone, such as a touch indicia that looks or feels different and can aid in positioning the earpiece (Leong pg. 5, ¶ 0098; pg. 7, ¶ 0116 - ¶ 0117).
As to claim 21, Hatfield in view of Leong does not expressly disclose wherein a thickness of the elastic overlay is in a range of 1 mm to 3.5 mm. However such a configuration is considered obvious given the teachings of Hatfield in view of Leong, and further as it has been held that changes in size and/or relative dimensions are a matter of ordinary skill and not sufficient to patentably distinguish over the prior art. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) and Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In this case, the elastic overlay having a thickness in a range of 1 mm to 3.5 mm is considered merely a straightforward possibly which a skilled person would select when designing an earphone as taught by Hatfield in view of Leong, and further depending on various factors such as the size and shape of the earpiece, the type of materials used, and the desired functional or aesthetic effect of the overlay. An earphone with the claimed dimensions would not perform differently than the prior art device and is therefore not considered patentably distinct from the prior art.
Allowable Subject Matter
Claims 3, 5-7, 12-15 and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 4 and 16-18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
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.
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/SABRINA DIAZ/Examiner, Art Unit 2693
/AHMAD F. MATAR/Supervisory Patent Examiner, Art Unit 2693
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