CTNF 18/952,106 CTNF 89858 DETAILED ACTION 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. Claim 1-2 and 4-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2 and 5-8 of copending Application 18423399. Regarding claim 1-2 and 4-5, Instant Application US Application 18423399 1.A compact audio woofer arrangement for a motor vehicle, the arrangement comprising: an enclosure configured to be installed in the motor vehicle, the enclosure configured as a double-tuned bandpass woofer configured to emit a sound, the enclosure including a primary through-hole and a secondary through-hole; a first elongated port coupled to the primary through-hole, the first elongated port being configured to carry a first portion of the sound from the enclosure to a first location remote from the enclosure such that the first portion of the sound is emitted into the passenger compartment at the first location; and a second elongated port coupled to the secondary through-hole, the secondary elongated port being configured to carry a second portion of the sound from the enclosure to a second location remote from the enclosure such that the second portion of the sound is emitted into the passenger compartment at the second location. C1 . A compact audio woofer arrangement for a motor vehicle, the arrangement comprising: an enclosure configured to be installed in the motor vehicle, the enclosure containing a woofer or subwoofer configured to emit a sound, the enclosure including a primary through-hole and a secondary through-hole, the primary through-hole being configured to release a first portion of the sound from the enclosure into a passenger compartment of the motor vehicle at a primary location; and a hollow vent coupled to the secondary through-hole, the hollow vent being configured to carry a second portion of the sound from the enclosure to a second location remote from the first location such that the second portion of the sound is emitted into the passenger compartment at the second location. 2.The arrangement of claim 1 wherein the first acoustic output location is at least 12 inches from the second location. C2 . The arrangement of claim 1 wherein the first location is at least 12 inches from the second location. 4.The arrangement of claim 1 wherein the first acoustic output location is on a driver side of the motor vehicle and is disposed forward of a front seat of the motor vehicle, and the second acoustic output location is on a passenger side of the motor vehicle and is disposed forward of the front seat of the motor vehicle. C1 . A compact audio woofer arrangement for a motor vehicle, the arrangement comprising: … the primary through-hole being configured to release a first portion of the sound from the enclosure into a passenger compartment of the motor vehicle at a primary location; second portion of the sound from the enclosure to a second location remote… C5 . The arrangement of claim 1 wherein the enclosure is on a passenger side of the motor vehicle and is disposed forward of a front seat of the motor vehicle. 5.A method of providing audio in a motor vehicle, the method comprising: installing an enclosure in the motor vehicle, the enclosure being configured as a double-tuned bandpass woofer, the enclosure including a primary through-hole and a secondary through-hole; emitting a sound from the double-tuned bandpass woofer; coupling a first elongated port to the primary through-hole; carrying a first portion of the sound through the first elongated port from the enclosure to a first location remote from the enclosure such that the first portion of the sound is emitted into the passenger compartment at the first location; coupling a secondary elongated port to the secondary through-hole; and carrying a second portion of the sound through the secondary elongated port from the enclosure to a second location remote from the enclosure such that the second portion of the sound is emitted into the passenger compartment at the second location. C8 . A method for providing sound in a motor vehicle, the method comprising: installing an enclosure in the motor vehicle, the enclosure containing a woofer or subwoofer, the enclosure including a first throughhole and a second throughhole; using the woofer or subwoofer to emit a first portion of sound through the first throughhole into a passenger compartment of the motor vehicle at a first location; coupling a hollow vent to the second throughhole; and carrying a second portion of the sound from the enclosure through the vent to a second location remote from the first location such that the second portion of the sound is emitted into the passenger compartment at the second location. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application is claiming a obvious wording variation of the claims of the patent application. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claim 2 and 4 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 2 recites the limitation "the first acoustic output location". There is insufficient antecedent basis for this limitation in the claim. Claim 4 recites the limitation "the first acoustic output location" and “the second acoustic output location”. There is insufficient antecedent basis for this limitation in the claim. 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 1-2 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rosen US Pat 5,170,435 in view of Oishi US PG-Pub 2018/0220228 . Regarding claim 1 and 5, Rosen teaches an enclosure configured to be installed in the motor vehicle (Fig. 1-10), the enclosure configured as a double-tuned woofer configured to emit a sound (Fig. 1 & Col. 4 line 39-53: having double tune tube having different tube length which will cause different frequencies effects), the enclosure including a primary through-hole and a secondary through-hole (Fig. 1-12: having loudspeakers in enclosure with two through-holes on it’s side); a first elongated port coupled to the primary through-hole, the first elongated port being configured to carry a first portion of the sound from the enclosure to a first location remote from the enclosure such that the first portion of the sound is emitted into the passenger compartment at the first location; and a second elongated port coupled to the secondary through-hole, the secondary elongated port being configured to carry a second portion of the sound from the enclosure to a second location remote from the enclosure such that the second portion of the sound is emitted into the passenger compartment at the second location (Fig. 1: the first elongated port-16 and second elongated port-14, which will output sound from the loudspeaker-12). Rosen failed to explicitly teach bandpass woofer. However, Oishi teaches bandpass woofer ([0098]: bandpass woofer enclosure). Rosen and Oishi are analogous art because they are both in the same field of endeavor, namely loudspeakers. Therefore, 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, because the shape of the enclosure will provide bandpass effect. Regarding claim 2, Rosen teaches wherein the first acoustic output location is at least 12 inches from the second location (Fig. 1: the output location-50 & 60 are more than 12inches apart) . 07-21-aia AIA Claim 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rosen US Pat 5,170,435 in combination with Oishi US PG-Pub 2018/0220228 in view of Bose US PG-Pub 2010/0092006 . Regarding claim 3, the combination teaches wherein the enclosure is substantially centrally located between a driver side and a passenger side of the motor vehicle (Rosen, Fig. 1). The combination failed to teach disposed forward of a front seat of the motor vehicle, under the dash, or within the center console adjacent to each seat. However, Bose teaches disposed forward of a front seat of the motor vehicle, under the dash, or within the center console adjacent to each seat (Fig. 4). The combination and Bose are analogous art because they are both in the same field of endeavor, namely loudspeakers. Therefore, 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, because it is an inventor choice to select where to place a woofer and no unexpected result will arise. Regarding claim 4, the combination teaches wherein the first acoustic output location is on a driver side of the motor vehicle and the second acoustic output location is on a passenger side of the motor vehicle (Rosen, Fig. 1). The combination failed to teach disposed forward of a front seat of the motor vehicle. However, Bose teaches disposed forward of a front seat of the motor vehicle (Fig. 4). The combination and Bose are analogous art because they are both in the same field of endeavor, namely loudspeakers. Therefore, 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, because it is an inventor choice to select where to place a woofer and no unexpected result will arise. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM A JEREZ LORA whose telephone number is (571)270-5519. The examiner can normally be reached M-F 7am-9am and 11am-6pm. 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, Vivian Chin 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. 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. /WILLIAM A JEREZ LORA/ Primary Examiner, Art Unit 2695 Application/Control Number: 18/952,106 Page 2 Art Unit: 2695 Application/Control Number: 18/952,106 Page 3 Art Unit: 2695 Application/Control Number: 18/952,106 Page 4 Art Unit: 2695 Application/Control Number: 18/952,106 Page 5 Art Unit: 2695 Application/Control Number: 18/952,106 Page 6 Art Unit: 2695 Application/Control Number: 18/952,106 Page 7 Art Unit: 2695 Application/Control Number: 18/952,106 Page 8 Art Unit: 2695
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