DETAILED ACTION
Double Patenting
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 24 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 16 of the same current application. This is a statutory double patenting rejection.
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 16-24 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-5 of US Patent 12,219,312 and claim 1, 3 and 5-6 of US Patent 11,863,925.
Regarding claim 16-24,
Instant Application
US Patent 12,219,312
US Patent 11,863,925
16 and 24. (Original) A microphone assembly comprising: a substrate that defines a first port that extends completely therethrough; a printed circuit board (PCB) defining a sound opening that extends completely therethrough; a micro-electro-mechanical systems (MEMS) transducer positioned on a first side of the substrate and being positioned directly above the first port and the sound opening; a first lid defining a second port and covering the MEMS transducer and the first port, and the first port being axially displaced from the second port, the first lid and the substrate define a front volume of air that surrounds the MEMS transducer; and at least a portion of a housing being positioned on the second side of the PCB and opposite to the first side of the PCB and defining a cavity; wherein the cavity of the at least the portion of the housing, sound port of the PCB, and the first port of substrate define a back volume of air that is greater than the front volume of air to increase a signal-to-noise-ratio (SNR) and to increase an overall frequency response for the microphone assembly.
1. A microphone assembly comprising: a substrate that defines a first port that extends completely therethrough; a printed circuit board (PCB) defining a first cavity that is embedded within the PCB; the first port of the substrate being aligned with the first cavity about an axis that extends through the first port and the first cavity; a micro-electro-mechanical systems (MEMS) transducer positioned on a first side of the substrate and being positioned directly above the first port and the first cavity; a first lid defining a second port and covering the MEMS transducer and the first port, and the first port being axially displaced from the second port, the first lid and the substrate define a front volume of air that surrounds the MEMS transducer; and wherein the first cavity of the PCB, and the first port of substrate define a back volume of air that is greater than the front volume of air to increase a signal-to-noise-ratio (SNR) and to increase an overall frequency response for the microphone assembly.
1. A microphone assembly comprising: a substrate that defines a first port that extends completely therethrough; a printed circuit board (PCB) having a first side and a second side, the PCB defining a sound opening that extends completely through the first side and the second side; a micro-electro-mechanical systems (MEMS) transducer positioned on a first side of the substrate and being positioned directly above the first port and the sound opening; a first lid defining a second port and covering the MEMS transducer and the first port, and the first port being axially displaced from the second port, the first lid and the substrate define a front volume of air that surrounds the MEMS transducer; and a second lid being positioned on the second side of the PCB, the second lid defining a cavity; wherein the cavity of the second lid, the sound opening of the PCB, and the first port of the substrate define a back volume of air that is greater than the front volume of air to increase a signal-to-noise-ratio (SNR) and to increase an overall frequency response for the microphone assembly, a gasket defining a sound hole that extends completely therethrough to attach the first lid to a housing defining a sound aperture; wherein the gasket includes a first side that is coupled to the housing and the sound hole of the gasket is axially aligned with the sound aperture of the housing; wherein the sound hole of the gasket is axially offset from the sound opening of the PCB and from the cavity of the second lid.
17. (Original) The microphone assembly of claim 16, wherein the at least the portion of the housing is positioned on the second side of the PCB that is opposite to the first side of the PCB.
Claim 1…a second lid being positioned on the second side of the PCB, the second lid defining a cavity; … attach the first lid to a housing defining a sound aperture…
18. (Original) The microphone assembly of claim 16, wherein the at least the portion of the housing includes one or more walls that partially enclose the first lid.
3. The microphone assembly of claim 1, where the second lid is fully enclosed to define the cavity.
19. (Original) The microphone assembly of claim 16, further comprising a gasket defining a sound hole that extends completely therethrough.
2. The microphone assembly of claim 1, further comprising a gasket defining a sound hole that extends completely therethrough.
20. (Original) The microphone assembly of claim 19, wherein the at least the portion of the housing includes a first wall that defines a sound aperture.
3. The microphone assembly of claim 2 further comprising a housing defining a sound aperture.
21. (Original) The microphone assembly of claim 20, wherein the gasket includes a first side that is coupled to the at least the portion of the housing and the sound hole of the gasket is axially aligned with the sound aperture of the housing.
4. The microphone assembly of claim 3, wherein the gasket includes a first side that is coupled to the housing and the sound hole of the gasket is axially aligned with the sound aperture of the housing.
22. (Original) The microphone assembly of claim 21, wherein the gasket includes a second side that is opposite to the first side and the second side of the gasket is coupled to the first lid.
5. The microphone assembly of claim 4, wherein the gasket includes a second side that is opposite to the first side and the second side of the gasket is coupled to the first lid.
5. The microphone assembly of claim 1 wherein the gasket includes a second side that is opposite to the first side and the second side of the gasket is coupled to the first lid.
23. (Original) The microphone assembly of claim 22, wherein the sound hole of the gasket is axially aligned with the sound aperture of the housing and the second port of the first lid.
6. The microphone assembly of claim 5, wherein the sound hole of the gasket is axially aligned with the sound aperture of the housing and the second port of the first lid.
6. The microphone assembly of claim 5, wherein the sound hole of the gasket is axially aligned with the sound aperture of the housing and the second port of the first lid.
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.
Allowable Subject Matter
Claim 21-23 is/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.
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 16-17 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fueldner US PG-Pub 2011/0127623.
Regarding claim 16 and 24, Fueldner teaches a substrate (Fig. 2-4) that defines a first port (Fig. 2-30) that extends completely therethrough; a printed circuit board (PCB) (Fig. 2-10 & [0023]: the substrate can be PCB) defining a sound opening (Fig. 2-32) that extends completely therethrough; a micro-electro-mechanical systems (MEMS) transducer (Fig. 2-2) positioned on a first side of the substrate and being positioned directly above the first port and the sound opening; a first lid (Fig. 2-6) defining a second port (Fig. 2-24) and covering the MEMS transducer and the first port, and the first port being axially displaced from the second port (Fig. 2: the ports 30 and 24 are not align, they are offset, so they are axially displaced from each other), the first lid and the substrate define a front volume of air that surrounds the MEMS transducer (Fig. 2: the volume between the MEMS-2 and lid-6); and at least a portion of a housing (Fig. 2-26) being positioned on the second side of the PCB and opposite to the first side of the PCB and defining a cavity (Fig. 2: the space inside the housing-26); wherein the cavity of the at least the portion of the housing, sound port of the PCB, and the first port of substrate define a back volume of air that is greater than the front volume of air to influence a signal-to-noise-ratio (SNR) and an overall frequency response for the microphone assembly ([0002]: the SNR and frequency characteristic will be influence).
While, Fueldner failed to explicitly teach increase SNR and overall frequency response. However, changing the size and shape of the back and front volume will change the SNR and frequency response of the microphone assembly. 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 specific size and shape of the volumes to alter the SNR and frequency response.
Regarding claim 17, Fueldner teaches wherein the at least the portion of the housing is positioned on the second side of the PCB that is opposite to the first side of the PCB (Fig. 2: housing-26 in on opposite side of PCB-10).
Claim 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fueldner US PG-Pub 2011/0127623 in view of Harney US PG-Pub 2017/0215001.
Regarding claim 18, Fueldner teaches housing and MEMS with first lid (Fig. 2).
Fueldner failed to teach wherein the at least the portion of the housing includes one or more walls that partially enclose the first lid.
However, Harney teaches wherein the at least the portion of the housing includes one or more walls that partially enclose the first lid (Fig. 17A: having the lid-1702 of MES device being cover by shell-1701).
Fueldner and Harney are analogous art because they are both in the same field of endeavor, namely audio devices. 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 enclosing a device will protect it from getting damage.
Claim 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fueldner US PG-Pub 2011/0127623 in view of Leahy US PG-Pub 2023/0097786.
Regarding claim 19, Fueldner teaches sound holes (Fig. 2-30).
Fueldner failed to teach a gasket defining a sound hole that extends completely therethrough.
However, Leahy teaches a gasket defining a sound hole that extends completely therethrough (Fig. 8: gasket-814 that defines a sound hole).
Fueldner and Leahy are analogous art because they are both in the same field of endeavor, namely audio devices. 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 a gasket helps to create separation and seal different components.
Regarding claim 20, Fueldner teaches wherein the at least the portion of the housing includes a first wall that defines a sound aperture (Fig. 6: the housing-6 has sound aperture-24). 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 is an inventor choice to select where in a housing to place a sound aperture.
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.
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/WILLIAM A JEREZ LORA/ Primary Examiner, Art Unit 2695
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