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 .
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.
Claims 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,207,038 (the ‘038 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1-20 of the ‘038 Patent recite all the features of Claims 1-22 except for the flexible arm being configured to be located between and physically and electrically connecting an acoustic module of a headphone to an other portion of the headphone, and an electrical connection that extends through the entire original resting length of the flexible arm. Claims 1-20 of the ‘038 Patent recites “a flexible arm that is configured to be located between and physically and electrically connect an acoustic module of an open-ear headphone to a battery housing of the open-ear headphone” (emphasis added), and “a flexible printed circuit that extends through the entire original resting length of the flexible arm” (emphasis added). A nonstatutory double patenting rejection is appropriate where a claim in an application under examination claims subject matter that is different, but not patentably distinct, from the subject matter claimed in a prior patent or a copending application. The claim under examination is not patentably distinct from the reference claim(s) if the claim under examination is anticipated by 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, 1052, 29 USPQ2d 2010, 2015-16 (Fed. Cir. 1993). Here, the broader limitations of “an other portion of the headphone” and “an electrical connection” would anticipate a battery portion of an outer-ear headphone, and a flexible printed circuit, respectively.
Claim Rejections - 35 USC § 102
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 1-3, 9-10, and 15-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Graff et al., U.S. Patent No. 10,924,838, patented on February 16, 2021 (Graff).
As to Claim 1, Graff discloses a flexible arm [20, 172] that is configured to be located between and physically and electrically connect an acoustic module [12, 177] of a headphone [10] to an other portion [19] of the headphone [10], the flexible arm comprising: an electrical connection [120] that extends through the entire original resting length of the flexible arm [20, 172] and comprises a conductor that is configured to carry electrical energy between the acoustic module [12, 177] and the other portion [19] of the headphone [10] (the electrical connection is a flexible printed circuit that is coupled to battery in [19] and the acoustic module [12, 177]; col. 7, lines 49-52); at least one link member [90]; and a flexible material that encases at least some of the at least one link member [90] and at least some of the electrical connection [120] (a flexible material is overmolded on the link member [90] and electrical connection [120] col. 8, lines 20 and 26; see Figs. 9-10).
As to Claim 2, Graff remains as applied above to Claim 1. Graff further discloses that the electrical connection [120] comprises a flexible printed circuit board (col. 7, lines 49-52).
As to Claim 3, Graff remains as applied above to Claim 1. Graff further discloses a first interface structure [94] coupled to one of the acoustic module [12, 177] and the other portion [19] of the headphone [10] (interface structure [94] connects to acoustic module [177]; see Fig. 4), wherein the flexible material encases at least some of the first interface structure [94] (the flexible material is overmolded on [94]; col. 7, lines 16-22).
As to Claim 9, Graff remains as applied above to Claim 1. Graff further discloses that the at least one link member [90] at least partially surrounds the electrical connection [120] (see Fig. 6).
As to Claim 10, Graff remains as applied above to Claim 1. Graff further discloses a guide member [116] coupled to the at least one link member [90] (col. 7, lines 46-48), wherein the electrical connection [120] passes through a channel in the guide member [166], thereby coupling the electrical connection [120] to the at least one link member [90] (col. 7, lines 57-59).
As to Claim 15, Graff remains as applied above to Claim 1. Graff further discloses that the at least one link member [90] comprises a motion limiting feature that limits rotational movement of the link member [90] (the link member [90] is differentially compliant about at least two axes; col. 6, lines 56-62).
As to Claim 16, Graff remains as applied above to Claim 1. Graff further discloses that the at least one link member [90] is formed of a rigid plastic (col. 6, lines 64-65).
As to Claim 17, Graff remains as applied above to Claim 1. Graff further discloses that the at least one link member [90] is formed of metalk (col. 6, lines 65-66).
As to Claim 18, Graff remains as applied above to Claim 1. Graff further discloses that the flexible material comprises an external layer of the entire flexible arm [20, 172] (the flexible material is an overmold intended to contact a user’s skin; col. 8, lines 9-13).
As to Claim 19, Graff remains as applied above to Claim 1. Graff further discloses that the original resting position of the flexible arm [20, 172] lies along a curved axis that defines a simple open curve (see Fig. 2).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ryan Robinson whose telephone number is (571) 270-3956. The examiner can normally be reached on Monday through Friday from 9 am to 5 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Carolyn Edwards can be reached on (571) 270-7136. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/RYAN ROBINSON/Primary Examiner, Art Unit 2694
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