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.
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Claim 21 of 18/991,113
A method of controlling an audio device comprising: receiving one or more sensor signals generated by one or more sensors, wherein the one or more sensors are on or in a tubular structure, wherein the tubular structure is part of the audio device; matching at least one of the one or more sensor signals to a first user gesture by a user, wherein the first user gesture is a finger sliding motion along the tubular structure; and controlling a first function of the audio device by associating the first user gesture with the first function, wherein the first function is increasing or decreasing a volume of audio content playing from the audio device.
Claim 1 of 11759149
A device, comprising: an ambient sound microphone that generates an ambient signal; a sensor within or on a tubular structure, wherein the sensor controls a function of an earphone, wherein the earphone is designed to fit partially within a user's ear; a speaker that emits an audio content; a memory that stores instructions; a processor, wherein the processor acquires a user gesture from the sensor, wherein the user gesture results from the user touching the sensor or touching a cover on the sensor or touching the tubular structure, wherein the gesture is at least one of a double press, a triple press, a press and hold, a swipe along the tubular structure, or a combination thereof, and wherein the processor associates the user gesture with controlling a function of the earphone, wherein the function is at least one of playing audio, pausing audio, skipping forward in the audio, skipping backward in the audio, increasing a volume of the audio content, decreasing the volume of the audio content, activating a voice command mode, switching to ambient sound passthrough mode or a combination thereof.
Claim 30 of 18/991,113
A method of controlling an audio device comprising: receiving one or more sensor signals generated by one or more sensors that include a capacitive sensor, wherein the one or more sensors are in an in-ear earpiece that has a portion that fits within a concha bowl of a user, wherein part of the in-ear earpiece is designed to be outside the concha of the user when the in-ear earpiece is worn by the user; matching at least one of the one or more sensor signals to a first user gesture by the user, wherein the first user gesture is a finger sliding motion along the in-ear earpiece; and controlling a first function of a media device that is in communication with the in-ear earpiece by associating the first user gesture with the first function, wherein the first function is increasing or decreasing a volume of audio content playing from the in-ear earpiece.
Claim 35 of 18/991,113
A memory comprising instructions that when executed by a processor: receive one or more sensor signals generated by one or more sensors that include a capacitive sensor, wherein the one or more sensors are in an in-ear earpiece that has a portion that fits within a concha bowl of a user, wherein part of the in-ear earpiece is designed to be outside the concha of the user when the in-ear earpiece is worn by the user; match at least one of the one or more sensor signals to a first user gesture by the user, wherein the first user gesture is a finger sliding motion along the in-ear earpiece; and control a first function of a media device that is in communication with the in-ear earpiece, by associating the first user gesture with the first function, wherein the first function is increasing or decreasing a volume of audio content playing from the in-ear earpiece.
Claim 5 of 11759149
A method of controlling a wireless earphone, comprising: acquiring a user gesture from a sensor, where the sensor is part of an earphone, where the earphone is designed to fit partially within a user's ear canal, wherein the user gesture results from the user touching the sensor or touching a cover on the sensor or touching a tubular structure where the sensor is within, wherein the tubular structure has a length greater than it's diameter, wherein the gesture is at least one of a double press, a triple press, a press and hold, a swipe along the tubular structure, or a combination thereof; generating a control signal by associating the user gesture with controlling a function of the earphone, wherein the function is at least one of playing audio, pausing audio, skipping forward in the audio, skipping backward in the audio, increasing a volume of the audio content, decreasing the volume of the audio content, activating a voice command mode, switching to ambient sound passthrough mode or a combination thereof; and sending the control signal to a processor, wherein the processor is part of the earphone.
Claims 21, 30 & 35 of application number 18/991,113 (hereinafter referred to as ‘113) are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 & 5 of U.S. Patent No. 11759149 (hereinafter referred to as ‘149).
Although the claims at issue are not identical, they are not patentably distinct from each other because ‘113 claims 21, 30 & 35 are obvious various wordings of ‘149 claims 1 & 5.
Claim 21 of 18/991,113
A method of controlling an audio device comprising: receiving one or more sensor signals generated by one or more sensors, wherein the one or more sensors are on or in a tubular structure, wherein the tubular structure is part of the audio device; matching at least one of the one or more sensor signals to a first user gesture by a user, wherein the first user gesture is a finger sliding motion along the tubular structure; and controlling a first function of the audio device by associating the first user gesture with the first function, wherein the first function is increasing or decreasing a volume of audio content playing from the audio device.
Claim 1 of 12193841
A method of controlling an audio device comprising: receiving a sensor signal generated by a sensor, wherein the sensor is on or in a tubular structure, wherein the tubular structure is part of the audio device; matching the sensor signal to a user gesture by a user, wherein the user gesture results from the user touching the sensor or touching a cover on the sensor or touching the tubular structure, wherein the user gesture is at least one of a finger movement along the tubular structure, pinching the tubular structure, double pressing the tubular structure, triple pressing the tubular structure, a press and then hold for a time period of the tubular structure, a dual touch of the tubular structure or pressing and rotating along the tubular structure; and controlling a function of the audio device by associating the user gesture with the function, wherein the function is at least one of playing audio content, pausing audio content, skipping forward in the audio content, rewinding the audio content, increasing a volume of audio content playing from the audio device, decreasing the volume of the audio content, activating a voice command mode, switching to ambient sound passthrough mode, scrolling through a message, mute, recording, or call control.
Claim 30 of 18/991,113
A method of controlling an audio device comprising: receiving one or more sensor signals generated by one or more sensors that include a capacitive sensor, wherein the one or more sensors are in an in-ear earpiece that has a portion that fits within a concha bowl of a user, wherein part of the in-ear earpiece is designed to be outside the concha of the user when the in-ear earpiece is worn by the user; matching at least one of the one or more sensor signals to a first user gesture by the user, wherein the first user gesture is a finger sliding motion along the in-ear earpiece; and controlling a first function of a media device that is in communication with the in-ear earpiece by associating the first user gesture with the first function, wherein the first function is increasing or decreasing a volume of audio content playing from the in-ear earpiece.
Claim 35 of 18/991,113
A memory comprising instructions that when executed by a processor: receive one or more sensor signals generated by one or more sensors that include a capacitive sensor, wherein the one or more sensors are in an in-ear earpiece that has a portion that fits within a concha bowl of a user, wherein part of the in-ear earpiece is designed to be outside the concha of the user when the in-ear earpiece is worn by the user; match at least one of the one or more sensor signals to a first user gesture by the user, wherein the first user gesture is a finger sliding motion along the in-ear earpiece; and control a first function of a media device that is in communication with the in-ear earpiece, by associating the first user gesture with the first function, wherein the first function is increasing or decreasing a volume of audio content playing from the in-ear earpiece.
Claim 15 of 12193841
A method of controlling an audio device comprising: receiving a sensor signal generated by a sensor, wherein the sensor is on or in a compressible tubular structure, wherein the compressible tubular structure is part of the earphone, wherein the sensor is a capacitive sensor, and wherein a change in a capacitance generates the sensor signal, wherein the earphone has a portion that fits within an ear canal, and wherein part of the compressible tubular structure is designed to be outside a concha of a user when the earphone is used; matching the sensor signal to a user gesture, wherein the user gesture results from the user touching the sensor or touching a cover on the sensor or touching the compressible tubular structure, wherein the user gesture is at least one of a finger movement along the compressible tubular structure, pinching the compressible tubular structure, double pressing the compressible tubular structure, triple pressing the compressible tubular structure, a press and then hold for a time period of the compressible tubular structure, a dual touch of the compressible tubular structure or pressing and rotating along the compressible tubular structure; and controlling a function of the audio device by associating the user gesture with the function, wherein the function is at least one of playing audio content, pausing audio content, skipping forward in the audio content, rewinding the audio content, increasing a volume of audio content playing from the audio device, decreasing the volume of the audio content, activating a voice command mode, switching to ambient sound passthrough mode, scrolling through a message, mute, recording, or call control.
Claim 16 of 12193841
A memory comprising instructions that when executed by a processor: receive a sensor signal generated by a sensor, wherein the sensor is on or in a tubular structure that is part of an earphone, the earphone having a portion that fits within an ear canal and a part of the tubular structure is outside a concha of a user when the earphone is being used by the user; match the sensor signal to a user gesture, wherein the user gesture results from the user touching the sensor or touching a cover on the sensor or touching the tubular structure, wherein the user gesture is at least one of a finger movement along the tubular structure, pinching the tubular structure, double pressing the tubular structure, triple pressing the tubular structure, a press and then hold for a time period of the tubular structure, a dual touch of the tubular structure or pressing and rotating along the tubular structure; and control a function that is associated with the user gesture, wherein the function is at least one of playing audio content, pausing audio content, skipping forward in the audio content, rewinding the audio content, increasing a volume of audio content playing from the earphone, decreasing the volume of the audio content, activating a voice command mode, switching to ambient sound passthrough mode, scrolling through a message, mute, recording, or call control.
Claims 21, 30 & 35 of application number 18/991,113 (hereinafter referred to as ‘113) are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 & 15-16 of U.S. Patent No. 12193841 (hereinafter referred to as ‘841).
Although the claims at issue are not identical, they are not patentably distinct from each other because ‘113 claims 21, 30 & 35 are obvious various wordings of ‘841 claims 1 & 15-16.
Claims 21-39 would be allowable once double patenting rejection is overcome.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE C MONIKANG whose telephone number is (571)270-1190. The examiner can normally be reached Mon. - Fri., 9AM-5PM, ALT. Fridays off.
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/GEORGE C MONIKANG/Primary Examiner, Art Unit 2692 09/04/2026
