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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,700,476 (the ‘476 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other.
As to Claims 1-7, the claim 1 of the ‘476 Patent discloses all the steps of Claim 1, except for “causing the second contact surface of the body portion to contact the anti-tragus portion of the user's ear and the third contact surface of the retaining member to contact the cymba conch portion of the user's ear”. Claim 1 of the ‘476 Patent recites “turning the earphone a partial rotation about an axis that is aligned in the direction of the ear canal until the second contact surface of the body portion contacts the anti-tragus portion of the user's ear and the third contact surface of the retaining member contacts the cymba conch portion of the user's ear”. The step of “turning the earphone a partial rotation about an axis that is aligned in the direction of the ear canal” is functionally equivalent to the broader “causing” recited in Claim 1, since the same result of the second contact surface of the body portion contacting the anti-tragus portion of the user's ear and the third contact surface of the retaining member contacting the cymba conch portion of the user's ear, is achieved. As to Claims 8-15, Claims 6-11 of the ‘476 Patent recite all the limitations of, and would anticipate Claims 8-15. The claim correspondence is shown in the table below.
Instant Application
The ‘476 Patent
1, 5-6
1-5
2
2-3
3
3
4
4
7
5
8, 13-14
6-11
9
7-9
10
8
11
9
12
10
15
11
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,212,917 (the ‘917 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other.
As to Claims 1-7, the claim 1 of the ‘917 Patent discloses all the steps of Claim 1, except for “causing the second contact surface of the body portion to contact the anti-tragus portion of the user's ear and the third contact surface of the retaining member to contact the cymba conch portion of the user's ear”. Claim 1 of the ‘917 Patent recites “turning the earphone a partial rotation about an axis that is aligned in the direction of the ear canal until the second contact surface of the body portion contacts the anti-tragus portion of the user's ear and the third contact surface of the retaining member contacts the cymba conch portion of the user's ear”. The step of “turning the earphone a partial rotation about an axis that is aligned in the direction of the ear canal” is functionally equivalent to the broader “causing” recited in Claim 1, since the same result of the second contact surface of the body portion contacting the anti-tragus portion of the user's ear and the third contact surface of the retaining member contacting the cymba conch portion of the user's ear, is achieved. As to Claims 8-15, Claims 6-11 of the ‘917 Patent recite all the limitations of, and would anticipate Claims 8-15. The claim correspondence is shown in the table below.
Instant Application
The ‘917 Patent
1, 5-6
1-5
2
2-3
3
3
4
4
7
5
8, 13-14
6-11
9
7-9
10
8
11
9
12
10
15
11
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 1-4, 8-10, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dyer et al., U.S. Patent No. 6,688,421, patented on February 10, 2004 (Dyer).
As to Claim 1, Dyer discloses a method for placing an earphone into a wearing position on a user, the method comprising: inserting an earphone [101] into the outer cavity portion of a user's ear, where the earphone [101] comprises an eartip [360], a body portion [320], and a retaining member [130] (see Fig. 1); where the eartip comprises an first contact surface [360]; where the body portion [301] comprises a second contact surface [130] formed to conform to an anti-tragus portion [115] of a user's ear (col. 3, lines 38-44; see Fig. 1); where the retaining member [103] comprises a third contact surface [103] formed to conform to a cymba conch portion of a user's ear (the retaining member [103] fits under the crus of helix, which corresponds to the cymba concha; col. 5, lines 61-63); pressing the earphone inward toward the user's ear canal until the oval-shaped first contact surface [360] of the eartip contacts the ear canal (the eartip [360] fits into the ear canal; col. 6, lines 66-67, col. 7, line 1); and causing the second contact surface [130] of the body portion [320] to contact the anti-tragus portion [115] of the user's ear and the third contact surface of the retaining member [103] to contact the cymba conch portion (underneath [125]; see Fig. 1) of the user's ear (the earphone is rotated so that the retaining member [103] rests under the crus of helix, which corresponds to the cymba concha; col. 1, lines 51-54; see Fig. 1).
As to Claim 2, Dyer remains as applied above to Claim 1. Dyer further discloses that the earphone further comprises an acoustic driver [505] within the body portion [301] and the method further comprises applying an audio signal to the acoustic driver [505] to produce acoustic sound through the eartip (col. 6, lines 8-12).
As to Claim 3, Dyer remains as applied above to Claim 2. Dyer further discloses that the earphone further includes a wireless communication module [1001] configured to wirelessly receive the audio signal and the method further comprises wirelessly receiving and decoding the audio signal at the wireless communication module [1001] (the module [1001] comprises a wireless transceiver that receives signals from another device and plays the signals through the speaker; col. 7, lines 7-17).
As to Claim 4, Dyer remains as applied above to Claim 1. Dyer further discloses that the third contact surface of the retaining member [103] comprises an arc shaped curve whose two ends contact the body portion [301] (see Fig. 3).
As to Claim 8, Dyer discloses an earphone [101] comprising: a speaker driver [505] (col. 6, lines 8-12); a flexible (col. 2, lines 24-27) eartip [360] comprising a first contact surface [360] configured to contact an outer surface of a user's ear canal when worn (the eartip [360] fits into the ear canal; col. 6, lines 66-67, col. 7, line 1); a body portion [301] comprising a second contact surface [130] configured to position behind an anti-tragus portion [115] of the user's ear when worn (col. 3, lines 38-44; see Fig. 1); and a retaining member [103] formed of a compliant material (the material is an elastomeric material; col. 2, lines 24-27), comprising a third contact surface [103] configured to conform to a cymba conch portion of the user's ear when worn (the retaining member [103] fits under the crus of helix, which corresponds to the cymba concha; col. 5, lines 61-63); wherein the body portion [301] and the retaining member [103] are shaped in a way that the second contact surface [130] contacts the anti-tragus portion [115] and the third contact surface [103] contacts the cymba conch portion (under [125]) substantially at the same time (see Fig. 1), when the first contact surface [360] is already in contact with the outer surface of the user's ear canal (the eartip [360] fits into the ear canal; col. 6, lines 66-67, col. 7, line 1).
As to Claim 9, Dyer remains as applied above to Claim 8. Dyer further discloses that the earphone further comprises an acoustic driver [505] within the body portion [301] and the earphone is configured to apply an audio signal to the acoustic driver [505] to produce acoustic sound through the eartip (col. 6, lines 8-12).
As to Claim 10, Dyer remains as applied above to Claim 9. Dyer further discloses a wireless communication module [1001] configured to wirelessly receive and decode the audio signal (the module [1001] comprises a wireless transceiver that receives signals from another device and plays the signals through the speaker; col. 7, lines 7-17).
As to Claim 12, Dyer remains as applied above to Claim 8. Dyer further discloses that the third contact surface of the retaining member [103] comprises an arc shaped curve whose two ends contact the body portion [301] (the outline of [103] is a curve; See Fig. 3).
Claims 1, 5, 8, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bailey et al., U.S. Publication No. 2006/0067556, published on March 30, 2006 (Bailey).
As to Claim 1, Bailey discloses a method for placing an earphone [1] into a wearing position on a user, the method comprising: inserting an earphone [1] into the outer cavity portion of a user's ear (para. 0041, lines 6-7), where the earphone [1] comprises an eartip [3], a body portion [2], and a retaining member [4]; where the eartip [3] comprises a first contact surface (surface of [3]); where the body portion [2] comprises a second contact surface (surface of [2]) formed to conform to an anti-tragus portion [I] of a user's ear (See Fig. 6B); where the retaining member [4] comprises a third contact surface (surface of [4]) formed to conform to a cymba conch portion [D] of a user's ear (para. 0041, lines 26-29); pressing the earphone [1] inward toward the user's ear canal until the first contact surface of the eartip [3] contacts the ear canal (para. 0041, lines 6-8); and causing the second contact surface of the body portion [2] contacts the anti-tragus portion [I] of the user's ear (the earphone is rotated until the body portion [2] is under antitragus [I]; para. 0041, lines 8-19) and the third contact surface (surface of [4]) of the retaining member [4] to contact the cymba conch portion of the user's ear (the retaining member [4] is introduced completely into the cymba conchae [D]; para. 0041, lines 26-29).
As to Claim 5, Bailey remains as applied above to Claim 1, Bailey further discloses that the retaining member [4] is removeable from the earphone [1] (claim 29).
As to Claim 8, Bailey discloses an earphone [1] comprising: a speaker driver [17] (para. 0044, lines 10-11); a flexible (para. 0038) eartip [3] comprising a first contact surface (surface of [3]) configured to contact an outer surface of a user's ear canal when worn (para. 0041, lines 6-8); a body portion [2] comprising a second contact surface (surface of [2]) configured to position behind an anti-tragus portion [I] of the user's ear when worn (See Fig. 6B); and a retaining member [4] formed of a compliant material (para. 0038), comprising a third contact surface (surface of [4]) configured to conform to a cymba conch portion [D] of the user's ear when worn (para. 0041, lines 26-29); wherein the body portion [2] and the retaining member [4] are shaped in a way that the second contact surface (surface of [2]) contacts the anti-tragus portion [I] and the third contact surface (surface of [4]) contacts the cymba conch portion [D] substantially at the same time, when the first contact surface (surface of [3]) is already in contact with the outer surface of the user's ear canal (the earphone is inserted so that the eartip [3] makes contact with the ear canal; para. 0041, lines 6-8; the earphone is rotated until the body portion [2] is under antitragus [I]; para. 0041, lines 8-19; and the retaining member [4] is introduced completely into the cymba conchae [D] by the rotation; para. 0041, lines 26-29).
As to Claim 13, Bailey remains as applied above to Claim 8, Bailey further discloses that the retaining member [4] is removeable from the earphone [1] (claim 29).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Dyer et al., U.S. Patent No. 6,688,421, patented on February 10, 2004 (Dyer), in view of Park et al., U.S. Patent No. 10,341,776, patented on July 2, 2019 (Park).
As to Claim 11, Dyer remains as applied above to Claim 9. Dyer does not explicitly disclose a physical control configured to start playback of the audio signal when it is actuated. However, providing such a physical control was well known in the art. Park discloses a similar earphone that comprises a physical control [MB] configured to start playback of the audio signal when it is actuated (col. 22, lines 14-22). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of Applicant’s invention, to incorporate Park’s improvement of a physical control into the earphone of Dyer, for the added feature of allowing a user to control audio in the earpiece.
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, Fan Tsang, can be reached on (571) 272-7547. 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 2653
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