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 .
Information Disclosure Statement
The information disclosure statements filed 10/21/25, 5/27/25, 4/22/25, 2/7/25, 1/5/26 and 2/25/26 have been considered.
Drawings
The drawings filed 1/15/25 are acceptable to the examiner.
Examiner’s Comments
It is noted that the claims consecutively listed as claims 1, 2, 3, 4, 2, 3, 4, 5, 9, 6, 7, 8, 9, 14, 10, 11, 12, 13, 14 and 15 contains numerous inconsistence numbers. Examiner confirm the correct numbering with applicant during an interview on 7/8/26. Claims 1, 2, 3, 4, 2, 3, 4, 5, 9, 6, 7, 8, 9, 14, 10, 11, 12, 13, 14 and 15 will be considered as if numbered as claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19 and 20 for examination. Applicant’s next amendment will provide an amendment to the claims to correct the numbering as discussed.
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 1-3, 4, 5-6, 7-14 and 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 12, 10-11,13-20 and 4-9 of U.S. Patent No. 12,238,469. Although the claims at issue are not identical, they are not patentably distinct from each other because:
The patent claims include all the limitations of the instant application claims with only difference being obvious wording variations describing the same feature. Claims 1, 13 and 18 of the patent includes all the features of claims 1, 7 and 12 of the present application. The patent claims also include additional limitations. Specifically, claim 1, 13 and 18 of the patent additionally sets forth an actuator as part of the button assembly not present in claims 1, 7 and 12 of the application. Hence the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, “a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim”, In re Goodman, 29 USPQ2d 2010. “Thus, the generic invention is ‘anticipated’ by the species of the patented invention” and the instant “application claims are generic to the species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”). The limitations of claims 2-3, 4, 5-6, 8-11, 13-14 can be found in claims 2-3, 12, 10-11, 14-17 and 19-20 of the patent. The limitations of claims 15-20 can be found in claims 4-9 of the patent where the “electron device” of the application is an obvious wording variation of an “earpiece” of that provided by the patent.
Allowable Subject Matter
Claims 1-20 are allowed over the art of record. However, the double patent rejection must be overcome.
The following is a statement of reasons for the indication of allowable subject matter: Montazemi et al. and Terlizzi et al. are considered the closest art of record. Montazemi et al. teaches an earpiece for a headphone that includes an earpad (5), acoustic driver (4), electronic component (ASP), a button (11, 12) having cap portions. Terlizzi et al. teaches an earpiece arrangement including a display (windowed to be viewed), illumination source (LED), flex circuit (2011) and switch (such as 810, 1423). Neither reference teaches alone or in obvious combination teach an earpiece (claim 1), headphones (claim 7) or electronic device (claim 12) having in combination the features of a button cap having a front-facing surface that protrudes from the housing and a button sidewall that surrounds the front-facing surface, wherein the button sidewall is spaced apart from the aperture sidewall such that the button cap fits within the aperture and, when depressed, partially slides into the interior volume of the housing; an illumination source coupled to move with the button cap and positioned to direct light into the window; and a flex circuit that electrically couples the illumination source to the electronic component; and an electrical switch coupled to the flex circuit, wherein the button assembly is configured to be moved between an unactuated position in which the button assembly is electrically disconnected from the electronic component by the electrical switch and an actuated position in which the button cap slides partially into the interior volume and actuates the electrical switch thereby electrically connecting the button assembly to the electronic component as set forth.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW SNIEZEK whose telephone number is (571)272-7563. The examiner can normally be reached Monday-Friday 7:00 AM-3:30 PM EST.
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, Ahmad Matar can be reached at 571-272-7488. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW SNIEZEK/ Primary Examiner, Art Unit 2693
/A.S./Primary Examiner, Art Unit 2693 7/13/26
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