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 .
Election/Restrictions
Applicant’s election without traverse of invention II, species B directed to claims 10-20 in the reply filed on 06/30/2026 is acknowledged.
Claims 1-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/30/2026.
Specification
The abstract of the disclosure is objected to because the Abstract include they include limitations which are not enclosed within parentheses. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. (12,232,931 B2). Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims are a broader recitation of the invention than that of the patent application.
Claim 10 of the instant invention recites: a pair of earmuffs comprising: a first ear cup; a second ear cup; and a band comprising: a first band segment coupled the first ear cup: a second band segment coupled to the second ear cup; an upper band segment coupling the first band segment to the second band segment; a first pivot joint, the first pivot joint coupling the upper band segment to the first band segment; and a second pivot joint that couples the upper band segment to the second band segment; wherein the upper band segment is rotatable about the first pivot joint and the second pivot joint; wherein, when the upper band segment is rotated, the upper band segment moves between a first position in which the upper band segment is positioned above a user's head and a second position in which the upper band segment is positioned behind the user's head.
Claim 10 of U.S. Patent No. (12,232,931 B2) recites: a pair of earmuffs comprising: a first ear cup; a second ear cup; and a band comprising, a first lower band segment coupled the first ear cup, a second lower band segment coupled to the second ear cup, an upper band segment coupling the first lower band segment to the second lower band segment, a first band pivot joint that couples the upper band segment to the first lower band segment, and a second band pivot joint that couples the upper band segment to the second lower band segment; wherein the upper band segment is configured to rotate about the first band pivot joint and the second band pivot joint from a first position in which the upper band segment is positioned above a user's head to a second position in which the upper band segment is positioned behind the user's head when the first ear cup is positioned over the first ear of the user and the second ear cup is positioned over a second ear of the user.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between claim 10 of the current application and claim 10 of U.S. Patent No. (12,232,931 B2) lies in the fact that the patented claim includes many more elements and is thus much more specific. Thus, the invention of claim 10 of U.S. Patent No. (12,232,931 B2) is in effect a “species” of the “generic” invention of current application claim 10. It has been held that the generic invention is “anticipated” by the “species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 10 of the current application is anticipated by claim 10 of U.S. Patent No. (12,232,931 B2), it is not patentably distinct from claim 10 of U.S. Patent No. (12,232,931 B2).
Claims 17-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of U.S. Patent No. (12,232,931 B2). Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims are a broader recitation of the invention than that of the patent application.
Claim 17 of the instant invention recites: a pair of earmuffs comprising: a first ear cup; a second ear cup; a band comprising: a first band segment; a second band segment; and a third band segment extending between the first band segment and the second band segment; a first pivot joint that couples the first band segment to the first ear cup; a second pivot joint that couples the second band segment to the second ear cup; a first angle is defined between the third band segment and the first band segment; and a second angle is defined between the third band segment and the second band segment; wherein the band is rotatable about the first pivot joint and the second pivot joint, and wherein the first angle and the second angle are adjustable.
Claim 1 of U.S. Patent No. (12,232,931 B2) recites: a pair of earmuffs comprising: a first ear cup; a second ear cup; a band comprising, a first lower band segment, a second lower band segment, and an upper band segment extending between the first lower band segment and the second lower band segment; a first pivot joint that couples the first lower band segment to the first ear cup; and a second pivot joint that couples the second lower band segment to the second ear cup; wherein a first angle between 45 degrees and 135 degrees is formed between the upper band segment and the first lower band segment; wherein a second angle between 45 degrees and 135 degrees is formed between the upper band segment and the second lower band segment; and wherein the band is configured to rotate about the first pivot joint and the second pivot joint from a first position in which the upper band segment is positioned above a user's head to a second position in which the upper band segment is positioned behind a user's head when the first ear cup is positioned over a first ear of the user and the second ear cup is positioned over a second ear of the user.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between claim 17 of the current application and claim 1 of U.S. Patent No. (12,232,931 B2) lies in the fact that the patented claim includes many more elements and is thus much more specific. Thus, the invention of claim 1 of U.S. Patent No. (12,232,931 B2) is in effect a “species” of the “generic” invention of current application claim 17. It has been held that the generic invention is “anticipated” by the “species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 17 of the current application is anticipated by claim 1 of U.S. Patent No. (12,232,931 B2), it is not patentably distinct from claim 1 of U.S. Patent No. (12,232,931 B2).
All of the limitations of claim 18 of the instant application can be found in claim 1 of U.S. Patent No. (12,232,931 B2).
All of the limitations of claim 20 of the instant application can be found in claim 4 of U.S. Patent No. (12,232,931 B2).
Allowable Subject Matter
Claims 11-16 and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OPHELIA ALTHEA HAWTHORNE whose telephone number is (571)270-3860. The examiner can normally be reached M-F 8:00 AM-5:00 PM, EST.
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/OPHELIA A HAWTHORNE/Primary Examiner, Art Unit 3786
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