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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the second proximal flange described in claim 6 must be shown or the feature(s) canceled from the claim(s). Additionally, figs.1-14 are not labelled with numerical character(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
means for controlling the passage in claim 19.
means for sealing in claim 19.
means for stopping the passage in claim 19.
means for forming a seal in claim 19.
means for attenuating sound in claim 19.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claim 1 is objected to because of the following informalities: the limitation, “A method for making a sound-attenuation ear piece configured to engage an ear canal of a user, the method comprising: forming a pliable stem having an open channel extending from a sound-receiver end to a sound-emitter end, the pliable stem including: a first cup-shaped flange at the emitter end, the first flange having a convex external surface configured to engage the ear canal and create a seal, and a concave inner surface facing the receiver end; and a stop section positioned within the cup-shaped first flange, the stop section having a proximal top surface and extending between an emitter end and a receiver end; forming a foam sound-attenuation plug having an emitter end, a receiver end, and a first channel extending through its entire length; coupling the foam sound-attenuation plug around the pliable stem such that the pliable stein is positioned within the first channel and at least a portion of the foam sound-attenuation plug is contained within the cup-shaped first flange; and securing the emitter end of the foam sound-attenuation plug against the receiver end of the stop section to maintain its position, with at least most of the first cup-shaped flange spaced apart from the foam sound-attenuation plug to reduce sound conduction” should read: A method for making a sound-attenuation ear piece configured to engage an ear canal of a user, the method comprising:
forming a pliable stem having an open channel extending from a sound-receiver end to a sound-emitter end, the pliable stem including:
a first cup-shaped flange at the emitter end, the first flange having a convex external surface configured to engage the ear canal and create a seal, and a concave inner surface facing the receiver end; and
a stop section positioned within the first cup-shaped flange
forming a foam sound-attenuation plug having an emitter end, a receiver end, and a first channel extending through its entire length;
coupling the foam sound-attenuation plug around the pliable stem such that the pliable stein is positioned within the first channel and at least a portion of the foam sound-attenuation plug is contained within the first cup-shaped flange
securing the emitter end of the foam sound-attenuation plug against the receiver end of the stop section to maintain its position, with at least most of the first cup-shaped flange spaced apart from the foam sound-attenuation plug to reduce sound conduction. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: as regard the term “its” in lines 12 and 17, the structure to which Applicant is seeking patent protection should be claimed instead. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: the limitations, “wherein the stop has a conical frustum shape having a first diameter at the receiver end of the stop and a second diameter at the emitter end of the stop, and wherein the first diameter is larger than the second diameter” should read, wherein the stop section has a conical frustum shape having a first diameter at the receiver end of the stop section and a second diameter at the emitter end of the stop section, and wherein the first diameter is larger than the second diameter. Appropriate correction is required.
Claim 15 is objected to because of the following informalities: the limitations, “wherein the stop has a conical frustum shape having a first diameter at the receiver end of the stop and a second diameter at the emitter end of the stop, and wherein the first diameter is larger than the second diameter” should read, wherein the stop section has a conical frustum shape having a first diameter at the receiver end of the stop section and a second diameter at the emitter end of the stop section, and wherein the first diameter is larger than the second diameter. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the first flange" in line 5 of the claim. There is insufficient antecedent basis for this limitation in the claim. Did Applicant intend to recite “the first cup-shaped flange? Clarification is requested.
Claim 1 recites the limitation "the emitter end" in line 5 of the claim. There is insufficient antecedent basis for this limitation in the claim. It recommended to recite “sound-emitter end” in order to obviate the 112(b) rejection.
Claim 1 recites the limitation "the receiver end" in line 7 of the claim. There is insufficient antecedent basis for this limitation in the claim. It is recommended to recite “sound-receiver end” in order to obviate the 112(b) rejection.
As to claim 1, it is unclear if “a stop section positioned within the cup-shaped first flange, the stop section having a proximal top surface and extending between an emitter end and a receiver end” is the same are different from the previously recited emitter and receiver end or are they different. Clarification is requested.
As to claim 7, the limitations, “wherein the foam sound-attenuation plug further includes: a proximal flange having a flange diameter that is larger than a largest diameter of the second flange of the pliable stein, a middle portion having a middle-portion diameter that is smaller than the flange diameter of the proximal flange, and a distal portion having a distal-portion diameter that is smaller than the middle-portion diameter and sized to be in a spaced-apart relation to the concave inner surface of the first flange of the pliable stem” renders the claim indefinite as it is unclear to which flange Applicant is referring to. Applicant initially claimed “a proximal second flange” in claim 6 to which claim 7 depends, however, in claim 7, Applicant recites “a proximal flange” in line 2 of the claim and further “the second flange” in lines 2-3 of the claim. As best understood, “the second flange” should have been recited as “the proximal second flange” in lines 2-3 of the claim.
Claim 7 recites the limitation "the concave inner surface" in line 7 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the first flange of the pliable stem" in lines 7-8 of the claim. There is insufficient antecedent basis for this limitation in the claim.
The term “about 135 degrees” in claim 10 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “between about 30 Shore A and about 40 Shore A,” in claim 12 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 13 recites the limitation "the first cup-shaped flange" in lines 14-15 of the claim. There is insufficient antecedent basis for this limitation in the claim.
As to claim 13, the limitation, “such that at least most of the first cup-shaped flange remains spaced apart from the foam sound-attenuation plug to reduce sound conduction” renders the claim indefinite as “at least most of the first cup-shaped flange remains spaced apart from the foam sound-attenuation plug”; renders the claim indefinite because the resulting claim does not clearly set forth the metes and bounds of the patent protection desired, as the office cannot reasonable ascertain what would be considered as “at least most” as regard the positioning of the first cup-shaped flange.
Claim 15 recites the limitation "the receiver end of the stop" in line 2 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites the limitation "the emitter end of the stop" in line 2 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "the pliable stem" in line 1 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "the receiver end of the foam sound-attenuation plug" in lines 2-3 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "the pliable stem" in lines 3 and 8 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "the second flange" in lines 2-3 of the claim. There is insufficient antecedent basis for this limitation in the claim. As best understood, the limitation should have been the proximal second flange.
Claim 17 recites the limitation "the concave inner surface of the first flange" in line 7 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "the first flange" in line 7 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "the pliable stem" in line 8 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 18 recites the limitation "the pliable stem" in line 1 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 19 recites the limitation "the stop section" in line 13 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 19 recites the limitation "the cup-shaped first flange" in lines 13-14 of the claim. There is insufficient antecedent basis for this limitation in the claim.
As to claim 19, the limitation, “means for forming a seal within the ear canal using both the cup-shaped means for sealing and the foam sound-attenuation plug, such that at least most of the cup-shaped means for sealing remains spaced apart from the foam sound-attenuation plug to reduce sound conduction” renders the claim indefinite as “at least most of the cup-shaped means for sealing remains spaced apart from the foam sound-attenuation plug to reduce sound conduction”; renders the claim indefinite because the resulting claim does not clearly set forth the metes and bounds of the patent protection desired, as the office cannot reasonable ascertain what would be considered as “at least most” as regard the positioning of the foam sound-attenuation plug.
Claims 2-6, 8-9, 11 and 14 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter, since claim 14 depends on claim 13 and therefore contain the same deficiencies.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. (11,229,552 B1). Although the conflicting claims are not identical, they are not patentably distinct from each other because the application claims are a narrower recitation of the invention than that of the patented application.
Claim 1 of the instant application recite: A method for making a sound-attenuation ear piece configured to engage an ear canal of a user, the method comprising: forming a pliable stem having an open channel extending from a sound-receiver end to a sound-emitter end, the pliable stem including: a first cup-shaped flange at the emitter end, the first flange having a convex external surface configured to engage the ear canal and create a seal, and a concave inner surface facing the receiver end; and a stop section positioned within the cup-shaped first flange, the stop section having a proximal top surface and extending between an emitter end and a receiver end; forming a foam sound-attenuation plug having an emitter end, a receiver end, and a first channel extending through its entire length; coupling the foam sound-attenuation plug around the pliable stem such that the pliable stein is positioned within the first channel and at least a portion of the foam sound-attenuation plug is contained within the cup-shaped first flange; and securing the emitter end of the foam sound-attenuation plug against the receiver end of the stop section to maintain its position, with at least most of the first cup-shaped flange spaced apart from the foam sound-attenuation plug to reduce sound conduction.
Claim 11 of U.S. Patent No. (11,229,552 B1) recite: A method for assembling a sound-attenuation earplug, the method comprising: forming a base having an emitter end and a receiver end, wherein the base includes: a first flange at the emitter end of the base, wherein the first flange has a cup shape having a convex external surface at the emitter end of the base and an outer perimeter, wherein the cup shape is configured to engage the ear canal to create a seal in the ear canal, wherein the first flange has a concave inner surface toward the receiver end of the base, a stop located within the cup shape of the first flange; forming a sound-attenuation plug having a distal end and a proximal end, wherein the sound-attenuation plug includes a first channel that passes through an entire length of the sound-attenuation plug; and forming the sound-attenuation earplug by coupling the sound-attenuation plug to the base such that the distal end of the sound-attenuation plug is adjacent to the stop and such that at least a portion of the sound-attenuation plug is within the outer perimeter of the cup shape of the first flange.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between claim 1 of the current application and claim 11 of patent (‘552) lies in the fact that the instant application claim include many more elements and is thus much more specific. Thus, the invention of the instant application claim 1 is in effect a “species” of the “generic” invention of U.S. Patent No. (11,229,552 B1) claim 11. 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 11 of the U.S. Patent No. (11,229,552 B1) is anticipated by claim 1 of the instant application, it is not patentably distinct from claim 1 of the instant application claim 1.
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.
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, Alireza Nia can be reached at 5712703076. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OPHELIA A HAWTHORNE/Primary Examiner, Art Unit 3786