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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/634,695
`
`01/28/2020
`
`Yuji Matsuo
`
`P200074US00
`
`6916
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`LE, HUYEN D
`
`ART UNIT
`2653
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/16/2021
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`16/634,695
`Examiner
`HUYEN D LE
`
`Applicant(s)
`Matsuo et al.
`Art Unit
`2653
`
`AIA (FITF) Status
`Yes
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 2 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 01/28/2020.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)L) This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on__; the restriction requirement and election have been incorporatedinto this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`
`
`Disposition of Claims*
`1-23 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj] Claim(s)
`is/are allowed.
`02 Claim(s
`s)___ is/are rejected.
`( Claim(s)
`is/are objected to.
`Claim(s) 1-23 are subject to restriction and/or election requirement
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1.2 Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) ([] Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210614
`
`

`

`Application/Control Number: 16/634,695
`Art Unit: 2653
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined underthe
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`first inventor to file provisions of the AJA.
`
`Election/Restriction
`
`1.
`
`Restriction to one of the following inventions is required under 35 U.S.C. 121:
`
`I.
`
`Claims 1-13 and 24-27, drawn to a loudspeaker comprising a yoke, a magnet, a
`
`plate, a voice coll disposed inside a magnetic gap, a vibration plate fixed to the voice coil, a
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`holding member, and a magnetic fuid disposed between the facing portion of the plate and the
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`yowe cou, wherein a coating containing a Muerine resin is formed on a surlace of a portion in
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`contact with the magnetic fluid in at least one of the plete and the voice cou, classified in
`
`H04R9/06.
`
`Il.
`
`Claims 14-15, drawn to a loudspeaker comprising a yoke, a magnet. a plate, a
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`voice coi disposed inside a magnetic gap, a vibrahon plate fixed to the voice coil, a halding
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`member, and a magnetic Maid disposed between the facing portion of the plate and the voice coil,
`
`wherein the magnetic fiid has a viscosity of more than 9 mPa-s and S00 mPa-s or less ata
`
`predetermined reference temperature, the viscosity of the magnetic finid has a local minimum
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`akue of 9 miPa-s or more ina temperature range beyond the predetermined reference
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`femperature, and wherein the viscosity of the magnetic floid at the predetermined reference
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`temperature is larger than the viscosity of the magnetic fluid in the temperature range, classified
`
`in class HO4R9/027.
`
`IIL.
`
`Claims 16-23, drawn to 4ieudspeaker comprising a magnet, a first member, a
`
`second member, a voice cou, a magnetic fluid disposedat least between the voice coil and the
`
`

`

`Application/Control Number: 16/634,695
`Art Unit: 2653
`
`Page 3
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`first facing portion, and a first adhesive portion which adhesion bonds the first member and the
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`magnet, wherein the first adhesive partion includes a first portion forraed of a first adhesive
`
`curedinside a gan between bonding surfaces of the first rember and the magnet, and a second
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`portion formed ofthe first adhesive cared outside the gap, and the second portion is disposed to
`
`cover an ontiet of the gap in a direction different from a direction toward the magnetic Mand,
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`classified in class HO4R2209/024.
`
`2.
`
`The inventions are independentor distinct, each from the other because:
`
`Inventions in GroupI, I and III are related as subcombinationsdisclosed as usable
`
`together in a single combination. The subcombinationsare distinct if they do not overlap in
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`scope and are not obvious variants, andif it is shown that at least one subcombination is
`
`separately usable. In the instant case, subcombination in Group I has separate utility such as a
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`loudspeaker comprising a coating containing a fluorine resin that is formed on a surlace of a
`
`portion in corflact with the magnetic fluid in at least one of the plate and the voice conl. The
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`subcombination in GroupII has separate utility such as the magnetic Meid that has a viscosity of
`
`more than 9 mPa-s and 500 mPa-s or less at a predetermined reference temperature, wherein the
`
`viscasily of the magnetic [uid has a local minirourn value of 9 rPa-s or more in a temperature
`
`range beyond the predetermined reference termperature, and wherein the viscasity ofthe
`
`magnetic fluid at the predetermined reference temperatare is larger than the viscosity of the
`
`rnagnetic fluid in the ternperature range. The subcombination in GroupIII has separate utility
`
`such as
`
`first adhesive portion which adhesion bonds the first mernber and the magnet, wherein
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`the first adhesive portion includes 4 first portion formedof a frst adhesive cared inside a gap
`
`between bonding sarfaces of the first member and the magnet, and a second portion formed of
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`

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`Application/Control Number: 16/634,695
`Art Unit: 2653
`
`Page 4
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`the first adhesive cured outside the gap, and wherein the second partion is disposed to cover an
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`outlet of the gap in a direction different from a direction toward the magnetic fiid. See MPEP
`
`§ 806.05(d).
`
`The examinerhas required restriction between subcombinations usable together. Where
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`applicant elects a subcombination and claims thereto are subsequently found allowable, any
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`claim(s) depending from or otherwise requiring all the limitations of the allowable
`
`subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP
`
`§ 821.04(a). Applicant is advised that if any claim presented in a continuation or divisional
`
`application is anticipated by, or includesall the limitations of, a claim that is allowable in the
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`present application, such claim may be subject to provisional statutory and/or nonstatutory
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`double patenting rejections over the claims of the instant application.
`
`3.
`
`Restriction for examination purposesas indicated is proper becauseall the inventions
`
`listed in this action are independentor distinct for the reasons given above and there would be a
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`serious search and/or examination burdenif restriction were not required because one or more of
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`the following reasons apply:
`
`(a) the invention have acquired a separate status in the art in view oftheir different
`
`classification;
`
`(b) the invention have acquired a separate status in the art due to their recognized
`
`divergent subject matter; and
`
`(c) the search required for one Groupis not required for the other Groups.
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`

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`Application/Control Number: 16/634,695
`Art Unit: 2653
`
`Page 5
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`Applicantis advised that the reply to this requirement to be complete must include
`
`(i) an election of a invention to be examined even though the requirement may betraversed (37
`
`CFR 1.143) and(ii) identification of the claims encompassing the elected invention.
`
`The election of an invention may be made with or without traverse. To reserve a right to
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`petition, the election must be made with traverse. If the reply does not distinctly and specifically
`
`point out supposederrorsin the restriction requirement, the election shall be treated as an
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`election without traverse. Traversal must be presented at the time of election in order to be
`
`considered timely. Failure to timely traverse the requirementwill result in the loss of right to
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`petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate
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`which ofthese claims are readable upon the elected invention.
`
`Should applicant traverse on the groundthat the inventionsare not patentably distinct,
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`applicant should submit evidence or identify such evidence now of record showing the
`
`inventions to be obvious variants or clearly admit on the record thatthis is the case. In either
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`instance, if the examiner finds one of the inventions unpatentable overthe priorart, the evidence
`
`or admission maybe used in a rejection under 35 U.S.C. 103 or pre-AJA 35 U.S.C. 103(a) of the
`
`other invention.
`
`4,
`
`A telephone call was made to Attorney Stephen Adrian on June 7, 2021 to request an oral
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`election to the aboverestriction requirement, but did not result in an election being made.
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`5.
`
`Applicant is remindedthat upon the cancellation of claims to a non-elected invention, the
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`inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or moreof the
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`currently named inventors is no longer an inventorof at least one claim remaining in the
`
`

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`Application/Control Number: 16/634,695
`Art Unit: 2653
`
`Page 6
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`application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an
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`application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her
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`legal name andby the processing fee required under 37 CFR 1.17(i).
`
`Conclusion
`
`6.
`
`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to HUYEN D LE whosetelephone numberis (571) 272-7502. The
`
`examiner can normally be reached on 9:30 am-6:00 pm.
`
`Examinerinterviews are available via telephone, in-person, and video conferencing using
`
`a USPTO supplied web-based collaboration tool. To schedule an interview, applicantis
`
`encouraged to use the USPTO Automated Interview Request (AIR)at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
`
`supervisor, Fan Tsang can be reached on 571-272-7547. The fax phone numberfor the
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`organization wherethis application or proceedingis assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`maybe obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
`system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR
`
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`
`like assistance from a USPTO Customer Service Representative or access to the automated
`
`information system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`

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`Application/Control Number: 16/634,695
`Art Unit: 2653
`
`Page 7
`
`/HUYEND LE/
`Primary Examiner, Art Unit 2653
`
`HL
`June 14, 2021
`
`