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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
`
`16/985,534
`
`08/05/2020
`
`Takashi FUKAHORI
`
`734356.470
`
`3571
`
`Seed IP Law Group LLP/Panasonic
`701 Fifth Avenue, Suite 5400
`Seattle, WA 98104
`
`HAMID, AMMAR T
`
`ART UNIT
`
`2654
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`11/09/2021
`
`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):
`USPTOeAction @ SeedIP.com
`
`pairlinkdktg @seedip.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-8 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-8 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* 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) The drawing(s) filed on 8/5/2020 is/are: a)) 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) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.2.) 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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`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 20211104
`
`Application No.
`Applicant(s)
`16/985,534
`FUKAHOR etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`AMMART HAMID
`2654
`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 3 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 8/5/2020.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)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 incorporated into 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.
`
`

`

`Application/Control Number: 16/985,534
`Art Unit: 2654
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 103
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`In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102
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`and 103 (or as subject to pre-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory
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`basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and
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`the rationale supporting the rejection, would be the same under eitherstatus.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
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`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 contentsofthe prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
`
`Claims 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cramer etal. (US
`
`20170359644 A1) hereinafter Cramer in view of Abdul-Gaffoor et al. (US 20130217342 A1) hereinafter
`
`Abdul-Gaffoorand further in view of Koerner (US 20100056096A1) hereinafter Koerner.
`
`

`

`Application/Control Number: 16/985,534
`Art Unit: 2654
`
`Page 3
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`Regarding claim 1, Cramer teaches A wireless earphone (“FIG. 1 illustrates an example of the
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`wireless pair of earbuds” in 4[0005]) comprising: a sensor (“A touch sensor 201” in 4[0019]) Cramer
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`further teachesa radio circuit configured to perform various kinds processing relating to the radio signal
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`(“The electronic circuitry on the PCB 204 may further include one or more transceivers associated with
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`the controller 205 for controlling signal transmission and reception of one or more antennas”in
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`4[0019]); a control circuit configured to perform various kinds processing on the basis of the input
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`manipulation (“Upon sensing the touch, the touch sensor 201 activates the controller 205 of the
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`touched earbud to perform various functions as a master with the other earbud of the pair as a slave” in
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`1[0019]);
`
`Cramerdoes notspecifically disclose the device further comprising the sensor which serves as
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`both of an antenna configured to transmit and receive a radio signal wirelessly to and from an external
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`device and a pad configured to receive an input manipulation of a wearer however,
`
`Since it is knownin the art as evidenced by Abdul-Gaffoor for a device to further comprise the
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`sensor which serves as both of an antenna configured to transmit and receive a radio signal wirelessly to
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`and from an external device and a pad configured to receive an input manipulation of a wearer in (“the
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`communication device provides antenna tuning to compensate for antenna de-tuning caused by a
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`presenceof an object that is detected by a capacitive touch and proximity sensor (CTPS) which includes
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`an antenna element.” in 4][0020)]),
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`An ordinary skilled in the art would have been motivated to modify the invention of Cramer with
`
`the teachings of Abdul-Gaffoor for the benefit of minimizing the size of the device,
`
`Therefore it would have been obvious to a person of ordinaryskill in the art prior to the
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`effective filing date of the claimed invention to modify Cramer with Abdul-Gaffoor,
`
`Cramer as modified by Abdul-Gaffoor does notspecifically disclose the device further
`
`comprising and a capacitance element connected between the radio circuit and the sensor and
`
`

`

`Application/Control Number: 16/985,534
`Art Unit: 2654
`
`Page 4
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`between the control circuit and the sensor, the capacitance element being connected to a ground
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`conductor in series to pass only the radio signal , however, since it is known in the art as evidenced by
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`Koerner for a device to further comprise and a capacitance element connected between the radio circuit
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`and the sensor and betweenthe control circuit and the sensor, the capacitance element being
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`connected to a ground conductor in series to pass only the radio signal in (“In this embodiment the
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`control circuit provides the radio frequency receiver with the antenna signal from the signal path and
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`provides at the same time a ground reference on the signal path for the audio signals for the
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`microphone and the loudspeakersof the stereo headset” in 4[0018]),
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`An ordinary skilled in the art would have been motivated to modify the device of Cramer as
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`modified by Abdul-Gaffoor with the teachings of Koerner for the benefit of improving the signal quality
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`of the device,
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`Therefore it would have been obvious to a person of ordinaryskill in the art prior to the
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`effective filing date of the claimed invention to modify Cramer as modified by Abdul-Gaffoor With
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`Koerner.
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`Regarding claim 2, Cramer as modified by Abdul-Gaffoor and Koerner teachesthe device of
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`claim 1, Cramer further teaches the device further comprising a stub having a prescribed length and
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`connected to an antenna conductor of the antenna, wherein the capacitance element connects one end
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`of the stub to the ground conductor ("Examples of other types of antennas that may be used for the
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`second antenna 212 include: dipole antenna, patch antenna, loop antenna, metamaterial antenna, slot
`
`antenna, spiral antenna, inverted-F antenna,” in 4][0021]).
`
`Regarding claim 3, Cramer as modified by Abdul-Gaffoor and Koerner teachesthe device of
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`claim 1, Cramer further teaches the device further comprising wherein an antenna conductor of the
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`antenna forms a meander line (“The second antenna 212 may have a shape of a bent wire along and
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`within the ear hook 102,” in 4[0021]).
`
`

`

`Application/Control Number: 16/985,534
`Art Unit: 2654
`
`Page 5
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`Regarding claim 4, Cramer as modified by Abdul-Gaffoor and Koerner teachesthe device of
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`claim 1, Abdul-Gaffoor further teaches the device further comprising an inductance element connected
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`between the control circuit and the sensor in series (RF Choke 250in Fig. 2 and RF Choke 350in Fig. 3).
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`Regarding claim 5, Cramer as modified by Abdul-Gaffoor and Koerner teachesthe device of
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`claim 2, Cramer further teaches the device further comprising wherein the antenna forms an inverted-F
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`antenna by the antenna conductor and the stub ("Examplesof other types of antennas that may be used
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`for the second antenna 212 include: dipole antenna, patch antenna, loop antenna, metamaterial
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`antenna,slot antenna, spiral antenna, inverted-F antenna,” in §[0021)).
`
`Regarding claim 6, Cramer as modified by Abdul-Gaffoor and Koerner teachesthe device of
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`claim 1, Abdul-Gaffoor further teaches the device further comprising an impedance matchingcircuit
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`connected to the radio circuit in series (215 and 315in Figs. 2 and 3 respectively).
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`Regarding claim 7, Cramer as modified by Abdul-Gaffoor and Koerner teachesthe device of
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`claim 1, Cramer further teaches the device further comprising a case (“earbud body 100”in 4][0017]),
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`wherein the sensor has a substantially circular disc shape (see 200 in Fig. 3B), and the sensor is disposed
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`close to an inner surface of a portion of the case, the portion being exposed outside an external ear of
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`the wearer whenthe wireless earphone is set in the external ear (“A touch sensor button 200is included
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`in each earbud at the other end portion than the portion where the tip 101 is formed in this example. A
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`touch sensor 201 (not shownin FIGS. 3A, 3B and 4) is coupled to the touch sensor button 200 and may
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`be included in the electronic circuitry on a printed circuit board (PCB) 204.” in 4[0019]),
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`Claim 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Crameretal. (US
`
`20170359644 A1) hereinafter Cramer in view of Abdul-Gaffoor et al. (US 20130217342 A1) hereinafter
`
`Abdul-Gaffoorand further in view of Koerner (US 20100056096 A1) hereinafter Koerner and furtherin
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`view of Colahan etal. (US 20140313688 A1) hereinafter Colahan.
`
`

`

`Application/Control Number: 16/985,534
`Art Unit: 2654
`
`Page 6
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`Regarding claim 8, Cramer as modified by Abdul-Gaffoor and Koerner teachesthe device of
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`claim 1, Cramer as modified by Abdul-Gaffoor and Koerner does not specifically disclose the device
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`further comprising wherein discontinuous evaporation metal is formed on an outer surface of the case
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`at the portion exposed outside the external ear however,
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`Since it is knownin the art as evidenced by Colahan for a device to further comprise wherein
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`discontinuous evaporation metal is formed on an outer surface of the case at the portion exposed
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`outside the external ear in (“Conductive coating 56 may be deposited on the surface of housing
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`structure 46 using evaporation, sputtering, spraying, dipping, other physical vapor deposition
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`techniques, or other suitable techniques for applying conductive coatings to the surface of housing
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`structure 46. Conductive coating 56 may be formed from copper, gold, aluminum, other metals, a
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`combination of any two or more of these metals, etc.” in 4[0067]).,
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`An ordinary skilled in the art would be motivated to modify the invention of Cramer as modified
`
`by Abdul-Gaffoor and Koerner with the teachings of Colahan for the benefit of improving the feel of the
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`device to the wearer,
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`Therefore it would have been obvious to a person of ordinaryskill in the art prior to the
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`effective filing date of the claimed invention to modify Cramer as modified by Abdul-Gaffoor and
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`Koerner with Colahan.
`
`Conclusion
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to AMMAR T HAMID whosetelephone number is (571)272-1953. The examiner can
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`normally be reached M-F 9-5, Eastern time.
`
`Examiner interviewsare 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.
`
`

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`Application/Control Number: 16/985,534
`Art Unit: 2654
`
`Page 7
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
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`Vivian Chin can be reached on 5712727848. The fax phone number for the organization wherethis
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`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
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`https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
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`https://www.uspto.gov/patents/docx for information aboutfiling in DOCX format. For additional
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`questions, contact the Electronic Business Center (EBC) at 866-217-9197(toll-free). If you would like
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`571-272-1000.
`
`/AMMART HAMID/
`Examiner, Art Unit 2654
`
`