`
`Europiisches
`Patentarnt
`Patent Office
`Office européen
`des brevets
`
`
`
`
`
`
`
`
`
`Parry, Simon James
`Mewburn Ellis LLP
`33 Gutter Lane
`London
`EC2V 8AS
`ROYAUME UNI
`
`European Patent Office
`80298 MUNICH
`GERMANY
`Tel. +49 (0)89 2399 - 0
`Fax +49 (0)89 2399 - 4465
`
`this communication:
`
`Tel.:+31 (0)70 340 45 00
`
`Date
`
`10.06.11
`
`Reference
`SJP/FP6724736
`
`Koss Corporation
`
`09731146.8 - 2225 / 2272259 PCT/US2009039754 Applicant/Proprietor
`
`Application No/Patent No.
`
`The extended European search report is enclosed.
`
`Communication
`
`The extended European search report includes, pursuant to Rule 62 EPC, the supplementary European
`search report (Art. 153(7) EPC) and the European search opinion.
`
`Copies of documents cited in the European search report are attached.
`
`Mf
`
`0 additional set(s) of copies of such documentsis (are) enclosed as well.
`
`Refund of the search fee
`
`If applicable under Article 9 Rules relating to fees, a separate communication from the Receiving Section
`on the refund of the search fee will be sent later.
`
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`
`EPO Form 1507S
`
`08.10
`
`Exhibit 1011 - p. 1
`Exhibit 1011 - p. 1
`
`Bose Exhibit 1011
`
`Bose v. Koss
`
`€
`
`
`Datum
`Date
`Date
`
`cf Form 1507
`
`Blatt
`Sheet
`Feuille
`
`1
`
`Anmelde-Nr:
`ApplicationNo: Q9 731 146.8
`Demande n°:
`
`The examination is being carried out on the following application documents
`
`Description, Pages
`
`1-21
`
`as published
`
`Claims, Numbers
`
`1-23
`
`filed with entry into the regional phase before the EPO
`
`Drawings, Sheets
`
`1/16-16/16
`
`as published
`
`1 Reference is madeto the following documents; the numbering will be adhered to
`in the rest of the procedure.
`
`US 2007/165875 Al (REZVANI BEHROOZ [US] ET AL) 19 July 2007 (2007-07-19)
`
`WO 2007/139578 A1 (SONY ERICSSON MOBILE COMM AB [SE]; BLOEBAUM L
`SCOTT [US]; LIU CHARLES) 6 December 2007 (2007-12-06)
`
`US 2007/049198 A1 (WALSH SCOTT[GB] ET AL) 1 March 2007 (2007-03-01)
`
`Unallowable amendments, Article 123(2) EPC:
`
`2 Claims 1-23 filed with the entry into the regional phase before the EPO introduces
`subject-matter which extends beyond the contentof the application as originallyfiled,
`contrary to Article 123(2) EPC.
`
`Inclaim 1, the data transmitted to the data source regarding the one or more
`2.1.
`detected infrastructure wireless network comprises identification data and signal
`strength. The corresponding originally filled description, see Pag. 12 Line 24 - Pag.
`13 Line 6, appears indeed to teach that is transmitted identification data (ID) of the
`infrastructure wireless network, Pag. 12 Line 34. However no information regarding
`the signal strength is transmitted but only locally evaluated at the earphone side or at
`the data sourceside.
`
`2.2 The dependenciesof the claims filed with the entry into the regional phase
`before the EPO were dramatically changed with respectto the originally filed claims
`and the examinerdid notfind that the newly combination so achieved was disclosed
`into the originally filed application. Therefore the Applicant is requested to revert to the
`original dependencies, or if considers to maintain some of them in believing that the
`
`EPO Form 1703 01.91TRI
`
`Exhibit 1011 - p. 2
`Exhibit 1011 - p. 2
`
`
`
`Datum
`Date
`Date
`
`cf Form 1507
`
`Blatt
`Sheet
`Feuille
`
`2
`
`Anmelde-Nr:
`ApplicationNo: Q9 731 146.8
`Demande n°:
`
`newly achieved combination can be unambiguously derived from the originally filed
`application documents, if any, thanis invited to file explanation in supporting anyof
`the modified dependencies.
`
`Some of the modified dependencies:
`
`- claims 4, 5, 6, 11 were originally dependent only n claim 1,
`
`- claims 7, 8 were originally dependent only on claim 6,
`
`- claims 13, 14, 15 were originally dependentonly on claim 12,
`
`- claim 16 wasoriginally dependent only on claim 13,
`
`- claims 18, 19 were originally dependent only on claim 11.
`
`2.3 As with respect to claims 14 and 15, beyond the fact that their dependencies
`were dramatically changed, now any of them is a "doubled"claim referring either to a
`system or to an earphone, thus giving rise to a clarity objection, Article 84 EPC.
`
`Lack of Clarity,Article 84 EPC:
`
`3. The application does not meet the requirements of Article 84 EPC, because claims
`1-23 are not clear.
`
`3.1. The earphone of claim 1 appears to receive digital audio data from the data
`source via an ad hod wireless network without to establish in advance such a network,
`e.g. to "establish an ad hoc wireless network". For clarity such an extra feature should
`be addedin claim 1.
`
`Similarly, data regarding the infrastructure wireless networkis transmitted to the data
`source without explicitly defining that such an existing infrastructure networkis
`detected in advance, e.g. "detect existing infrastructure wireless networks".
`
`3.2 The "pre-set infrastructure wireless network" of claim 5 was not defied in any of
`the preceding claims prior to be used.
`
`This said "pre-set infrastructure wireless network" appears rather to refer to the said
`"infrastructure wireless network" of claim 1.
`
`Independent method claim 20 should clearly correspond to the independent
`3.3.
`apparatus claim 1. Following the requirementof Article 84 EPC, taken in combination
`with Rule 43(1) and (3) EPC, any independentclaim must contain all the technical
`features essential to the definition of the invention.
`
`In the present case, since independent method claim 20 is not fully corresponding to
`the independent apparatus claim 1, is not clear which are those features which are
`considered to be essential for the definition of the invention, Article 84 EPC.
`
`EPO Form 1703 01.91TRI
`
`Exhibit 1011 - p. 3
`Exhibit 1011 - p.3
`
`
`
`Datum
`Date
`Date
`
`cf Form 1507
`
`Blatt
`Sheet
`Feuille
`
`3
`
`Anmelde-Nr:
`ApplicationNo: Q9 731 146.8
`Demande n°:
`
`Lack of Novelty of the Independent Claims, Article 54 (1) and (2) EPC:
`
`4 Document D1 discloses (Fig. 1,2,8,10; Par. 19, 33, 41) a headset which may be
`connected to a mobile phone or directly to the wi-fi access point or equivalent. The
`mobile phone (Fig. 8 Ref. 840) is the equivalent of a data sourcein the sense of claim
`1. The data source maytransmit audio data to the headset(see e.g. Par 33). Such
`audio data may be locally stored into the mobile phone, as widely known, or
`retransmitted from some any otherentity.
`
`Essentially, the headset of document D1 is designed to perform a handoff between
`the mobile phone connection and a wi-fi connection or the equivalent. Such a handoff
`is advantageously performed when the connectivity to one of the peers is becoming
`weak (e.g. the ad hoc connection with the mobile phone) but not only, the person
`skilled in the art is well aware of the need or the benefits of the handoffs. When such a
`handoff is performed, information (e.g. including the ID) regarding a possible used
`network is exchanged with the communication peer for performing the handoff.
`
`Therefore, the subject-matter of independent apparatus claim 1 and of the
`corresponding independent methodclaim 20 is essentially covered by the system of
`D1 and therefore is considered not new, Article 54 (1) and (2) EPC.
`
`Dependent Claims:
`
`5 Dependent claims 2,3,6-19, 21-23 do not contain any features which, in
`combination with the features of any claim to which they refer, meet the requirements
`of the EPC in respectof novelty (claims 2, 3, 6-8, 10-15, 17, 18) or inventive step
`(claims 9, 16, 19, 21-23). The additional features of the dependent claims are either
`disclosed in the cited documents D1-D3 or representstraightforward design options
`when designing corresponding wireless devices.
`
`
`
`PositiveOpinion:
`
`6 The system of D1 comprises the feature of performing a handoff between an ad
`hoc wireless connection with a mobile phone and aninfrastructure wireless network.
`Data may be transferred to the earphone either from the mobile phone or from the
`infrastructure wireless network, e.g. when a handoff is performed during a data
`transfer via the mobile phone from another data source placed somewherein the
`WEB. However, D1 does not teach that the audio data from the data source, i.e. the
`mobile phone, is redirected to the headphonevia the infrastructure wireless network
`when the ad hoc network connection is lost, i.e. when the connection with the mobile
`phone is lost.
`
`EPO Form 1703 01.91TRI
`
`Exhibit 1011 - p. 4
`Exhibit 1011 - p. 4
`
`
`
`Datum
`Date
`Date
`
`cf Form 1507
`
`Blatt
`Sheet
`Feuille
`
`4
`
`Anmelde-Nr:
`ApplicationNo: Q9 731 146.8
`Demande n°:
`
`Therefore the subject-matter of claim 4 appears to be new whenthe above objections
`are remedied.
`
`Also the subject-matter of claim 5 appears might be new,provided that the earphone
`is connected automatically (see also Pag. 12 Lines 18-21) to a host server viaa
`second infrastructure wireless network when the data sourceis notin wireless
`communication range with the earphonevia the ad hoc wireless network and the data
`source and the earphone are not in wireless communication via said the pre-set
`infrastructure wireless network.
`
`Is to be mentioned that the apparatus of D1 is designed such that, underthe (inter)
`action of a user, the earphone may be connected to a host server via another
`available infrastructure wireless network when the other two connections are broken.
`However, the fact that the earphone automatically connect to such a host serverin
`such a case, appears not to be disclosed or suggested in the prior art.
`
`Further aspects:
`
`7.1. When filing amendments, the applicant should clearly identify the amendments
`made, irrespective of whether they concern amendmentsby addition, replacement or
`deletion, and indicate the passagesof the application as filed on which these
`amendments are based (see Guidelines E-Il, 1). Care should be taken, not to add
`subject-matter which extends beyond the contentof the application as originally filed
`(Article 123 (2) EPC).
`
`The applicant should at the same time bring the description into conformity with the
`amendedclaims.
`
`Independentclaims are not in the two-part form in accordance with Rule 43(1)
`7.2
`EPC, which in the present case would be appropriate, with those features knownin
`combination from the prior art being placed in the preamble (Rule 43(1)(a) EPC) and
`the remaining features being included in the characterising part (Rule 43(1)(b6) EPC).
`
`7.3 To meet the requirements of Rule 42(1)(b) EPC, D1-D4 should be identified in
`the description and the relevant background art disclosed therein should bebriefly
`discussed.
`
`EPO Form 1703 01.91TRI
`
`Exhibit 1011 - p. 5
`Exhibit 1011 - p. 5
`
`
`
`
`
`Europdisches
`Patentamt
`Eur
`pean
`Patent Office
`Office européen
`des brevets
`
`SUPPLEMENTARY
`EUROPEAN SEARCH REPORT
`
`Application Number
`
`EP 09 73 1146
`
`DOCUMENTS CONSIDEREDTO BE RELEVANT
`
`(REZVANI BEHROOZ [US] ET|1-3,6-23
`US 2007/165875 Al
`AL) 19 July 2007 (2007-07-19)
`* figures 1,2,8,10 *
`* paragraphs [0019],
`
`[0041]
`
`*
`
`[0033],
`
`document EPOFORM1503
`
`Moscu, Viorel
`31 May 2011
`T : theory or principle underlying the invention
`E: earlier patent document, but published on, or
`after thefiling date
`D: documentcited in the application
`L: documentcited for other reasons
`& : memberof the samepatent family, corresponding
`
`ae"
`
`INV.
`HO4R1/02
`
`TECHNICAL FIELDS
`SEARCHED
`(IPC)
`
`HO4M
`
`(SONY ERICSSON MOBILE
`WO 2007/139578 Al
`COMM AB [SE]; BLOEBAUM L SCOTT [US]; LIU
`CHARLES) 6 December 2007 (2007-12-06)
`* figure 3 *
`* page 7,
`line 28 - page 9,
`
`line 3 *
`
`(WALSH SCOTT [GB] ET AL)|1-23
`US 2007/049198 Al
`1 March 2007 (2007-03-01)
`* figure 1 *
`* paragraph [0016]
`
`- paragraph [0018]
`
`*
`
`The supplementary search report has been based onthe last
`setof claims valid and available at the start of the search.
`Place of search
`Date of completion of the search
`
`Examiner
`
`Munich
`CATEGORYOF CITED DOCUMENTS
`X : particularly relevantif taken alone
`Y : particularly relevantif combined with another
`documentof the same category
`A: technological background
`QO: non-written disclosure
`P : intermediate document
`
`—_
`
`
`
`03.82(P04C04)
`
`Exhibit 1011 - p. 6
`Exhibit 1011 - p. 6
`
`
`
`ANNEX TO THE EUROPEAN SEARCH REPORT
`ON EUROPEANPATENT APPLICATION NO.
`
`EP 09 73 1146
`
`This annex lists the patent family membersrelating to the patent documents cited in the above-mentioned European search report.
`The members are as contained in the European Patent Office EDP file on
`The European Patent Office is in no wayliable for these particulars which are merely given for the purposeof information.
`31-05-2011
`
`Publication
`date
`
`Patent family
`member(s)
`
`Publication
`date
`
`06-12-2007 EPOFORMP0459 For more details about this annex : see Official Journal of the European Patent Office, No. 12/82
`
`Patent document
`cited in search report
`
`US 2007165875
`
`WO 2007139578
`
`Al
`
`Al
`
`19-07-2007
`
`NONE
`
`06-12-2007
`
`101449561 A
`2030417 Al
`2009538087 T
`2007283033 Al
`
`03-06-2009
`04-03-2009
`29-10-2009
`
`Exhibit 1011 - p. 7
`Exhibit 1011 - p. 7
`
`