`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`
`
`
`
`ATTORNEY DOCKET NO.
`
`
`
`
`CONF {MATION NO.
`
`13/459,291
`
`04/30/2012
`
`Michael J. Pelland
`
`080188PCTUSCON
`
`1125
`
`7590
`26285
`K&L GATES LLP
`210 S IXTH AVENUE
`PITTSBURGH, PA 15222-2613
`
`06/14/2013
`
`EXAMINER
`
`DOAN, KIET M
`
`ART UNIT
`
`2641
`
`PAPER NUMBER
`
`
`
`
`NOT *ICATION DATE
`
`DELIVERY MODE
`
`06/ 14/201 3
`
`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—
`following e—mail address(es):
`
`indicated "Notification Date" to the
`
`pidocketing @klgates .com
`patents @ klgates.c0m
`trademarks @ klgates.c0m
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`Page 1 of 15
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`
`Applicant(s)
`Application No.
` 13/459,291 PELLAND ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`2641KIET DOAN first“
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`In no event however may a reply be timely filed
`after SIX () MONTHS from 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) MONTHS from 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, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`-
`-
`
`Status
`
`1)IXI Responsive to communication(s) filed on 18 AQI’i/ 2013.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|:| This action is non-final.
`a)IXl This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`
`
`; the restriction requirement and election have been incorporated into this action.
`
`4)|:I 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 EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims
`5)|XI Claim(s) fins/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6)|:l Claim(s) _ is/are allowed.
`7)IZ| CIaim(s)_3-13is/are rejected.
`8)I:I Claim(s)_ is/are objected to.
`
`9)|:l Claim((s)
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`htt
`://www.usoto. ov/ atents/init events"
`
`
`
`h/index.‘s or send an inquiry to PF"I-Ifeedback{<‘buspto.qov.
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|Z| The drawing(s) filed on _ is/are: a)IXI accepted or b)I:I 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)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some * c)I:I None of the:
`a)I:I All
`1.I:I Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3.|:I Copies of the certified copies of the priority documents have been received in 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.
`
`Interim copies:
`
`a)|:l All
`
`b)I:I Some
`
`c)I:I None of the:
`
`Interim copies of the priority documents have been received.
`
`Attachment(s)
`
`
`
`3) D Interview Summary (PT0_413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4 I:I O h
`2) D InformatIon DIscIosure Statement(s) (PTO/SB/08)
`_
`I
`1 er.
`Paper No(s)/Mai| Date
`
`
`beifitsegésifiev. 0 3%;QIIGf 1 5
`
`Office Action Summary
`
`Part ofIPSISI§BQ§§§III%%%§?OBOB
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`Application/Control Number: 13/459,291
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`Page 2
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`Art Unit: 2641
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`DETAILED ACTION
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`This office action is in response to Applicant Remarks field on 04/18/2013.
`
`Claims 3-8 are amended.
`
`Claims 12 and 13 are new.
`
`The examiner withdrawn the objection of claims 8 and 11 due to claim set are
`
`amended and further search.
`
`Response to Arguments
`
`Applicant’s arguments with respect to claim 6 have been considered but are
`
`moot because the arguments do not apply to any of the references being used in the
`
`current rejection.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
`
`Claims 6, 7, 9 and 12 are rejected under 35 U.S.C. 103(a) as being unpatentable
`
`over Fikelstein et al. (US 2009/0063703 A1) in view of Nishiguchi et al. (US
`
`2005/0240296 A1 ).
`
`Regarding claims 6 and 9, Fikelstein teaches a system comprising:
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`Application/Control Number: 13/459,291
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`Page 3
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`Art Unit: 2641
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`a digital audio player comprising an audio iack (Paragraph [0092], [0116],
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`fig. 5f #623 teach portable device 10/smart phone as read on digital audio player
`
`including audio port or headset jack for head phone connector /audio jack);
`
`a wireless network adapter external to the digital audio player and connected to
`
`the digital audio player via the audio iack, wherein the wireless network adapter is for
`
`encoding analog audio received from the digital audio player into digital format and
`
`wirelessly transmitting the digitally-formatted audio (Paragraphs [0070], [0073] fig.1 and
`
`fig.3, Illustrate server 42/282 as read on "wireless network adapter" that connected to
`
`portable device 10/212/214 wherein the server perform encoding analog to digital) ;
`
`a streaming digital audio content server that is connected to the lntemet
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`(Paragraph [0020 teach server streaming media connected to the internet);
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`Application/Control Number: 13/459,291
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`Page 4
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`Art Unit: 2641
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`
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`a transceiver (fig.1, # 20/22) that is for:
`
`receiving digitally-formatted audio, in a first mode, from the streaming digital
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`Art Unit: 2641
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`audio content server via an infrastructure wireless network and, in a second mode, from
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`the wireless network adapter via an ad hoc wireless network using thee and
`
`converting the received digitally-formatted audio to analog audio signals (Paragraphs
`
`[0073-0074], [0092] teach portable device contain microprocessor that processing D/A
`
`converter, A/D converter). However, Fikelstein is silent on
`
`an earphone set comprising a pair of earphones configured to be worn
`
`simultaneously by a user, wherein each earphone in the pair of earphones comprises:
`
`at least one acoustic transducer connected to the transceiver, wherein the at
`
`least one acoustic transducer is for outputting the analog audio signals.
`
`In an analogous art, Nishiguchi teaches
`
`an earphone set comprising a pair of earphones configured to be worn
`
`simultaneously by a user (Paragraph [0027], fig.2 Illustrate and teach head phone as
`
`read on earphone set comprising a pair of earphones), wherein each earphone in the
`
`pair of earphones comprises:
`
`at least one acoustic transducer connected to the transceiver, wherein the at
`
`least one acoustic transducer is for outputting the analog audio signals (Paragraph
`
`[0010], [0026] teach headphone perform converting output signals analog into acoustic).
`
`Therefore, it would have been obvious to one of ordinary skill in the art at the
`
`time that the invention was made to modify Fikelstein with Nishiguchi’s system such that
`
`digital audio player comprising an audio iack connected with wireless network adapter
`
`wherein the wireless network adapter is for encoding analog audio received from the
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`Page 6
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`Art Unit: 2641
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`digital audio player into digital format and wirelessly transmitting the digitally-formatted
`
`audio in order to provide quality audio signals received from internet through mobile
`
`headphone.
`
`Regarding claim 7, the combination of Fikelstein and Nishiguchi teach
`
`the system of claim 6, further Fikelstein teaches wherein the digital audio player isin
`
`communication with the streaming digital audio content server, and wherein the
`
`streaming digital audio content server is for performing steps comprising:
`
`receiving audio content from the digital audio player via the Internet (Paragraph
`
`[0020]):_and transmitting the streaming audio received form the digital audio player to
`
`the earphone set via the infrastructure wireless network in the first mode (Paragraph
`
`[0009LIOO92D-
`
`Regarding claim 12, the combination of Fikelstein and Nishiguchi teach the
`
`system of claim 6, further Fikelstein teaches comprising a host server connected to the
`
`Internet (Paragraph [0015]), such that the host server and the streaming digital audio
`
`content server are accessible to the pair of earphones via the Internet and the
`
`infrastructure wireless network (Paragraph[0016], [0092]), and wherein the pair of
`
`earphones is configured to receive a network address for the streaming digital audio
`
`content server from the host server (Paragraph [0044]).
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`Application/Control Number: 13/459,291
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`Page 7
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`Art Unit: 2641
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`Claims 8 and 10-11 are rejected under 35 U.S.C. 103(a) as being unpatentable
`
`over Fikelstein et al. (US 2009/0063703 A1) in view of Nishiguchi et al. (US
`
`2005/0240296 A1) and further view of Lee et al. (US 2007/0150963 A1 ).
`
`Regarding claim 10, the combination of Fikelstein and Nishiguchi teach the
`
`system of claim 9, but is silent on wherein the plurality of streaming digital audio
`
`content servers comprises a plurality of user-defined streaming digital audio content
`
`servers configurable by the user via the host server.
`
`In an analogous art, Lee teaches
`
`wherein the plurality of streaming digital audio content servers comprises a
`
`plurality of user-defined streaming digital audio content servers configurable by the user
`
`via the host server (Paragraphs [0039] ,[0044], fig.4 show server as read on license
`
`server send streaming digital audio to host/PC 30 that configure via user/MP3 player).
`
`Therefore, it would have been obvious to one of ordinary skill in the art at the
`
`time that the invention was made to modify Fikelstein and Nishiguchi with Lee’s system
`
`such that streaming digital audio content servers configurable by the user via the host
`
`server in order in order to provide the secure transmitting.
`
`Regarding claim 11 and 8, the combination of Fikelstein and Nishiguchi teach
`
`the system of claim 12, but is silent wherein at least one of the earphones of the
`
`earphone set further comprises a user touch control through which the user can register
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`Application/Control Number: 13/459,291
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`Page 8
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`Art Unit: 2641
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`an indication of approval of a song streamed to the earphones by the streaming digital
`
`audio content server and played by the earphones, and wherein the at least one of the
`
`earphones is configured to transmit wirelessly data regarding the indication of approval
`
`of the song from the at least one of the earphones to the host server.
`
`In an analogous art, Lee teaches
`
`wherein at least one of the earphones of the earphone set further comprises a
`
`user touch control through which the user can register an indication of approval of a
`
`song streamed to the earphones by the streaming digital audio content server
`
`(Paragraphs [0043], [OO49],[0069-OO70] and played by the earphones, and wherein the
`
`at least one of the earphones is configured to transmit wirelessly data regarding the
`
`indication of approval of the song from the at least one of the earphones to the host
`
`server (Paragraphs [0039-0041], fig. 4|llustrate as song transmit from host PC 30 to
`
`MP3/earphone).
`
`Therefore, it would have been obvious to one of ordinary skill in the art at the
`
`time that the invention was made to modify Fikelstein and Nishiguchi with Lee’s system
`
`such that the user can register an indication of approval of a song streamed to the
`
`earphones and wherein the at least one of the earphones is configured to transmit
`
`wirelessly data regarding the indication of approval of the song from the at least one of
`
`the earphones to the host server in order to provide the secure and safe transmitting
`
`approve song to mobile device.
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`Application/Control Number: 13/459,291
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`Page 9
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`Art Unit: 2641
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`Claims 13 is rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Nishiguchi et al. (US 2005/0240296 A1) in view of Lee et al. (US 2007/0150963 A1 ).
`
`Regarding claim 13, Nishiguchi teaches an apparatus, comprising:
`
`an earphone pair comprising a set of two earphones to be worn simultaneously
`
`by a user (Paragraph [0027], fig.2 Illustrate and teach head phone as read on earphone
`
`set comprising a pair of earphones), wherein each earphone in the earphone pair
`
`comprises at least one acoustic transducer for outputting analog audio signals
`
`(Paragraphs [0010], [0026]), and wherein at least one of the two earphones comprises:
`
`a transceiver that receives digitally-formatted audio via a wireless network, and
`
`wherein the transceiver is connected to the acoustic transducer for the at least one of
`
`the tow earphones (Paragraph [0010], [0027], [0031]). Nishiguchi fails to explicitly
`
`teach
`
`a user touch control through which the user can register an indication of approval
`
`of a song streamed to the earphone pair by a streaming digital audio content server via
`
`the wireless network and played by the earphone pair, wherein the at least one of the
`
`two earphones is configured to transmit wirelessly data regarding the indication of
`
`approval of the song from the at least one of the two earphones to a host server via the
`
`wireless network.
`
`In analogous art, Lee teaches
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`Application/Control Number: 13/459,291
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`Page 10
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`Art Unit: 2641
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`a user touch control through which the user can register an indication of
`
`approval of a song streamed to the earphone pair by a streaming digital audio content
`
`server via the wireless network (Paragraphs [0043], [0049],[0069-0070] and played by
`
`the earphone pair, wherein the at least one of the two earphones is configured to
`
`transmit wirelessly data regarding the indication of approval of the song from the at least
`
`one of the two earphones to a host server via the wireless network. (Paragraphs [0039-
`
`0041], fig. 4lllustrate as song transmit from host PC 30 to MP3/earphone).
`
`Therefore, it would have been obvious to one of ordinary skill in the art at the
`
`time that the invention was made to modify Nishiguchi with Lee’s system such that the
`
`user can register an indication of approval of a song streamed to the earphones and
`
`wherein the at least one of the earphones is configured to transmit wirelessly data
`
`regarding the indication of approval of the song from the at least one of the earphones
`
`to the host server in order to provide the secure and safe transmitting approve song to
`
`mobile device.
`
`Claims 3-5 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Nishiguchi et al. (US 2005/0240296 A1) in view of Lee et al. (US 2007/0150963 A1) and
`
`further view of Rosener et al.(US 2008/0076489 A1 ).
`
`Regarding claim 3, the combination of Nishiguchiand and Lee teach the
`
`apparatus system of claim 13, but sis lent on wherein the pair of earphones comprise
`
`a pair of in-ear earphones, wherein each in-ear earphone in the pair of in-ear earphones
`
`comprises an ear canal portion that is insertable into an ear canal of the user.
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`Page 11
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`Art Unit: 2641
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`In an analogous art, Rosener teaches wherein the pair of earphones comprise a
`
`pair of in-ear earphones, wherein each in-ear earphone in the pair of in-ear earphones
`
`comprises an ear canal portion that is insertable into an ear canal of the user
`
`(Paragraph [0030] teach earphone contain ear bud that fitted within ear canal of the
`
`user’s ear).
`
`Therefore, it would have been obvious to one of ordinary skill in the art at the
`
`time that the invention was made to modify Nishiguchi and Lee with Rosener’s system
`
`such that wherein each in-ear earphone in the pair of in-ear earphones comprises an
`
`ear canal portion that is insertable into an ear canal of the user in order to provide clear
`
`audio quality for the user.
`
`Regarding claim 4, the combination of Nishiguchiand and Lee teach the
`
`apparatus system of elai-ms4—eiL2—claim 13, further Rosener teaches wherein the pair of
`
`earphones comprise a left earphone and a right earphone connected by a headband
`
`(Paragraph [0014])
`
`Regarding claim 5, the combination of Nishiguchiand and Lee teach the system
`
`apparatus of claim g 13, further Rosener teaches wherein the wireless network
`
`comprises a Wi-Fi wireless network (Paragraph [0015]).
`
`Conclusion
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`Application/Control Number: 13/459,291
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`Page 12
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`Art Unit: 2641
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`Applicant's amendment necessitated the new ground(s) of rejection presented in
`
`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
`
`CFR1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action.
`
`In the event a first reply is filed within
`
`TWO MONTHS of the mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortened statutory period, then the
`
`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`the advisory action.
`
`In no event, however, will the statutory period for reply expire later
`
`than SIX MONTHS from the date of this final action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to KIET DOAN whose telephone number is (571 )272—7863.
`
`The examiner can normally be reached on 9-5.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Charles Appiah can be reached on 571-272—7904. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571-273-8300.
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`Application/Control Number: 13/459,291
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`Page 13
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`Art Unit: 2641
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`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be 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 system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would 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—1 000.
`
`/Kiet Doan/
`
`Primary Examiner, Art Unit 2641
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`
`
`Application/Control No.
`
`13/459291
`Examiner
`
`KIET DOAN
`U.S. PATENT DOCUMENTS
`
`Applicant(s)/Patent Under
`Reexamination
`PELLAND ET AL.
`Art Unit
`
`2641
`
`Page 1 Of 1
`
`Notice of References Cited
`
`*
`
`Document Number
`Country Code-Number-Kind Code
`
`Date
`MM_YYYY
`
`Name
`
`US-2005/0240296
`
`10-2005
`
`Nishiguchi et al.
`
`,
`,
`,
`ClaSSIflcaTIOH
`
`700/094
`
`709/240
`Finkelstein et al.
`03-2009
`In us-2009/0063703
`-__——
`
`
`
`
`
`*
`
`Document Number
`Date
`.
`.
`.
`Country Code-Number-Kind Code
`MM-YYYY
`Country
`Name
`Classification
`--—_———
`
`FOREIGN PATENT DOCUMENTS
`
`NON- PATENT DOCUM ENTS
`
`Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)
`
`*A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
`Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.
`US. Patent and Trademark Office
`
`PTO-892 (Rev. 01-2001)
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`Notice of References Cited
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`Part of Paper No. 20130608
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`Page 15 of 15
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`KOSS—2026
`|PR2021-00381
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`Page 15 of 15
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`KOSS-2026
`IPR2021-00381
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