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 .
Election/Restrictions
As explained in the Petition Decision of 08/26/2025, the shared technical feature is a magnet set selectively disposable between first and second opposite orientations to change a strength of a magnetic connection between the magnet set and an implantable device. This shared special technical feature does not make a contribution over the prior art of Andersson et al. (US 2015/0382114). Andersson discloses adjusting magnetic retention force in auditory prostheses, and further discloses changing magnetic orientations to change a strength of a magnetic coupling (e.g. Abstract; Par. [0047]: the position and orientation of magnetic components can be changed to alter the retention force between external and implanted magnets). Therefore, the shared special technical feature fails to define a contribution over the prior art.
Therefore, claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Remarks
This action is in response to the Remarks filed 09/03/2025.
Claims 1-10, 21, and 22 are pending.
Response to Arguments
Applicant’s arguments, see page 6, filed 09/03/2025, with respect to the objection of claim 4 have been fully considered and are persuasive. The objection of claim 4 has been withdrawn.
Applicant’s arguments, see pages 6-9, filed 09/03/2025, with respect to the rejection of claims 1-10 under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. Applicant argues that Bern fails to disclose the limitation of “wherein the first device is configured to permit the first device magnet set to be selectively disposable by a user in the first device in first and second opposite orientations to change a strength of a magnetic securing force of the magnetic connection”. Examiner agrees. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made, as explained in the office action below. New claims 21 and 22 are addressed in the office action below.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections 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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Bern (US Patent Application 2016/0198272 – APPLICANT CITED ON 07/07/2022 IDS), further in view of Andersson et al. (US Patent Application 2015/0382114), hereinafter Andersson.
Regarding claim 1, Bern discloses an apparatus (e.g. Abstract), comprising: a first device having a first device magnet set of one or more magnets configured to provide a magnetic connection to secure the first device relative to a second device (e.g. Figs. 6 A,B: holding units 42 comprising the magnets 8 which connect to implanted magnets 10; Par. [0053]: magnets are integrated within the holding unit to attach the device to the skin through a connection with the implanted magnets).
Bern further discloses changing the strength of the magnetic connections (e.g. Pars. [0027]-[0028]: magnets are individually adjustable to change the magnetic attraction; Par. [0090]: the holding unit is configured to adjust magnetic attraction by moving the magnet), but fails to specifically disclose wherein the first device is configured to permit the first device magnet set to be selectively disposable by a user in the first device in first and second opposite orientations to change a strength of a magnetic securing force of the magnetic connection.
Andersson, in a similar field of endeavor, is directed towards adjusting magnetic retention force. Andersson discloses the magnet set to be selectively disposable by a user in the device in first and second opposite orientations to change a strength of a magnetic securing force of the magnetic connection (e.g. Abstract; Par. [0047]: the position and orientation of magnetic components can be changed to alter the retention force between external and implanted magnets).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Bern to include a magnet set being selectively disposable as taught by Andersson, because doing so would allow the magnetic retention force to be changed based on the needs of the user.
Regarding claim 2, Bern further discloses a magnet case that defines a first volume and a second volume, wherein the first device magnet set is disposed within the magnet case between the first volume and the second volume, and wherein the first volume is larger than the second volume (e.g. Fig. 6A: volume above magnet 8 is considered the first volume and the volume below magnet 8 is considered the second volume; Fig. 6B: magnets disposed in holding unit 42; see annotated Fig. 6A below).
Annotated Fig. 6B:
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Regarding claim 3, Bern further discloses wherein the first device magnet set includes a first magnet and a second magnet, and wherein the magnet case further defines a third volume disposed between the first magnet and the second magnet (e.g. Fig. 6B: device with two magnets 8 disposed in holding units 42 with a third volume of part 46 in between).
Regarding claim 4, Bern further discloses wherein the first device magnet set is disposed in a magnet case that defines a first half and a second half, and wherein the first half is more magnetic than the second half (e.g. Pars. [0027]-[0028]: magnets are individually adjustable to change the magnetic attraction; Par. [0090]: the holding unit is configured to adjust magnetic attraction by moving the magnet; Fig. 6A: the first half of the device closer to the skin 12 is more magnetic than the part of the device facing the opening).
Regarding claim 5, Bern further discloses wherein the one or more magnets are transversely magnetized (e.g. Par. [0083]: magnets are in a disk shape; Figs. 5 A, B, C: magnets 8 shown in a disk shape; The instant specification at par. [0028] describes transversely magnetized as magnets being disk shaped, “transversely magnetized (e.g., diametrically magnetized, where the magnets 112 are disk-shaped)”. Therefore, the disk shaped magnets of Bern meet this limitation.).
Regarding claim 6, Bern further discloses wherein the first device magnet set defines an axis perpendicular to a diameter, wherein the first device magnet set is configured to rotate about the axis (e.g. Fig. 6A: magnet 8 can be rotated around an axis perpendicular to the diameter of the device; Pars. [0027]-[0028]: magnets are individually adjustable to change the magnetic attraction; Par. [0090]: magnet can be turned to change magnetic attraction force).
Regarding claim 7, Bern further discloses wherein the first device magnet set defines an axis perpendicular to a diameter, wherein the first device magnet set is configured to resist rotation about the axis (e.g. Fig. 6A: magnet 8 can be rotated around an axis perpendicular to the diameter of the device; Pars. [0027]-[0028]: magnets are individually adjustable to change the magnetic attraction; Par. [0090]: magnet can be turned to change magnetic attraction force).
Regarding claim 8, Bern further discloses a magnet case defining a first end opposite a second end and housing the first device magnet set, wherein while the magnet case is disposed in the first device in the first orientation, a first distance (d1) between the first end and a skin contact surface is greater than a second distance (d2) between the second end and the skin contact surface, and wherein while the magnet case is disposed in the first device in the second orientation, the first distance (d1) is smaller than the second distance (d2) (e.g. Fig. 6A: holding unit 42 comprises two opposing ends, magnet 8 can be rotated to change the distance of the magnet from the skin; Pars. [0027]-[0028]: magnets are individually adjustable to change the magnetic attraction; Par. [0090]: magnet can be turned to move it closer or further from the skin to change magnetic attraction force).
Regarding claim 9, Bern further discloses wherein the first device magnet set has a circular shape with a diameter parallel to a length of a skin contact surface of the apparatus (e.g. Par. [0083]: magnets are in a disk shape; Figs. 5 A, B, C: magnets 8 shown in a disk shape; Figs. 6A, B: device is parallel to the skin; Figs. 9A-D: the device shown in different configurations for attachment to the user).
Regarding claim 10, Bern further discloses wherein the first device magnet set comprises a diametrically magnetized magnet (e.g. Par. [0083]: magnets are in a disk shape; Figs. 5 A, B, C: magnets 8 shown in a disk shape; The instant specification at par. [0028] describes diametrically magnetized as magnets being disk shaped, “(e.g., diametrically magnetized, where the magnets 112 are disk-shaped)”. Therefore, the disk shaped magnets of Bern meet this limitation).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Bern (US Patent Application 2016/0198272 – APPLICANT CITED ON 07/07/2022 IDS), further in view of Andersson et al. (US Patent Application 2015/0382114), hereinafter Andersson, as applied to claim 1 above, and further in view of Brehm et al. (US Patent Application Publication 2021/0046311), hereinafter Brehm.
Regarding claim 21, Bern fails to disclose wherein the first device magnet set is removable from a receptacle of the first device to transition between the first and second opposite orientations. Brehm, in a similar field of endeavor, is directed towards cochlear implants. Brehm discloses a removable magnet set to transition between magnetic orientations (e.g. Par. [0069]: the magnet in the device can be removed to change the magnetic strength).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Bern in view of Andersson to include the removable magnet set of Brehm because doing so would allow a change in the magnetic force.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Bern (US Patent Application 2016/0198272 – APPLICANT CITED ON 07/07/2022 IDS), further in view of Andersson et al. (US Patent Application 2015/0382114), hereinafter Andersson, as applied to claim 1 above, and further in view of Smith et al. (US Patent Application Publication 2021/0106815), hereinafter Smith.
Regarding claim 22, wherein the first device magnet set is configured to rotate about an axis parallel to a diameter of the first device magnet set to transition the first device magnet set between the first and second opposite orientations. Smith, in a similar field of endeavor, is directed towards a magnet apparatus for a cochlear implant. Smith discloses a magnet set configured to rotate to transition the magnet set between different orientations (e.g. Par. [0085]: the magnets can rotate freely to align themselves with the N-S axis).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Bern in view of Andersson to include the magnet set configured to rotate as taught by Smith because doing so would allow the magnets to align with each other based on the appropriate N-S configuration.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ball et al. (US 2013/0165738) is directed towards a magnet arrangement for a hearing implant.
Ball et al. (US 2011/0022120) is directed towards a magnetic attachment arrangement for an implantable device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHREYA P ANJARIA whose telephone number is (571)272-9083. The examiner can normally be reached M-F: 8:00-5:00 EST.
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/SHREYA ANJARIA/Examiner, Art Unit 3796
/Jennifer Pitrak McDonald/Supervisory Patent Examiner, Art Unit 3796