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 .
Response to Amendment
Claims 1, 2, 4, 6-10, and 12-15 are currently pending. Claims 12-15 have been added. Claims 1, 4, and 6-8 have been amended.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 2, 4, 6-10, and 12-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. A streamlined analysis of claim 1 follows.
STEP 1
Regarding claim 1, the claim recites a series of steps or acts, including recording a sound signal in an auditory canal of the test subject by a first electroacoustic input transducer of the hearing instrument. Thus, the claim is directed to a process, which is one of the statutory categories of invention.
STEP 2A, PRONG ONE
The claim is then analyzed to determine whether it is directed to any judicial exception. The steps of:
generating, with said first electroacoustic input transducer, a first input signal from the sound signal
generating a test sound by an electroacoustic output transducer of the hearing instrument;
outputting, by the electroacoustic output transducer, the test sound into the auditory canal of the test subject;
generating, via a controller of the hearing instrument, a correction signal for an active occlusion suppression on a basis of the first input signal, and generating a correction sound by the electroacoustic output transducer of the hearing instrument on a basis of the correction signal to compensate for a structure-borne sound in the sound signal of the auditory canal, the generating of the correction sound occurring during the outputting of the test sound;
ascertaining, via the controller of the hearing instrument, a hearing threshold of the test subject at at least one test frequency based on a reaction of the test subject to the test sound and based on the first input signal after performing the active occlusion suppression; and
creating, by the hearing instrument, the audiogram based on the hearing threshold for the at least one test frequency
set forth a judicial exception. These steps describe managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). Thus, the claim is drawn to Organizing Human Activity, which is an Abstract Idea. The ascertaining step is also directed to a concepts performed in the human mind (including an observation, evaluation, judgment, opinion). Thus, the claim is also drawn to a Mental Process, which is also an Abstract Idea.
STEP 2A, PRONG TWO
Next, the claim as a whole is analyzed to determine whether the claim recites additional elements that integrate the judicial exception into a practical application. The claim fails to recite an additional element or a combination of additional elements to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limitation on the judicial exception. Claim 1 recites outputting the correction sound into the auditory canal of the test subject by the electroacoustic output transducer; and storing the audiogram in a memory of the hearing instrument, which is merely adding insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g)). The generating of the correction signal and the storing of the audiogram does not provide an improvement to the technological field, the method does not effect a particular treatment or effect a particular change based on the generated signal and the stored audiogram, nor does the method use a particular machine to perform the Abstract Idea.
STEP 2B
Next, the claim as a whole is analyzed to determine whether any element, or combination of elements, is sufficient to ensure that the claim amounts to significantly more than the exception. Besides the Abstract Idea, the claim recites additional step of recording a sound signal in an auditory canal of the test subject at least partially closed by the hearing instrument by a first electroacoustic input transducer of the hearing instrument. Recording the sound signal in the auditory canal is well-understood, routine and conventional activity for those in the field of medical diagnostics. Further, the recording step is recited at a high level of generality such that it amounts to insignificant presolution activity, e.g., mere data gathering step necessary to perform the Abstract Idea. When recited at this high level of generality, there is no meaningful limitation, such as a particular or unconventional step that distinguishes it from well-understood, routine, and conventional data gathering activity engaged in by medical professionals prior to Applicant's invention. Furthermore, it is well established that the mere physical or tangible nature of additional elements such as the obtaining and comparing steps do not automatically confer eligibility on a claim directed to an abstract idea (see, e.g., Alice Corp. v. CLS Bank Int'l, 134 S.Ct. 2347, 2358-59 (2014)).
Consideration of the additional elements as a combination also adds no other meaningful limitations to the exception not already present when the elements are considered separately. Unlike the eligible claim in Diehr in which the elements limiting the exception are individually conventional, but taken together act in concert to improve a technical field, the claim here does not provide an improvement to the technical field. Even when viewed as a combination, the additional elements fail to transform the exception into a patent-eligible application of that exception. Thus, the claim as a whole does not amount to significantly more than the exception itself. The claim is therefore drawn to non-statutory subject matter.
The same rationale applies to claim 8.
Regarding claim 8, the hearing instrument recited in the claim is a generic device comprising generic components configured to perform the abstract idea. The recite first electroacoustic input transducer is a generic sensor configured to perform pre-solutional data gathering activity, the controller is configured to perform extra-solution activity, and the electroacoustic output transducer is configured to perform the Abstract Idea. According to section 2106.05(f) of the MPEP, merely using a computer as a tool to perform an abstract idea does not integrate the Abstract Idea into a practical application.
The dependent claims also fail to add something more to the abstract independent claims. Claims 2, 4, 6, 9, 10, and 12-15 recite steps that add to the abstract idea and claim 7 recites extra-solution activity. The steps recited in the independent claims maintain a high level of generality even when considered in combination with the dependent claims.
Response to Arguments
Applicant argues that the claimed hearing instrument does not require an audiologist and related equipment. However, even if there is no need for a person/external equipment needed, the claims do not accurately reflect this. The claims recite Abstract Ideas that are directed to Organizing Human Activity as the recited steps could be performed by a person with instructions to control/operate the hearing instrument.
Applicant argues that step of determining, or ascertaining, a hearing threshold, cannot be performed mentally or by hand. Examiner respectfully disagrees, as this could be a user reviewing the reaction data of the test subject and mentally determining what the hearing threshold is.
In the arguments regarding AOS on pages 12-14, Applicant mentions that AOS is performed, which does not require equipment or a professional audiologist. However, the step of AOS is not positively recited in the claim. Rather, claim 1 merely recites “generating…a correction signal for active occlusion suppression…” Examiner suggests to amend the independent claim to include positive recitation of AOS and clearly reciting if the correction sound is simultaneously outputted with the test sound or if the correction sound is outputted as the new test sound.
Applicant’s arguments, see Remarks, filed 22 May 2026, with respect to the 35 U.S.C. 103 rejections have been fully considered and are persuasive. The 35 U.S.C. 103 rejections of claims 1, 2, 4, and 6-10 has been withdrawn.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AURELIE H TU whose telephone number is (571)272-8465. The examiner can normally be reached [M-F] 7:30-3:30.
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/AURELIE H TU/ Primary Examiner, Art Unit 3791
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