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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 29 December 2025 has been entered.
Response to Amendment
Claims 1, 2, 4, and 6-10 are currently pending. Claim 11 has been cancelled. Claims 1, 4, 6, 8, and 10 have been amended. Claims 4 and 6 have been amended to overcome the 35 U.S.C. 112(b) rejections set forth in the Final Office Action mailed on 29 September 2025.
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, and 6-10 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;
performing at least one set of steps (1, 2) selected from the group consisting of:
(2) recording an ambient sound of the hearing instrument by a second electroacoustic input transducer of the hearing instrument; and
ascertaining 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/or the active noise suppression
set forth a judicial exception. These steps describe a concept performed in the human mind (including an observation, evaluation, judgment, opinion). Thus, the claim is drawn to a Mental Process, which is 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 (1) generating a correction signal for an active occlusion suppression on a basis of the first input signal, 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, and outputting the correction sound into the auditory canal of the test subject; generating a second input signal from the ambient sound, and carryinq out active noise suppression in addition to the output of the test sound on a basis of the second input signal by the electroacoustic output transducer of the hearing instrument, the active noise suppression being carried out during the outputting of the test sound; and creating the audiogram based on the hearing threshold for the at least one test frequency, which is merely adding insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g)). The generating of the correction signal/second input signal and the creation 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 signals and the created 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, and 10 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.
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, 2, 4, and 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Naumann et al. ’146 (US Pub No. 2021/0076146 – previously cited) in view of Frieding et al. ‘175 (International Pub No. 2019/069175).
Regarding claim 1, Naumann et al. ‘146 teaches a method for preparing an audiogram of a test subject with a hearing instrument (Title, Abstract), which comprises the steps of:
recording a sound signal in an auditory canal of the test subject by a first electroacoustic input transducer of the hearing instrument ([0047]; “input signals are detected by means of a microphone 16 of the hearing aid 2”), wherein the auditory canal of the test subject is at least partially closed by the hearing instrument ([0047]; “part of an earpiece 20…is inserted into the user’s ear canal”);
generating, with said first electroacoustic input transducer (Fig. 1 microphones 16 and [0047]) a first input signal from the sound signal ([0047]; “modification of the input signals”);
generating a test sound by an electroacoustic output transducer of the hearing instrument ([0050]; “The audiogram 4 generally indicates a frequency-dependent hearing threshold 22 of the user and is determined, for example, in a corresponding test or calibration procedure.”);
outputting, by the electroacoustic output transducer, the test sound into the auditory canal of the test subject ([0051]; “The audiogram 4 is thus formed in such a way that it can be used to determine which sounds are audible to the user and which are not audible. A particular noise consists of one or more frequency components f1-f8, which are audible or inaudible, or a combination of these. A frequency component f1-f8 is audible to the user if and only if this frequency component f1-f8 has a level p which exceeds the hearing threshold 22 of the user for this frequency range”);
performing at least one set of steps (1, 2) selected from the group consisting of:
1) generating a correction signal for an active occlusion suppression on a basis of the first input signal ([0063]; “…outputting [the noise interference] in inverted form via the receiver 18 of the hearing device 2.”), 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 ([0063]; “the active noise cancelling 6 has an active occlusion reduction (AOR for short) or is implemented as such a system, and suppresses intrusive noise arising from an occlusion in the user’s auditory canal…”), and outputting the correction sound into the auditory canal of the test subject ([0063]; “…outputting [the noise interference] in inverted form via the receiver 18 of the hearing device 2.”); and
2) recording an ambient sound of the hearing instrument by a second electroacoustic input transducer of the hearing instrument ([0062]; “…the noise suppression 6 suppresses intrusive ambient noise by recording the intrusive noise with one or both of the external microphones 16 of the hearing device…”), generating a second input signal from the ambient sound ([0062]; “…and outputting [the intrusive noise] in inverted form via the receiver 18 of the hearing device 2.”), and carrying out active noise suppression in addition to the output of the test sound on a basis of the second input signal by the electroacoustic output transducer of the hearing instrument ([0062]; “the active noise suppression 6 has active noise cancelling”);
ascertaining 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 ([0050]; “The hearing thresholds 22 of the various frequencies f together form a hearing curve H.” It is noted that [0062] and [0063] recite that the active noise suppression and active noise cancelling can be implemented, indicating that this Is done after generating the first and/or second input signals.); and
creating the audiogram based on the hearing threshold for the at least one test frequency ([0050]-[0052], [0054]).
Naumann et al. ‘146 teaches all of the elements of the current invention as mentioned above except for the generating of the correction sound occurring during the outputting of the test sound and the active noise suppression being carried out during the outputting of the test sound.
Frieding et al. teaches applying an active noise control algorithm to an audio signal processing associated with an acoustic output. The degree of noise attenuation must be sufficient to reduce the volume of the ambient noise to less than that of the test signal. As such, the ambient sound is first or simultaneously assessed to determine whether or not the resulting attenuation will be sufficient ([0091]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the simultaneous generating of the correction sound and/or active noise suppression sound during the outputting of the test sound of Frieding et al. for the generating the correction sound and/or active noise suppression sound after the outputting of the test sound of Naumann et al. ‘146 as Frieding et al. teaches that substitution of one known element for another would yield the predictable result of the attenuation being sufficient enough.
Regarding claim 2, Naumann et al. ‘146 teaches wherein the test sound has a defined first signal contribution at the at least one test frequency (Figs. 2-4 frequency components f1-f8 and [0050]-[0051]), and which further comprises:
ascertaining a second signal contribution of the sound signal in the auditory canal at the at least one test frequency based on the first input signal ([0050]; Hearing curve H is formed based off the various frequencies f.); and
performing the step of ascertaining the hearing threshold of the test subject by taking into consideration at least the second signal contribution ([0050]; Hearing curve H is formed based off the various frequencies f, indicating that the frequencies f are taken into consideration.).
Regarding claim 4, Naumann et al. ‘146 teaches which further comprises:
performing at least the set of steps in the group labeled as (1) ([0063]);
generating and outputting the correction sound as a broadband sound signal ([0020]; “broadband noise cancellation”); and
ascertaining a residual noise signal not filtered by the active occlusion suppression as the second signal contribution on a basis of the first input signal ([0028]; “…whereas the useful sounds are output to the user predominantly or completely unaffected by the noise suppression.”).
Regarding claim 6, Naumann et al. ‘146 teaches which further comprises:
performing at least the set of steps in the group labeled as (2) ([0062]); and
concentrating the active noise suppression on a frequency range around the at least one test frequency ([0024]; “…the noise cancellation is operated frequency-selectively by not suppressing those frequency components which lie within a dead region of the audiogram…in a suitable design the minimum level is 90 dB.”).
Regarding claim 7, Naumann et al. ‘146 teaches wherein the active occlusion suppression by the correction signal takes place in a broadband manner ([0020]; “broadband noise cancellation”).
Regarding claim 8, Naumann et al. ‘146, as modified by Frieding et al., teaches a hearing system, as claimed, as claim 8 is analogous to claim 1.
Regarding claim 9, Naumann et al. ‘146 teaches wherein:
said hearing instrument is configured as a hearing aid, and further includes the second electroacoustic input transducer, which is configured to record an ambient sound of said hearing aid, and to generate a second input signal from the ambient sound ([0062]; “…the noise suppression 6 suppresses intrusive ambient noise by recording the intrusive noise with one or both of the external microphones 16 of the hearing device…”); and
said controller is configured to generate an output signal on a basis of the second input signal and supply the output signal to said electroacoustic output transducer for conversion into an output sound signal ([0062]; “…and outputting [the intrusive noise] in inverted form via the receiver 18 of the hearing device 2.”).
Regarding claim 10, Naumann et al. ‘146 teaches wherein said controller is configured to carry out the active noise suppression based on the second input signal generated by said second electroacoustic output transducer in addition to the test sound that is output into the auditory canal of the test subject ([0062]; “the active noise suppression 6 has active noise cancelling (ANC for short), more precisely, is implemented as such.”).
Response to Arguments
Applicant argues that “a specific end product (i.e., hearing instrument)” is used in a way that improves the specific field of hearing instruments. However, the claims merely recite that the hearing instrument includes a first electroacoustic input transducer, an electroacoustic output transducer, and a loudspeaker, which is well-known in the art. Regarding the steps performed by the hearing instruments, it is noted that these steps are Abstract Ideas. It is noted that section 2106.05(a) II. of the MPEP states that “…it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology.”
Applicant argues that the claimed invention improves the functioning of hearing instruments by enabling the hearing instrument to perform the creation of audiograms over what was previously possible (e.g. audiologist performed). However, regarding the “creating the audiogram” limitation in the independent claims, there is no structure tied to this step. Therefore, “creating the audiogram” is interpreted as a user creating the audiogram, which is the abstract idea of organizing human activity. Because Applicant explains in the Remarks filed 29 December 2025 that there is a specific end product, Examiner suggests to amend each of the steps in the independent claims to be tied to a structure of the hearing instrument.
Applicant argues that the generating steps are not mental processes. An updated 101 analysis was performed on the claims. It is noted that these steps are now analyzed in step 2a, prong two as mere output steps that do not provide an improvement to the technology. As mentioned in section 10 above, because Applicant explains in the Remarks filed 29 December 2025 that there is a specific end product, Examiner suggests to amend each of the steps in the independent claims to be tied to a structure of the hearing instrument. This would also aid in amending the claims to show why the claimed hearing instrument is not well-understood, routine, and conventional as well as steer the claims away from an Abstract Idea.
Applicant argues that Naumann et al. ‘146 fails to teach generating a test sound. However, [0050] of Naumann et al. ‘146 tastes that in order to indicate a frequency-dependent threshold, a test or calibration procedure is performed. The test or calibration procedure, or test sound, would be a test to determine where the hearing threshold is.
Applicant’s arguments on pages 23-25 of the filed Remarks with respect to the 35 U.S.C. 102(a)(1) rejections have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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