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 .
Claim Objections
Claim 29 is objected to because of the following: on line 5, before “bone”, “a” should be changed to --the-- for the consistency. Appropriate correction is required.
Allowable Subject Matter
The indicated allowability of claim 12 is withdrawn in view of the rejection to Whitwell et al. (US 2002/0039427) in view of Good et al. (US 2018/0084349) and/or Petersen et al. (US 2019/0239006). Rejections based on the newly cited reference(s) follow.
Claims 13, 21-30 and 32-33 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 9, 15 and 31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Whitwell et al. (US 2002/0039427).
Regarding claim 9, Whitwell et al. teaches a system comprising a bone conduction device (10, 14, 50, 52, 64, 30, 40, 100, 110, 120, 130) having a housing configured to fit entirely within a pinna of a recipient (note the housing for the transducers 14, 52 in figures 1, 2-5, 6-8, 19a, 19b, 20-21, paragraphs [0007]-[0008], [0012]-[0014], [0016], [0062]-[0064], [0066]-[0067], [0078], and [0082]-[0083], also note the housing of the transducer being secured to the ear lobe that is the lowest portion or the bottom part of the pinna), wherein the housing comprises a bone conduction actuator and a vibration transfer surface (10, 14, 50, 52, 64, paragraphs [0005], [0007]-[0008], [0012]-[0013], [0024], [0061]-[0064], [0066]-[0067], [0071], [0078] and [0082]-[0083]), wherein the vibration transfer surface (14, 52) is configured to conduct vibrations from the bone conduction actuator (14, 52) to a point of contact within a pinna (figures 1, 2-5, 6-8, 19a, 19b, 20-21, paragraphs [0005], [0007]-[0008], [0012]-[0013], [0016], [0024], [0066]-[0067], [0071], [0078] and [0082]-[0083]) when the bone conduction device is worn at least partially within the pinna (figures 1, 2, 4-5, 6-8, 19a, 19b, 20-21, paragraphs [0007]-[0008], [0012]-[0013], [0016], [0024], [0061]-[0064], [0066]-[0067], [0071], [0078] and [0082]-[0083]).
Regarding claim 15, Whitwell et al. teaches the housing (figures 1, 2, 4-5, 6-8, 19a, 19b, 20-21) that is configured to be retained within the pinna by its fit within the pinna as claimed (paragraphs [0007]-[0008], [0012]-[0014], [0016], [0062]-[0064], [0066]-[0067], [0078] and [0082]-[0083], also note the housing of the transducer being secured to the ear lobe that is the lowest portion or the bottom part of the pinna).
Regarding claim 31, Whitwell et al. teaches the bone conduction device (figures 1, 2-5, 6-8, 19a, 19b) that lacks a component configured to deliver vibrations directly to a non-pinnal surface (note that the bone conduction device in figures 1, 2-5, 6-8, 19a, 19b does not have a component to deliver vibrations directly to a non-pinnal surface or an ear canal).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Whitwell et al. (US 2002/0039427) in view of Good et al. (US 2018/0084349) and/or Petersen et al. (US 2019/0239006).
Regarding claim 10, Whitwell et al. teaches the system comprising a sound source (paragraphs [0019]-[0023]) and a power source (134). Whitwell et al. does not specifically disclose the system comprising a sound processor as claimed. However, providing a sound processor for processing the signals in a system of a hearing aid is known in the art.
Good et al. and/or Petersen et al. teaches the system comprising a sound processor configured to cause the bone conduction actuator to vibrate based on sound signal obtained from the sound source (paragraph [0021] in Good et al.; and paragraphs [0061] and [0080] in Petersen et al.).
Therefore, it would have been obvious to one skilled in the art to provide a sound processor, as taught by Good et al. and/or Petersen et al. in the system of Whitwell et al. configured to cause the bone conduction actuator to vibrate based on sound signal obtained from the sound source for better processing the sound signals in the system.
Regarding claim 12, Whitwell et al. teaches the system comprising a sound source and the housing comprising a power source (134, paragraphs [0019]-[0023] and figures 1, 2, 4, 5, 6-8, 19a, 19b, 20, 21). Whitwell et al. does not specifically disclose the housing comprising a sound source and a sound processor as claimed. However, providing a sound source to detect or receive sound signals and a sound processor for processing the signals in a housing of a bone conduction device are known in the art.
Good et al. and/or Petersen et al. teaches the system comprising a sound processor configured to cause the bone conduction actuator to vibrate based on sound signal obtained from the sound source (paragraph [0021] in Good et al.; and paragraphs [0061] and [0080] in Petersen et al.).
Therefore, it would have been obvious to one skilled in the art to provide a sound source and a sound processor, as taught by Good et al. and/or Petersen et al. in the system of Whitwell et al. for better receiving and processing the sound signals in the system.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Whitwell et al. (US 2002/0039427) in view of Good et al. (US 2018/0084349) and/or Petersen et al. (US 2019/0239006) as applied to claim 10 above, and further in view of Feeley et al. (US 7,139,404) or Von Dombrowski et al. (US 2011/0091060).
Whitwell et al. teaches a cable (21, 58, figures 1, 3, 6-8, 11, 20, 21) coupling the bone conduction device to a remote sound source (paragraphs [0061] and [0067]). Whitwell in view of Good et al. and/or Petersen et al. does not specifically teach the cable coupled to a behind-the-ear device that is configured to be worn behind an ear as claimed.
However, providing a cable coupling a transducer or a bone conduction device to a behind the ear device comprising sound source or sound processor or power source is known in the art.
Feeley et al. or Von Dombrowski et al. teaches a behind-the-ear device configured to be worn behind an ear and comprising one or more of the sound source, the sound processor and the power source (figure 1, 6A, 6B, 9 in Feeley; and figures 12, 13 in Von Dombrowski et al.) and a cable (20, 21, 22 in Feeley; and 110 in Von Dombrowski et al.) coupling the behind-the-ear device (30 in Feeley; and 101 in Von Dombrowski et al.) to a transducer (13, figures 1, 9 in Feeley; and 5 in figures 12, 13).
Therefore, it would have been obvious to one skilled in the art to provide a behind-the-ear housing and a cable coupling a transducer or a bone conduction device to the behind the ear device comprising sound source or sound processor or power source, as taught by Feeley et al. or Von Dombrowski et al. for greater application and better providing an external sound source to the system.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Whitwell et al. (US 2002/0039427) in view of Petersen et al. (US 2019/0239006).
Regarding claim 14, Whitwell et al. does not specifically teach the bone conduction device comprising a projection configured to be inserted into an ear canal and retain the bone conduction device when the bone conduction device is worn as claimed. However, providing a bone conduction device comprising a projection configured to be inserted into an ear canal is known in the art.
Petersen et al. teaches a bone conduction device (figures 2, 3) comprising a projection (the tube 15b and/or RITE speaker) configured to be inserted into an ear canal and retain the bone conduction device when the bone conduction device is worn (figure 3, paragraph [0076]).
Therefore, it would have been obvious to one skilled in the art to provide the projection configured to be inserted into an ear canal and retain the bone conduction device when the bone conduction device is worn, as taught by Petersen et al. in the system of Whitwell et al. depending on the applications and the desired frequency characteristics in the system.
Response to Arguments
Applicant's arguments filed 03/24/2026 have been fully considered but they are not persuasive.
Responding to the arguments about the Whitwell reference, the Examiner refers to the Office Action. Further, the Applicant should note that Whitwell et al. does teach a system comprising a bone conduction device (10, 14, 50, 52, 64, 30, 40, 100, 110, 120, 130) having a housing configured to fit entirely within a pinna of a recipient (note the housing for the transducers 14, 52 in figures 1, 2-5, 6-8, 19a, 19b, 20-21, paragraphs [0007]-[0008], [0012]-[0014], [0016], [0062]-[0064], [0066]-[0067], [0078], and [0082]-[0083]) since the housing of the transducer is secured to the ear lobe that is the lowest portion or the bottom part of the pinna wherein the housing comprises a bone conduction actuator and a vibration transfer surface (10, 14, 50, 52, 64, paragraphs [0005], [0007]-[0008], [0012]-[0013], [0024], [0061]-[0064], [0066]-[0067], [0071], [0078] and [0082]-[0083]).
Responding to the rejoinder on page 9 of the Remarks, the Examiner refers to the requirement restriction made Final as mentioned in the Office Action mailed on 01/15/2026, wherein Group II, claims 9-15 and 21-33, drawn to a system comprising a bone conduction device having a bone conduction actuator, and a vibration transfer surface, wherein the vibration transfer surface is configured to conduct vibrations from the bone conduction actuator to a point of contact within a pinna when the bone conduction device is worn at least partially within the pinna. Group III, claims 16-20, drawn to method comprising generating one or more control signals, and transmitting the one or more control signals to one or more actuators of a bone conduction device to cause the one or more actuators to deliver vibrations to a target location within a recipient's concha via a vibration transfer surface, wherein the vibration transfer surface is configured to conduct vibrations from the one or more actuators to a point of contact within the concha when the bone conduction device is worn at least partially within a pinna, wherein none of the control signals based on the sound signal are transmitted to an actuator configured to deliver vibrations to a target location within a recipient's ear canal.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Where the claims of Group II, claims 9-15 and 21-33 are directed to a system comprising a bone conduction device having a bone conduction actuator and a vibration transfer surface, wherein the vibration transfer surface is configured to conduct vibrations from the bone conduction actuator to a point of contact within a pinna when the bone conduction device is worn at least partially within the pinna; whereas the claims of Group III, claims 16-20 are directed to a method comprising generating one or more control signals, and transmitting the one or more control signals to one or more actuators of a bone conduction device to cause the one or more actuators to deliver vibrations to a target location within a recipient's concha via a vibration transfer surface, wherein the vibration transfer surface is configured to conduct vibrations from the one or more actuators to a point of contact within the concha when the bone conduction device is worn at least partially within the pinna.
Groups II and III lack unity of invention because the groups do not share the same or corresponding technical feature. Group II claims different special technical features “a system comprising a bone conduction device having a bone conduction actuator and a vibration transfer surface, wherein the vibration transfer surface is configured to conduct vibrations from the bone conduction actuator to a point of contact within a pinna when the bone conduction device is worn at least partially within the pinna”. Group III recites the special technical features “a method comprising generating one or more control signals; and transmitting the one or more control signals to one or more actuators of a bone conduction device to cause the one or more actuators to deliver vibrations to a target location within a recipient's concha via a vibration transfer surface, wherein the vibration transfer surface is configured to conduct vibrations from the one or more actuators to a point of contact within the concha when the bone conduction device is worn at least partially within a pinna”. These special technical features of Group III are not found in the Group II.
Applicant’s arguments with respect to claims 9-12, 14, 15 and 31 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUYEN D LE whose telephone number is (571) 272-7502. The examiner can normally be reached 9:30 am-6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fan Tsang can be reached at (571) 272-7547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HUYEN D LE/Primary Examiner, Art Unit 2694 HL
June 7, 2026
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