DETAILED ACTION
In view of the appeal brief filed on 03/30/2026, PROSECUTION IS HEREBY REOPENED.
The finality of the office action is withdrawn and a new ground of rejection is set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) request reinstatement of the appeal.
If reinstatement of the appeal is requested, such request must be accompanied by a supplemental appeal brief, but no new amendments, affidavits (37 CFR 1.130, 1.131 or 1.132) or other evidence are permitted. See 37 CFR 1.193(b)(2).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 6-8, 11-12, 18 and 20-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-39 of U.S. Patent No. 11,570,552. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-39 of U.S. Patent No. 11,870,552 are very similar in scope to the rejected claims 1, 6-8, 11-12, 18 and 20-35 of the U. S. Pat. App (No. 18/103,215) with only obvious wording variations. For example:
U. S. Pat. App No. 18/103,215
U.S. Patent No. 11,870,552
1. A bone conduction device comprising: an external component, the external component comprising a sound processor and a transducer, the transducer configured to generate mechanical forces, wherein the external component is configured for positioning with a part behind a recipient's ear, and wherein the mechanical forces are transmitted from the external component to tissue of a recipient to generate a hearing percept via bone conduction.
A bone conduction device comprising: an external component, the external component comprising a sound processor and transducer, the transducer configured to generate mechanical forces, wherein the external component is configured for positioning behind a recipient's ear such that the mechanical forces are transmitted from the external component to a recipient's bone to generate a hearing percept via bone conduction.
Regarding the rejection above, on the ground of nonstatutory double patenting as being unpatentable over claims 1-39 of U.S. Patent No. 11,570,552, in response to the Appellant’s argument, please see the comparison table above, the only difference is the rejected claim 1, claims “the external component is configured for positioning with a part behind a recipient's ear” than “the external component is configured for positioning behind a recipient's ear” in the allowed claim. It is well known in the art, especially in the BTE type hearing device art, the BTE component of the hearing device is positioning behind a recipient's ear, partially; Or with a part behind a recipient's ear. Clearly, claim 1 of U.S. Patent No. 11,870,552 is clearly anticipated or similar in scope to the rejected claim 1 of the U. S. Pat. App. No. 18/103,215 with only obvious wording variations. Therefore, they are not patentably distinct from each other; and claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,570,552.
Allowable Subject Matter
Claims 1, 6-8, 11-12, 18 and 20-35 are rejected under nonstatutory double patenting rejection, but would be allowable if a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUHAN NI whose telephone number is (571)272-7505. The examiner can normally be reached on Monday to Friday from 10:00 am to 6:30 pm.
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/SUHAN NI/Primary Examiner, Art Unit 2691
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