DETAILED ACTION
This communication is responsive to the amendment filed 06/20/2025.
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 clearly anticipated or 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.
Claims 1, 6-8, 11-12, 18 and 20-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of U.S. Patent No. 9,602,931. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-29 of U.S. Patent No. 9,602,931 are clearly anticipated or 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. 9,602,931
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.
1. A hearing prosthesis device comprising: an external component including an ear hook adapted for carrying the external component behind the pinna of a recipient; a subcutaneous magnetic material and an external magnet, the subcutaneous magnetic material and external magnet forming a magnetic coupling; and a vibrator adapted to evoke a hearing percept by transmitting vibrations to the recipient when the external magnet and the subcutaneous magnetic material form the magnetic coupling, wherein the external magnet is connected to the external component.
Claims 1, 6-8, 11-12, 18 and 20-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 8,655,002. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-24 of U.S. Patent No. 8,655,002 are clearly anticipated or 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. 8,655,002
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.
22. A device, comprising: a behind the ear (BTE) device including: a sound input element configured to receive an acoustic sound signal; and a transducer configured to generate vibrations representing said received acoustic sound signal; and a vibration conductor extending away from the BTE device and configured to transfer the generated vibrations from the BTE device to cartilage of the recipient to vibrate the cartilage of the recipient and to evoke a hearing percept.
23. The device of claim 22, wherein: the vibration conductor is configured to couple to bone of the recipient to transfer the generated vibrations to the bone to evoke the hearing percept.
24. The device of claim 22, wherein: the vibration conductor is configured to couple to cartilage of the recipient to transfer the generated vibrations to the cartilage to evoke the hearing percept.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 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 extension fee 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 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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