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 .
Status of Claims
The present Office action is responsive to the application as filed on 03-31-2023. As directed, claims 1-20 are currently pending examination.
Claim Objections
Claims 1-2, 5, 7-8, 12, 14, and 17-19 are objected to because of the following informalities:
At claim 1, line 8, it is suggested that “conductor” be replaced with “conductors” for clarity.
At claim 1, line 10, it is suggested that “the” be added before “first over-ear strap” for clarity.
At claim 1, line 12, it is suggested that a comma be added following “a second low frequency bone conductor” for clarity.
At claim 1, line 15, it is suggested that “the first and second low frequency bone conductors” be replaced with “the first low frequency bone conductor and the second low frequency bone conductor” for clarity.
At claim 2, line 3, it is suggested that “fist” be replaced with “first” to correct a misspelling.
At claim 2, line 8, it is suggested that “of” be added following “forward” for clarity.
At claim 2, line 10, it is suggested that “the first and second high frequency bone conductors” be replaced with “the first high frequency bone conductor and the second high frequency bone conductor” for clarity.
At claim 5, line 6, it is suggested that “second” be added before “hinge” to distinguish which of the two hinges is recited.
At claim 7, line 7, it is suggested that “the” be added before” high frequency tones” for clarity.
At claim 7, line 8, it is suggested that the period at the end of the line be replaced with either a comma or a semi-colon for clarity.
At claim 8, lines 1-2, it is suggested that “wherein the low frequency tones are administered at a volume of about five to ten decibels above” be replaced with “wherein the volume of the low frequency tones are administered at five to ten decibels above” as the term “volume” was previously introduced in claim 7.
At claim 8, lines 2-3, it is suggested that “the high frequency tones are administered at a volume of about five to ten decibels above” be replaced with “the volume of the high frequency tones are administered at five to ten decibels above” as the term “volume” was previously introduced in claim 7.
At claim 12, line 1, it is suggested that “An” be replaced with “A” for proper grammar.
At claim 12, lines 3-4, it is suggested that “the rear” be replaced with “a rear” as the term has not yet been introduced.
At claim 12, line 11, it is suggested that “the” be added before “first over-ear strap” for clarity.
At claim 12, line 19, it is suggested that “the first and second low frequency bone conductors” be replaced with “the first low frequency bone conductor and the second low frequency bone conductor” for clarity.
At claim 12, line 20, it is suggested that “the first and second low frequency bone conductors” be replaced with “the first low frequency bone conductor and the second low frequency bone conductor” for clarity.
At claim 12, line 21, it is suggested that “configured to generate tones at a frequency of” be replaced with “configured to generate the frequency of tones at” since, “a frequency of tones” has already been introduced.
At claim 14, line 3, it is suggested that “fist” be replaced with “first” to correct a misspelling.
At claim 14, line 8, it is suggested that “of” be added following “forward” for clarity.
At claim 17, line 6, it is suggested that “external” be added before “Device” for consistency in the claims.
At claim 18, line 2, it is suggested that “the external device and,” be replaced with “the external device, and” for clarity.
At claim 19, line 3, it is suggested that “mobile device inputs and,” be replaced with “mobile device inputs, and” for clarity.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7-8 and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 7, lines 9-10 recite the limitation “setting an intensity of each of the low frequency tones and the high frequency tones above the determined subjective auditory threshold of the user” which renders the claim indefinite. First, there are two different subjective auditory thresholds that are introduced, the first and second, and thus the recitation in this excerpt of “the determined subjective auditory threshold” renders the claim indefinite because it is unclear which threshold is being referred to, if respective thresholds are being referred to, or if this introduces a new claim element.
Further, while it is true that a sound has an intensity (typically measured in W/m2) and separately that the subjective human perception of that intensity is typically referred to as volume, the specification sets forth only a setting related to the thresholds for the volume of the tone based on the first and second thresholds (see paragraphs 63 and 71). The only recitation of an “intensity” is at the abstract, and it recites that the tones may be delivered “above an auditory threshold intensity”, which appears to be defined as volume in the remainder of the instant specification (see previous citations). Thus, lines 9-10 further render the claim indefinite because, in light of the specification, it is unclear whether the intensity and volume are actually referring to the same parameter, or if the control separately sets values of the volume and intensity based on the determined thresholds. Based on the instant specification, it seems that lines 9-10 are actually redundant given previous lines 6-8.
For the purposes of examination, claim 7 will be interpreted such that the separate first and second threshold values are used to set a volume, and that volume is the claimed intensity.
Claim 8 is rejected by virtue of its dependence on claim 7.
Regarding claim 16, the limitation “the manual frequency control input and the manual volume control input” in line 5 renders the claim indefinite. Since the claim is written to depend from claim 14, there is a lack of antecedent basis for each of the frequency and volume control outlined. However, dependent claim 15 sets forth each of these limitations. Thus, it is unclear whether claim 16 should be written to depend from claim 15 to provide antecedent basis for these claimed terms, or if the terms should be amended to recite “a manual frequency control input and a manual volume control input”. For the purposes of examination, the claimed will be interpreted as “a manual frequency control input and a manual volume control input”.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or non-obviousness.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Nam (KR 2022/0029838) in view of Eagleman (US 2022/0126094).
Regarding claim 1, Nam discloses an apparatus (“somatic tinnitus treatment device”, see Fig. 1) for treating tinnitus (abstract, lines 1-4; Fig. 1), the apparatus comprising:
a semi-circular strap (30+40), the semi-circular strap (30+40) configured to be positioned about a rear portion of a head of a user (page 3, lines 16-18, where heating pad 30 is configured as a strap abutting the rear of the user’s head and neck, and page 4, lines 37-43, where 40 attaches to 30 to fix the device to the patient; Fig. 3);
a first over-ear strap, the first over-ear strap configured to be positioned over a first ear of the head of the user (see annotated Fig. 1 below, and Figs. 2-3; page 3, lines 13-25);
a second over-ear strap, the second over-ear strap configured to be positioned over a second ear of the head of the user (see annotated Fig. 1 below, and Figs. 2-3; page 3, lines 13-25); and
a plurality of bone conductors, the plurality of bone conductor including:
a first low frequency bone conductor (left 20 when viewed in Figs. 1-2), the first low frequency bone conductor (left 20) located between first over-ear strap (left strap indicated in annotated Fig. 1) and the semi-circular strap (30+40), the first low frequency bone conductor (left 20) configured to contact the head of the user rearward of the first ear of the user (page 4, lines 14-19; see Figs. 2-3, where Fig. 3 illustrates the analogous contact of right element 20 at the user’s head behind the ear, and additionally shows the positioning of 20 between element 30 and the identified over-ear strap), and
a second low frequency bone conductor (right 20 when viewed in Figs. 1-2) the second low frequency bone conductor (right 20) located between the second over-ear strap (right strap indicated in annotated Fig. 1 below) and the semi-circular strap (30+40), the second low frequency bone conductor (right 20) configured to contact the head of the user rearward of the second ear of the user (page 4, lines 14-19; see Figs. 2-3, where Fig. 3 illustrates the contact of right element 20 at the user’s head behind the ear, and additionally shows the positioning of 20 between element 30 and the identified over-ear strap).
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Nam fails to explicitly disclose wherein the first and second low frequency bone conductors are each configured to generate tones at a frequency between about fifty hertz and about one-hundred-and-ten hertz.
However, Eagleman teaches a device for treatment tinnitus by outputting tones (paragraph 47, lines 6-12; Fig. 5; paragraph 85, lines 1-8), wherein the system is configured to generate tones at a frequencies of less than 100 Hz (paragraph 86, lines 1-2 and 6-7).
In the present case, the range of less than 100 Hz overlaps the claimed range of 50-110 Hz. In the case where the range taught/disclosed by the prior art overlaps the claimed range, a prima facie case of obviousness exists (see MPEP 2144.05.I, and In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Therefore, since Eagleman teaches that the tones provided by the speaker(s) of its system are reasonably expected to aid in treating a tinnitus condition (paragraph 85, lines 1-8), and Nam also discloses usage of audio tones to treat tinnitus (page 4, lines 14-19), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the range of less than 100 Hz to output the audio tones of the Nam low frequency bone conductors, as a range of frequencies known to reliably treat a tinnitus condition. Where, the particular range overlaps the claimed range, and thus supporting a prima facie case of obviousness over the claimed range.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Nam (KR 2022/0029838) in view of Eagleman (US 2022/0126094) and Baker (US 2019/0344073).
Regarding claim 12, Nam discloses a system for treating tinnitus (“somatic tinnitus treatment device” including the system of electrical stimulators, heating pad, and sound output devices, see Fig. 1) (abstract, lines 1-11; Fig. 1), the system comprising:
a headset apparatus (“somatic tinnitus treatment device”, see Fig. 1) for treating tinnitus (abstract, lines 1-4; Fig. 1), the headset apparatus including:
a semi-circular strap (30+40), the semi-circular strap (30+40) configured to be positioned about a rear portion of a head of a user (page 3, lines 16-18, where heating pad 30 is configured as a strap abutting the rear of the user’s head and neck, and page 4, lines 37-43, where 40 attaches to 30 to fix the device to the patient; Fig. 3);
a first over-ear strap, the first over-ear strap configured to be positioned over a first ear of the head of the user (see annotated Fig. 1 below, and Figs. 2-3; page 3, lines 13-25);
a second over-ear strap, the second over-ear strap configured to be positioned over a second ear of the head of the user (see annotated Fig. 1 below, and Figs. 2-3; page 3, lines 13-25); and
a plurality of bone conductors, the plurality of bone conductor including:
a first low frequency bone conductor (left 20 when viewed in Figs. 1-2), the first low frequency bone conductor (left 20) located between first over-ear strap (left strap indicated in annotated Fig. 1) and the semi-circular strap (30+40), the first low frequency bone conductor (left 20) configured to contact the head of the user rearward of the first ear of the user (page 4, lines 14-19; see Figs. 2-3, where Fig. 3 illustrates the analogous contact of right element 20 at the user’s head behind the ear, and additionally shows the positioning of 20 between element 30 and the identified over-ear strap), and
a second low frequency bone conductor (right 20 when viewed in Figs. 1-2) the second low frequency bone conductor (right 20) located between the second over-ear strap (right strap indicated in annotated Fig. 1 below) and the semi-circular strap (30+40), the second low frequency bone conductor (right 20) configured to contact the head of the user rearward of the second ear of the user (page 4, lines 14-19; see Figs. 2-3, where Fig. 3 illustrates the contact of right element 20 at the user’s head behind the ear, and additionally shows the positioning of 20 between element 30 and the identified over-ear strap); and
a controller configured to control the output of the first and second low frequency bone conductors (20) (abstract, lines 7-8; page 4, lines 33-34).
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Nam fails to explicitly disclose wherein the controller is configured to control a volume and a frequency of the tones generated by the bone conductors, and wherein the first and second low frequency bone conductors are each configured to generate tones at a frequency between about fifty hertz and about one-hundred-and-ten hertz.
However, Eagleman teaches a device for treatment tinnitus by outputting tones (paragraph 47, lines 6-12; Fig. 5; paragraph 85, lines 1-8), wherein the system is configured to generate tones at a frequencies of less than 100 Hz (paragraph 86, lines 1-2 and 6-7).
In the present case, the range of less than 100 Hz overlaps the claimed range of 50-110 Hz. In the case where the range taught/disclosed by the prior art overlaps the claimed range, a prima facie case of obviousness exists (see MPEP 2144.05.I, and In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Therefore, since Eagleman teaches that the tones provided by the speaker(s) of its system are reasonably expected to aid in treating a tinnitus condition (paragraph 85, lines 1-8), and Nam also discloses usage of audio tones to treat tinnitus (page 4, lines 14-19), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the range of less than 100 Hz to output the audio tones of the Nam low frequency bone conductors, as a range of frequencies known to reliably treat a tinnitus condition. Where, the particular range overlaps the claimed range, and thus supporting a prima facie case of obviousness over the claimed range.
Presently modified Nam fails to explicitly disclose wherein the controller is configured to control a volume and a frequency of the tones generated by the bone conductors.
However, Baker teaches a system and device for treating tinnitus (abstract, lines 1-8), including a device (12) which further comprises a controller (101) configured to control a volume and a frequency of the tones generated, which may advantageously be based on a prior treatment session, biometric data, or user inputs (paragraph 20, lines 1-3 and 12-30, note “volume” and “frequency” output at the amplifier 105).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the controller of Nam to further include the capability of controlling a volume and a frequency of the tones generated by the bone conductors, as taught by Baker, in order to enable the audio outputs to be controlled based on a prior treatment session, biometric data, or user inputs to the system as desired.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Nam (KR 2022/0029838) in view of Eagleman (US 2022/0126094) and Baker (US 2019/0344073), as applied to claim 12 above, in further view of Chang (US 2020/0382884).
Regarding claim 13, Nam in view of Eagleman and Baker disclose the system of claim 12, as discussed above.
Modified Nam fails to disclose wherein the headset apparatus further includes an over-head strap, the over-head strap configured to be positioned over a top of the head of the user.
However, Chang teaches a hearing training device (1) configured as a headset (abstract, lines 1-10; paragraph 26, lines 1-7; Figs. 1 and 3) that includes both a semi-circular strap (14) positioned at the rear of the user’s head (paragraph 27, lines 8-10; Fig. 3), as well as an over-head strap (12), the over-head strap (12) configured to be positioned over a top of the head of the user (paragraph 27, lines 4-6; Figs. 1 and 3), wherein the over-head strap (12) facilitates adjustment of the overall device to the user (paragraph 28, lines 1-25; Fig. 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Nam to further include an over-head strap, as taught by Chang, in order to provide an additional member for supporting the device on the user’s head, and to further provide an adjustable fit of the device on the user’s head.
Allowable Subject Matter
Claims 6-11 would be allowed if amended to overcome the claim objections and indefiniteness rejections outlined above.
Claims 2-5 and 14-20 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.
The following is a statement of reasons for the indication of allowable subject matter: Regarding each of claims 2 and 14, which contain overlapping subject matter, and are deemed allowable for virtually the same reasons, the closest identified prior art of record relevant to the totality of limitations included in claims 1+2 and 12+14 respectively is Nam (KR 2022/0029838) and Suk (2021/0061261).
As outlined in the prior art rejections above, Nam includes most of the structural limitations of claims 1 and 12 respectively. Nam is deficient with respect to the additional subject matter of claims 2 and 14 because, each of these claims requires a precise positioning of the first set of low frequency conductors (“located between the first over-ear strap and the semi-circular strap”) in each of claims 1 and 12, and then further requires the second set of high frequency bone conductors to be located “opposite the first low frequency bone conductor relative to the first over-ear strap”, in other words, on an opposite side of the over-ear strap. This would lead to a positioning of the second pair of conductors in an area relative to electrodes 52 on either over-ear strap, in order to meet the claimed language of “opposite” the first low frequency conductor and to maintain the claimed position of the second conductors being in front of the ear. However, electrode 52 is specifically positioned at this side of the over-ear strap to contact the temporal muscle (page 3, lines 23-24), and the electrodes are one portion relied on to treat the user’s tinnitus (abstract, lines 1-10). Thus, moving the electrode 52 to accommodate positioning of a second conductor at the end of the over-ear strap opposite the conductor 20 would render the device unsuitable for its intended purpose, as the electrode would be taken out of contact with the temporal muscle as required for treatment. Further, substituting the electrode for a second bone conductor would similarly render the device unsuitable for its intended purpose, as both electrodes 50 and 52 are required in the device and treatment method (page 3, lines 21-24). Further, there is not found a motivated reason with rational underpinnings to suggest new placement of the electrode as well as addition of the high frequency conductors in its place.
Similarly, Suk includes a relevant treatment device for tinnitus (abstract, lines 1-15 and Fig. 13), with bone conductors (see each right and left assembly 30 in Fig. 2). Suk falls short for reasons similar to those outlined in Nam. If member 27 is regarded as the over-ear strap, and a second set of conductors must be placed opposite each element 30 relative to the over-ear strap, and maintain positioning in front of the user’s ear, this seems to coincide with a position relative to that of microphone 24 in Figure 1C. As with Nam, the microphone has a particular function of receiving external environment sound for means of making phone calls or collecting ambient sound to provide noise cancelling (“The microphone 22 is a condenser microphone such as an electrostatic microphone that applies a condenser to generate electricity from a sound source so that it can receive the user's voice and use it for phone call purposes, or collect ambient sound and provide a hearing aid function through noise canceling”). Moving the microphone and/or removing it would destroy the intended purpose and function of the overall Suk device. Further, there is not found a motivated reason with rational underpinnings to suggest new placement of the microphone as well as addition of the high frequency conductors in its place.
Each of claims 3-5 and 15-20 depend from claims 2 and 14 respectively, and are therefore deemed allowable at least by virtue of their dependence on one of these claims.
With respect to claim 6, as with each of claims 1 and 12 above, Nam seems to be the most suitable base reference, that accomplishes the method of treating tinnitus with a headset apparatus. Notably, Suk could also be used as a suitable base reference for the claim. While claim 6 does not require the specified placement of the first and second set of bone conductors, respectively delivering low and high frequency tones, the prior art at large still fails to provide a set of instruction and teachings that would reasonably result in the claimed invention. Neither of Nam nor Suk disclose the second set of bone conductors, and because of this, Nam and Suk also fail to specify the administration of specified low and high frequency tones by respective pairs of low and high frequency bone conductors, particularly at the claimed frequency ranges.
Relative to the notion of delivery and administration of simultaneous low and high frequency tones, the closest identified prior art of record is Marie De Chastenay (US 2024/0244385), Zhang (US 2021/0219066), Thomas (US 2020/0396529), and Kwak (KR 2009/0102025).
Marie De Chastenay includes multiple bone conductors per ear (see 14 and 15 in Fig. 1A), but relates to a hearing aid (abstract, lines 1-5), and thus does not relate to tinnitus treatment, and further does not contemplate the simultaneous administration of high and low frequencies by the conductors respectively at the given ranges for the treatment of tinnitus.
Thomas includes a bone conduction headset which includes several conductors (22, 24, 34, and 36, see paragraph 53 and Figs. 5-6), but the given device is configured to output audio elements in a similar manner as headphones or earphones. The device also does not contemplate the treatment of tinnitus.
Zhang describes a speaker which includes both low and high frequency drivers (see paragraph 223 and Fig. 16), but these low frequency drivers are all contained within a speaker such as the one shown in Figure 1A, not presented as separate bone conductors. Still further, while Zhang contemplates the output of separate high and low frequencies (see paragraph 105), it is of note that the disclosure does not, with any specificity, refer to the claimed ranges of 50-110 Hz or 6-10 kHz.
Kwak generally indicates the ability to output low and high frequency sound bands (“the output order of the stimulus signal may be determined to be provided sequentially, in random order or simultaneously, from the low tinnitus frequency band or the high tinnitus frequency band, when there are a plurality of tinnitus frequency bands”), but does not specify that these bands are output by a series of four conductors, nor does Kwak outline the frequencies defined in the low and high frequency bands. The lowest frequency it seems that is contemplated by Kwak is 254 Hz (see Fig. 11), which is higher than the highest value in the low frequency range outlined by the claims.
Tass (US 2023/0264018) generally indicates the use of its device to treat tinnitus (see paragraph 19), and also teaches use of stimulus from 20 Hz to 20 kHz, however this range encompasses the entire range of human hearing (paragraph 40, lines 1-5), and is therefore not given with sufficient specificity to meet the two separately claimed ranges of 50-110 Hz and 6-10 kHz. Further, Tass does not contemplate low and high frequency bone conductors in pairs.
Eagleman (US 2022/0126094) provides several ranges of sounds that can be output to treat tinnitus (see paragraph 860. Notably, Eagleman does not contemplate simultaneous administration of low and high frequencies using separate bone conductors on a headset. The same is true of Chang (US 2020/0382884) (see the ranges provided in paragraph 39).
Thus, the totality of limitations found in claim 6 do not seem to be reasonably present, in either an anticipatory capacity or an obviousness capacity, in the prior art. The best combination would arguably be to modify the devices of either Nam or Suk to include multiple conductors, as shown in Marie De Chastenay or Thomas, using Kwak as evidence that high and low frequency bands could be output simultaneously. Even then though, neither of Marie De Chastenay nor Thomas are related to tinnitus, and given that each is concerned with outputting a particular sound signal (i.e. through a hearing aid amplifying a present sound, or by outputting audio in the manner of headphones/earphones), neither reference distinctly treats tinnitus by outputting separate high and low frequencies in the given ranges at separate conductors configured to singly output either low or high frequency. Kwak does not provide evidence that the separate high and low frequency bands are within the claimed ranges, and does not provide evidence that the low and high frequencies are output by different conductors. And still further, there has not been identified a prior art reference that contemplates the higher frequency range output as claimed for the treatment of tinnitus alongside the use of the low frequency range output as claimed at the same time and with separate conductors. Thus, rejection of claim 6 would likely only be possible through the use of impermissible hindsight reconstruction using Applicant’s disclosure as a roadmap.
Conclusion
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/PAIGE KATHLEEN BUGG/Primary Examiner, Art Unit 3785