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 .
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,553,289. Although the claims at issue are not identical, they are not patentably distinct from each other because they are claiming a method for using hearing assistance parameters in a hearing assistance device and/or at least one non-transitory machine medium, including instructions for using hearing assistance parameters in a hearing assistance device, which when executed by processing circuitry, cause the processing circuitry to perform operations comprising recording at the hearing assistance device a current acoustic environment, sending a sampled portion of the recording to communicably coupled to a mobile device, receiving from the mobile device selected hearing assistance parameter information or the structured acoustic information using a machine trained classifier, and using a processor or processing environmental sound using the selected hearing assistance parameter information.
Claims 1-20 of U.S. Patent No. 11,553,289 do not specifically claim using a microphone of the hearing assistance device as claimed in claims 1, 10 and 17. However, providing a microphone for recording a current acoustic environment at the hearing assistance device is known in the art.
Therefore, it would have been obvious to one skilled in the art to provide a microphone at the hearing assistance device to the system of claims 1-20 of U.S. Patent No. 11,553,289 for the same desired purpose of better receiving and recording a current acoustic environment to the hearing system.
Further, claims 1-20 of U.S. Patent No. 11,553,289 do not specifically claim an apparatus of a hearing assistance device comprising a microphone and a speaker as claimed in claim 10. However, providing a microphone and a speaker in a hearing assistance device are well known in the art.
Therefore, it would have been obvious to one skilled in the art to provide an apparatus for the hearing assistance device as claimed in claims 1-20 of U.S. Patent No. 11,553,289, wherein the hearing assistance device comprises a microphone and a speaker for better receiving and/or recording and output the environmental sound in the system.
Response to Arguments
Applicant’s arguments, see pages 6-8 in the Remarks, filed 01/30/2026, with respect to claims 2-21 have been fully considered and are persuasive. The rejection of claims 2-21 under 103 as allegedly obvious over Ribic (US 7,715,576) in view Frohlich et al. (US 7,742,612) has been withdrawn.
Applicant's arguments filed 01/30/2026 have been fully considered but they are not persuasive.
Responding to the arguments about the Double Patenting Rejection, the Applicant should note that the rejections of claims 2-21 on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,553,289 have been maintained since the Applicant has not responded to the rejections of the Double Patenting Rejection over claims 1-20 of U.S. Patent No. 11,553,289 and a Terminal Disclaimer has not been filed. Further, the Examiner has not rejected claims 1-20 of the present application on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,856,371 as mentioned and/or argued in the Remarks filed on 01/30/2026.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 HUYEN D LE whose telephone number is (571) 272-7502. The examiner can normally be reached 9:30 am-6:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HUYEN D LE/Primary Examiner, Art Unit 2694 HL
June 5, 2026
Prosecution Insights