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 .
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Continuing Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent Nos. 8,784,312, RE48,038 and RE49,527 are or were involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Benefit Claim/ADS
Applicant’s corrected ADS filed on November 20, 2025 has been made of record. Applicant is encouraged to review the corrected filing receipt for accuracy. Given that the application number of the instant application is now known (18/197661) inclusion of this number in the “application number” field of the first and last entry of the domestic benefit section of the ADS is suggested for clarity if further corrections are required.
Claim Rejections - 35 USC § 251 – Oath/Dec
The following is a quotation of the first paragraph of 35 U.S.C. 251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
Applicant’s reissue oath/declaration filed on May 15, 2023 is a copy of the reissue oath/declaration filed in parent reissue 15/217480. It fails to recite at least one error as required by MPEP 1414 and 37 CFR 1.175.
Firstly, the error statement fails to address the requirement that all broadening reissue declaration error statements must explain how the broadened limitation made the original patent at least partially inoperative or invalid. See MPEP 1414 II (B) which states:
In specifically identifying the error as required by 37 CFR 1.175(a), it is sufficient that the reissue oath/declaration identify the claim being broadened and a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid.
A statement such as “the removed limitation was unnecessary for patentability” or “the removed limitation was unduly narrow” would sufficiently explain how the original patent was at least partially inoperative or invalid.
Secondly, MPEP 1414 II D (1) states:
1) Where a continuation reissue application is filed with a copy of the reissue oath/declaration from the parent reissue application, and the parent reissue application is not to be abandoned, the reissue oath/declaration should be accepted by the Office of Patent Application Processing (OPAP) without further evaluation, because it is an oath/declaration, albeit improper under 35 U.S.C. 251. The examiner should, however, reject the claims of the continuation reissue application under 35 U.S.C. 251 as being based on an oath/declaration that does not identify an error being corrected by the continuation reissue application, and should require a new oath/declaration that identifies a new error or a statement explaining compliance with 37 CFR 1.175(f)(2) if appropriate. If the same error corrected in the parent is also being corrected in the continuation reissue application, but the error is being corrected in a different way, a statement is needed to explain compliance with 37 CFR 1.175(f)(2) for a reissue application filed on or after September 16, 2012.
No such statement explaining compliance with 37 CFR 1.175(f)(2) has been provided in support of the copy of the parent reissue oath/dec provided in this continuation reissue.
Despite the fact that an error statement need not recite corrective action taken in the reissue to fix the error, the inclusion thereof in the copy of the parent oath/declaration filed in the instant application indicates that the same error is being corrected in the same way.
Finally, the copy of the parent reissue oath/dec provided in this continuation reissues refers to claims 19 and 20 which have been cancelled during the prosecution of this reissue.
Claims 21-43 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175. The nature of the defect(s) in the declaration is set forth in the discussion above.
Specification
The amendment to the specification filed on November 20, 2025 does not appear to match what Applicant has provided in the corrected Application Data Sheet filed on the same day. Specifically, the amended text in the specification recites “application numbers 15/217,480 and 16/895,592, both of which are Continuation reissues of Patent No. 8,784,312” does not match the corrected ADS.
The ADS shows that 16/895592 is a reissue of 12/279055 (issued as Patent No. 8,784,312) and is a continuation reissue of 15/217480 as shown below.
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The ADS further shows that 15/217480 is a reissue of 12/279055 as shown below.
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The ADS does NOT show that 15/217480 is a continuation reissue of 12/279055 (issued as Patent No. 8,784,312).
As best understood, it appears as if Applicant’s data provided in the ADS is accurate and the specification should therefore be amended to match, however Applicant is encouraged to review the benefit claim and most recent filing receipt for accuracy.
Claim Rejections - 35 USC § 251 – Original Patent
Claims 21-33 are rejected under 35 USC 251 for failing to comply with the original-patent requirement. MPEP 1412.01 states that the reissue claims must be for the same invention as that disclosed as being the invention of the original patent. MPEP 1412.01 further provides guidelines for determining whether the reissue claims are "for the invention disclosed in the original patent" as:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied; and
(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application.
The presence of some disclosure (description and enablement) in the original patent should evidence that applicant intended to claim or that applicant considered the material now claimed to be his or her invention. New claim 21 recites a method for operating an external device with an “internal device” in the preamble of the claim. New claim 27 recites a method for operating an external removable device with “another device attached to a recipient” in the preamble. Nothing in Applicant’s original filed disclosure supports that Applicant envisioned the method for an “internal device” in general, or a “device attached to a recipient” in general. Everything in Applicant’s original disclosure describes a method for an implanted internal device specifically. In the medical context, the Examiner contends that the term “implanted” refers to devices or materials that are fixed inside the body via connection to tissue often through surgical procedures. On the contrary an “internal device,” as set forth in new reissue claims 21-26, need not be fixed via connection to tissue but could merely be a device resting within a cavity. Similarly, an “attached device,” as set forth in claim 27, need not be implanted or internal.
Claim Rejections - 35 USC § 251 - New Matter
The following is a quotation of 35 U.S.C. 251(a):
(a) IN GENERAL.—… No new matter shall be introduced into the application for reissue.
Claims 21-33 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought, as discussed in detail below in the rejections under 35 U.S.C. 112(a) for lack of written description.
Claim Objections
Claims 34-43 objected to because of the following informalities:
It appears as if the word “cochlea” (claim 34, line 4) should be replaced with the word - - cochlear - -.
Claim 34 recites the phrase “stored one or more stored operating parameters” in lines 5 and 7. It appears as if the phrase should be replaced with - - one or more stored operating parameters - -.
It appears as if the word “anther” (claim 42, line 3) should be replaced with the word - - another - -.
Claims not specifically addressed are objected to as being dependent upon an objected base claim.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-33 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As set forth above, Applicant’s original filed disclosure fails to provide written description support for a method for an “internal device” in general, or a “device attached to a recipient” in general. Applicant’s original written description describes a method for an implanted internal device specifically. In the medical context, the Examiner contends that the term “implanted” refers to devices or materials that are fixed inside the body via connection to tissue often through surgical procedures. Applicant’s originally filed written description fails to provide support for a broader “internal device” or “attached device” which would encompass embodiments beyond what is described in the originally filled application.
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 34-43 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.
The following words/phrases lack sufficient antecedent basis:
the reception (claim 34, line 6)
the hearing prosthesis system (two instances of the phrase in claim 34, lines 7-8)
the used stored one or more operating parameters (claim 37, lines 3-4)
the hearing implant system (claim 41, lines 2-3)
the implant system (claim 42, line 2; claim 43, line 2)
Claim 34 also recites “the hearing device being configured to receive a signal from the another hearing device” and “utilize stored [sic] one or more stored operating parameters already present in the hearing device before reception of the hearing device” in lines 5-6. It appears that an essential link is missing between these two claim limitations. It appears as if the reception of the signal influences or partially dictates which of the stored parameters in the hearing device are utilized by the system, however no such link is made in the claim language. This missing link makes the scope of the claim undeterminable. Clarification is required.
Claims not specifically addressed are rejected as being dependent upon a rejected base claim.
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 21 and 27-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19 and 25-26, 28-32, of U.S. Patent No. RE49,527. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending reissue claims 21 and 27-33 are merely broader that patented claims 19 and 25-26, 28-32. All of the limitations of the pending reissue claims 21 and 27-33 are encompassed within the patented claims 19 and 25-26, 28-32.
Claims 21-24 and 26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 22-25, of U.S. Patent No. RE48,038. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending reissue claims 21-24 and 26 are merely broader that patented claims 22-25. All of the limitations of the pending reissue claims 21-24 and 26 are encompassed within the patented claims 22-25.
Claim 25 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 22 of U.S. Patent No. RE49,038 in view of Leysieffer (6,198,971). Claim 22 of US Patent No. RE49,038 recites all limitations of pending reissue claim 25 with the exception of the internal device being a brain stem implant. Leysieffer teaches implant system for rehabilitation of hearing with external and internal components wherein the internal component can be in the form of a brain stem implant of a cochlea implant (see column 5, lines 9-10). Using an internal device in the form of a brain stem implant in the method disclosed by the ‘038 patent would have been obvious since a brain stem implant since the location of the implant may be a surgical consideration that is preferred for a particular patient (see column 4, line 58 – column 5, line 10).
Claim 34 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 33 of U.S. Patent No. RE49,527. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending reissue claim 33 is merely broader than patented claim 33. All of the limitations of the pending reissue claims 34 are encompassed within the patented claim 33.
Response to Amendment/Arguments
Applicant’s amendment, arguments and remarks filed on November 20, 2025 have been fully considered.
Applicant’s Consent of Assignee an accompanying statements have been made of record and are accepted.
Applicant’s remarks notes that the “assignee will provide a new Declaration” however no such declaration has been received. The claims remain rejected under 35 USC 251 due to an improper error statement.
Applicant’s amendment to the specification has been reviewed, however, as noted above there appears to be an inaccuracy in the benefit claim that does not coincide with what is recited in Applicant’s application data sheet.
No claim limitations of the pending reissue claims have been interpreted under 35 USC 112(f).
This action is made NON-FINAL given the new grounds of rejection under 25 USC 251 Original Patent as set forth above.
Conclusion
Claims 1-20 are cancelled.
Claims 21-43 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH B. MCPARTLIN whose telephone number is (571)272-6854. The examiner can normally be reached M-F 8 am - 5 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, Eileen Lillis can be reached at 571-272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Any general questions regarding this communication can be directed to the Central Reexamination Unit at 571-272-7705.
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/SARAH B MCPARTLIN/Reexamination Specialist, Art Unit 3993
Conferees:
/CATHERINE S WILLIAMS/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993