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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 21-27 in the reply filed on 07/17/2026 is acknowledged.
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 21-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,555,095 and claims 1-28 of U.S. Patent No. 11,910,164. Although the claims at issue are not identical, they are not patentably distinct from each other because they are claiming an implantable hearing prosthesis system comprising:
an implantable hearing prosthesis configured to be at least partially implanted in a recipient, and a stand-alone hearing aid adapter or an adapter configured to be coupled to a hearing device and to transcutaneously send processed sound signals from the hearing device to the implantable hearing prosthesis, wherein the adapter is a separate component from the implantable hearing prosthesis and the hearing device, and wherein the adapter is configured to couple to the hearing device. The limitations in claims 1-20 of U.S. Patent No. 10,555,095 and claims 1-28 of U.S. Patent No. 11,910,164 cover the limitations in claims 21-27.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 21-27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sacha (US 2005/0033384).
Regarding claim 21, as broadly claimed, Sacha teaches an implantable hearing prosthesis system comprising an implantable hearing prosthesis (33, 41, 43, 45, figures 1, 3, 6, 16, 17) configured to be at least partially implanted in a recipient, and an adapter (25, 27, 29, 31 and/or 3, 5, 9, 19, 67, 69) configured to be coupled to a hearing device (9, 19, 37, 39 and/or 3, 7, 9, 11, 13, 19, 21, figures 1, 3, 4, 5, 7, 8, 9, 10) and to transcutaneously send processed sound signals from the hearing device to the implantable hearing prosthesis (33, 41, 43, 45, figures 1, 3, 6, 16, 17, paragraphs [0013], [0017], [0021], [0050] and [0056]-[0057]), wherein the adapter (25, 27, 29, 31) is a separate component from the implantable hearing prosthesis and the hearing device (figures 1, 3, 4, 5, 7, 8, 9, 16), and wherein the adapter is configured to couple to the hearing device (figures 1, 3, 4, 5, 7, 8, 9).
Regarding claim 22, Sacha teaches the implantable hearing prosthesis system, wherein the adapter (25, 27, 29, 31 and/or 3, 5, 9, 19, 67, 69) is configured to wirelessly send the processed sound signals to the implantable hearing prosthesis (paragraphs [0017], [0055]-[0057] and [0062]).
Regarding claim 23, Sacha teaches the implantable hearing prosthesis system, wherein the implantable hearing prosthesis is configured to deliver stimulation signals to the recipient to evoke perception of sound by the recipient (paragraphs [0013], [0021], [0050], [0058], [0060] and [0062]).
Regarding claim 24, Sacha teaches the hearing device (3, 21 and/or 37, 39) that is configured to be positioned on an outer ear of the recipient (figures 1, 3, 4, 5, 7, 8, 9, 10).
Regarding claim 25, Sacha teaches the adapter (25, 27, 29, 31) that comprises a connector configured to mechanically mate with the hearing device (3, 7, 9, 11, 13, 19, figures 1, 3, 7, 8, 9 and paragraphs [0055]-[0057]).
Regarding claims 26-27, Sacha teaches the adapter (25, 27, 29, 31 and/or 3, 5, 9, 19, 67, 69) that is configured to receive output signals from the hearing device and generate the processed sound signals based on the output signals (figures 1, 3, 6, 8, 9, 17, paragraphs [0013], [0017], [0021], [0050] and [0056]-[0057]), wherein the adapter is configured to filter the output signals to generate filtered signals, and generate the processed sound signals based on the filtered signals (paragraph [0060]).
Claims 21-24 and 26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chung (US 2005/0209657).
Regarding claim 21, Chung teaches an implantable hearing prosthesis system comprising an implantable hearing prosthesis (13, 15, figures 2b, 2e) configured to be at least partially implanted in a recipient, and an adapter (11, 40, 41, 43, 45, 47, 80, 81, 83, 84, 85, 86, 103, 113, 203, 213, figures 2b, 2e, and 3a-3b) configured to be coupled to a hearing device (30, 31, 33, 35, 37, 38, 70, 71, 73, 75, 76, 77, 101, 111, 201, 211, figures 2b, 2e and 3a-3b) and to transcutaneously send processed sound signals from the hearing device to the implantable hearing prosthesis (paragraphs [0047] and [0078]), wherein the adapter (11, 40, 41, 43, 45, 47, 80, 81, 83, 84, 85, 86, 103, 113, 203, 213, figures 2b, 2e and 3a-3b) is a separate component from the implantable hearing prosthesis (13, 15) and the hearing device (30, 31, 33, 35, 37, 38, 70, 71, 73, 75, 76, 77, 101, 111, 201, 211, figures 2b, 2e and 3a-3b), and wherein the adapter is configured to couple to the hearing device (figures 2b, 2e, and 3a-3b).
Regarding claim 22, Chung teaches the implantable hearing prosthesis system, wherein the adapter (11, 40, 41, 43, 45, 47, 80, 81, 83, 84, 85, 86, figures 2b, 2e) is configured to wirelessly send the processed sound signals to the implantable hearing prosthesis (13, 15, figures 2b, 2e, paragraph [0053]).
Regarding claim 23, Chung teaches the implantable hearing prosthesis system, wherein the implantable hearing prosthesis (13, 15) is configured to deliver stimulation signals to the recipient to evoke perception of sound by the recipient (paragraph [0047]).
Regarding claim 24, Chung teaches the hearing device (101, 111, 201, 211) that is configured to be positioned on an outer ear of the recipient (figures 3a, 3b, paragraphs [0056] and [0058]).
Regarding claim 26, Chung teaches the adapter (11, 40, 41, 43, 45, 47, 80, 81, 83, 84, 85, 86, 103, 113, 203, 213, figures 2b, 2e, and 3a-3b) that is configured to receive output signals from the hearing device and generate the processed sound signals based on the output signals (paragraphs [0047] and [0078]).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Chung (US 2005/0209657).
Chung shows the adapter (11, 40, 41, 43, 45, 47, 80, 81, 83, 84, 85, 86, 103, 113, 203, 213, figures 2b, 2e, and 3a-3b) that comprises a connection (38, 112, 221, figures 2b, 3a, 3b) being configured to connect with the hearing device (101, 111, 201, 211, figures 2b, 3a, 3b). Chung does not specifically disclose a connector configured to mechanically mate with the hearing aid. However, providing a connector between the parts and/or cases in a hearing system is known in the art.
Therefore, it would have been obvious to one skilled in the art to provide any connector for the connection between the adapter and the hearing device in the system of Chung such as providing the adapter comprising a connector configured to mechanically mate with the hearing device for providing a better connector between the parts and/or cases in the system
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Chung (US 2005/0209657) in view of Sacha (US 2005/0033384).
Chung teaches the adapter that is configured to receive output signals and generate the processed sound signals based on the output signals. Chung does not specifically teach that the adapter is configured to filter the output signals to generate the filtered signal as claimed. However, providing the adapter being configured to filter the output signals to generate the filtered signals and generate the processed sound signals based on the filtered signals is known in the art.
Sacha teaches a cochlear implant system comprising an adapter that is configured to filter the output signals to generate filtered signals and generate the processed sound signals based on the filtered signals (figures 1, 3, 5, 6, 16, 17 and see paragraph [0060]).
Therefore, it would have been obvious to one skilled in the art to provide the adapter being configured to filter the output signals from the hearing device to generate filtered signals and generate the processed sound signals based on the filtered signals, as taught by Sacha, in the system of Chung for better sending and processing the signals in the implantable hearing prosthesis system.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Roehrlein et al. (US 2016/0375243) teaches a hearing assistance system comprising an implantable cochlear stimulator including a position element, a hearing assistance device including a battery and sound processor circuitry that converts electrical signals from a microphone into stimulation data, and a headpiece including a battery and a magnet that is magnetically attracted to the position element.
Goorevich et al. (US 2017/0359661) teaches a hearing prosthesis comprising sound input elements configured to receive sound signals, an electric sound processing path configured to convert at least a first portion of the sound signals into one or more output signals for use in delivering electrical stimulation to a recipient, and an acoustic sound processing path configured to convert at least a second portion of the sound signals into one or more output signals for use in delivering acoustical stimulation to a recipient.
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, Duc Nguyen can be reached at (571) 272-7503. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HUYEN D LE/Primary Examiner, Art Unit 2694 HL
September 17, 2026
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