Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Introduction
2. This action responds to the amendment filed on 10-27-2025. Claims 2, 12 and 21 have been amended and claims 2-11 have been withdrawn. Claims 12-21 are pending.
Continued Examination Under 37 CFR 1.114
3. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10-27-2025 has been entered.
Double Patenting
4. 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.
5. Claims 12-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,864,886. Although the claims at issue are not identical, they are not patentably distinct from each other because, the current (18/529,822) claim limitations are broader than claims 1-20 of U.S. Patent No. 11,864,886 as shown in the table below.
Instant Application No. 18/529,822
US PAT. 11,864,886
12. (Currently Amended) A system comprising: a tone generator configured to output a signal to cause a speaker to emit a tone; a compensation element coupled to an output of the tone generator, with the compensation element configured to: receive a communication from a control sub-system; and apply, based on the communication, a compensation to the signal; the speaker to emit the tone based on the signal; a microphone to detect the tone emitted by the speaker; and a sound pressure level (SPL) measurement element separate from the microphone, the SPL measurement element configured to receive data corresponding to the tone detected by the microphone, and determine an SPL of the tone detected by the microphone based on the data received.
1. A system comprising: a tone generator to: receive an indication of a tone to be emitted from headphones, and output a first signal to cause a speaker to emit the tone; a digital-to-analog converter (DAC) to generate an analog signal indicative of the tone by converting a signal indicative of the first signal from a digital domain to an analog domain; a speaker to emit the tone based on. the analog signal; a microphone to detect the tone emitted by the speaker; an analog-to-digital converter (ADC) to generate a digital signal. indicative of the tone detected by the microphone by converting a second signal indicative of the tone detected by the microphone from the analog domain to the digital domain; a sound pressure level (SPL) measurement element to: receive an indication of the tone detected by the microphone, and determine are SPL of the tone detected by the microphone, wherein the SPL is to be used to verify that the SPL is equal to an intended SPL for the tone, the SPL measurement element being separate from and coupled to the microphone via at least the ADC; and a compensation element coupled to an output of the tone generator, the compensation element to apply compensation to the first signal, wherein each of the tone generator, the DAC, the speaker, the microphone, the ADC, and the SPL measurement element is integrated into the headphones.
Claim Rejections - 35 USC § 102
6. 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 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.
7. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
8. Claims 12-16 and 18-21 are rejected under 35 U.S.C. 102a (2) as being anticipated by Blau et al.(US 2019/0320268).
Consider Claim 12, Blau teaches a system (see fig. 1) comprising:
a tone generator(see fig. 1(106)) configured to output a signal to cause a speaker to emit a tone(see figs. 1, 2, 4-8 and paragraphs[0063]- [0097]).;
a compensation element(See fig. 1(105)) coupled to an output of the tone generator, with the compensation element(see figs.1, 2. 4-10) configured to:
receive(see figs. 4-10) a communication from a control sub-system; and apply, based on the communication, a compensation to the signal(see figs. 1, 2, 4-8 and paragraphs[0115]- [0139]);
the speaker(see fig. 1(120)) to emit the tone based on the signal; a microphone(see fig. 1(125)) to detect the tone emitted by the speaker(see figs. 1, 2, 4-8 and paragraphs[0063]- [0097]); and
a sound pressure level (SPL) measurement element (see fig. 4) separate from the microphone(see fig. 1), the SPL measurement element configured to receive data corresponding to the tone detected by the microphone(see fig. 2), and determine an SPL of the tone detected by the microphone based on the data received
(see figs. 1, 2, 4-8 and paragraphs[0063]- [0097]).
Consider Claims 13 and 14, Blau teaches the system wherein the control sub-system is configured to output a second signal associated with the tone(see figs. 1, 2, 4-8 and paragraphs[0063]- [0097]); and the system wherein the control sub-system is further configured to: receive an indication of the SPL; and verify that the SPL is equal to an intended SPL for the tone(see figs. 1, 2, 4-8 and paragraphs[0063]- [0097]).
Consider Claims 15 and 16, Blau teaches the system with at least one of an amplitude of the tone or a frequency of the tone being based on an attribute of the second signal(see figs. 1, 2, 4-8 and paragraphs[0063]- [0097]); and the system wherein the attribute comprises one or more of a value, an amplitude, a frequency, a timing offset, a voltage offset(see figs. 1, 2, 4-8 and paragraphs[0063]- [0097]).
Consider Claims 18 and 19, Blau teaches the system further comprising a wireless communication element coupled with the tone generator and the SPL measurement element, and configured to receive communications from the SPL measurement element(see figs. 1, 2, 4-8 and paragraphs[0063]- [0097]); and the system wherein the wireless communication element is further coupled with the compensation element, and is further configured to provide communication between the compensation element and the control sub-system see figs. 1, 2, 4-10 and paragraphs[0115]- [0139]).
Consider Claims 20 and 21, Blau teaches the system wherein the speaker and the microphone are integrated into headphones, with the speaker and the microphone assembled to be directed toward an ear of a subject when the headphones are worn by the subject(see figs. 1, 2, 4-8 and paragraphs[0063]- [0097]); and the system comprising a buffer coupled to the microphone and configured to: receive analog signals from the microphone; and alter an amplitude of the analog signals; wherein the SPL measurement element is configured to determine, based on the analog signals, an SPL of the tone detected by the microphone(see figs. 1, 2, 4-8 and paragraphs[0063]- [0097]).
Claim Rejections - 35 USC § 103
9. 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 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.
10. 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.
11. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
12. Claim 17 is rejected under 35 U.S.C. 103(a) as being unpatentable over Blau et al.(US 2019/0320268) in view of Soli et al. (US PAT. 5,325,436).
Consider Claim 17, Blau does not explicitly teach the system wherein the compensation element is further configured to apply an equalization technique by attenuating sound using an inverted audiogram to create a linear frequency characteristic
However, Soli teaches the system wherein the compensation element is further configured to apply an equalization technique by attenuating sound using an inverted audiogram to create a linear frequency characteristic(see figs, 2-8 and col.5, line 1-col. 6, line 67).
Therefore, it would have obvious to one of ordinary skill in the art before the effective filling date the invention was made to combine the teaching of Soli in to the teaching of Blau to provide determined and compensated to restore the ability to have directional hearing in individuals wearing hearing aids. In one aspect a method involves finding the ratio of the unaided head related transfer function to the aided head related transfer function and then designing a hearing aid filter that is the inverse of that derived insertion effect, thereby restoring the ability to hear interaural differences in aided systems both in level and in time of arrival to improve hearing in the presence of noise. The insertion effects can be derived either through frequency domain analyses, using the above-mentioned transfer function calculations and measurements, or in another aspect through time domain analyses, using optimal filter calculations and measurement obtained using a successive data acquisition system that is subsequently time aligned by recording trigger pulses with the data.
Response to Arguments
13. Applicant's arguments filed on 10-27-2025 have been fully considered but they are not persuasive.
Double Patenting Rejections
Applicant respectfully traverses the rejection of claims 12-21 on the ground of non- statutory double patenting as being allegedly unpatentable over claims 1-20 of US 11,864,886.
The examiner respectfully submits that the Office has to demonstrate that at least the elements of “ a microphone to detect the tone emitted by the speaker; anda sound pressure level (SPL) measurement element separate from the microphone, the SPL measurement element configured to receive data corresponding to the tone detected by the microphone, and determine an SPL of the tone detected by the microphone based on the data received” as recited in claim 12, are specifically recited by or obvious over claims 1-20 of the US 11,8964,886 (emphases added). Therefore, the double patenting rejection based on US 11,864,886 should be maintained.
Applicant further argued that Blau or Soli, either individually or in combination, fails to disclose "a sound pressure level (SPL) measurement element separate from the microphone, the SPL measurement element configured to receive data corresponding to the tone detected by the microphone, and determine an SPL of the tone detected by the microphone based on the data received' (emphasis added) as is recited in amended independent claim 12(see the remarks page 7, last paragraph).
The examiner disagrees that argument respectfully. Blau discloses
a tone generator(see fig. 1(106)) configured to output a signal to cause a speaker to emit a tone(see figs. 1, 2, 4-8 and paragraphs[0063]- [0097]).;
a compensation element(See fig. 1(105)) coupled to an output of the tone generator, with the compensation element(see figs.1, 2. 4-10) configured to:
receive(see figs. 4-10) a communication from a control sub-system; and apply, based on the communication, a compensation to the signal(see figs. 1, 2, 4-8 and paragraphs[0115]- [0139]);
the speaker(see fig. 1(120)) to emit the tone based on the signal; a microphone(see fig. 1(125)) to detect the tone emitted by the speaker(see figs. 1, 2, 4-8 and paragraphs[0063]- [0097]); and
a sound pressure level (SPL) measurement element (see fig. 4) separate from the microphone(see fig. 1), the SPL measurement element configured to receive data corresponding to the tone detected by the microphone(see fig. 2), and determine an SPL of the tone detected by the microphone based on the data received(see figs. 1, 2, 4-8 and paragraphs[0063]- [0097]). It meets the limitation as recited in claim 12.
Conclusion
14. The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. Pandey et al. (US 2011/0206226) is cited to show other related the HEARING DIAGNOSTIC SYSTEM.
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Commissioner for Patents
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/LUN-SEE LAO/Primary Examiner, Art Unit 2691 US Patent and Trademark Office
Knox
571-272-7501
Date 03-12-2026