DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 21-40 are pending.
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.
Claim(s) 21 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. Issue number not available (US Application No. 18739833). Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of the claims in the present application are covered by the scope of the claims in the patent with obvious wording variations as shown by example in the table below.
18625466
18739833
21. A method comprising: determining whether an external component of an implantable medical device system is either in (i) a coupled state in which the external component is being worn by a recipient or (ii) a decoupled state in which the external component is not being worn by a recipient; providing, with at least one recipient-associated device linked with the external component, a first type of user-interaction when the determined state is the coupled state; and providing, with the at the one or more recipient-associated device, a second type of user- interaction when the determined state is the decoupled state.
1. (Previously Presented) A method, comprising: determining, by at least one processor, whether a state of an external unit of a hearing device is one of (i) a coupled state when the external unit and a stimulation unit of the hearing device are coupled or (ii) a decoupled state when the external unit and the stimulation unit are decoupled; when the determined state is the coupled state, providing, by the external unit via at least one visual-output component, an at least first visual display; and when the determined state is the decoupled state, providing, by the external unit via the at least one visual-output component, an at least second visual display, wherein the at least second visual display is different from the at least first visual display, and wherein the at least first visual display and the at least second visual display indicate different types of information to a user.
Claim(s) 21-23 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1, 4-5 of U.S. Patent No. 9643018 (US Application No. 14867741). Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of the claims in the present application are covered by the scope of the claims in the patent with obvious wording variations as shown by example in the table below.
18625466
9643018
21. (Original) A method comprising: determining whether an external component of an implantable medical device system is either in (i) a coupled state in which the external component is being worn by a recipient or (ii) a decoupled state in which the external component is not being worn by a recipient; providing, with at least one recipient-associated device linked with the external component, a first type of user-interaction when the determined state is the coupled state; and providing, with the at the one or more recipient-associated device, a second type of user- interaction when the determined state is the decoupled state.
22. (Original) The method of claim 21, wherein providing the first type of user-interaction comprises providing, via a user interface component of the at least one recipient-associated device, a first user interface when the determined state is the coupled state; and wherein providing the second type of user-interaction comprises providing, via the user interface component of the at least one recipient-associated device, a second user interface when the determined state is the decoupled state, wherein the second user interface is different from the first user interface.
23. (Original) The method of claim 22, wherein the second user interface provides access to a greater number of hearing device functions than the first user interface.
1. (Original) A method comprising: determining whether a state of an external unit of a hearing device is one of (i) a coupled state when the external unit and a stimulation unit of the hearing device (para. 0026, defined as implanted in the recipient’s body) are coupled or (ii) a decoupled state when the external unit and the stimulation unit are decoupled; and providing by the external unit one of (i) a first user interface when the determined state is the coupled state or (ii) a second user interface when the determined state is the decoupled state, wherein the second user interface provides access to a greater number of functions of the hearing device than first user interface provides.
4. (Original) The method of claim 1, wherein providing the first user interface and the second user interface comprises: receiving at the external unit (recipient associated device) a user input that includes a change to a setting of a selected sound-processing parameter, wherein the sound-processing parameter is used by a sound processor of the hearing device to either process sounds or generate stimulation signals, and wherein more sound-processing parameters are selectable when the external unit provides the second user interface than when the external unit provides the first user interface; and processing the user input to apply the change to the selected sound-processing parameter.
5. (Original) The method of claim 4, wherein each sound-processing parameter that is selectable when the external unit provides the first user interface is selectable when the external unit provides the second user interface.
Claim Rejections - 35 USC § 102
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 –
Claim(s) 21-22, 24 and 30-31, 33 is/are rejected under 35 U.S.C. 102(a1) as being ancitipated by Single (US Publication No. 20050078846).
Regarding claims 21-22, 24, Single teaches a method comprising: determining whether an external component of an implantable medical device system is either in (i) a coupled state in which the external component is being worn by a recipient or (ii) a decoupled state in which the external component is not being worn by a recipient (abstract: monitoring means for determining the presence or absence of the implanted coil relative to the external antenna coil); providing, with at least one recipient-associated device linked with the external component, a first type of user-interaction when the determined state is the coupled state; and providing, with the at the one or more recipient-associated device, a second type of user- interaction when the determined state is the decoupled state (paragraph [0029, 0035, 0056] first interface processes sound and the second interface goes into idle).
Regarding claim 30-31, 33, Single teaches an implantable medical device system, comprising: an external component; at least one processor (abstract: monitoring means for determining the presence or absence of the implanted coil relative to the external antenna coil); configured to determine whether the external component is either in (i) a coupled state in which the external component is being worn by a recipient or (ii) a decoupled state in which the external component is not being worn by a recipient; at least one recipient-associated device linked with the external component, wherein the at least one recipient-associated device is configured to provide a first type of user-interaction when the determined state is the coupled state, and provide a second type of user-interaction when the determined state is the decoupled state (paragraph [0029, 0035, 0056] first interface processes sound and the second interface goes into idle).
Allowable Subject Matter
Claims 25-29, 32, 34-40 is/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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHYLESHA DABNEY whose telephone number is (571)272-7494. The examiner can normally be reached Monday - Wednesday and Friday 10:30-4:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fan Tsang can be reached at 5712727547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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January 10, 2025
/PHYLESHA DABNEY/Patent Examiner, Art Unit 2694 , -