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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/14/2024 & 11/21/2024 have been considered by the examiner.
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 9 of 18/644,393
A hearing instrument, comprising: a housing being worn in an ear of a user and having a concha portion and a canal portion protruding from said concha portion; a mechanically rigidly connected electronics unit having a battery, a signal processor and at least one microphone, said electronics unit being accommodated in said concha portion; a receiver accommodated, at least in part, in said canal portion, separately from said electronics unit; and a plurality of discrete elastic cushioning elements, said electronics unit being mechanically coupled to said housing only by way of said plurality of discrete elastic cushioning elements.
Claim 10 of 18/644,399
A hearing instrument, comprising: a housing being wearable in an ear of a user in an intended wearing position of the hearing instrument, said housing including a concha portion and a canal portion being thinner than said concha portion and protruding from said concha portion; a mechanically rigidly connected electronics unit including a battery, a signal processor and two microphones; and a receiver; said electronics unit being accommodated in said concha portion, said electronics unit having an upper side facing away from the head of the user and a lower side facing the head of the user, in the intended wearing position; each of said two microphones being disposed on said upper side of said electronics unit and centered relative to a horizontal plane, said horizontal plane being aligned approximately parallel to a transverse plane of the head of the user in the intended wearing position and intersecting said concha portion centrally.
Claim 9 of application number 18/644,393 (hereinafter referred to as ‘393) is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 18/644,399 in view of Shennib, US Patent Pub. 20090074220 A1.
‘399 claim 10 anticipates ‘393 claim 9, but fails to disclose a plurality of discrete elastic cushioning elements, said electronics unit being mechanically coupled to said housing only by way of said plurality of discrete elastic cushioning elements. However, Shennib teaches the concept of utilizing a discrete elastic cushion such as a viscoelastic damper disposed between the microphone and speaker electronic components (Shennib, paras 00012, 0029, 0043, claim 13). It would have been obvious to incorporate viscoelastic material around each one of the electronic components of the hearing device including speakers, microphones, rechargeable batteries, electronic circuitry etc of ‘399 claim 10, as taught in Shennib whereby one of ordinary skill can incorporate a plurality of viscoelastic material (three or more since there are three or more components listed above) since the ear device of ‘399 claim 10 includes a plurality of electronic components as listed above for the purpose of reducing vibration coupling between the aforementioned ear device components.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 9-10 & 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Higgins et al, US Patent Pub. 20230095933 A1, in view of Shennib, US Patent Pub. 20090074220 A1. (The Higgins et al and Shennib references are listed in IDS filed 8/14/2024)
Re Claim 9, Higgins et al discloses a hearing instrument (abstract), comprising: a housing being worn in an ear of a user and having a concha portion and a canal portion protruding from said concha portion (paras 0013, 0018, 0046, 0053: hearing device includes a canal portion that is input into wearer’s ear canal and a concha portion that will protrude outside the ear); a mechanically rigidly connected electronics unit having a battery, a signal processor and at least one microphone, said electronics unit being accommodated in said concha portion (fig. 6: rechargeable battery 202 with inherent electrical charge connector (para 0131), microphones 206, electronic circuitry 200 is also read as signal processor are all illustratively located within the concha portion of the ear device; para 0101); a receiver accommodated, at least in part, in said canal portion, separately from said electronics unit (fig. 6: receiver/speaker 210 is illustratively located within the canal portion of the ear device; para 0101); but fails to explicitly disclose a plurality of discrete elastic cushioning elements, said electronics unit being mechanically coupled to said housing only by way of said plurality of discrete elastic cushioning elements. However, Shennib teaches the concept of utilizing a discrete elastic cushion such as a viscoelastic damper disposed between the microphone and speaker electronic components (Shennib, paras 00012, 0029, 0043, claim 13). It would have been obvious to incorporate viscoelastic material around each one of the electronic components of the hearing device including speakers, microphones, rechargeable batteries, electronic circuitry etc. of Higgins et al, as taught in Shennib whereby one of ordinary skill can incorporate a plurality of viscoelastic material (three or more since there are three or more components listed above) since the ear device of Higgins et al includes a plurality of electronic components as listed above for the purpose of reducing vibration coupling between the aforementioned ear device components.
Claim 10 has been analyzed and rejected according to claim 9.
Claim 12 has been analyzed and rejected according to claim 9.
Claim 13 has been analyzed and rejected according to claim 9.
Re Claim 14, the combined teachings of Higgins et al and Shennib disclose the hearing instrument according to claim 9, but fail to explicitly disclose wherein said discrete elastic cushioning elements are formed from a fluoroelastomer or a silicone. Since Shennib discloses a viscoelastic material (Shennib, paras 00012, 0029, 0043, claim 13) and since silicone is a type of viscoelastic material with a hardness range of between 20 and 70; it would have been obvious to utilize silicone as a viscoelastic material of Shennib, as used to modify Higgins et al, for the purpose of using a vibration damping material that does not release harmful chemicals.
Claim 15 has been analyzed and rejected according to claim 14.
Claim 16 has been analyzed and rejected according to claim 9; comprising: a first hearing instrument according to claim 9 for a left ear of a user (Higgins et al, para 0010: combination left ear device and right ear device); and a second hearing instrument according to claim 9 for a right ear of the user (Higgins et al, para 0010: combination left ear device and right ear device).
Allowable Subject Matter
Claim 11 is 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.
The following is a statement of reasons for the indication of allowable subject matter for claim 11: The prior art does not teach or moderately suggest the following limitations:
Wherein: said housing has a housing opening formed therein; and at least one of said discrete elastic cushioning elements is embodied as a ring-shaped structure surrounding a perforation, and wherein said perforation is disposed flush with said housing opening such that said at least one discrete elastic cushioning element seals a space formed between said housing opening and said electronics unit vis-à-vis a residual interior of said housing.
Limitations such as these may be useful in combination with other limitations of claim 9.
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE C MONIKANG whose telephone number is (571)270-1190. The examiner can normally be reached Mon. - Fri., 9AM-5PM, ALT. Fridays off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Carolyn R Edwards can be reached at 571-270-7136. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GEORGE C MONIKANG/Primary Examiner, Art Unit 2692 02/06/2026
/CAROLYN R EDWARDS/Supervisory Patent Examiner, Art Unit 2692