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 .
Preliminary Amendment
A preliminary amendment was received on 07/02/2024. Presently, claims 19-38 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.
In each of the below rejections based upon non-statutory double patenting rejections the reference patent claims a hearing device (in the reference patents the term “circuit for…output of combined audio” is used) determining volume settings and then adjusting to the new volume setting after a delay as claimed in the present set of claims.
Claims 19-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10,226,695. Although the claims at issue are not identical, they are not patentably distinct from each other because as explained above the present claims are broader than the reference claims in that the reference claims contain all of the limitations presented in the current claims.
Claims 19-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,013,989. Although the claims at issue are not identical, they are not patentably distinct from each other because as explained above the present claims are broader than the reference claims in that the reference claims contain all of the limitations presented in the current claims.
Claims 19-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 11,660,530. Although the claims at issue are not identical, they are not patentably distinct from each other because as explained above the present claims are broader than the reference claims in that the reference claims contain all of the limitations presented in the current claims.
Claims 19-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,980,809. Although the claims at issue are not identical, they are not patentably distinct from each other because as explained above the present claims are broader than the reference claims in that the reference claims contain all of the limitations presented in the current claims.
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)(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.
Claims 19, 20, 25, 27-30, 35, 37, and 38 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US Patent Application Publication No. 2014/0140539 to Urup.
With regard to claim 19, Urup discloses a system, the system comprising: a hearing device operable to adaptively control a first signal, according to a setting, to provide an audio output, (fig. 2; 0021; 0025-0029); generate a new value of the setting according to an input that is received at a particular time (0025-0029); adjust the setting from an old value to the new value according to a delay with respect to the particular time (0025-0029).
With regard to claim 20, Urup discloses that the hearing device is a headset (fig. 2; 0021).
With regard to claim 25, Urup discloses that the adaptive controlling comprises a volume adjustment of the audio output according to the setting (0025-0029).
With regard to claim 27, Urup discloses that the adjustment of the setting comprises a change of the setting form the old value to the new value after the delay (0025-0029).
With regard to claim 28, Urup discloses that the setting is adjusted according to a data set characterizing the hearing device (0025-0029; wherein this would necessarily be true as the volume of any speaker can only go so high or only go so low).
Claims 29, 30, 35, 37, and 38 are mirrored claims to claims 19, 20, 25, 27, and 28 and are rejected in like manner.
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.
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.
Claims 19, 21-24, 26, 29, 31-34 and 36 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication No. 2012/0052948 to Soelberg in view of Urup.
With regard to claim 19, Soelberg discloses a system, the system comprising: a hearing device operable to adaptively control a first signal, according to a setting, to provide an audio output, (fig. 1; 0013); generate a new value of the setting according to an input that is received at a particular time (fig. 5; 0019-0021).
Soelberg is not explicitly clear about adjusting the setting according to a delay. However, Urup teaches adjust the setting from an old value to the new value according to a delay with respect to the particular time (0025-0029).
With regard to claim 21, Soelberg discloses that the adaptive controlling comprises mixing the first signal with a second signal according to the setting (fig. 5; 0019-0021).
With regard to claim 22¸Soelberg discloses that the second signal is generated via a game console (fig. 5; 0011; 0019-0021).
With regard to claim 23, Urup teaches that the second signal is generated via a smartphone (0021).
With regard to claim 24, Soelberg discloses adaptive controlling further comprises applying a volume adjustment to the audio output according to the setting (fig. 5; 0019-0021).
With regard to claim 26, Soelberg discloses that the adjustment of the setting comprises applying incremental changes of the setting, during the delay, from the old value to the new value (fig. 5; 0019-0021).
Claims 29, 31-34, and 36 are mirrored claims to claims 19, 21-24; and 26 and are rejected in like manner.
It would have been obvious to one of ordinary skill in the art at the time of application to combine the teachings of Urup with the disclosure of Soelberg in order to ensure that a real change in noice level can be detected before the speaker volume level is adjusted (Urup at 0005).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jay Liddle whose telephone number is (571)270-1226. The examiner can normally be reached M-F 9-5.
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/Jay Trent Liddle/Primary Examiner, Art Unit 3715