DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The specification, as original filed, does not disclose that the flex antenna includes at least one cutout for at least a portion of the power source to reduce loss from magnetic and electrical component within the aperture as now claimed in claims 2 and 14. As disclosed in paragraph [0048] of the original specification for Figures 12A-12C: “the shape of the antenna includes a first side that is contoured to be complementary to a portion of the battery circumference” and “the design balances the design goal of a larger loop aperture with the design goal of reducing loss from any magnetic and electrical components within the aperture”. As disclosed in paragraph [0049] in the original specification for Figures 13A-13C: “An axis through the center of the aperture of the loop is substantially parallel to a lengthwise direction of the device. The illustrated antenna 1330 includes a first portion 1343, a second portion 1344 and a third portion 1345. The second and third portions are electrically parallel. The design balances the design goal of a larger loop aperture with the design goal of reducing loss from any magnetic and electrical components within the aperture (e.g. the battery is not with an aperture formed between the first and second portions or an aperture formed between the first and third portions)”. As disclosed in paragraph [0050] in the original specification for Figures 14A-14C: “The second and third portions are electrically parallel. The design balances the design goal of a larger loop aperture with the design goal of reducing loss from any magnetic and electrical components within the aperture (e.g. the battery is not with the loop)”. According to the original specification, it appears that the flex antenna includes the shape of the antenna including a first side that is contoured to be complementary to a portion of the battery circumference” and/or “the battery is not with the loop” of the antenna, and “the design balances the design goal of a larger loop aperture with the design goal of reducing loss from any magnetic and electrical components within the aperture”.
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 2-21, as best understood with regarding 112, 1st, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,966,035 and claims 1-20 of U.S. Patent No. 12,041,420. Although the claims at issue are not identical, they are not patentably distinct from each other because they are claiming a method and an apparatus of a hearing device comprising a housing including an outer shell, a power source within the housing, a radio circuit within the housing and electrically connected to the power source, a flex antenna having an aperture substantially parallel to a lengthwise direction of the hearing device, or an aperture with at least one loop in a plane substantially parallel to the long axis of the housing or an aperture oriented orthogonal to an axis of symmetry of the hearing assistance device, wherein the radio circuit is at least substantially within the aperture, wherein the flex antenna includes a first side that is contoured to be complementary to a portion of a circumference of the power source, and wherein the power source is not within the aperture thereby reducing loss from magnetic and electrical components within the aperture, and a transmission line configured to electrically connect the flex antenna to the radio circuit.
The limitations in claims 1-20 of U.S. Patent No. 10,966,035 and claims 1-20 of U.S. Patent No. 12,041,420 cover the limitations in claims 2-21 of the present invention.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 2-21 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Niederdrank et al. (US 2008/0095387) in view of Zhang (US 2007/0080889).
Regarding claims 2, 6 and 14, as best understood with regarding 112, 1st, Niederdrank et al. teaches a method and an apparatus of a hearing assistance device comprising a housing having an outer shell (18, 35, figures 2, 4), a power source (19) within the housing, a radio circuit (25 and see paragraphs [0037]-[0038]) within the housing and electrically connected to the power source, a flex antenna (29) having an aperture (figures 2, 3, paragraph [0034]), wherein the radio circuit is at least substantially within the aperture (figure 2), and wherein a transmission line is integrally formed with the flex antenna (29) and configured to electrically connect to the radio circuit (25, [0034]-[0035] and [0038]).
Niederdrank et al. does not specifically disclose the flex antenna configured to have the aperture substantially parallel to the lengthwise direction of the hearing device as claimed. However, providing a flex antenna configured to have an aperture substantially parallel to a long axis or a lengthwise direction of the hearing device is well known in the art.
Zhang teaches a hearing device comprising a flex antenna that is attached and wrapped around the inner surface or the outer surface of the shell of the housing and has an aperture substantially parallel to the long axis or a lengthwise direction of a housing of the hearing device (figures 2, 10, 11-14, 18-21 and see paragraphs [0030]-[0031], [0036], [0043] and [0047]-[0051]).
Therefore, it would have been obvious to one skilled in the art to provide any structure and/or configuration for the flex antenna in the system of Niederdrank such as providing the flex antenna having the aperture substantially parallel to the lengthwise direction of a housing of the hearing device, as taught by Zhang for achieving high sensitivity and providing optimal hearing performance for the system.
Further, Niederdrank et al. does not specifically disclose the flex antenna including a side that is contoured to be complimentary to a portion of a circumference of the power source or a cutout portion for at least a portion of the power source as claimed. However, Niederdrank et al. does teach the flex antenna being arranged and positioned adjacent to the power source (19, figure 2).
Therefore, it would have been obvious to one skilled in the art to provide any side of the flex antenna in the system of Niederdrank et al. being arranged and positioned adjacent to the power source such as providing a first side of the flex antenna that is contoured to be complementary to a portion of the circumference of the power source or includes a cutout portion for at least a portion of the power source for providing an optimal performance and better providing an arrangement depending on the type and the size of the hearing device thereby reducing loss from magnetic and electrical components within the aperture.
Regarding claims 3-4 and 15-16, Zhang teaches the portion of the flex antenna that is conformed to an inner surface and/or an outer surface of the outer shell of the housing (figures 2, 10, 11-14, 18-21 and see paragraphs [0030], [0036], [0043] and [0047]-[0051]).
Regarding claims 5 and 17, Zhang teaches the flex antenna that is configured to wrap widthwise around a surface of the outer shell of the hearing device (figures 2, 10, 11-14, 18-21 and see paragraphs [0030]-[0031], [0036] and [0047]-[0048]).
Regarding claims 7-9, Niederdrank et al. in view of Zhang teaches the flex antenna that includes a conductor layer (29) between a plurality of coating levels (34, dielectric). Further, it is well known in the art to provide a polyimide for the dielectric or insulating material and to provide copper for the metallic conductor.
Therefore, it would have been obvious to one skilled in the art to provide the dielectric layers including a polyimide material and to provide the conductor layer including copper in the system of Niederdrank et al. in view of Zhang for an alternate choice and better providing an optimal performance to the system.
Regarding claim 10, Niederdrank et al. in view of Zhang teaches the flex antenna that is symmetrical such that the flex antenna can be used for devices for either left or right ears of a wearer (figures 18-21 and paragraph [0056] in Zhang).
Regarding claim 11, Niederdrank et al. teaches the device comprising a microphone (21), a receiver (23) and signal processing circuitry connected to the flex antenna (29), the microphone (21) and the receiver (23, paragraphs [0033] and [0038]).
Regarding claims 12-13, Niederdrank et al. in view of Zhang teaches the hearing device that include a hearing aid (18, 35 in Niederdrank et al.; and figures 18-21 in Zhang), wherein the hearing aid includes a behind-the-ear (BTE) hearing aid, an on-the-ear (OTE) hearing aid, an in-the-ear (ITE) hearing aid, or a completely-in-the-canal (CIC) hearing aid (figures 2, 4 in Niederdrank; and figures 18-21, paragraphs [0002] and [0047]-[0048] in Zhang).
Regarding claim 18, Niederdrank et al. teaches the method comprising electrically connecting the radio circuit to a receiver (23) in the housing (18, figure 2), wherein the receiver (23) is not within the aperture (figure 2).
Regarding claim 19, Niederdrank et al. teaches the method comprising electrically connecting the radio circuit (25) to a microphone (21) in the housing (18, figure 2), the microphone configured to receive acoustic signals, wherein the microphone is not within the aperture (figure 2).
Regarding claim 20, Niederdrank et al. teaches the method comprising electrically connecting the radio circuit (25) to a signal processing unit including circuitry configured for processing signals received by the microphone (paragraph [0033]).
Regarding claim 21, Niederdrank et al. teaches the signal processing unit that is further configured to process signals received by the flex antenna (paragraphs [0033] and [0038]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fischer et al. (US 2005/0244024) teaches an antenna for a hearing aid, wherein the antenna is formed as an electrically conducting layer in the material of the housing or the hearing device housing.
Adel et al. (US 2008/0272980) teaches an antenna for wireless data transmission to a hearing aid, where the antenna is applied to the outer side of the hearing aid body.
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, Fan Tsang can be reached at (571) 272-7547. 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
January 4, 2026