DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Objections
Claim 23 is objected to because of the following: on line 1, before “second”, --the--should be inserted for the consistency. Appropriate correction is required.
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 2-25 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 formed in a flex circuit and/or forming a loop, the flex circuit including a first portion and one or more additional portions bent relative to the first portion to conform to the housing and to form an aperture, or wherein the flex antenna or looping the flex antenna includes a first side that is contoured to be complementary to a portion of a circumference of the power source, the flex antenna includes a second side that is contoured to follow a first portion of the housing, and a third side that is contoured to follow a second portion of the housing, and wherein the second side includes a bend configured to improve polarization for the antenna, 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 2-25 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 2-25 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, 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, an antenna or a flex antenna (the coil structure 29) having an aperture (figures 2, 3, paragraph [0034]), wherein a transmission line is integrally formed with the antenna or 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 antenna or the flex antenna formed in a flex circuit, and the flex circuit including a first portion and one or more additional portions or at least one additional portion bent relative to the first portion to conform to the housing and to form the aperture as claimed in claims 2 and 14. However, providing an antenna or an antenna being a flex antenna formed in a flex circuit, the flex circuit including a first portion and one or more additional portions bent relative to the first portion to conform to the housing and to form an aperture is well known in the art.
Zhang teaches a hearing device comprising a flex antenna (10, 101, 121, 131, 151, figures 2, 9, 10, 11-14, 18-21) that is attached and wrapped around the inner surface or the outer surface of the shell of the housing, wherein the flex antenna formed in a flex circuit (10, 101, 103, 121, 123, 131, 151, 153, figures 2, 9, 10, 11-14, 18-21) that includes a first portion and one or more additional portions bent relative to the first portion to conform to the housing (note the antenna portions and/or the vertical transition antenna portions in figures 2, 9, 10, 11-14, 18-21) and to form an aperture as claimed (figures 2, 9, 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 antenna or the flex antenna in the system of Niederdrank such as providing an antenna or an antenna being the flex antenna formed in a flex circuit, and the flex circuit including a first portion and one or more additional portions or at least one additional portion bent relative to the first portion to conform to the housing and to form an aperture, as taught by Zhang, for achieving high sensitivity and providing an optimal hearing performance for the system.
Regarding claims 3-4 and 15-16, Zhang teaches 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 in Niederdrank, 101, 121, 131, 151, figures 11-14 in Zhang) sandwiched between the flexible dielectric material, coating levels or a plurality of dielectric layers (34, dielectric in Niederdrank; and 103, 123, 132, 153, figures 11-14 and paragraphs [0038]-[0043] in Zhang). 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 material or 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 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]).
Regarding claim 22, Niederdrank et al. in view of Zhang teaches the one or more additional portions that include a second portion and a third portion (note the antenna portions and/or the vertical transition antenna portions of the antenna 101, 121, 131, 151 in figures 11-14 in Zhang), wherein the second portion and the third portion are each bent relative to the first portion (note the antenna portions and/or the vertical transition antenna portions of the antenna 101, 121, 131, 151 in figures 11-14 in Zhang).
Regarding claim 23, as broadly claimed, Niederdrank et al. in view of Zhang shows the second and third portions that are substantially parallel (note the antenna portions of the antenna 101, 121, 131, 151 in figures 11-14 in Zhang).
Regarding claim 24, Niederdrank et al. in view of Zhang teaches the hearing device, wherein the first portion, the second portion and the third portion of the flex circuit conform to an inner surface of the outer shell (figures 2, 10, 11-14, 18-21 and see paragraphs [0030], [0036], [0043] and [0047]-[0051] in Zhang).
Regarding claim 25, Niederdrank et al. in view of Zhang teaches the hearing device, wherein the first portion, the second portion and the third portion of the flex circuit conform to an outer surface of the outer shell (figures 2, 10, 11-14, 18-21 and see paragraphs [0030], [0036], [0043] and [0047]-[0051] in Zhang).
Response to Arguments
Applicant's arguments filed 05/04/2026 have been fully considered but they are not persuasive.
Responding to the arguments about the Double Patenting Rejection, the rejections of claims 2-25 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 have been maintained since a Terminal Disclaimer has not been filed.
Responding to the arguments about the rejection under 35 USC 112 (a) or 35 USC 112 (pre-AIA ), first paragraph, the 112, 1st rejection has been dropped since claims 2 and 14 have been fixed and amended.
Responding to the arguments about the rejection of claims under 103, the Examiner refers to the Office Action. Further, the Applicant should note that Niederdrank et al. does teach an antenna or a flex antenna (the coil structure 29) having an aperture (figures 2, 3, paragraph [0034]), and a transmission line that is integrally formed with the antenna or 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 antenna or the flex antenna formed in a flex circuit, and the flex circuit including a first portion and one or more additional portions or at least one additional portion bent relative to the first portion to conform to the housing and to form the aperture as claimed in claims 2 and 14. However, providing a flex antenna or an antenna being a flex antenna formed in a flex circuit, and the flex circuit including a first portion and one or more additional portions bent relative to the first portion to conform to the housing and to form an aperture is well known in the art.
Zhang teaches a hearing device comprising a flex antenna (10, 101, 151, 121, 131, figures 2, 9, 10, 11-14, 18-21) that is attached and wrapped around the inner surface or the outer surface of the shell of the housing, wherein the flex antenna formed in a flex circuit (10, 101, 103, 121, 123, 131, 151, 153, figures 2, 9, 10, 11-14, 18-21) that includes a first portion and one or more additional portions or at least one additional portion bent relative to the first portion to conform to the housing (note the antenna portions and/or the vertical transition antenna portions in figures 2, 9, 10, 11-14, 18-21) and to form an aperture as claimed (figures 2, 9, 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 antenna or the flex antenna in the system of Niederdrank such as providing an antenna or an antenna being the flex antenna formed in a flex circuit, and the flex circuit including a first portion and one or more additional portions or at least one additional portion bent relative to the first portion to conform to the housing and to form an aperture, as taught by Zhang, for achieving high sensitivity and providing an optimal hearing performance for the system.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Duc Nguyen can be reached at (571) 272-7503. 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
July 16, 2026
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