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 .
Response to Arguments
Applicant's arguments filed 6/2/2026 have been fully considered but they are not persuasive.
Applicant argues on page 8 under the Remarks “For example, although Walsh discloses the use of an antenna coil, Walsh does not teach or suggest that the purported Walsh “dock” (i.e., the combined headpiece connector 1412 and power/data connector 1414) is separately connected to both the purported Walsh “power supply” (i.e., power portion 1404) and the antenna coil. Instead, Walsh merely discloses that the antenna coil is used to "power the operations of the case and/or charge the case's on-board power supply." To the extent that one could potentially take the position that the Walsh antenna is connected to "dock" at all, the antenna is connected to the power/data connector 1414 by way of the "power supply," not "separately connected" as claimed. Additionally, there is no reason to modify the Walsh case so as to add a separate connection because no separate connection to the antenna is needed on the Walsh body worn case.” The Examiner respectfully disagrees.
First Walsh clearly discloses that the case may include an antenna and “may also include other power sources such as a rechargeable or primary battery”, see par. [0135]. Walsh also discloses that the “main portion 1402, power portion 1404 and control portion 1406 in the illustrated implementation are separate structural elements that may be physically and electrically connected (or ‘docked’), disconnected from one another, and re-connected.” (par. [0147]). Thus, the embodiment of Fig. 44 discloses a power supply 1404 that is separate from dock 1412, 1414 as it is removable/able to be disconnected. In a separate embodiment, the antenna 1010 is configured to charge the on-board power supply and can be used in conjunction with other power sources (par. [0135]). Since power supply 1404 can be removably coupled (disconnected from the dock) while the antenna stays within the dock, the combination established by Walsh provides for two power sources (an antenna and power supply 1404) that are separately connected to the dock. In other words, the dock is separately connectable to the antenna and power supply 1404. The rejection is therefore maintained.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim 11 includes the limitation “means…for maintaining the position of the inductive coupled over the implant receiver”. Applicant’s specification never uses the term “means” and instead only describes a magnet that performs the function of maintaining the position of the headpiece transmitter over the implant. For the purposes of examination, the Examiner will interpret this “means” as a magnet.
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 11-19 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. Applicant amended claim 11 to include “means, associated with the inductive coupler, for maintain the position of the inductive coupler over the implant receiver”. However, Applicant’s specification never used the broad term “means” and only provides for a magnet for this function. The Examiner suggests amending the claim to recite only a magnet since the specification does not provides support for any broader disclosure commensurate in scope with “means”.
Claims 12-19 are rejected due to their dependence on Claim 11.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Walsh et al. (2012/0041517).
Regarding Claims 1, 4 and 5, Walsh discloses a case having a main portion 1402; a cover 1442 moveable relative to the main portion such that the case has an open state and a closed state where the main portion and the cover define a storage area 1410 (par. [0148, 0154]; Fig. 44; a power supply 1404 (such as a rechargeable power supply, see par. [0149]) within the main portion; and a dock 1412, 1414 within the storage area, operably connected to the power supply and configured to dock the behind-the-ear processor unit (par. [0148]; Fig. 44). Walsh further discloses that the “main portion 1402, power portion 1404 and control portion 1406 in the illustrated implementation are separate structural elements that may be physically and electrically connected (or ‘docked’), disconnected from one another, and re-connected.” (par. [0147]). The embodiment of Fig. 44 does not include an inductive coupling. However, Walsh does disclose “Speech processor cases in accordance with the present inventions may be provided with an antenna coil, or equivalent structure, that that receives power through an inductive link from an external source. The power received may be used to power the operations of the case and/or charge the case's on-board power supply” (see par. [0121]) and further notes, in the embodiment of Fig. 26, “…a case 1000 in accordance with at least one of the present inventions that receives power to an antenna coil 1010 or equivalent structure through an inductive link 1020 from an external source 1030. The case 1000 may also include other power sources such as a rechargeable or primary battery as explained above with reference to FIG. 25. The inductive link 1020 provide operational power for the desired functions of a case of the present invention.” Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device in the embodiment of Fig. 44 of Walsh to include an inductive coupler operably connected to the power supply and the BTE unit, as taught more generally by Walsh in par. [011] and more specifically with the embodiment of Fig. 26, for the purpose of powering the operations of the case and/or charge the case's on-board power supply.
Since the combination provides that the power supply 1404 can be removably coupled (disconnected from the dock) while the antenna stays within the dock, the combination established by Walsh provides for two power sources (an antenna and power supply 1404) that are separately connected to the dock. In other words, the dock is separately connectable to the antenna and power supply 1404.
Regarding Claim 2, Walsh discloses the cover 1442 is separable from the main portion 1402 (see Fig. 45).
With regard to Claim 3, Walsh discloses the cover 1442 and main portion 1402 are connectable via a hinge 1444 (Fig. 47, par. [0154]).
Regarding Claim 6, Walsh discloses the main portion includes a charging port 1422, 1424 operably connected to power supply 1420 (Fig. 30).
In regard to Claim 7, Walsh discloses the main portion (case) can include a microphone (par. [0126]).
Regarding Claim 8, Walsh discloses the BTE unit includes a headpiece port 106b that is connectable to a headpiece connector 1412 (Fig. 44; par. [0148]) This would provide connection to any of the combination of power sources (antenna and/or rechargeable battery) as disclosed in the combination of Claim 1..
In regard to Claim 9, Walsh discloses the dock 1414 has contacts that can connect to respective contacts 1562 of BTE portion 116b (Fig. 42, 43; par. [0169]).
Claims 10-19 are rejected under 35 U.S.C. 103 as being unpatentable over Walsh et al. (2012/0041517) in view of Lee et al. (2017/0239476).
Regarding Claims 10, 11, 14 and 15, Walsh discloses a case having a main portion 1402; a cover 1442 moveable relative to the main portion such that the case has an open state and a closed state where the main portion and the cover define a storage area 1410 (par. [0148, 0154]; Fig. 44; a power supply 1404 (such as a rechargeable power supply, see par. [0149]) within the main portion; and a dock 1412, 1414 within the storage area, operably connected to the power supply and configured to dock the behind-the-ear processor unit (par. [0148]; Fig. 44). Walsh further discloses that the “main portion 1402, power portion 1404 and control portion 1406 in the illustrated implementation are separate structural elements that may be physically and electrically connected (or ‘docked’), disconnected from one another, and re-connected.” (par. [0147]). The embodiment of Fig. 44 does not include an inductive coupling. However, Walsh does disclose “Speech processor cases in accordance with the present inventions may be provided with an antenna coil, or equivalent structure, that that receives power through an inductive link from an external source. The power received may be used to power the operations of the case and/or charge the case's on-board power supply” (see par. [0121]) and further notes, in the embodiment of Fig. 26, “…a case 1000 in accordance with at least one of the present inventions that receives power to an antenna coil 1010 or equivalent structure through an inductive link 1020 from an external source 1030. The case 1000 may also include other power sources such as a rechargeable or primary battery as explained above with reference to FIG. 25. The inductive link 1020 provide operational power for the desired functions of a case of the present invention.” Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device in the embodiment of Fig. 44 of Walsh to include an inductive coupler operably connected to the power supply and the BTE unit, as taught more generally by Walsh in par. [011] and more specifically with the embodiment of Fig. 26, for the purpose of powering the operations of the case and/or charge the case's on-board power supply.
The combination as disclosed by Walsh does disclose the use of magnets to align and secure components (par. [0160]) but does not disclose a magnet encircled by the inductive coupler (antenna). However, in the same field of endeavor as cochlear implants, Lee discloses providing a magnet 100 that is encircled by the antenna (inductive coupler) for the purpose of ensuring proper alignment and position of two coupling antennas (par. [0069]). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device in the Walsh reference to include a magnet encircled by an antenna, as taught and suggested by Lee, for the purpose of ensuring proper alignment and position of two coupling antennas.
Regarding Claim 12, Walsh discloses the cover 1442 is separable from the main portion 1402 (see Fig. 45).
With regard to Claim 13, Walsh discloses the cover 1442 and main portion 1402 are connectable via a hinge 1444 (Fig. 47, par. [0154]).
Regarding Claim 16, Walsh discloses the main portion includes a charging port 1422, 1424 operably connected to power supply 1420 (Fig. 30).
In regard to Claim 17, Walsh discloses the main portion (case) can include a microphone (par. [0126]).
Regarding Claim 18, Walsh discloses the BTE unit includes a headpiece port 106b that is connectable to a headpiece connector 1412 (Fig. 44; par. [0148]) This would provide connection to any of the combination of power sources (antenna and/or rechargeable battery) as disclosed in the combination of Claim 1..
In regard to Claim 19, Walsh discloses the dock 1414 has contacts that can connect to respective contacts 1562 of BTE portion 116b (Fig. 42, 43; par. [0169]).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ALLEN PORTER whose telephone number is (571)270-5419. The examiner can normally be reached Mon - Fri 9:00-6:00 EST.
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, Carl Layno can be reached at 571-272-4949. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALLEN PORTER/Primary Examiner, Art Unit 3796
Prosecution Insights