DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 1-20 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.
Claim 1, 7-9 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 32, 34, 35, 38 of U.S. Patent No. not issued yet (US Application No. 18739833. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of the claims in the present application are anticipated by the scope of the claims in the patent with obvious wording variations as shown by the example in the table below.
18739842
18739833
1.An external unit configured to be worn by a recipient, comprising: one or more visual-output components; and circuitry configured to: determine that the external unit is coupled with a stimulation unit configured to be implanted in the body of the recipient; in response to determining that the external unit is coupled with the stimulation unit, configure the one or more visual-output components to provide a first visual display; determine that the external unit is decoupled from the stimulation unit; in response to determining that the external unit is decoupled from the stimulation unit, configure the one or more visual-output components to provide a second visual display that is different from the first visual display.
32. (New) An external unit configured to be worn by a recipient, comprising: a plurality of visual-output components;a capacitive touch interface; and at least one processor configured to: determine whether the external unit is coupled with a stimulation unit configured to be implanted in the recipient or decoupled from the stimulation unit, configure at least one of the plurality of visual-output components to provide a first visual display when the external unit is coupled with the stimulation unit and to provide a second visual display when the external unit is coupled with the stimulation unit, and in response receiving at least one user input via the capacitive touch interface, change at least one operation of the external unit and activate one or more of the plurality of visual-output components to indicate the change in the at least one operation of the external unit.
Allowable Subject Matter
Claim(s) 2-6, 10 is/are 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.
Claims 11-20 is/are allowed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHYLESHA DABNEY whose telephone number is (571)272-7494. The examiner can normally be reached Monday - Wednesday and Friday 10:30-4:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fan Tsang can be reached at 5712727547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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January 10, 2026
/PHYLESHA DABNEY/Patent Examiner, Art Unit 2694