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 is/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(s) 1 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 11 of copending Application No. 18739842 (reference application). 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 covered by the scope of the claims in the patent with obvious wording variations as shown by example in the table below.
18739855
18739842
1. A method comprising: determining whether a state of an external unit of a hearing device is one of (i) a coupled state when the external unit and a stimulation unit of the hearing device are coupled or (ii) a decoupled state when the external unit and the stimulation unit are decoupled; and providing by the external unit one of (i) a first user interface when the determined state is the coupled state or (ii) a second user interface when the determined state is the decoupled state, wherein the second user interface provides access to a greater number of functions of the hearing device than first user interface provides.
11.A method, comprising: receiving, by an external unit configured to be worn by a recipient of an implantable stimulation unit, data from the stimulation unit; determining that the external unit is in a coupled state with the stimulation unit in response to receiving the data from the stimulation unit; in response to determining that the external unit is in a coupled state with the stimulation unit, provide a first visual display at one or more visual-output components of the external unit; determining that the external unit has not received data from the stimulation unit within a period of time; in response to determining that the external unit has not received data from the stimulation unit within the period of time, determining that the external unit is in a decoupled state with the stimulation unit; in response to determining that the external unit is in a decoupled state with the stimulation unit, displaying a second visual display at the one or more visual-output components of the external unit; wherein the first visual display and the second visual display indicate different types of information to a user.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim(s) 9-20 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim(s) 9-20 of copending Application No. 14867741 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
18739855
14867741
9. A hearing device system comprising: a stimulation unit; and an external unit comprising at least one user-interface component and configured to provide, via the at least one user-interface component, (i) a first user interface when the external unit is coupled to the stimulation unit or (ii) a second user interface when the external unit is decoupled from the stimulation unit, wherein functionalities provided via the second user interface differ from functionalities provided via the first user interface, and wherein the external unit provides fewer functionalities via the first user interface than via the second user interface.
9. A hearing device system comprising:a stimulation unit; and an external unit comprising at least one user-interface component and configured to provide, via the at least one user-interface component, (i) a first user interface when the external unit is coupled to the stimulation unit or (ii) a second user interface when the external unit is decoupled from the stimulation unit, wherein functionalities provided via of the second user interface differs from functionalities provided via the first user interface, and wherein the external unit provides fewer functionalities via the first user interface than via the second user interface.
Allowable Subject Matter
Claim(s) 2-8 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.
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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February 7, 2026
/PHYLESHA DABNEY/Patent Examiner, Art Unit 2694