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 2-21 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) 2-4, 20-21 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-3, 19-20 of U.S. Patent No. 11849286 (US Application No. 18349949) 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.
18801946
18349949
2. (New) An ear-worn device configured to:
exhibit default operation according to a preset from among multiple presets, wherein:
the preset comprises a predetermined range of volumes that is predetermined when a wearer obtains the ear-worn device as an over-the-counter (OTC) ear-worn device;
the predetermined range of volumes for the preset has a predetermined maximum volume;
the predetermined maximum volume is not greater than an OTC maximum volume; and the OTC maximum volume is less than a maximum volume at which the ear-worn device is capable of operating;
prevent a wearer of the ear-worn device from adjusting a volume of sound output from the ear-worn device above the predetermined maximum volume for the preset;
receive input to unlock a prescription range of volumes having a prescription maximum volume that is greater than the OTC maximum volume; and
based on receiving the input to unlock the prescription range of volumes, enable the wearer of the ear-worn device to adjust the volume of the sound output from the ear-worn device above the OTC maximum volume, but prevent the wearer of the ear-worn device from adjusting the volume of the sound output from the ear-worn device above the prescription maximum volume.
4. (New) The ear-worn device of claim 2, wherein: a predetermined minimum volume is a minimum of the predetermined range of volumes for the preset, and prior to receiving the input, the ear-worn device is configured to prevent the wearer from adjusting the volume of the ear-worn device below the predetermined minimum volume; a prescription minimum volume is a minimum of the prescription range of volumes, and based on receiving the input, the ear-worn device is configured to prevent the wearer from adjusting the volume of the ear-worn device below the prescription minimum volume; and the predetermined minimum volume and the prescription minimum volume are different.
1. (Original) A system, comprising: an ear-worn hearing aid device configured to:
prevent a wearer of the ear-worn hearing aid device from adjusting a volume of sound output from the ear-worn hearing aid device outside an over-the-counter (OTC) range of volumes having a OTC maximum volume value, wherein:
the OTC range of volumes is pre-selected when the wearer obtains the ear-worn hearing aid device as an OTC ear-worn hearing aid device; and
the OTC maximum volume value is less than a maximum volume at which the ear-worn hearing aid device is capable of operating;
receive, following a professional fitting by a licensed professional, input to unlock a prescription range of volumes having a prescription maximum volume value that is greater than the OTC maximum volume value; and
based on receiving the input to unlock the prescription range of volumes:
enable the wearer of the ear-worn hearing aid device to adjust the volume of the sound output from the ear-worn hearing aid device above the OTC maximum volume value, but prevent the wearer of the ear-worn hearing aid device from adjusting the volume of the sound output from the ear-worn hearing aid device outside the prescription range of volumes.
.
Claim(s) 2-4, 20-21 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-3, 19-20 of U.S. Patent No. 12089006 (US Application No. 18481071) 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.
18801946
18481071
2. (New) An ear-worn device configured to:
exhibit default operation according to a preset from among multiple presets, wherein:
the preset comprises a predetermined range of volumes that is predetermined when a wearer obtains the ear-worn device as an over-the-counter (OTC) ear-worn device;
the predetermined range of volumes for the preset has a predetermined maximum volume;
the predetermined maximum volume is not greater than an OTC maximum volume; and the OTC maximum volume is less than a maximum volume at which the ear-worn device is capable of operating;
prevent a wearer of the ear-worn device from adjusting a volume of sound output from the ear-worn device above the predetermined maximum volume for the preset;
receive input to unlock a prescription range of volumes having a prescription maximum volume that is greater than the OTC maximum volume; and
based on receiving the input to unlock the prescription range of volumes, enable the wearer of the ear-worn device to adjust the volume of the sound output from the ear-worn device above the OTC maximum volume, but prevent the wearer of the ear-worn device from adjusting the volume of the sound output from the ear-worn device above the prescription maximum volume.
4. (New) The ear-worn device of claim 2, wherein: a predetermined minimum volume is a minimum of the predetermined range of volumes for the preset, and prior to receiving the input, the ear-worn device is configured to prevent the wearer from adjusting the volume of the ear-worn device below the predetermined minimum volume; a prescription minimum volume is a minimum of the prescription range of volumes, and based on receiving the input, the ear-worn device is configured to prevent the wearer from adjusting the volume of the ear-worn device below the prescription minimum volume; and the predetermined minimum volume and the prescription minimum volume are different.
2. (New) A system, comprising: an ear-worn hearing aid device configured to:
prevent a wearer of the ear-worn hearing aid device from adjusting a gain for a particular frequency band of sound output from the ear-worn hearing aid device outside an over-the-counter (OTC) range of gains for the particular frequency band, the OTC range of gains for the particular frequency band having a OTC maximum gain value for the particular frequency band, wherein:
the OTC range of gains for the particular frequency band is pre-selected when the wearer obtains the ear-worn hearing aid device as an OTC ear-worn hearing aid device; and
the OTC maximum gain value for the particular frequency band is less than a maximum gain for the particular frequency band at which the ear-worn hearing aid device is capable of operating;
receive, following a professional fitting by a licensed professional, input to unlock a prescription range of gains for the particular frequency band, the prescription range of gains for the particular frequency band having a prescription maximum gain value for the particular frequency band that is greater than the OTC maximum gain value for the particular frequency band; and
based on receiving the input to unlock the prescription range of gains for the particular frequency band:
enable the wearer of the ear-worn hearing aid device to adjust the gain for the particular frequency band of the sound output from the ear-worn hearing aid device above the OTC maximum gain value for the particular frequency band, but prevent the wearer of the ear-worn hearing aid device from adjusting the gain for the particular frequency band of the sound output from the ear-worn hearing aid device outside the prescription range of gains for the particular frequency band.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b), or the following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 2-21 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to claim(s) 2-19, the claim(s) is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01.
As per the claim, it is recited that there are 4 maximum volumes: a maximum volume, a predetermined maximum volume, a OTC maximum volume, and a prescription maximum volume.
As the claim is written it is not understood whether the “a maximum volume” defines one of the other 3 maximum volumes.
If the “a maximum volume” is a separate quantity, then it is not clear what it’s relationship is relative to the other three defined volumes.
With respect to claim(s) 20-21, the claim(s) is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01.
As per the claim, it is recited that there are 4 maximum volumes: a maximum volume, a predetermined maximum volume, a OTC maximum volume, and a prescription maximum volume.
As the claim is written it is not understood whether the “a maximum volume” defines one of the other 3 maximum volumes.
If the “a maximum volume” is a separate quantity, then it is not clear what it’s relationship is relative to the other three defined volumes.
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.
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 5712727547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
For general questions such as application status, Monday–Friday, 8:30AM -5:00PM, inquiry to:
Local: 571-272-1000
Toll-Free: 800-786-9199
TTY: 800-877-8339
Any response to this action should be mailed to:
Commissioner of Patents and Trademarks
P O Box 1450
Alexandria, VA 22313-1450
Or faxed to:
(703) 273-8300, for formal communications intended for entry and for informal or draft communications, please label "Proposed" or "Draft" when submitting an informal amendment.
Hand-delivered responses should be brought to:
Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
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.
July 11, 2026
/PHYLESHA DABNEY/Patent Examiner, Art Unit 2694
Prosecution Insights