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 .
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 .
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “orientation restriction section” in claim 223-224.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. Paragraph 0028-0031 mentions the structure – i.e. a hollow structure or elongated structure.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
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 231-232 is 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.
Claim 231 (232 by dependency) recites “and an ear device”. Examiner notes that claim 215 already mentions “an ear device”. It is unclear how many ear devices there are.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 217, 218, 219, 220 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 217 further limits “the ear device” which is not part of the claimed apparatus.
Claim 218 (219-220 by dependency) further limit the ear device which is not part of the claimed apparatus.
Claim 220 further limits the disorder which is not part of the apparatus.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 215, 225, 227-230 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Michel et al. (US 2013/0223666 A1 – cited by Applicant), hereinafter Michel.
Regarding Claim 215, Michel teaches: An apparatus comprising:
(i) an elongated section (figure 2 element 44 and 100);
(ii) a stop section associated with the elongated section; wherein the stop section is configured to contact a portion of an ear of a subject when the elongated section is inserted into the ear of the subject, thereby preventing further insertion of the elongated section into the ear of the subject (figure 2, element 48); and
(iii) a magnet associated with a first end of the elongated section (electromagnet 50); wherein the magnet is magnetically attracted to a magnetic element associated with an ear device (an electromagnet would be magnetically attracted to any magnetic element),
wherein the apparatus is configured to hold the ear device via at least a magnetic attraction between the magnet and the magnetic element of the ear device (any magnet is configured to hold other magnetic elements via magnetic attraction) during the insertion of the apparatus into the ear, thereby inserting the ear device into the ear; and
wherein the ear device is sized to the ear of the subject, such that when the ear device is inserted in the ear at a predetermined position and the apparatus is removed from the ear of the subject, a friction between the ear and the ear device overcomes the magnetic attraction to detach the ear device from the apparatus, thereby retaining the ear device at the predetermined position (paragraph 0002; Examiner notes that the ear device is not positively recited, and thus lacks patentable weight).
Regarding Claim 225, Michel teaches: A method of manipulating an ear device in an ear of a subject, wherein the ear device comprises a magnetic element (title; abstract), comprising:
(i) inserting the apparatus, of claim 215, that comprises the magnet into the ear of the subject (paragraph 0031-0038; 0050-0068; figure 3, figure 4);
(ii) activating the magnet; thereby providing a magnetic attraction between the magnetic element of the ear device and the magnet (paragraph 0062; title; abstract; figure 2-4); and
(iii) manipulating the apparatus; thereby manipulating the ear device in the ear of the subject (Examiner notes that insertion is manipulation; paragraph 0031-0038; 0050-0068; figure 3, figure 4).
Regarding Claim 227, Michel teaches: The method of claim 225, wherein the manipulating of the ear device is a distal translation of ear device (inserting the ear device into the ear can be considered distal translation; paragraph 0035-0044).
Regarding Claim 228, Michel teaches: The method of claim 225, wherein the manipulating of the ear device is a proximal translation of the ear device (inserting the ear device into the ear can be considered distal translation; paragraph 0035-0044; Examiner notes that it is implied that the device can be removed, and further notes that removal can be considered proximal translation; paragraph 0058-0063).
Regarding Claim 229, Michel teaches: A method of concealing an ear device comprising a magnetic element deep into an ear of a subject comprising:
(i) inserting the apparatus, of claim 215, that comprises the magnet into the ear of the subject (paragraph 0050-0068, title; abstract), wherein the apparatus is in contact with the ear device through a magnetic attraction to the magnetic element (paragraph 0017, 0059-0062);
(ii) deactivating the magnet; thereby removing the magnetic attraction between the magnetic element of the ear device and the magnet (paragraph 0062); and
(iii) removing the apparatus (figure 4; removing the apparatus from the ear is implied);
wherein the ear device, when inserted, is not visible to unaided human eyes from the outside of the ear; thereby concealing the ear device within the ear of the subject (Examiner notes that this limitation is represents intended use and lack patentable weight. Further Examiner notes that figure 4 shows the hearing aid inserted at such a depth that it would not be visible to unaided human eyes.
Regarding Claim 230, Michel teaches: The method of claim 229, further comprising activating a switch on the apparatus prior to (ii) (paragraph 0062).
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 217 is/are rejected under 35 U.S.C. 103 as being unpatentable over Michel in view of Molinari et al. (US 2016/0171966 A1 – cited by Applicant), hereinafter Molinari.
Regarding Claim 29, Michel teaches: The apparatus of claim 215. Michel does not mention wherein the ear device further comprises a noise canceling element, wherein the noise canceling element transmits destructive interference when engaged.
Molinari teaches that it is known in the art the active noise cancellation improves performance of hearing aids (paragraph 0004). It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the apparatus of Michel wherein the ear device further comprises a noise canceling element, wherein the noise canceling element transmits destructive interference when engaged to improve the performance of the device.
Claim 218-219, 221-222 is/are rejected under 35 U.S.C. 103 as being unpatentable over Michel in view of Shapiro et al. (US 2014/0073835 A1 – cited by Applicant), hereinafter Shapiro.
Regarding Claim 218-219, Michel teaches: The apparatus of claim 215. Michel does not mention wherein the ear device further comprises a magnetic field generator wherein the magnetic field generator at least partially ameliorates a disorder when engaged.
Shapiro teaches the use of a magnetic field generator in an in-ear device in order to provide therapy wherein the magnetic field generator at least partially ameliorates a disorder when engaged (paragraph 0037, 0047, 0014). It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the apparatus of Michel wherein the ear device further comprises a magnetic field generator wherein the magnetic field generator at least partially ameliorates a disorder when engaged in order to provide therapy.
Regarding Claim 221, Michel teaches: The apparatus of claim 215 but does not mention wherein the apparatus comprises an array of magnets.
Shapiro teaches the use of an array of magnets to in order to provide therapy (figure 1; paragraph 0012, 0020, 0023, 0052, 0053). ). It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the apparatus of Michel wherein the apparatus comprises an array of magnets in order to provide effective therapy.
Regarding Claim 222, Michel in view of Shapiro teach: The apparatus of claim 221 but do not mention wherein the array of magnets is configured to actuate sequentially. It would have been an obvious design choice as Applicant has not disclosed that the feature (of sequential actuation) provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected the apparatus of Michel in view of Shapiro to perform equally well as both refer to actuation of magnets.
Claim 220 is/are rejected under 35 U.S.C. 103 as being unpatentable over Michel in view of Shapiro, further in view of Vadala et al. (Mechanisms and therapeutic applications of electromagnetic therapy in Parkinson’s disease; 2015 – cited by Applicant), hereinafter Vadala.
Regarding Claim 220, Michel in view of Shapiro teach: The apparatus of claim 219. Michel in view of Shapiro do not mention wherein the disorder is selected from the group consisting of a migraine, a loss of taste, a loss of smell; Parkinson disease; a depression disorder; major depression disorder; and any combination thereof.
Vadala teaches that electromagnetic therapy can be used as therapy for Parkinson’s (title). It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the apparatus of Michel wherein the disorder is selected from the group consisting of a migraine, a loss of taste, a loss of smell; Parkinson disease; a depression disorder; major depression disorder; and any combination thereof to provide therapy for a subject.
Claim 223-224, 226 is/are rejected under 35 U.S.C. 103 as being unpatentable over Michel in view of Eply (US 4756312 – cited by Applicant).
Regarding Claim 223, Michel teaches: The apparatus of claim 215 but does not explicitly mention wherein the apparatus comprises an orientation restriction section that is configured to maintain an orientation of the ear device consistent with an orientation of the apparatus during insertion of the ear device into the ear.
Eply teaches orientation restriction section (col 8 lines 19-55) section that is configured to maintain an orientation of the ear device consistent with an orientation of the apparatus during insertion of the ear device into the ear.
It would have been obvious to one of ordinary skill in the art, before the effective filing date to have modified the apparatus of Michel wherein the apparatus comprises an orientation restriction section that is configured to maintain an orientation of the ear device consistent with an orientation of the apparatus during insertion of the ear device into the ear to ensure proper orientation of the ear device.
Regarding Claim 224, Michel in view of Eply teach: The apparatus of claim 223, wherein the orientation restriction section restricts the orientation of the ear device at least in part by mechanical force, electrostatic force, magnetic force, or any combination thereof (Eply; col 8 lines 19-55 Orientation bar implies mechanical force).
Regarding Claim 226, Michel teaches: The method of claim 225 but does not mention wherein the manipulating of the ear device is a rotation of the ear device.
Eply teaches that rotating the ear device is a way of manipulating the ear device during insertion/removal (col 8 lines 19-55). It would have been obvious to one of ordinary skill in the art, before the effective filing date to have modified the method of Michel wherein the manipulating of the ear device is a rotation of the ear device to allow for proper insertion and removal of the ear device.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: Claims 216, 231-232 would be considered allowable subject matter. No prior art on record teaches an ear device having a magnetic switch, the magnetic switch being maneuverable by a magnetic force to switch the ear device between different work modes, wherein at the different work modes, the ear device regulates pressure or acoustic waves transmitted therethrough at different efficiencies. Further, no prior art of record teaches a magnet is adjusted via mechanical actuation of translatable distal magnets. None of the prior art considered, alone or in combination, teaches that particular feature combined with the other limitations of the claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY B SHAH whose telephone number is (571)272-0686. The examiner can normally be reached M-F 8-5.
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JAY SHAH
Primary Examiner
Art Unit 3791
/JAY B SHAH/Primary Examiner, Art Unit 3791
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