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 .
DETAILED ACTION
Applicant is advised that the new art unit number is 2692. Please use the new art unit number for all future communications.
This Office action is in response to the Preliminary Amendment filed on 9/26/2024.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/26/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 21-37 are objected to because of the following informalities:
Claim 21, line 1: “Bone anchored” should be --A bone anchored-- so that the claim has the appropriate grammar to read as a complete sentence.
Line 1 of each of claims 22-35: “Bone anchored” should be --The bone anchored-- so that each of the claims has the appropriate grammar to read as a complete sentence.
Claim 36, line 1: “Hearing device” should be --A hearing device-- so that the claim has the appropriate grammar to read as a complete sentence.
Claim 37, line 1: “Hearing device” should be --The hearing device-- so that the claim has the appropriate grammar to read as a complete sentence.
Claim 25, line 4: “of the of the” should be --of the--.
Claim 32, line 1-2: “at least one” should be deleted.
Claim 33, line 1-2: “at least one” should be deleted.
Claim 33, line 2: “prevent” should be deleted.
Claim 33, line 2-3: “at least one” should be deleted.
Appropriate correction is required.
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.
Claims 21, 22, 23, 24, 32, 33, 36, 37 (hereinafter instant claims 21, 22, 23, 24, 32, 33, 36, 37) are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 (hereinafter patent claims 1-16) of U.S. Patent No. 12,133,052. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 21, 22, 23, 24, 32, 33, 36, 37: Patent claims 1-16 includes all of the limitations of instant claims 21, 22, 23, 24, 32, 33, 36, 37 (specifically, instant claims 21, 22, 23, 24, 32, 33, 36, 37 are found in patent claims 1, 2, 2, 3, 1, 1, 15, 16 respectively). Hence, instant claims 21, 22, 23, 24, 32, 33, 36, 37 are generic to the species of invention covered by patent claims 1-16. Therefore, instant claims 21, 22, 23, 24, 32, 33, 36, 37 are anticipated by patent claims 1-16 and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, "a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant "application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims").
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.
Claims 24, 27-31 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.
Claim 24, line 2 recites the limitation "the transistor". There is insufficient antecedent basis for this limitation in the claim.
For the purpose of examination, claim 24, lines 2-3 has been interpreted as “the protection circuit comprises a [[the]] transistor that is a metal oxide semiconductor field effect transistor comprising a source, a gate, and a drain,”.
Claims 27-31 are rejected for including the language of rejected base claim 24.
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.
Claim(s) 21-22, 32-37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Balslev (US 2018/0103330 A1) in view of Applicant’s Admitted Prior Art (hereinafter AAPA) in view of Boesen et al. (US 2017/0263236) in view of Chuang (US 2005/0094824).
In regard to claim 21, Balslev discloses bone anchored hearing implant device ("implantable prosthetic device 16" as part of "transcutaneous bone anchored hearing device 2", paragraph [0109], figures 1A, 1B; "implantable part 428", paragraph [0128], figure 4) for enhancing the hearing capability of a user ("improve or augment the hearing capability of a user ", paragraph [0103]) comprising:
an antenna element ("receiver coil 24", paragraph [0112], figure 1B; "receiver unit 430", paragraph [0128], figure 4) configured for receiving signals provided from an external device ("external audio processor device 4 connected to a coupling member 6", paragraph [0109], figures 1A, 1B);
a modulation device comprising a demodulation circuitry for demodulating the signals received by the antenna element ("The received signal is demodulated in a data signal and power signal at a demodulator 432", paragraph [0128], figure 4);
a transducer for generating vibrations depending on the demodulated signals ("vibrator 32 of the implantable prosthetic device 16 is configured to generate vibrations", paragraph [0113], figure 1B; "vibrator 434, which utilizes the data signal to produce frequency specific vibrations to a bone such as a_ skull bone", paragraph [0128], figure 4);
a connection circuit configured to transfer the signals received by the antenna element to the modulation device and configured to transfer the demodulated signals to the transducer (implicit from paragraph [0128]); and
Balslev is not relied upon to disclose a protection circuit configured to at least partly short-circuit the connection circuit in accordance with a parameter exceeding a threshold.
In a similar field of endeavor, AAPA discloses high sound level in a bone anchored hearing implant device can damage the cochlea of a user (paragraph spanning pages 1-2).
In a similar field of endeavor, Boesen discloses a protection circuit (30) configured to at least partly block the signal to a transducer in accordance with a parameter (decibel level of signal to be input to transducer) exceeding a threshold (¶ 0031).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to: a protection circuit configured to at least partly block the signal to the transducer (of Balslev) in accordance with a parameter (decibel level of signal to be input to the transducer of Balslev (i.e. the demodulated signal of Balslev)) exceeding a threshold, the motivation being to protect a user from a decibel level that may damage the ear (Boesen - ¶ 0031), which in a bone anchored hearing implant device would damage the cochlea of the user (AAPA - paragraph spanning pages 1-2).
Balslev-AAPA-Boesen is not relied upon to disclose at least partly block the signal to the transducer by at least partly short-circuit the connection circuit.
In a similar field of endeavor, Chuang discloses a protection circuit (switch 11) configured to block a signal to a transducer by short-circuiting the connection circuit (¶ 0032, 0037 and Fig. 1: signal output from 9 is blocked from reaching transducer 14 by switch 11 grounding the connection between 9 and 14, thus making the signal zero).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to: at least partly block the signal to the transducer by at least partly short-circuit the connection circuit (which can be performed by short-circuiting the signal anywhere along the connection circuit, i.e. short-circuiting portion of connection circuit between the antenna element and the modulation device, or between the modulation device and the transducer),
which would result in: a protection circuit configured to at least partly short-circuit the connection circuit in accordance with a parameter exceeding a threshold,
the motivation being to perform the simple substitution of one way to block the signal to a transducer for another to obtain predictable results of a signal to a transducer being blocked. See MPEP § 2143(B).
Regarding claim 22, Balslev-AAPA-Boesen-Chuang discloses bone anchored hearing implant device according to claim 21.
Additionally, Chuang discloses that decibel level can be represented by signal voltage in order to compare it to a threshold (¶ 0028).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to represent the decibel level using signal voltage in order to compare it to the threshold,
which would result in: wherein the parameter is a voltage of the demodulated signals,
the motivation being to represent the decibel level in a form that can be used to compare it to a threshold (Chuang - ¶ 0028).
Regarding claim 32, Balslev-AAPA-Boesen-Chuang discloses Bone anchored hearing implant device according to claim 21, wherein the at least one protection circuit is configured to prevent the transfer of the received signals to the modulation device if the parameter exceeds the threshold (as already set forth above in the claim 21 rejection, short-circuiting portion of connection circuit between the antenna element and the modulation device would achieve this).
The teachings of AAPA, Boesen, and Chuang relied upon above are combinable with Balslev-AAPA-Boesen-Chuang for the same reasons set forth above in the claim 21 rejection.
Regarding claim 33, Balslev-AAPA-Boesen-Chuang discloses Bone anchored hearing implant device according to claim 21, wherein the at least one protection circuit is configured prevent the transfer of the demodulated signals to the at least one transducer via the protection circuit (as already set forth above in the claim 21 rejection, short-circuiting portion of connection circuit between the antenna element and the modulation device would achieve this) only if the parameter exceeds the threshold (Boesen - ¶ 0031).
The teachings of AAPA, Boesen, and Chuang relied upon above are combinable with Balslev-AAPA-Boesen-Chuang for the same reasons set forth above in the claim 21 rejection.
Regarding claim 34, Balslev-AAPA-Boesen-Chuang discloses Bone anchored hearing implant device according to claim 21.
Additionally, Chuang discloses wherein the protection circuit is configured to be activated with a delay (8) after the parameter exceeds the threshold (Fig. 1 and ¶ 0038).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to: wherein the protection circuit is configured to be activated with a delay after the parameter exceeds the threshold, the motivation being to gradually restore original state following blocking of the signal (Chuang - ¶ 0007).
Regarding claim 35, Balslev-AAPA-Boesen-Chuang discloses Bone anchored hearing implant device according to claim 21, and Boesen discloses wherein the protection circuit is configured to be activated during the use of the bone anchored hearing implant device (¶ 0031).
The teachings of Boesen relied upon above are combinable with Balslev-AAPA-Boesen-Chuang for the same reasons set forth above in the claim 21 rejection.
Regarding claim 36, Balslev-AAPA-Boesen-Chuang discloses Bone anchored hearing implant device according to claim 21, and Balslev discloses Hearing device system comprising:
at least one bone anchored hearing implant device (Fig. 4: 428, which corresponds to 16, 24, and 32 of Fig. 1A/B) (¶ 0112: in skull bone recess) according to claim 21 (see claim 21 rejection); and
an external hearing device (Fig. 4: everything below 436, which corresponds to 4 of Figs. 1A/B) for supplying (via 22) the antenna element with the signals (¶ 0113).
The teachings of AAPA, Boesen, and Chuang relied upon above are combinable with Balslev-Boesen-Chuang for the same reasons set forth above in the claim 21 rejection.
Regarding claim 37, Balslev-AAPA-Boesen-Chuang discloses Hearing device system according to claim 36, and Balslev discloses wherein the external hearing device comprises a housing (38), an energy supply (42), a microphone (36), and a sound processor (28) configured to supply the antenna element with the signals (Fig. 1B and ¶ 0113).
Claim(s) 25, 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Balslev in view of AAPA in view of Boesen in view of Chuang in view of Narampanawe et al. (US 2022/0417673).
Regarding claim 25, Balslev-AAPA-Boesen-Chuang discloses Bone anchored hearing implant device according to claim 21, wherein:
the protection circuit comprises at least one switch (11 of Chuang);
the switch is activated when the parameter exceeds the threshold (Boesen teaches blocking of signal when the parameter exceeds the threshold, and Chuang teaches blocking of signal by activating switch, and thus the combination of Balslev with AAPA, Boesen, and Chuang in the claim 21 rejection taught this); and
activation of the switch at least partly prevents the transfer of the of the demodulated signals to the transducer (activation switch 11 of Chuang short-circuits/grounds connection circuit so that demodulated signal does not reach transducer) or a transfer of the signals received by the antenna element to the modulation device.
The teachings of AAPA, Boesen, and Chuang relied upon above are combinable with Balslev-AAPA-Boesen-Chuang for the same reasons set forth above in the claim 21 rejection.
Balslev-AAPA-Boesen-Chuang is not relied upon to disclose that the switch is a transistor.
In a similar field of endeavor, Narampanawe discloses that a MOSFET transistor can be used as a switch (¶ 0091).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a MOSFET transistor as the switch 11 of Chuang, the motivation being to perform the simple substitution of one switch for another to obtain predictable results of a switch. See MPEP § 2143(B).
Regarding claim 26, Balslev-AAPA-Boesen-Chuang-Narampanawe discloses Bone anchored hearing implant device according to claim 25, and Narampanawe discloses wherein the transistor is a metal oxide semiconductor field effect transistor (¶ 0091: MOSFET).
The teachings of Narampanawe relied upon above are combinable with Balslev-AAPA-Boesen-Chuang-Narampanawe for the same reasons set forth above in the claim 25 rejection.
Allowable Subject Matter
Claim 23 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and if the Double Patenting rejection is overcome.
Claim 24 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112, 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims, and if the Double Patenting rejection is overcome, and if the scope of claim 24, lines 2-3 does not become broader than the scope given by the examiner’s interpretation found above in item 11.
Claim 27-31 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, and if the scope of claim 24, lines 2-3 does not become broader than the scope given by the examiner’s interpretation found above in item 11.
The following is a statement of reasons for the indication of allowable subject matter:
In regard to claim 23, the prior art of record (excluding the Double Patenting reference U.S. Patent No. 12,133,052) alone or in combination fails to teach or suggest the following limitations of the claim in combination with the rest of the limitations of the claim:
“wherein the voltage is a saturation voltage”
In regard to claim 24, the prior art of record (excluding the Double Patenting reference U.S. Patent No. 12,133,052) alone or in combination fails to teach or suggest the following limitations of the claim in combination with the rest of the limitations of the claim:
“wherein:
the protection circuit comprises a transistor that is a metal oxide semiconductor field effect transistor comprising a source, a gate, and a drain,
a diode is connected to the gate and the drain, and
the saturation voltage substantially is defined as a sum of the diode voltage and the voltage of the gate to the source of the metal oxide semiconductor field effect transistor.”
In regard to claim 27, the prior art of record alone or in combination fails to teach or suggest the following limitations of the claim in combination with the rest of the limitations of the claim:
“wherein:
the protection circuit comprises the diode; and
the diode is used to activate the transistor”
Claims 28-31 is/are dependent upon base claims having allowable subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK FISCHER whose telephone number is (571)270-3549. The examiner can normally be reached Mon-Fri 1-6, 7:30-11:59pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CAROLYN R EDWARDS can be reached on 571-270-7136. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK FISCHER/Primary Examiner, Art Unit 2692
/CAROLYN R EDWARDS/Supervisory Patent Examiner, Art Unit 2692
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