Notice of Pre-AIA or AIA Status
1. 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
Introduction
2. This action responds to the remarks filed on 09-03-2026. Claims 1-12 have been cancelled and claims 13-32 have been added. Claims 13-32 are pending.
Double Patenting
3. 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
4. Claims 13-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,121,349. Although the claims at issue are not identical, they are not patentably distinct from each other because, the current (18/905,912) claim limitations are broader than claims 1-20 of U.S. Patent No. 12,121,349 as shown in the table below.
Instant Application No. 18/529,822
US PAT. 12,121,349
13. (new) A device comprising: a memory configured to store instructions; a processor operatively coupled to the memory, wherein the processor is configured to execute the instructions to perform operations comprising :receiving an audio signal; determining whether a quality of the audio signal is suitable for conducting a hearing test, and if not then selecting another audio signal; determining whether an earphone for administering the hearing test is correctly fitted to a user, and if not then informing the user to re- seat the earphone; determining whether ambient sound conditions about the earphone are suitable for the hearing test, and if not then informing the user to wait or re-locate; and conducting the hearing test using the audio signal, by presenting a plurality of filtered audio signals to determine a minimum presentation level at which the user can hear each of the plurality of filtered audio signals.
1. A device comprising: a memory configured to store instructions; a processor operatively coupled to the memory, wherein the processor is configured to execute the instructions to perform operations comprising: receiving an audio signal; determining if a quality of the received audio signal is suitable for conducting an HSTF test; determining if an earphone or headphone used for administering the HSTF test is correctly fitted to a user; determining if ambient sound conditions about the earphone or headphone are suitable for an HSTF test; and generating a frequency dependent HSTF, where the frequency dependent HSTF is a sound pressure level (SPL) value for each center frequency band, where the SPL value is equal to an audible loudness level for that frequency.
Claim Rejections - 35 USC § 103
5. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
6. 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.
7. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
8. Claims 13-32 are rejected under 35 U.S.C. 103(a) as being unpatentable over Tiscareno et al.(US 2013/0170656).in view of Fausti (US 2013/0274628).
Consider Claim 13, Tiscareno teaches a device comprising:
a memory(see figs.1-2(11,24)) configured to store instructions; a processor operatively coupled to the memory, wherein the processor is configured to execute the instructions to perform operations (see figs. 1-2(28,34) and paragraph [0033]);comprising:
receiving (see figs. 1(24,10)) an audio signal; determining whether a quality of the audio signal is suitable for conducting a hearing test(such as test tone and paragraph[0055]), and if not then selecting another audio signal( such as, adjust volume, adjust equalization, see in fig. 10(116), fig. 11(124), fig.12(134)) paragraph[0058],0064],[0046],[0047][0078])(see figs. 1-5 and paragraphs[0042]- [0047]);
determining(see figs. 10-12) whether an earphone for administering the hearing test is correctly fitted to a user(se figs. 5-7), and if not then informing the user to re- seat the earphone(see figs. 3-4);
determining(see figs. 5-12) whether ambient sound conditions about the earphone are suitable for the hearing test, and if not then informing the user (such as, alert, warning signal, in fig. 10(116), fig. 11(124), fig.12(134)) to wait or re-locate(see figs. 5-12 and paragraphs[0042]- [0047]); but Tisareno does not explicitly teach conducting(see figs.1- 5) the hearing test using the audio signal, by presenting a plurality of filtered audio signals to determine a minimum presentation level at which the user can hear each of the plurality of filtered audio signals.
However, Fausti teaches conducting(see fig. 1) the hearing test using the audio signal, by presenting a plurality of filtered audio signals(such as filter signal frequency from 500 HZ(min) to filter signal 2528 HZ (max), indicate each frequency, in fig. 2A) see fig. 2 A to determine a minimum presentation level at which the user can hear each of the plurality of filtered audio signals(see fig. 1)(see figs. 1-6 and paragraphs[0072]- [0078]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the Invention to use the configuration of the invention of Fausti into the teaching of Lee to provide monitoring or testing the hearing of a user using a portable unit include presenting a plurality of test frequencies for selection by a user and storing data about those frequencies, and the user's response to stimuli presented at those frequencies, and comparing the stored data to previously acquired hearing data. Using mathematical prediction algorithms, changes in baseline hearing values can be used to identify potential hearing issues, especially hearing issues associated with ototoxicity.
Consider Claims 14 and 15, Tiscareno as modified by Fausti teaches the device wherein to determine whether the quality of the audio signal is suitable for conducting the hearing test, the processor is configured to: determine a Power Spectral Density (PSD) or a dynamic range of the audio signal(see figs. 5-12 and paragraphs[0042]- [0047]); and the device wherein at least one of i) the dynamic range is less than a predetermined amount or ii) the PSD is greater than a predetermined amount, in a frequency region over which the hearing test is conducted, for the quality of the audio signal to be suitable for conducting the hearing test(see figs. 5-12 and paragraphs[0042]- [0047]).
Consider Claims 16 and 17, Tiscareno as modified by Fausti teaches the device wherein the processor conducts the hearing test using a Modified Hughson-Westlake method(In Fausti, see figs. 2-17 and paragraphs[0234]- [0235]); and the device wherein the processor conducts the hearing test by determining the minimum presentation level based on the user touching the earphone to signify the user can hear a presented signal (In Faushi, see figs. 1-6 and paragraphs[0072]- [0078]).
Consider Claims 18 and 19, Tiscareno as modified by Fausti teaches the device wherein the processor conducts the hearing test by determining the minimum presentation level based on the user using a graphical user interface on a mobile computing device as an input device to indicate when the user can hear a presented signal(In Faushi, see figs. 1-6 and paragraphs[0072]- [0078]); and the device wherein the audio signal is an audio file received in the earphone from a wired or wirelessly connected mobile computing device, and the audio file was selected from a list of files by the user using a graphical display on the mobile computing device(see figs. 1-2 and paragraphs[0031]- [0033]).
Consider Claims 20 and 21, Tiscareno as modified by Fausti teaches the device wherein the audio signal is a streamed portion of an audio file that is stored in a wired or wirelessly connected mobile computing device(see figs. 1-2 and paragraphs[0031]- [0033]); and the device wherein to determine whether the ambient sound conditions are suitable the processor: estimates a frequency weighted sound pressure level in an ear canal of the user; compares the frequency weighted sound pressure level with a reference level; and if the frequency weighted sound pressure level is less than the reference level, the hearing test is not conducted(In Faushi, see figs. 1-6 and paragraphs[0072]- [0078]).
Consider Claim 22, Tiscareno as modified by Fausti teaches the device wherein to determine whether the earphone is correctly fitted the processor: emits a presented signal from a speaker of the earphone; measures the presented signal using a microphone of the earphone to generate a microphone signal; and informs the user that an ear seal is not good based on comparing the microphone signal to a reference signal(see figs. 3-12 and paragraphs[0044]- [0055]).
Consider Claim 23, Tiscareno teaches a non-transitory memory comprising instructions stored therein that when executed by a processor(see figs. 1-2(28,34) and paragraph [0033]):
receiving (see figs. 1(24,10)) an audio signal; determining whether a quality of the audio signal is suitable for conducting a hearing test(such as test tone and paragraph[0055]), and if not then selecting another audio signal( such as, adjust volume, adjust equalization, see in fig. 10(116), fig. 11(124), fig.12(134)) paragraph[0058],0064],[0046],[0047][0078])(see figs. 1-5 and paragraphs[0042]- [0047]);
determining(see figs. 10-12) whether an earphone for administering the hearing test is correctly fitted to a user(se figs. 5-7), and if not then informing the user to re- seat the earphone(see figs. 3-4);
determining(see figs. 5-12) whether ambient sound conditions about the earphone are suitable for the hearing test, and if not then informing the user (such as, alert, warning signal, in fig. 10(116), fig. 11(124), fig.12(134)) to wait or re-locate(see figs. 5-12 and paragraphs[0042]- [0047]); but Tisareno does not explicitly teach conducting(see figs.1- 5) the hearing test using the audio signal, by presenting a plurality of filtered audio signals to determine a minimum presentation level at which the user can hear each of the plurality of filtered audio signals.
However, Fausti teaches conducting(see fig. 1) the hearing test using the audio signal, by presenting a plurality of filtered audio signals(such as filters signal frequency from 500 HZ(min) to filters signal 2528 HZ (max), indicate each frequency in fig. 2A) see fig. 2A to determine a minimum presentation level at which the user can hear each of the plurality of filtered audio signals(see fig. 1)(see figs. 1-6 and paragraphs[0072]- [0078]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the Invention to use the configuration of the invention of Fausti into the teaching of Lee to provide monitoring or testing the hearing of a user using a portable unit include presenting a plurality of test frequencies for selection by a user and storing data about those frequencies, and the user's response to stimuli presented at those frequencies, and comparing the stored data to previously acquired hearing data. Using mathematical prediction algorithms, changes in baseline hearing values can be used to identify potential hearing issues, especially hearing issues associated with ototoxicity.
Consider Claim 24, Tiscareno as modified by Fausti teaches the non-transitory memory wherein the instructions configure the processor to determine whether the quality of the audio signal is suitable for conducting the hearing test, by the processor determining a Power Spectral Density (PSD) or a dynamic range of the audio signal(see figs. 5-12 and paragraphs[0041]- [0047]).
Consider Claims 25 and 26, Tiscareno as modified by Fausti teaches the non-transitory memory wherein at least one of i) the dynamic range is less than a predetermined amount or ii) the PSD is greater than a predetermined amount, in a frequency region over which the hearing test is conducted, for the quality of the audio signal to be suitable for conducting the hearing test(see figs. 5-12 and paragraphs[0041]- [0047]); and the non-transitory memory wherein the instructions configure the processor to conduct the hearing test using a Modified Hughson-Westlake method(In Fausti, see figs. 2-17 and paragraphs[0234]- [0235])
Consider Claims 27 and 28, Tiscareno as modified by Fausti teaches the non-transitory memory wherein the instructions configure the processor to conduct the hearing test by determining the minimum presentation level based on the user touching the earphone to signify the user can hear a presented signal(see figs. 5-12 and paragraphs[0041]- [0044]); and the non-transitory memory wherein the instructions configure the processor to conduct the hearing test by determining the minimum presentation level based on the user using a graphical user interface on a mobile computing device as an input device to indicate when the user can hear a presented signal(see figs. 1-5 and paragraphs[0031]- [0033]).
Consider Claims 29 and 30, Tiscareno as modified by Fausti teaches the non-transitory memory wherein the audio signal is an audio file received in the earphone from a wired or wirelessly connected mobile computing device, and the audio file was selected from a list of files by the user using a graphical display on the mobile computing device(see figs. 1-2 and paragraphs[0031]- [0033]).
Consider Claims 30 and 31, Tiscareno as modified by Fausti teaches the non-transitory memory wherein the audio signal is a streamed portion of an audio file that is stored in a wired or wirelessly connected mobile computing device(see figs. 1-2 and paragraphs[0031]- [0033]); and the non-transitory memory wherein to determine whether the ambient sound conditions are suitable, the instructions configure the processor to: estimate a frequency weighted sound pressure level in an ear canal of the user; compare the frequency weighted sound pressure level with a reference level; and if the frequency weighted sound pressure level is less than the reference level, the hearing test is not conducted(see figs. 3-12 and paragraphs[0041]- [0044]).
Consider Claim 32, Tiscareno as modified by Fausti teaches the non-transitory memory wherein to determine whether the earphone is correctly fitted, the instructions configure the processor to: emit a presented signal from a speaker of the earphone; measure the presented signal using a microphone of the earphone to generate a microphone signal; and inform the user that an ear seal is not good based on comparing the microphone signal to a reference signal(see figs. 3-12 and paragraphs[0041]- [0044]).
Response to Arguments
9. Applicant's arguments filed 09-03-2026 have been fully considered but they are not persuasive
.Applicant argued that “the Fausti hearing testing system and Tiscareno earbud fit detection technique, fail to teach “receiving an audio signal; determining whether a quality of the audio signal is suitable for conducting a hearing test, and if not then selecting another audio signal;
conducting the hearing test using the audio signal, by presenting a plurality of filtered audio signals to determine a minimum presentation level at which the user can hear each of the plurality of filtered audio signals” as recited in claim 1(see the remarks page 7 last paragraph).
The examiner disagrees that argument respectfully. Tiscareno disclose receiving (see figs. 1(24,10)) an audio signal; determining whether a quality of the audio signal is suitable for conducting a hearing test(such as test tone and paragraph[0055]), and if not then selecting another audio signal( such as, adjust volume, adjust equalization, see in fig. 10(116), fig. 11(124), fig.12(134)) paragraph[0058],0064],[0046],[0047][0078])(see figs. 1-5 and paragraphs[0042]- [0047]);
determining(see figs. 10-12) whether an earphone for administering the hearing test is correctly fitted to a user(se figs. 5-7), and if not then informing the user to re- seat the earphone(see figs. 3-4);
determining(see figs. 5-12) whether ambient sound conditions about the earphone are suitable for the hearing test, and if not then informing the user (such as, alert, warning signal, in fig. 10(116), fig. 11(124), fig.12(134)) to wait or re-locate(see figs. 5-12 and paragraphs[0042]- [0047]).
On the other hand, Fausti discloses conducting(see fig. 1) the hearing test using the audio signal, by presenting a plurality of filtered audio signals(such as filter signal frequency from 500 HZ(min) to filter signal 2528 HZ (max), indicate each filter frequency, in fig. 2A) see fig. 2 A to determine a minimum presentation level at which the user can hear each of the plurality of filtered audio signals(see fig. 1)(see figs. 1-6 and paragraphs[0072]- [0078]). The combination meets the limitation as recited in claim 13.
Applicant further argued that In other words, the operating principle of Tiscareno would be destroyed by combining it with the clinical monitoring and healthcare provider reporting system of Fausti(see the remarks page 9, 1st paragraph).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Tiscareno and Fausti teach headset relate to hearing fitting.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the Invention to use the configuration of the invention of Fausti into the teaching of Lee to provide monitoring or testing the hearing of a user using a portable unit include presenting a plurality of test frequencies for selection by a user and storing data about those frequencies, and the user's response to stimuli presented at those frequencies, and comparing the stored data to previously acquired hearing data. Using mathematical prediction algorithms, changes in baseline hearing values can be used to identify potential hearing issues, especially hearing issues associated with ototoxicity.
Independent Claim 23 is similar to Claim 13 and is also rejected. The 103 rejection for dependent claims will be maintained.
Conclusion
10. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
11. The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. Stafford et al. (US 2013/0279724) is cited to show other related the METHOD TO ESTIMATE HEARING IMPAIRMENT COMPENSATION FUNCTION.
12. Any response to this action should be mailed to:
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Commissioner for Patents
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should be directed to Lao,Lun-See whose telephone number is (571) 272-7501 The examiner
can normally be reached on Monday-Friday from 8:00 to 5:30.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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Any inquiry of a general nature or relating to the status of this application or proceeding
should be directed to the Technology Center 2600 whose telephone number is (571) 272-2600.
/LUN-SEE LAO/Primary Examiner, Art Unit 2691 US Patent and Trademark Office
Knox
571-272-7501
Date 10-02-2026
