DETAILED ACTION
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 .
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.
3. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12317036 B2. Although the claims at issue are not identical, they are not patentably distinct from each other. Mainly, the claims of the pending application are broader than the corresponding claims of the patent, as further described below. As such, they are rejected under obviousness-type double patenting over the previously patented narrower claim(s). In re Van Ornum, 686 F.2d 937, 214 USPQ 761.
Independent claim 1 of the pending application recites a similar hearing device including most of the features recited in claims 1 and 12 of the patent, but does not recite a pinna controller, nor the pinna output being based on a first pinna input and a second pinna input, wherein the first pinna input is based on the primary first microphone input signal and the second pinna input is based on the primary second microphone input signal. Claim 1 further does not recite the first mixer input being based on the first pinna input and the second mixer input being based on the second input, the input mixer comprising a first input adder for provision of the input mixer output based on a first main input and a second main input, wherein the first main input is based on the pinna output and the second main input is based on the secondary mixer input, nor wherein the input mixer comprises a first input filter for provision of a first main input and a second input filter for provision of a second main input. Dependent claims 11 and 12 of the pending application recite additional limitations regarding the input mixer comprising a first input adder for provision of the first input mixer output, and a first input filter for provision of a first main input and a second input filter for provision of a second main input. The claims however remain broader than patented claims 1 and 12.
Independent claim 16 of the pending application recites a similar method including most of the features recited in claim 16 of the patent, but does not recite the pinna output being based on a first pinna input and a second pinna input, wherein the first pinna input is based on the primary first microphone input signal and the second pinna input is based on the primary second microphone input signal. Claim 16 further does not recite the first mixer input being based on the first pinna input and the second mixer input being based on the second input, nor wherein the input mixer comprises a first input filter for provision of a first main input and a second input filter for provision of a second main input. Dependent claim 20 of the pending application recites additional limitations regarding the input mixer comprising a first input filter for provision of a first main input and a second input filter for provision of a second main input, but remains broader than patented claim 16. In addition, remaining dependent claims of the pending application parallel the limitations of the remaining patented dependent claims.
Claim Rejections - 35 USC § 112
4. 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.
5. Claims 1-20 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.
6. Claims 1 and 16 recite a set of primary microphones in the behind-the-ear housing and a secondary microphone in the earpiece housing, and further recite a pinna restorer for provision of a pinna output, and an input mixer for provision of an input mixer output based on the pinna output and a secondary mixer input based on the secondary microphone input signal. The pinna restorer is recited as providing various signals (e.g. first and second mixer inputs, first mixer output) via components such as the first and second filters, but the claims do not recite how these signals are derived. Specifically, it is not clear what signal or signals are being filtered to derive the mixer input signals and resulting first mixer output. In addition, it is not clear if these signals are derived from signals or components previously recited in the claim, or if they are derived from other signals or components in the hearing device. This ambiguity renders the operation of the pinna restorer unclear. The claims are therefore considered indefinite as they appear to be incomplete, and as such fail to particularly point out and distinctly claim the subject matter which the inventors regard as the invention.
7. Claims 2-15 and 17-20 are dependent on claims 1 and 16 and do not appear to further limit the parent claims in a way that clearly defines the subject matter. As such, they are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for at least the same reason as parent claims 1 and 16.
Claim Rejections - 35 USC § 102
8. 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.
9. Claim(s) 1-3, 8, 10-11 and 15-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent Pub No 2014/0348360 A1 to Gran.
As to claim 1, Gran discloses a hearing device comprising: a behind-the-ear housing configured to be worn behind a pinna of a user; an earpiece housing configured to be worn in or at an ear canal of the user; a wire couped between the behind-the-ear housing and the earpiece housing (see figures 4-6; pg. 7, ¶ 0112 - ¶ 0113); a set of primary microphones in the behind-the-ear housing, the set of primary microphones including a primary first microphone for provision of a primary first microphone input signal, and a primary second microphone for provision of a primary second microphone input signal (see figures 4-5; pg. 7, ¶ 0112); a secondary microphone in the earpiece housing for provision of a secondary microphone input signal (see figures 4-5; pg. 7, ¶ 0114); a pinna restorer for provision of a pinna output (see pg. 2, ¶ 0021 - ¶ 0023; pg. 6, ¶ 0096), the pinna restorer comprising: a first filter for provision of a first mixer input, a second filter for provision of a second mixer input (see pg. 7, ¶ 0112, ¶ 0121 - ¶ 0122), and a first mixer for provision of a first mixer output based on the first mixer input and the second mixer input, wherein the pinna output is based on the first mixer output (see pg. 7, ¶ 0123), and an input mixer for provision of an input mixer output based on the pinna output and a secondary mixer input, wherein the secondary mixer input is based on the secondary microphone input signal (see figure 7; pg. 8, ¶ 0133).
As to claim 2, Gran further discloses wherein the pinna restorer further comprises a third pinna filter for provision of a first pinna output based on the first mixer output from the first mixer, and wherein the pinna output is based on the first pinna output (see pg. 8, ¶ 0129).
As to claim 3, Gran further discloses further comprising a pinna controller (see pg. 8, ¶ 0126, ¶ 0131) configured to control the third pinna filter based on the first pinna output (see figure 7; pgs. 7-8, ¶ 0123 - ¶ 0126, ¶ 0129).
As to claim 8, Gran further discloses further comprising a pinna controller (see pg. 8, ¶ 0126, ¶ 0131), wherein the pinna restorer further comprises a third pinna filter, and wherein the pinna controller is configured to control the third pinna filter based on the secondary mixer input (see figure 7; pg. 8, ¶ 0126 - ¶ 0129).
As to claim 10, Gran further discloses further comprising a feedback canceller configured to apply feedback cancellation to one or more of the primary first microphone input signal, the primary second microphone input signal, and the secondary microphone input signal (see figure 7; pg. 8, ¶ 0141).
As to claim 11, Gran further discloses wherein the input mixer comprises a first input adder for provision of the input mixer output based on the pinna output (see figure 7; pg. 8, ¶ 0133).
As to claim 15, Gran further discloses further comprising: a processor configured to provide an electrical output signal based on the input mixer output; and a receiver configured to provide an audio output signal based on the electrical output signal (see figure 7; pg. 8, ¶ 0133, ¶ 0138).
As to claim 16, Gran discloses a method performed by a hearing device comprising a behind-the-ear housing to be worn behind the pinna of a user; an earpiece housing to be worn in or at the ear canal of a user; a wire coupled between the behind-the-ear housing and the earpiece housing (see figures 4-6; pg. 7, ¶ 0112 - ¶ 0113); a set of primary microphones in the behind-the-ear housing, the set of primary microphones including a primary first microphone and a primary second microphone (see figures 4-5; pg. 7, ¶ 0112); a secondary microphone in the earpiece housing (see figures 4-5; pg. 7, ¶ 0114); a pinna restorer (see pg. 2, ¶ 0021 - ¶ 0023; pg. 6, ¶ 0096), and an input mixer (see pg. 8, ¶ 0133), the method comprising: providing a primary first microphone input signal by the primary first microphone; providing a primary second microphone input signal by the primary second microphone; providing a secondary microphone input signal by the secondary microphone (see figure 7; pg. 7, ¶ 0112 - ¶ 0114); determining a pinna output by the pinna restorer (see pg. 2, ¶ 0022 - ¶ 0023; pg. 7, ¶ 0121), wherein the act of determining the pinna output comprises: obtaining a first mixer input, obtaining a second mixer input (see figure 7; pg. 7, ¶ 0112, ¶ 0121 - ¶ 0122), and determining a first mixer output based on the first mixer input and the second mixer input, wherein the pinna output is based on the first mixer output (see pg. 7, ¶ 0123); and providing an input mixer output by the input mixer based on the pinna output and a secondary mixer input, wherein the secondary mixer input is based on the secondary microphone input signal (see figure 7; pg. 8, ¶ 0133).
As to claim 17, Gran further discloses further comprising: processing the input mixer output for provision of an electrical output signal; and providing an audio output signal based on the electrical output signal (see figure 7; pg. 8, ¶ 0133, ¶ 0138).
As to claim 18, Gran further discloses further comprising filtering the first mixer output for provision of a first pinna output, wherein the pinna output is based on the first pinna output (see pg. 8, ¶ 0129).
Claim Rejections - 35 USC § 103
10. 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.
11. Claim(s) 4-7, 9 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gran in view of US Patent Pub No 2014/0185846 A1 to Gran et al. (“Gran ‘846”).
As to claim 4, Gran discloses the hearing device according to claim 1.
Gran further discloses further comprising a pinna controller (see pg. 8, ¶ 0126, ¶ 0131), but does not disclose the pinna controller being configured to determine a first pinna control signal by applying a first delay to the secondary mixer input.
Gran ‘846 discloses a similar hearing device, and further discloses the earpiece microphone signal being delayed prior to being used to determine filter coefficients that provide an audio signal with pinna spatial cues (see figure 9; pg. 1, ¶ 0017; pg. 8, ¶ 0125; pg. 10, ¶ 0163).
Gran and Gran ‘846 are analogous art because they are both drawn to hearing devices with preserved spatial cues.
It would have been an obvious choice before the effective filing date of the claimed invention to apply a delay to the secondary microphone signal as taught by Gran ‘846 in the device as taught by Gran. The motivation being as the applied delays can help compensate for delays from the processed BTE microphone signals caused by the spatial cue processing (Gran ‘846 pg. 10, ¶ 0163).
As to claim 5, Gran in view of Gran ‘846 further discloses further comprising a pinna controller, wherein the first mixer comprises a first pinna filter for filtering the first mixer input, and a second pinna filter for filtering the second mixer input (Gran pg. 8, ¶ 0126, ¶ 0131; Gran ‘846 pg. 8, ¶ 0124).
As to claim 6, Gran in view of Gran ‘846 further discloses wherein the pinna controller is configured to control the first pinna filter and/or the second pinna filter based on the secondary mixer input (Gran ‘846 figure 7; pg. 8, ¶ 0124 - ¶ 0125).
As to claim 7, Gran in view of Gran ‘846 further discloses wherein the pinna controller is configured to control the first pinna filter and/or the second pinna filter based on the first mixer output (Gran ‘846 figure 7; pg. 8, ¶ 0124 - ¶ 0125).
As to claim 9, Gran in view of Gran ‘846 further discloses wherein the pinna controller is configured to determine a control signal by applying a delay to the secondary mixer input (Gran ‘846 figure 9; pg. 8, ¶ 0125; pg. 10, ¶ 0163), and to control the third pinna filter based on the control signal (Gran pg. 8, ¶ 0126 - ¶ 0129).
As to claim 19, Gran in view of Gran ‘846 further discloses further comprising controlling a first pinna filter and/or a second pinna filter of the pinna restorer based on the secondary mixer input (Gran ‘846 figure 7; pg. 8, ¶ 0124 - ¶ 0125).
Allowable Subject Matter
12. Claims 12-14 and 20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, as well as pending the filing of a terminal disclaimer to overcome the nonstatutory double patenting rejection set forth in this Office action, and to include all of the limitations of the base claim and any intervening claims.
Conclusion
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SABRINA DIAZ whose telephone number is (571)272-1621. The examiner can normally be reached Monday-Friday 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ahmad Matar can be reached at 5712727488. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SABRINA DIAZ/Examiner, Art Unit 2693
/AHMAD F. MATAR/Supervisory Patent Examiner, Art Unit 2693
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