DETAILED ACTION
The Art Unit location of your application in the PTO has changed. To aid in correlating any papers for this application, all further correspondence regarding this application should be directed to Group Art Unit 2691.
This communication is responsive to the claims filed 01/11/2010.
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 §§ 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.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,177,634. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-17 of U.S. Patent No. 12,177,634 are clearly anticipated or similar in scope to the rejected claims 1-18 of the U. S. Pat. App (No. 18/950,716) with only obvious wording variations. For example:
U. S. Pat. App No. 18/950,716
U.S. Patent No. 12,177,634
1. A bone-anchored hearing aid comprising:
an antenna configured to transmit a transmission wireless signal or receive a reception wireless signal; an electronic circuit configured to receive the reception wireless signal; one or more vibrator leads; a vibrator configured for receiving an electrical signal from the electronic circuit via the one or more vibrator leads, wherein the vibrator is configured to provide a vibrational stimulation aid based on the electrical signal; and a vibrator housing configured to accommodate at least the vibrator, wherein each of the one or more vibrator leads is connected to the vibrator and to the vibrator housing via a capacitive coupling, and wherein the capacitive coupling is configured to eliminate a parasitic coupling between the vibrator and the vibrator housing.
1. A bone-anchored hearing aid for a recipient comprising:
an antenna configured to transmit and/or receive a wireless signal, an electronic circuit configured to receive the wireless signal, one or more vibrator leads, a vibrator configured for receiving an electrical signal from the electronic circuit via the one or more vibrator leads, and the vibrator is configured to provide a vibrational stimulation to the recipient patient based on the electrical signal, and a vibrator housing configured to accommodate at least the vibrator, and wherein each of the one or more vibrator leads is connected to the vibrator and to the vibrator housing via a capacitance, and where the capacitance is configured to eliminate at least a parasitic coupling between the vibrator and the vibrator housing for improving the performance of the antenna; and wherein the capacitance includes a stack of layers, comprising: first layer including a conductive material, and the first layer is connected to the electronic circuit via the one or more vibrator leads, a second layer wherein the first layer is arranged on a primary surface of the second layer, and wherein a secondary surface of the second layer is connected to the vibrator housing, and wherein the second layer is configured to provide the capacitive coupling between the first layer and the vibrator housing.
Allowable Subject Matter
Claims 1-18 are rejected under nonstatutory double patenting rejection, but would be allowable if 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/SUHAN NI/Primary Examiner, Art Unit 2691
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