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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on December 09, 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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) 1 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tichy. (US 5,514,927 A).
As to claim 1, Tichy discloses a component [Piezoelectric bender 101 on FIG. 1] of a vibration device [Column 2, lines 1-10], comprising:
a housing [102 on FIG. 1]; and
an apparatus [Piezoelectric transducer 100 on FIG. 1] located in the housing, wherein the apparatus is a device of a piezoelectric bender [“The housing includes a piezoelectric bender mounted on a post in the house.” Column 2, lines 1-10].
As to claim 7, Tichy discloses the component of claim 1, wherein: the apparatus includes a piezoelectric element, and, in conjunction with other components of the apparatus, duplicates a piezoelectric bender [“The housing includes a piezoelectric bender mounted on a post in the house.” Column 2, lines 1-10].
Allowable Subject Matter
Claims 9-14, 17-18 and 20-24 are allowed.
Claims 2-6 are 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.
Examiner Notes
The allowed claims will be allowed upon submitting a terminal disclaimer.
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 1-7, 9-14, 17-18 and 20-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 12,167,205 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because at least one claim of the instant application is being taught by the claims of the U.S. Patent.
Patented claim 1 recites a component of a bone conduction device which perform the feature of wherein the bender apparatus is a device of a piezoelectric bender.
The pending claim 1 recites a component of a bone conduction device which perform the similar feature of wherein the bender apparatus is a device of a piezoelectric bender.
Therefore, the patented claim 1 anticipates the pending 1.
Pending claims
Patented claims
1. A component of a bone conduction device, comprising: a housing; and a bender apparatus located in the housing, wherein the bender apparatus is a device of a piezoelectric bender.
1. A component of a bone conduction device, comprising: a housing; and a bender apparatus located in the housing, wherein the bender apparatus is a device of a piezoelectric bender, the bender apparatus includes an actuator, and at least one of: (i) the actuator is configured to drive bending of the bender apparatus, and the actuator is isolated from bending of the bender apparatus; (ii) the component is configured such that the actuator functions as a7 puppeteer to cause the bender apparatus to bend upwards and/or downwards; or (iii) the actuator, in conjunction with other components of the bender apparatus, duplicates a piezoelectric bender.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 form.
Puria et al. (US 12,133,054 B2) discloses a device to transmit an audio signal to a user comprises a transducer and a support. The support is configured for placement on the eardrum to drive the eardrum.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERALD GAUTHIER whose telephone number is (571)272-7539. The examiner can normally be reached 8:00 AM to 4:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CAROLYN R EDWARDS can be reached at (571) 270-7136. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/GERALD GAUTHIER/Primary Examiner, Art Unit 2692
August 20, 2026
Prosecution Insights