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.
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Claim(s) 1-4, 9, 13, 15, 19, 24, 27-28, 30 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-2, 4, 6-7, 12 of U.S. Patent No. 11357982. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claim(s) is/are broader than the corresponding claim(s) in the reference patent and thus the corresponding claim(s) is/are a species of the more generic instant claim(s). It has been held that the generic invention is "anticipated" by the "species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Furthermore, they are not patentably distinct from each other because the instant application claim(s) overlap in scope with and are anticipated and/or obvious over the reference claim(s).
Regarding claim 1, U.S. Patent No. 11357982 teaches a method comprising:
receiving ambient signals at a first device of a recipient (claim 1 “sound processing”);
determining, by the first device, that an external component of a second device of the recipient is unavailable (claim 2 “triggering conditions”; claim 4 “wherein the one or more triggering conditions include detection of loss of coupling between the coil and the implantable component and receipt of predetermined data from a second sound processing unit.”); and
sending from the first device, in response to determining that the external component of the second device is unavailable, operating data associated with the ambient signals to an implantable component of the second device (claim 1 “selectively operate in a wireless streaming mode to encode input signals received at the one or more input devices and wirelessly transmit the encoded input signals by the wireless transceiver, wherein the wirelessly transmitted encoded input signals are at least partially used in stimulating a second ear of the recipient.”; claim 2 “automatically initiate the wireless streaming mode in response to detection of one or more triggering conditions.”).
Regarding claim 2, U.S. Patent No. 11357982 teaches wherein the operating data includes stimulation data (claim 1 “wirelessly transmitted encoded input signals are at least partially used in stimulating a second ear of the recipient.”).
Regarding claim 3, U.S. Patent No. 11357982 teaches wherein the operating data includes at least partially processed audio data (claim 1 “sound processing mode”).
Regarding claim 4, U.S. Patent No. 11357982 teaches wherein the first device and the second device communicate via a wireless link and wherein a type of the operating data that is transmitted to the implantable component of the second device is based on a type of the wireless link (claim 7; claim 12).
Regarding claim 9, U.S. Patent No. 11357982 teaches the method of claim 1, wherein the ambient signals are sound signals, and wherein the first device and the second device are hearing devices (claim 1 “sound…ear”).
Regarding claim 13, U.S. Patent No. 11357982 teaches an implantable medical device system, comprising:
a first medical device configured to deliver treatment to a first portion of a recipient, wherein the first medical device comprises an external component and an implantable component (claim 1; claim 4); and
a second medical device configured to deliver treatment to a second portion of a recipient, wherein the second medical device is configured to determine that the external component of the first medical device is unavailable and, in response to determining that the external component the first medical device is unavailable, send operating data to the implantable component (claim 1 “selectively operate in a wireless streaming mode to encode input signals received at the one or more input devices and wirelessly transmit the encoded input signals by the wireless transceiver, wherein the wirelessly transmitted encoded input signals are at least partially used in stimulating a second ear of the recipient.”; claim 2 “automatically initiate the wireless streaming mode in response to detection of one or more triggering conditions.”; claim 4 “wherein the one or more triggering conditions include detection of loss of coupling between the coil and the implantable component and receipt of predetermined data from a second sound processing unit.”).
Regarding claim 15, U.S. Patent No. 11357982 teaches wherein the operating data includes at least one stimulation data (claim 1 “wirelessly transmitted encoded input signals are at least partially used in stimulating a second ear of the recipient.”) or at least partially processed audio data (claim 1 “sound processing mode”).
Regarding claim 19, U.S. Patent No. 11357982 teaches wherein the first medical device and the second medical device communicate via a wireless link and wherein a type of the operating data that is sent to the implantable component of the second medical device is based on a type of the wireless link (claim 7; claim 12).
Regarding claim 24, U.S. Patent No. 11357982 teaches wherein the operating data is sent to the implantable component in response to an input from the recipient (claim 6).
Regarding claim 27, U.S. Patent No. 11357982 teaches one or more non-transitory computer readable storage media comprising instructions that, when executed by a processor of a first device of a recipient, cause the processor to:
receive environmental signals (claim 1 “sound processing”);
determine that an external component of a second device of the recipient is unavailable (claim 2 “triggering conditions”; claim 4 “wherein the one or more triggering conditions include detection of loss of coupling between the coil and the implantable component and receipt of predetermined data from a second sound processing unit.”); and
transmit operating data associated with the environmental signals to an implantable component of the second device in response to determining that the external component is unavailable (claim 1 “selectively operate in a wireless streaming mode to encode input signals received at the one or more input devices and wirelessly transmit the encoded input signals by the wireless transceiver, wherein the wirelessly transmitted encoded input signals are at least partially used in stimulating a second ear of the recipient.”; claim 2 “automatically initiate the wireless streaming mode in response to detection of one or more triggering conditions.”).
Regarding claim 28, U.S. Patent No. 11357982 teaches wherein the operating data includes at least one of stimulation data (claim 1 “wirelessly transmitted encoded input signals are at least partially used in stimulating a second ear of the recipient.”) or at least partially processed audio data (claim 1 “sound processing mode”).
Regarding claim 30, U.S. Patent No. 11357982 teaches wherein the instructions further cause the processor to communicate with the first device via a wireless link, and wherein a type of the operating data that is transmitted to the implantable component of the second device is based on a type of the wireless link (claim 7; claim 12).
Allowable Subject Matter
Claims 5-8, 17, 20-21, 31 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.
With respect to 102/103, the prior art of record does not disclose or fairly suggest either singly or in combination the claimed invention of independent claim 1 when taken as a whole, comprising, in addition to the other recited claim elements, determining, by the first device, that an external component of a second device of the recipient is unavailable; and sending from the first device, in response to determining that the external component of the second device is unavailable, operating data associated with the ambient signals to an implantable component of the second device.
With respect to 102/103, the prior art of record does not disclose or fairly suggest either singly or in combination the claimed invention of independent claim 13 when taken as a whole, comprising, in addition to the other recited claim elements, a second medical device configured to deliver treatment to a second portion of a recipient, wherein the second medical device is configured to determine that the external component of the first medical device is unavailable and, in response to determining that the external component the first medical device is unavailable, send operating data to the implantable component.
With respect to 102/103, the prior art of record does not disclose or fairly suggest either singly or in combination the claimed invention of independent claim 27 when taken as a whole, comprising, in addition to the other recited claim elements, determine that an external component of a second device of the recipient is unavailable and transmit operating data associated with the environmental signals to an implantable component of the second device in response to determining that the external component is unavailable
Park (US 20100249886 A1) teaches in claim 33 “A method for receiving communications in an implantable medical device, comprising: receiving a second modulated signal from an external device at a second telemetry receiver in the implantable medical device, wherein the second modulated signal comprises a second telemetry scheme; when reception of the second modulated signal is disabled, using a first telemetry receiver in the implantable medical device to listen for and demodulate a received first modulated signal to recover first data, wherein the first modulated signal comprises a first telemetry scheme; and using the recovered first data to enable the reception of the previously disabled second modulated signal.” But does not teach the recited claim elements as discussed above.
Conclusion
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/JONATHAN T KUO/ Primary Examiner, Art Unit 3792
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