8477978 et al.

Patent Trials and Appeals Board

Sep 11, 2020

2018003841 (P.T.A.B. Sep. 11, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
96/000,138 12/17/2015 8477978 12221-0002S 1002
105578 7590 09/11/2020
Protorae Law
1921 Gallows Road
9th Floor
Tysons, VA 22182
EXAMINER
GAGLIARDI, ALBERT J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/11/2020 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANOVA HEARING LABS, INC.
Patent Owner and Appellant
____________

Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2
Technology Center 3900
____________

Before JOHN A. JEFFERY, DENISE M. POTHIER, and MICHAEL J.
ENGLE, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
This case returns to us after the Court of Appeals for the Federal
Circuit vacated and remanded the decision of another panel of this Board
that affirmed the Examiner’s decision to reject claims 1–6, 9, 10, 12–39, 41–
47, 49–58, and 63–70.1 In re Anova Hearing Labs, Inc., 809 F. App’x 840
(Fed. Cir. 2020) (unpublished).
The court held that the Board’s decision did not articulate a basis or
rationale sufficient for the court to determine whether substantial evidence
supported the Board’s motivation to combine finding and, therefore, vacated
and remanded the Board’s decision. Anova, 809 F. App’x at 841.

1 The Examiner withdrew the rejection of claims 7, 8, and 11 (Ans. 14, 34),
and claims 40, 48, and 59–62 were cancelled.
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

2
Specifically, the court noted that the Board’s analysis did not indicate why a
person of ordinary skill in the art would modify an in-the-ear (ITE) device
like that in the Brown or Sauer references2 to include an “open passageway”
that allows ambient noise to enter the ear canal. Id. at 843. The court added
that the Board’s general statements that a person of ordinary skill in the art
would combine any of the cited references to address the problem of
occlusion effect in hearing aids does not explain what features of the
references, or even which references, would be combined to achieve the
claimed invention. Id.
The court also noted that the Board failed to explain why a person of
ordinary skill in the art would be motivated to modify Brown, which already
includes vents, to address occlusion effect. Id. The court further noted that
the Board did not explain why an ordinarily skilled artisan would conclude
that Brown needed to be modified, and that it was unclear why the Board
found a skilled artisan would be motivated to combine the five references
cited in the rejection. Id. The court added that it was also unclear precisely
what the Board was using the different references for in the five-reference
rejection. Id. Because the Board failed to articulate sufficiently a reason
why a person of ordinary skill in the art would have been motivated to
combine the cited ITE and behind-the-ear (BTE) devices, the court vacated
and remanded the case to give the Board the opportunity to explain its
reasoning. Id.

2 These references are cited in full in this Decision below.
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

3
Upon reconsideration of the entire record in light of this remand, we
reverse the Examiner’s decision to reject claims 1–6, 9, 10, 12–39, 41–47,
49–58, and 63–70, and enter new grounds of rejection.

STATEMENT OF THE CASE
This proceeding arose from a request for supplemental examination of
United States Patent 8,477,978 B2 (“the ’978 patent”), issued to James F.
Caldarola on July 2, 2013.
The ’978 patent is directed to a completely-in-canal (CIC) hearing aid
in which a flexible mounting insert secured in the bony region of the ear
canal holds the device case in place. ’978 patent col. 5, ll. 4–9. The patent
describes the advantages of allowing natural sounds to flow into the ear
canal and mix with the augmented sound generated by the hearing device.
Id. col. 2, ll. 57–60; col. 3, ll. 3–6; col. 5, ll. 46–52; Fig. 6. That natural
sound flows past the hearing aid’s case inserted into the ear canal and
through an open area provided on an outer portion of a flexible insert
mounted within the ear canal. Id. col. 3, ll. 3–6. The top portion of the
flexible insert is attached to the receiver section of the case. Id. col. 2, l. 65
– col. 3, l. 2.
A partial detail view of Figure 6 of the ’978 patent illustrates this
arrangement below:

Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

4

Partial detail view of Figure 6 of the ’978 patent

Exemplary claim 1 reads as follows:
1. A completely in the canal hearing device [adapted for insertion
substantially within the ear canal], said device comprising:
a case having a power source, a microphone, a receiver element, and
an acoustic passageway, wherein said case, when mounted in the ear canal,
provides at least one open passageway between the ear canal and the case;
at least one flexible insert comprising a hub portion and an outer
portion adjacent to the hub portion, the hub portion attached to a tip formed
at a receiver end of the case, the outer portion providing [attached to the case
and defining] an open area when mounted [within the wearers] against a
wearer’s ear canal to create a sound path extending through the at least one
open passageway and said open area, wherein the open area defined by the
outer portion [at least one flexible insert] ranges from about 5 to 70% when
the flexible insert is in its mounted position within the ear canal.

Appeal Br. 36 (Claims App’x) (underlining includes amendments to claim
language during reexamination).

THE REJECTIONS
The Examiner rejected claims 1–6, 9, 10, 12–14, 18–36, 38, 39, 41–
47, 52–58, and 63–67 under 35 U.S.C. § 103 as unpatentable over Brown
(US 6,129,174; issued Oct. 10, 2000), Appellant’s admitted prior art
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

5
(“APA”),3 Bauman (US 7,421,086 B2; issued Sept. 2, 2008) (“Bauman
’086”), Bauman (US 7,076,076 B2; issued July 11, 2006) (“Bauman ’076”),
and Sauer (US 5,654,530; issued Aug. 5, 1997). Ans. 3–12.4
The Examiner rejected claims 15, 16, 36, 37, 49, and 50 under
35 U.S.C. § 103 as unpatentable over Brown, APA, Bauman ’086, Bauman
’076, Sauer, and Saxton (US 2004/0258263 Al; published Dec. 23, 2004).
Ans. 12–13.
The Examiner rejected claims 17, 51, and 68–70 under 35 U.S.C.
§ 103 as unpatentable over Brown, APA, Bauman ’086, Bauman ’076,
Sauer, and Kuo (US 6,097,823; issued Aug. 1, 2000). Ans. 13.

THE OBVIOUSNESS REJECTION OVER BROWN, APA,
BAUMAN ’086, BAUMAN ’076, AND SAUER

The Examiner finds that Brown discloses a CIC hearing device
comprising a case (receiver module 46) with power source, microphone,
receiver element, and acoustic passageway, where the case, when mounted
in the ear canal, provides at least one open passageway. Ans. 3. According
to the Examiner, it is typical in the art to make the case smaller than the ear
canal and rely on a replaceable acoustic coupler, namely a flexible insert,
attached to the case and adapted to be inserted deeply in the ear canal while

3 The Examiner noted that, in addition to the APA, the teachings of Fretz
(US 7,027,608 B2; issued Apr. 11, 2006) were incorporated by reference in
the ’978 patent and considered as admitted prior art. Ans. 3 n.1.
4 Throughout this Decision, we refer to (1) the Appeal Brief filed August 7,
2017 (“Appeal Br.”); (2) the Examiner’s Answer mailed October 16, 2017
(“Ans.”); and (3) the Reply Brief filed December 18, 2017 (“Reply Br.”).
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

6
making minimal contact therewith. Id. The Examiner adds that Sauer
describes an annular gap “between the case and hearing aid housing and the
auditory canal.” Id.
The Examiner also finds that Brown discloses a flexible insert,
namely a coupler, comprising a “hub portion” (snap ring 34) and “outer
portion” (cap portion 36) adjacent to the hub portion attached to a tip formed
at the case’s receiver end. Ans. 3. According to the Examiner, Brown’s
insert provides an open area (venting system) when mounted against a
wearer’s ear canal to create a sound path extending through the at least one
open passageway and open area. Id. at 3–4.
Although the Examiner acknowledges that Brown does not disclose
the recited 5–70% open area range, the Examiner nonetheless concludes
providing an open area within this range would have been an obvious and
predictable design choice to achieve the same effect described in the ’978
patent. Ans. 4.
The Examiner also finds that Bauman ’086, Fretz, and Bauman ’076
teach flexible inserts that provide an open area in the outer portion of their
respective inserts. Ans. 4–5. Based on these teachings, the Examiner
concludes that configuring a flexible insert such that the open area is
provided in the insert’s outer portion would have been an obvious and
predictable design choice. Id. at 5. According to the Examiner, because
there are only two predictable possibilities for the open area’s location,
namely the insert’s inner or outer portions, choosing either possibility would
have been “reasonably obvious.” Id.
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

7
The Examiner adds that because Bauman ’086 allows selecting the
open areas defined by an ITE device over a very broad range, it would be
apparent to ordinarily skilled artisans that the open area would “necessarily
substantially overlap the recited area of 5% to 70%.” Ans. 6.
Appellant argues that not only does Brown fail to teach the recited
open passageway between the ear canal and case, but also the Examiner’s
reliance on Sauer is unrelated to the question of the open passageway as it
relates to Brown. Appeal Br. 16–18. Appellant also contends that the
Examiner erred by asserting that ordinarily skilled artisans would modify
Brown’s acoustic coupler to have the open areas of the inserts of Bauman
’086, Fretz, or Bauman ’076 because these BTE devices are technically
different from the ITC devices of Brown and Sauer, and that the proposed
combination would destroy the seal that Brown requires. Id. at 18–19.
According to Appellant, not only is Brown silent regarding an open area, but
also adding openings in Brown’s outer portion as the Examiner proposes
would destroy its sealing function, thus rendering the device inoperable. Id.
at 21–23. Appellant adds that neither the size of (1) the gap between the
threads on Brown’s receiver module’s adapter sleeve and the acoustic
coupler’s snap ring, nor (2) Brown’s sound apertures (e.g., 44) are
optimizable variables. Reply Br. 9–10.

ISSUE
(1) Under § 103, has the Examiner erred by finding that Brown, APA,
Bauman ’086, Bauman ’076, and Sauer collectively would have taught or
suggested a CIC hearing device with (1) a case that, when mounted in the
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

8
ear canal, provides at least one open passageway between the ear canal and
the case; and (2) a flexible insert whose outer portion provides an open area
when mounted against a wearer’s ear canal to create a sound path extending
through the open passageway and open area, where the open area defined by
the outer portion ranges from about 5 to 70% when the flexible insert is in
the mounted position in the ear canal?
(2) Is the Examiner’s combining the teachings of these references
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion?

ANALYSIS
As indicated above, and as the court emphasized, the Examiner’s
obviousness rejection is based on five references, namely Brown, APA,
Bauman ’086, Bauman ’076, and Sauer. See Anova, 809 F. App’x at 843.
The Examiner relies principally on Brown for teaching or suggesting many
elements of claim 1, including the recited “open area,” which is mapped to
Brown’s venting system described in column 4, lines 61 to 65. Ans. 3–4.
Although the Examiner acknowledges that Brown does not teach
explicitly that the “open area” ranges from about 5 to 70% when the flexible
insert is in the mounted position in the ear canal as claimed, the Examiner
cites various teachings from the other four cited references to cure that
deficiency in concluding that the claim would have been obvious. See Ans.
4–6.
A key aspect of the Examiner’s rationale is that, despite Brown’s
“open area” established via the venting system, it would have nonetheless
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

9
been obvious to add “open areas” to the outer portion of Brown’s dome-
shaped cap portion 36 given the structures shown in the secondary
references such that Brown’s open area falls in the recited range. See Ans.
33 (“[I]t is not the examiner’s position that [Brown’s] apertures (44) would
be eliminated, but merely that open areas could be added to the outer portion
of the dome.”) (emphasis added); see also Ans. 4–6 (describing various
flexible inserts with open areas in the inserts’ outer portions in connection
with the proposed modification of Brown).
Upon reconsideration in light of the court’s decision, we find the
Examiner’s articulated basis in concluding that the claims would have been
obvious over the five cited references is untenable. One major problem with
the Examiner’s articulated reasoning is that, as noted above, the Examiner
proposes to add openings to Brown’s cap portion 36 that contacts and seals
the ear canal, thus possibly destroying the acoustic seal created by that
structure that Brown suggests is necessary to avoid feedback, provide
fidelity, and reproduce sound efficiently. See Brown, col. 1, l. 65 – col. 2, l.
38; col. 9, ll. 3–5. Accord Appeal Br. 19, 22–23 (noting this point); Reply
Br. 11 (“To further modify Brown so as to include openings located in the
cap portion (36), located outside the venting portion, would destroy the
acoustic sealing required by Brown . . . .”) (emphasis added).
Our emphasis above underscores a key defect in the Examiner’s
proposed modification to Brown that presumably adds openings to Brown’s
cap portion 36 beyond the cap’s venting portion formed by apertures 44
shown in Brown’s Figure 8 reproduced below:

Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

10

Brown’s Figure 8 showing cap portion 36 and apertures 44

Although we see no reason why more openings could not be added to
the outer portion of Brown’s cap 36 in the region near where apertures 44
are located as explained in our new ground of rejection below, to suggest
that these additional openings could also be added beyond that region,
including the outer periphery of cap 36, as the Examiner proposes, could
compromise the requisite seal created by the cap depending on the location
of those openings, and, consequently, could destroy its principle of
operation. See Brown, col. 9, ll. 3–5 (“After insertion, the compliant cap
portion 36 conforms to the shape of the ear canal 10, lightly contacting the
canal walls and acoustically sealing the ear canal.”) (emphasis added); see
also id., col. 1, l. 66 – col. 2, l. 9 (discussing the necessity for acoustic
sealing in CIC devices).
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

11
Where, as here, the Examiner’s proposed modification to Brown
could render the device unsatisfactory for its intended purpose to mount a
hearing device in an ear canal with a coupler that acoustically seals the ear
canal, the Examiner’s obviousness rejection based on that modification is,
therefore, problematic. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
1984). Given this deficiency, the Examiner’s proposed combination is not
supported by sufficient articulated reasoning with rational underpinning to
justify the Examiner’s obviousness conclusion.
Therefore, we are persuaded that the Examiner erred in rejecting
claims 1–6, 9, 10, 12–14, 18–36, 38, 39, 41–47, 52–58, and 63–67 as
obvious over Brown, APA, Bauman ’086, Bauman ’076, and Sauer.
Because this issue is dispositive regarding our reversing the Examiner’s
rejection of these claims, we need not address Appellant’s other associated
arguments.

Claims 38, 39, and 41–46
In addition to the above-noted deficiencies, we add that the
Examiner’s obviousness rejection of independent claim 38 is problematic for
another reason. The recited method requires, among other things, using a
substitute insert with a different open area until an onset of feedback is
detected. The Examiner found, without supporting evidence, that such
adjustments are “typical in the art,” and “control of such feedback is
generally performed by providing inserts with different amounts of open
area and asking the user questions about comfort an[d] quality of the sound.”
Ans. 10–11, 36.
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

12
Upon reconsideration, we agree with Appellant (Appeal Br. 28; Reply
Br. 30) that the Examiner’s findings and conclusions regarding claim 38’s
unique feedback detection limitation are speculative and unsubstantiated
and, therefore, untenable on this record.
Accordingly, we do not sustain the Examiner’s rejection of (1)
independent claim 38, and (2) dependent claims 39 and 41–46 for that
additional reason.

Claims 63 and 65–67
In addition to the above-noted deficiencies, we add that the
Examiner’s obviousness rejection of independent claim 63 is problematic for
another reason. Independent claim 63 recites, in pertinent part, the flexible
insert comprises projecting elements which extend from an insert portion
attached to the case, where the projecting elements provide an open area
when mounted against a wearer’s ear canal to create sound path through the
open passageway and open area, and that the projecting elements define the
open area.
Upon reconsideration, we fail to see how or why it would have been
obvious to add projecting elements to Brown’s insert as the Examiner
proposes, such that the projecting elements provide an open area when
mounted against a wearer’s canal as claimed. Because it is critical for
Brown’s cap 36 to maintain an acoustic seal to avoid feedback, provide
fidelity, and reproduce sound efficiently (see Brown, col. 1, l. 65 – col. 2, l.
38; col. 9, ll. 3–5), providing projections in connection with cap 36 to
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

13
provide an open area as the Examiner proposes would break the seal, thus
destroying Brown’s principle of operation.
Accordingly, we do not sustain the Examiner’s rejection of (1)
independent claim 63, and (2) dependent claims 65–67 for that additional
reason.

THE OTHER OBVIOUSNESS REJECTIONS
Because the Examiner’s obviousness rejections of (1) claims 15, 16,
36, 37, 49, and 50 over Brown, APA, Bauman ’086, Bauman ’076, Sauer,
and Saxton; and (2) claims 17, 51, and 68–70 over Brown, APA, Bauman
’086, Bauman ’076, Sauer, and Kuo (Ans. 12–13) are also deficient for the
reasons noted above and due to their ultimate dependencies on claims 1, 27,
38, 47, and 63, we also do not sustain these rejections for the reasons
previously discussed.

NEW GROUND OF REJECTION OVER BROWN
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection of
claims 1–6, 12–14, 18, 19, 21–35, 37, 47, 49, 52–58, and 64 under 35 U.S.C.
§ 103(a) as obvious over Brown.

Claim 1
Regarding independent claim 1, Brown discloses a “hearing device”
comprising “a case” (receiver module 46) with “a receiver element” and
“acoustic passageway,” where the case is inserted completely within the ear
canal. See Brown Fig. 9. Although Brown does not disclose explicitly that
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

14
the hearing device is a CIC device whose case also has “a power source” and
“microphone” as claimed, providing such a CIC device would have been at
least an obvious variation, particularly in light of the technical and cosmetic
advantages of ITC and CIC devices over larger BTE and ITE hearing
devices. See Brown, col. 1, ll. 16–31. Given these known advantages, it
would have been obvious to ordinarily skilled artisans to provide a CIC
device, whose case also includes a power source and microphone, in Brown
to integrate the components in a single case that is inserted completely in the
ear canal. This integration via a CIC device would, among other things,
preclude the need for an additional housing for the power source and
microphone, thus reducing the device’s size, weight, and number of parts.
See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,
464 F.3d 1356, 1368 (Fed. Cir. 2006) (“An implicit motivation to combine
exists not only when a suggestion may be gleaned from the prior art as a
whole, but when the ‘improvement’ is technology-independent and the
combination of references results in a product or process that is more
desirable, for example because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient.”) (emphasis added).
We reach this conclusion even assuming, without deciding, that
Brown’s device shown in Figure 9 is an ITC device. In short, providing a
CIC device in lieu of an ITC device would have been an obvious variation
within the level of ordinary skill in the art—an enhancement that uses prior
art elements predictably according to their established functions. See KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

15
That Appellant acknowledged Brown’s CIC device in the oral hearing
on June 11, 2018 and in the Reply Brief only underscores this point. See
Oral Hearing Transcript mailed Aug. 2, 2018 (“Tr.”), at 6 (noting that
arrows 48 in Brown’s Figure 8 are for a vent in a CIC device); see also Tr. 7
(noting that “Brown is like any other CIC device”); Reply Br. 1 (referring to
“Brown’s CIC device”); Reply Br. 3 (“The known acoustic sealing desired
for a CIC device with venting capability is clearly an objective of Brown.”)
(emphasis added); Reply Br. 8 (noting that Brown is limited to ITC and CIC
devices).
As shown in Brown’s annotated Figure 9 below, Brown’s case 46,
when mounted in the ear canal, provides at least one “open passageway”
(indicated in yellow) between the ear canal and the case.

Brown’s Figure 9 annotated to show the open passageway

Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

16
As shown above, Brown’s Figure 9 shows an “open passageway” in
yellow between the ear canal and case as claim 1 recites, particularly when
considered in light of Brown’s disclosed arrangement that allows low-
frequency acoustic energy to escape from the ear canal to the external
environment—an acoustic escape route that at least suggests an open
passageway. See Brown, col. 8, ll. 28–31.
We reach this conclusion despite the presence of external module 72
in Brown’s Figure 9 that, according to the Examiner’s unrebutted finding,
pertains only to an ITC device—not a CIC device. See Ans. 18. That is, the
Examiner found that Brown teaches using the disclosed acoustic coupler
with a CIC device that lacks external module 72 (i.e., “second module” in
the Examiner’s parlance). See id. Appellant did not squarely address—let
alone persuasively rebut—these particular findings which we find
reasonable and, therefore, incorporate here in the new ground of rejection
over Brown.
In any event, even if Brown’s external module 72 in Figure 9 was
required—which it is not according to the Examiner’s unrebutted finding—
Brown’s arrangement nonetheless allows low-frequency acoustic energy to
escape from the ear canal to the external environment—an acoustic escape
route that at least suggests the recited open passageway despite the external
module’s presence. See Brown, col. 8, ll. 28–31. Notably, Appellant
acknowledges providing an open passageway between Brown’s external
module and the outer ear is at least a possibility—an acknowledgement that
only underscores that providing such an open passageway would have been
at least an obvious variation. See Appeal Br. 17 (noting that it is “equally
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

17
plausible” that there does not have to be an open passageway between
Brown’s external module 72 and the outer ear); see also id. (acknowledging
that this open passageway is a possibility—not a certainty).
Brown’s CIC device also comprises “a flexible insert” (acoustic
coupler) comprising a “hub portion” and an adjacent “outer portion,” where
the hub portion is attached to a tip formed at a receiver end of the case. This
limitation does not appear in the ’978 patent’s claims, but was rather added
to the claims in a reexamination amendment filed October 3, 2016 as shown
below:

As shown above, the October 2016 amendment not only added that
the insert has a hub portion and adjacent outer portion, but also added the
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

18
hub portion’s structural details, namely that it is “attached to a tip formed at
a receiver end of the case.”
The ’978 patent does not define the terms “hub portion” or “outer
portion” to clarify their meaning or interpretation. In fact, the ’978 patent
says nothing about an insert’s “outer portion,” much less that it is adjacent to
a “hub portion.” The ’978 patent does, however, use the term “hub” four
times as follows, but only one of them refers to a “hub portion”:
The flexible mounting insert member has apertures made
by perforating or slitting or cutting custom fabricating the insert
member with openings. The mounting insert member can be
prefabricated with openings at the factory or can be custom cut
or the technician dispensing the aid can otherwise adjust the
area manually. Alternatives include adjusting the open area of
the flexible mounting by using pre-made mounts inserts having
different opening areas or custom cutting or perforating or
providing new or additional opening to a preformed insert
member originally having no open area in the region between
the mounting hub and the outer circumference of the insert.

’978 patent, col. 3, ll. 18–29 (emphasis added).

FIGS. 7A and 7B, for example, shows a domed type
insert 71 mounted and retained by nub 72 at the end of
protrusion 73. The dome is provided with slits or openings,
which can be preformed at the factory or custom cut by the
technician fitting the aid. For users with more pronounced high
frequency losses, less open areas is provided in the mounting
insert by employing by decreasing the number and/or area of
the openings. The openings can be of any shape including slits,
perforations, apertures and the like and are formed in the
shaped mounting insert either before or after manufacture. It is
important that in the blade or vaned type mounting inserts, the
projecting vanes or blades, which emanate substantially radially
from the hub portion do not touch to the extent that openings
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

19
are closed after operational placement of the case into the
wearer’s ear canal.

’978 patent, col. 5, ll. 53–67 (emphasis added).

Alternatively, a series of pre-formed domes of with open
areas ranging from 5% to about 60% can be utilized so that at
the onset of feedback, the domed inserted is swapped out with
another insert of less open area. It should be also kept in mind
that each pre-formed dome be sized to comfortably fit when
mounted substantially in the wearer’s Inner ear. As the
diameter of the wearer’s ear canal varies from person to person,
a series of preformed inserts of varying diameters is preferably
utilized. The hole or opening pattern is made in the area
generally between the hub area of the “dome” or equivalent
insert to the outer periphery of the dome that will not come into
contact with the inner ear. Any hole or opening pattern can be
used, both symmetrically and non-symmetrically placed in the
insert. Also, different sizes and shapes of openings can be
employed in combination within a specific hole pattern on the
domed or equivalent insert.

’978 patent, col. 7, l. 55 – col. 8, l. 3 (emphasis added).

[Claim] 9. The device of claim 1, wherein the generally
concave element is a bladed element having flexible blades
extending substantially in a radial direction from a hub attached
to the case.

’978 patent, col. 9, ll. 4–7 (emphasis added).
In short, the ’978 patent is not a model of clarity as to what exactly
constitutes an insert’s “hub portion” and “outer portion,” let alone a hub
portion that is attached to a tip formed at a receiver end of the case as
claimed. Perhaps the ’978 patent’s most relevant articulation in this regard
is that pertaining to the “hub area” in column 7 quoted above, where “[t]he
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

20
hole or opening pattern is made in the area generally between the hub area
of the ‘dome’ or equivalent insert to the outer periphery of the dome that
will not come into contact with the inner ear” (emphasis added). ’978
patent, col. 7, ll. 63–66.
Although this discussion may shed some light on the distinction
between the recited “outer portion” and “hub portion,” notwithstanding the
’978 patent’s reference to an “outer periphery”—not “outer portion” as
claimed—we nevertheless see no reason to import this discussion or the
associated figures of the ’978 patent (to the extent they show such a
distinction) into the claims. See Phillips v. AWH Corp., 415 F.3d 1303,
1323 (Fed. Cir. 2005) (en banc) (“[A]lthough the specification often
describes very specific embodiments of the invention, we have repeatedly
warned against confining the claims to those embodiments. . . . [C]laims
may embrace different subject matter than is illustrated in the specific
embodiments in the specification.”) (citations and internal quotation marks
omitted).
Because the ’978 patent does not describe the terms “outer portion”
and “hub portion” with particularity, let alone define those terms to clarify
their meaning or interpretation, we construe these terms with their plain
meaning.
The term “hub” is defined, in pertinent part, as “the cylindrical center
of any circular, rotating part.” ACADEMIC PRESS DICTIONARY OF SCIENCE &
TECHNOLOGY 1050 (Christopher Morris ed., 1992) (“Academic Press
Dictionary”) (emphasis added). Another dictionary defines the term “hub”
similarly as “[t]he cylindrical central part of a wheel, propeller, or fan.”
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

21
MCGRAW-HILL DICTIONARY OF SCIENTIFIC & TECHNICAL TERMS 958 (Sybil
P. Parker ed., 5th ed. 1994) (“McGraw-Hill Dictionary”) (emphasis added).
As emphasized above, these dictionaries define the term “hub” in
terms of a cylindrical center and a cylindrical central part, respectively.
Given these definitions, Brown’s cylindrical snap ring 34, which is a
flattened cylinder (Brown, col. 5, ll. 51–52) that is shown in red in the partial
detail view of Brown’s Figure 8 below, reasonably constitutes a “hub
portion,” namely the cylindrical central part of the insert consistent with the
term’s plain meaning.

Brown’s Figure 8 annotated to show hub portion in red
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

22

Brown’s Figure 8 also shows the recited “outer portion” in blue
adjacent to the “hub portion” under the term’s broadest reasonable
interpretation in light of the Specification which, as noted above, says
nothing about an insert’s “outer portion,” much less that it is adjacent to a
“hub portion” as claimed.
We, therefore, construe the term “outer portion” with its plain
meaning. The term “outer” is defined, in pertinent part, as “exterior;
external.” WEBSTER’S NEW WORLD DICTIONARY OF AMERICAN ENGLISH
961 (3d College ed. 1993) (“Webster’s Dictionary”). Another dictionary
defines the term “outer” as “away from the inside.” HARPERCOLLINS
COMPACT DICTIONARY & THESAURUS 527 (2003). Given these definitions,
an insert’s “outer portion” is, therefore, an exterior or external portion, or a
portion that is away from the inside of the insert.
As shown below in the annotated partial detail view of Brown’s
Figure 8, the insert’s cap portion 36—including the flattened area with
apertures 44 shown in blue—reasonably constitutes an “outer portion”
because it is an exterior or external portion, or a portion that is away from
the inside of the insert. And, as noted above, the annotated partial detail
view of Brown’s Figure 8 also shows the insert’s “hub portion,” namely
cylindrical snap ring 34, which is a flattened cylinder (Brown, col. 5, ll. 51–
52) that is shown in red. As noted above, Brown’s snap ring 34 reasonably
constitutes a “hub portion” consistent with the plain meaning of the term
“hub” that is defined in terms of a cylindrical center and a cylindrical central
part, respectively. See Academic Press Dictionary 1050; see also McGraw-
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

23
Hill Dictionary 958. An annotated partial detail view of Brown’s Figure 8 is
shown below illustrating the insert’s adjacent hub and outer portions that are
colored in red and blue, respectively.

Partial detail view of Brown’s Figure 8 annotated to show insert’s
adjacent hub and outer portions

As shown above, the flat portion of cap 36 with apertures 44 that at
least partially defines an “open area” is part of an “outer portion” of the
insert under the term’s broadest reasonable interpretation, namely a portion
that is exterior, external, or away from the inside of the insert. That Brown’s
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

24
Figure 8 shows the snap ring 34 in the insert’s interior region opposite the
exterior cap 36 and its more pliable external surfaces and apertures only
underscores this point. See Brown, col. 6, ll. 15–19 (“Although the snap
ring 34 and the cap portion 36 are integral to each other, the cap portion
must be relatively more pliable than the snap ring in order to conform
readily to the varied contours of the user’s ear canal, while resting lightly
against the canal walls.”).
In addition, Brown’s “hub portion,” namely the snap ring 34 shown in
red in the annotated partial detail view of Brown’s Figure 8 above, is
“attached to a tip formed at a receiver end of the case” as claimed. As
shown in that figure, snap ring 34 is integral with cap 36 and is attached to a
tip (sound port 51) formed at the case’s receiver end via adapter sleeve 50.
See Brown, col. 7, ll. 16–18; Figs. 5, 8, 9.
As shown in the annotated partial detail view of Brown’s Figure 8
above, the insert’s “outer portion,” namely the insert’s cap portion 36 that
includes the flattened area with apertures 44 shown in blue, provides an
“open area,” including the apertures 44 and the air gap between snap ring 34
and adapter sleeve 50 (Fig. 5) shown in yellow in annotated Figure 8.
These apertures 44 and air gap collectively provide an “open area”
that creates a sound path extending through the open area and the open
passageway as claimed. This “open area” is established by creating a
pathway for the rearward diffusion of accumulated acoustical energy as
indicated by arrows 48 to control occlusion as noted in Brown, column 8,
lines 4 to 32. That Appellant acknowledged in the oral hearing the “open
area” defined by apertures 44 and the air gap in Brown’s Figure 8 only
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

25
bolsters this interpretation. See Tr. 5:24–25 (arguing that “the portion that
attaches to the receiver is what has the open area in Brown”) (emphasis
added).
Appellant’s contention that Brown’s flat part of cap 36 with apertures
44 in Figure 8 is only in a “hub portion,” and not in an “outer portion” that
provides an “open area” as claimed (see Reply Br. 10; Tr. 5:23–6:3, 6:8–10),
is unavailing. First, this assertion is unsubstantiated by persuasive evidence
and, therefore, has little probative value. See In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); see also Enzo Biochem, Inc. v. Gen-Probe, Inc., 424
F.3d 1276, 1284 (Fed. Cir. 2005) (“Attorney argument is no substitute for
evidence.”). Second, Appellant’s contention is not commensurate with the
scope of the claim. As noted previously, the recited “outer portion” includes
the flat portion of Brown’s cap 36 with apertures 44 that at least partially
defines an open area as claimed. To the contrary, the few examples in the
’978 patent all depict a hub with only sides, not an end cap, consistent with
our interpretation noted above. See, e.g., ’978 patent, Fig. 7A. And
consistent with the ordinary meaning of the term “outer,” the flat part of cap
36 with apertures 44 forms part of the exterior of Brown’s flexible insert.
See, e.g., Brown, Fig. 8.
To be sure, Brown’s annotated Figure 9 below shows that the open
passageway (shown in yellow) is upstream from the receiver module 46’s
output.

Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

26

Brown’s Figure 9 annotated to show the open passageway

As shown above, amplified sound outputted from the receiver module
is directed towards the eardrum as shown by the three semicircles adjacent
the sound apertures 44. Moreover, as shown in Brown’s Figure 8, the open
area created by apertures 44 and the air gap also causes amplified sound to
travel in a direction away from the eardrum as shown by arrows 48 and,
therefore, towards the “open passageway” shown in yellow in Brown’s
annotated Figure 9 below.

Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

27

Partial detail view of Brown’s Figure 8 annotated to show sound
directed towards the “open passageway”

Therefore, Brown’s “outer portion” provides an “open area” when
mounted against a wearer’s ear canal to create a sound path extending
through the “open passageway” and “open area,” albeit extending away from
the eardrum and to the external environment—an acoustic escape route that
at least suggests an open passageway as noted previously. See Brown, col.
8, ll. 28–31.
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

28
In addition, ordinarily skilled artisans would understand from Brown
that at least some of that blended sound will also travel towards the eardrum
as well, such as “during abrupt shifts in atmospheric pressure; for example,
during takeoff and landing of an aircraft.” See ’954 patent, col. 8, ll. 28–39.
Although the sound associated with these events may be brief and perhaps
lower in volume than other sounds, these sounds will nevertheless blend
with the amplified sound and be directed toward the eardrum. To the extent
that Appellant contends otherwise (see Appeal Br. 7, 16–17; Reply Br. 11),
there is no persuasive evidence on this record to substantiate such a
contention.
In short, as explained above, we find that Brown discloses every
recited element of claim 1 except for disclosing explicitly that the open area
defined by the outer portion ranges from 5 to 70% when the flexible insert is
in the mounted position within the ear canal as claimed (“the 5 to 70%
limitation”).
Despite Brown not explicitly disclosing the 5 to 70% limitation, we
nonetheless conclude that it would have been obvious for ordinarily skilled
artisans to change the size of at least Brown’s sound apertures 44 (which,
along with the air gap shown in yellow in the annotated partial detail view of
Brown’s Figure 8 above, constitute the recited “open area” provided by the
“outer portion” 36) to achieve the recited 5 to 70% limitation as a routine
optimization of a result-effective variable.
We reach this conclusion even assuming, without deciding, that this
unspecified open area percentage is with respect to the area of the outer
portion as Appellant’s attorney argued in the oral hearing—an area that is
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

29
presumably the surface area of the insert’s outer portion when considered in
light of Appellant’s reference to the perforated dome in ’978 patent’s Figure
6.5 See Tr. 4:12–5:4.
Notably, however, Appellant’s characterization at the hearing is
inconsistent with the language of claims 4 and 5 that call for the open area to
be from about 5% to about 25% or 50%, respectively, of the at least one
flexible insert—an insert that has both a hub portion and outer portion under
the terms of independent claim 1 from which claims 4 and 5 depend. Even

5 The oral hearing’s relevant dialogue is reproduced below:

JUDGE JEFFERY: [W]hat is [the 5 to 70 percent] relative to, 5 to 70
percent of what?

MR. BRODY: It’s the open area in the outer portion. The flexible insert has
a hub which is attached to the tip of the receiver and then there’s an outer
portion around that and it’s the openings in the outer portion that define the
open area.

JUDGE JEFFERY: So it’ll be 5 to 70 percent of the overall structure size or
what does the percentage exactly pertain to?

MR. BRODY: Well, the open area is the area that comprises the outer
portion when the insert is mounted in the ear canal. . . . [I]f you look at
figure 6 [of the ’978 patent] -- the dome has openings and the dome, we
would interpret, is the outer portion and 5 to 70 percent of the area of that
dome would have the openings.

JUDGE JEFFERY: So it’s the area, percentage of the area.

MR. BRODY: Yes, yes.

Tr. 4:12–5:4 (emphasis added).
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

30
when read in light of the Specification, it is unclear from claims 4 and 5
whether the recited percentages of the flexible insert are with respect to the
insert’s area, much less whether such an area is the insert’s total surface area
or cross-sectional area.
Leaving these inconsistencies aside that effectively render the claims
indefinite as noted later in this Decision, it is nonetheless well settled that “it
is not inventive to discover the optimum or workable ranges by routine
experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). But a
particular parameter must first be recognized as a result-effective variable
(i.e., a variable that achieves a recognized result) before determining
whether the variable’s optimum or workable ranges can be characterized as
routine experimentation. See In re Antonie, 559 F.2d 618, 620 (CCPA
1977).
Notably, Brown discloses the general conditions of the 5 to 70%
limitation, namely that the apertures and air gap between snap ring 34 and
adapter sleeve 50 provide an “open area” by creating a pathway for the
rearward diffusion of accumulated acoustical energy as indicated by arrows
48 to control occlusion as noted in Brown, column 8, lines 4 through 32.
Although Brown does not specify the size of apertures 44 or the air gap,
these openings nonetheless provide the requisite sound pathway to control
occlusion—the very effect achieved by the claimed invention’s open
area. See, e.g., ’978 patent, col. 6, ll. 7–12 (noting that the design shown in
Figure 7C permits manufacturing standardized dome inserts with pre-made
openings for adjustment with customized off-the-shelf washers to
accommodate users with varying hearing losses and canal shapes to
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

31
optimally reduce the wearer’s occlusion effect); col. 7, ll. 18–22 (describing
an example of an open propeller type insert having about a 10–60% open
area, and more preferably 25–50% open area, that provided adequate gain
while significantly reducing complaints involving occlusion); col. 7, ll. 51–
54 (noting that a 5% opening “near In” [sic] the central portion of a domed
insert provided increased relief from the occlusion effect); col. 8, ll. 4–8
(noting that the designs of Figures 7A to 7D can be adjusted to minimize
occlusion complaints). Cf. id. col. 7, ll. 3–8 (describing an example where a
dome had no openings where the wearer complained about hearing his own
voice).
Because Brown’s apertures and air gap provide an open area to
control occlusion—the very effect achieved by the claimed invention’s open
area—the size of Brown’s open area, including the size of apertures 44, is a
result-effective variable. See In re Applied Materials, Inc., 692 F.3d 1289,
1297 (Fed. Cir. 2012) (“A recognition in the prior art that a property is
affected by the variable is sufficient to find the variable result-effective.”).
Given Brown’s result-effective variable, namely the open area size
that controls occlusion, discovering the optimum or workable ranges of that
size—including the size of apertures 44—to control occlusion via a 5 to 70%
open area range as claimed would have been the result of routine
experimentation within the level of ordinarily skilled artisans. These
artisans include technicians who can cut openings in hearing aid inserts to
customize them for particular users during the fitting process. See ’978
patent, col. 5, ll. 55–57.
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

32
We reach this conclusion regardless of whether the unspecified open
area percentage is with respect to the area of (1) the insert’s outer portion as
Appellant’s attorney argued at the oral hearing, or (2) the flexible insert as
recited in claims 4 and 5. In either case, and regardless of whether this
unspecified area corresponds to the insert’s total surface area or cross-
sectional area, providing an open area in the recited range would have
nonetheless been a routine optimization of a result-effective variable to
control occlusion as noted above.
To be sure, Brown’s figures are not drawn to scale and do not define
the precise proportions or sizes of the apertures 44 and air gap where, as
here, the patent is silent in that regard. See Hockerson-Halberstadt, Inc. v.
Avia Grp. Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000) (“[I]t is well established
that patent drawings do not define the precise proportions of the elements
and may not be relied on to show particular sizes if the specification is
completely silent on the issue.”).
Therefore, we cannot draw any definitive conclusion about the sizes
or proportions of the apertures or the air gap from Brown’s drawings alone,
let alone whether the apertures along with the air gap provide an open area
falling in the claimed range in any disclosed embodiment—including the
embodiments of Brown’s Figures 4 and 5 that appear to show apertures 44
with different sizes and shapes.
But what we can say is that Brown’s open area, namely apertures and
air gap, performs substantially the same function (venting the insert) in
substantially the same way (providing a sound path through the insert) to
achieve substantially the same result (controlling occlusion). Although
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

33
Brown does not specify a particular size of open area that falls in the recited
5 to 70% range to control occlusion, providing such a size would have
nonetheless been a routine optimization of a result-effective variable as
noted above. Notably, this routine optimization presupposes that Brown’s
open area does not already fall in the recited range—a distinction that has
not been substantiated on this record in any event.
Appellant’s contention that neither the size of Brown’s air gap nor the
apertures 44 is optimizable (Reply Br. 9–10) is unavailing. First, to the
extent that Appellant contends that optimizing the air gap’s size would
somehow destroy the fastening function of the threaded coupling between
the receiver module and snap ring (Reply Br. 10), this contention is
unsubstantiated by persuasive evidence on this record and, therefore, has
little probative value. See Geisler, 116 F.3d at 1470; see also Enzo Biochem,
424 F.3d at 1284 (“Attorney argument is no substitute for evidence.”).
Nor do we see any reason why the air gap’s size could not be varied,
yet still retain the integrity of the threaded coupling, depending on the
mechanical and structural tolerances of the fastening components. That this
attachment is accomplished by deforming the snap ring as it is pushed
against the tapered male thread partially surrounding the receiver assembly
(Brown, col. 7, ll. 47–50) at least suggests some flexibility and
accommodation for varying mechanical and structural tolerances in
connection with this attachment. Accord Brown, col. 5, ll. 9–13 (noting that
the disclosed “snap-on, twist-off mechanism eliminates the necessity of
precisely aligning the acoustic coupler onto the receiver housing”) (emphasis
added). In any event, there is no persuasive evidence on this record proving
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

34
that varying the air gap’s size, yet retaining the integrity of the snap ring’s
mechanical coupling to the receiver module, would have been beyond the
level of ordinarily skilled artisans.
We also find unavailing Appellant’s contention that (1) Brown’s
venting system is ostensibly limited by air gap size and not the area of the
apertures 44, and (2) increasing the open area size created by those apertures
would allegedly not increase venting. Reply Br. 10. First, this contention is
unsubstantiated by persuasive evidence on this record and, therefore, has
little probative value. See Geisler, 116 F.3d at 1470; see also Enzo Biochem,
424 F.3d at 1284 (“Attorney argument is no substitute for evidence.”).
Second, Brown’s apertures 44 not only enable amplified sound to reach the
eardrum as Appellant indicates (Reply Br. 10; Brown, col. 5, ll. 64–65), but
they also provide a pathway for the rearward diffusion of accumulated
acoustical energy which, as shown by the arrows 48 in Figure 8, is in the
opposite direction, namely in a direction away from the eardrum. See
Brown, col. 8, ll. 24–26. That Brown notes in column 8, lines 19 to 22 that
it is frequently necessary to provide a vent across the hearing aid to allow
accumulated low-frequency acoustical energy within the residual space to
dissipate to the external environment—the very function of the rearward
accumulated acoustical energy diffusion capability of apertures 44 noted
above—only further underscores the apertures’ acoustical venting
capabilities.
In addition, ordinarily skilled artisans would understand that the
apertures also contribute to venting the ear canal to (1) dissipate
accumulated moisture, and (2) protect the user from pressure-induced
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

35
injuries to the eardrum when inserting and removing the hearing device or
during abrupt shifts in atmospheric pressure. See Brown, col. 8, ll. 31–39.
Given these venting capabilities made possible by Brown’s apertures
44, ordinarily skilled artisans would understand that the size of those
apertures would materially affect venting because, among other things,
larger apertures would (1) enable more acoustical energy to pass through the
insert, and (2) affect other physical factors, including pressure within the ear
canal and moisture egress. See Brown, col. 8, ll. 19–39; Fig. 8.
Furthermore, even assuming, without deciding, Brown’s open area
defined by the apertures 44 and the air gap somehow does not fall in the
recited 5 to 70% range—a distinction that Appellant has not substantiated on
this record in any event—merely changing the open area’s size or proportion
to that claimed does not patentably distinguish over Brown’s open area,
particularly given their similar occlusion-controlling functions. As the court
noted in In re Williams, 36 F.2d 436, 438 (CCPA 1929) (emphasis added):
[M]ere carrying forward of an original patented conception
involving only change of form, proportions, or degree, or the
substitution of equivalents doing the same thing as the original
invention, by substantially the same means, is not such an
invention as will sustain a patent, even though the changes of
the kin[d] may produce better results than prior inventions.

Therefore, even assuming, without deciding, that the claimed
invention’s 5 to 70% open area somehow controls occlusion better than
Brown’s apertures 44 and air gap—an assumed improvement that has not
been substantiated on this record—that still does not patentably distinguish
over Brown because it merely changes the size or proportion of Brown’s
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

36
open area and, therefore, would have been obvious for that additional
reason. See Williams, 36 F.2d at 438; see also Manual of Patent Examining
Procedure (MPEP) § 2144.04(IV)(A) (9th ed. Rev. 10.2019, June 2020).
That is, aside from the fact that achieving the recited 5 to 70% open area
range in Brown would have merely been a matter of routinely optimizing a
result-effective variable as noted previously, merely changing Brown’s open
area’s size or proportion to the recited 5 to 70% open area range does not
patentably distinguish over Brown for that additional reason. See Williams,
36 F.2d at 438; see also MPEP § 2144.04(IV)(A). Notably, this latter size or
proportion change, as well as routinely optimizing the open area’s size,
presupposes that Brown’s open area does not already fall in the recited
range—a distinction that has not been substantiated on this record in any
event.
For the foregoing reasons, then, we conclude that independent claim 1
would have been obvious under 35 U.S.C. § 103(a) over Brown alone and,
therefore, reject claim 1 on that basis.

Dependent Claims
Regarding claims 2 and 3, the openings (apertures 44) in Brown’s
outer portion are formed in a generally concave insert element (1) that is
mounted to the case, and (2) whose cap portion 36 has a thickness that
increases toward the center as shown in Figures 8 and 9.
Claims 4 and 5 call for the open area to be from about 5% to about
25% or 50%, respectively, of the at least one flexible insert—an insert that
has both a hub portion and outer portion under the terms of independent
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

37
claim 1 from which claims 4 and 5 depend. Even when read in light of the
Specification, it is unclear from claims 4 and 5 whether the recited
percentages of the flexible insert are with respect to the insert’s area, much
less whether such an area is the insert’s total surface area or cross-sectional
area. Claims 13 and 14, which also depend from claim 1, are similarly
unclear regarding the recited “total open area” percentages. But see Tr.
4:12–5:4 (emphasizing that open area percentage of independent claim 1 is
with respect to the area of the outer portion when considered in light of the
perforated dome in ’978 patent’s Figure 6).
Leaving these inconsistencies aside that effectively render the claims
indefinite as noted later in this Decision, we nonetheless conclude that the
recited open area percentages would have been obvious over Brown as either
(1) routinely optimizing a result-effective variable to reduce occlusion, or (2)
merely changing the size or proportions of Brown’s open area as noted
previously. Notably, these changes and optimizations presuppose that
Brown’s open area does not already fall in the recited ranges—a distinction
that has not been substantiated on this record in any event.
Regarding claim 6, nothing in the claim precludes the adjustability of
Brown’s flexible insert by merely (1) selecting an appropriate pre-
configured insert, or (2) resizing the insert in the vicinity of apertures 44 to
increase venting—both obvious variations within the level of ordinarily
skilled artisans. We reach this conclusion emphasizing that the claim is
silent regarding how, or by what means, the open area is adjustable. Nor did
Appellant dispute similar findings made by the Examiner on pages 7 and 8
of the Answer.
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

38
Regarding claim 12, although Brown does not state explicitly that the
flexible insert is provided with at least one perforation of at least 0.75 mm in
diameter, Brown nonetheless discloses apertures 44 or perforations in the
insert with different shapes and sizes as shown in Figures 4, 5, and 8. Given
this structural and functional similarity, we conclude that providing the
recited perforations would have been obvious over Brown as either (1)
routinely optimizing a result-effective variable to reduce occlusion, or (2)
merely changing the size or proportions of Brown’s open area, including the
apertures 44 or perforations, as noted previously. Notably, these changes
and optimizations presuppose that Brown’s apertures or perforations do not
already have the recited diameter—a distinction that has not been
substantiated on this record in any event.
Regarding claim 18, although Brown does not disclose explicitly that
that the case (receiver module 46) is prefabricated to a “standard size and
shape” to avoid custom molding to a wearer’s ear canal, such feature would
have nonetheless been obvious. Because patentability of a product does not
depend on its method of production, In re Thorpe, 777 F.2d 695, 698 (Fed.
Cir. 1985), the fact that the case is prefabricated as claimed does not
patentably distinguish over Brown’s receiver module even assuming,
without deciding, that Brown’s receiver module was fabricated in a different
way.
Also, it is unclear exactly what is meant by a “standard size and
shape,” for such an unspecified standard is subject to various
interpretations—a fact that renders the claim indefinite for that reason alone
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

39
as noted later in this opinion.6 Nevertheless, given its scope and breadth, the
limitation is at least suggested by Brown’s receiver module that is fabricated
to a size and shape commensurate with that of a typical ear canal such as that
shown in Figure 9 and, therefore, has a “standard size and shape” at least to
that extent. See Brown, col. 8, ll. 40–42, 54–58; Fig. 9.
Claim 19 recites that plural open passages are provided by the case—
open passages that are distinct from the open area and open passageway
that are recited separately in claim 1 from which claim 19 depends.
Despite this distinction, as shown in Figures 8 and 9, Brown’s case
provides plural open passages, including those that allow low-frequency
acoustic energy to escape from the ear canal to the external environment—
an acoustic escape route that at least suggests open passages. See Brown,
col. 8, ll. 28–31.
Notably, claim 19 does not specify how the case provides open
passages, let alone what particular structural aspect of the case provides
these passages. Given this scope and breadth, Brown’s case 46 and its
associated adapter sleeve 50 satisfy the recited limitation by providing open
passages not only around the case as shown in Figure 8, but also in front of
the case adjacent apertures 44. Moreover, in addition to the open passage
provided by the case itself beyond snap ring 34, the case and its associated

6 See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential)
(“[I]f a claim is amenable to two or more plausible claim constructions, the
USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.”).
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

40
adapter sleeve provide an open passage between the snap ring and the case
and adapter sleeve.
Regarding claims 21 and 22, Brown’s flexible insert provides
substantial concentric mounting of the case within the ear canal as shown in
Figure 9.
Regarding claims 23 and 24, although Brown does not state explicitly
that the flexible insert is sized to provide a gap not exceeding 4 mm, 2mm,
or 1 mm along the case’s length, Brown’s insert nonetheless provides a
small gap along the case’s length as shown in Figures 8 and 9. Given this
structural and functional similarity, we conclude that providing the recited
gap size would have been obvious over Brown as either (1) routinely
optimizing a result-effective variable to reduce occlusion, or (2) merely
changing the size or proportions of Brown’s open area, including the air gap,
as noted previously. Notably, these changes and optimizations presuppose
that Brown’s gap does not already have the recited diameter—a distinction
that has not been substantiated on this record in any event.
We find unavailing Appellant’s contention that Brown’s case
ostensibly sits outside the ear canal, and there is allegedly no concept of
sizing the acoustic coupler in Brown to create an opening between the ear
canal and the case. Appeal Br. 26. Not only does Brown’s Figure 9 show
the case (receiver module 46) in the ear canal, the claim does not require the
recited gap to be between the ear canal and case as Appellant apparently
contends. Rather, the claim only recites a gap that is along the length of the
case and with a maximum dimension. In short, Appellant’s arguments are
not commensurate with the scope of the claim that does not preclude
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

41
Brown’s gap noted above. Nor does Appellant persuasively rebut the
Examiner’s findings and conclusions regarding the obviousness of the
recited gap and its dimension based on, among other things, the three factors
noted by the Examiner, namely (1) the case’s size; (2) the ear canal’s size;
and (3) the depth to which the hearing device is inserted in the ear canal.
Ans. 34–35. We, therefore, conclude that providing a gap with the recited
maximum dimensions in claim 23 would have been within the level of
ordinarily skilled artisans.
Regarding claim 64, Brown discloses a tip (sound port 51) that is a
protrusion extending from the case (receiver module 46) of sufficient length
to retain the hub portion, namely the snap ring, via adapter sleeve 50. See
Brown, col. 7, ll. 16–18; Figs. 5, 8, 9. Although the receiver module’s sound
port 51 does not engage adapter sleeve 50 directly, but rather the larger-
diameter receiver module or “case” as shown in Figure 5, providing an
adapter sleeve whose inner surface contacts and embraces the exterior
surface of both the case and its protruding sound port would have been an
obvious variation well within the level of ordinarily skilled artisans to
enhance engagement by conforming the adapter sleeve to not only the shape
of the receiver module as shown in Figure 5, but also its protruding port,
thus providing a more stabile and rigid connection.
Alternatively, Brown’s adapter sleeve 50 and sound port 51
collectively fully meet the recited “tip” given the term’s scope and breadth.
Not only is this “tip” formed at a receiver end of the case as shown in
Figures 5, 8, and 9, but the adapter sleeve and sound port also collectively
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

42
provide a protrusion extending from the case of sufficient length to retain the
hub portion, namely the snap ring, as claimed.
Regarding claims 25 and 26, although Brown does not disclose
explicitly a kit comprising the hearing device of claim 1, where (1) at least
one flexible insert is included separately from the case for later attachment
(claim 25), and (2) the flexible insert is included with at least one other
flexible insert of a different open area, where each insert is attachable to the
case (claim 26), such a kit would have nevertheless been obvious over
Brown.
Not only does Brown’s Figure 5 show the insert and case separately in
their unattached form, Brown also teaches providing a range of couplers of
assorted sizes to accommodate various ear canal shapes and sizes in column
8, lines 40 to 42. Providing these diverse couplers and their associated
flexible inserts together as a kit would have been obvious to ordinarily
skilled artisans to enable selecting a particular insert from various inserts,
and exchanging that insert with a different-sized insert as desired.
Furthermore, given the scope and breadth of the term “different open
area,” a different flexible insert would have a “different open area” even if
its open area has the same size as that of the first insert. That is, even for
identically-shaped inserts, the second insert and its open area would be
“different” from the first insert and its open area. For example, if a first
insert is in the left ear and a second insert is in the right ear, then the first
insert and its open area provide an open passageway to the left eardrum
while the second insert and its open area provide a different open
passageway to the right eardrum. Nevertheless, providing different open
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

43
area sizes in Brown would also have been obvious to ordinarily skilled
artisans, particularly given the routine optimization of that open area size to
control occlusion as noted previously.
We also reject independent 27 for reasons similar to those indicated
for claims 1, 25, and 26. Appellant’s arguments to the contrary (Appeal Br.
27–28; Reply Br. 29–30) are unavailing for the reasons noted above.
We also reject dependent claims 28–35 for the reasons noted
previously. Because Brown’s flexible insert comprises a concave element, it
satisfies claim 32 that requires only one of the recited flexible insert
alternatives. Notably, Brown also satisfies claims 33 and 34 that further
limit only the bladed element alternative of claim 32 that is irrelevant to the
concave element alternative of claim 32 from which claims 33 and 34
depend.
Regarding claim 37, Brown’s insert comprises flexible ribs, namely
structural ribs 40, to ensure the flexible cap 36 maintains structural integrity.
See Brown, col. 5, ll. 55–57; col. 5, l. 66 – col. 6, l. 3; col. 6, ll. 42–47, 60–
63; col. 9, ll. 5–8; Figs. 3, 9. Therefore, it would have been obvious to
ordinarily skilled artisans for the other flexible inserts to comprise flexible
ribs as well to ensure the other inserts maintain structural integrity.
Regarding independent claim 47, using a foam element as claimed
would have been obvious to ordinarily skilled artisans given Brown’s
teaching that using foam materials to conform to the shape of the ear canal
to seal the ear canal was known in the art. See Brown col. 4, ll. 12–15.
Given this function similar to that of Brown’s cap 36, using a foam element
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

44
for cap 36 uses prior art elements predictably according to their established
functions—an obvious improvement. See KSR, 550 U.S. at 417.
Regarding claim 47’s blending limitation, Brown’s annotated Figure 9
below shows that the open passageway (highlighted in yellow) is upstream
from the receiver module 46’s output.

Brown’s annotated Figure 9 showing open passageway and cap

As shown above, amplified sound outputted from the receiver module
is directed towards the eardrum as shown by the three semicircles adjacent
the sound apertures 44. Moreover, as shown in Brown’s Figure 8, the open
area created by apertures 44 and the air gap also causes amplified sound to
travel in the opposite direction away from the eardrum as shown by arrows
48 and, therefore, towards the “open passageway” shown in yellow in
Brown’s annotated Figure 9 below.
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

45

Partial detail view of Brown’s Figure 8 annotated to show sound
directed away from the eardrum and towards the “open passageway”

Therefore, Brown’s “outer portion” provides an “open area” when
mounted against a wearer’s ear canal to create a sound path extending
through the “open passageway” and “open area,” albeit extending away from
the eardrum and to the external environment—an acoustic escape route that
at least suggests an open passageway as noted previously. See Brown, col.
8, ll. 28–31.
In addition, as noted previously, ordinarily skilled artisans would
understand from Brown that at least some of that blended sound will also
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

46
travel towards the eardrum as well, such as “during abrupt shifts in
atmospheric pressure; for example, during takeoff and landing of an
aircraft.” See ’954 patent, col. 8, ll. 28–39. Although the sound associated
with these events may be brief and perhaps lower in volume than other
sounds, these sounds will nevertheless blend with the amplified sound and
be directed toward the eardrum. To the extent that Appellant contends
otherwise (see Appeal Br. 7, 16–17; Reply Br. 11), there is no persuasive
evidence on this record to substantiate such a contention.
Regarding claim 49, given the scope and breadth of the term
“additional mounting means,” nothing in the claim precludes the screw
threads 52 of Brown’s adapter sleeve 50 as constituting a “mounting means”
affixed to the case.
Regarding claims 52–58, the recited limitations would have been
obvious over Brown for the reasons noted previously.

NEW GROUND OF REJECTION OVER BROWN AND SAUER
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection of
claims 9, 10, 15, 16, 20, 32–37, 49, and 50 under 35 U.S.C. § 103 as obvious
over Brown and Sauer.
Regarding claims 9, 10, 20, and 32–35, although Brown discloses a
flexible insert comprising a concave element as noted previously, it would
have nonetheless been obvious to ordinarily skilled artisans to provide an
insert comprising propeller-shaped bladed elements, such as that shown in
Sauer’s Figures 1 to 4, in connection with Brown’s insert to ease inserting
and removing the insert, yet maintain the seal against the ear canal walls.
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

47
See Sauer, col. 2, ll. 30–52; col. 3, ll. 31–43; see also Tr. 10:1–6
(emphasizing that Sauer’s slots 7 seal the ear canal). Although Sauer’s
propeller-shaped bladed elements are convex from the perspective of the ear
canal, they are nonetheless concave from the perspective of the case in the
center, and flat from the perspective of the eardrum or the environment
outside the eardrum. Leaving aside claim 10’s ambiguities in this regard,
because the claim merely recites that the flexible blades are concave with no
further structural limitation, Sauer’s structure fully meets the recited concave
limitation given its high level of generality.
Because Sauer’s flexible insert comprises a concave element, it
satisfies claim 32 that requires only one of the recited flexible insert
alternatives. For this reason alone, Sauer also satisfies claims 33 and 34 that
further limit only the bladed element alternative of claim 32 that is irrelevant
to the concave element alternative of claim 32 from which claims 33 and 34
depend. Nevertheless, Sauer’s propeller-shaped, concave bladed elements
also satisfy the bladed element alternative as well and, therefore, satisfy
claims 32 through 34 for that additional reason, as well as claim 35.
Regarding claims 15 and 36, although Brown at least suggests the
recited additional mounting means and supplemental mounting as noted
above, it would have nevertheless been obvious to ordinarily skilled artisans
to provide additional flexible inserts affixable to the case, such as those
shown in Sauer’s Figures 1 to 4, in Brown to not only centralize the receiver
module, but also prevent it from drooping on the otherwise unsupported
end—a predictable result. See KSR, 550 U.S. at 421. Moreover, providing
flexible inserts for such a support structure would also allow it to conform
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

48
comfortably to the ear canal walls due to the inserts’ soft, pliable material.
See Brown, col. 9, ll. 51–54; Sauer, col. 1, ll. 11–17.
Regarding claims 16, 37, 49, and 50, Sauer’s propeller-shaped bladed
elements, such as those shown in Sauer’s Figures 1 to 4, are additional
mounting means comprising flexible ribs that are attached to, and extend
along, the outside of the case. Because the ’954 patent does not define the
term “rib,” we construe the term with its plain meaning, namely “supporting
ridge, timber, rod, etc.” THE OXFORD AMERICAN DESK DICTIONARY 517
(Frank Abate ed. 1998). Because Sauer’s propeller-shaped bladed elements
in Figures 1 to 4 are elements that support the hearing aid housing in the ear
canal, these elements are “ribs” under the above-quoted definition,
particularly in light of the definition’s broad and open-ended term “etc.”
used in connection with the listed support structures.
Therefore, it would have been obvious to provide such an additional
mounting means in Brown for the reasons noted above in connection with
claim 36.

NEW GROUND OF REJECTION OVER BROWN AND KUO
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection of
claims 17, 51, and 69 under 35 U.S.C. § 103 as obvious over Brown and
Kuo. Although Brown does not say whether the amplification circuitry in
the case has active feedback reduction, we nonetheless see no reason why
that circuity would not include active feedback reduction, such as that
disclosed in Kuo, where a hearing aid’s control and modeling circuitry 18 in
Figure 1 eliminates or neutralizes feedback effects. See Kuo, Abstract; col.
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

49
4, ll. 41–44. Therefore, it would have been obvious to provide such a circuit
in Brown to neutralize or eliminate feedback in Brown, should such
feedback be present.
We reach this conclusion despite Brown’s acoustic seal preventing
acoustic feedback. See Brown, col. 4, ll. 42–43; col. 9, ll. 55–58 (noting that
the structural ribs guarantee the acoustic seal’s integrity, thus sparing the
user from unpleasant acoustic feedback).
Nevertheless, because Brown’s apertures 44 penetrate the insert for
venting, they at least increase the risk of feedback. Accord Ans. 42 (“[T]o
the extent that Brown teaches some minimum amount of open area, there
will always be at least some opportunity for feedback.”) (emphasis omitted);
see also id. (noting that external physical conditions can alter acoustic
conditions in a way that produces feedback, even in optimized devices).
Leaving aside the fact that Appellant did not squarely address—let
alone persuasively rebut—these findings by the Examiner, we nonetheless
see no reason why additional feedback reduction in Brown would not be
provided with circuitry, such as that suggested by Kuo, at least as an adjunct
to Brown’s seal, or even perhaps as a backup to the seal should the seal be
compromised. That Brown acknowledges that canal devices are more prone
to feedback in column 2, lines 27 to 38 only underscores that providing
additional feedback protection via circuitry would at least be a beneficial
adjunct to the feedback protection provided by the seal itself—even as a
backup.
So even if Brown does not require an active feedback reduction
circuit as Appellant contends (Appeal Br. 31–32), that does not mean that
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

50
such a circuit would not be beneficial to Brown’s system and, therefore, an
obvious variation. In short, this circuit-based enhancement to Brown uses
prior art elements predictably according to their established functions—an
obvious improvement. See KSR, 550 U.S. at 417.

NEW GROUND OF REJECTION UNDER 35 U.S.C. § 112, SECOND
PARAGRAPH

Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection of
claims 1–37 and 63–69 under 35 U.S.C. § 112, second paragraph as
indefinite.
Independent claim 1 recites, in pertinent part, “the open area defined
by the outer portion ranges from about 5 to 70% when the flexible insert is
in its mounted position within the ear canal.” Although this recited
percentage relates to the open area, the percentage does not specify what it is
with respect to—a crucial omission that renders the claim indefinite.
In the oral hearing, Appellant’s attorney argued that this unspecified
percentage is with respect to the area of the outer portion—an area that is
presumably the surface area of the insert’s outer portion when considered in
light of Appellant’s reference to the perforated dome in the ’978 patent’s
Figure 6.7 See Tr. 4:12–5:4.

7 The oral hearing’s relevant dialogue is reproduced below:

JUDGE JEFFERY: [W]hat is [the 5 to 70 percent] relative to, 5 to 70
percent of what?

MR. BRODY: It’s the open area in the outer portion. The flexible insert has
a hub which is attached to the tip of the receiver and then there’s an outer
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

51
But Appellant’s characterization at the hearing (i.e., that the limitation
refers to the area of the outer portion) is inconsistent with the language of
claims 4 and 5 that call for the open area to be from about 5% to about 25%
or 50%, respectively, of the at least one flexible insert—an insert that has
both a hub portion and an outer portion under the terms of independent
claim 1 from which claims 4 and 5 depend. Even when read in light of the
Specification, it is unclear from claims 4 and 5 whether the recited
percentages of the flexible insert are with respect to the insert’s area, much
less whether such an area is the insert’s total surface area or rather cross-
sectional area (as shown in Figures 7B and 7B). Claim 1 suffers from the
same ambiguity. In fact, the recited percentage could plausibly be with
respect to some other parameter—not necessarily the insert’s total surface or
cross-sectional area—given the recited percentage’s high level of generality.

portion around that and it’s the openings in the outer portion that define the
open area.

JUDGE JEFFERY: So it’ll be 5 to 70 percent of the overall structure size or
what does the percentage exactly pertain to?

MR. BRODY: Well, the open area is the area that comprises the outer
portion when the insert is mounted in the ear canal. . . . [I]f you look at
figure 6 [of the ’978 patent] -- the dome has openings and the dome, we
would interpret, is the outer portion and 5 to 70 percent of the area of that
dome would have the openings.

JUDGE JEFFERY: So it’s the area, percentage of the area.

MR. BRODY: Yes, yes.

Tr. 4:12–5:4 (emphasis added).
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

52
For example, the Specification discusses “[t]he hole or opening pattern is
made in the area generally between the hub area of the ‘dome’ or equivalent
insert to the outer periphery of the dome that will not come into contact with
the inner ear,” which suggests the 5–70% might be measured based only on
the part of the “outer portion” that will not come into contact with the inner
ear. ’978 patent, col. 7, ll. 63–66 (emphasis added).
These inconsistencies render claim 1 indefinite particularly where, as
here, the claim is amenable to two or more plausible constructions. See
Miyazaki, 89 USPQ2d at 1211 (“[I]f a claim is amenable to two or more
plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite.”).
We, therefore, reject independent claim 1 as indefinite under § 112,
second paragraph. We also reject (1) independent claims 25, 27, and 63 that
recite commensurate limitations; and (2) dependent claims 2–24, 26, 28–37,
and 64–69 for similar reasons.

Claim 18
We also reject claim 18 separately as indefinite under § 112, second
paragraph. Claim 18 recites that “the case is prefabricated to a standard size
and shape thereby avoiding custom molding to a wearer’s ear canal”
(emphasis added).
On this record, it is unclear exactly what is meant by a “standard size
and shape,” for such an unspecified standard is subject to various plausible
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

53
interpretations—a fact that renders the claim indefinite for that reason alone.
See Miyazaki, 89 USPQ2d at 1211 (“[I]f a claim is amenable to two or more
plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite.”).
The ’978 patent does not define the terms “standard size” or “standard
shape,” let alone specify those standards clearly and unambiguously in terms
of particular geometry and dimensions, nor does it refer to any industry
standards or standard-setting body. The ’978 patent merely notes the
following:
As a gap between the case and the wearer’s ear canal is
permissible in this particular CIC device, the use of a non-
custom molded or in other words a “prefabricated” case is
advantageously employed. This allows the wearer to be fitted
with a prefabricated case of standard size and shape unlike
conventional CIC requiring custom molding from an
impression made for the specific wearer.

’978 patent, col. 8, ll. 24–31 (emphasis added).
Although this brief description distinguishes a prefabricated case of
“standard size and shape” from custom-molded CIC devices, the ’978 patent
falls well short of providing sufficient guidance or objective standards,
baselines, or boundaries to reasonably ascertain the scope of the recited
“standard size and shape.”
Because the term “standard size and shape” is amenable to multiple
plausible interpretations, claim 18 is indefinite for that additional reason.
See Miyazaki, 89 USPQ2d at 1211.
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

54

Claim 37
We also reject claim 37 separately as indefinite under § 112, second
paragraph as lacking antecedent basis for “the other flexible inserts.” Claim
37 depends from claim 28 that depends from independent claim 27.
Independent claim 27 recites “at least one flexible insert” and “at least
another flexible insert.” Claim 28 recites “each flexible insert in the kit,” but
does not introduce any new inserts. Claim 37 recites “[t]he kit of claim 28,
wherein the other flexible inserts comprise flexible ribs.”
Our emphasis on the term “other” underscores an inconsistency in
terminology that renders the claim indefinite. Even assuming, without
deciding, that claim 37’s “other” flexible inserts refer to claim 27’s
“another” flexible insert, the number is still wrong. Claim 27 only requires
“at least another” (i.e., one or more), but claim 37 recites “the other flexible
inserts” without antecedent basis for those plural inserts.
Given the lack of antecedent basis, we reject claim 37 as indefinite
under § 112, second paragraph for this additional reason.

CONCLUSION
The Examiner’s decision to reject claims 1–6, 9, 10, 12–39, 41–47,
49–58, and 63–70 is reversed.
We enter new grounds of rejection of (1) claims 1–6, 12–14, 18, 19,
21–35, 37, 47, 49, 52–58, and 64 under 35 U.S.C. § 103 over Brown; (2)
claims 9, 10, 15, 16, 32–37, 49, and 50 under 35 U.S.C. § 103 as obvious
over Brown and Sauer; (3) claims 17, 51, and 69 under 35 U.S.C. § 103 as
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

55
obvious over Brown and Kuo; and (4) claims 1–37 and 63–69 under
35 U.S.C. § 112, second paragraph as indefinite.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)
/ Basis
Affir
med
Reversed New
Ground
1–6, 9, 10,
12–14, 18–
36, 38, 39,
41–47, 52–
58, 63–67
103 Brown, APA,
Bauman
’086,
Bauman
’076, Sauer
1–6, 9, 10,
12–14, 18–
36, 38, 39,
41–47, 52–
58, 63–67

15, 16, 36,
37, 49, 50
103 Brown, APA,
Bauman
’086,
Bauman
’076, Sauer,
Saxton
15, 16, 36,
37, 49, 50

17, 51, 68–
70
103 Brown, APA,
Bauman
’086,
Bauman
’076, Sauer,
Kuo
17, 51, 68–
70

1–6, 12–
14, 18, 19,
21–35, 37,
47, 49, 52–
58, 64
103 Brown 1–6, 12–
14, 18, 19,
21–35, 37,
47, 49, 52–
58, 64
9, 10, 15,
16, 20, 32–
37, 49, 50
103 Brown, Sauer 9, 10, 15,
16, 20, 32–
37, 49, 50
17, 51, 69 103 Brown, Kuo 17, 51, 69
1–37, 63–
69
112,
second
paragraph
Indefiniteness 1–37, 63–
69
Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

56
Overall
Outcome
1–6, 9, 10,
12–39, 41–
47, 49–58,
63–70
1–37, 47,
49–58, 63–
69

This Decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the
appellant, within two months from the date of the decision,
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.

Appeal 2018-003841
Reexamination Control 96/000,138
Patent 8,477,978 B2

57
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REQUESTS FOR EXTENSIONS OF TIME
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

REVERSED
37 C.F.R. § 41.50(b)

rwk

PROTORAE LAW
1921 Gallows Road, 9th Floor
Tysons, VA 22182