Ex Parte 7,110,562 et al

Patent Trial and Appeal Board

Dec 6, 2013

95001021 (P.T.A.B. Dec. 6, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

K/S HEARING INSTRUMENTS MANUFACTURERS PATENT
PARTNERSHIP
Requester, Respondent, and Cross-Appellant

v.

HEAR-WEAR, TECHNOLOGIES L.L.C.
Patent Owner, Appellant, and Respondent
____________

Appeal 2013-003959
Reexamination Control 95/001,021
Patent 7,110,562
Technology Center 3900
____________

Before STEPHEN C. SIU, JOSIAH C. COCKS, and
STANLEY M. WEINBERG, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON APPEAL
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I. STATEMENT OF THE CASE
A. Summary
Patent Owner, Hear-Wear, Technologies, L.L.C. (“Hear-Wear”),1
appeals under 35 U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to
reject claims 1-9, 11, 12, 15-27, 30, 31, and 38-41 of U.S. Patent No.
7,110,562 (the “’562 patent”).2 Third-Party Requester, K/S Hearing
Instruments Manufacturers Patent Partnership (“HIMPP”), urges that the
Examiner’s decision must be affirmed.3 HIMPP also cross-appeals under
35 U.S.C. §§ 134(c) and 315(b) from the Examiner’s refusal to reject claims
1-9, 11, 12, 15-27, 30, 31, and 38-41 on other grounds and the Examiner’s
refusal to reject claims 13, 14, and 32-37.4 Hear-Wear contends that the

1 See Patent Assignment Abstract of Title, Reel 013543 Frame 0437 which
was entered into the record of this proceeding as “Title Report” on March 3,
2008.

2 See Hear-Wear’s “Appeal Brief of Patent Owner Hear-Wear, L.L.C.” filed
August 9, 2011 (“PO App. Br.”) and “Patent Owner Rebuttal Brief under 37
C.F.R. § 41.71” filed July 10, 2012 (“PO Reb. Br.”).

3 See HIMPP’s “Third-Party Requester’s Respondent Brief” filed
September 8, 2011 (“Req. Resp. Br.”)

4 See HIMPP’s “Third-Party Requester’s Corrected Brief on Appeal Under
37 C.F.R. § 41.67” filed January 20, 2012 (“Req. App. Br.”) and “Third-
Party Requester’s Rebuttal Brief Under 37 C.F.R. § 41.71” filed July 11,
2012 (“Req. Reb. Br.”).

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Examiner’s refusals in that regard were correct.5 Claims 10, 28, and 29 are
not subject to reexamination.
Oral argument was held on April 12, 2013. A transcript of the hearing
was made of record on May 23, 2013.
We have jurisdiction under 35 U.S.C. §§ 134 and 315.6
B. The Invention
The ’562 patent is directed generally to an earpiece auditory device.
’562 patent, Abstract. An “exploded isometric view of an exemplary
embodiment” of the invention is shown in Figure 1, which is reproduced
below (id. at col. 4, ll. 12-14):

5 See Hear-Wear’s “Patent Owner Respondent Brief Under 37 C.F.R.
§ 41.68” filed October 12, 2011 (“PO Resp. Br.”) and “Patent Owner
Second Respondent Brief Under 37 C.F.R. § 41.68” filed February 20, 2012
(“2nd PO Resp. Br.”).

6 In this opinion, we also refer to the Right of Appeal Notice mailed May 10,
2011 (“RAN”) which was incorporated by reference in the Examiner’s
Answer mailed June 11, 2012.
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As depicted in Figure 1 above, earpiece auditory device 40 includes
“completely-in-canal” (“CIC”) unit 10, connector 20, and “behind-the ear”
(“BTE”) unit 30. Id. at col. 5, ll. 42-44.
Claims 1 and 22 are independent claims and are reproduced below:
1. An earpiece auditory device comprising:

a behind-the-ear (BTE) component, said BTE component
being shaped to fit behind an ear of a user, wherein said BTE
component comprises a module including processing circuitry;

a completely-in-canal (CIC) component, said CIC
component being shaped to fit into the ear canal of the user,
wherein said CIC component comprises an ear mold and a
speaker, said speaker being encased in a speaker module; and

a connector physically and communicatively coupling
said BTE component to said CIC component, said connector
having a proximal end physically and communicatively
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coupled to said BTE component and a distal end physically and
communicatively coupled to said CIC component, said
connector being sufficiently rigid so as to allow said connector
to be used to insert and remove said CIC component from the
ear canal of the user;

wherein said speaker module is detachably physically
interconnected with said ear mold, said speaker module is
interconnected with said ear mold through a hollow sleeve, and
said hollow sleeve is formed of resilient material.

---

22. A method for providing a plurality of earpiece
auditory device components, a portion of which may be
assembled to form an earpiece auditory device tailored to a
user, said method comprising:

providing a selected behind-the-ear (BTE) component
operable to facilitate the user’s intended use for the earpiece
auditory device may be selected, wherein said BTE component
comprises a module including processing circuitry;

providing a selected completely-in-canal (CIC)
component, said selected CIC component being shaped to fit
into the ear canal of the user, wherein said selected CIC
component comprises an ear mold and a speaker, said speaker
being encased in a speaker module; and

providing a connector of sufficient length to physically
couple said selected BTE component when said selected BTE
component is placed behind the ear of the user to said selected
CIC component when said CIC component is placed inside the
ear canal of the user, wherein said connector of sufficient length
includes a proximal end physically and communicatively
operable to couple to said BTE component and a distal end
physically and communicatively operable to couple to said CIC
component, said connector of sufficient length being
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sufficiently rigid so as to allow said connector of sufficient
length to be used to insert and remove said selected CIC
component;

wherein said speaker module is detachably physically
interconnectable with said ear mold.

PO App. Br., Claims App’x.

C. The Prior Art
1. Hear-Wear’s Appeal
Schiess et al. (“Schiess”) US 5,265,168 Nov. 23, 1993
Reiter et al. (“Reiter”) US 5,606,621 Feb. 25, 1997
Posen et al. (“Posen”) US 5,864,628 Jan. 26, 1999
Shennib WO 99/07182 Feb. 11, 1999

2. HIMPP’s Appeal
In addition to the above-noted prior art, HIMPP relies on the
following:
Toht US 2,930,856 Mar. 29, 1960
McCarrell et al. (“McCarrell”) US 3,061,689 Oct. 30, 1962
Hartl et al. (“Hartl”) US 4,739,512 Apr. 19, 1988
Barton US 5,046,580 Sep. 10, 1991
Ward et al. (“Ward”) US 5,201,007 Apr. 6, 1993
Shennib et al. (“Shennib ’348”) US 5,701,348 Dec. 23, 1997
Taenzer et al. (“Taenzer”) US 6,009,183 Dec. 28, 1999

Topholm US 2002/0138237 Sep. 26, 2002

Nonomura JP 62-151100 July 6, 1987
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D. The Involved Rejections
1. Hear-Wear’s Appeal
Hear-Wear contends that the Examiner incorrectly adopted the
following rejections under 35 U.S.C. § 103(a) of claims of the ’562 patent7:

References Claims
Reiter and Shennib 1-9, 11, 12, 19, 20, 22-27, 30, 31,
and 41
Reiter, Shennib, and Posen 15-18 and 38-40
Reiter, Shennib, and Schiess 21
2. HIMPP’s Appeal
HIMPP contends that the Examiner incorrectly declined to adopt the
following rejections under 35 U.S.C. § 103(a) of claims of the ’562 patent:8

References Claims
Toht, Reiter, and Shennib 1 and 22
Nonomura and Shennib 1 and 22
Reiter, Toht, Shennib, and Ward 1 and 22
Toht, Reiter, Shennib, and “any one
of Barton, Ward, McCarrell, or
Taenzer”9

1 and 22
Reiter, Toht, Shennib, and “any one
of Barton, McCarrell, or Taenzer”10
1 and 22

7 See PO App. Br. 6-7.
8 See generally Req. App. Br., p. 22.
9 Id. at p. 25
10 Id. at p.26
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Toht, Reiter, and Shennib11 2, 3, 9, 19, 21, 23, 24, 27, and 41
Reiter, Toht, Shennib, and Shennib
’34812
4-8, 11-14, 20, 25, 26, 30-32, and 37
Nonomura, Shennib, and Shennib
’34813
4-8, 11-14, 20, 25, 26, 30-32, and 37
Reiter, Toht, Shennib, and Shennib
’348, and Topholm14
33-36
Nonomura, Shennib, Shennib ’348,
and Topholm15
33-36
Toht, Reiter, Shennib, Posen, and
Hartl16
15-18 and 38-40
Nonomura, Shennib, Posen, and
Hartl17
15-18 and 38-40

II. ANALYSIS
A. HEAR-WEAR’S APPEAL
Hear-Wear contests the Examiner’s decision to adopt three grounds of
rejection that were applied to the claims of the ’562 patent involving:
(1) Reiter and Shennib; (2) Reiter, Shennib, and Posen; and (3) Reiter,
Shennib, and Schiess.
1. Reiter and Shennib
As proposed by HIMPP, and as adopted by the Examiner, claims 1-9,
11, 12, 19, 20, 22-27, 30, 31, and 41 stand rejected as unpatentable over

11 Id. at p. 27.
12 Id. at p. 28.
13 Id.
14 Id. at p. 30.
15 Id.
16 Id. at p. 31.
17 Id.
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Reiter and Shennib. Claims 1 and 22 are independent claims. Claims 2-9,
11, 12, 19, 20, 22-27, 30, 31, and 41 ultimately depend from either claim 1
or claim 22. The patentability of the dependent claims is not argued apart
from that of the independent claims with the exception of the following:
(i) claims 2 and 23 and (ii) claims 4, 5, 8, and 20. We address the claims as
follows: (1) claim 1; (2) claim 22; (3) claims 2 and 23; and (4) claims 4, 5,
8, and 20.
a. Claim 1
As discussed above, claim 1 is drawn to an earpiece auditory device
that generally includes a BTE component, a CIC component, and a
connector between those components. The BTE component is shaped to fit
behind a user’s ear and incorporates a module including processing circuitry.
The CIC component is shaped to fit within a user’s ear and includes an ear
mold and a speaker as a part of a speaker module. The connector is
“sufficiently rigid” so as to allow insertion and removal of the CIC
component into and from a user’s ear canal.
i. The Examiner’s Rejection
Reiter is directed to a hybrid behind-the-ear and completely-in-canal
hearing aid. Reiter, Title. Reiter’s Abstract is reproduced below:
A hybrid BTE and CIC hearing aid has a BTE component
which is worn behind the patient’s ear and a CIC component
which is worn in the bony portion of the patient’s ear canal.
The BTE and CIC components are connected together with a
wire cable. Electroacoustic feedback is reduced or eliminated,
allowing gain to be increased. The patient is not disturbed by
the occlusion effect.

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Reiter’s Figure 1 (reproduced right)
depicts an embodiment of a hearing aid
according to the invention. As shown in
the figure, BTE component 10 includes
microphone 12, amplifier circuitry 14, and
battery compartment 16. Id. at col. 2, ll.
11-14. CIC component 18 includes
receiver 20 and “retrieval line 24” that is
grasped by a user and perimts the CIC
component’s introduction into and
removal from a hearing canal. Id. at col. 2, ll.
14-24. According to the Examiner and
HIMPP, Reiter discloses all the limitations of claim 1 save for: (1) a
connector that is “sufficiently rigid” so as to allow said connector to be used
to insert and remove the CIC componentfrom the ear canal of the user; (2) a
speaker module that is detachably physically interconnected with the ear
mold; and (3) the interconnection is accomplished through a “hollow sleeve”
that is formed of resilient material. RAN, pp. 4-8; see Req. Resp. Br., pp. 7-
8. To account for those features, the Examiner relies on Shennib.
Shennib discloses an “acoustic coupler” described as being
“detachably secured to a receive assembly for deep insertion into an
individual’s ear canal.” Shennib, Abstract. Shennib’s Figure 3 is described
as “a sectioned view of the earpiece showing a receiver assembly and an
acoustic coupler” and is reproduced below (id. at p. 6, ll. 35-36):

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As shown in the figure above, earpiece 40 includes receiver assembly
48 and acoustic coupler 50 and may be part of “canal hearing device” 10
(not shown in figure). Shennib, p. 7, ll. 35-37. Shennib discloses the
following with respect to receiver assembly 48 and acoustic coupler 50:
The receiver assembly 48 (Fig. 3) contains a receiver 41
coupled to a receiver housing 42 via a receiver housing coupler
43. A receiver guard 47 is provided to protect the receiver from
environmental and physiologic residue, including cerumen
(earwax). A receiver sound port 49 provides an outlet for
sound emission to a coupler sound port 55, and subsequently to
the tympanic membrane 26. A vibration isolator 44 is provided
to isolate the mechanical vibration of the receiver 41 from the
receiver housing 42, and subsequently from the hearing device
10. Relatively rigid and tapered male threads 45 are provided
for coupling the receiver housing with an acoustic
coupler 50. . . .
The acoustic coupler 50 (Fig. 3) contains a coupling
sleeve 52 having coupling threads 53 and a conforming acoustic
seal 51 which conforms to the shape of the ear canal when
inserted therein. The coupling sleeve 52 is made of an
elastically deformable, thin walled material, such as plastic.

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Shennib, p. 8, ll. 10-23. Thus, receiver assembly 48 includes receiver 41 for
emitting sound, i.e., a speaker module, and is detachably physically
interconnected with acoustic coupler 50, which is received in an ear canal.
The acoustic coupler receives the receiver assembly and receiver via a
coupling sleeve made of elastically deformable material. Shennib also
discloses that its Figure 20 illustrates handle 38 that “facilitates insertion and
removal the hearing device.” Id. at p. 8, ll. 3-5. Figure 20 is reproduced
below:

Figure 20 above depicts “a coronal view of the ear canal with an
earpiece for connection to an external audio device.” Shennib, p. 7, ll. 22-
23.
Based on the ground of rejection proposed by HIMPP, the Examiner
determined that the above-noted disclosures of Shennib account for features
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of claim 1 absent from Reiter. In that regard, the Examiner found: (1) that
Shennib’s handle 38 forms part of a connector that is “sufficiently rigid” for
insertion and removal of a hearing device; (2) that the configuration of
Shennib’s receiver assembly 48 and acoustic coupler 50 is the “physically
detachably” interconnected speaker module and ear mold; and (3) that
coupling sleeve 52 is the required hollow sleeve made of
resilient material associated with the ear mold. See RAN, pp. 6-818. In
combining the teachings of Reiter and Shennib, the Examiner reasoned that
Hear-Wear’s claim 1 would have been obvious to one of ordinary skill in the
art. Id., p. 9.
Hear-Wear generally challenges the prima facie basis of the
Examiner’s rejection on theories that the combination of Reiter and Shennib
does not account for the all the features of claim 1 and that it would not have
been obvious to combine the teachings of Reiter and Shennib. PO App. Br.,
pp. 15-24. Hear-Wear also contends that it has provided sufficient evidence
of “secondary considerations of nonobviousness.” Id. at pp. 24-33.

18 We observe that throughout the RAN, the Examiner has used reference
character “48” in reference to a “connector” in Shennib. Shennib’s
component “48” is described as a “receiver assembly” that is a distinct
component from “handle 38.” See Shennib, p. 7, l. 35-p. 8, l. 19. In
identifying characteristics of Shennib’s “connector,” the Examiner makes
explicit reference to page 8, lines 3-5 of Shennib which involves “handle 38”
and not receiver assembly 48. See, e.g., RAN, p. 7, ¶ 33. The Requester
also advocates that the rejections at hand involving Shennib are predicated
on Shennib’s handle 38 as forming the claimed connector. See, e.g., Req.
Resp. Br., pp. 10-11. Hear-Wear states that the Examiner’s interpretation of
elements 38 and 48 is unclear. Hr’g Tr. 5:18-6:4. Based on the record, we
conclude that Shennib’s handle 38 is, at least in-part, the component
regarded by the Examiner as the connector.
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For the reasons that follow, we are not persuaded of error in the
Examiner’s prima facie basis for rejecting claim 1 nor are we persuaded that
the proffered evidence of secondary considerations outweighs the strong
evidence of obviousness.
ii. The Allegedly Absent Claim Features
According to Hear-Wear, the Reiter and Shennib combination does
not result in a “CIC” component. PO App. Br., pp. 15-17. In that regard,
Hear-Wear is of the view that incorporating Shennib’s handle 38 into
Reiter’s hearing device results in a portion that extends outside the ear canal.
Hear-Wear contends that a “CIC” component “cannot protrude outside the
ear canal.” Id. As support for its position, Hear-Wear relies on the
declaration testimony of Adnan Shennib19 and Dr. Wayne Staab20. Id. at pp.
15-16. The underlying basis for Hear-Wear’s position is that Shennib’s
handle 38 is a structure that is allegedly “unitary” or “monolithically
formed” or “integrated” with speaker assembly 48 such that it is part of the
speaker assembly rather than any portion of the connector between the
speaker assembly and an external audio device, such as a BTE component.
See PO App. Br., pp. 15 and 17; Supp. Shennib Decl. ¶ 11; Supp. Staab
Decl. ¶ 27.
We are not persuaded by Hear-Wear. In that regard, even assuming
that Hear-Wear is correct insofar as its proposed meaning of a “CIC”

19 See “Supplemental Declaration of Adnan Shennib” dated May 26, 2010
(“Supp. Shennib Decl.”), and filed with Hear-Wear’s Appeal Brief.

20 See “Supplemental Declaration of Dr. Wayne Staab” dated May 21, 2010.
(“Supp. Staab Decl.”), and filed with Hear-Wear’s Appeal Brief.
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component, we conclude that Shennib’s handle 38 is understood reasonably
as forming part of a “connector.” In the context of the ’562 patent, a
“connector” is a component that physically couples the BTE component to
the CIC component. See ’562 patent, col. 3, ll. 40-43. Although, in some
embodiments, the connector is “detachably coupled” to either the BTE or
CIC components (see, e.g., id. at col. 3, ll. 43-45), there is nothing intrinsic
to the term “connector,” as it is used in the ’562 patent, that requires such a
detachment capability to the exclusion of a coupling configuration that is not
detachable.
Claim 1 requires a connector that is “sufficiently rigid so as to allow
said connector to be used to insert and remove said CIC component from the
ear canal of the user.” As discussed above, Shennib discloses an earpiece 40
that is part of a canal hearing device and is composed of two particular
components, i.e., receiver assembly 48 and acoustic coupler 50. As
illustrated in Figure 20 (reproduced supra), additional components are
provided that are separate and distinct from earpiece 40 and allow
connection of the earpiece to an external audio device. Shennib, p. 7, ll. 22-
23. Those components include signal cable 39, wires 37, and handle 38 that
“facilitates insertion and removal of the hearing device” and provides “strain
relief” for the wires 37 within cable 39. Id. at p. 8, ll. 3-5. Although handle
38 may be fixed to earpiece 40 in a manner that is not viewed as detachably
coupled, we do not discern that the handle is something that is properly
regarded as “unitary,” “monolithic,” or “integrated” with the earpiece.
Indeed, neither Hear-Wear nor Mr. Shennib explains adequately the
underlying basis for their position to the contrary. In our view, it is evident
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from the record, including the Shennib reference’s Figure 20, that handle 38
maintains a separate identity from earpiece 40 and provides a specific strain
relieving function with respect to the other connecting components, i.e,
wires 37 of cable 39. Thus, as articulated by HIMPP (Req. Resp. Br., p. 10),
handle 38, as well as wires 37 and cable 39, is distinct from the component
that is earpiece 40, such that handle and earpiece are not a single structure
regarded as “unitary.” To that end, we also credit the declaration testimony
of Mr. Fletcher21 and Dr. Thompson22, who characterize Shennib’s cable 39,
wires 37, and handle 38 as collectively forming a “connector” between an
in-canal device and an external audio device. Fletcher Decl. ¶ 9; Thompson
Decl. ¶¶ 36-38. That testimony is in accord with the plain disclosure of
Shennib.
We have considered Hear-Wear’s arguments, but we are not
persuaded that the required “CIC” component and “connector” of claim 1
distinguish that claim from the disclosure of the prior art.
ii. The Obviousness Rationales
Hear-Wear also challenges the Examiner’s position that there is
adequate reason to combine the teachings of Reiter and Shennib. In
particular, Hear-Wear submits that there is “no rational reason” to
incorporate Shennib’s handle into Reiter’s hearing device, in lieu of Reiter’s
“retrieval line,” as was urged by the Examiner. PO App. Br., pp. 18-23.

21 See “Declaration of Henry H. Fletcher” dated June 28, 2010 (“Fletcher
Decl.”), and filed with HIMPP’s Respondent Brief.

22 See “Declaration of Dr. Stephen C. Thompson” dated June 28, 2010
(“Thompson Decl.”), and filed with HIMPP’s Respondent Brief.
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Hear-Wear also generally contends that Shennib “teaches away” from the
proposed combination and that any such combination would render Shennib
“unfit for its intended purpose.” Id. at pp. 23-24. For the reasons that
follow, none of Hear-Wear’s contentions is persuasive.
Reasons to combine
As was noted by the Examiner, each of Reiter and Shennib recognizes
that, in the hearing aid art, it is contemplated to include a component that
functions to facilitate the insertion and removal of a hearing device from a
patient’s ear canal. In Reiter, that component is retrieval line 24. In
Shennib, it is handle 38. As set forth in the RAN, the Examiner, in effect,
determined that the retrieval line and handle function for essentially the
same purpose and reasoned that a skilled artisan would have appreciated that
the two components may be substituted for one another. Thus, the Examiner
concluded that it would have been obvious to implement Shennib’s handle
38 and its associated configuration onto Reiter’s hearing device. See RAN,
p. 17.
Hear-Wear first challenges the Examiner’s reasoning on a theory that
Reiter’s retrieval line has a more pleasing visual aesthetic than Shennib’s
handle, such that a skilled artisan would not view them as equivalents of one
another. PO App. Br., pp. 19-20 (citing each of the Supp. Shennib Decl. and
Supp. Staab Decl.). Hear-Wear’s challenge, however, is misplaced. Even if
the challenge is true, assessing whether one insertion and retrieval
component may be more visually appealing such that it is preferred is not the
proper inquiry when evaluating obviousness. Obviousness does not require
that a teaching be better in all respects than another. Rather, the test for
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obviousness is what the combined teachings of the references would have
suggested to those of ordinary skill in the art. In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991). That Reiter’s retrieval line may have a more desirable
aesthetic than Shennib’s handle does not convey that the handle would be
inoperable or unworkable if implemented in Reiter’s device.
Here, the prior art establishes that there are two known mechanisms
for facilitating the insertion and removal of a hearing aid. One mechanism is
a separate retrieval line. Another mechanism is a rigid handle that surrounds
the electric wires that connect an external device and a device arranged in a
patient’s ear canal. Where there are a limited number of identified solutions
to solving a particular problem, a person of ordinary skill has good reason to
pursue the known options within his technical grasp. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007). In this case, we agree with the
Examiner that a person of ordinary skill in the art would have appreciated
that each of Shennib’s handle and Reiter’s retrieval line is available as
options that allow for handling of a hearing device. Hear-Wear’s argument
to the contrary does not, in our view, properly take into account the
knowledge and ability of one of ordinary skill in the art.
Furthermore, we observe that Shennib also conveys that the
configuration of its handle 38 has an additional benefit in providing “strain
relief” to wires 37. Thus, Shennib recognizes a benefit to its handle
configuration unrelated to aesthetics. Hear-Wear does not explain why
obtaining that benefit would not be a factor for consideration in selecting the
handle as the particular structure for inserting and removing a hearing aid
device.
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Hear-Wear also speculates that “handle 38 of Shennib and retrieval
line 24 of Reiter may act differently with respect to transmission of
vibration.” PO App. Br., p. 20. Hear-Wear, however, does not articulate
adequately the basis for that speculation. Moreover, even if the assertion is
true, Hear-Wear does not explain why some difference involving vibration
transmission somehow precludes combining the teachings of Reiter and
Shennib.
The “Teaching Away” Argument

Hear-Wear’s bases its “teaching away” argument on the following
disclosure in Shennib:
For cosmetic reasons, consumers demand the smallest possible
devices, as evident by the dramatic increase in the use of canal
devices versus larger behind-the-ear alternatives. However,
even with recent advances in microminiaturization, it is not
practical to include an earmold coupler to canal devices as
typically used in behind-the-ear (BTE) hearing devices.

PO App. Br., p. 23 (quoting Shennib, p. 3, ll. 30-34). According to Hear-
Wear, those sentences convey that Shennib’s teachings are “unsuitable” for
any combination with a hearing device employing a BTE, such as Reiter,
and thus constitute a “teach[ing] away.” Id.
A reference does not teach away if it merely expresses a general
preference for an alternative invention but does not “criticize, discredit, or
otherwise discourage” investigation into the applicant’s claimed invention.
DePuy Spine Inc. v. Medtronic Sofamor Danek, 567 F.3d 1314, 1327 (Fed.
Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed Cir. 2004)).
Here, while Shennib may prefer not to associate an earmold coupler with
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BTE type hearing devices for cosmetic reasons or reasons of practicality,
that preference is not a “teaching away.” The above-quoted portion of
Shennib does not, as Hear-Wear contends, convey that Shennib’s teachings
are “unsuitable” for, or inoperable, with BTE devices.
We are not persuaded by Hear-Wear’s assertion that Shennib “teaches
away” from any combination with Reiter.
The “Unfit for Its Intended Purpose” Argument
Hear-Wear also generally alleges that Reiter would be rendered “unfit
for its intended purpose” if modified, based on Shennib, to include a handle
assembly in lieu of a retrieval line. PO App. Br., p. 24. Hear-Wear provides
little by way of explanation for its allegation other than to note that
“visibility” and “aesthetic issues” have some relevance in the hearing aid art,
and to state the following:
[O]ne of ordinary skill in the hearing aid arts at the time of the
present invention would understand that the handle 38 of
receiver assembly 48 is not intended to be used with a hearing
aid device and certainly would not use handle 38 of Shennib in
the manner proposed by the rejection.

Id. We are not persuaded by Hear-Wear. Contrary to Hear-Wear’s above-
quoted statement, Shennib’s handle 38 is already used with a hearing aid
device, i.e., the hearing aid device disclosed by Shennib. Indeed, each of
Reiter and Shennib is directed clearly to “hearing aids” (Reiter, col. 1, ll. 6-
9; Shennib, p. 1, ll. 7-9) and each recognizes the need to include a
component that facilitates insertion and removal of a portion of the hearing
aid into a patient’s ear-canal. Hear-Wear does not explain meaningfully
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what “intended purpose” in Reiter would be frustrated in selecting one
particular mechanism for that insertion and removal over another.
Accordingly, we are not persuaded by Hear-Wear’s argument that
Reiter would somehow be rendered unfit for its intended purpose if
combined with Shennib’s teachings directed to a handle component.
Conclusion – Prima Facie case of Obviousness
of Claim 1 Based on Reiter and Shennib

We have considered Hear-Wear’s Appeal Brief and Rebuttal Brief.
However, for the foregoing reasons, we are not persuaded of any error in the
Examiner’s prima facie basis for rejecting claim 1 based on Reiter and
Shennib.
Claims 3, 6, 7, 9, 11, 12, 19, and 20 ultimately depend from claim 1
and are not separately argued apart from claim 1. We also are not persuaded
of error in the Examiner’s prima facie basis for rejecting those dependent
claims based on Reiter and Shennib.
b. Claim 22
Claim 22 is independent and is drawn to a “method for providing a
plurality of earpiece auditory device components, a portion of which may be
assembled to form an earpiece auditory device tailored to a user.” PO App.
Br., Claims App’x, p. 35. As a part of the method, claim 22 provides several
components including a BTE component, a CIC component, and “a
connector of sufficient length to physically couple” those two components.
PO App. Br., Claims App’x, p. 36. Similar to claim 1, claim 22 requires that
the connector be “sufficiently rigid” to be used to insert and remove the CIC
component. Id.
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As with claim 1, Hear-Wear argues that the Examiner’s rejection of
claim 22 over Reiter and Shennib is deficient because the references
allegedly do not teach a connector that is sufficiently rigid to allow insertion
and removal of a CIC component. PO App. Br., p. 34. In that regard, Hear-
Wear contends that Shennib’s handle 38, which the Examiner relied upon in
accounting for the required connector, is “not part of the connector.” Id.
Also, as it urged in connection with claim 1, Hear-Wear takes the position
that Shennib “teaches away” from using a BTE component. Id.
For reasons that are essentially the same as those discussed above
with respect to claim 1, we are not persuaded that the prior art of Reiter and
Shennib fails to account for a connector that is sufficiently rigid to allow
insertion and removal of a CIC component.
Hear-Wear also alleges that the combination of Reiter and Shennib
does not teach the step of providing a connector that is “of sufficient length
to physically couple” the BTE and CIC components once the CIC
components are placed inside a user’s ear canal. PO App. Br., p. 34. In
particular, Hear-Wear argues that neither Shennib’s speaker assembly 48 nor
handle 38 is long enough to couple a BTE component to a CIC component.
Id.
The Examiner, in rejecting claim 22, noted that each of Reiter and
Shennib discloses connectors that physically couple a component placed in a
user’s ear canal and an external audio device. RAN, p. 13 (citing to Reiter’s
Figure 1) and p. 14 (citing to Shennib’s Figure 20). Reiter’s Figure 1 clearly
illustrates a cable 22 functioning as a connector between BTE component 12
and CIC component 18. Reiter, col. 2, ll. 15-23. Shennib’s Figure 20 shows
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earpiece 40 arranged in an ear canal and handle 38, wires 37, and signal
cable 39 extending from earpiece 40. Although no external audio device,
such as a BTE device, is shown, Shennib explains that the earpiece is
connected to such an external audio device. Shennib, p. 7, ll. 22-23.
Shennib’s handle 38 facilitates insertion and removal of earpiece 40 as
well as providing strain relief for wires 37 within signal cable 39. Shennib,
p. 8, ll. 3-5. The handle 38 is understood as rendering the connector of
Shennib, which is composed of that handle, wires 37, and cable 39,
sufficiently rigid to enable the insertion and removal. As with Reiter, the
connector between Shennib’s in-canal component and external audio
component is recognized readily as being of sufficient length to connect
those components. We, thus, are unpersuaded that the combination of Reiter
and Shennib fails to satisfy a connector that is of sufficient length to
physically couple a BTE component and a CIC component.
Lastly, Hear-Wear argues that the preamble of claim 22, in reciting “a
plurality of earpiece auditory device components,” where a portion of those
components may be assembled to form an earpiece auditory device “tailored
to a user,” renders claim 22 distinct from the combination of Reiter and
Shennib. PO App. Br., p. 35. We do not agree.
Even assuming that the preamble of claim 22 is “necessary to give life
meaning, and vitality” to the claim so as to be construed as a limitation, see
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
1999) (quoting Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951), we are not
persuaded that the preamble distinguishes claim 22 from the teachings of the
prior art. The Examiner pointed to Reiter’s CIC component 18 as
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constituting a plurality of earpiece auditory device components. RAN, p. 12.
We observe that CIC component 18 is not a structure viewed as being
composed of only a single component. Rather, as is evident from Reiter’s
Figure 1, the CIC component 18 encompasses multiple structures or
components, including those serving as a housing for receiver 20. The
Examiner also pointed to Reiter’s column 2, lines 15-16 as conveying that
CIC component 18 is tailored to a user. Id. That portion of Reiter describes
that the CIC component “has a shell which is molded to fit completely in the
patient’s hearing canal.” Reiter, col. 2, ll. 15-16. A shell molded to fit a
particular patient is understood reasonably as being tailored to a user.
Accordingly, after consideration of the record, we are not persuaded
of error in the Examiner’s prima facie basis for rejecting claim 22 as
unpatentable over Reiter and Shennib. Claims 24-27, 30, 31, and 41
ultimately depend from claim 22 and are not separately argued. We are also
not so persuaded with respect to those dependent claims.
c. Claims 2 and 23
Claim 2 depends from claim 1 and claim 23 depends from claim 22.
Claim 2 adds to claim 1: “wherein said connector is detachably coupled at
said proximal end with said BTE component.” Claim 23 adds to claim 22:
“wherein said selected connector is operable to detachably couple said
proximal end with said BTE component.”
Hear-Wear argues that neither Reiter nor Shennib discloses a BTE
component that is “detachably coupled” with a connector. PO App. Br., pp.
36-37. Hear-Wear thus contends that their combination does not convey
reasonably such a detachable coupling configuration.
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In accounting for that pertinent feature of claims 2 and 23, the
Examiner states the following:
Shennib discloses a connector (48) that is detachably
coupled at its proximal end with said behind-the-ear component
because detachment of signal wire 39 from connector 48 and
removal of the signal wire 39 from the interior of connector 48
would result in the connector 48 being detached from the
behind-the-ear component.

RAN, pp. 10, 18. Thus, the Examiner assesses Shennib’s disclosure as
teaching that the attachment of signal wire 39 to the connector is one
understood as “detachably coupled.” The Examiner, however, does not
explain the basis for that assessment nor point to evidence supporting it.
That is, we do not discern how the Examiner determined that Shennib
discloses that signal cable 39 is detachably coupled to any connector of
Shennib.
Even assuming the Examiner’s statement true, the claims require that
the “connector is detachably coupled at said proximal end with said BTE
component” (claim 2 and similarly in claim 23). Thus, the required
detachable coupling is between the connector and the BTE component, i.e.
an external audio device. Shennib’s handle 38 and receiver assembly 48 are
components in the vicinity of the in-canal devices of Shennib. That the
signal cable 39 may be decoupled from those components does not itself
suggest any detachable coupling of a connector with a BTE component, i.e.,
the component of the hearing aid that is external to a user’s ear canal.
HIMPP does not point to any disclosure in Shennib or Reiter
establishing the detachably coupling feature required by claims 2 and 23.
Instead, HIMPP relies on the paragraph 15 of the declaration testimony of
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Henry H. Fletcher. See Req. Resp. Br., p. 22. Paragraph 15 of Mr.
Fletcher’s Declaration is reproduced below:
I understand that Patent Owner has argued that [Shennib]
does not teach or suggest a detachable connection of the CIC
connector (e.g., cable 29) to the external audio source (BTE
unit). To the contrary, such a detachable connection would
have immediately been seen as the most likely and logical
implementation for the configuration described therein.

Fletcher Decl. ¶ 15. Thus, Mr. Fletcher concludes that the required
detachable connection would be “the most likely and logical
implementation” in Shennib’s disclosure. Notably absent from that
testimony, however, is a suitable explanation as to why such a connection
would be “likely and logical” or any reference to evidence of record
providing underlying support for the conclusion. Nothing requires a fact
finder to credit unexplained testimony of an expert. Rohm and Haas Co. v.
Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). We are not persuaded
that HIMPP has accounted sufficiently for the detachable coupling required
by claims 2 and 23.
Accordingly, we are unpersuaded that the teachings of Reiter taken
with Shennib satisfy the requirements of claims 2 and 23. We do not sustain
the Examiner’s rejection of those claims based on Reiter and Shennib.
d. Claims 4, 5, 8, and 20
Claims 4, 5, 8, and 20 are each ultimately dependent on claim 1.
Those dependent claims, reproduced below, set forth that certain
components of claim 1 are “disposable”:
4. The device of claim 1 where said connector is disposable.

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5. The device of claim 1 wherein said speaker module is a
disposable component.
---
8. The device of claim 7 wherein said ear mold and said hollow
sleeve constitute a disposable component.23
---
20. The device of claim 19 wherein said ear mold and said
integrally encapsulated speaker module constitute a disposable
component.24

PO App. Br., Claims App’x, pp. 34-35.
The Examiner determined that the “disposable” aspects of claims 4, 5,
8, and 20 are met by Shennib, reasoning that “all of the components
disclosed by Shennib are ‘disposable’ within the ordinary and customary
meaning of this claim terminology.” RAN, p. 10. HIMPP contends that the
term “disposable” has no special definition in the ’562 patent and that under
its broadest reasonable interpretation, the term means “that the user could
dispose of the claimed element if desired.” Req. Resp. Br., p. 22. In support
of its position, HIMPP also points to the declaration testimony of Dr.
Stephen C. Thompson (id.), who testifies that one with ordinary skill in the
art would have known that the most efficient means of addressing a
malfunctioning part is to dispose of and replace the part (Thompson Decl.
¶ 45).

23 Claim 7 recites “[t]he device of claim 1 wherein said ear mold is stretched
over a tubular neck of said hollow sleeve.

24 Claim 19 recites “[t]he device of claim 1 wherein said speaker module is
integrally encapsulated into said ear mold.”

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Hear-Wear expresses disagreement with the Examiner and HIMPP
that Shennib’s components are disposable. Pointing to column 21, lines 19-
28 of the ’562 patent, Hear-Wear urges that the term “disposable,” when
read in the context of that patent, means that disposable components “are
readily replaced rather than repaired.” PO App. Br., p. 37. Hear-Wear
generally concludes that Reither and Shennib do not satisfy the disposable
aspects of claims 4, 5, 8, and 20.
During reexamination, claim terms are given their broadest reasonable
construction consistent with the specification. In re Suitco Surface, Inc., 603
F.3d 1255, 1259 (Fed. Cir. 2010). Claim terms are also usually given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, a “claim term will not
receive its ordinary meaning if the patentee acted as his own lexicographer
and clearly set forth a definition of the disputed claim term in either the
specification or prosecution history.” CCS Fitness, Inc. v. Brunswick Corp.,
288 F.3d 1359, 1366 (Fed. Cir. 2002). Any such definition “must be done
with reasonable clarity, deliberateness, and precision.” In re Paulsen, 30
F.3d 1475, 1480 (Fed. Cir. 1994).
Here, although Hear-Wear directs us to column 21, lines 19-28 of the
Specification of the ’562 patent (PO App. Br., p. 37), we do not discern that
the portion sets forth a lexicographic definition of any claim term. Rather,
the cited portion simply notes that a particular component of a disclosed
embodiment is “disposable” such that it can be replaced without requiring
repair, but does not set forth any special definition for the term “disposable.”
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Indeed, that a component that is “disposable” may be replaced is in accord
with the meaning of the term offered by HIMPP. Although Hear-Wear
seemingly characterizes its position as one of disagreement with HIMPP,
both parties have offered meanings of “disposable” that are essentially the
same and consistent with the Specification of the ’562 patent. In that regard,
“disposable,” in connection with a particular component, means that the
component may be removed and replaced. That is, in our view, the ordinary
and customary meaning of the term.
The Examiner and HIMPP submit that the pertinent components of
Shennib are “disposable.” Although Hear-Wear does not agree with the
Examiner and HIMPP, we are not persuaded that Hear-Wear’s disagreement
is well founded. We do not discern that Shennib or, for that matter, Reiter
imposes any restriction on the components of its hearing device that requires
that any component must remain as a part of the device and cannot be
removed and replaced. On this record, we do not discern how the term
“disposable” as applied to the components of claims 4, 5, 8, and 20 serves to
structurally distinguish those components over the corresponding
components of the prior art.
We have considered the record and, for the foregoing reasons, are not
persuaded of error in the Examiner’s prima facie basis for rejecting claims 4,
5, 8, and 20 as unpatentable over Reiter and Shennib.
2. Reiter, Shennib, and Posen
The Examiner rejected claims 15-18 and 38-40 as unpatentable over
Reiter, Shennib, and Posen. Claims 15-18 and 38-40 ultimately depend
from either claim 1 or claim 22. Hear-Wear generally urges that the
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combination of Reiter and Shennib allegedly do not teach certain features of
claims 1 and 22 and that Posen does not cure the deficiencies. As discussed
above, however, we are not persuaded of any defects in the Examiner’s
rejection of claims 1 and 22 based on Reiter and Shennib.
Hear-Wear also offers an additional argument as to claims 17 and 18.
Those claims ultimately depend from claim 1, with claim 17 adding
“wherein said locking pin assembly is disposable,” and claim 18 adding
“where said speaker module, said ear mold, and said locking pin assembly
constitute a disposable component.” PO App. Br., Claim App’x.
In accounting for the requirements of claims 17 and 18, the Examiner
found that components in Posen corresponding to those of claim 17 and 18
were “disposable.” RAN, pp. 21- 22. Posen is directed to
attenuating/damping structures for hearing aids. Posen, col. 1, ll. 8-9. Hear-
Wear does not challenge the Examiner’s determination that Posen discloses
the features required by claims 17 and 18 other than to urge generally that
those features are not “disposable.” PO App. Br., p. 38.
As discussed above, the record reflects that the ordinary and
customary meaning of “disposable,” in conjunction with a given component,
is that the component may be removed and replaced. As with Shennib and
Reiter, we do not discern that Posen mandates that any component of its
disclosed devices must be maintained and cannot be removed and replaced.
We are not persuaded, on this record, that the Examiner was incorrect in
determining that one with ordinary skill in the art would have appreciated
that the pertinent components in Posen are “disposable.”
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We conclude that the Examiner has established an adequate prima
facie basis for rejecting claims 15-18 and 38-40 as unpatentable over Reiter,
Shennib, and Posen.
3. Reiter, Shennib, and Schiess
The Examiner rejected claim 21 as unpatentable over Reiter, Shennib,
and Schiess. Claim 21 depends from claim 1. Although claim 21 is
addressed under a separate heading in Hear-Wear’s Appeal Brief, Hear-
Wear’s arguments as to the patentability of claim 21 over Reiter, Shennib,
and Schiess are premised on claim 21’s dependency on claim 1. PO App.
Br., p. 38. In that regard, Hear-Wear contends that Schiess does not cure
alleged deficiencies of Reiter and Shennib in connection with the features of
claim 1.
As discussed above with respect to claim 1, we are not persuaded that
the combination of Reiter and Shennib fails to satisfy the features of claim 1.
Accordingly, we are also not persuaded that the combination of Reiter,
Shennib, and Schiess fails to establish a prima facie case of obviousness for
claim 21.
4. Evidence of Non-Obviousness
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“After evidence or argument is submitted by the applicant in response,
patentability is determined on the totality of the record, by a preponderance
of evidence with due consideration to persuasiveness of argument.” Id. As
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discussed above, we are persuaded that the Examiner has met her burden in
presenting a prima facie case of unpatentability for each of claims 1, 3-9, 11,
12, 19, 20, 22, 24-27, 30, 31, and 41.
In response to the Examiner’s rejections, Hear-Wear offers evidence
of secondary considerations that it contends demonstrates the non-
obviousness of claim 1. In particular, Hear-Wear contends that it has
submitted ample evidence that companies in the hearing aid industry have
licensed the ’562 patent and that others in the industry have copied the
invention of claim 1 of the ’562 patent. PO App. Br., pp. 24-32. Hear-Wear
urges that the proffered evidence undercuts the Examiner’s case of
obviousness for claim 1 of the ’562 patent.
The Examiner indicates that the evidence had been considered but was
insufficient to outweigh the strong evidence of obviousness presented by the
prior art. RAN, pp. 25-30. HIMPP also contends that the evidence is
insufficient in that regard. Req. Resp. Br., pp. 23-26.
We turn to consideration of the proffered evidence.
a. Licensing
Hear-Wear contends that it has submitted evidence that companies in
the hearing-aid industry constituting “approximately 60% of the market
share” have licensed the ’562 patent. PO App. Br., p. 25. In support
thereof, Hear-Wear points to a paragraph 15 of the Declaration of James
Feeley25. Id. That paragraph of the Feeley Declaration is reproduced below:

25 See “Declaration of James Feeley” dated May 12, 2009 (“Feeley Decl.”)
and filed with Hear-Wear’s Appeal Brief as “Item 5.”

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Hear-Wear Technologies has granted licenses to a group
of patents, which includes the ‘562 patent, to a number of
companies in the hearing aid industry, including three of the
five largest hearing aid manufacturers. I estimate that,
collectively, the licensed companies represent approximately
60% of the total hearing aid market in the United States.
Additionally, Hear-Wear is currently in negotiations to grant
further licenses to other companies for the ‘562 patent.

Feely Decl. ¶ 15. Thus, Mr. Feeley testifies that Hear-Wear has granted
licenses to a “group of patents” that includes the ’562 patent. Notably
absent from Mr. Feeley’s testimony, however, is credible evidence that, of
that “group” of patents, it is the invention of the ’562 patent that had attained
industry respect. See In re Roufett, 149 F.1350, 1355 (Fed. Cir. 1998)
(characterizing “licenses showing industry respect for the invention” as a
form of objective evidence of nonobviousness). Indeed, Mr. Feely’s
testimony does not attribute any particular respect or significance to the
invention of the ’562 patent. Furthermore, the noted testimony also does not
establish that any licensed company actually practices the invention of the
’562 patent as a part of any licensing agreement.
We observe that Hear-Wear attempts to bolster the above-noted
testimony. In that regard, Hear-Wear points to paragraph fourteen of a
supplemental Declaration of Mr. Feeley26. PO App. Br., p. 26. That
paragraph is reproduced below:
Hear-Wear Technologies has granted licenses to a group
of patents, which includes the ‘562 patent, to a number of

26 See “Supplemental Declaration of James Feeley” dated May 24, 2010
(“Supp. Feeley Decl.”) and filed with Hear-Wear’s Appeal Brief as “Item 6”
of the Evidence Appendix.
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companies in the hearing aid industry, including three of the
five largest hearing aid manufacturers. I estimate that,
collectively, the licensed companies represent approximately
60% of the total hearing aid market in the United States. Many
of the licensed manufacturers incorporate multiple teachings of
the present application and its claims in their previous and
current products. Additionally, Hear-Wear is currently in
negotiations to grant further licenses to other companies for the
‘562 patent.

Supp. Feely Decl. ¶ 14. Thus, Mr. Feeley generally testifies that “[m]any of
the licensed manufacturers incorporate [in their products] multiple teachings
of the present application and its claims.” Id. According to Hear-Wear, Mr.
Feeley’s testimony “supports a conclusion that the ’562 patent was
important to the licensing negotiations” and is “strong evidence that the
patent is nonobvious.” PO app. Br., p. 26.
“For objective evidence to be accorded substantial weight, its
proponent must establish a nexus between the evidence and the merits of the
claimed invention.” In re GPAC Inc., 57 F.3d 1573, 1580 (Fed.Cir.1995).
In that regard, while licenses may constitute evidence of nonobviousness
“only little weight can be attributed to such evidence if the patentee does not
demonstrate ‘a nexus between the merits of the invention and the licenses of
record.’” Id. (quoting Stratolex, Inc. v. Aeroquip Corp., 713 F.2d 1530,
1539 (Fed. Cir. 1983)).
Here, we do not discern that a general statement that some unspecified
“teachings” of the claims of the ’562 patent were associated in some fashion
with the noted licensing agreements establishes the requisite nexus. An
ambiguous reference alluding only generally to such teachings provides little
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elaboration as to what teachings were of any significance. Moreover, even
assuming that Mr. Feeley’s testimony provides evidence that some aspects
of the claims of the ’562 patent are incorporated in products of the licensed
companies, we are not persuaded that the evidence is “strong” or that it
outweighs the palpable evidence of obviousness discussed above.
b. Copying
Hear-Wear also contends that it has provided evidence of copying “in
the form of declarations, marketing materials, and claim charts which show
that major manufacturers (e.g. Inerton, Oticon, and Phonak) in the hearing
aid industry copied the claimed invention of the ’562 patent.” PO App. Br.,
p. 26. HIMPP disagrees with Hear-Wear that the proffered evidence
demonstrates copying. Req. Resp. Br., pp. 25-26. We have considered the
evidence of record and agree with HIMPP.
“[C]opying by a competitor may be a relevant consideration in the
secondary factor analysis.” Iron Grip Barbell Co., Inc. v. USA Sports, Inc.,
392 F.3d 1317, 1325 (Fed. Cir. 2004) (citing Vandenberg v. Dairy Equip.
Co., 740 F.2d 1560, 1567 (Fed.Cir.1984). Copying as objective evidence of
nonobviousness requires evidence of effort to replicate a specific product.
Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010); Iron Grip,
392 F.3d at 1325. Furthermore, “a nexus between the copying and the novel
aspects of the claimed invention must exist for evidence of copying to be
given significant weight in an obviousness analysis.” Wm. Wrigley Jr. Co. v.
Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012) (internal
quotation omitted). Generally, evidence of alleged copying may be given
little weight when the copy is not identical to the product embodying the
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claimed invention. See Pentec, Inc. v. Graphic Controls, Corp., 776 F.2d
309, 317 (Fed. Cir. 1985).
Here, Hear-Wear points to evidence that it contends establishes that
products from three companies, Interton, Oticon, and Phonak, are copies of a
“Voice-Q PAC hearing aid” which embodies the claimed invention of the
’562 patent. PO App. Br., p. 26. The evidence offered by Hear-Wear
includes marketing materials for products from each of Interton, Oticon, and
Phonak and “claim charts” that Hear-Wear contends are sufficient to
demonstrate copying of the invention of claim 1.27 In particular, the
products are described as a “GN/Interton Shape Product,” an “Oticon Delta
Product,” an “Oticon Epoq Product,” and a “Phonak Micropower Product.”
PO App. Br, Evidence App’x, items 8, 10, 11, and 12.
In reviewing the noted claim charts, we observe that with respect to
the “GN/Interton Shape Product,” the “Oticon Delta Product,” and the
“Oticon Epoq Product,” the charts do not explain how the “sufficiently rigid
connector” requirement of claim 1 is set forth in the pertinent product. See
id. at items 1, 10, and 11. Indeed, the claim charts make no reference to that
feature in connection with the referenced products. It also is not readily
apparent how that feature is disclosed or described in the accompanying
marketing materials of the products.
With respect to the “Phonak Micropower Product,” the claim chart
generally states that a corresponding connector portion is sufficiently rigid
for insertion and removal and draws support for that statement through a

27 The marketing materials appear as items 8-12 in the Evidence Appendix
of Hear-Wear’s Appeal Brief.
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representation that the “Patent Owner’s inspection” of the product
demonstrates that it is sufficiently rigid. PO App. Br., Evidence App’x, item
12. We do not discern that the noted representation is offered as declaration
testimony that is compliant with 37 C.F.R. § 1.68. The Patent Owner’s
blanket assurance that the connector is sufficiently rigid as required amounts
simply to an inadequately supported assertion. It also is not apparent readily
how that requirement is set forth in the accompanying marketing materials
of the Phonak Micropower product.
We have considered the evidence presented but do not discern that it
adequately establishes that the pertinent products are replications of a
product that includes all the features of claim 1 of the ’562 patent. In any
event, even assuming that the noted “GN/Interton,” “Oticon,” and “Phonak”
products do incorporate all the features of claim 1, it is not the case that
“every competing product that arguably falls within the scope of a patent is
evidence of copying.” IronGrip Barbell Co., Inc., 392 F.3d at 1325. Rather,
as noted above, copying requires the “replication” of a specific product was
replicated. Id.
Here, Hear-Wear bases its “copying” position on the introduction of
its “Voice-Q PAC” hearing aid at a convention in 2003, which Hear-Wear
contends is a hearing aid embodying the invention of the ’562 patent. PO
App. Br., pp. 26-27. According to Hear-Wear, its proffered evidence shows
that representatives of each of Interton, Oticon, and Phonak were at that
conference and “used their knowledge of the invention of the ’562 [p]atent
to develop” to copy hearing aids between 2005 and 2006. Id. at p. 27.
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Even assuming that the evidence adequately establishes that
representatives of those companies were in attendance at the conference,
Hear-Wear offers little in the way of support for its assertion that it was the
knowledge of the “Voice-Q PAC” product presented at the 2003 convention
that was “used” to produce the noted competing products. As discussed
above, all of the components of claim 1 of the ‘562 patent were already
known in the hearing aid prior art and used for the same purposes as in the
’562 patent. That Interon, Oticon, and Phonak were represented at the
conference and also developed products incorporating those prior art
components does not itself show, as Hear-Wear specifically urges, that it
was the knowledge of the “Voice-Q PAC” hearing-aid that was used.
However, the underlying basis of Hear-Wear’s assertions of copying is that
it was the knowledge gleaned specifically from the conference that led to the
alleged copying.
c. Conclusion – Evidence of Non-Obviousness
We have carefully considered the evidence offered by Hear-Wear in
support of its position that claim 1 of the ’562 patent is non-obvious. We
have weighed that evidence with the evidence offered by HIMPP and the
Examiner in support of obviousness. On balance, we conclude that the
strong evidence of obviousness outweighs the weak evidence of non-
obviousness.
5. Summary – Hear-Wear’s Appeal
For the foregoing reasons, we summarize our determination as
follows:
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The Examiner’s rejection of claims 1, 3-9, 11, 12, 19, 20, 22, 24-27,
30, and 41 based on Reiter and Shennib is sustained.
The Examiner’s rejection of claims 15-18 and 38-40 over Reiter,
Shennib, and Posen is sustained.
The Examiner’s rejection of claim 21 over Reiter, Shennib, and
Schiess is sustained.
The Examiner’s rejection of claims 2 and 23 over Reiter and Shennib
is not sustained.
B. HIMPP’S APPEAL
HIMPP appeals the Examiner’s decision confirming the patentability
of claims 13, 14, and 32-37 of the ’562 patent. HIMPP also contends that
the Examiner erred in declining to maintain various proposed rejections
involving each of claims 1-9, 11-27, and 30-41 (the “proposed rejections”).
1. The Confirmation of Claims 13, 14, and 32-37
Claim 13 depends from claim 1 and adds that “said ear mold is a
custom fit ear mold.” Claim 32 depends from claim 22 and adds the same
feature. Claim 14 depends from claim 13 and claims 33-37 ultimately
depend from claim 32. The Examiner’s refusal to reject the above-noted
claims is based on the added features of each of claims 13 and 32. In
particular, the Examiner offered the following reasoning:
Claims 13 and 32 require an ear mold that is a custom fit
ear mold. Shennib teaches away from the use of a custom fit ear
mold stating on page 3 in the second and third full paragraphs:

Unfortunately, even with custom earpieces
or canal devices, small gaps between the ear piece
and the wall of the ear canal frequently occur.
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These gaps, which are a significant source of
acoustic feedback, occur because ear impressions
are unable to mimic the geometry of the ear canal
identically. Furthermore, gaps can also occur
during canal deformations associated with jaw
movements.
Proving a tight fit to minimize gaps and
improve sealing is usually accompanied by
discomfort, irritation, or even pain particularly in
the bony portion of the canal which is sensitive
and more prone to discomfort and irritation.

Accordingly, modifying the completely-in-canal
component disclosed by Shennib to use a custom fit ear mold
would not have been obvious to one of ordinary skill in the art
at the time of the invention. Claims 14 and 33-37 depend from
claims 13 and 32, respectively and likewise are confirmed.28

Thus, the basis of the Examiner’s non-adoption of any proposed
rejection of claims 13, 14, and 32-37 is premised on a theory that Shennib
“teaches away” from a custom fit ear mold. That is a position also
advocated by Hear-Wear (2nd PO Resp. Br., pp. 6-7) but disputed by HIMPP
(Req. App. Br., pp. 10-12).
We are not persuaded that the Examiner’s teaching away position is
correct. A reference “teaches away” when it criticizes, discredits or
otherwise discourages investigation into the claimed invention. DePuy
Spine Inc., 567 F.3d at 1327. Here, however, rather than criticizing,
discrediting or discouraging the use of “custom” earmolds, the reproduced
portion of Shennib simply notes that “even” with such custom earpieces,

28 See page 34 of the “Office Action In Inter Partes Reexamination” mailed
March 31, 2010.
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undesirable gaps may be present between the earpiece and the wall of an ear
canal. That such gaps “even” occur with such custom pieces does not
convey that such custom ear pieces are undesirable as compared with non-
custom ear pieces. Indeed, the logical reading of that disclosure merits the
opposite conclusion. That is, such gaps are known to arise when using non-
custom ear pieces, such as ear molds, and that, while using custom ear molds
may reduce the size of such gaps, they still remain as a detrimental factor or
undesired result.
Furthermore, even assuming that Shennib recognizes some drawbacks
in connection with “custom” ear molds, the reference also sets forth that
custom fabrication of ear pieces is a known approach “to ensure an exact fit
of the earpiece to the canal of the individual” and that providing a “tighter
fit” is intended “to minimize gaps and improve sealing[.]” Shennib, p. 3.
While such a tighter fit may be “accompanied by discomfort, irritation, or
even pain” (id.), it is clear that there is a trade-off between such detriments
and the gap minimization and sealing improvement benefits noted-above.
That Shennib may express generally a preference for a technique that
minimizes the possibility of discomfort does not mean that it teaches away
from investigation into other techniques. See DePuy Spine Inc., 567 F.3d at
1327.
We also observe that HIMPP relies on the declaration testimony of
Henry Fletcher29 in urging that customized ear molds were known in the art.
Req. App. Br., p. 11. Mr. Fletcher testifies that based on the disclosure of

29 See “Declaration of Henry H. Fletcher” dated June 28, 2010 (“Fletcher
Decl.”) and filed as “Item 1” in the Evidence Appendix of HIMPP’s Appeal
Brief.
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Shennib, one with ordinary skill in the art would have known that
“customized ear molds are a known fitting option” despite the recognized
drawbacks and that “[f]or some, custom ear molds would have been seen as
a viable option and perhaps even the preferred option.” Fletcher Decl. ¶ 16.
We credit that testimony, as it is, in our view, consistent and complementary
with the disclosure of Shennib.
For the foregoing reasons, we disagree with the Examiner and Hear-
Wear that Shennib “teaches away” from the use of custom ear molds. We
are thus not persuaded the teachings of Shennib are precluded from
combination with Reiter in connection with custom fit ear molds.
2. The Proposed Rejections
HIMPP contends that the Examiner erred in declining to adopt various
proposed claims rejections. By our count, there are ten such rejections that
were proposed by HIMPP in its request for inter partes reexamination of the
’562 patent in connection with claims 1-9, 11-27, and 30-41.
a. Claims 13, 14, and 32-37
With respect to claims 13, 14, and 32-37, we observe that HIMPP
urges the following with respect to the relief that it seeks from this Board in
connection with the rejections that were not adopted by the Examiner:
In view of the foregoing, Requester requests that the
Board reverse the confirmation of claims 13, 14, and 32-37, by
overturning the Office’s erroneous finding that Shennib teaches
away from a custom ear mold.

Req. App. Br., p. 32. Thus, the relief that HIMPP seeks with respect to
claims 13, 14, and 32-37 is that this Board “reverse” the Examiner’s
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confirmation of claims 13, 14, and 32-37 as patentable and, in so reversing,
presumably enter a corresponding ground of rejection of those claims that
was outlined in HIMPP’s request for inter partes reexamination as a new
ground of rejection.
HIMPP proposed a ground of rejection of claims 13, 14, 32 and 37
involving the teachings of Reiter, Toht, Shennib, and Shennib ’348 and a
ground of rejection of claims 33-36 involving Reiter, Toht, Shennib, and
Shennib ’348, and Topholm. As discussed above, we are not persuaded that
Shennib teaches away from a custom ear mold.
We have considered Hear-Wear’s arguments offered in its Second
Respondent Brief that a combination involving Reiter, Toht, and Shennib is
insufficient to account for certain aspects of the claims. See generally 2nd
PO Resp. Br., pp. 7-11 and 22-23. We are not persuaded by any of those
arguments. For example, particularly in light of the teachings of Shennib,
we are satisfied that a connector that is “sufficiently rigid” to allow insertion
and removal of a CIC component from a user’s ear canal is known in the art.
We are also persuaded that a person of ordinary skill in the art would have
had adequate reasons to combine the teachings of Reither, Toht, and
Shennib.
We are persuaded that HIMPP’s request for inter partes
reexamination establishes that claims 13, 14, and 32-37 would have been
obvious in light of the prior art. Accordingly, we enter the following
rejections that were proposed by HIMPP:
A. Claims 13, 14, 32, and 37 are unpatentable under 35 U.S.C.
§ 103(a) based on Reiter, Toht, Shennib, and Shennib ’348; and

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B. Claims 33-36 are unpatentable under 35 U.S.C. § 103(a) Reiter,
Toht, Shennib, and Shennib ’348, and Topholm.

The above-noted grounds of rejection constitute new grounds under
37 C.F.R. § 41.77(b) and are hereby designated as such.
b. Claims 1-9, 11, 12, 15-27, 30, 31, and 38-41
We observe that with respect to the remaining rejections that are at
issue in HIMPP’s appeal and applied to claims 1-9, 11, 12, 15-27, 30, 31,
and 38-41, HIMPP requests the following relief from the Board:
Requester submits that if the rejections adopted in the Third
Office Action should be reversed as to any claim or claims, that
claim or claims are still unpatentable over the combination of
references proposed in the twice-adopted and arbitrarily
withdrawn proposed [rejections]. Thus, in the event that any of
these rejections are reversed, Requester respectfully requests
that the Board set forth the corresponding unadopted proposed
rejection as a new ground of rejection under 37 CFR 41.77(b)

Req. App. Br., p. 32. Thus, the relief that HIMPP seeks is that, “in the
event” this Board reverses any claim rejection adopted by the Examiner in
the “Third Office Action”30, the Board should enter a corresponding
unadopted ground of rejection set forth in HIMPP’s request as a new ground
of rejection. Thus, HIMPP’s requested relief is contingent on the Board’s
reversal of any claim rejection that was adopted by the Examiner.
As discussed above in the context of Hear-Wear’s appeal, the Board
has sustained all the rejections that were adopted by the Examiner save for
the rejection of claims 2 and 23 based on the combination of Reiter and

30 We understand that the “Third Office Action” is the Office action mailed
March 31, 2010.
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Shennib. HIMPP alternatively proposes that claims 2 and 23 are
unpatentable over a combination of Toht, Reiter, and Shennib.
Dependent claims 2 and 23 add to claims 1 and 22, respectively, that
the connector is “detachably coupled” (clam 2) or “operable to detachably
couple” (claim 23) to the proximal end of a BTE component. As noted
above, we determined that a combination of Reither and Shennib does not
account for that detachable coupling feature. HIMPP’s alternative ground of
rejection of claims 2 and 23 relies on Toht for that feature.
Toht is directed to a hearing aid. Toht’s Figure 1 discloses an
embodiment of the invention and is reproduced below:

As shown in Figure 1, amplifier unit 1 is attached, via cable conductor
3, to receiver portion 2 that is placed within a user’s ear. Amplifier unit 1 is
described as a component that may be worn “behind a person’s ear.” Toht,
col. 1, ll. 45-49. Toht also discloses that cable or “connector” 3 is “normally
detachably connected to units 1 and 2, as by plug and socket connection.”
Id. at col. 1, ll. 61-63. In light of Toht’s disclosure, we are satisfied that a
person of ordinary skill in the art would have known that hearing aids,
including known components such as a CIC component and a BTE
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component, may be connected via a connector portion that is detachably
coupled to the BTE, as well as the CIC component, so as to allow
detachment of the connector from each component when desired.
Accordingly, we are persuaded that claims 2 and 23 would have been
obvious in light of the ground of rejection based on the combination of Toht,
Reiter, and Shennib, which was proposed by HIMPP. Accordingly, we enter
a ground of rejection of claims 2 and 23 as unpatenble under 35 U.S.C.
§ 103(a) based on Toht, Reiter, and Shennib. That ground of rejection
constitutes a new ground under 37 C.F.R. § 41.77(b) and is hereby
designated as such.
III. CONCLUSION
For the foregoing reasons, we conclude that the record adequately
establishes that each of claims 1-9, 11-27, and 30-41 of the ’562 patent is
unpatentable over the prior art.
IV. ORDER
1. Hear-Wear’s Appeal
The Examiner’s decision to reject claims 1, 3-9, 11, 12, 19, 20, 22, 24-
27, 30, 31, and 41 based on Reiter and Shennib is affirmed.
The Examiner’s decision to reject claims 15-18 and 38-40 over Reiter,
Shennib, and Posen is affirmed.
The Examiner’s decision to reject claim 21 over Reiter, Shennib, and
Schiess is affirmed.
The Examiner’s decision to reject claims 2 and 23 over Reiter and
Shennib is reversed.
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2. HIMPP’s Appeal
We enter the following new grounds of rejection:
A. Claims 13, 14, 32, and 37 are unpatentable under 35 U.S.C.
§ 103(a) based on Reiter, Toht, Shennib, and Shennib ’348;

B. Claims 33-36 are unpatentable under 35 U.S.C. § 103(a) based
on Reiter, Toht, Shennib, Shennib ’348, and Topholm; and

C. Claims 2 and 23 are unpatentable under 35 U.S.C. § 103(a)
based on Toht, Reither, and Shennib.

We do not reach the merits of any other grounds of rejection discussed
as a part of HIMPP’s appeal.

This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that “[a]ny decision which includes a new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.” Correspondingly, no portion of the decision is final for
purposes of judicial review. A requester may also request rehearing under
37 C.F.R. § 41.79, if appropriate; however, the Board may elect to defer
issuing any decision on such request for rehearing until such time that a final
decision on appeal has been issued by the Board.
For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41.77(b)-(g). The decision may become final after it has returned to the
Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
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of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be
either an amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. . . .

Any request to reopen prosecution before the examiner under 37
C.F.R. § 41.77(b)(1) shall be limited in scope to the “claims so rejected.”
Accordingly, a request to reopen prosecution is limited to issues raised by
the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted. Furthermore, should the patent owner seek to
substitute claims, there is a presumption that only one substitute claim would
be needed to replace a cancelled claim.
A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall
be limited in scope to the issues raised by the Board's opinion reflecting its
decision to reject the claims and the patent owner’s response under
paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not
permitted as a matter of right. A newly proposed rejection may be
appropriate if it is presented to address an amendment and/or new evidence
properly submitted by the patent owner and is presented with a brief
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explanation as to why the newly proposed rejection is now necessary and
why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all patent owner responses and requester comments, is required.
The examiner, after the Board’s entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board’s rejection is maintained or has been overcome.
The proceeding will then be returned to the Board together with any
comments and reply submitted by the owner and/or requester under
37 C.F.R. § 41.77(e) for reconsideration and issuance of a new decision by
the Board as provided by 37 C.F.R. § 41.77(f).

AFFIRMED-IN-PART;
37 C.F.R. § 41.77(b)

peb
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THIRD-PARTY REQUESTER:
Robert Greene Sterne
Jason D. Eisenberg
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 New Yerk Avenue, N.W.
Suite 800
Washingten, DC 20005

PATENT OWNER:
R. Ross Viguet
FULBRIGHT & JA WORSKI L.L.P.
2200 Ross Avenue
Suite 2800
Dallas, TX 75201-2784