Ex Parte 7139404 et al

Patent Trial and Appeal Board

Jul 18, 2018

90013552 (P.T.A.B. Jul. 18, 2018)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/013,552 07/27/2015 7139404 2989.001REXC 1009
29053 7590 07/19/2018
NORTON ROSE FULBRIGHT US LLP
2200 ROSS AVENUE
SUITE 3600
DALLAS, TX 75201-7932
EXAMINER
CRAVER, CHARLES R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/19/2018 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 HEAR WEAR TECHNOLOGIES, LLC
____________________

Appeal 2017-007406
Reexamination Control No. 90/013,552
Patent No. 7,139,404 B21
Technology Center 3900
____________________

Before STEPHEN C. SIU, JOSIAH C. COCKS, and ERIC B. CHEN,
Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON APPEAL

1 The patent involved in this reexamination proceeding (“’404 patent”)
issued to Jim Feeley on November 21, 2006.
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I. INTRODUCTION
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed on July 20, 2015. Hear-Wear Technologies, LLC
(“Hear-Wear” or “Patent Owner”) appeals from a final rejection of claims
31–48.2 Oral argument was held on July 26, 2017. A transcript of the oral
argument was entered on May 3, 2018 (“Tr.”).
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We affirm-
in-part and reverse-in-part.
A. Related Proceedings
Hear-Wear contends the following in conjunction with “Related
Appeals, Interferences and Trials”:
In related Inter Partes reexamination no. 95/001,036
(Patent No. 7,139,404, hereinafter ’404 patent), an appeal was
filed by the Requester, The Appeal was dismissed in a decision
dated June 29, 2012. The decision dismissing Inter Partes
reexamination no. 95/001,036 is included in the related
proceedings appendix.
Further to appeal in related Inter Partes reexamination
no. 95/001,021 (Patent No. 7, 110,562, hereinafter ’562 patent),
the Board issued decisions dated December 6, 2013 and
January 17, 2014. Further to appeal to the Federal Circuit, the
court issued a decision dated January 9, 2015. Copies of the
decisions regarding Inter Panes reexamination no. 95/001,021
are included in the related proceedings appendix. The ’562
patent is a continuation in part of the ’404 patent.

2 The Examiner issued a Final Office Action on July 11, 2016 rejecting each
of claims 31–48. Hear-Wear filed an Appeal Brief on December 12, 2016
(“Appeal Brief” of “App. Br.”). The Examiner filed an Examiner’s Answer
on January 31, 2017 (“Answer” or “Ans.”). Oral argument was conducted
on July 26, 2017, and a copy of the transcript of that oral argument is of
record (entered May 3, 2018) (“Tr.”).
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Further to appeal in related Inter Partes reexamination
no. 95/001,022 (Patent No. 7,016,512, hereinafter ’512 patent),
the Board issued decisions dated July 16, 2012 and April 26,
2013, Further to appeal to the Federal Circuit, the court issued a
decision dated May 27, 2014, Copies of the decisions regarding
Inter Partes reexamination no. 95/001,022 are included in the
related proceedings appendix. The ’512 patent is a continuation
in part of the ’404 patent
Further to appeal in related Inter Partes reexamination
no. 95/001,388 (Patent No, 7,606,382, hereinafter ’382 patent),
the Board issued a decision dated December 9, 2014. Further to
appeal to the Federal Circuit, the court issued a decision dated
January 8, 2015. Copies of the decisions regarding Inter Partes
reexamination no. 95/001,388 are included in the related
proceedings appendix. The ’382 patent is a continuation of the
’404 patent.
In Inter Partes Reexamination Control No. 95/002,244
(Patent No, 8,050,437, hereinafter ’437 patent), an appeal was
filed but Patent Owner cancelled all the claims after appeal. No
decision was issued by the Board in this appeal. The ’437
patent is a continuation of the ’404 patent.
In Inter Partes Reexamination Control No. 95/002,248
(Patent No. 8,094,850, hereinafter ’850 patent) an appeal was
filed but no appeal brief was subsequently filed and the
Examiner cancelled the claims. No decision was issued by the
Board in this appeal. The ’850 patent is a continuation of
Application No. 11/521,845, which is a continuation of the ’562
patent, which is a continuation in part of the ’404 patent.
In Ex Parte Reexamination Control No. 90/011,599,
(Patent No. 7,016,512, hereinafter ’512 patent), an appeal was
filed but after the appeal the Examiner subsequently confirmed
the patentability of claims 3 and 9. No decision was issued by
the Board as a result of this appeal. The ’512 patent is a
continuation in part of the ’404 patent.
Further to appeal in Ex Parte reexamination no.
90/010,085 (Patent No. 5,606,621, hereinafter ’621 patent) the
Board issued a decision dated November 19, 2010, a copy of
which is attached in the related proceedings appendix. The ’621
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patent is owned by Patent Owner, and while unrelated to the
’404 patent and its family, the ’621 patent is used as prior art in
the present case.
The ’621, ’512, ’562, and ’404 patents have been
litigated as Civil Action No. 07:CV-212-CVE-FHM in the
United States District Court, Northern District of Oklahoma;
Hear-Wear Technologies, LLC v. Oticon, Inc. et al. The case
was settled by the parties on March 23, 2016 and terminated by
the court on April 5, 2016, without a decision regarding the
patent claims in suit.
App. Br. 3–4.
B. The Invention
The ’404 patent is directed generally to an earpiece auditory device.
’404 patent, Abstract. An “exploded isometric view of an exemplary
embodiment” of the invention is shown in Figure 1, which is reproduced
below (id. at 3:62–63):

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As depicted in Figure 1 above, earpiece auditory device 40 includes
“completely-in-canal” (or “CIC”) unit 10, connector 20, and “behind-the
ear” (or “BTE”) unit 30. Id. 4:63–5:6.
Independent claim 31 is representative of the claimed subject matter
and is reproduced below:3
31. 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 plurality of behind-the-ear components from
which a behind-the-ear component operable to facilitate the
user's intended use for the earpiece auditory device may be
selected, wherein each of said behind-the-ear components
comprises a module including processing circuitry in
communication with a microphone port located outside the ear
canal of the user; and
providing a plurality of connectors from which a
connector of sufficient length may be selected to physically
couple a selected behind-the-ear components when said
selected behind-the-ear component is placed behind the ear of
the users to a completely-in-canal component when said
completely-in-canal component is placed inside the ear canal of
the user, the completely-in-canal component including a
speaker electrically connected to the processing circuitry and
wherein said connector of sufficient length is shaped to place a
portion of said connector within the ear canal of the user when
said completely-in-canal component is placed in the ear canal
of the user, and wherein said connector of sufficient length
includes at least one end operable to detachably physically
couple to said selected behind-the-ear component or said
completely-in-canal component, and said connector of
sufficient length is sufficiently rigid so as to allow said
connector of sufficient length to be used to insert and remove

3 Claims 32–48 ultimately depend from claim 31.
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the completely-in-canal component from the ear canal of the
user.
App. Br., Claims App’x 1.
C. References Relied on by the Examiner
Toht US 2,930,856 Mar. 29, 1960
Martin US 3,197,576 July 27, 1965
Hueber US 3,928,733 Dec. 23, 1975
Nonomura JP 62-151100 July 6, 19874
Reiter et al. (“Reiter”) US 5,606,621 Feb. 25, 1997
Siemens DE 298 015 67 U1 May 28, 19985
Dar US 5,761,319 June 2, 1998
Fretz WO 99/04601 Jan. 28, 1999
Posen US 5,864,628 Jan. 26, 1999
Shennib WO 99/07182 Feb. 11, 1999
Kerns US 6,144,748 Nov. 7, 2000
Leysieffer US 6,600,825 B1 July 29, 2003
Anderson et al. (“Anderson”) US 6,704,423 B2 Mar. 9, 2004
Shennib ’902 US 6,724,902 B1 Apr. 20, 2004
Fretz et al. (“Fretz ’608”) US 7,027,608 B2 Apr. 11, 2006

Data Sheet for Danavox 767 AGC Body Aid Model (published July, 1976)
(“Danavox”)
D. Rejections on Appeal
By our count, after consultation of the record including the
Examiner’s Answer, there are thirty-one grounds of rejection maintained by

4 An English translation of this Japanese document is included in the record
(Request, Exhibit F3). Citations in this opinion to page and line numbers of
Nonomura refer to the English translation.

5 An English translation of this German document is included in the record
(Request, Exhibit F2). Citations in this opinion to page and line numbers of
Siemens refer to the English translation.

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the Examiner to claims 31–48 of the ’404 patent that are at issue in this
appeal. See Ans. 3–39. All of the grounds are based on 35 U.S.C. 103(a).
Those grounds are summarized in the table below.
References Claims
Reiter, Siemens, and Shennib 31, 32, 34, 35, and 39–41
Reiter, Fretz, and Shennib 31, 32, 34, 35, and 39–41
Reiter, Fretz, and Shennib 46–48
Nonomura, Siemens, and Shennib 31, 32, 34, 35, and 39–41
Nonomura and Fretz 31, 32, 34, 35, and 39–41
Nonomura and Fretz 46–48
Leysieffer, Reiter, Anderson, and
Fretz
31–35, 37–39, and 45
Leysieffer, Reiter, Anderson, Fretz,
and Hueber
36
Leysieffer, Reiter, Anderson, Fretz,
and Martin
39–42
Leysieffer, Reiter, Anderson, Fretz,
and Danavox
43 and 44
Leysieffer, Reiter, Anderson, and
Fretz
46–48
Siemens, Fretz, Nonomura, and
Anderson
31–35, 37–39, and 45
Siemens, Fretz, Nonomura,
Anderson, and Hueber
36
Siemens, Fretz, Nonomura,
Anderson, and Martin
39–42
Siemens, Fretz, Nonomura,
Anderson, and Danavox
43 and 44
Siemens, Fretz, Nonomura, and
Anderson
46–48
Nonomura, Fretz, and Anderson 31–35, 37–39, and 45
Nonomura, Fretz, Anderson, and
Hueber
36
Nonomura, Fretz, Anderson, and
Martin
39–42
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Nonomura, Fretz, Anderson, and
Danavox
43 and 44
Nonomura, Fretz, and Anderson 46–48
Nonomura, Fretz, and Shennib 31–35, 37–39, and 45
Nonomura, Fretz, Shennib, and
Hueber
36
Nonomura, Fretz, Shennib, and
Martin
39–42
Nonomura, Fretz, Shennib, and
Danavox
43 and 44
Nonomura, Fretz, and Shennib 46–48
Dar, Fretz ’608, Leysieffer, and
Shennib ’902
31–35, 37–39, and 45
Dar, Fretz ’608, Leysieffer, Shennib
’902, and Hueber
36
Dar, Fretz ’608, Leysieffer, Shennib
’902, and Martin
39–42
Dar, Fretz ’608, Leysieffer, Shennib
’902, and Danavox
43 and 44
Dar, Fretz, Leysieffer, and Shennib 46–48

II. ANALYSIS
A. Claim Construction
“During reexamination, as with original examination, the PTO must
give claims their broadest reasonable construction consistent with the
specification.” In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir.
2010) (citations omitted). Consistent with the broadest reasonable
construction, claim terms are presumed to have their ordinary and customary
meaning as understood by a person of ordinary skill in the art in the context
of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007). Here, we have given all claims their ordinary and
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customary meaning as would be understood by a skilled artisan in light of
the ’404’s patent. We do not discern that it is necessary to make explicit that
meaning for any claim term.
B. The Prior Art Grounds of Rejection
As noted above, the Examiner rejects claims 31–48 many times over
on the basis of various items of prior art. All of those grounds of rejection
are predicated on obviousness under 35 U.S.C. § 103(a). A claim is
unpatentable under that section if the differences between the claimed
subject matter and the prior art are such that the subject matter, as a whole,
would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations,
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of skill in
the art;6 and (4) when in evidence, objective indicia of non-obviousness (i.e.,
secondary considerations).7 Graham v. John Deere Co. of Kansas City, 383
U.S. 1, 17–18 (1966). We analyze the asserted grounds of rejection with the
principles identified above in mind.

6 None of the Examiner, Hear Wear, or its declarant Dr. Wayne Staab (see
Declaration dated May 19, 2016 and entered into this proceeding on
December 12, 2016) (“Staab Dec.”) offers any express assessment of the
level of ordinary skill in the art. We, however, note that the prior art itself
reflects an appropriate level of a person of ordinary skill in the art. See
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
7 No evidence of secondary considerations of non-obviousness has been
offered into the record before us.
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Here, the applied grounds of rejection are generally divisible into five
categories. In that respect, we categorize the grounds as those based
primarily on: (1) Reiter; (2) Nonomura; (3) Leysieffer; (4) Siemens; and (5)
Dar. We consider the grounds based on those categorical groupings.
1. Grounds Based on Reiter
The Examiner adopts grounds of rejection to claims 31, 32, 34, 35,
and 39–41 based on Reiter, Siemens or Fretz, and Shennib. Ans. 3–11. The
Examiner also adopts grounds of rejection for claims 46–48 based on Reiter,
Fretz, and Shennib. Id. at 12–13.
a. Overview of Reiter
Reiter is titled “Hybrid Behind-The-Ear and Completely-In-Canal
Hearing Aid.” Reiter, [54]. Reiter’s Figure 1 is reproduced below.

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Figure 1 illustrates a hearing aid according to an embodiment of the
invention of Reiter. As shown in the figure, the hearing aid includes BTE
component 10, containing microphone 12, amplifier circuitry 14 and battery
compartment 16. Reiter 2:11–14. The hearing aid also includes CIC
component 18 with receiver 20. Id. at 2:15–20. BTD component 10 and
CIC component 18 are connected by wire cable 22. Id. Retrieval line 24 is
attached to the CIC component. Id. at 20–23
b. Overview of Siemens
Siemens is titled “Hearing aid wearable behind the ear.” Siemens,
Title. Siemen’s Figure is reproduced below.

The Figure above shows a hearing aid according to the invention of
Siemens. Siemens, p. 3. Hearing aid 1 includes “fitted earpiece 2 intended
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to be worn in the ear,[:] “housing piece 3 intended to be worn behind the
ear,” and “curved supporting piece 4 which connects these pieces.” Id. at p.
3. More particularly, Siemens explains the following:
In the inventive hearing aid 1, the fitted earpiece 2,
curved supporting piece 4, and housing piece 3 can all
individually be replaced when necessary, wherewith a given
fitted earpiece or housing piece can be provided with different
or additional components as may be necessary or desirable; e.g.
the length of the curved supporting piece 4 may be varied.
Siemens, p. 4.
c. Overview of Fretz
Fretz is titled “Behind the Ear Hearing Aid System.” Fretz, [54].
Fretz’s Figure 1 is reproduced below.

Figure 1 above depcits a perspective view of a behind the ear hearing
aid system accoprding to Fretz’s Figure 1. Fretz, p. 5. The hearing aid
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system includes hearing aid case 10, eartip 12 and tube 12 “for conducting
sound from the case to the ear canal of [a] user.” Id. at 7. Fretz discloses the
following in connection with the invention:
According to an additional aspect of the present
invention, a kit of parts for assembling hearing aids includes a
plurality of tubes, a plurality of eartips for connection to the ear
canal end of the tubes and configured to fit within the ear canal
while allowing sound to pass through the ear canal around the
eartip, and a plurality of behind the ear hearing aid cases
including different sound processing components for
connection to the tubes. The plurality of tubes each have a
preformed shape including a hook for extending from the
hearing aid case over a top of an ear of a user, a run extending
from the top of the ear to the ear canal, and an ear canal end
extending into the ear canal of the user. The plurality of tubes
differ in a length of the run or a length of the ear canal end.
According to a further aspect of the present invention, a
kit of parts for a behind the ear hearing aid includes a hearing
aid housing containing amplification components, an eartip
configured to fit within an ear canal of a user while allowing
sound to pass through the ear canal around the eartip, a hearing
aid tube having a fist end configured to be connected to the
hearing aid housing and a second end configured to be inserted
into the eartip, and an inserting tool for inserting the second end
of the hearing aide tube into the ear canal eartip.
Fretz, p. 4, ll. 13–29.
d. Overview of Shennib
Shennib is titled “Acoustic Coupler.” Shennib, [54]. Shennib
describes the acoustic coupler as being “detachably secured to a receiver
assembly for deep insertion into an individual’s ear canal.” Id. at Abstract.
Shennib’s Figure 3 is reproduced below.
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Shennib describes Figure 3 above as “a sectioned view of the earpiece
showing a receiver assembly and an acoustic coupler.” Id. at p. 6, ll. 35–36.
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). Id. at 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.
Shennib, p. 8, ll. 10-19. Thus, receiver assembly 48 includes receiver
41 for emitting sound, i.e., a speaker (e.g., see id. at p. 1, l. 13), and is
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detachably physically interconnected with acoustic coupler 50, which is
received in an ear canal. Shennib also discloses that its Figure 20 illustrates
handle 38 that “facilitates insertion and removal of the hearing device.” Id.
at p. 8, ll. 3–5.
Shennib’s Figure 20 is reproduced below:

Figure 20 above depicts as “a coronal view of the ear canal with an
earpiece for connection to an external audio device.” Shennib, p. 7, ll. 22-23.
e. Discussion—Grounds Based on Reiter, Fretz, and Shennib
i. Claim 31
Independent claim 31 is directed 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.” Hear-
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Wear is of the view that the required “tailoring” is generally facilitated
through steps of providing each of a plurality of behind-the-ear components
and a plurality of connectors. See, e.g., App. Br. 31. Indeed, those steps
emerge as central issues in connection with the grounds of unpatentability
based on Reiter applied to claims 31, 32, 34, 35, 39–41, and 46–48.
Specifically, the noted steps of claim 31 read:
providing a plurality of behind-the-ear components from
which a behind-the-ear component operable to facilitate the
user's intended use for the earpiece auditory device may be
selected, wherein each of said behind-the-ear components
comprises a module including processing circuitry in
communication with a microphone port located outside the ear
canal of the user; and
providing a plurality of connectors from which a
connector of sufficient length may be selected to physically
couple a selected behind-the-ear components when said
selected behind-the-ear component is placed behind the ear of
the users to a completely-in-canal component when said
completely-in-canal component is placed inside the ear canal of
the user, the completely-in-canal component including a
speaker electrically connected to the processing circuitry and
wherein said connector of sufficient length is shaped to place a
portion of said connector within the ear canal of the user when
said completely-in-canal component is placed in the ear canal
of the user, and wherein said connector of sufficient length
includes at least one end operable to detachably physically
couple to said selected behind-the-ear component or said
completely-in-canal component, and said connector of
sufficient length is sufficiently rigid so as to allow said
connector of sufficient length to be used to insert and remove
the completely-in-canal component from the ear canal of the
user.
App. Br. Claims App’x 1.
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According to Hear-Wear, Reiter does not contemplate any act of
providing a plurality of behind-the-ear components or connectors, and that
no combination of prior art with Reiter (e.g., Fretz, Siemens, or Shennib)
accounts for such features. See, e.g., App. Br. 51–55. Hear-Wear discounts
Fretz’s teachings when it comes to hearing aid assembly, urging that
“[a]lthough Fretz discloses a device with some modularity, it does not
disclose separate electronic components for assembly with each other that
could achieve the tailoring of an earpiece auditory device to a user as recited
in claim 31.” Id.
We focus first on Hear-Wear’s challenges to the grounds in
connection with the teachings of Fretz. In our view, Hear-Wear’s position
seemingly does not consider properly the teachings of that reference. As
discussed above, Fretz explicitly describes, as a part of its disclosed hearing
aid assembly, the following:
a kit of parts for assembling hearing aids includes a plurality of
tubes, a plurality of eartips for connection to the ear canal end
of the tubes and configured to fit within the ear canal while
allowing sound to pass through the ear canal around the eartip,
and a plurality of behind the ear hearing aid cases including
different sound processing components for connection to the
tubes.
Fretz, p. 4, ll. 13–18.
That teaching is clear, and unambiguously contemplates a hearing aid
“kit” in which a user may select various components from that kit in
assembling a hearing aid. Those components include “a plurality of tubes,”
“a plurality of eartips for connection to the ear canal end of the tubes,” and
“a plurality of behind the ear hearing aid cases including different sound
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processing components for connection to the tubes.” Fretz also explicitly
envisions that “[t]he plurality of tubes differ in a length of the run or a length
of the ear canal end.” Id. at p. 4, ll. 21–22.
The above-noted teachings are unmistakable in setting forth that a
multitude of hearing aid components, including a plurality of behind-the-ear
components of variable length, may be selected by a user. In that respect,
the selection by a user of such components as desired in forming a hearing
aid assembly is recognizable reasonably as assembling the hearing-aid so as
to form an earpiece auditory device tailored to a user as recited in claim 31.
Hear-Wear’s assertions to the contrary simply disregard the plain teachings
of the references at hand. For example, Hear-Wear’s characterization of
Fretz as simply possessing “some modularity” is not, in our view, one that
accurately captures what one of ordinary skill in the art would have taken
from Fretz’s above-noted teachings of a hearing aid “kit.”
The Examiner offers the following reasoning for combining the
teachings of Fretz with those of Reiter:
It would have been obvious to modify Reiter to provide
its hearing aid as a kit of parts including a plurality of BET
components, as taught by Fretz, so that a particular behind the
ear hearing aid case with the appropriate sound processing
component can be chosen on the basis of the patient’s type of
hearing loss. Further, such modification would have involved
nothing more than the predictable use of prior art elements
according to their established functions.
Ans. 9 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)).
The Examiner’s reasoning for combining the teachings of Reiter and
Fretz is rational and follows readily from the teachings of the references.
Fretz makes clear that it was known in the art that users of hearing aids have
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varying degrees of hearing impairments. Fretz, 1. To that end, Fretz
contemplates a kit containing a plurality of behind-the-ear hearing cases that
include different sound processing components. Id. at 4
Hear-Wear’s challenges to the Examiner’s rationale for combining the
teachings of Reiter and Fretz are not persuasive. In particular, we do not
agree with Appellant that the combination of Fretz and Reiter is precluded
because “Fretz does not teach separable electronic components.” As
discussed above, that clearly is not the case, as Fretz discloses components
offered in the form of a “kit” to be assembled i.e., components readily
understood as separable. We also find unpersuasive Hear-Wear’s view that
Reiter’s disclosure is limited to that of a “custom fit device” that somehow
acts a barrier when it comes to combining the teachings of Reiter and Fretz.
App. Br. 55 (citing arguments made at pages 32–36 of the Appeal Brief).
Even if Reiter’s hearing aid is something viewed as “custom,” Appellant
does explain cogently why such circumstance prohibits combination of the
teachings of Reiter and Fretz.
Furthermore, Fretz, itself, describes its kit of components as providing
a benefit over “custom” components of a hearing aid. Fretz at 3–4. In that
respect, Fretz explains that a “custom made ear mold adds to the cost of the
device and the time needed to fit the hearing aid.” Id. at 2. Fretz also
expresses that a benefit of its invention is to facilitate holding a “hearing aid
in place comfortably and securely without the need for a customized ear
mold or an ear hook.” Fretz, p. 3. Thus, Fretz conveys that its inventive kit
of hearing components is beneficial over customized hearing aids. Where a
technique has been used to improve one device, and a person of ordinary
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skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill. KSR Int’l Co., 550 U.S. at 417. Here, there is no
credible suggestion that it is beyond the skill of a person of ordinary skill in
the art to apply Fretz’s teachings to Reiter’s hearing aid device. In that
respect, there is no cogent explanation as to why a person of ordinary skill in
the art, who is also a person of ordinary creativity, id. at 421, would have
been unable to harness the benefits of Fretz’s hearing aid kit teachings in
connection with other types of hearing aids that may employ some
customized components, such as that of Reiter.
With respect to Shennib’s teachings, the Examiner explained the
following:
To the extent that Reiter may not teach [“]wherein said
connector of sufficient length is shaped to place a portion of
said connector within the ear canal of the user when said
completely-in-canal component is placed in the ear canal of the
user, and said connector of sufficient length is sufficiently rigid
so as to allow said connector of sufficient length to be used to
insert and remove the completely-in-canal component from the
ear canal of the user,[”] Shennib discloses a hearing device
having an earpiece 40 with a receiver assembly 48 positioned in
the user's ear canal and an acoustic coupler 50.
When in use, the acoustic coupler 50 contains a receiver
41, and is inserted in the ear canal of the user (see Fig. 20).
Thus, the acoustic coupler 50 is a CIC component. The receiver
assembly 48 connects the acoustic coupler 50 (CIC component)
to an audio source external to the ear canal. (Shennib, page 8,
lines 1–3). Thus, the receiver assembly 48 is a connector that is
capable of connecting the CIC component to a BTE component.
Further, as shown in Fig. 20, Shennib's connector includes a
“handle” 38 that “facilitates insertion and removal of the
hearing device.” (Shennib, page 8, lines 3–4). Further the
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connector is shaped to place a portion of said connector within
the ear canal of the user when said completely-in-canal
component is placed in the ear canal of the user (FIG 20).
This handle clearly has sufficient rigidity characteristics
for inserting/removing the acoustic coupler 50 (CIC
component) into/from the user's ear canal.
It would have been obvious to replace the connector in
Reiter with Shennib's connector. One of ordinary skill in the art
would have found the modification advantageous since it would
allow the fitted earpiece to be easily replaced via a detachable
physical coupling, while maintaining a secure attachment of the
earpiece and connector during insertion and removal from the
ear canal. (Shennib, page 5, lines 32–37; page 6, lines 23–26;
page 9, lines 9–16). Such modification would have involved
nothing more than the predictable use of prior art elements
according to their established functions.
Ans. 9–11 (citing (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007))
(emphasis omitted). The Examiner’s assessment, reproduced above, and
application of Shennib’s teachings is, in our view, reasonable and an
accurate evaluation of what one of ordinary skill in the art would have taken
from that reference. Hear-Wear’s challenge in connection with Shennib as
applied to claim 31 generally is summarized as follows:
Claim 31 recites, “said connector of sufficient length
includes at least one end operable to detachably physically
couple to said selected behind-the-ear component or said
completely-in-canal component . . . . ” Claim 31 also recites,
“the completely-in-canal component including a speaker . . ,”
The Examiner concedes Reiter fails to teach the limitation
regarding detachability, Final Office Action, page 9.
Consequently, the Examiner relies on Shennib’s detachable
connection between its acoustic coupler 50 (i.e., ear mold) and
receiver assembly 48 (i.e., speaker housing) for teaching this
limitation. Id. But in Shennib, acoustic coupler 50 is not a
completely-in-canal component that includes a speaker. Instead,
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acoustic coupler 50 is an earmold. In pointing to the detachable
connection between Shennib’s connector and its acoustic
coupler, the Examiner has not shown separation of a speaker
from processing components of an earpiece device as claim 31
does. Stated differently, the ability to change out a cushion on
an ear tip clearly does not teach detachably connecting a
speaker in a completely-in-canal component from the
processing circuitry of a behind-the-ear component.
Accordingly, the rejection has not established prima facie
obviousness of the claim.
App. Br. 36–37.
Thus, Hear-Wear urges that claim 31 requires a “detachable
connection” between a completely-in-canal component and a speaker, and
that such a requirement distinguishes claim 31 over Shennib.
At the outset, we note that claim 31 sets forth that a connector
providing a “detachably physically coupl[ing]” may be connected to either a
completely-in-canal component or the behind-the-ear component (“said
connector of sufficient length includes at least one end operable to
detachably physically couple to said selected behind-the-ear component or
said completely-in-canal component”) (emphasis added). Thus, contrary to
Hear-Wear’s assertion, claim 31 does not require that the detachable
coupling must be between a speaker and a completely-in-canal component.
The prior art of record is replete with detachable connections between a
connector and a behind-the-ear component. Siemens, for example, shows
curved supporting piece 4 (i.e. a connector) that is detachably coupled to
housing piece 3 (i.e. a behind-the-ear component). See Siemens, Fig. 1.
In any event, even assuming that claim 31 does require a detachable
coupling between a completely-in-canal component and a speaker, we do not
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conclude that such a configuration distinguishes claim 31 over the prior art,
including Shennib. As is evident from Shennib’s Figure 20, when receiver
assembly 48 is received in acoustic coupler 50, each of those components
resides within the ear canal of user. Thus, each of receiver assembly 48 and
acoustic coupler 50 is recognizable as a completely-in-canal component.
Indeed, Shennib characterizes those components together as “earpiece 40.”
Thus, receiver assembly 48 with receiver 41 (i.e., a speaker)8 may be
detachably coupled to the completely-in-canal component that is acoustic
coupler 50.
Moreover, we observe that Shennib teaches the following:
The earpiece 40 may be part of a canal hearing device 10, as
shown in Figure 19, or part of an audio system external to the
ear canal but coupled, either electrically via a signal cable 39 or
by other means, to the earpiece, as shown in Figure 20. A
handle 38 (Figure 20) facilitates insertion and removal of the
hearing device, as well as providing strain relief for wires 37
within the signal cable 39. Other means for coupling audio
signals into the earpiece may include, for example, a wireless
link such as a radio frequency (RF) or infrared link (IR).

Shennib, p. 7, l. 37–p. 8, l. 6. Thus, Shennib envisions multiple techniques
for “coupling audio signals” into an earpiece. It is evident from the prior art
of record, that one with ordinary skill in the art would have known that there
are multiple approaches to implementing audio components in a hearing aid
device. Indeed, it is clear from the record that it was known in the art that

8 There is no argument on the record that Shennib’s receiver 41 is not
understood as constituting a speaker. See also App. Br. 14 (equating a
component regarded as a “speaker” to a component regarded as a
“receiver.”)
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audio components may be placed in components that are either external or
internal to a user’s ear. For instance, Shennib’s teachings above clearly
convey that an audio system may reside external to an ear canal.
Alternatively, Reiter conveys that a speaker (e.g., receiver 20) may be placed
into completely-in-canal component 18. See Reiter, 2:15–20. Similarly,
Siemens sets forth that microphone 5 and earphone transducer 6 are placed
within fitted earpiece 2. See Siemens, p. 3, ll. 6–8. Thus, a skilled artisan
would have recognized a variety of options for locating a speaker in a
hearing aid device, including within a completely-in-canal component.
There is also no viable assertion on the record that those options would have
been beyond the skill of a person of ordinary skill in the art.
So, too, does the record establish that one of ordinary skill in the art
would have known that there are a variety of possible attachment
mechanisms for electrical components of a hearing aid device that would be
regarded as “detachable connections.” One such mechanism is the
attachment configuration of Shennib’s receiver assembly 48 and acoustic
coupler 50. Another such mechanism is the “jack plugs” (12, 12’) in
Siemens that provide “electrical coupling which is reversible.” Siemens, p.
3, ll. 14–18.
Taking into account what a person of ordinary skill in the art would
have understood from the teachings of the prior art, we conclude the above-
discussed recitations in claim 31 pertaining to a “detachabl[e]” coupling and
a speaker contained in a completely-in-canal component does not patentably
distinguish the claim from the prior art, including Shennib. Accordingly, we
have carefully considered the record at hand, including the arguments
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advanced by Hear-Wear in its Appeal Brief. We conclude that the record
supports the Examiner’s determination to reject claim 31 as unpatentable
based on Reiter, Fretz, and Shennib.
ii. Claims 32, 35, and 47
Claim 32 depends from claim 31, claim 35 depends from claim 32,
and claim 47 depends from claim 31. The Examiner explains how the
features added by claims 32 and 35 are accounted for by the teachings of
Reiter, Fretz, and Shennib. See Ans. 11–12. Appellant does not separately
challenge the Examiner’s rejection of claims 32, 35, and 47 based on those
references. Rather, Appellant contends that those claims are non-obvious
based on their dependency from claim 31. App. Br. 55. For the reasons
given above, we are not persuaded that claim 31 is patentable over Reiter,
Fretz, and Shennib, and we are also not persuaded in that respect as to
claims 32, 35, and 47.
iii. Claim 34
Claim 34 depends from claim 32. Claim 34 adds the limitation “said
plurality of said behind-the-ear components includes at least two behind-the-
ear components of different dimensions.” App. Br., Claims App’x, 2. In
accounting for that added feature, the Examiner pointed to content of Fretz.
Ans. 11, 58 (citing Fretz, p. 10, ll. 3–15; p. 4). Appellant generally disagrees
that the Examiner has accounted adequately for claim 34. App. Br. 56.
Fretz discloses that its hearing-aid kit includes a plurality of tubes, a
plurality of eartips, and “a plurality of behind the ear hearing aid cases
including different sound processing components for connection to the
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tubes.” Fretz, 4. Fretz, thus, manifestly contemplates providing at least two
behind-the-ear cases as a part of its kit. Fretz also makes clear that such
cases are understood to contain different sound processing components.
Fretz also explains that BTE devices are known to vary in size and
weight. Id. at 10. Fretz further provides one specific exemplary
dimensioning of a hearing aid case according to its invention. Id. (“[o]ne
example of a hearing aid case 10 according to the present invention has
dimensions of approximately 2.16 cm x 0.81 cm x 0.61 cm.”) A skilled
artisan would reasonably infer from those teachings that Fretz conveys its kit
may contain behind-the-ear hearing aid cases of different dimensions. To
that end, we agree with the Examiner that “[o]ne of ordinary skill in the art
would have understood that the combination of references would have thus
contemplated different-sized housings as options for manufacture of hearing
aids.” Ans. 58.
Accordingly, we conclude that the Examiner has set forth a sound
basis for rejecting claim 34 as unpatentable over Reiter, Fretz, and Shennib.
We sustain the Examiner’s decision to so reject that claim.
iv. Claims 39–41
Claims 39–41 are reproduced below:
39. The method of claim 32 wherein said method
further comprises:
providing a plurality of ear molds which connect to said
completely-in-canal components from which said ear mold may
be selected.
40. The method of claim 32 wherein said method
further comprises:
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providing a plurality of at least one element to be
included in said completely-in-canal component, from which at
least one of the elements to be included in said completely-in-
canal component may be selected.
41. The method of claim 40 wherein said plurality of
at least one element includes at least two ear molds of differing
dimensions at least one of which fits the user’s ear structure.
App. Br., Claims App’x, 2.
The Examiner relied on Fretz in accounting for claims 39–41. Ans.
11 (citing Fretz, pp. 13–15). Hear-Wear disputes that Fretz’s teachings
satisfy the requirements of the above-noted claims. App. Br. 56–57. Hear-
Wear also reiterates argument, which we found unpersuasive above, that
Reiter’s “custom mold” precludes combination with a plurality of molds. Id.
Fretz’s teachings are clear when it comes to providing a plurality of
hearing aid components, such as ear molds. In that respect, Fretz is
unequivocal in its teaching of providing multiple “eartips” as a part of kit to
provide for selection of a desired eartip for a given user. See, e.g., Fretz, p.
4. Thus, Fretz clearly contemplates the acts called for in claims 39 and 40 in
connection with providing a “plurality” of ear-molds or other “element” that
is received in a completely-in-canal component.
Claim 41 adds an additional aspect in requiring that the “element”
include “at least two ear molds of differing dimensions at least one of which
fits the user’s ear structure.” Fretz, however, also teaches that the eartips
included in its hearing aid kit “may be one of several different designs which
secures an end of the tube in place in the ear canal in a comfortable manner
without the need for an expensive custom made ear mold and without
complete occlusion of the ear canal.” Fretz, Abstract. That Fretz
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contemplates “several different designs” for its eartips reasonably and
readily implies that the eartips included in the kit are of different dimensions
as called for in claim 41. Fretz also verifies that at least one of the eartips, if
not all, are “configured to fit within the ear canal” of a user. Id. at p. 3.
Consequently, we have considered the record before us, including the
arguments advanced by Appellant, but, we conclude that the Examiner was
correct in rejecting claims 39–41 based on the teachings of Reiter, Fretz, and
Shennib. We affirm the Examiner’s rejection in that respect.
v. Claim 46
Claim 46 reads as follows:
46. The method of claim 31 further comprising:
providing a plurality of completely-in-canal components,
wherein each of the completely-in-canal components comprises
a speaker, wherein two or more of the speakers have different
performance characteristics;
wherein each of the behind-the-ear-components
comprises a microphone and wherein two or more of the
behind-the-ear components have different sound processing
circuitry;
wherein two or more of the connectors have different
lengths; and
wherein a detachable coupling at the at least one end is of
sufficient strength such that the earpiece auditory device may
be removed from an ear of the user by pulling on the connector
of sufficient length.
App. Br., Claims App’x, 3.
The Examiner offers, in-part, the following in rejecting claim 46
based on Reiter, Shennib, and Fretz:
[A]s to claim 46, while Fretz does not expressly disclose
speakers with different performance characteristics, Fretz does
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disclose matching sound processing circuitry to a user's needs
(Fretz at 10–11 “[a]ccording to the present invention, multiple
hearing aid cases may be provided with processors having
different frequency responses for use by users having different
hearing loss”) and as such one of ordinary skill in the art at the
time of the invention would have known that a speaker's
frequency response is a very important part of an audio system's
overall match to a user's experience and would have considered
including such to be a routine engineering decision. Thus it
would have been obvious to include speaker response as
another variable in order to provide the user-matched frequency
response as required by Fretz. MPEP 2143(1)(C).
Ans. 13.
Thus, the Examiner is of the view that Fretz’s disclosure that
“multiple hearing aid cases may be provide with processors having different
frequency responses for use by users having different hearing loss”
establishes, based on some general theory of obviousness, the requirement in
claim 46 of providing a plurality of completely-in-canal components having
“two or more of the speakers have different performance characteristics.”
Hear-Wear challenges the Examiner’s reliance on Fretz in the above-
noted context. In particular, Appellant argues that Fretz’s teachings
pertaining to processors with different frequency responses does not, itself,
constitute speakers with different performance characteristics and that no
combination of Reiter, Fretz, and Shennib suggests such speakers. App. Br.
20–22.
We observe that claim 46 makes reference to both “different sound
processing circuitry” as a part of a microphone associated with a behind-the-
ear component and also two or more “speakers hav[ing] different
performance characteristics.” It is apparent from the record that Hear-Wear
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draws distinction between those two separate features of claim 46. See, e.g.,
id. at 14.9 Indeed, upon inquiry during oral argument, counsel for Hear-
Wear made note of that distinction. Tr. 28–30.10, 11

9 Specifically, Hear-Wear contends the following:
More particularly, prior to the ’404 patent, nothing in the art
contemplated ‘mixing and matching’ of microphones and
processing circuitries of a plurality of behind-the-ear
components with a plurality of connectors providing electrical
connection to a speaker (‘receiver’) of a completely in-canal
component and thereby provide selectable combinations to
create earpiece auditory devices with different operational
characteristics tailored to a user using non-customized parts.
10 JUDGE COCKS: So just so I’m clear, speakers are not
processing components? Is that a fair statement?
MR. VIGUET: I believe that is correct. If you look at the
declaration from Thompson that was provided by the requester,
he lists out what a processing – what he believes to be
processing circuitry. And it’s the act of processing circuitry,
which I would agree with – it’s things like the filters, the
amplifiers, those kinds of things. He does not include speakers
in that, and we don’t include speaker in that either. The
processing circuitry is the stuff that in some way changes the
wave form and amplifies and that kind of thing. The speakers
is what reproduces the sound, so we consider –
JUDGE COCKS: I mean, so that’s the --- I’m just trying
to get at the distinction that you’re making between what Fretz
discloses concerning processing components that have
difference performance characteristics versus speakers, multiple
speakers, having different performance characteristics. Is that
the distinction that you’re articulating to me, to us, to the panel?
MR. VIGUET: Well, there – so our claims have – you
known, Claim 46 requires both, that there be processing
circuitry with different characteristics and speakers with
difference performance characteristics. So I think if you look at
the claim language itself, it does require the distinction between
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Here, we have conflicting assertions by the Examiner and Hear-Wear
as to whether Fretz’s “processors having different frequency responses”
would have led a skilled artisan to the claimed “speakers having different
performance characteristics.” Notably, neither viewpoint is buttressed by
any adequate factual basis. Yet, we take note that the initial burden is on the
examiner to establish a prima facie basis to reject a claim. See In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 223
(Fed. Cir. 1984). In making such rejection, the examiner must provide a
factual basis to support an obviousness conclusion. See In re Warner, 379
F.2d 1011, 1017 (CCPA 1967) (The examiner may not resort to speculation,
assumptions, or hindsight reconstruction).
We also discern that the Examiner offers no adequate evidentiary
position that underscores the proposition that “processors having different
frequency responses” is a variable that would give rise to selection by a
skilled artisan of speakers having different performance requirements. In
that regard, the only purported support offered for that proposition is said to

the two, so that has always been our position. That’s consistent
with Thompson’s declaration. And I think it’s consistent with
the rejection because the examiner says, well, it teaches – Fretz
teaches processing circuitry that has a difference frequency
response, so it would have been obvious to also have speakers
that have a different frequency response. So the examiner
seems to be of the same opinions as well. So I understood that
there was a – at least on that point, that the speakers were not
being considered processing circuitry.

11 The reference to “Thompson” are to the Declaration of Dr. Stephen C.
Thompson filed July 20, 2015.
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reside at “MPEP 2143(1)(C).”12 That section of the M.P.E.P is titled “Use
of Known Technique to Improve Similar Devices (methods, or products) in
the Same Way.” That section Title is, evidently, a general reference to
statements in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.”) Left wanting from that M.P.E.P citation, and the
general KSR reference, is a satisfactory basis for concluding that the prior art
discloses or suggests the claimed plurality of completely-in-canal
components with speakers of different performance characteristics. There is
simply not enough evidentiary support relied upon by the Examiner to make
such a determination. The lack of adequate evidentiary support for such a
core factual finding is fatal to the obviousness position advanced by the
Examiner as to claim 46. See K/S HIMPP v. Hear-Wear Techs., LLC, 751
F.3d 1362, 1365 (Fed. Cir. 2014) (holding that “core factual findings” must
be supported by “concrete evidence in the record.”).
Accordingly, we do not sustain the Examiner’s determination that
claim 46 is rendered obvious based on the Examiner’s reliance upon Reiter,
Shennib, and Fretz. We discern that every other rejection to claim 46
proposed by the Examiner rests on the same reliance on Fretz as discussed
above. Therefore, we also do not sustain the Examiner’s determination to
reject claim 46 based on any grounds that are the subject of this appeal.

12 “MPEP” or “M.P.E.P” refers to the Manual of Patent Examination
Procedure.
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vi. Claim 48
Claim 48 is reproduced below:
48. The method of claim 31 further comprising:
selecting one of the plurality of behind-the-ear
components;
selecting one of the plurality of connectors; and
assembling the selected behind-the-ear component, the
selected connector, and the completely-in-canal component to
create the earpiece auditory device tailored to the user.
App. Br., Claims App’x, 3.
In accounting for those features of claim 48, the Examiner points to
Fretz’s teachings directed to its kit of parts, which includes a plurality of
behind-the-ear hearing aid cases with different sound processing
components, a plurality of eartips, and a plurality of connecting tubes. Ans.
12–13 (citing Fretz, p. 4). According to Hear-Wear, the Examiner’s
rejection of claim 48, here, must be regarded as being based solely on
Fretz’s teachings. App. Br. 57. To that end, Appellant urges that Fretz’s
eartip is not the completely-in-canal component required by claim 48
because it allegedly lacks a speaker.
We are not persuaded that claim 48 is patentably distinguished from
prior art. The Examiner rejected claim 48 based on the combined teachings
of Reiter, Fretz, and Shennib. As we observed above, the record readily
conveys that it was known in the art that audio components may be placed in
components that are either external or internal to a user’s ear. As we
previously noted above, Shennib’s teachings clearly convey that an audio
system may reside external to an ear canal. See, e.g., Shennib, p. 7, l. 37–p.
8, l. 6. Alternatively, Reiter conveys that a speaker (e.g., receiver 20) may
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be placed into completely-in-canal component 18. See Reiter, 2:15–20.
Similarly, Siemens sets forth that microphone 5 and earphone transducer 6
are placed within fitted earpiece 2. See Siemens, p. 3, ll. 6–8. We also
conclude that one of ordinary skill in the art reasonably would have had the
requisite still to implement the teachings of the prior art so as to place a
speaker within a completely-in-canal portion of a hearing aid device.
Consequently, even assuming that claim 48 does require that the
completely-in-canal component include a speaker, that circumstance does
not differentiate claim 48 over the teachings of the prior art.
vii. Summary— Grounds Based on Reiter, Fretz, and
Shennib
For the foregoing reasons, we conclude that the record sufficiently
supports the Examiner’s determination to reject claims 31, 32, 34, 35, 39–
41, 47, and 48 based on the combined teachings of Reiter, Fretz, and
Shennib. We affirm the corresponding grounds of rejection. We, however,
conclude that the record does not so support the Examiner’s determination to
reject claim 46 based on those references. We do not affirm the rejection of
claim 46 based on Reiter, Fretz, and Shennib.13
f. Discussion—Grounds Based on Reiter, Siemens, and Shennib
The Examiner also proposed a ground of rejection to claims 31, 32,
34, 35, and 39–41 based on Reiter, Siemens and Shennib. In effect, that
ground substitutes the teachings of Siemens for those of Fretz. In that

13 As noted above, we do not affirm any of the proposed grounds of rejection
applied to claim 46 because they are all based on an inadequate evidentiary
basis stemming from the misapplication of the teachings of Fretz.
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respect, the Examiner is of the view that Siemens teachings also account for
the requirements of independent claim 31 pertaining to the acts of providing
a plurality of behind-the-ear components and variable length connectors that
are “selected” in the process of assembling a an earpiece auditory device that
is tailored to a user. The Examiner points to content of Siemens describing
that “the fitted earpiece 2, curved supporting piece 4, and housing piece 3
can all be individually replaced when necessary, wherewith a given fitted
earpiece or housing piece can be provided with different or additional
components.” Ans. 4 (quoting Siemens, p. 4). The Examiner also notes
Siemens disclosure of permitting “appropriate choice of length of the
flexible connecting element, in the course of the fitting of the hearing aid.”
Id. (quoting Siemens, p. 2). The Examiner takes the position that those
disclosures in Siemens satisfy the above-noted features of claim 31. We
take note that the basis of the Examiner’s position seemingly rests on the
premise that the initial act by the manufacturer of providing hearing aid
components that are assembled into a hearing aid device followed by any
subsequent replacement of any components by the manufacturer is
encompassed by claim 31. See id. at 52.
Hear-Wear disagrees with the Examiner. In that respect, Hear-Wear
contends that “Siemens does not disclose providing a plurality of behind-
the-ear components for selection to facilitate the user’s intended use and
thereby does not disclose providing the ability to a user, for example, to
tailor an earpiece device to the user as provided by claim 31.” App. Br. 44.
Hear-Wear also summarizes its basis of disagreement as follows:
Siemens fails to teach or suggest providing a plurality of
earpiece auditory device components, including a plurality of
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behind-the-ear components, for assembly to form an earpiece
auditory device tailored to a user as recited in claim 31.
Assembling components to form (create) the earpiece auditory
device tailored to a user is different from making changes to
that earpiece auditory device after it is formed and tailored to
the user. For example, the replacement of housing piece 3
“when necessary” in Siemens, actually occurs after the hearing
aid has been in existence and a user finds that the hearing aid
needs to be repaired or provided with new components. In
contrast, claim 31 requires providing a plurality of earpiece
auditory device components, including a plurality of behind-
the-ear components upfront for a manufacturer, dispenser,
distributor, or user to select from, assemble, and “form” the
earpiece auditory device tailored to the user. Moreover, in the
initial assembling of the Siemens device, there would not be a
plurality of for example, behind-the-ear components from
which a selection is made to form a device tailored to a user. On
a production line, the next in line of a component is used to
assemble a particular device. This is not a selection. And with
respect to a custom device, the very nature that such a device is
customized is evidence that its components are not selected
from a plurality of components to form the device.
Id. at 46.
In effect, Hear-Wear’s argument is that the initial assembly of a
hearing aid device followed by the temporally subsequent replacement of
individual components of that device does not amount to the requirements of
claim 31 pertaining to providing pluralities of hearing aid components, such
as behind-the-ear components, in the pursuit of forming a hearing
aid/earpiece auditory device that is tailored to the user.
We are cognizant of a prior Board Decision referenced by both the
Examiner and Hear-Wear that was issued in connection with Reexamination
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Control No. 95/001,388. See App. Br. 45; Ans. 53.14 In that Decision, the
panel evaluated the teachings of Siemens in connection with claim 1
appearing in U.S. Patent No. 7,606,382 B2(“’382 Patent”) which shares
similar pertinent features as those relevant to claim 31 of the ’404 patent at
issue here. In the ’2112 Appeal, the panel determined the following:
[W]e agree with HIMPP and the Examiner that a skilled artisan
would have appreciated reasonably that Siemens’s disclosure
that the various components of its housing piece 3 worn behind
a user’s ear may be individually replaced as needed reflects a
selection, at a minimum, between at least two such housing
pieces. The claim does not requires, as Hear-Wear suggests,
that the selection occur between two new housing pieces
instead of a selection between the old housing piece and a
proposed new housing piece. Giving the claim its broadest
reasonable interpretation, therefore, a user can select to retain
either the old housing piece or the proposed new housing piece.
We conclude, therefore, that the corresponding limitation in
claim 1 of “a plurality of behind-the-ear components from
which a behind-the-ear component may be selected” is
disclosed in the prior art.”
’2112 Appeal 13–14.15
Hear-Wear contends that the situation here in connection with claim
31 is distinguished from the matters raised in connection with claim 1 of the
’382 patent under the pretense that claim 31’s inclusion of “to form an
earpiece auditory device” in the preamble of the claim presents some type of

14 The Decision issued December 9, 2013 as a part of Appeal 2013-002112
(the “’2112 Appeal”).
15 Hear-Wear was also a party in the ’2112 Appeal. Hear-Wear appealed the
Decision in the ’2112 Appeal to the Court of Appeals for the Federal Circuit
(“Federal Circuit”). On January 8, 2015, the Federal Circuit entered
judgment affirming that Decision pursuant to Federal Circuit Rule 36.
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“contrast” between those two particular claims. App. Br. 45, n.4. Hear-
Wear, however, does not offer adequate explanation as to why that particular
recitation in the preamble serves to obviate the specific issue in question.
Hear-Wear appears to suggest that claim 31 of the ’404 patent requires that
the various plurality of components, such as behind-the-ear components,
must be provided initially “to the user.” Notably, however, claim 31 does
not express such a requirement. Although the claim does recite that
providing the plurality of behind-the-ear component is “operable to facilitate
the user's intended use for the earpiece auditory,” there is no cogent
explanation offered that such a recitation equates to providing components
“to the user.” Indeed, we find no persuasive argument in the record that
claim 31 somehow prohibits a manufacturer from being the entity providing
hearing aid components that are “operable to facilitate the user’s intended
use for the earpiece auditory.”
In reviewing the record at hand, and mindful of the similarity of this
particular matter here and that already decided by the Board and affirmed by
the Federal Circuit in connection with the ’2112 Appeal, we conclude that
the Examiner offers the more tenable and credible assessment of what is
encompassed by claim 31, under the rubric of the broadest reasonable
interpretation of the claims. In reaching that conclusion, we are satisfied
that the Examiner has correctly identified where all the features of claim 31
are present in the prior art teachings of Reiter, Siemens, and Shennib. See
Ans. 3–6; 51–55. We also conclude that the Examiner has articulated an
adequate reason why one of ordinary skill in the art would have combined
the teachings of those references. See id. Accordingly, we sustain the
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Examiner’s determination to reject claim 31 based on Reiter, Siemens and
Shennib.
With regard to dependent claims 32, 34, 35, and 39–41, Hear-Wear
generally argues the patentability of those claims based on their dependency
from claim 31, and also offers arguments that echo those submitted in
connection with the Reiter, Fretz, and Shennib, which we found
unpersuasive, as discussed above. See App. Br. 49–50. Correspondingly, on
the record before us, we are also persuaded that the Examiner has
demonstrated that the features of those dependent claims were known from
the teachings of Reiter, Siemens, and Shennib, and that a skilled artisan
would have had adequate reason to so combine them. See Ans. 6–7; 55–56.
We sustain the Examiner’s determination to reject claims 32, 34, 35, and 39–
41 over Reiter, Siemens, and Shennib.
2. Other Grounds
The Examiner proposes numerous other grounds to claims 31–48 of
the ’404 patent. With respect to claim 46, as noted above, we do not affirm
any of the grounds of rejection appearing in this Appeal that are applied to
claim 46 due to deficiencies that permeate all of those grounds arising in
conjunction with the Examiner’s inaccurate assessment of the teachings of
Fretz. With respect to claims 31–45, 47, and 48 we make the following
observations.
i. Claims 31–35, 37–41, 45, 47, and 48
The Examiner bases the additional proposed grounds of rejection on
each of Leysieffer, Nonomura, Siemens, and Dar. Siemens’s disclosure has
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been discussed above. Leysieffer, Nonomura, and Dar are all directed to
hearing aid devices that include behind-the-ear components, in-canal
components, and connecting components therebetween. In our view, the
teachings of Leysieffer, Nonomura, Siemens, and Dar generally are
analogous to those of Reiter. Hear-Wear’s challenges to the grounds based
on those references largely echoes the unpersuasive challenges that it
mounted in conjunction with the grounds based on Reiter. See generally
App. Br. 58–119. For instance, Hear-Wear reiterates arguments throughout
the various grounds that “[n]one of the reference contemplates providing a
plurality of different types of electronic components in a method of tailoring
an earpiece auditory device to a user as recited by claim 31.” See, e.g., id. at
58, 75, 83, 92, 101, 107. For reasons discussed above, we reject that
argument as it, in our view, does not consider properly what a person of
ordinary skill in the art would have taken from the prior art of record. Most
particularly, we again take note of Fretz’s teaching concerning its kit
containing multiple types of various hearing aid components having
difference configurations to accommodate different users. Hear-Wear’s
general discounting of those teachings as somehow not constituting
“tailoring” to a user simply is unfounded and not in accord with what a
skilled artisan plainly would understand from Fretz.
So, too, do other references provide disclosure understood reasonably
as tailoring hearing aid components to a user. Leysieffer, for instance,
presents “such ear fitting piece 25 being matched to the individual anatomic
circumstances of the outer ear 5.” Leysieffer, 9:59–10:32; see CC-9. That
components of a hearing aid device are “matched” to a given individual
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reasonably and readily conveys tailoring of certain components to that
individual. In similar fashion, and as noted above, Siemens discloses a
“fitted earpiece 2, curved supporting piece 4, and housing piece 3 [which]
can all individually be replaced when necessary, wherewith a given fitted
earpiece or housing piece can be provided with different or additional
components.” Siemens, p. 4; see, e.g., Ans. 15 (citing page 4 of Siemens).
Siemens further permits “appropriate choice of length of the flexible
connecting element, in the course of the fitting of the hearing aid.” Siemens,
p. 2; see, e.g., Ans. 15–16. Thus, Siemens contemplates considerable
flexibility in choice of components for a hearing aid device for a particular
user. Hear-Wear does not argue persuasively that such flexibility falls short
of “tailoring” of a hearing aid for a user.
We also discern that, in some cases, the Examiner relies on Shennib
for the teachings in connection with a connector of sufficient length and
sufficient rigidity to permit insertion and removal of a completely-in-canal
component from a user’s ear canal. See, e.g., Ans. 5–6 (citing to Shennib’s
disclosure at page 8, lines 3–4 of “handle” 38 that “facilitates insertion and
removal of the hearing device.)16 In other cases, the Examiner alternatively
relies on different teachings, such as those of Fretz.17 Fretz describes that

16 In the grounds of rejection based on Dar, the Examiner also relies on
Shennib ’902. See, e.g., Ans. 37. It is apparent that Shennib ’902’s
teachings are largely similar to those of Shennib.
17 We observe that in some cases the Examiner’s reliance is captured through
incorporation by reference of aspects of the Request for Ex Parte
Reexamination (“Request” or “Req.”) of the ’404 patent filed on July 20,
2015 that underpins the present appeal. See, e.g., Ans. 25 (“As to claims
31–35, 37–39, and 45, the Examiner incorporates by reference herein the
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tubes as a part of its hearing aid kit “differ in a length of the run or a length
of the ear canal end.” Fretz, p. 4, ll. 21–22. Fretz also sets forth that, in
some embodiments, sleeve 90 is extended over second end 18 of tube 12 to
“stiffening the tube 12 to make installing the eartip 14 and inserting the tube
into the ear canal easier.” Fretz, p. 11, ll. 17–22. We are satisfied that the
teachings of the prior art convey connectors of sufficient length and
sufficient rigidity to permit insertion and removal of a completely-in-canal
component from a user’s ear canal.
We have given careful consideration of Hear-Wear’s arguments
offered throughout its Appeal Brief pertaining to claims 31–35, 37–41, 45,
47, and 48 when it comes to the proposed rejections of those claims based
primarily on Leysieffer, Nonomura, Siemens, and Dar. We conclude that
the Examiner expresses sufficient bases for rejecting those claims on the
pertinent grounds made in connection with this appeal. We affirm those
grounds of rejections applied to claims 31–35, 37–41, 45, 47, and 48 based
on Leysieffer, Nonomura, Siemens, and Dar.
ii. Claim 36
Claim 36 depends from claim 35 and adds the limitation “wherein said
at least one behind-the-ear component having sound processing circuitry
includes at least one behind-the-ear component including sound reduction
circuitry.” App. Br., Claims App’x, 2. The Examiner relies in various

rejection disclosed in pp. 1–55 of Claim Chart CC-9, Leysieffer in view of
Reiter, Anderson and Fretz, in the Request of 7/20/2015.”) We also take
note that the Examiner, in some cases, points to the teachings of Fretz ’608.
See, e.g., Ex. 37. Fretz ’608’s teachings appear to be essentially the same as
those of Fretz.
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instances on the teachings of Hueber to account for claim 36. See, e.g. Ans.
25 (incorporating by reference Claim Chart CC-10); id. at 28 (incorporating
by reference Claim Chart CC-15); id. at 31 (incorporating by reference
Claim Chart CC-19); id. at 34 (incorporating by reference Claim Chart CC-
24); and id. at 37 (incorporating by reference CC-29).
The above-referenced Claim Charts of the Request for Ex Parte
Examination cite to Hueber’s teachings at column 1, lines 26–29 disclosing
that “[i]t is the object of this invention to provide a hearing aid wherein
undesired background noises are suppressed by normally blocking their
transmission from the microphone to the emitter of the hearing aid.” See,
e.g., Req. CC-10, p. 4. The Claim Charts also, citing to the paragraphs 61–
62 of Declaration testimony of Dr. Stephen Thompson, express that “[a]
person of ordinary skill in the art would, therefore, have understood Hueber
to disclose a hearing aid with processing circuitry that includes sound
reduction circuitry as claimed.” See, e.g., Req. CC-10, p. 4.18 The Claim
Charts also, pointing to KSR, contends that a person of ordinary skill in the
art would have had adequate reason to combine Hueber’s teachings with
other prior art disclosures of record “to yield the predictable result of
providing a hearing aid with sound reduction to, for instance, block
undesired background noise.” See, e.g., id.
Hear-Wear generally argues that the teachings of Hueber do not make
up for alleged deficiencies that Hear-Wear proposes in association with
claim 31. See, e.g., App. Br. 80, 89. For reasons discussed above, we do not

18 Dr. Thompson’s Declaration (“Thompson Decl.” or “Thompson
Declaration”) was entered into the record on July 20, 2015.
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agree with Hear-Wear that the requirements of claim 31 distinguish it over
the prior art of record. We are also not so persuaded when it comes to claim
36. Furthermore, having reviewed the Examiner’s reliance on Hueber’s
teachings, we are satisfied that Hueber accounts for the added features of
claim 36. We also conclude that the Examiner has relied on an adequate
reasoning to combine the teachings of Hueber with other the teachings of
other prior art, such as Leysieffer, Siemens, Nonomura, and Dar. See, e.g.,
Req. CC-10, p. 4 (“A person of ordinary skill in the art at the time of the
invention would have found it obvious to enhance the
Leysieffer/Reiter/Anderson/Fretz hearing device that has a BTE component
with processing circuitry including Hueber’s disclosure that suppresses
unwanted noises (i.e., sound reduction circuitry) to yield the predictable
result of providing a hearing aid with sound reduction to, for instance, block
undesired background noise.”)19
Hear-Wear also contends at one point that “Hueber’s circuit fails to
teach or suggest the claimed sound reduction circuitry.” App. Br. 98–99.
Although Hear-Wear generally assesses the teachings of Hueber in offering
that contention, we do not find Hear-Wear’s contention persuasive. As
noted above, Hueber is clear in expressing its desire to suppress background
noise in connection with a hearing aid device. Hueber 1:26–29. To that end,
Hueber describes a control circuit to accomplish that goal. See id. at Figure
2 (“FIG. 2 is a circuit diagram illustrating the invention.”); see also id. at
2:50–4:11 (describing operation of Hueber’s circuit).

19 The other Claim Charts referenced above include similar reasoning.
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Accordingly, we have considered Hear-Wear’s arguments when it
comes to the grounds of rejection proposed for claim 36, but find them
unpersuasive. We discern no error in the Examiner’s determination to reject
claim 36 based on the prior art of record.
iii. Claim 37
Claim 37 depends from claim 35 and adds the limitation “wherein
said at least one behind-the-ear component having sound processing
circuitry includes at least two behind-the-ear components having different
sound processing circuitry.” The Examiner makes reference to various
portions of the claim charts presented in connection with the Request for Ex
Parte Examination underlying this appeal. See, e.g., Ans. 25 (incorporating
by reference Chart Charm CC-9); id. at 28 (incorporating by reference
Chaim Chart CC-14); id. at 31 (incorporating by reference Claim Chart CC-
19); id. at 34 (incorporating by reference Claim Chart CC-24); and id. at 37
(incorporating by reference Claim Chart CC-29).
The referenced Claim Charts cite to the teachings of Fretz as meeting
the added requirement of claim 37. Fretz describes that its kit of parts for
assembling hearing aids includes “a plurality of behind the ear hearing aid
cases including different sound processing components for connection to the
tubes” (Fretz, p. 4, l. 13–p. 5, l. 2), and that “[a]ccording to the present
invention, multiple hearing aid cases may be provided with processors
having different frequency responses for use by users having different
hearing losses” (id. at p. 10, l. 28–p. 11, l. 1). The Claim Charts also rely on
the Thompson Declaration at paragraphs 53–57 in support of the position
that “[a] person of ordinary skill in the art would, therefore, have understood
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Fretz to disclose ‘providing a plurality of behind-the-ear components,’ each
having different processing characteristics, as claimed.” See, e.g., Re. CC-9,
p. 44.
In light of the teachings of Fretz, we are persuaded that the Examiner
has accounted for the added requirements of claim 37. We also are
persuaded that a person of ordinary skill in the art would have had adequate
reason to implement Fretz’s teachings into other hearing aid devices, such as
those of Leysieffer, Siemens, Nonomura, and Dar, in order to permit
selection of a particular behind-the-ear component that is suitable for a given
user. See, e.g., Req. CC-9, p. 44 (“A person of ordinary skill in the art at the
time of the invention would have found it obvious to enhance Leysieffer,
which discloses a modular hearing aid device ‘matched to the individual
anatomic circumstances of the outer ear 5’ where all the parts can be
replaced with Fretz’s disclosure of providing a plurality of behind the ear
hearing aid cases with difference sound processing components in order to
select the best configuration for the user.”)20
Hear-Wear challenges the Examiner’s reliance on Fretz in conjunction
with claim 37 on the basis that implementing Fretz’s teachings into other
hearing aid devices “is not an obvious modification because it requires
substantial redesign and reconstruction.” See, e.g., App. Br. 78 (citing Staab
Dec. at ¶ 30). Neither Hear-Wear nor Dr. Staab explains adequately why,
even if implementation of Fretz’s teachings does involve “redesign and
reconstruction” of a hearing aid device, such redesign would be beyond the
skill of one of ordinary skill in the art, who is also a person of ordinary

20 The other Claim Charts referenced above include similar reasoning.
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creativity. See KSR Int’l Co., 550 U.S. at 421. Moreover, the above-noted
teachings of Fretz lend themselves readily to the conclusion that a skilled
artisan would have appreciated that providing multiple behind-the-ear
components with different sound processing circuitry or components permits
selection based on a particular user’s needs.
We have considered the record at hand and conclude that the
Examiner presents a sound basis for rejecting claim 37 based on the prior
art. We affirm the Examiner’s rejections in that respect.
iv. Claim 42
Claims 42 depends from claim 40 and adds the limitation “wherein said
plurality of at least one element includes at least one universal fit ear mold.”
App. Br., Claims App’x, 3. In rejecting claim 42, the Examiner directs our
attention to various Claim Charts associated with the Request for Ex Parte
Reexamination. See, e.g., Ans. 25 (incorporating by reference Claim Chart
CC-11); id. at 28 (incorporating by reference Chaim Chart CC-15); id. at 31
(incorporating by reference Claim Chart CC-21); id. at 34 (incorporating by
reference Claim Chart CC-26); and id. at 37 (incorporating by reference
Claim Chart CC-31). Those noted Claim Charts cite to the teachings of
Fretz as meeting the added requirement of claim 42. Fretz discloses that its
eartips may be “one of several different designs . . . which secures an end of
the tube 12 in place in the ear canal in a comfortable manner without the
need for an expensive customer made ear mold.” Fretz p. 7, ll. 7–10. Dr.
Thompson testifies that one with ordinary skill in the art “would have
understood that the eartip taught by Fretz would constitute a universal fit ear
mold.” Thompson Decl. ¶ 57. The noted portions of the Claim Charts also
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contend that, in view of Fretz’s teachings, a skilled artisan would have
understood that other hearing aid devices may incorporate Fretz’s universal
fit ear mold. See, e,g., Req. CC-11, p. 19.
Hear-Wear does not challenge the Examiner’s reliance on Fretz to
account for the added features of claim 42. Instead, Hear-Wear urges the
patentability of claim 42 based on its ultimate dependence from claim 31.
See, e.g., App. Br. 80. For the reasons discussed above, we conclude that
the Examiner correctly rejected claim 31 as unpatentable over the prior art.
We reach the same conclusion for claim 42. In that respect, we are
persuaded that the teachings of Fretz suitably account for the added features
of claim 42 and that a person of ordinary skill in the art would have had
adequate reasons to combine those teachings with the hearing aid devices of
other prior art of record, such as Leysieffer, Nonomura, Siemens, and Dar.
We affirm the Examiner’s prior art rejections of claim 42.
v. Claims 43 and 44
Claim 43 depends from claim 40 and adds the limitation “wherein
said plurality of at least one element includes a plurality of speakers.” Claim
44 depends from claim 43 and adds the limitation “wherein said plurality of
speakers includes at least two speakers having different performance
characteristics.” In rejecting claims 43 and 44, the Examiner incorporates by
reference portions of the Request for Ex-parte Reexamination discussing the
teachings of Danavox that are urged as meeting the added features of claims
43 and 44. See, e.g., Ans. 25 (citing Claim Chart CC-12); id. at 28 (citing
Claim Chart CC-17); id. at 31 (citing Claim Chart CC-22); id. at 34 (citing
Claim Chart CC-27); and id. at 37 (citing Claim Chart CC-32).
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In connection with claim 43, the Request contends that Danavox
discloses the use of a variety of difference “earphones” as a part of a hearing
aid product. See Req. CC-12, 4. Citing to the Declaration testimony of Dr.
Thompson, the Request contends the following:
A person of ordinary skill in the art at the time of the invention
would have understood the Danavox earphones to be the same
as the claimed speakers and that the data sheet teaches
providing multiple speakers in order to allow the hearing aid
dispenser to tailor a hearing aid to a “wide range of hearing
losses.”
Id. at 5. (citing Thompson Dec. ¶¶ 47–48).

With respect to claim 44, the Request also urges that Danavox discloses
a variety of earphones with “different performance characteristics” and that
“[a] person of ordinary skill in the art would have understood the Danavox
Data Sheet to disclose providing a plurality of earphones having different
performances characteristics.” Id. at 8 (citing Thompson Dec. ¶¶ 30–31).
The Request further reasons that, based on Danavox’s teachings, one of
ordinary skill in the art would have recognized that it is desirable in the
hearing aid art to make available a plurality of speakers having difference
performance characteristics for selection by a user. Id. at 5–10.
Hear-Wear challenges the grounds of rejection incorporating
Danavox’s teachings as follows:
The Request relies on Danavox for teachings of the limitations
of [claims 43 and 44]. But Danavox has not been shown to
teach a completely-in-canal component. Danavox discloses
body aid models that do not have completely-in-canal
components: “Earphone: Magnetic, external.” Danavox, Model
767 AGC, page 3. The speaker for the completely-in-canal
component is therefore different in size and performance
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specifications from Danavox’s speakers because of their
difference placement with respect to the ear canal. Thus,
Danavox is not appropriate for reaching about speakers to be
included in completely-in-canal components.
See, e.g., App. Br. 81–82 (citing Staab Dec. ¶ 35).
Hear-Wear’s argument, however, is not persuasive. Even were we to
assume that Danavox does not contemplate a completely-in-canal
component that houses its speakers, that does not end the obviousness
inquiry. There is no question on the record before us that incorporating
completely-in-canal components in a hearing aid device is routine. Hear-
Wear’s and Dr. Staab’s general observation that there may be “size and
performance specifications” variations as between Danavox’s speakers and
the speakers described in the ’404 patent is not, in and of itself, availing in
assessing obviousness based on the teachings of the prior art in association
with those of Danavox. To that end, we credit Dr. Thompson’s testimony
noted above as to what a skilled artisan would have taken from Danavox’s
teachings. We also conclude that, based on Danavox’s teachings, a person
of ordinary skill and creativity in the art would have inferred that
implementation of Danavox’s teachings in other hearing aid devices
employing completely-in-canal components as a matter of “logic” and
“common sense” in connection with design considerations, rather than
constituting actions beyond the skill of such an artisan. See Perfect Web
Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009)
(“hold[ing] that while an analysis of obviousness always depends on
evidence that supports the required Graham factual findings, it also may
include recourse to logic, judgment, and common sense available to the
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person of ordinary skill that do not necessarily require explication in any
reference or expert opinion”); see also KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (“if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”)
Accordingly, we conclude that the record before us supports the
Examiner’s determination to reject claims 43 and 44 based on the prior art
including the teachings of Danavox. Hear-Wear’s arguments are unavailing
in challenging that determination. We affirm the Examiner’s rejections of
claims 43 and 44.21
III. CONCLUSION
We have carefully considered the substantial record before us. For the
reasons discussed above, we conclude that the Examiner has established
satisfactorily where all the features of claims 31–45, 47, and 48 of the ’404
patent have been identified satisfactorily in the prior art. We also conclude

21 We are mindful that there is some similarity in certain features of claims
43 and 44 and those set forth in claim 46. As discussed above, we conclude
that the grounds of unpatentability offered by the Examiner to claim 46 are
flawed, as an evidentiary matter, because they are based on inadequate
assessment of Fretz’s teachings. We also observe that claim 46 recites
features distinct from either claim 43 or claim 44, including drawing
distinction between sounds processing circuitry as a part of a microphone in
a behind-the-ear component and two or more speakers with different
performance characteristics in a completely-in-canal component. We do not,
as a part of this Decision, undertake in the first instance to now assess
applicability of Danavox’s teachings in connection with some as yet un-
proposed other ground of unpatentability of claim 46.
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that the Examiner had identified and articulated adequate reason in the
record for combining the teachings of the prior art in the manner that has
been advanced by the Examiner. We do not discern error in the Examiner’s
determination to reject each of claims 31–45, 47, and 48 over the prior art.
Accordingly, we affirm all of the grounds of rejection applied by the
Examiner to those claims.
We, however, come to a different conclusion when it comes to claim
46. As discussed above, all of the grounds offered by the Examiner in
rejecting claim 46 rely on the teachings of Fretz to meet certain features
added by that claim. For the reasons set forth above, however, we conclude
that the Examiner’s reliance on Fretz as flawed in that context. Accordingly,
we must reverse all of the grounds of rejection applied to claim 46.
IV. ORDER
It is
ORDERED that the prior art rejections of claims 31–45, 47, and 48
offered by the Examiner in connection with this appeal are affirmed; and
FURTHER ORDERED that the prior art rejections of claim 46 offered
by the Examiner in connection with this appeal are reversed.

AFFIRMED-IN-PART; REVERSED-IN-PART

Appeal 2017-007406
Reexamination Control No. 90/013,552
Patent No. 7,139,404 B2

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