Ex Parte 7421086 et al

Patent Trial and Appeal Board

Feb 8, 2014

95001104 (P.T.A.B. Feb. 8, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,104 11/06/2008 7421086 4436-0204L 4078
23413 7590 02/10/2014
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
WEAVER, SCOTT LOUIS
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/10/2014 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
____________

AUDITORY LICENSING COMPANY
Patent Owner, Appellant & Respondent

v.

OTICON A/S, WIDEX A/S & GN RESOUND A/S
Third Party Requesters, Appellants & Respondents

Appeal 2012-012566
Inter partes Reexamination Control 95/001,104
United States Patent 7,421,086 B2
Technology Center 3900
____________

Before KEVIN F. TURNER, STEPHEN C. SIU and
DENISE M. POTHIER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

Patent Owner Auditory Licensing Company, (hereinafter “Patent
Owner”) appeals
1
under 35 U.S.C. §§ 134(b) and 315(a)(1) (2002) the

1
See Patent Owner‟s Appeal Brief filed July 25, 2011, hereinafter “PO App.
Br.,” at 2; see also Patent Owner‟s Respondent Brief filed September 1,
2011, hereinafter “PO Resp. Br.,” and Patent Owner‟s Rebuttal Brief filed
October 31, 2011, hereinafter “PO Rebut. Br.”
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2
Examiner‟s decision to adopt rejections of claims 1-89.
2
Third Party
Requesters Oticon A/S, Widex A/S, and GN Resounds A/S (hereinafter
“Requesters”) appeal
3
under 35 U.S.C. §§ 134(c) and 315(b)(1) the
Examiner‟s decision to not adopt certain proposed rejections of specific
claims, as provided below.
We have jurisdiction under 35 U.S.C. §§ 6, 134, and 315 (2002). We
AFFIRM.

STATEMENT OF THE CASE
This proceeding arose from a corrected request for inter partes
reexamination (“Request”) filed on behalf of Requesters, on November 6,
2008, of United States Patent 7,421,086 B2 (“the '086 Patent”), issued to
Natan Bauman et al. on September 2, 2008, based on United States
Application 11/331,842, filed January 13, 2006.
With respect to the claims of the '086 Patent, claims 1-89 are subject
to reexamination, with all of those claims having been issued with the Patent
(RAN 4). The Examiner chose to adopt some of the rejections proffered by
Requesters, with claims 1-89 standing rejected.
The '086 Patent is the subject of litigation styled Auditory Licensing
Comp. v. GN Resound A/S et al., Case No. 2:08-cv-334 (Conn.) (TPR App.

2
See Right of Appeal Notice, mailed April 25, 2011, hereinafter “RAN;” see
also Examiner‟s Answer, mailed September 30, 2011, hereinafter “Ans.”
3
See Third Party Requesters‟ Appeal Brief filed August 5, 2011, hereinafter
“TPR App. Br.” at 2; see also Third Party Requesters‟ Respondent Brief
filed September 30, 2011, hereinafter “TPR Resp. Br.,” and Third Party
Requester‟s Rebuttal Brief filed October 31, 2011, hereinafter “TPR Rebut.
Br.”
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3
Br. 1; accord PO Resp. Br. 2), where that litigation is said to be stayed
pending the outcome of this proceeding (id.). Requesters also point out
Appeal No. 2008-003704, decided February 25, 2009, based on a related
patent application, where we construed similar claim terms to those involved
in the instant appeal (id).
We heard oral arguments from the representatives of both Requesters
and Patent Owner on February 6, 2013, a transcript
4
of which is part of the
record.

THE INVENTION
The invention of the '086 Patent relates to a hearing aid system having
a receiver unit configured and positioned in the user‟s ear canal so as to
minimize insertion loss and/or occlusion effect (Abs.).
Exemplary claim 1 reads as follows:
1. A hearing aid, comprising:
a microphone sampling position located externally of an
ear canal of a user;
a receiver, comprising a speaker housed within a casing,
positionable in an open-ear configuration and suspended within
the ear canal wherein sound from the microphone sampling
position is amplified in accordance with hearing loss
programming and passed via electrical connection around a
portion of the external ear and through the ear canal opening of
that ear to the speaker that is positioned within the ear canal in
an open ear configuration, and wherein such receiver unit
casing has a maximum lateral dimension of about 0.23 inches
or below and is dimensioned so as to generate about eight

4
Record of Oral Hearing (hereinafter “Oral Hr‟g Tr.”)
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decibels or below of insertion loss and about eight decibels or
below of occlusion effect over human audible frequencies.
(PO App. Br., Claims App‟x.).

PRIOR ART REJECTIONS
The Request (Request 5) asserted substantial new questions of
patentability of the claims of the '086 Patent based on the following prior art
references:
Pape 789,876 May 16, 1905
French 1,830,198 Nov. 3, 1931
Toht 2,930,856 Jan. 24, 1956
Sciarra 4,539,440 Sep. 3, 1985
Devoe 5,572,594 Nov. 5, 1996
Pluvinage 5,987,146 Nov. 16, 1999
Puthuff 6,021,207 Feb. 1, 2000
Fretz 6,275,596 B1 Aug. 14, 2001
Shennib 6,473,513 B1 Oct. 29, 2002
Leysieffer 6,600,825 B1 Jul. 29, 2003
Bauman 2004/0047483
A1
Mar. 11, 2004

Taenzer WO 00/01196 Jan. 6, 2000
Lux-Wellenhof DE 29718483 U1 Apr. 1, 1999

“Freestyle” hearing aid by Bruckhoff & Partner GmbH, Hanover,
Hörakustik (December 2002) pp. 1, 28, 60 (with certified English
translation)("Hörakustik").
Abram Katz, “Lend An Ear,” Interview with Natan Bauman, New Haven
Register (October 5, 2003)("Katz").
Sandlin, Robert E., Ph.D., Textbook of Hearing Aid Amplification, Singular
Publishing Group (2000, 2
nd
Ed.) pp. 22-25 ("Sandlin").
Knowles.com, web pages from http://web.archive.org/web/200206***
/www.knowles.com/***(June 2002)(last visited September 18,
2008)("Knowles I").
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FC Series data sheet, Knowles Electronics (2001) ("Knowles II").
FK Series data sheet, Knowles Electronics (2001) ("Knowles III").
An Innovative Non-occluding DSP Device, GN ReSound (2003) ("GN
ReSound I").
Bruckhoff-apparatebau.com, web pages from
http://web.archive.org/web/20030206042427 /http://www/bruckhoff-
apparatebau/hdo-Geräte, Ear-mic, deamo – bruckhoff apparatebau (March
20, 2003)(last visited October 27, 2008) ("Bruckhoff").

The Request provided the following prior art rejections, all under 35
U.S.C. § 103, save one, where the Examiner adopted, adopted in part, or did
not adopt the rejections (RAN 4-64, referred to as Issues 1-30):
Issue Claims References
1 1-29 & 39-48 Taenzer, Sandlin, & Knowles I
2 30-34 Taenzer, Sandlin, Knowles I, & Lux-
Wellenhof
3 35-37 Taenzer, Sandlin, Knowles I, & Leysieffer
4 38 Taenzer, Sandlin, Knowles I, & Shennib
5 49-60 Taenzer, Sandlin, Knowles I, & Toht
6 49, 63-68, & 73-
79
Taenzer, Sandlin, Knowles I, & Bauman
7 49 & 63-72 Taenzer, Sandlin, Knowles I, & Devoe
8 49, 64, & 66-71 Taenzer, Sandlin, Knowles I, & Pape
9 49, 64, & 66-71 Taenzer, Sandlin, Knowles I, & French
10 61 & 62 Taenzer, Sandlin, Knowles I, Toht, & Lux-
Wellenhof
11 80-89 Taenzer, Sandlin, Knowles I, & Bauman
12 1-29, 39-49, 63-
68, & 73-89
Bauman, Sandlin, & Knowles I
13 30-34 Bauman, Sandlin, Knowles I, & Lux-
Wellenhof
14 35-37 Bauman, Sandlin, Knowles I, & Leysieffer
15 38 Bauman, Sandlin, Knowles I, & Shennib
16 49-60 Bauman, Sandlin, Knowles I, & Toht
17 61 & 62 Bauman, Sandlin, Knowles I, Toht, & Lux-
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Wellenhof
18 69-72 Bauman, Sandlin, Knowles I, & Devoe
19 1-29, 35, & 39-48 Katz, Knowles II, & Knowles III
20 30-34, 49, 61-68,
73, 78, 80-82, 84,
& 86-88
Katz, Knowles II, Knowles III, & GN
Resound I
21 35, 36, & 38 Katz, Knowles II, Knowles III, & Pluvinage
22 35-37 Katz, Knowles II, Knowles III, & Leysieffer
23 38 Katz, Knowles II, Knowles III, Leysieffer, &
Shennib
24 49-60 Katz, Knowles II, Knowles III, & Toht
25 49, 63-70, 73-77
& 80-89
Katz, Knowles II, Knowles III, & Bauman
26 69-72 Katz, Knowles II, Knowles III, Bauman, &
Pluvinage
27 78 & 79 Katz, Knowles II, Knowles III, Bauman, &
Sciarra
28 1-29 & 39-48 Hörakustik
5

29 1-29 & 39-48 Hörakustik, Bruckhoff, Sandlin, & Knowles I
30 1-29, 35, & 39-48 Puthuff, Knowles II, Knowles III, & Fretz
With respect to the above “Issues,” the Examiner adopted Issues 1-18,
adopted in part Issue 25, i.e., adopted only with respect to claims 80-89, and
did not adopt Issues 19-24 and 26-30. RAN 4. Patent Owner appeals the
Examiner‟s decision to adopt those rejections, PO App. Br. 5-7, and
Requesters appeal the Examiner‟s decision to not adopt the specified non-
adopted rejections, TPR App. Br. 6-7.
Patent Owner relies upon following Declarations:
 Declaration of Robert Martin, Ph.D., dated December 4, 2009, (PO
App. Br., Evidence App‟x.) (“Martin Decl. I”).
 Declaration of Robert Martin, Ph.D., dated October 30, 2010, (PO
App. Br., Evidence App‟x.) (“Martin Decl. II”).

5
Asserted under 35 U.S.C. § 102(b).
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 Declaration of Charles I. Berlin, Ph.D., dated May 18, 2009, (PO
App. Br., Evidence App‟x.) (“Berlin Decl.”).
 Declaration of Lawrence J. Revit, dated December 4, 2009, (PO App.
Br., Evidence App‟x.) (“Revit Decl.”).
 Declaration of Rick Hudson., dated May 19, 2009, (PO App. Br.,
Evidence App‟x.) (“Hudson Decl.”).
Requesters rely upon following Declarations and Evidence:
 Declaration of Stephen C. Thompson, Ph.D., dated June 17, 2009,
(TPR App. Br., Evidence App‟x.) (“Thompson Decl. I”).
 Declaration of Stephen C. Thompson, Ph.D., dated November 30,
2010, (TPR App. Br., Evidence App‟x.) (“Thompson Decl. II”).
 Technical report on “Insertion Loss and occlusion effect measured on
open fit hearing aid,” (TPR App. Br., Evidence App‟x.) (“Technical
Report”).

ISSUES
Patent Owner argues that Taenzer has been misapplied by the
Examiner, as the applied embodiments of Taenzer can be used alongside a
hearing aid, or other audio device, but could not have been used as a hearing
aid, per the recitations of the independent claims (PO App. Br. 7-9). Patent
Owner also argues that many of the teachings of Taenzer are inoperative and
thus are unavailable as prior art (PO App. Br. 9-11). Patent Owner argues
that the Examiner‟s adoption of the other rejections relying on Taenzer,
Issues 2-11, should likewise be reversed (PO App. Br. 14-22). Additionally,
Patent Owner argues that Bauman and Katz are not available as prior art
against the instant claims (PO App. Br. 15-20). Specifically, Patent Owner
alleges that the instant claims are entitled to priority to various prior patent
applications, including Bauman, such that Bauman and Katz cannot be
applied against the instant claims (PO App. Br. 16). Also, Patent Owner
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argues that the Examiner erred in failing to properly consider and give
proper weight to the secondary consideration evidence on record (PO App.
Br. 25-60). Requesters contend that the Examiner erred in the Examiner‟s
determination that the rejections denoted Issues 19-24 and 26-30, and
portions of Issue 25, should not be adopted (TPR App. Br. 7-20).
Arguments which the parties could have made but chose not to make
in their Briefs are deemed to be waived. See 37 C.F.R. § 41.67(c)(1)(vii).
The issues arising from the respective positions of both parties and the
Examiner, which we consider herein, are:

1. whether the embodiments of Taenzer applied by the Examiner in
the rejections of the claims are applicable to hearing aids and
whether the applied embodiments are inoperative;
2. whether Bauman and Katz are available as prior art against the
instant claims;
3. whether the Examiner erred in failing to properly consider and give
proper weight to the secondary consideration evidence on record;
4. whether the Examiner erred in not adopting specified rejections of
claims, denoted Issues 19-24 and 26-30, and portions of Issue 25.

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
The '086 Patent
FF 1. The „086 Patent is directed to a hearing aid system having a
receiver unit configured and positioned in the user‟s ear canal so as to
minimize insertion loss and/or occlusion effect (Abs.).
FF 2. In several embodiments, the receiver unit size is disclosed to be
0.149-0.230 inches, col. 9, ll. 26-29, and the specific correlation effects
between receiver size and insertion loss and the occlusion effect over human
audible frequencies are disclosed, col. 24, l. 29 – col. 25, l. 39.
FF 3. United States Patent Application No. 11/331,842, filed January
13, 2006, from which the „086 Patent issued, claims priority to the following
disclosures:
Serial # Filing Date Publication # Pub. Date Cite
10/241,279 Sept. 10, 2002 2004/0047481 Mar. 11, 2004 “Bauman I”
10/325,529 Dec. 18, 2002 2004/0047483 Mar. 11, 2004 “Bauman”
60/445,034 Feb. 5, 2003 - - “Bauman PI”
60/514,994 Oct. 27, 2003 - - “Bauman PII”
60/535,569 Jan. 9, 2004 - - “Bauman PIII”
10/773,731 Feb. 5, 2004 2005/0078843 Apr. 14, 2005 “2005 Bauman”
11/124,418 May 6, 2005 Abandoned Mar. 15, 2006 “Bauman II”

FF 4. Bauman I provides that “the receiver 18 may comprise any
suitable receiver known in the art,” ¶ [0023], and that the receiver “allow[s]
the use of any size of receiver in the hearing aid systems,” ¶ [0025]. The
occlusion effect is discussed, ¶ [0002], but the size of the receiver unit
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casing and decibel levels above or below for insertion loss and the occlusion
effect are not explicitly disclosed.
FF 5. Bauman provides that “the receiver 18 may comprise any
suitable receiver known in the art,” ¶ [0025], and that the receiver “allow[s]
the use of any size of receiver in the hearing aid systems,” ¶ [0027]. The
occlusion effect is discussed, ¶ [0003], but the size of the receiver unit
casing and decibel levels above or below for insertion loss and the occlusion
effect are not explicitly disclosed.
FF 6. Bauman PI discusses that the receiver should be sized to avoid
insertion losses and to not occlude the ear canal, pp. 2, 4. The size of the
receiver unit casing and decibel levels above or below for insertion loss and
the occlusion effect are not explicitly disclosed.
FF 7. Bauman PII provides that the receiver may be sized according
to specific percentages of “the maximum lateral dimension or diameter of a
user‟s ear canal,” p. 8, but does not provide specific dimensions for that
maximum value. Only generic concerns about avoidance or the occlusion
effect and insertion loss problems are disclosed.
FF 8. Bauman PIII discloses the same information with respect to
receiver size as Bauman PII. Various tables, pp. 11-42, provide decibel
differences between different brands of hearing aids at various frequencies,
but specific receiver sizes are not explicitly disclosed.
FF 9. 2005 Bauman provides that the receiver may have a specific
percentage size of a user‟s ear canal, ¶ [0010], per Bauman PII, and provides
decibel differences between different brands of hearing aids, ¶¶ [0040]-
[0119], per Bauman PIII.
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FF 10. Bauman II provides essentially the same disclosure with
respect to receiver dimensions and decibel levels above or below for
insertion loss and the occlusion effect as the „086 Patent. See FF 2.

Taenzer
FF 11. Taenzer is directed to an open-canal communication device
which delivers sound directly to a user‟s open ear canal so that the user will
perceive the sounds to have high quality and a flat frequency response.
Taenzer Abs.
FF 12. Taenzer discloses four preferred embodiments, with the first
two describing devices with speak housings employed behind the user‟s ear
and sound transmitted to the user‟s ear canal via a tube, and the last
describing an earbud device. Taenzer p. 11, ll. 5-13. The third preferred
embodiment provides a speaker in canal configuration. Taenzer p. 21, l. 8 –
p. 23, l. 3.

ANALYSIS
ISSUE 1
Embodiments of Taenzer
Patent Owner argues that Taenzer has been misapplied by the
Examiner, as the applied embodiments of Taenzer can be used alongside a
hearing aid, or other audio device, but could not have been used as a hearing
aid, per the recitations of the independent claims, and that “hearing aid
applications” are not synonymous with “as a hearing aid” (PO App. Br. 7-
10). However, we are not persuaded that if Taenzer could be applied to
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hearing aid applications, it would not also be obvious to employ Taenzer‟s
embodiments as hearing aids. “When a work is available in one field, design
incentives and other market forces can prompt variations of it, either in the
same field or in another.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401
(2007). In determining the applicability of Taenzer to hearing aids
themselves, specific to the embodiments disclosed FF 12, we must examine
what the document discloses, and not what was the focus of the work of
Taenzer‟s assignee. PO App. Br. 8.
Patent Owner also argues that many of the teachings of Taenzer are
inoperative and thus are unavailable as prior art (PO App. Br. 9-11).
However, “[e]ven if a reference discloses an inoperative device, it is prior art
for all that it teaches.” Beckman Instruments v. LKB Produkter AB, 892 F.2d
1547, 1551 (Fed. Cir. 1989). Therefore, “a non-enabling reference may
qualify as prior art for the purpose of determining obviousness under [35
U.S.C. §] 103.” Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578
(Fed. Cir. 1991). Accordingly, we disagree that the references are
unavailable as prior art.
Patent Owner also relies on the testimony of its experts. PO App. Br.
8. Specifically, Dr. Martin testifies that Taenzer does not “show any kind of
amplification in accordance with hearing loss programming,” Martin Decl. I
¶ 5, and that “the products created by carefully following the descriptions in
these three patents [Taenzer, Puthuff, and Pluvinage] are non-functional”
Martin Decl. II ¶ 11. Additionally, Lawrence Revit testifies that Taenzer
does not teach the practical requirements of a working open-canal hearing
aid. Revit Decl. ¶ 6. In addition, Dr. Berlin testifies that even though
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certain embodiments of Taenzer are contemplated for use as a hearing aid,
the third embodiment was never so contemplated. Berlin Decl. ¶ 6. Patent
Owner characterizes this as a teaching away, PO App. Br. 11; however, we
are not persuaded that the absence of a teaching of the use of the third
embodiment for hearing aid applications constitutes a teaching that would
disparage or otherwise discourage. To teach away, the prior art must
disparage or otherwise discourage the approach followed by the inventor.
See In re Peterson, 315 F.3d 1325, 1332 (Fed. Cir. 2003).
In contradistinction to those testimonies, the Examiner points out,
RAN 13, that the declarations submitted by Requesters urge that Taenzer is
operable and applicable to hearing aids. Dr. Thompson testifies that
Taenzer‟s embodiments are suitable for open-fit, receiver-in-canal hearing
aid devices. Thompson Decl. I ¶¶ 22-24, Thompson Decl. II ¶¶ 19-24. In
addition, we agree with Dr. Thompson as he also testifies that Patent
Owner‟s affiants do not properly consider the knowledge of persons
ordinarily skilled in the art of hearing aid design. Thompson Decl. II ¶¶ 11,
16-19, 25-26. We are persuaded by the proffered testimonies of Requesters.
Accordingly, we conclude that the embodiments of Taenzer applied
by the Examiner in the rejections of the claims are applicable to hearing aids
and that the applied embodiments are not inoperative.
Patent Owner argues that the Examiner‟s adoption of the other
rejections relying on Taenzer, Issues 2-11, should likewise be reversed (PO
App. Br. 14-22). As we conclude that Patent Owner‟s arguments with
respect to Taenzer are not persuasive, we are equally unpersuaded about the
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impropriety of the Examiner‟s adoption of the additional rejections applying
Taenzer.
As such, we conclude that the Examiner did not err in the application
of the specific embodiments of Taenzer applied, and did not err in
determining that the applied embodiments are not inoperative.

ISSUE 2
Availability as prior art of Bauman and Katz
Patent Owner argues that Bauman is included within the priority chain
of the application which issued as the „086 Patent, PO App. Br. 16, and
should not be applied as prior art against the instant claims, id. at 19. Patent
Owner makes similar arguments against Katz, id. at 25. In essence, without
reliance on the filing date of Bauman, December 18, 2002, Katz, published
October 5, 2003, is prior art, since the instant claims would only have
priority back to February 5, 2004, the filing date of 2005 Bauman, or
January 13, 2006, the filing date of United States Application 11/331,842,
which issued as the „086 Patent. Requesters respond that Bauman and Katz
are prior art to the „086 Patent. TPR Resp. Br. 10. As discussed below, we
conclude that the instant claims have priority back to January 13, 2006, such
that Bauman and Katz are prior art against those claims.
In determining proper priority, we must determine whether “the
description must clearly allow persons of ordinary skill in the art to
recognize that [he or she] invented what is claimed.” In re Gosteli, 872 F.2d
1008, 1012 (Fed. Cir. 1989). The test for sufficiency of support in a parent
application is whether the disclosure of the application relied upon
“reasonably conveys to the artisan that the inventor had possession at that
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time of the later claimed subject matter.” Ralston Purina Co. v. Far-Mar-
Co., Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985) (quoting In re Kaslow, 707
F.2d 1366, 1375 (Fed. Cir. 1983)).
Claim 1 provides that “such receiver unit casing has a maximum
lateral dimension of about 0.23 inches or below and is dimensioned so as to
generate about eight decibels or below of insertion loss and about eight
decibels or below of occlusion effect over human audible frequencies.” The
Examiner found that the “the general discussion of various receiver sizes in
Patent Owner's early applications fails to describe the particular speaker size
range limits and occlusion effect/insertion effect value range limits added in
the '086 patent disclosure and claims.” RAN 7. We agree. The earlier
patent applications disclosed that the receiver could be any suitable receiver
known in the art, and that the system may use any size receiver therein, FF
4-5, but that is not a disclosure of the specific values found in the
independent claims. Later patent applications provided that the receiver may
have a specific percentage size of a user‟s ear canal, and disclosed decibel
differences between different brands of hearing aids, FF 6-9, but these are
not the same as the specific recitations of the instant claims.
Patent Owner relies on testimony of Dr. Berlin in arguing that the
variations in size inherently flow from the original disclosure. PO App. Br.
16; Berlin Decl. ¶ 7. However, inherency requires that the missing
descriptive material is necessarily present in the thing described.
Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir.
1991). We do not conclude that the specific size and function of that size,
i.e., “so as to generate about eight decibels or below of insertion loss and
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about eight decibels or below of occlusion effect over human audible
frequencies,” would be necessarily present. Decibel differences between
different brands of hearing aids at various frequencies can occur, irrespective
of receiver size, FF 8, 9, such that it is not clear that such features would be
inherent or be generally known.
Dr. Berlin also argues that 2005 Bauman “would be directly reflective
of the housing profile in the proper position within the ear canal.” Berlin
Decl. ¶ 8. However, given that 2005 Bauman discloses the receiver size to
be a specific percentage size of a user‟s ear canal, FF 9, this also cannot
provide written description support for the limitation of “about 0.23 inches
or below.” The fact that the device provided in the testing would have
complied with the dimension recited in the claims is of no matter, because
the dimension was not disclosed in the specification of 2005 Bauman.
Patent Owner also alleges that average ear canal diameters were known, PO
App. Br. 17-18, and that this would have provided disclosure, by 2005
Bauman, for one of ordinary skill in the art. PO Rebut. Br. 6. Even
accepting this as true, it still fails to provide the relationship in the claims,
“is dimensioned so as to generate,” sufficiently so that those ordinarily
skilled artisans could have determined the relationship necessary to meet the
claims. Such disclosure should be compared with that of the „086 Patent, FF
2, which appears to provide ample support for the instant claims.
Patent Owner also emphasizes that the particular size housing is not
the primary aspect with regard to the underlying invention, and that the
invention was an original solution, that was dynamic and simple, and
bypassed all of the problems that others had encountered. PO App. Br. 16-
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17. But the benefits of the invention cannot form the basis of whether
proper written description support exists to allow for the priority claim to be
valid. It may well be that the specific recitations in the claims are not
essential to the invention, but any inquiry must be made to their prior
disclosure and not their efficacy.
In addition, Patent Owner argues that since Requesters have argued
that various receiver sizes were well known at the time, those particular sizes
need not be disclosed in detail, citing Hybritech Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986). PO App. Br. 18-19;
PO Rebut. Br. 7-8. However, we agree with Requesters that “[t]he question
is not whether a claimed invention is an obvious variant of that which is
disclosed in the specification. Rather, a prior application itself must describe
an invention.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572
(Fed. Cir. 1997); TPR Resp. Br. 16. The inquiries made in determining
written description support and obviousness need not be identical.
Accordingly, we conclude that the instant claims have priority back to
January 13, 2006, such that Bauman and Katz are prior art against those
claims. As such, we do not conclude that this comprises a deficiency of the
rejections applying Bauman and Katz, as alleged by Patent Owner.

ISSUE 3
Evidence of Secondary Considerations
Patent Owner argues that the Examiner erred in failing to properly
consider and give proper weight to the secondary consideration evidence on
record (PO App. Br. 25-60). Requesters argue that essentially the same
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evidence of secondary considerations of nonobviousness was previously
considered by the Board (Appeal No. 2008-3704) and determined to be
insufficient to overcome the rejections. TPR Resp. Br. 16-18. Patent Owner
responds that the Board-noted deficiencies of the related patent were cured
prior to its issuance such that the prior decision does not control. PO Rebut.
Br. 8. We need not decide if the prior Decision controls as we are persuaded
by the Examiner‟s findings that the evidence of secondary considerations of
nonobviousness are insufficient to overcome the applied obviousness
rejections.
As the Examiner reiterates, pertinent to Patent Owner‟s arguments,
the references have not been found to be inoperative, unsupported
allegations cannot rebut a prima facie case of obviousness, and Patent
Owner does not address the deficiency in the evidence of alleged copying.
RAN 19. As the Examiner also notes, any evidence provided must have a
proper nexus between such evidence and the claims of the invention. RAN
38. See Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F. 2d 1387,
1392 (Fed. Cir. 1988), cert. denied, 488 U.S. 956. As discussed below, we
find the required nexus to be lacking.
Patent Owner argues that its commercial success evidence has nexus
with the claims, PO App. Br. 29-30, but that evidence goes to “Vivatone‟s
open ear hearing aid,” id. at 30, but does not persuade that those sales
complying with the claim limitations, specifically “such receiver unit casing
has a maximum lateral dimension of about 0.23 inches or below and is
dimensioned so as to generate about eight decibels or below of insertion loss
and about eight decibels or below of occlusion effect over human audible
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frequencies,” per claim 1, with similar limitations found in independent
claim 80. Patent Owner alleges that the configuration of the hearing aids
sold means that the insertion loss and occlusion effect values are met, PO
App. Br. 35, but we conclude this to be merely conclusory.
The evidence of copying, long felt, unmet need and laudatory
statements by competitors, PO App. Br. 36-43, are made with respect to
Vivatone‟s general open ear configuration and not to the specifics of
independent claims 1 and 80. Patent Owner argues that others “copied the
invention set forth in independent claim 1 (with specific reference to the
open ear speaker suspended in the ear canal, the behind the ear amplifier,
and the electrical wire connecting the behind the ear component and the
open ear receiver, such as is recited in the claims).” PO App. Br. 44.
Missing from such a description, however, is any of the more specific
recitations of claims 1 and 80. Patent Owner acknowledges, with respect to
competitors hearing aids, that “we expect that the properties (particularly
with regard to the about three decibels or below' insertion loss limitation of
independent claim 1) will be similar. PO App. Br. 47. However, such
speculation cannot take the place of actual evidence with a proper nexus to
the instant claims. Even if competitors made “exact[ ] copies,” PO App. Br.
49 (emphasis omitted), of Vivatone‟s hearing aid, we have no additional
evidence that the hearing aid sold conformed to the strictures of the claims.
Accordingly, we are unpersuaded that Patent Owner has produced
sufficient evidence with proper nexus to the instant claims that would
overcome the rejections of obviousness adopted by the Examiner. Thus, we
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conclude that the Examiner did not err in failing to properly consider and
give proper weight to the secondary consideration evidence on record.

ISSUE 4
Requesters argue that rejections of claims denominated as Issues 19-
24 and 26-30, and portions of Issue 25, should have been adopted by the
Examiner (TPR App. Br. 7-20). Our conclusion that the Examiner did not
err in adopting the rejections of the above-referenced claims as discussed
above renders it unnecessary to reach the propriety of the Examiner‟s
decision to not adopt the proposed rejections of those claims on different
bases. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). As such, we
need not reach the propriety of the Examiner‟s non-adoption of the
rejections described in Issues 19-24 and 26-30, and portions of Issue 25.

CONCLUSIONS
We conclude that: 1) the embodiments of Taenzer applied by the
Examiner in the rejections of the claims are applicable to hearing aids and
that the applied embodiments are not inoperative; 2) Bauman and Katz are
available as prior art against the instant claims; 3) the Examiner did not err
in the obviousness analysis and properly considered and gave proper weight
to the secondary consideration evidence on record. We do not reach the
issue of the propriety of the Examiner‟s non-adoption of specific proposed
rejections.

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DECISION
The Examiner‟s decision to reject claims 1-89 is affirmed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED

Patent Owner:
CANTOR COLBURN LLP
20 Church St.
22
nd
Floor
Hartford, CT 06103

Third Party Requesters:
BIRCH STEWART KOLASCH & BIRCH
8110 Gatehouse Road
Suite 100 East
P.O. Box 747
Falls Church, VA 22040-0747