Ex Parte 8477978 et al

Patent Trial and Appeal Board

Nov 27, 2018

96000138 (P.T.A.B. Nov. 27, 2018)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
96/000,138 12/17/2015 8477978 12221-0002S 1002
22902 7590 11/28/2018
CLARK & BRODY
1700 Diagonal Road, Suite 510
Alexandria, VA 22314
EXAMINER
GAGLIARDI, ALBERT J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/28/2018 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 ANOVA HEARING LABS, INC.,
Patent Owner and Appellant
____________

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

Before JOHN A. JEFFERY, STEPHEN C. SIU, and
DENISE M. POTHIER, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL

This proceeding is a supplemental examination of U.S. Patent No.
8,477,978 B2 (“the ’978 patent”) to James F. Caldarola, entitled Open Fit
Canal Hearing Device, issued July 2, 2013. An oral hearing was conducted
on July 11, 2018.
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Patent Owner appeals under 35 U.S.C. § 134 and 306 from the
Examiner’s rejection of claims 1–6, 9, 10, 12–39, 41–47, 49–58, and 63–70.
App. Br. 11, 14, 15, 30, 31.1 We have jurisdiction under 35 U.S.C. § 6(b).
The disclosed invention relates generally to hearing devices. See Spec
2:38.
Claim 1 reads as follows:
1. A completely in the canal hearing device, said device
comprising:
a case having a power source, a microphone, a receiver
element, and an acoustic passageway, wherein said case, when
mounted in the ear canal, provides at least one open passageway
between the ear canal and the case;
at least one flexible insert comprising a hub portion and an
outer portion adjacent to the hub portion, the hub portion attached
to a tip formed at a receiver end of the case, the outer portion
providing an open area when mounted against a wearer's ear canal
to create a sound path extending through the at least one open
passageway and said open area, wherein the open area defined by
the outer portion ranges from about 5 to 70% when the flexible
insert is in its mounted position within the ear canal.

Patent Owner appeals the Examiner’s rejections of claims 1–6, 9, 10,
12–36, 38, 39, 41–47, 52–58, and 63–672 under 35 U.S.C. § 103 as

1 Appeal Brief, filed August 7, 2017 (“App. Br.”).
2 The Examiner withdraws the rejection of claims 7, 8, and 11 under 35
U.S.C. § 103 as unpatentable over Brown, Admitted Prior Art, Bauman
’086, Bauman ’076, and Sauer. Ans. 14, 34.
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unpatentable over Brown,3 Admitted Prior Art,4 Bauman ’086,5 Bauman
’076,6 and Sauer;7 claims 15, 16, 36, 37, 49, and 50 under 35 U.S.C. § 103 as
unpatentable over Brown, Admitted Prior Art, Bauman ’086, Bauman ’076,
Sauer, and Saxton;8 and claims 17, 51, and 68–70 under 35 U.S.C. § 103 as
unpatentable over Brown, Bauman ’086, Bauman ’076, Sauer, and Kuo.9

ISSUE
Did the Examiner err in rejecting claims 1–6, 9, 10, 12–39, 41–47,
49–58, and 63–70?

ANALYSIS
Claim 1 recites a case that provides at least one open passageway
between the ear canal and the case. The Examiner finds that either one of
Brown or Sauer discloses this feature. Final Act. 5. For example, the
Examiner explains that Brown discloses a “case” for a hearing aid that is
“smaller than the ear canal,” and that Sauer also discloses a “case and

3 US Patent No. 6,129,174, issued October 10, 2000 (“Brown”).
4 Including US Patent No. 7,027,608, issued April 11, 2006 (“Fretz”).
5 US Patent No. 7,421,086 B2, issued September 2, 2008 (“Bauman ’086”).
6 US Patent No. 7,076,076 B2, issued July 11, 2006 (“Bauman ’076”).
7 US Patent No. 5,654,530, issued August 5, 1997 (“Sauer”).
8 US Patent Publication 2004/0258263 A1, Published Dec. 23, 2004
(“Saxton”).
9 US Patent No. 6,097,823, issued August 1, 2000 (“Kuo”).
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hearing aid housing” providing an open passageway in “the auditory canal.”
Final Act. 5–6 (citing Brown 4:33–47 and Sauer Abstract).
Patent Owner argues that “the open passageway . . . is not present in
Brown” because “the external module 72 is shown . . . outside the ear [and]
in contact with the ear canal.” App. Br. 16. We are not persuaded by Patent
Owner’s argument. As the Examiner explains, Brown discloses a case (e.g.,
an “intra-canal receiver module” – Brown 4:35–36) for a hearing aid and a
space separating the external surface of the intra-canal receiver module with
the wall of the ear canal. See, e.g., Brown Fig. 9 (disclosing a space that
separates the wall of the intra-canal receiver module and the wall of the ear
canal – i.e., the receiver module of Brown being “smaller than the ear
canal,” as the Examiner explains). Patent Owner does not assert or
demonstrate persuasively a substantive difference between the
aforementioned space disclosed by Brown and the “open passageway,” as
recited in claim 1. In both cases, the “open passageway” is a space between
the external surface of the “case” and the wall of the ear canal.
As described above, the Examiner finds that Sauer also discloses the
claimed “open passageway.” Patent Owner argues that the Examiner’s
“reliance on Sauer is a ‘red herring’ [because it] is unrelated to the question
of the open passageway as it relates to Brown.” App. Br. 17. However,
Patent Owner fails to explain sufficiently a difference between the space that
separates the external surface of the housing of the hearing aid of Sauer with
the wall of the ear canal and the claimed “open passageway.” To the
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contrary, the space disclosed by Sauer appears to be identical to the claimed
“open passageway.”
Claim 1 also recites at least one flexible insert comprising a hub
portion and an outer portion that provides an “open area” to create a sound
path extending through the “open passageway” and the “open area.” The
Examiner finds that Brown discloses these features. Final Act. 5–6.
Specifically, the Examiner explains that Brown discloses a “flexible insert
(coupler) (Figs. 2–5 generally) comprising a hub portion (34) and an outer
portion (cap 36) adjacent to the hub portion” that is “attached to a tip formed
at a receiver end of the case (46),” “providing an open area (venting system)
when mounted against a wearer’s ear,” and creating “a sound path . . . to
allow dissipation of acoustic energy responsible for occlusion effects.” Final
Act. 5–6 (citing Brown 4:61–65, Figs. 2–5, claim 6).
Patent Owner argues that “[t]he Examiner admits that Brown does not
teach the open area limitation” and that “Brown is silent as to open area.”
App. Br. 14, 21. Patent Owner is mistaken. As described above, the
Examiner explains that Brown, in fact, discloses the “open area.” For
example, the Examiner finds that Brown discloses “an outer portion (cap
36)” and “an open area (venting system).” Final Act. 5–6 (citing Brown
4:65–65, Figs. 2–5, claim 6). As the Examiner describes, Brown discloses a
flexible insert with an “inner portion” (i.e., “snap ring 34” – Brown 1:51,
Figs. 2, 5) and an “outer portion (cap 36)” (Brown 6:5, Figs. 2, 5) that forms
an open area (the “venting system” – i.e., system including “sound apertures
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44” within the “outer portion (cap 36)” that “allows the sound . . . to pass
through . . . to the ear canal” – Brown 6:6–11). Patent Owner does not
allege or demonstrate persuasively a substantive difference between the
“open area (venting system)” of Brown and the “open area,” as recited in
claim 1. We are not persuaded by Patent Owner’s argument.
Patent Owner also argues that “[t]he Examiner also admits that the
outer portion with the open area of claim 1 is not taught in Brown.” App.
Br. 14. Patent Owner is mistaken. As described above, the Examiner
explains that Brown, in fact, discloses the “outer portion,” as recited in claim
1. We are not persuaded by Patent Owner’s argument.
Patent Owner argues that “[t]here is no sound path . . . in Brown.”
App. Br. 17. Claim 1 recites a sound path extending through the at least one
open passageway and said open area. As discussed, Brown discloses “sound
apertures 44” that “allows the sound . . . to pass through . . . to the ear canal”
and that “sound apertures 44 provide a pathway for . . . diffusion of . . .
accumulated acoustical energy, as indicated by the arrows 48 [of Fig. 8].”
Figure 8 of Brown discloses that sound (i.e., “acoustical energy”) passes
through the open passageway (i.e., the space separating the external surface
of the receiver module) and the open area (i.e., the system including “sound
apertures 44”) Brown 8:24–26, Fig. 8. Hence, sound extends through an
open passageway and open area (to create a “sound path”).

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Claim 1 also recites that the “open area” defined by the outer portion
(of the flexible insert) ranges from about 5 to 70%. Claim 1 does not recite a
specific region or area of which the “open area” defines “5 to 70%.” In
other words, claim 1 does not recite a specific limitation relative to the size
of the “open area.” In any event, as previously discussed, the Examiner
finds that Brown discloses an “open area (venting system)” that is “sized so
as to minimize occlusion” and that it would have been obvious to one of
ordinary skill in the art to have determined a desired size of the “open area”
“through routine experimentation.” Final Act. 6–7.
Patent Owner argues that “[t]he Examiner doesn’t say how one of
skill in the art would get to the 5% limitation,” that “[i]t is error for the
Examiner to baldly conclude that the venting by arrows 48 [of Brown] could
be modified to be 5% of the acoustical coupling,” and “Brown is silent as to
the vent size.” App. Br. 18, 21. As discussed above, claim 1 does not recite
a specific limitation relative to the size of the “open area.” To the extent that
claim 1 was intended to recite that the open area must range from about 5 to
70% of an unspecified area so as to minimize occlusion (we note, however,
that claim 1 does not recite this limitation), as the Examiner appears to
assume, we agree with the Examiner that it would have been obvious to one
of ordinary skill in the art to have determined desired specifications (e.g., to
minimize occlusion – see further discussion below) “through routine
experimentation.” See In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[I]t is
not inventive to discover the optimum or workable ranges by routine
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experimentation.”); KSR, 550 U.S. at 421 (“A person of ordinary skill is also
a person of ordinary creativity, not an automaton.”).
Given the fact that claim 1 fails to recite an area of which the open
area occupies “5 to 70%” (and, therefore, fails to recite a limitation on the
dimensions or sizing of the “open area”), we agree with Examiner’s apparent
presumption that one of skill in the art would have assumed that the
dimensions of the “open area” would have been chosen based on minimizing
occlusion, if one of skill in the art would have assumed anything at all
regarding the sizing of the “open area.” This is particularly true given the
fact that the Specification discloses that the size of the “open area” is
selected based on minimizing an “occlusion effect” and that using different
percentages of an “open area” and asking users about their experience
indicated that with “about 40% open area after being mounted,” “[t]he
wearer [of the hearing device] . . . commented that he could hear more
naturally not hearing his own voice when he talked” and that “about a 10-
60% open area and more preferably 25-50% open area . . . reduc[ed]
complaints involving occlusion.” The ’978 patent 6:51–55, 7:19–22.
Notably, the Specification discloses that the “percentage” is determined
based on minimizing the occlusion effect but does not disclose (and the
claims do not recite) a specific area or dimension from which to base the
“percentage.” In other words, the Specification also fails to disclose a
specific size of the “open area.”
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Brown also discloses that one of ordinary skill in the art would have
understood the need “for control of the so-called occlusion effect” by
providing a sound path (of unspecified size) through an open area and
Bauman ’086 discloses performing studies comparing multiple groups of
users of hearing devices for the management of the “occlusion effect”
(using a similar technique as disclosed in the Specification of asking users
about their experience). Therefore, one of skill in the art would have
understood the need for addressing the known problem of the “occlusion
effect” in hearing aids (as disclosed by both Brown and Bauman ’086) and
would have further understood a known methodology (studies) for testing
hearing devices of varying specifications (e.g., by asking users about their
experience) to determine a range of desired specifications (e.g., Bauman
’086). Brown 8:4–5, 19–20.
In addition, the Examiner finds that each of Fretz, Bauman ’076, and
Bauman ’086 discloses a flexible insert with an “open area” and that
Bauman ’086 further discloses an “open area of the passage way in terms of
percentage of the [hearing aid] relative to the diameter of the ear canal,
wherein the relative diameter ranges included . . . less than the diameter of
the user’s ear canal, less than half the diameter of the user’s ear canal, less
than 20% of the diameter of the user’s ear canal.” Final Act. 7–9 (citing
Fretz Fig. 27 (a “dome shaped insert . . . [with] multiple vent holes (109) are
located in an outer portion of the tip and a bladed fan-shaped tip (Fig. 13)
including slots (54)”), Bauman ’076 3:8–22 (a “suspending mechanism
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[having] four flexible . . . arms . . . [that] provides open areas”); Bauman
’086 1:61–65, 6:11–23, 7:52–8:3, Figs 11–13, 18–20 (a “flexible insert (88)
attached to the case and defining an open area” and “minimiz[ing] the . . .
occlusion effect”)).
Patent Owner argues that it would not have been obvious to one of
ordinary skill in the art to have combined the teachings of Brown, Bauman
’086, Bauman ’076, and Fretz because such a combination “would destroy
the necessary sealing required by Brown.” App. Br. 19. We are not
persuaded by Patent Owner at least because, contrary to Patent Owner’s
assertion, Brown does not disclose that “sealing” is either “necessary” or
“required.” Rather, Patent Owner cites an example disclosed in Brown that
the “cap portion 36 conforms to the shape of the ear canal 10, lightly
contacting the canal walls and acoustically sealing the ear canal.” App. Br.
19 (citing Brown 9:3–5). Aside from the fact that the cited example of
Brown is merely one example that does not disclose that “sealing” is either
“necessary” or “required” or otherwise mandatory, as previously noted,
Brown explicitly discloses the opposite – i.e., providing “a vent across the
hearing aid” including “sound apertures” and “diffusion of . . . accumulated
acoustical energy, as indicated by the arrows 48 [of Fig. 8].” Brown 8:19–
20, 24–26. Patent Owner does not explain sufficiently how “sealing” is
supposedly “required” and/or “necessary” in Brown when Brown explicitly
discloses a “vent” for sound that allows sound energy to “diffuse.”
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Patent Owner argues that it would not have been obvious to one of
ordinary skill in the art to have “tak[en] a piece of a . . . hearing device [of
Fretz, Bauman ’076, or Bauman ’086] and us[ed] it in a . . . hearing device
[of Brown].” App. Br. 19. To the extent that Patent Owner argues that it
would not have been obvious to one of ordinary skill in the art to have
bodily incorporated any of the hearing aid inserts of any of Fretz, Bauman
’076, or Bauman ’086 into the hearing aid of Brown, we note that “[t]he test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference. Rather, the
test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
425 (CCPA 1981).
As the Examiner indicates and as previously discussed, it would have
been obvious to one of ordinary skill in the art, being of ordinary creativity
and not being an automaton, to have combined a known hearing aid with an
“open passageway” and a flexible insert creating a sound path through the
open passageway and “open area” formed by the flexible insert (i.e., Brown)
with the known feature of flexible inserts of varying dimensions, sizes, or
specifications (any of Brown, Fretz, Bauman ’076, or Bauman ’086) in order
to address the known problem of the “occlusion effect” in hearing aids (any
of Brown, Fretz, Bauman ’076, or Bauman ’086) to achieve the known,
predictable, and expected result of a hearing aid with an insert of a desired
dimension, size, or specification (any of Brown, Fretz, Bauman ’076, or
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Bauman ’086). Hence, as the Examiner states, the combination of the
known components to achieve a predictable, expected result would have
resulted in, at best, “an obvious and predictable design choice.” Final Act.
8:1–3. “The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. at 416.
Claim 23 recites that the flexible insert is sized to provide a gap not
exceeding either 4mm, 2mm, or 1mm. The Examiner finds that “the choice
of a particular gap along the length of the case would have been a matter of
routine design choice in order to optimize the functionality and comfort of
the device.” Final Act. 14. We agree with the Examiner. For example, as
previously discussed, Brown discloses providing a “gap” (e.g., providing a
space between the external surface of the intra-canal receiver module of the
acoustic coupler and the wall of the ear canal – Brown Fig. 9) and, as the
Examiner indicates, “it is not inventive to discover the optimum or workable
ranges by routine experimentation.” See Aller, 220 F.2d at 456; see also
KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”).
Patent Owner argues that Brown fails to disclose the features recited
in claim 23 because, according to Patent Owner, “in Brown, the case sits
outside the ear canal and there is no concept of sizing the acoustic coupler in
Brown to create an opening between the ear canal and the case.” App. Br.
26. We disagree with Patent Owner.
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To the extent that Patent Owner’s assertion that Brown discloses a
“case [that] sits outside the ear canal” is somehow relevant to whether
Brown discloses a “gap” as recited in claim 23, we note that, as previously
discussed, Brown discloses that the intra-canal receiver module is situated
within the ear canal and not “outside the ear canal” as Patent Owner alleges.
See e.g., Brown 4:35–38 (“an intra-canal receiver module . . . to be inserted
deeply into the ear canal”). Also, as previously discussed, contrary to Patent
Owner’s assertion, Brown discloses providing “an opening between the ear
canal and the case.” See e.g., Brown Fig. 9 (disclosing a space between the
external surface of the intra-canal receiver module of the acoustic coupler
and the wall of the ear canal).
Patent Owner argues that determining a range of sizes of the “gap,” as
recited in claim 23 would have been more than a mere design choice or
would have entailed more than mere “routine experimentation” because,
according to Patent Owner, the cited references fail to disclose “a
relationship between a gap along the length of the case and a seal . . . of
Brown.” App. Br. 27. We are not persuaded by Patent Owner’s argument at
least because Patent Owner has not sufficiently established relevance
between whether the references disclose a “relationship between a gap . . .
and a seal . . . of Brown” and whether the determination of a range of sizes
of the “gap” would have been no more than a mere design choice achieved
by no more than “routine experimentation” by one of ordinary skill in the art
of ordinary creativity and not an automaton. For example, as previously
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discussed, Brown discloses a receiver module (i.e., a “case”) and a gap that
is formed substantially between the entire surface of the case and the ear
canal, “a mechanism for control of the so-called occlusion effect,” that
“[f]eedback is a particular problem for users of canal devices,” and that
“gaps between the earpiece and the wall of the ear canal . . . [are] a
significant source of acoustic feedback.” Brown 2:17–19, 27–28, 8:4–5, Fig.
9. Hence, Brown discloses that one of ordinary skill in the art would have
understood the known problem of an “occlusion effect” if no gap is present
between a case of a hearing aid and the wall of the ear canal and would also
have understood the known problem of “feedback” in the presence of “gaps”
between the case of a hearing aid and the wall of the ear canal.
Likewise, Bauman ’086 discloses examples of a “receiver unit
configured and positioned within a user’s ear canal so as to minimize . . .
occlusion effect” and testing of various configurations including a receiver
unit with a “maximum overall dimension or diameter . . . that is less than the
maximum . . . diameter of the user’s ear canal,” “less than half the maximum
lateral dimension or diameter of the user’s ear canal,” “less than twenty
percent of the maximum lateral dimension or diameter of the user’s ear
canal,” and/or “less than ten percent of the maximum lateral dimension or
diameter of the user’s ear canal.” Bauman ’086 1:63–65, 2:12–30, 7:52 –
8:3. Bauman ’086 also discloses that “preventing sounds generated within
the ear canal from escaping” results in “feedback reduction.” Bauman ’086
6:24–27. Hence, Bauman ’086 confirms that one of ordinary skill in the art
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would have understood the problems of the “occlusion effect” and
“feedback” and further discloses testing methodologies to determine an
optimal range of sizes of a gap between a case of a hearing aid and the wall
of the ear canal to address the occlusion effect and feedback.
As previously discussed, Bauman ’086 also discloses routine testing
methodologies that would have been known to one of skill in the art to
determine an optimal size of a gap between a case of the hearing aid and the
wall of the ear canal, the gap having been known to one of skill in the art to
be sized to reduce the known problems of hearing aids including the
occlusion effect and feedback. In other words, as the Examiner explains,
determining the general range of sizes, absent any structural differences
between the structure of the claimed invention and that disclosed in the prior
art is simply routine optimization of the invention suggested by the prior art.
Claim 27 recites “at least one flexible insert” and “at least another
flexible insert.” The Examiner explains that “providing inserts of different
sizes . . . is standard practice in the art,” “the initial testing of the user’s
hearing . . . generally include[s] the user testing the hearing aid with a
variety of different inserts of various sizes,” and, in any event, Fretz “points
out . . . the differences between the different kinds of tips.” Ans. 35. Patent
Owner argues that it would not have been obvious to one of ordinary skill in
the art to have provided more than one “flexible insert” in a hearing aid kit
because there is no “basis for the Examiner to say that . . . the user is
provided with different inserts.” Reply Br. 30. We agree with the Examiner
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that one of ordinary skill in the art having ordinary creativity and not being
an automaton would have understood that the hearing aid disclosed by
Brown as having “a series of alternate embodiments” (Brown 9:11) with
varying structures to have provided various corresponding structures (i.e.,
more than one insert) in a kit. In any event, “mere duplication of parts has
no patentable significance unless a new and unexpected result is produced.”
See In re Harza, 274 F.2d 669, 671 (CCPA 1960). Patent Owner does not
allege or demonstrate persuasively that including an additional insert in a kit
would have resulted in a “new and unexpected result” or what that
hypothetical result might have been. Nor do we independently determine
such a “new and unexpected result.” Patent Owner provides similar
arguments in support of claim 38. App. Br. 28. We are not persuaded by
Patent Owner’s arguments with respect to claim 38 for similar reasons set
forth for claim 27.
Regarding claim 47, Patent Owner argues that “the Examiner provides
no reasoning whatsoever as to how the foam element of [Fretz] is to replace
the acoustic coupler of Brown” and that, in any event, replacing the acoustic
coupler of Brown by bodily incorporating the “foam element” would
“defeat[] the entire purpose of Brown’s invention.” Hence, Patent Owner
alleges that it would not have been obvious to one of ordinary skill in the art
to have combined the teachings of Brown and Fretz because there is
allegedly no reason to bodily incorporate the “foam element” of Fretz into
the system of Brown and such a bodily incorporation of the foam element
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into Brown would supposedly “defeat[] the entire purpose of Brown.” App.
Br. 29. However, “the test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference. Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d at 425. Nor does Patent Owner assert or demonstrate
persuasively that using a “foam element” would have somehow defeated the
purpose of providing a hearing aid that aids hearing (i.e., the “entire
purpose” of Brown).
Regarding claim 63, Patent Owner argues combining the teachings of
Brown and Bauman ’076 would have “destroy[ed] the seal function that
Brown seeks as part of Brown’s hearing device.” App. Br. 30. In other
words, Patent Owner argues that it would not have been obvious to one of
ordinary skill in the art to have combined the teachings of Brown and
Bauman ’076 because doing so would have defeated the intended purpose of
Brown, the presumed intended purpose of the hearing aid of Brown
allegedly being to maintain a “seal.” We are not persuaded by Patent
Owner’s argument at least because Patent Owner does not demonstrate
persuasively that the intended purpose of the hearing aid of Brown is to
maintain a seal. See the above discussion.
Also, one of skill in the art would have understood that the intended
purpose of a hearing aid is to aid hearing rather than maintaining a “seal.”
Patent Owner fails to demonstrate persuasively that combining teachings of
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the hearing aid of Bauman ’076 or Bauman ’086 would have somehow
defeated the intended purpose of aiding hearing of Brown, especially given
the fact that each of Bauman ’076, Bauman ’086, and Brown each disclose
hearing aids with the same intended purpose of aiding hearing.
Claim 15 recites “additional mounting means” to support the hearing
device within the ear canal. Claim 16 recites that the “additional mounting
means” comprises “flexible ribs.” Patent Owner argues that the combination
of Brown and Saxton fails to disclose “additional mounting means” because,
according to Patent Owner, “Brown already forms a seal with the acoustic
coupler.” App. Br. 31. We are not persuaded by Patent Owner’s argument
because providing additional mounting for a mounted hearing aid (e.g., of
Brown) would have been a matter of common sense to one of ordinary skill
in the art if the mounted hearing aid needed such additional mounting. This
would have been particularly true given the fact that one of ordinary skill in
the art would have had ordinary creativity and would have been considered
to be more than a mere automaton. KSR, 550 U.S. at 421 (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”). In
any event, Patent Owner does not correlate sufficiently the hearing aid of
Brown “form[ing] a seal” to whether it would have been obvious to one of
ordinary skill in the art to have provided additional mounting in a hearing
aid.
Patent Owner also argues that the combination of Brown and Saxton
fails to disclose additional mounting that comprises “flexible ribs.” As
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Reexamination Control 96/000,138
Patent 8,477,978 B2

19
discussed above, Brown discloses an “insert” with an “outer portion” that
comprises flexible ribs. See e.g., Brown 9:5, Fig. 9 (“structural ribs 40” on
the “compliant cap portion 36”). Patent Owner does not explain sufficiently
a difference between the “ribs” on the “compliant” cap portion (of Brown)
and the “flexible ribs,” as recited in clam 16.
Claim 17 recites “active feedback reduction.” The Examiner finds
that the combination of Brown and Kuo discloses this feature. See e.g.,
Final Act. 16; Ans. 13. We agree with the Examiner. As the Examiner
indicates, Kuo discloses the known feature of feedback reduction in hearing
aids (Kuo Abstract). Also, Brown confirms that the problem of “feedback”
in hearing aids was known in the art. See e.g., Brown 2:17–19, 27–28, 8:4–
5, Fig. 9 (“[f]eedback is a particular problem for users of canal devices”). It
would have been obvious to one of ordinary skill in the art to have combined
the known problem of feedback in hearing aids (Brown or Kuo) with the
known feature of feedback reduction in hearing aids (Kuo) to achieve the
predictable and expected result of feedback reduction in hearing aids (e.g.,
Kuo). “The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. at 416.
Patent Owner argues that it would not have been obvious to one of
ordinary skill in the art to have combined known feedback reduction in a
hearing aid to address the known issue of feedback in hearing aids because,
according to Patent Owner, Brown discloses that “there is no need for anti-
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Reexamination Control 96/000,138
Patent 8,477,978 B2

20
feedback”. App. Br. 31. We are not persuaded by Patent Owner’s argument
at least because the issue before us is whether it would have been obvious to
an ordinarily skilled artisan to have combined the teachings of the cited
references, and not whether it would have been needed to do so. In any
event, Patent Owner has not demonstrated persuasively that Brown, in fact,
discloses that “there is no need for anti-feedback” in hearing aids. In fact, as
previously discussed, Brown explicitly discloses that feedback is a known
issue in hearing aids.
Patent Owner does not provide additional arguments in support of the
remaining disputed claims.

SUMMARY
We affirm the Examiner’s rejections of claims 1–6, 9, 10, 12–39, 41–
47, 49–58, and 63–70.

AFFIRMED