Starkey Laboratories, Inc.

Patent Trials and Appeals Board

Nov 8, 2021

2020006052 (P.T.A.B. Nov. 8, 2021)

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.
15/429,898 02/10/2017 Jay M. Stewart ST0716US1/0532.000716US01 8351
142777 7590 11/08/2021
MRG/Starkey
c/o Mueting Raasch Group
111 Washington Ave. S., Suite 700
Minneapolis, MN 55401
EXAMINER
ETESAM, AMIR HOSSEIN
ART UNIT PAPER NUMBER
2652
NOTIFICATION DATE DELIVERY MODE
11/08/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@starkey.com
ptodocketing@mrgs.com
starkey@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAY M. STEWART, WESTLEY G. GENTRY,
MICHAEL K. SACHA, and CRAIG C. FELDSIEN
Appeal 2020-006052
Application 15/429,898
Technology Center 2600

Before BRADLEY W. BAUMEISTER, DAVID J. CUTITTA II, and
PHILLIP A. BENNETT, Administrative Patent Judges.

CUTITTA, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–13.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies the real party in interest as Starkey Laboratories, Inc.
Appeal Brief filed March 16, 2020 (“Appeal Br.”) at 2.
2 Appellant indicates claims 14–20 have been allowed. Appeal Br. 4.
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Application 15/429,898

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CLAIMED SUBJECT MATTER
Summary
The subject matter of Appellant’s application relates to “a hearing
assistance device that includes a housing having a shell and a frame disposed
at least partially within the shell. An inner surface of the shell and at least a
portion of the frame define a void” and “an indentation hardness value of the
frame is greater than an indentation hardness value of the shell.” Spec. 2:1–
4.3 According to Appellant, in the hearing aid, the “frame can provide
integrity to the shell while allowing one or more portions of the shell to
collapse to better conform to an ear canal of a wearer.” Id. at 1:27–29.
Exemplary Claims
Claim 1 is the only independent claim. Claims 1 and 12, reproduced
below with limitations at issue italicized, exemplify the claimed subject
matter:
1. A hearing assistance device, comprising:
a housing comprising a shell and a frame disposed at
least partially within the shell,
wherein an inner surface of the shell and at least a
portion of the frame define a void, and further wherein an
indentation hardness value of the frame is greater than an
indentation hardness value of the shell; and
hearing assistance components disposed at least partially
within the void.

3 In addition to the Appeal Brief noted above, we refer to: (1) the original
Specification filed February 10, 2017 (“Spec.”); (2) the Final Office Action
mailed September 19, 2019 (“Final Act.”); (3) the Examiner’s Answer
mailed June 24, 2020 (“Ans.”); and (4) the Reply Brief filed August 24,
2020 (“Reply Br.”).
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12. The device of claim 11, wherein the indentation
hardness value of the frame is at least about 50 Shore D and no
greater than about 60 Rockwell C.
Appeal Br., Claims Appendix.

REFERENCES AND REJECTIONS
The Examiner rejects claims 1–11 and 13 under 35 U.S.C. § 103 as
unpatentable over the teachings of Stonikas et al. (US 7,130,437 B2, issued
Oct. 31, 2006) (“Stonikas”). Final Act. 3–7.
The Examiner rejects claim 12 under 35 U.S.C. § 103 as unpatentable
over the combined teachings of Stonikas and Laas et al. (US 2011/0281965
A1, published Nov. 17, 2011) (“Laas”). Id. 7.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). We
disagree with Appellant that the Examiner errs and we adopt as our own the
findings and conclusions set forth by the Examiner to the extent consistent
with our analysis herein. Final Act. 3–7; Ans. 3–5.
Rejection of Claim 1 over Stonikas
Independent claim 1 recites, in part, “a housing comprising a shell and
a frame disposed at least partially within the shell, wherein an inner surface
of the shell and at least a portion of the frame define a void.” Claims App’x.
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The Examiner finds Stonikas’ discussion of a hearing aid including a
matrix disposed inside a shell having a skin teaches or suggests this
limitation. Final Act. 3; Ans. 3–5 (citing Stonikas Figs. 5 and 5A-2).
Appellant argues that Stonikas “does not teach or suggest that the
alleged hearing assistance components are disposed at least partially within a
void defined by an inner surface of the skin 12 and at least a portion of the
matrix 18” because “[i]nstead, as can be seen, e.g., in FIG. 5A–2, voids are
formed within the matrix 18 and not between the matrix and the skin 12.”
Appeal Br. 8.
We are unpersuaded by Appellant’s argument. Stonikas’ Figure 5,
reproduced below with annotations added, illustrates a hearing aid that
includes a housing with a shell and a frame.

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Figure 5 of Stonikas depicts hearing aid 10 including an outer shell
having skin 12 with exterior periphery 12d, an interior “region 14 [that] is at
least partly filled with a compressible matrix 18,” and processing circuitry
16b. Stonikas 7:8–45. Referring to Figure 5, the Examiner finds that
Stonikas’ hearing aid 10 includes a frame (e.g., matrix 18) disposed at least
partially within the shell (skin 12), wherein an inner surface of the shell and
at least a portion of the frame define a void. Ans. 3. We agree with the
Examiner’s finding, noting that annotated arrow in Figure 5 above clearly
shows matrix 18 and skin 12 defining a void.
Appellant’s argument that in Stonikas’ “FIG. 5A–2, voids are formed
within the matrix 18 and not between the matrix and the skin 12,” is
unpersuasive for at least two reasons. Appeal Br. 8. First, Appellant’s
argument based on Figure 5A–2 is not responsive to the Examiner’s findings
based on Stonikas’ Figure 5, discussed above. Ans. 3–4.
Second, as the Examiner notes, Appellant’s argument that “voids are
formed within the matrix 18 and not between the matrix and the skin 12” is
not commensurate with the scope of claim 1, which does not require that the
void is disposed between the shell and the frame. See Ans. 4 (“Examiner
would like to point out that the word ‘between’ is being used in the
arguments solely and is not included in the claim language”). Rather,
claim 1 recites that “an inner surface of the shell and at least a portion of the
frame define a void.” Thus, Appellant’s argument fails because it is not
commensurate with the scope of the claim. See In re Self 671 F.2d 1344,
1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because
. . . they are not based on limitations appearing in the claims.”).
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Appellant, therefore, has not demonstrated why Stonikas’ interior
region 14, defined by an inner surface of skin 12 and at least a portion of
matrix 14, fails to teach or suggest a void, as claimed. Stonikas 7:8–20 and
Fig. 5.
Appellant’s argument that Stonikas “teaches away from having voids
formed between the skin 12 and the matrix 18” is unpersuasive for similar
reasons because this argument, based on Figure 5A–2 (Appeal Br. 8; Reply
Br. 2 (citing Stonikas 7:43–49), is not responsive to the Examiner’s findings,
which are based on Stonikas’ Figure 5 (Ans. 3–4). Moreover, Appellant’s
conclusion that modifying Stonikas “such that voids are defined between the
matrix 18 and the skin 12 would prevent the matrix from continually
imposing expansive forces on such skin” is unpersuasive for lack of
evidence, particularly in view of Appellant’s failure to persuasively rebut the
Examiner’s finding that Stonikas teaches the claimed void. Mere attorney
argument and conclusory statements unsupported by factual evidence are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997).
Independent claim 1 further recites, in part, “hearing assistance
components disposed at least partially within the void.” Claims App’x.
The Examiner relies on Stonikas’ processing circuitry 16b to teach or
suggest the claimed hearing assistance components. Ans. 3–4. In particular,
the Examiner finds that processing circuitry 16b is disposed at least partially
within the void defined by skin 12 and matrix 18, as illustrated in Stonikas’
Figure 5. Id.
Appellant argues that “[e]ven if Stonikas et al. describes voids that are
defined by the inner surface of the skin 12 and the matrix 18 (e.g., the space
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at the lower right portion of the device that is indicated with outwardly-
pointing arrows), no alleged hearing assistance components are disposed
within such voids” and “[a]s a result, Stonikas et al. as alleged does not
teach or suggest hearing assistance components disposed at least partially
within a void.” Appeal Br. 8–9. Here also, Appellant’s argument based on
Figure 5A–2 is not responsive to the Examiner’s findings, which are based
on Stonikas’ Figure 5 as discussed above. Ans. 3–4. Appellant, therefore,
has not demonstrated error in the Examiner’s finding that processing
circuitry 16b is disposed at least partially within the void defined by skin 12
and matrix 18, as illustrated in Stonikas’ Figure 5. Id. 4.
Independent claim 1 further recites, in part, “wherein an indentation
hardness value of the frame is greater than an indentation hardness value of
the shell.” Claims App’x.
The Examiner relies on Stonikas’ discussion of hardness parameters
to teach or suggest this limitation. Ans. 4 (citing Stonikas 4:5–10); Final
Act. 4–5. The portion of Stonikas cited by the Examiner discloses that “[t]he
skin can exhibit a hardness parameter in a range of 4–40 Shore A. The
internal matrix can exhibit a hardness parameter on the order of less than
twenty Shore A.” Stonikas 4:5–9.
Appellant argues that Stonikas “does not teach or suggest the recited
relationship between the hardness values of the matrix 18 and the skin 12.”
Appeal Br. 9; Reply Br. 2. “Instead, the reference merely states potential
hardness parameters for the matrix 18 and skin 12 without describing any
relationship between such values.” Appeal Br. 9.
The Examiner responds by noting that the “frame is disclosed to have
hardness values below 20 and the shell 4–40. The reference does not teach
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against any combination of values and clearly an ordinary skilled in the art
would be motivated to pick any combination of these values so that the shell
is softer than the frame.” Ans. 4.
We are unpersuaded by Appellant’s argument that “one of skill in the
art would not find that the missing recited relationship between the hardness
values for the matrix 18 and skin 12 is present in the reference.” Reply Br. 3.
Stonikas discloses that the hardness of the frame may be up to 20 and the
hardness of the skin may be as little as 4. Stonikas 4:5–9. Accordingly,
Stonikas teaches or at least suggests that a hardness value of the frame is
greater than a hardness value of the skin, particularly in view of the
Examiner’s finding that Stonikas does not teach against any particular
combination of values.
Appellant further argues that the “Examiner has failed to provide any
evidence on the record that shows that one of skill in the art would be
motivated to modify Stonikas.” Reply Br. 3.
Appellant’s argument does not address the motivation provided by the
Examiner that one of “ordinary skilled in the art would be motivated to pick
any combination of these values so that the shell is softer than the frame.”
Ans. 4. This would allow one “to achieve the maximum comfort level for the
user.” Final Act. 5. The Examiner articulates a reason to choose hardness
values disclosed in Stonikas that is rational on its face and supported by
evidence drawn from the record. Appellant, in turn, has not demonstrated
that the Examiner’s proffered selection of hardness values would have been
“uniquely challenging or difficult for one of ordinary skill in the art.” See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR, 550 U.S. at 418). Still further, we disagree that Stonikas
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would have required modification to teach the limitation at issue because
Stonikas expressly discloses ranges that teach a hardness value of the frame
may be greater than a hardness value of the skin. Stonikas 4:5–9.
For these reasons, Appellant does not persuade us of reversible error
in the Examiner’s obviousness rejection of independent claim 1. We,
therefore, sustain the Examiner’s rejection of that claim, as well as the
rejection of claims 2–11 and 13, which Appellant does not argue separately.
Appeal Br. 10.
Rejection of Claim 12 over Stonikas and Laas
Dependent claim 12 recites, in part, “wherein the indentation hardness
value of the frame is at least about 50 Shore D and no greater than about 60
Rockwell C.” Claims App’x.
The Examiner relies on Stonikas to teach the limitation, but notes
“Stonikas does not specifically disclose that the hardness of the frame is at
least 50D.” Final Act. 7. The Examiner finds “Laas discloses a foam of
hardness of 60D to be used for potting in electronic devices.” Id. citing Laas
¶¶ 105, 107). The Examiner determines that motivation existed to apply the
teachings of Laas to Stonikas. Id. In particular, the Examiner reasons:
Since both Stonikas and Laas disclose a foam material to
be use as filling inside of an electronic device, it would have been
obvious to one of ordinary skilled in the art before the effective
filling date of the claimed invention to utilize the foam of Laas
in the teachings by Stonikas. The motivation for this would have
been providing a harder apparatus based on user needs and
desires for the users requiring specific amount of device
flexibility based on personal preferences.
Id.
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Appellant challenges the Examiner’s proposed motivation, arguing
that Laas describes very rigid potting compounds while Stonikas require that
the matrix 18 be compressible, and “[o]ne of skill in the art would not,
therefore, be motivated to replace the compressible matrix 18 of Stonikas et
al. with the rigid potting foam of Laas et al. because doing so would change
the principle of operation of Stonikas et al.” Appeal Br. 11 (citing In re
Ratti, 270 F.2d 810, 813 (CCPA 1959)); Reply Br. 4–5. According to
Appellant:
By replacing the compressible matrix 18 of Stonikas et al. with
the rigid potting foam of Laas et al., the matrix 18 would no
longer compress and expel air from within the sheath 12 upon
insertion into the ear canal. Nor would the matrix 18 continually
impose expansive forces on the skin 12 to create a seal between
the exterior periphery 12d of the skin 12 and the adjacent ear
canal.
Id. (citing Stonikas 7:39–46).
The Examiner responds that Stonikas “does not teach against any
particular hardness value.” Ans. 5. According to the Examiner, the
“requirement pointed out by the Appellant can [be] achieved via various
ways. Making the shell smaller and tighter such that there is a continu[ou]s
outward force between the frame and the shell. The hardness value of the
frame is not dictating this feature.” Id.
Appellant’s argument that the Examiner’s reliance on the combined
teachings of the references would fundamentally change Stonikas’ principle
of operation is not supported by evidence found in the record and is, instead,
supported only by attorney argument, which “cannot take the place of
evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). As a result,
Appellant fails to demonstrate that matrix 18 would no longer compress and
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expel air from within the sheath 12 or continually impose expansive forces
on the skin 12 when using a harder foam in matrix 18 as taught by Laas.
Nor has Appellant provided sufficient evidence establishing Stonikas’
principle of operation. As a result, Appellant fails to demonstrate why the
constraints of MPEP § 2143.01 and In re Ratti apply here. We, therefore,
sustain the Examiner’s obviousness rejection of claim 12.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–11, 13 103 Stonikas 1–11, 13
12 103 Stonikas, Laas 12
Overall
Outcome
1–13

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED