Ex Parte 7,016,512 et al

Board of Patent Appeals and Interferences

Jul 13, 2012

95001022 (B.P.A.I. Jul. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

K/S HIMPP
Requester, Cross-Appellant, and Respondent

v.

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

Appeal 2012-004028
Reexamination Control 95/001,022
Patent 7,016,512 B11
Technology Center 3900
____________

Before STEPHEN C. SIU, ROBERT A. CLARKE, and
JOSIAH C. COCKS, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON APPEAL

1 The patent in this reexamination appeal proceeding (the “‘512
Patent”) issued to Feeley et al. on March 21, 2006.
Appeal 2012-004028
Reexamination Control 95/001,022
Patent 7,016,512 B1

2
A. STATEMENT OF THE CASE
Summary
Patent Owner Hear-Wear Technologies, L.L.C. (“Hear-Wear”)2
appeals under 35 U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to
reject claims 1, 2, 4, 5-8, and 10-12 based on prior art.3 Third-Party
Requester K/S HIMPP4 (“HIMPP”) contends that the Examiner’s decision to
reject claims 1, 2, 4, 5-8, and 10-12 should be affirmed.5
HIMPP cross-appeals under 35 U.S.C. §§ 134(c) and 315(b) the
Examiner’s refusal to reject claims 1-12 based on certain alternative prior art
grounds.6 Hear-Wear urges that the Examiner’s decision not to enter the
alternative prior art rejections should be affirmed.7

2 See Patent Assignment Abstract of Title, Reel 014457 Frame 0097
which was entered into the record of this proceeding as “Title Report” on
March 3, 2008.

3 See “Amended Appeal Brief of Appellant Hear-Wear, L.L.C. Under
37 CFR 41.67(D)” filed July 8, 2011 (“Hear-Wear’s App. Br.”) and Hear-
Wear’s “Patent Owner Rebuttal Brief Under 37 CFR 41.71” filed September
19, 2011 (“Hear-Wear’s Reb. Br.”).

4 “HIMPP” stands for “Hearing Instrument Manufacturers Patent
Partnership.” See “Request for Inter Partes Reexamination of U.S. Patent
7,016,512” filed February 26, 2008.

5 See HIMPP’s “Third-Party Requester’s Respondent Brief Under 37
C.F.R. § 41.68” (“HIMPP’s Resp. Br.”).

6 See HIMPP’s “Third-Party Requester’s Brief on Appeal Under 37
C.F.R. § 41.67” filed June 14, 2011 (“HIMPP’s App. Br.”) and “Third-Party
Appeal 2012-004028
Reexamination Control 95/001,022
Patent 7,016,512 B1

3
We have jurisdiction under 35 U.S.C. §§ 134(b)-(c) and 315(a)-(b).
An oral hearing was conducted on April 11, 2012.
We summarize our decision as follows:
Appeal of Hear-Wear
We do not agree with the Examiner’s basis for rejecting claims 1, 2,
4-8, and 10-12. Accordingly, we reverse the Examiner’s decision to reject
claims 1, 2, 4-8, and 10-12.
Cross-Appeal of HIMPP
We conclude that the Examiner should have rejected claims 1, 2, 4-8,
and 10-12 over certain additional prior art references as urged by HIMPP.
Accordingly, we reverse the Examiner’s decision not to enter rejections to
claims 1, 2, 4-8, and 10-12 based on that prior art. We affirm the
Examiner’s decision not to enter rejections proposed by HIMPP to claims 3
and 9.
The Invention
Claim 1, which is illustrative of the appealed subject matter, reads as
follows (HIMPP’s App. Br., Claims App’x., p.1; Hear-Wear’s App. Br.,
Claims App’x., p. 1):
1. An at least partially in-the-canal module for a hearing aid
comprising:

Requester’s Rebuttal Brief Under 37 C.F.R. § 41.71” filed September 16,
2011 (“HIMPP’s Reb. Br.”).

7 See Hear-Wear’s “Patent Owner Respondent Brief Under 37 CFR
§ 41.68” filed July 14, 2011 (“Hear-Wear’s Resp. Br.”).

Appeal 2012-004028
Reexamination Control 95/001,022
Patent 7,016,512 B1

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a speaker module that generates audio signals from an electrical
driving signal, said speaker module having a tubular structure with a
diameter that is smaller than the canal, said speaker module including
an arcuate raised ridge; and

a cushion tip of elastic deformable material, said cushion tip
including a tubular body enclosing said speaker module that applies
an elastic force to said arcuate raised ridge to prevent removal of said
speaker module from said cushion tip, said tubular body being longer
than said speaker module to cause said cushion tip to deflect during
navigation through the canal, and wherein a tip portion of said cushion
tip possesses sufficient structural rigidity to prevent said speaker
module from being pushed through said cushion tip during navigation
through the canal, wherein during deflection said tip portion assumes
an offset angle relative to said tubular body and said speaker module.
The Prior Art
Baum 2,487,038 Nov. 8, 1949
Voroba et al. (“Voroba”) 4,870,688 Sep. 26, 1989
Reiter et al. (“Reiter”) 5,606,621 Feb. 25, 1997
Iseberg et al. (“Iseberg”) 5,887,070 Mar. 23, 1999
Leedom et al. (“Leedom”) 2002/0027996 Mar. 7, 2002
Oliveira EP 0 494 991 B1 Nov. 2, 1994
Shennib WO 99/07182 Feb. 11, 1999
The Adopted Rejections on Appeal
The Examiner rejected claims 1, 2, 4, and 5 under 35 U.S.C. § 102(b)
as anticipated by Shennib.
The Examiner rejected claims 6-8 and 10-12 under 35 U.S.C. § 103(a)
as unpatentable over Shennib and Reiter.

The Non-Adopted Rejections on Cross-Appeal
The Examiner declined to reject claim 3 under 35 U.S.C. § 102(b) as
anticipated by Shennib.
Appeal 2012-004028
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Patent 7,016,512 B1

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The Examiner declined to reject claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Shennib and Reiter.
The Examiner declined to reject claims 1-5 under 35 U.S.C. § 103(a)
as unpatentable over Shennib and Iseberg.
The Examiner declined to reject claims 6-12 under 35 U.S.C. § 103(a)
as unpatentable over Shennib, Reiter, and Iseberg.
The Examiner declined to reject claims 1-5 under 35 U.S.C. § 103(a)
as unpatentable over Shennib and Baum.
The Examiner declined to reject claims 6-12 under 35 U.S.C. § 103(a)
as unpatentable over Shennib, Reiter, and Baum.
The Examiner declined to reject claims 1-5 under 35 U.S.C. § 103(a)
as unpatentable over Shennib and Voroba.
The Examiner declined to reject claims 6-12 under 35 U.S.C. § 103(a)
as unpatentable over Shennib, Reiter, and Voroba.
The Examiner declined to reject claims 1-5 under 35 U.S.C. § 103(a)
as unpatentable over Shennib, Iseberg, and Voroba.
The Examiner declined to reject claims 6-12 under 35 U.S.C. § 103(a)
as unpatentable over Shennib, Reiter, Iseberg, and Voroba.
The Examiner declined to reject claims 1-5 under 35 U.S.C. § 103(a)
as unpatentable over Shennib and Leedom.
The Examiner declined to reject claims 6-12 under 35 U.S.C. § 103(a)
as unpatentable over Shennib, Reiter, and Leedom.
The Examiner declined to reject claims 1-5 under 35 U.S.C. § 103(a)
as unpatentable over Shennib and Oliveira.
Appeal 2012-004028
Reexamination Control 95/001,022
Patent 7,016,512 B1

6
The Examiner declined to reject claims 6-12 under 35 U.S.C. § 103(a)
as unpatentable over Shennib, Reiter, Oliveira.
The Examiner declined to reject claims 1-5 under 35 U.S.C. § 103(a)
as unpatentable over Shennib, Iseberg, and Baum.
The Examiner declined to reject claims 6-12 under 35 U.S.C. § 103(a)
as unpatentable over Shennib, Reiter, Iseberg, and Baum.
The Examiner declined to reject claims 1-5 under 35 U.S.C. § 103(a)
as unpatentable over Shennib, Iseberg, and Leedom.
The Examiner declined to reject claims 6-12 under 35 U.S.C. § 103(a)
as unpatentable over Shennib, Reiter, Iseberg, and Leedom.
The Examiner declined to reject claims 1-5 under 35 U.S.C. § 103(a)
as unpatentable over Shennib, Iseberg, and Oliveira.
The Examiner declined to reject claims 6-12 under 35 U.S.C. § 103(a)
as unpatentable over Shennib, Reiter, Iseberg, and Oliveira.
B. ANALYSIS
Hear-Wear appeals the Examiner’s decision adopting certain prior
rejections. HIMPP cross-appeals the Examiner’s decision not to adopt other
prior rejections. We evaluate first the merits of Hear-wear’s appeal.
APPEAL OF HEAR-WEAR
Issues
1. Did that Examiner correctly find that Shennib anticipates claims 1, 2,
4, and 5?
2. Did that Examiner correctly determine that claims 6-8 and 10-
12 would have been obvious in light of the teachings of Shennib and Reiter?
Appeal 2012-004028
Reexamination Control 95/001,022
Patent 7,016,512 B1

7
Discussion
Anticipation
Claim 1 is an independent claim and is directed to an “at least
partially in-the-canal module for a hearing aid.” (Hear-Wear’s App. Br.,
Claims App’x., p.1) The claim includes a “speaker module” with “an
arcuate raised ridge.” (Id.) The speaker module is enclosed by a “cushion
tip” with a tubular body which “applies an elastic force to said arcuate raised
ridge to prevent removal of said speaker module from said cushion tip.” (Id.)
At issue in connection with the Examiner’s anticipation rejection is the
requirement involving the application of “an elastic force.”
According to the Examiner, Shennib discloses a “completely-in-canal
module (40)” for a hearing aid which includes an “arcuate raised ridge (45)”
“a cushion tip (50)” and a “tubular body (52).” (RAN, pp. 4-5.8) The
Examiner further found that “[t]he cushion tip’s tubular body applies an
elastic force to the arcuate raised ridge (page 8, lines 26-29).” (Id. at p. 5, ll.
5-6.)
In challenging the Examiner’s rejection, Hear-Wear argues that the
Examiner has mischaracterized Shennib’s disclosure. Hear-Wear contends
there is no disclosure in Shennib, either at the portions of page 8 referenced
by the Examiner or any other portion thereof, of the application of an elastic

8 The Examiner’s Answer mailed August 19, 2011 incorporates by
reference the Right of Appeal Notice (“RAN”) mailed March 16, 2011
“including all of the grounds of rejection, determinations of patentability,
and explanations set forth in the RAN…” Accordingly, citation to the
rejections, determinations, and explanations appearing in this opinion are to
the RAN.

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04028
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Appeal 2012-004028
Reexamination Control 95/001,022
Patent 7,016,512 B1

9
50. The radial force develops due to the initial deformation of coupling
sleeve 52 caused by the male threads 45 of receiver 48. Once receiver
assembly 48 is inserted, male threads 45 are received in coupling threads 53
of coupling sleeve 52. It is apparent that when so received, male threads 45
cooperate with the coupling threads 53 to impede removal of the receiver
assembly. It is, however, not apparent that in such a configuration there is
any elastic force operating to prevent removal of the receiver assembly. To
the extent that radial forces 81 constitute elastic forces, those forces arise
only during the act of insertion of the receiver assembly and are not
described as being maintained after insertion. Moreover, the Shennib device
is configured to permit axial movement of the coupler relative to the receiver
assembly to secure the coupler to the receiver while applying minimal axial
force. (Shennib 5:32-34.)
With respect to the axial (push) force 80, that is a force that must is
applied by a user or operator to the acoustic coupler and does not designate a
force which is applied by the tubular body of the acoustic coupler to a
speaker module as is required by the claims. We do not discern how the
radial forces or axial forces described in Shennib are reasonably regarded as
elastic forces applied by a cushion tip’s tubular body which operate to
prevent removal of a speaker module from a cushion tip as is required by the
claims.
HIMPP also contends that in Shennib the required elastic force
“necessarily” exists because some portion of the acoustic coupler is made of
elastic material. (HIMPP’s Resp. Br., p. 7, ll. 8-10.) We do not agree with
that contention. It does not follow that a component implicitly exerts an
Appeal 2012-004028
Reexamination Control 95/001,022
Patent 7,016,512 B1

10
elastic force on another associated structure simply because that component
is formed of an elastic material. HIMPP does not meaningfully explain how
Shennib’s acoustic coupler, even if it is constructed of an elastic material, is
configured so as to exert the required elastic force on an arcuate raised ridge
which prevents removal of a speaker module from a cushion tip.
HIMPP further points to another portion of Shennib describing an
embodiment in which a “squeeze” force must be applied to the acoustic
coupler to allow removal of the receiver assembly as further supporting the
assertion that Shennib discloses the required elastic force. (Id. at pp. 7-8.)
However, in similar fashion as the above-noted “axial” force applied to the
coupler, that “squeeze” force is a force that must be also applied by a user or
operator to the acoustic coupler and is not applied by the tubular body of an
acoustic coupler to a speaker module as is required by the claims. It is
simply not apparent on the record that Shennib’s device operates such that
the particular configuration of the module of the claims is present and
involves application of the required elastic force.
Anticipation is established only when a single prior art reference
discloses all elements of the claimed invention. In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990). Here, we have considered HIMPP’s arguments
presented in its Appeal Brief and Respondent Brief but are not persuaded
that Shennib discloses the feature of the claim 1 directed to a cushion tip
which applies an elastic force to an arcuate raised ridge that prevents
removal of a speaker module from the cushion tip.
Appeal 2012-004028
Reexamination Control 95/001,022
Patent 7,016,512 B1

11
Accordingly, we conclude that the Examiner was incorrect in adopting
HIMPP’s proposed rejection of claims 1, 2, 4, and 5 as anticipated by
Shennib.
Obviousness
The Examiner rejected claims 6-8 and 10-12 as unpatentable over
Shennib and Reiter. Claim 6 is dependent on claim 1 and claims 8 and 10-
12 are dependent on claim 7, which is an independent claim. Claim 7 is
drawn to a hearing-aid and, like claim 1, requires a cushion tip with a tubular
body which applies an elastic force to an arcuate raised ridge of a speaker
module so as to prevent removal of the speaker module from the cushion tip.
The Examiner’s rejection is premised on the belief that Shennib itself
discloses the above-noted feature and does not account for the required force
via any further explanation or rationale. As discussed above in conjunction
with claim 1, we do not agree with the underlying basis of the Examiner’s
rejection. The Examiner relies on Reiter to account for separate
requirements of the claims and not to remedy the short-comings of Shennib
in connection with the pertinent feature.
Accordingly, we do not sustain the Examiner’s rejection of claims 6-8
and 10-12 over Shennib and Reiter.

Appeal 2012-004028
Reexamination Control 95/001,022
Patent 7,016,512 B1

12
CROSS-APPEAL OF HIMPP
Issues
3. Did that Examiner correctly decline to adopt rejections
proposed by HIMPP to claims 1, 2, 4-8, and 10-12 involving various
alternative prior art references?
4. Did that Examiner correctly decline to adopt rejections
proposed by HIMPP with respect to claims 3 and 9?
Discussion
Turning now to HIMPP’s cross-appeal, we observe that HIMPP
proposed a multitude of prior art rejections which were ultimately
withdrawn by the Examiner. Although the Examiner, initially adopted the
rejections at issue, the Examiner subsequently withdrew the rejections on the
rationale that the relevant rejections were “cumulative and incomplete” and
failing to “set forth a complete and adoptable case of obviousness.” (ACP10,
2-3.) Grounds of rejections that are initially made by the Examiner, which
are withdrawn without amendment of the claims so rejected, are properly
treated by the Examiner as rejections proposed by the third party requester
that the Examiner refuses to adopt. (MPEP § 2665.05, Part III, Item (B).)
The Examiner offers no further explanation in support of the above-noted
rationale for declining to maintain the rejections proposed by HIMPP.
HIMPP contends that the Examiner has not articulated an adequate basis for
refusing to adopt the proposed rejections. Hear-Wear, on the other hand,

10 “ACP” designates the Action Closing Prosecution mailed June 23,
2010.
Appeal 2012-004028
Reexamination Control 95/001,022
Patent 7,016,512 B1

13
contends that the Examiner was correct in declining to adopt those
rejections.
At the outset, the Examiner’s general statement that the rejections
proposed by HIMPP are cumulative and incomplete does not itself represent
an adequate basis or explanation for refusing to adopt the pertinent
rejections. (MPEP § 2660, Part III.) We, therefore, evaluate the substantive
content of the proposed claim rejections in assessing their merit. In carrying
out that assessment, we consider the involved rejected claims in three
groupings: (1) Claims 1, 4, 5, 6, 7, and 10-12; (2) claims 2 and 8; and (3)
claims 3 and 9.
Claims 1, 4, 5, 6, 7, and 10-12
At issue with respect to all of the non-adopted prior art rejections
proposed by HIMPP in connection with claims 1, 4, 5, 6, 7, and 10-12 are
two limitations appearing in each of independent claims 1 and 7. Those
limitations involve: (1) the tubular body of a cushion tip applying an elastic
force to an arcuate raised ridge of a speaker module so as to prevent removal
of the speaker module from the cushion tip; and (2) that the cushion tip
includes a tip portion that is deflected so as to assume an “offset angle
relative to” the tubular body and speaker module when the cushion tip and
speaker module are inserted into an ear canal.
With respect to the limitation reflected in item (1) above, although, as
discussed above, we are not persuaded that Shennib discloses the pertinent
feature, we observe that other of the prior art references provide clear and
unmistakable teachings with respect to such a feature. In particular, we
focus on the teachings of Iseberg.
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04028
Control 9
12 B1
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Appeal 2012-004028
Reexamination Control 95/001,022
Patent 7,016,512 B1

15
In accordance with a releasable lock feature of the invention, an
end section 42 of the tubular portion 35 is of increased cross-sectional
size to provide an external shoulder 43 in facing relation to the wall
32. In assembly, a portion 44 of the compliant material of the device
38 is stretched over the end section 42 and then expands into the space
between the shoulder 43 and the wall 32 as shown, so as to lock the
device 38 and the housing member 20 together while permitting
disassembly when desired.

Thus, Iseberg sets forth that its eartip 38 is made of a compliant
material that is “stretched” over an end section 42 with shoulder 43 of
housing member 20 such that the eartip and housing member are locked
together. A compliant material that is stretched around another component
so as to be locked with respect to that component is readily understood as an
elastic material which exerts an elastic force impeding removal of the
component. Accordingly, as evidenced by Iseberg, it was recognized in the
art that one mechanism for affixing a cushioned eartip portion and a speaker
portion involves a configuration in which the eartip portion exerts an elastic
force on the speaker portion. In our view, a person of ordinary skill in the
art would have reasonably appreciated that such a configuration is available
and viable for use in other devices intended for insertion into an ear, such as
that of Shennib, in which a cushioned tip component is to be maintained in
position with respect to a sound producing component.
With regard to the feature that a tip portion be deflected to assume an
offset angle when a cushioned tip is inserted into an ear canal (referenced as
item (2) above), the acoustic seal 51 of Shennib’s acoustic coupler 50 is
described as “conform[ing] to the shape of the ear canal when inserted
therein” (Shennib, p. 8, ll. 20-22) and is described as being “positioned
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04028
Control 9
12 B1
n individu
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16
nal” (id. a
he acousti
in typical
our view
acoustic s
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o as to ass
and/or hea
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al, the tip
fset angle
rences are
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Baum, 1:1
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). Shennib
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teachings
on with
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-aid
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(Voroba,
gure 1 of
earphone
ing device

e

Appeal 2012-004028
Reexamination Control 95/001,022
Patent 7,016,512 B1

17
ear insert 11is deflected so as to be bent, i.e., form an offset angle, with
respect to the sound transmitting device 10 and the body sections 31, 32 of
the ear insert 11. (Id. at 3:5-22.) That configuration allows for the insert 11
to “be readily flexed and assume the bent shape conforming to any peculiar
curved shape of the outer ear cavity into which it is inserted.” (Id. at 3:55-
59.)
Similarly, Voroba describes that its hearing aid includes a tubular
segment 38 which is inserted to an ear canal and includes a covering sleeve
30 made of a “soft, resilient material.” (Voroba, 9:9-28; Figs. 1 and 2.)
Voroba further describes that because of the resilient nature of sleeve 30, it
includes a “flexible canal tip” (id. at 14:4-18) which exhibits “angular
displacements” when inserted into a patient’s ear canal “to assume the
natural hook, twist and tilt” of bends within the canal (id. at 13:43-47).
In light of the teachings of the prior art, e.g., Baum and Voroba, a
person of ordinary skill in the art would have realized that a device that is
intended to be inserted into, and conform with, a person’s ear canal, such as
the device of Shennib, would desirably be constructed so as to deflect or
bend in accordance with the angular bends of the ear canal. We, therefore,
conclude that the recitation in claims 1 and 7 of a hearing aid module with a
cushioned tip portion deflect so as to assume an offset angle relative to other
portions of the module does not structurally distinguish those claims over the
prior art.
As a part of its appeal, Hear-Wear urged that in connection with those
rejections involving the application of the teachings of Reiter, the Examiner
has not provided an adequate reason for combining the teachings of Shennib
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with Reiter. (E.g., Hear-Wear’s App. Br., 21.) We do not agree. As was
noted by the Examiner (RAN, 7) and HIMPP (HIMPP’s Resp. Br., 15),
Reiter identifies a benefit which arises from the use of its completely-in-
canal hearing aid in minimizing an undesirable “occlusion effect” when
wearing the aid within the “bony portion” of a patient’s ear (Reiter,
Abstract). Hear-Wear does not explain why one with ordinary skill in the art
would not reasonably and readily apply the wearing technique of Reiter to
the device of Shennib so as to obtain the occlusion effect minimization
benefit. In our view, that is a suitable reason for combining the teachings of
Reiter and Shennib.
Based on our review of the record, we conclude that certain of
HIMPP’s rejections to claims 1, 4, 5, 6, 7, and 10-12 establish an adequate
prima facie case of the obviousness of those claims, in particular those
involving the teachings of Iseberg. We are cognizant of the evidence of
“secondary considerations” proffered by Hear-Wear in alleging non-
obviousness (Hear-Wear’s App. Br., 25-26; Evidence App’x.), but observe
that there is no nexus established between the merits of the claimed
invention and the supplied evidence. See Stratoflex, Inc. v. Aeroquip Corp.,
713 F.2d 1530, 1539 (Fed. Cir. 1983). (“A nexus is required between the
merits of the claimed invention and the evidence offered, if that evidence is
to be given substantial weight enroute to conclusion on the obviousness
issue.”) Indeed, the evidence amounts simply to testimony of one James
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Feeley11, a director of Hear-War Technologies, LLC, that the ‘512 patent
was among a group of patents licensed to an unspecified number of
companies in the hearing aid industry and an “estimate” that the licensed
companies “represent approximately 60% of the total hearing aid market in
the United States.” (Feeley Decl.) Lacking from that testimony, and the
record as a whole, is adequate evidence demonstrating that it is the claimed
features of the ‘512 that merited the noted licensing. Accordingly, while the
evidence supplied by HIMPP has been given due consideration, it is
ineffective to outweigh the strong evidence of obviousness provided by the
prior art.
In summary, we conclude that the record sufficiently establishes that
the following rejections should have been adopted by the Examiner:
The rejection of claims 1, 4, and 5 under 35 U.S.C. § 103(a) as
unpatentable over Shennib and Iseberg.

The rejection of claims 6, 7, and 10-12 under 35 U.S.C.
§ 103(a) as unpatentable over Shennib, Reiter, and Iseberg.

The rejection of claims 1, 4, and 5 under 35 U.S.C. § 103(a) as
unpatentable over Shennib, Iseberg, and Voroba.

The rejection of claims 6, 7, and 10-12 under 35 U.S.C.
§ 103(a) as unpatentable over Shennib, Reiter, Iseberg, and Voroba.

The rejection of claims 1, 4, and 5 under 35 U.S.C. § 103(a) as
unpatentable over Shennib, Iseberg, and Baum.

11 See “Declaration of James Feeley” dated May 11, 2009 (“Feeley
Decl.”) and presented in the evidence appendix of Hear-Wear’s Appeal
Brief.
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The rejection of claims 6, 7, and 10-12 under 35 U.S.C.
§ 103(a) as unpatentable over Shennib, Reiter, Iseberg, and Baum.

The rejection of claims 1, 4, and 5 under 35 U.S.C. § 103(a) as
unpatentable over Shennib, Iseberg, and Leedom.

The rejection of claims 6, 7, and 10-12 under 35 U.S.C.
§ 103(a) as unpatentable over Shennib, Reiter, Iseberg, and Leedom.

The rejection of claims 1, 4, and 5 under 35 U.S.C. § 103(a) as
unpatentable over Shennib, Iseberg, and Oliveira.

The rejection of claims 6, 7, and 10-12 under 35 U.S.C.
§ 103(a) as unpatentable over Shennib, Reiter, Iseberg, and Oliveira.

With regard to the remaining involved rejections proposed for claims
1, 4, 5, 6, 7, and 10-12, HIMPP does not suitably explain, and we do not see,
how those rejections, which do not incorporate the teachings of Iseberg,
appropriately account for the features of the claims directed to the
application of an elastic force to an arcuate raised ridge so as to prevent
removal of a speaker module from a cushion tip. Accordingly, we do not
discern that the Examiner was incorrect in declining to adopt those rejections
proposed by HIMPP which do not incorporate the teachings of Iseberg.
Claims 2 and 8
Claim 2 is dependent on claim 1 and claim 8 is dependent on claim 7.
Each of claims 1 and 7 recite that a speaker module generates audio signals
from an electrical driving signal. Dependent claims 2 and 8 add the
following feature:
an insulated wiring portion fixidly [sic] attached to said speaker
module that enables said speaker module and said cushion tip to be
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21
removed from said canal and that communicates said electrical
driving signal.

At issue with respect to claims 2 and 8 is the requirement of an
insulated wiring portion attached to the speaker module. All of the
rejections proposed by HIMPP involve the teachings of Shennib. HIMPP
contends that Shennib accounts for the above-noted requirement in its
disclosure of wires 37 fixedly attached to receiver assembly 48 and insulated
by virtue of cable 39 and handle 38 as shown, for instance, in Figure 20.
(HIMPP’s Reb. Br., 14-15.) Hear-Wear urges that Shennib lacks the
pertinent feature. According to Hear-Wear, its claims require a single
element performing the insulation function set forth in claims 2 and 8 and is
not satisfied by Shennib’s cable 39 and handle 38. (E.g., Hear-Wear’s App.
Br., 13-14.)
We do not agree with Hear-Wear. The claims do not specify that the
wiring portion must be insulated by a singular component to the exclusion of
multiple components. Indeed, the claims do not convey that any particular
structure is required for insulating the wiring portion. In the context of the
‘512 Patent, wiring is insulated by a surrounding hollow tubing. (‘512
Patent, 12:46-50; Fig. 1.) Shennib’s Figure 20 is reproduced below and
illustrates an embodiment of its invention:
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22

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23
variation, the recitation of the added limitation is similar in each of claims 3
and 9. The limitation as it appears in claim 3 reads: “wherein said insulated
wiring portion is terminated by a plurality of prongs that provide a
detachable mechanical and electrical connection to an audio processing
module.” (HIMPP’s App. Br. 58, Claims App’x.)
HIMPP takes two approaches in contending that claims 3 and 9
should have been rejected. HIMPP first asserts that the added feature of
claims 3 and 9 should be viewed as “Admitted Prior Art” and thus
ineffective to distinguish claims 3 and 9 over the prior art. (Id. at 15.)
Alternatively, HIMPP urges that the detachable connections required by
those claims “were well known to person of ordinary skill in the art at the
time of the invention, and were an obvious variation of what is taught in
Shennib.” (Id. at 16-17.)
At the outset, we reject HIMPP’s contention that the added content of
claims 3 and 9 is properly viewed as admitted prior art. The premise of that
contention is that the United States Patent and Trademark Office (“Office”),
via a statement of an examiner made during original prosecution of the
application that became the ‘512 patent, characterized the features of claims
3 and 9 as “known in the art” in an Office Action dated February 9, 2005.
According to HIMPP, that statement constitutes an assertion of “Official
Notice” and should now be taken as admission by Hear-Wear that the entire
added content of claims 3 and 9 constitutes admitted prior art. (Id. at 15.)
Notably, the identified Office Action did not present an explicit basis on
which the Examiner regarded the matter as subject to official notice and
does not use the term “Official Notice.” Neither did the Examiner ever
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24
attribute any “admission” to Hear-Wear in connection with general
disclosure of the prior art. (MPEP § 2144.03.) We have reviewed the record
and conclude that it is simply not apparent that the Office took a position of
official notice with respect to the features of claims 3 and 9. It is also not
evident that Hear-Wear acquiesced to that alleged position of official notice
so as to qualify the limitations of claims 3 and 9 as admitted prior art.
With respect to HIMPP’s alternative theory of rejection, we observe
that although HIMPP asserts that the content of claims 3 and 9 is “well
known,” notably, HIMPP does not direct us to any portion of the record for
underlying factual support for the assertion. Furthermore, while HIMPP
urges that “the predictable use of prior art elements according to their
establish[ed] functions” establishes the obviousness of claims 3 and 9, we
are not persuaded that the record before us adequately conveys that the
particular distinct connection structures set forth in those claims are
disclosed. Accordingly, given the record at hand, we do not agree with
HIMPP that there is a suitable basis for concluding that the particular
structural features of 3 and 9 are known “prior art elements” and, on that
pretense, those claims would have been obvious.
For the foregoing reasons, we do not discern any error in the
Examiner’s decision not to adopt any of HIMPP’s proposed rejections to
claims 3 and 9.
C. CONCLUSION
Appeal of Hear-Wear
1. The Examiner did not correctly find that Shennib anticipates
claims 1, 2, 4, and 5.
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2. The Examiner did not correctly determine that claims 6-8 and
10-12 would have been obvious in light of the teachings of Shennib and
Reiter.
Cross-Appeal of HIMPP
3. The Examiner did not correctly decline to adopt rejections
proposed by HIMPP to claims 1, 2, 4-8, and 10-12 involving, in-part, the
teachings of Iseberg, but correctly declined to adopt those proposed prior art
rejection which do not incorporate the teachings of Iseberg.
4. The Examiner correctly declined to adopt rejections proposed
by HIMPP with respect to claims 3 and 9.
D. ORDER
Appeal of Hear-Wear
The Examiner’s decision to reject claims 1, 2, 4, and 5 under 35
U.S.C. § 102(b) as anticipated by Shennib is reversed.
The Examiner’s decision to reject claims 6-8 and 10-12 under 35
U.S.C. § 103(a) as unpatentable over Shennib and Reiter is reversed.

Cross-Appeal of HIMPP
Affirmances
The Examiner’s decision not to claim 3 under 35 U.S.C. § 102(b) as
anticipated by Shennib is affirmed.
The Examiner’s decision not to reject claim 9 under 35 U.S.C.
§ 103(a) as unpatentable over Shennib and Reiter is affirmed.
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The Examiner’s decision not to reject claim 3 under 35 U.S.C.
§ 103(a) as unpatentable over Shennib and Iseberg is affirmed.
The Examiner’s decision not to reject claim 9 under 35 U.S.C.
§ 103(a) as unpatentable over Shennib, Reiter, and Iseberg is affirmed.
The Examiner’s decision not to reject claim 3 under 35 U.S.C.
§ 103(a) as unpatentable over Shennib, Iseberg, and Voroba is affirmed.
The Examiner’s decision not to reject claim 9 under 35 U.S.C.
§ 103(a) as unpatentable over Shennib, Reiter, Iseberg, and Voroba is
affirmed.
The Examiner’s decision not to reject claim 3 under 35 U.S.C.
§ 103(a) as unpatentable over Shennib, Iseberg, and Baum is affirmed.
The Examiner’s decision not to reject claim 9 under 35 U.S.C.
§ 103(a) as unpatentable over Shennib, Reiter, Iseberg, and Baum is
affirmed.
The Examiner’s decision not to reject claims 1-5 under 35 U.S.C.
§ 103(a) as unpatentable over Shennib and Baum is affirmed.
The Examiner’s decision not to reject claims 6-12 under 35 U.S.C.
§ 103(a) as unpatentable over Shennib, Reiter, and Baum is affirmed.
The Examiner’s decision not to reject claims 1-5 under 35 U.S.C.
§ 103(a) as unpatentable over Shennib and Voroba is affirmed.
The Examiner’s decision not to reject claims 6-12 under 35 U.S.C.
§ 103(a) as unpatentable over Shennib, Reiter, and Voroba is affirmed.
The Examiner’s decision not to reject claims 1-5 under 35 U.S.C.
§ 103(a) as unpatentable over Shennib and Leedom is affirmed.
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The Examiner’s decision not to reject claims 6-12 under 35 U.S.C.
§ 103(a) as unpatentable over Shennib, Reiter, and Leedom is affirmed.
The Examiner’s decision not to reject claims 1-5 under 35 U.S.C.
§ 103(a) as unpatentable over Shennib and Oliveira is affirmed.
The Examiner’s decision not to reject claims 6-12 under 35 U.S.C.
§ 103(a) as unpatentable over Shennib, Reiter, and Oliveira is affirmed.
The Examiner’s decision not to reject claim 3 under 35 U.S.C.
§ 103(a) as unpatentable over Shennib, Iseberg, and Leedom is affirmed.
The Examiner’s decision not to reject claim 9 under 35 U.S.C.
§ 103(a) as unpatentable over Shennib, Reiter, Iseberg, and Leedom is
affirmed.
The Examiner’s decision not to reject claim 3 under 35 U.S.C.
§ 103(a) as unpatentable over Shennib, Iseberg, and Oliveira is affirmed.
The Examiner’s decision not to reject claim 9 under 35 U.S.C.
§ 103(a) as unpatentable over Shennib, Reiter, Iseberg, and Oliveira is
affirmed.
Reversals
The Examiner’s decision not to reject claims 1, 2, 4, and 5 under 35
U.S.C. § 103(a) as unpatentable over Shennib and Iseberg is reversed.
The Examiner’s decision not to reject claims 6-8 and 10-12 under 35
U.S.C. § 103(a) as unpatentable over Shennib, Reiter, and Iseberg is
reversed.
The Examiner’s decision not to reject claims 1, 2, 4, and 5 under 35
U.S.C. § 103(a) as unpatentable over Shennib, Iseberg, and Voroba is
reversed.
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The Examiner’s decision not to reject claims 6-8 and 10-12 under 35
U.S.C. § 103(a) as unpatentable over Shennib, Reiter, Iseberg, and Voroba is
reversed.
The Examiner’s decision not to reject claims 1, 2, 4, and 5 under 35
U.S.C. § 103(a) as unpatentable over Shennib, Iseberg, and Baum is
reversed.
The Examiner’s decision not to reject claims 6-8 and 10-12 under 35
U.S.C. § 103(a) as unpatentable over Shennib, Reiter, Iseberg, and Baum is
reversed.
The Examiner’s decision not to reject claims 1, 2, 4, and 5 under 35
U.S.C. § 103(a) as unpatentable over Shennib, Iseberg, and Leedom is
reversed.
The Examiner’s decision not to reject claims 6-8 and 10-12 under 35
U.S.C. § 103(a) as unpatentable over Shennib, Reiter, Iseberg, and Leedom
is reversed.
The Examiner’s decision not to reject claims 1, 2, 4, and 5 under 35
U.S.C. § 103(a) as unpatentable over Shennib, Iseberg, and Oliveira is
reversed.
The Examiner’s decision not to reject claims 6-8 and 10-12 under 35
U.S.C. § 103(a) as unpatentable over Shennib, Reiter, Iseberg, and Oliveira
is reversed.

The above-noted reversals in connection with HIMPP’s cross-appeal
in effect constitute new grounds of rejection and, pursuant to our authority
under 37 C.F.R. § 41.77(b), are hereby designated as such. 37 C.F.R.
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§ 41.77(b) provides that “[a]ny decision which includes a new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” The section further provides that the Patent Owner, WITHIN ONE
MONTH FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be
either an amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. …

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
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inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 8, July 2010).

AFFIRMED-IN-PART; REVERSED-IN-PART

PATENT OWNER:
FULBRIGHT & JAWORSKI LLP
2200 ROSS AVENUE
SUITE 2800
DALLAS, TX 75201-2784

THIRD-PARTY REQUESTER:
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 2005