Ex Parte 7,110,562 et alDownload PDFPatent Trial and Appeal BoardDec 6, 201395001021 (P.T.A.B. Dec. 6, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ K/S HEARING INSTRUMENTS MANUFACTURERS PATENT PARTNERSHIP Requester, Respondent, and Cross-Appellant v. HEAR-WEAR, TECHNOLOGIES L.L.C. Patent Owner, Appellant, and Respondent ____________ Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 Technology Center 3900 ____________ Before STEPHEN C. SIU, JOSIAH C. COCKS, and STANLEY M. WEINBERG, Administrative Patent Judges. COCKS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 2 I. STATEMENT OF THE CASE A. Summary Patent Owner, Hear-Wear, Technologies, L.L.C. (“Hear-Wear”),1 appeals under 35 U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to reject claims 1-9, 11, 12, 15-27, 30, 31, and 38-41 of U.S. Patent No. 7,110,562 (the “’562 patent”).2 Third-Party Requester, K/S Hearing Instruments Manufacturers Patent Partnership (“HIMPP”), urges that the Examiner’s decision must be affirmed.3 HIMPP also cross-appeals under 35 U.S.C. §§ 134(c) and 315(b) from the Examiner’s refusal to reject claims 1-9, 11, 12, 15-27, 30, 31, and 38-41 on other grounds and the Examiner’s refusal to reject claims 13, 14, and 32-37.4 Hear-Wear contends that the 1 See Patent Assignment Abstract of Title, Reel 013543 Frame 0437 which was entered into the record of this proceeding as “Title Report” on March 3, 2008. 2 See Hear-Wear’s “Appeal Brief of Patent Owner Hear-Wear, L.L.C.” filed August 9, 2011 (“PO App. Br.”) and “Patent Owner Rebuttal Brief under 37 C.F.R. § 41.71” filed July 10, 2012 (“PO Reb. Br.”). 3 See HIMPP’s “Third-Party Requester’s Respondent Brief” filed September 8, 2011 (“Req. Resp. Br.”) 4 See HIMPP’s “Third-Party Requester’s Corrected Brief on Appeal Under 37 C.F.R. § 41.67” filed January 20, 2012 (“Req. App. Br.”) and “Third- Party Requester’s Rebuttal Brief Under 37 C.F.R. § 41.71” filed July 11, 2012 (“Req. Reb. Br.”). Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 3 Examiner’s refusals in that regard were correct.5 Claims 10, 28, and 29 are not subject to reexamination. Oral argument was held on April 12, 2013. A transcript of the hearing was made of record on May 23, 2013. We have jurisdiction under 35 U.S.C. §§ 134 and 315.6 B. The Invention The ’562 patent is directed generally to an earpiece auditory device. ’562 patent, Abstract. An “exploded isometric view of an exemplary embodiment” of the invention is shown in Figure 1, which is reproduced below (id. at col. 4, ll. 12-14): 5 See Hear-Wear’s “Patent Owner Respondent Brief Under 37 C.F.R. § 41.68” filed October 12, 2011 (“PO Resp. Br.”) and “Patent Owner Second Respondent Brief Under 37 C.F.R. § 41.68” filed February 20, 2012 (“2nd PO Resp. Br.”). 6 In this opinion, we also refer to the Right of Appeal Notice mailed May 10, 2011 (“RAN”) which was incorporated by reference in the Examiner’s Answer mailed June 11, 2012. Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 4 As depicted in Figure 1 above, earpiece auditory device 40 includes “completely-in-canal” (“CIC”) unit 10, connector 20, and “behind-the ear” (“BTE”) unit 30. Id. at col. 5, ll. 42-44. Claims 1 and 22 are independent claims and are reproduced below: 1. An earpiece auditory device comprising: a behind-the-ear (BTE) component, said BTE component being shaped to fit behind an ear of a user, wherein said BTE component comprises a module including processing circuitry; a completely-in-canal (CIC) component, said CIC component being shaped to fit into the ear canal of the user, wherein said CIC component comprises an ear mold and a speaker, said speaker being encased in a speaker module; and a connector physically and communicatively coupling said BTE component to said CIC component, said connector having a proximal end physically and communicatively Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 5 coupled to said BTE component and a distal end physically and communicatively coupled to said CIC component, said connector being sufficiently rigid so as to allow said connector to be used to insert and remove said CIC component from the ear canal of the user; wherein said speaker module is detachably physically interconnected with said ear mold, said speaker module is interconnected with said ear mold through a hollow sleeve, and said hollow sleeve is formed of resilient material. --- 22. A method for providing a plurality of earpiece auditory device components, a portion of which may be assembled to form an earpiece auditory device tailored to a user, said method comprising: providing a selected behind-the-ear (BTE) component operable to facilitate the user’s intended use for the earpiece auditory device may be selected, wherein said BTE component comprises a module including processing circuitry; providing a selected completely-in-canal (CIC) component, said selected CIC component being shaped to fit into the ear canal of the user, wherein said selected CIC component comprises an ear mold and a speaker, said speaker being encased in a speaker module; and providing a connector of sufficient length to physically couple said selected BTE component when said selected BTE component is placed behind the ear of the user to said selected CIC component when said CIC component is placed inside the ear canal of the user, wherein said connector of sufficient length includes a proximal end physically and communicatively operable to couple to said BTE component and a distal end physically and communicatively operable to couple to said CIC component, said connector of sufficient length being Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 6 sufficiently rigid so as to allow said connector of sufficient length to be used to insert and remove said selected CIC component; wherein said speaker module is detachably physically interconnectable with said ear mold. PO App. Br., Claims App’x. C. The Prior Art 1. Hear-Wear’s Appeal Schiess et al. (“Schiess”) US 5,265,168 Nov. 23, 1993 Reiter et al. (“Reiter”) US 5,606,621 Feb. 25, 1997 Posen et al. (“Posen”) US 5,864,628 Jan. 26, 1999 Shennib WO 99/07182 Feb. 11, 1999 2. HIMPP’s Appeal In addition to the above-noted prior art, HIMPP relies on the following: Toht US 2,930,856 Mar. 29, 1960 McCarrell et al. (“McCarrell”) US 3,061,689 Oct. 30, 1962 Hartl et al. (“Hartl”) US 4,739,512 Apr. 19, 1988 Barton US 5,046,580 Sep. 10, 1991 Ward et al. (“Ward”) US 5,201,007 Apr. 6, 1993 Shennib et al. (“Shennib ’348”) US 5,701,348 Dec. 23, 1997 Taenzer et al. (“Taenzer”) US 6,009,183 Dec. 28, 1999 Topholm US 2002/0138237 Sep. 26, 2002 Nonomura JP 62-151100 July 6, 1987 Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 7 D. The Involved Rejections 1. Hear-Wear’s Appeal Hear-Wear contends that the Examiner incorrectly adopted the following rejections under 35 U.S.C. § 103(a) of claims of the ’562 patent7: References Claims Reiter and Shennib 1-9, 11, 12, 19, 20, 22-27, 30, 31, and 41 Reiter, Shennib, and Posen 15-18 and 38-40 Reiter, Shennib, and Schiess 21 2. HIMPP’s Appeal HIMPP contends that the Examiner incorrectly declined to adopt the following rejections under 35 U.S.C. § 103(a) of claims of the ’562 patent:8 References Claims Toht, Reiter, and Shennib 1 and 22 Nonomura and Shennib 1 and 22 Reiter, Toht, Shennib, and Ward 1 and 22 Toht, Reiter, Shennib, and “any one of Barton, Ward, McCarrell, or Taenzer”9 1 and 22 Reiter, Toht, Shennib, and “any one of Barton, McCarrell, or Taenzer”10 1 and 22 7 See PO App. Br. 6-7. 8 See generally Req. App. Br., p. 22. 9 Id. at p. 25 10 Id. at p.26 Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 8 Toht, Reiter, and Shennib11 2, 3, 9, 19, 21, 23, 24, 27, and 41 Reiter, Toht, Shennib, and Shennib ’34812 4-8, 11-14, 20, 25, 26, 30-32, and 37 Nonomura, Shennib, and Shennib ’34813 4-8, 11-14, 20, 25, 26, 30-32, and 37 Reiter, Toht, Shennib, and Shennib ’348, and Topholm14 33-36 Nonomura, Shennib, Shennib ’348, and Topholm15 33-36 Toht, Reiter, Shennib, Posen, and Hartl16 15-18 and 38-40 Nonomura, Shennib, Posen, and Hartl17 15-18 and 38-40 II. ANALYSIS A. HEAR-WEAR’S APPEAL Hear-Wear contests the Examiner’s decision to adopt three grounds of rejection that were applied to the claims of the ’562 patent involving: (1) Reiter and Shennib; (2) Reiter, Shennib, and Posen; and (3) Reiter, Shennib, and Schiess. 1. Reiter and Shennib As proposed by HIMPP, and as adopted by the Examiner, claims 1-9, 11, 12, 19, 20, 22-27, 30, 31, and 41 stand rejected as unpatentable over 11 Id. at p. 27. 12 Id. at p. 28. 13 Id. 14 Id. at p. 30. 15 Id. 16 Id. at p. 31. 17 Id. Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 9 Reiter and Shennib. Claims 1 and 22 are independent claims. Claims 2-9, 11, 12, 19, 20, 22-27, 30, 31, and 41 ultimately depend from either claim 1 or claim 22. The patentability of the dependent claims is not argued apart from that of the independent claims with the exception of the following: (i) claims 2 and 23 and (ii) claims 4, 5, 8, and 20. We address the claims as follows: (1) claim 1; (2) claim 22; (3) claims 2 and 23; and (4) claims 4, 5, 8, and 20. a. Claim 1 As discussed above, claim 1 is drawn to an earpiece auditory device that generally includes a BTE component, a CIC component, and a connector between those components. The BTE component is shaped to fit behind a user’s ear and incorporates a module including processing circuitry. The CIC component is shaped to fit within a user’s ear and includes an ear mold and a speaker as a part of a speaker module. The connector is “sufficiently rigid” so as to allow insertion and removal of the CIC component into and from a user’s ear canal. i. The Examiner’s Rejection Reiter is directed to a hybrid behind-the-ear and completely-in-canal hearing aid. Reiter, Title. Reiter’s Abstract is reproduced below: A hybrid BTE and CIC hearing aid has a BTE component which is worn behind the patient’s ear and a CIC component which is worn in the bony portion of the patient’s ear canal. The BTE and CIC components are connected together with a wire cable. Electroacoustic feedback is reduced or eliminated, allowing gain to be increased. The patient is not disturbed by the occlusion effect. Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 10 Reiter’s Figure 1 (reproduced right) depicts an embodiment of a hearing aid according to the invention. As shown in the figure, BTE component 10 includes microphone 12, amplifier circuitry 14, and battery compartment 16. Id. at col. 2, ll. 11-14. CIC component 18 includes receiver 20 and “retrieval line 24” that is grasped by a user and perimts the CIC component’s introduction into and removal from a hearing canal. Id. at col. 2, ll. 14-24. According to the Examiner and HIMPP, Reiter discloses all the limitations of claim 1 save for: (1) a connector that is “sufficiently rigid” so as to allow said connector to be used to insert and remove the CIC componentfrom the ear canal of the user; (2) a speaker module that is detachably physically interconnected with the ear mold; and (3) the interconnection is accomplished through a “hollow sleeve” that is formed of resilient material. RAN, pp. 4-8; see Req. Resp. Br., pp. 7- 8. To account for those features, the Examiner relies on Shennib. Shennib discloses an “acoustic coupler” described as being “detachably secured to a receive assembly for deep insertion into an individual’s ear canal.” Shennib, Abstract. Shennib’s Figure 3 is described as “a sectioned view of the earpiece showing a receiver assembly and an acoustic coupler” and is reproduced below (id. at p. 6, ll. 35-36): Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 11 As shown in the figure above, earpiece 40 includes receiver assembly 48 and acoustic coupler 50 and may be part of “canal hearing device” 10 (not shown in figure). Shennib, p. 7, ll. 35-37. Shennib discloses the following with respect to receiver assembly 48 and acoustic coupler 50: The receiver assembly 48 (Fig. 3) contains a receiver 41 coupled to a receiver housing 42 via a receiver housing coupler 43. A receiver guard 47 is provided to protect the receiver from environmental and physiologic residue, including cerumen (earwax). A receiver sound port 49 provides an outlet for sound emission to a coupler sound port 55, and subsequently to the tympanic membrane 26. A vibration isolator 44 is provided to isolate the mechanical vibration of the receiver 41 from the receiver housing 42, and subsequently from the hearing device 10. Relatively rigid and tapered male threads 45 are provided for coupling the receiver housing with an acoustic coupler 50. . . . The acoustic coupler 50 (Fig. 3) contains a coupling sleeve 52 having coupling threads 53 and a conforming acoustic seal 51 which conforms to the shape of the ear canal when inserted therein. The coupling sleeve 52 is made of an elastically deformable, thin walled material, such as plastic. Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 12 Shennib, p. 8, ll. 10-23. Thus, receiver assembly 48 includes receiver 41 for emitting sound, i.e., a speaker module, and is detachably physically interconnected with acoustic coupler 50, which is received in an ear canal. The acoustic coupler receives the receiver assembly and receiver via a coupling sleeve made of elastically deformable material. Shennib also discloses that its Figure 20 illustrates handle 38 that “facilitates insertion and removal the hearing device.” Id. at p. 8, ll. 3-5. Figure 20 is reproduced below: Figure 20 above depicts “a coronal view of the ear canal with an earpiece for connection to an external audio device.” Shennib, p. 7, ll. 22- 23. Based on the ground of rejection proposed by HIMPP, the Examiner determined that the above-noted disclosures of Shennib account for features Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 13 of claim 1 absent from Reiter. In that regard, the Examiner found: (1) that Shennib’s handle 38 forms part of a connector that is “sufficiently rigid” for insertion and removal of a hearing device; (2) that the configuration of Shennib’s receiver assembly 48 and acoustic coupler 50 is the “physically detachably” interconnected speaker module and ear mold; and (3) that coupling sleeve 52 is the required hollow sleeve made of resilient material associated with the ear mold. See RAN, pp. 6-818. In combining the teachings of Reiter and Shennib, the Examiner reasoned that Hear-Wear’s claim 1 would have been obvious to one of ordinary skill in the art. Id., p. 9. Hear-Wear generally challenges the prima facie basis of the Examiner’s rejection on theories that the combination of Reiter and Shennib does not account for the all the features of claim 1 and that it would not have been obvious to combine the teachings of Reiter and Shennib. PO App. Br., pp. 15-24. Hear-Wear also contends that it has provided sufficient evidence of “secondary considerations of nonobviousness.” Id. at pp. 24-33. 18 We observe that throughout the RAN, the Examiner has used reference character “48” in reference to a “connector” in Shennib. Shennib’s component “48” is described as a “receiver assembly” that is a distinct component from “handle 38.” See Shennib, p. 7, l. 35-p. 8, l. 19. In identifying characteristics of Shennib’s “connector,” the Examiner makes explicit reference to page 8, lines 3-5 of Shennib which involves “handle 38” and not receiver assembly 48. See, e.g., RAN, p. 7, ¶ 33. The Requester also advocates that the rejections at hand involving Shennib are predicated on Shennib’s handle 38 as forming the claimed connector. See, e.g., Req. Resp. Br., pp. 10-11. Hear-Wear states that the Examiner’s interpretation of elements 38 and 48 is unclear. Hr’g Tr. 5:18-6:4. Based on the record, we conclude that Shennib’s handle 38 is, at least in-part, the component regarded by the Examiner as the connector. Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 14 For the reasons that follow, we are not persuaded of error in the Examiner’s prima facie basis for rejecting claim 1 nor are we persuaded that the proffered evidence of secondary considerations outweighs the strong evidence of obviousness. ii. The Allegedly Absent Claim Features According to Hear-Wear, the Reiter and Shennib combination does not result in a “CIC” component. PO App. Br., pp. 15-17. In that regard, Hear-Wear is of the view that incorporating Shennib’s handle 38 into Reiter’s hearing device results in a portion that extends outside the ear canal. Hear-Wear contends that a “CIC” component “cannot protrude outside the ear canal.” Id. As support for its position, Hear-Wear relies on the declaration testimony of Adnan Shennib19 and Dr. Wayne Staab20. Id. at pp. 15-16. The underlying basis for Hear-Wear’s position is that Shennib’s handle 38 is a structure that is allegedly “unitary” or “monolithically formed” or “integrated” with speaker assembly 48 such that it is part of the speaker assembly rather than any portion of the connector between the speaker assembly and an external audio device, such as a BTE component. See PO App. Br., pp. 15 and 17; Supp. Shennib Decl. ¶ 11; Supp. Staab Decl. ¶ 27. We are not persuaded by Hear-Wear. In that regard, even assuming that Hear-Wear is correct insofar as its proposed meaning of a “CIC” 19 See “Supplemental Declaration of Adnan Shennib” dated May 26, 2010 (“Supp. Shennib Decl.”), and filed with Hear-Wear’s Appeal Brief. 20 See “Supplemental Declaration of Dr. Wayne Staab” dated May 21, 2010. (“Supp. Staab Decl.”), and filed with Hear-Wear’s Appeal Brief. Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 15 component, we conclude that Shennib’s handle 38 is understood reasonably as forming part of a “connector.” In the context of the ’562 patent, a “connector” is a component that physically couples the BTE component to the CIC component. See ’562 patent, col. 3, ll. 40-43. Although, in some embodiments, the connector is “detachably coupled” to either the BTE or CIC components (see, e.g., id. at col. 3, ll. 43-45), there is nothing intrinsic to the term “connector,” as it is used in the ’562 patent, that requires such a detachment capability to the exclusion of a coupling configuration that is not detachable. Claim 1 requires a connector that is “sufficiently rigid so as to allow said connector to be used to insert and remove said CIC component from the ear canal of the user.” As discussed above, Shennib discloses an earpiece 40 that is part of a canal hearing device and is composed of two particular components, i.e., receiver assembly 48 and acoustic coupler 50. As illustrated in Figure 20 (reproduced supra), additional components are provided that are separate and distinct from earpiece 40 and allow connection of the earpiece to an external audio device. Shennib, p. 7, ll. 22- 23. Those components include signal cable 39, wires 37, and handle 38 that “facilitates insertion and removal of the hearing device” and provides “strain relief” for the wires 37 within cable 39. Id. at p. 8, ll. 3-5. Although handle 38 may be fixed to earpiece 40 in a manner that is not viewed as detachably coupled, we do not discern that the handle is something that is properly regarded as “unitary,” “monolithic,” or “integrated” with the earpiece. Indeed, neither Hear-Wear nor Mr. Shennib explains adequately the underlying basis for their position to the contrary. In our view, it is evident Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 16 from the record, including the Shennib reference’s Figure 20, that handle 38 maintains a separate identity from earpiece 40 and provides a specific strain relieving function with respect to the other connecting components, i.e, wires 37 of cable 39. Thus, as articulated by HIMPP (Req. Resp. Br., p. 10), handle 38, as well as wires 37 and cable 39, is distinct from the component that is earpiece 40, such that handle and earpiece are not a single structure regarded as “unitary.” To that end, we also credit the declaration testimony of Mr. Fletcher21 and Dr. Thompson22, who characterize Shennib’s cable 39, wires 37, and handle 38 as collectively forming a “connector” between an in-canal device and an external audio device. Fletcher Decl. ¶ 9; Thompson Decl. ¶¶ 36-38. That testimony is in accord with the plain disclosure of Shennib. We have considered Hear-Wear’s arguments, but we are not persuaded that the required “CIC” component and “connector” of claim 1 distinguish that claim from the disclosure of the prior art. ii. The Obviousness Rationales Hear-Wear also challenges the Examiner’s position that there is adequate reason to combine the teachings of Reiter and Shennib. In particular, Hear-Wear submits that there is “no rational reason” to incorporate Shennib’s handle into Reiter’s hearing device, in lieu of Reiter’s “retrieval line,” as was urged by the Examiner. PO App. Br., pp. 18-23. 21 See “Declaration of Henry H. Fletcher” dated June 28, 2010 (“Fletcher Decl.”), and filed with HIMPP’s Respondent Brief. 22 See “Declaration of Dr. Stephen C. Thompson” dated June 28, 2010 (“Thompson Decl.”), and filed with HIMPP’s Respondent Brief. Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 17 Hear-Wear also generally contends that Shennib “teaches away” from the proposed combination and that any such combination would render Shennib “unfit for its intended purpose.” Id. at pp. 23-24. For the reasons that follow, none of Hear-Wear’s contentions is persuasive. Reasons to combine As was noted by the Examiner, each of Reiter and Shennib recognizes that, in the hearing aid art, it is contemplated to include a component that functions to facilitate the insertion and removal of a hearing device from a patient’s ear canal. In Reiter, that component is retrieval line 24. In Shennib, it is handle 38. As set forth in the RAN, the Examiner, in effect, determined that the retrieval line and handle function for essentially the same purpose and reasoned that a skilled artisan would have appreciated that the two components may be substituted for one another. Thus, the Examiner concluded that it would have been obvious to implement Shennib’s handle 38 and its associated configuration onto Reiter’s hearing device. See RAN, p. 17. Hear-Wear first challenges the Examiner’s reasoning on a theory that Reiter’s retrieval line has a more pleasing visual aesthetic than Shennib’s handle, such that a skilled artisan would not view them as equivalents of one another. PO App. Br., pp. 19-20 (citing each of the Supp. Shennib Decl. and Supp. Staab Decl.). Hear-Wear’s challenge, however, is misplaced. Even if the challenge is true, assessing whether one insertion and retrieval component may be more visually appealing such that it is preferred is not the proper inquiry when evaluating obviousness. Obviousness does not require that a teaching be better in all respects than another. Rather, the test for Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 18 obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). That Reiter’s retrieval line may have a more desirable aesthetic than Shennib’s handle does not convey that the handle would be inoperable or unworkable if implemented in Reiter’s device. Here, the prior art establishes that there are two known mechanisms for facilitating the insertion and removal of a hearing aid. One mechanism is a separate retrieval line. Another mechanism is a rigid handle that surrounds the electric wires that connect an external device and a device arranged in a patient’s ear canal. Where there are a limited number of identified solutions to solving a particular problem, a person of ordinary skill has good reason to pursue the known options within his technical grasp. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). In this case, we agree with the Examiner that a person of ordinary skill in the art would have appreciated that each of Shennib’s handle and Reiter’s retrieval line is available as options that allow for handling of a hearing device. Hear-Wear’s argument to the contrary does not, in our view, properly take into account the knowledge and ability of one of ordinary skill in the art. Furthermore, we observe that Shennib also conveys that the configuration of its handle 38 has an additional benefit in providing “strain relief” to wires 37. Thus, Shennib recognizes a benefit to its handle configuration unrelated to aesthetics. Hear-Wear does not explain why obtaining that benefit would not be a factor for consideration in selecting the handle as the particular structure for inserting and removing a hearing aid device. Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 19 Hear-Wear also speculates that “handle 38 of Shennib and retrieval line 24 of Reiter may act differently with respect to transmission of vibration.” PO App. Br., p. 20. Hear-Wear, however, does not articulate adequately the basis for that speculation. Moreover, even if the assertion is true, Hear-Wear does not explain why some difference involving vibration transmission somehow precludes combining the teachings of Reiter and Shennib. The “Teaching Away” Argument Hear-Wear’s bases its “teaching away” argument on the following disclosure in Shennib: For cosmetic reasons, consumers demand the smallest possible devices, as evident by the dramatic increase in the use of canal devices versus larger behind-the-ear alternatives. However, even with recent advances in microminiaturization, it is not practical to include an earmold coupler to canal devices as typically used in behind-the-ear (BTE) hearing devices. PO App. Br., p. 23 (quoting Shennib, p. 3, ll. 30-34). According to Hear- Wear, those sentences convey that Shennib’s teachings are “unsuitable” for any combination with a hearing device employing a BTE, such as Reiter, and thus constitute a “teach[ing] away.” Id. A reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the applicant’s claimed invention. DePuy Spine Inc. v. Medtronic Sofamor Danek, 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed Cir. 2004)). Here, while Shennib may prefer not to associate an earmold coupler with Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 20 BTE type hearing devices for cosmetic reasons or reasons of practicality, that preference is not a “teaching away.” The above-quoted portion of Shennib does not, as Hear-Wear contends, convey that Shennib’s teachings are “unsuitable” for, or inoperable, with BTE devices. We are not persuaded by Hear-Wear’s assertion that Shennib “teaches away” from any combination with Reiter. The “Unfit for Its Intended Purpose” Argument Hear-Wear also generally alleges that Reiter would be rendered “unfit for its intended purpose” if modified, based on Shennib, to include a handle assembly in lieu of a retrieval line. PO App. Br., p. 24. Hear-Wear provides little by way of explanation for its allegation other than to note that “visibility” and “aesthetic issues” have some relevance in the hearing aid art, and to state the following: [O]ne of ordinary skill in the hearing aid arts at the time of the present invention would understand that the handle 38 of receiver assembly 48 is not intended to be used with a hearing aid device and certainly would not use handle 38 of Shennib in the manner proposed by the rejection. Id. We are not persuaded by Hear-Wear. Contrary to Hear-Wear’s above- quoted statement, Shennib’s handle 38 is already used with a hearing aid device, i.e., the hearing aid device disclosed by Shennib. Indeed, each of Reiter and Shennib is directed clearly to “hearing aids” (Reiter, col. 1, ll. 6- 9; Shennib, p. 1, ll. 7-9) and each recognizes the need to include a component that facilitates insertion and removal of a portion of the hearing aid into a patient’s ear-canal. Hear-Wear does not explain meaningfully Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 21 what “intended purpose” in Reiter would be frustrated in selecting one particular mechanism for that insertion and removal over another. Accordingly, we are not persuaded by Hear-Wear’s argument that Reiter would somehow be rendered unfit for its intended purpose if combined with Shennib’s teachings directed to a handle component. Conclusion – Prima Facie case of Obviousness of Claim 1 Based on Reiter and Shennib We have considered Hear-Wear’s Appeal Brief and Rebuttal Brief. However, for the foregoing reasons, we are not persuaded of any error in the Examiner’s prima facie basis for rejecting claim 1 based on Reiter and Shennib. Claims 3, 6, 7, 9, 11, 12, 19, and 20 ultimately depend from claim 1 and are not separately argued apart from claim 1. We also are not persuaded of error in the Examiner’s prima facie basis for rejecting those dependent claims based on Reiter and Shennib. b. Claim 22 Claim 22 is independent and is drawn to a “method for providing a plurality of earpiece auditory device components, a portion of which may be assembled to form an earpiece auditory device tailored to a user.” PO App. Br., Claims App’x, p. 35. As a part of the method, claim 22 provides several components including a BTE component, a CIC component, and “a connector of sufficient length to physically couple” those two components. PO App. Br., Claims App’x, p. 36. Similar to claim 1, claim 22 requires that the connector be “sufficiently rigid” to be used to insert and remove the CIC component. Id. Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 22 As with claim 1, Hear-Wear argues that the Examiner’s rejection of claim 22 over Reiter and Shennib is deficient because the references allegedly do not teach a connector that is sufficiently rigid to allow insertion and removal of a CIC component. PO App. Br., p. 34. In that regard, Hear- Wear contends that Shennib’s handle 38, which the Examiner relied upon in accounting for the required connector, is “not part of the connector.” Id. Also, as it urged in connection with claim 1, Hear-Wear takes the position that Shennib “teaches away” from using a BTE component. Id. For reasons that are essentially the same as those discussed above with respect to claim 1, we are not persuaded that the prior art of Reiter and Shennib fails to account for a connector that is sufficiently rigid to allow insertion and removal of a CIC component. Hear-Wear also alleges that the combination of Reiter and Shennib does not teach the step of providing a connector that is “of sufficient length to physically couple” the BTE and CIC components once the CIC components are placed inside a user’s ear canal. PO App. Br., p. 34. In particular, Hear-Wear argues that neither Shennib’s speaker assembly 48 nor handle 38 is long enough to couple a BTE component to a CIC component. Id. The Examiner, in rejecting claim 22, noted that each of Reiter and Shennib discloses connectors that physically couple a component placed in a user’s ear canal and an external audio device. RAN, p. 13 (citing to Reiter’s Figure 1) and p. 14 (citing to Shennib’s Figure 20). Reiter’s Figure 1 clearly illustrates a cable 22 functioning as a connector between BTE component 12 and CIC component 18. Reiter, col. 2, ll. 15-23. Shennib’s Figure 20 shows Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 23 earpiece 40 arranged in an ear canal and handle 38, wires 37, and signal cable 39 extending from earpiece 40. Although no external audio device, such as a BTE device, is shown, Shennib explains that the earpiece is connected to such an external audio device. Shennib, p. 7, ll. 22-23. Shennib’s handle 38 facilitates insertion and removal of earpiece 40 as well as providing strain relief for wires 37 within signal cable 39. Shennib, p. 8, ll. 3-5. The handle 38 is understood as rendering the connector of Shennib, which is composed of that handle, wires 37, and cable 39, sufficiently rigid to enable the insertion and removal. As with Reiter, the connector between Shennib’s in-canal component and external audio component is recognized readily as being of sufficient length to connect those components. We, thus, are unpersuaded that the combination of Reiter and Shennib fails to satisfy a connector that is of sufficient length to physically couple a BTE component and a CIC component. Lastly, Hear-Wear argues that the preamble of claim 22, in reciting “a plurality of earpiece auditory device components,” where a portion of those components may be assembled to form an earpiece auditory device “tailored to a user,” renders claim 22 distinct from the combination of Reiter and Shennib. PO App. Br., p. 35. We do not agree. Even assuming that the preamble of claim 22 is “necessary to give life meaning, and vitality” to the claim so as to be construed as a limitation, see Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (quoting Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951), we are not persuaded that the preamble distinguishes claim 22 from the teachings of the prior art. The Examiner pointed to Reiter’s CIC component 18 as Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 24 constituting a plurality of earpiece auditory device components. RAN, p. 12. We observe that CIC component 18 is not a structure viewed as being composed of only a single component. Rather, as is evident from Reiter’s Figure 1, the CIC component 18 encompasses multiple structures or components, including those serving as a housing for receiver 20. The Examiner also pointed to Reiter’s column 2, lines 15-16 as conveying that CIC component 18 is tailored to a user. Id. That portion of Reiter describes that the CIC component “has a shell which is molded to fit completely in the patient’s hearing canal.” Reiter, col. 2, ll. 15-16. A shell molded to fit a particular patient is understood reasonably as being tailored to a user. Accordingly, after consideration of the record, we are not persuaded of error in the Examiner’s prima facie basis for rejecting claim 22 as unpatentable over Reiter and Shennib. Claims 24-27, 30, 31, and 41 ultimately depend from claim 22 and are not separately argued. We are also not so persuaded with respect to those dependent claims. c. Claims 2 and 23 Claim 2 depends from claim 1 and claim 23 depends from claim 22. Claim 2 adds to claim 1: “wherein said connector is detachably coupled at said proximal end with said BTE component.” Claim 23 adds to claim 22: “wherein said selected connector is operable to detachably couple said proximal end with said BTE component.” Hear-Wear argues that neither Reiter nor Shennib discloses a BTE component that is “detachably coupled” with a connector. PO App. Br., pp. 36-37. Hear-Wear thus contends that their combination does not convey reasonably such a detachable coupling configuration. Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 25 In accounting for that pertinent feature of claims 2 and 23, the Examiner states the following: Shennib discloses a connector (48) that is detachably coupled at its proximal end with said behind-the-ear component because detachment of signal wire 39 from connector 48 and removal of the signal wire 39 from the interior of connector 48 would result in the connector 48 being detached from the behind-the-ear component. RAN, pp. 10, 18. Thus, the Examiner assesses Shennib’s disclosure as teaching that the attachment of signal wire 39 to the connector is one understood as “detachably coupled.” The Examiner, however, does not explain the basis for that assessment nor point to evidence supporting it. That is, we do not discern how the Examiner determined that Shennib discloses that signal cable 39 is detachably coupled to any connector of Shennib. Even assuming the Examiner’s statement true, the claims require that the “connector is detachably coupled at said proximal end with said BTE component” (claim 2 and similarly in claim 23). Thus, the required detachable coupling is between the connector and the BTE component, i.e. an external audio device. Shennib’s handle 38 and receiver assembly 48 are components in the vicinity of the in-canal devices of Shennib. That the signal cable 39 may be decoupled from those components does not itself suggest any detachable coupling of a connector with a BTE component, i.e., the component of the hearing aid that is external to a user’s ear canal. HIMPP does not point to any disclosure in Shennib or Reiter establishing the detachably coupling feature required by claims 2 and 23. Instead, HIMPP relies on the paragraph 15 of the declaration testimony of Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 26 Henry H. Fletcher. See Req. Resp. Br., p. 22. Paragraph 15 of Mr. Fletcher’s Declaration is reproduced below: I understand that Patent Owner has argued that [Shennib] does not teach or suggest a detachable connection of the CIC connector (e.g., cable 29) to the external audio source (BTE unit). To the contrary, such a detachable connection would have immediately been seen as the most likely and logical implementation for the configuration described therein. Fletcher Decl. ¶ 15. Thus, Mr. Fletcher concludes that the required detachable connection would be “the most likely and logical implementation” in Shennib’s disclosure. Notably absent from that testimony, however, is a suitable explanation as to why such a connection would be “likely and logical” or any reference to evidence of record providing underlying support for the conclusion. Nothing requires a fact finder to credit unexplained testimony of an expert. Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). We are not persuaded that HIMPP has accounted sufficiently for the detachable coupling required by claims 2 and 23. Accordingly, we are unpersuaded that the teachings of Reiter taken with Shennib satisfy the requirements of claims 2 and 23. We do not sustain the Examiner’s rejection of those claims based on Reiter and Shennib. d. Claims 4, 5, 8, and 20 Claims 4, 5, 8, and 20 are each ultimately dependent on claim 1. Those dependent claims, reproduced below, set forth that certain components of claim 1 are “disposable”: 4. The device of claim 1 where said connector is disposable. Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 27 5. The device of claim 1 wherein said speaker module is a disposable component. --- 8. The device of claim 7 wherein said ear mold and said hollow sleeve constitute a disposable component.23 --- 20. The device of claim 19 wherein said ear mold and said integrally encapsulated speaker module constitute a disposable component.24 PO App. Br., Claims App’x, pp. 34-35. The Examiner determined that the “disposable” aspects of claims 4, 5, 8, and 20 are met by Shennib, reasoning that “all of the components disclosed by Shennib are ‘disposable’ within the ordinary and customary meaning of this claim terminology.” RAN, p. 10. HIMPP contends that the term “disposable” has no special definition in the ’562 patent and that under its broadest reasonable interpretation, the term means “that the user could dispose of the claimed element if desired.” Req. Resp. Br., p. 22. In support of its position, HIMPP also points to the declaration testimony of Dr. Stephen C. Thompson (id.), who testifies that one with ordinary skill in the art would have known that the most efficient means of addressing a malfunctioning part is to dispose of and replace the part (Thompson Decl. ¶ 45). 23 Claim 7 recites “[t]he device of claim 1 wherein said ear mold is stretched over a tubular neck of said hollow sleeve. 24 Claim 19 recites “[t]he device of claim 1 wherein said speaker module is integrally encapsulated into said ear mold.” Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 28 Hear-Wear expresses disagreement with the Examiner and HIMPP that Shennib’s components are disposable. Pointing to column 21, lines 19- 28 of the ’562 patent, Hear-Wear urges that the term “disposable,” when read in the context of that patent, means that disposable components “are readily replaced rather than repaired.” PO App. Br., p. 37. Hear-Wear generally concludes that Reither and Shennib do not satisfy the disposable aspects of claims 4, 5, 8, and 20. During reexamination, claim terms are given their broadest reasonable construction consistent with the specification. In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010). Claim terms are also usually given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, a “claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Any such definition “must be done with reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Here, although Hear-Wear directs us to column 21, lines 19-28 of the Specification of the ’562 patent (PO App. Br., p. 37), we do not discern that the portion sets forth a lexicographic definition of any claim term. Rather, the cited portion simply notes that a particular component of a disclosed embodiment is “disposable” such that it can be replaced without requiring repair, but does not set forth any special definition for the term “disposable.” Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 29 Indeed, that a component that is “disposable” may be replaced is in accord with the meaning of the term offered by HIMPP. Although Hear-Wear seemingly characterizes its position as one of disagreement with HIMPP, both parties have offered meanings of “disposable” that are essentially the same and consistent with the Specification of the ’562 patent. In that regard, “disposable,” in connection with a particular component, means that the component may be removed and replaced. That is, in our view, the ordinary and customary meaning of the term. The Examiner and HIMPP submit that the pertinent components of Shennib are “disposable.” Although Hear-Wear does not agree with the Examiner and HIMPP, we are not persuaded that Hear-Wear’s disagreement is well founded. We do not discern that Shennib or, for that matter, Reiter imposes any restriction on the components of its hearing device that requires that any component must remain as a part of the device and cannot be removed and replaced. On this record, we do not discern how the term “disposable” as applied to the components of claims 4, 5, 8, and 20 serves to structurally distinguish those components over the corresponding components of the prior art. We have considered the record and, for the foregoing reasons, are not persuaded of error in the Examiner’s prima facie basis for rejecting claims 4, 5, 8, and 20 as unpatentable over Reiter and Shennib. 2. Reiter, Shennib, and Posen The Examiner rejected claims 15-18 and 38-40 as unpatentable over Reiter, Shennib, and Posen. Claims 15-18 and 38-40 ultimately depend from either claim 1 or claim 22. Hear-Wear generally urges that the Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 30 combination of Reiter and Shennib allegedly do not teach certain features of claims 1 and 22 and that Posen does not cure the deficiencies. As discussed above, however, we are not persuaded of any defects in the Examiner’s rejection of claims 1 and 22 based on Reiter and Shennib. Hear-Wear also offers an additional argument as to claims 17 and 18. Those claims ultimately depend from claim 1, with claim 17 adding “wherein said locking pin assembly is disposable,” and claim 18 adding “where said speaker module, said ear mold, and said locking pin assembly constitute a disposable component.” PO App. Br., Claim App’x. In accounting for the requirements of claims 17 and 18, the Examiner found that components in Posen corresponding to those of claim 17 and 18 were “disposable.” RAN, pp. 21- 22. Posen is directed to attenuating/damping structures for hearing aids. Posen, col. 1, ll. 8-9. Hear- Wear does not challenge the Examiner’s determination that Posen discloses the features required by claims 17 and 18 other than to urge generally that those features are not “disposable.” PO App. Br., p. 38. As discussed above, the record reflects that the ordinary and customary meaning of “disposable,” in conjunction with a given component, is that the component may be removed and replaced. As with Shennib and Reiter, we do not discern that Posen mandates that any component of its disclosed devices must be maintained and cannot be removed and replaced. We are not persuaded, on this record, that the Examiner was incorrect in determining that one with ordinary skill in the art would have appreciated that the pertinent components in Posen are “disposable.” Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 31 We conclude that the Examiner has established an adequate prima facie basis for rejecting claims 15-18 and 38-40 as unpatentable over Reiter, Shennib, and Posen. 3. Reiter, Shennib, and Schiess The Examiner rejected claim 21 as unpatentable over Reiter, Shennib, and Schiess. Claim 21 depends from claim 1. Although claim 21 is addressed under a separate heading in Hear-Wear’s Appeal Brief, Hear- Wear’s arguments as to the patentability of claim 21 over Reiter, Shennib, and Schiess are premised on claim 21’s dependency on claim 1. PO App. Br., p. 38. In that regard, Hear-Wear contends that Schiess does not cure alleged deficiencies of Reiter and Shennib in connection with the features of claim 1. As discussed above with respect to claim 1, we are not persuaded that the combination of Reiter and Shennib fails to satisfy the features of claim 1. Accordingly, we are also not persuaded that the combination of Reiter, Shennib, and Schiess fails to establish a prima facie case of obviousness for claim 21. 4. Evidence of Non-Obviousness “[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument.” Id. As Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 32 discussed above, we are persuaded that the Examiner has met her burden in presenting a prima facie case of unpatentability for each of claims 1, 3-9, 11, 12, 19, 20, 22, 24-27, 30, 31, and 41. In response to the Examiner’s rejections, Hear-Wear offers evidence of secondary considerations that it contends demonstrates the non- obviousness of claim 1. In particular, Hear-Wear contends that it has submitted ample evidence that companies in the hearing aid industry have licensed the ’562 patent and that others in the industry have copied the invention of claim 1 of the ’562 patent. PO App. Br., pp. 24-32. Hear-Wear urges that the proffered evidence undercuts the Examiner’s case of obviousness for claim 1 of the ’562 patent. The Examiner indicates that the evidence had been considered but was insufficient to outweigh the strong evidence of obviousness presented by the prior art. RAN, pp. 25-30. HIMPP also contends that the evidence is insufficient in that regard. Req. Resp. Br., pp. 23-26. We turn to consideration of the proffered evidence. a. Licensing Hear-Wear contends that it has submitted evidence that companies in the hearing-aid industry constituting “approximately 60% of the market share” have licensed the ’562 patent. PO App. Br., p. 25. In support thereof, Hear-Wear points to a paragraph 15 of the Declaration of James Feeley25. Id. That paragraph of the Feeley Declaration is reproduced below: 25 See “Declaration of James Feeley” dated May 12, 2009 (“Feeley Decl.”) and filed with Hear-Wear’s Appeal Brief as “Item 5.” Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 33 Hear-Wear Technologies has granted licenses to a group of patents, which includes the ‘562 patent, to a number of companies in the hearing aid industry, including three of the five largest hearing aid manufacturers. I estimate that, collectively, the licensed companies represent approximately 60% of the total hearing aid market in the United States. Additionally, Hear-Wear is currently in negotiations to grant further licenses to other companies for the ‘562 patent. Feely Decl. ¶ 15. Thus, Mr. Feeley testifies that Hear-Wear has granted licenses to a “group of patents” that includes the ’562 patent. Notably absent from Mr. Feeley’s testimony, however, is credible evidence that, of that “group” of patents, it is the invention of the ’562 patent that had attained industry respect. See In re Roufett, 149 F.1350, 1355 (Fed. Cir. 1998) (characterizing “licenses showing industry respect for the invention” as a form of objective evidence of nonobviousness). Indeed, Mr. Feely’s testimony does not attribute any particular respect or significance to the invention of the ’562 patent. Furthermore, the noted testimony also does not establish that any licensed company actually practices the invention of the ’562 patent as a part of any licensing agreement. We observe that Hear-Wear attempts to bolster the above-noted testimony. In that regard, Hear-Wear points to paragraph fourteen of a supplemental Declaration of Mr. Feeley26. PO App. Br., p. 26. That paragraph is reproduced below: Hear-Wear Technologies has granted licenses to a group of patents, which includes the ‘562 patent, to a number of 26 See “Supplemental Declaration of James Feeley” dated May 24, 2010 (“Supp. Feeley Decl.”) and filed with Hear-Wear’s Appeal Brief as “Item 6” of the Evidence Appendix. Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 34 companies in the hearing aid industry, including three of the five largest hearing aid manufacturers. I estimate that, collectively, the licensed companies represent approximately 60% of the total hearing aid market in the United States. Many of the licensed manufacturers incorporate multiple teachings of the present application and its claims in their previous and current products. Additionally, Hear-Wear is currently in negotiations to grant further licenses to other companies for the ‘562 patent. Supp. Feely Decl. ¶ 14. Thus, Mr. Feeley generally testifies that “[m]any of the licensed manufacturers incorporate [in their products] multiple teachings of the present application and its claims.” Id. According to Hear-Wear, Mr. Feeley’s testimony “supports a conclusion that the ’562 patent was important to the licensing negotiations” and is “strong evidence that the patent is nonobvious.” PO app. Br., p. 26. “For objective evidence to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” In re GPAC Inc., 57 F.3d 1573, 1580 (Fed.Cir.1995). In that regard, while licenses may constitute evidence of nonobviousness “only little weight can be attributed to such evidence if the patentee does not demonstrate ‘a nexus between the merits of the invention and the licenses of record.’” Id. (quoting Stratolex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983)). Here, we do not discern that a general statement that some unspecified “teachings” of the claims of the ’562 patent were associated in some fashion with the noted licensing agreements establishes the requisite nexus. An ambiguous reference alluding only generally to such teachings provides little Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 35 elaboration as to what teachings were of any significance. Moreover, even assuming that Mr. Feeley’s testimony provides evidence that some aspects of the claims of the ’562 patent are incorporated in products of the licensed companies, we are not persuaded that the evidence is “strong” or that it outweighs the palpable evidence of obviousness discussed above. b. Copying Hear-Wear also contends that it has provided evidence of copying “in the form of declarations, marketing materials, and claim charts which show that major manufacturers (e.g. Inerton, Oticon, and Phonak) in the hearing aid industry copied the claimed invention of the ’562 patent.” PO App. Br., p. 26. HIMPP disagrees with Hear-Wear that the proffered evidence demonstrates copying. Req. Resp. Br., pp. 25-26. We have considered the evidence of record and agree with HIMPP. “[C]opying by a competitor may be a relevant consideration in the secondary factor analysis.” Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004) (citing Vandenberg v. Dairy Equip. Co., 740 F.2d 1560, 1567 (Fed.Cir.1984). Copying as objective evidence of nonobviousness requires evidence of effort to replicate a specific product. Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010); Iron Grip, 392 F.3d at 1325. Furthermore, “a nexus between the copying and the novel aspects of the claimed invention must exist for evidence of copying to be given significant weight in an obviousness analysis.” Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012) (internal quotation omitted). Generally, evidence of alleged copying may be given little weight when the copy is not identical to the product embodying the Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 36 claimed invention. See Pentec, Inc. v. Graphic Controls, Corp., 776 F.2d 309, 317 (Fed. Cir. 1985). Here, Hear-Wear points to evidence that it contends establishes that products from three companies, Interton, Oticon, and Phonak, are copies of a “Voice-Q PAC hearing aid” which embodies the claimed invention of the ’562 patent. PO App. Br., p. 26. The evidence offered by Hear-Wear includes marketing materials for products from each of Interton, Oticon, and Phonak and “claim charts” that Hear-Wear contends are sufficient to demonstrate copying of the invention of claim 1.27 In particular, the products are described as a “GN/Interton Shape Product,” an “Oticon Delta Product,” an “Oticon Epoq Product,” and a “Phonak Micropower Product.” PO App. Br, Evidence App’x, items 8, 10, 11, and 12. In reviewing the noted claim charts, we observe that with respect to the “GN/Interton Shape Product,” the “Oticon Delta Product,” and the “Oticon Epoq Product,” the charts do not explain how the “sufficiently rigid connector” requirement of claim 1 is set forth in the pertinent product. See id. at items 1, 10, and 11. Indeed, the claim charts make no reference to that feature in connection with the referenced products. It also is not readily apparent how that feature is disclosed or described in the accompanying marketing materials of the products. With respect to the “Phonak Micropower Product,” the claim chart generally states that a corresponding connector portion is sufficiently rigid for insertion and removal and draws support for that statement through a 27 The marketing materials appear as items 8-12 in the Evidence Appendix of Hear-Wear’s Appeal Brief. Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 37 representation that the “Patent Owner’s inspection” of the product demonstrates that it is sufficiently rigid. PO App. Br., Evidence App’x, item 12. We do not discern that the noted representation is offered as declaration testimony that is compliant with 37 C.F.R. § 1.68. The Patent Owner’s blanket assurance that the connector is sufficiently rigid as required amounts simply to an inadequately supported assertion. It also is not apparent readily how that requirement is set forth in the accompanying marketing materials of the Phonak Micropower product. We have considered the evidence presented but do not discern that it adequately establishes that the pertinent products are replications of a product that includes all the features of claim 1 of the ’562 patent. In any event, even assuming that the noted “GN/Interton,” “Oticon,” and “Phonak” products do incorporate all the features of claim 1, it is not the case that “every competing product that arguably falls within the scope of a patent is evidence of copying.” IronGrip Barbell Co., Inc., 392 F.3d at 1325. Rather, as noted above, copying requires the “replication” of a specific product was replicated. Id. Here, Hear-Wear bases its “copying” position on the introduction of its “Voice-Q PAC” hearing aid at a convention in 2003, which Hear-Wear contends is a hearing aid embodying the invention of the ’562 patent. PO App. Br., pp. 26-27. According to Hear-Wear, its proffered evidence shows that representatives of each of Interton, Oticon, and Phonak were at that conference and “used their knowledge of the invention of the ’562 [p]atent to develop” to copy hearing aids between 2005 and 2006. Id. at p. 27. Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 38 Even assuming that the evidence adequately establishes that representatives of those companies were in attendance at the conference, Hear-Wear offers little in the way of support for its assertion that it was the knowledge of the “Voice-Q PAC” product presented at the 2003 convention that was “used” to produce the noted competing products. As discussed above, all of the components of claim 1 of the ‘562 patent were already known in the hearing aid prior art and used for the same purposes as in the ’562 patent. That Interon, Oticon, and Phonak were represented at the conference and also developed products incorporating those prior art components does not itself show, as Hear-Wear specifically urges, that it was the knowledge of the “Voice-Q PAC” hearing-aid that was used. However, the underlying basis of Hear-Wear’s assertions of copying is that it was the knowledge gleaned specifically from the conference that led to the alleged copying. c. Conclusion – Evidence of Non-Obviousness We have carefully considered the evidence offered by Hear-Wear in support of its position that claim 1 of the ’562 patent is non-obvious. We have weighed that evidence with the evidence offered by HIMPP and the Examiner in support of obviousness. On balance, we conclude that the strong evidence of obviousness outweighs the weak evidence of non- obviousness. 5. Summary – Hear-Wear’s Appeal For the foregoing reasons, we summarize our determination as follows: Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 39 The Examiner’s rejection of claims 1, 3-9, 11, 12, 19, 20, 22, 24-27, 30, and 41 based on Reiter and Shennib is sustained. The Examiner’s rejection of claims 15-18 and 38-40 over Reiter, Shennib, and Posen is sustained. The Examiner’s rejection of claim 21 over Reiter, Shennib, and Schiess is sustained. The Examiner’s rejection of claims 2 and 23 over Reiter and Shennib is not sustained. B. HIMPP’S APPEAL HIMPP appeals the Examiner’s decision confirming the patentability of claims 13, 14, and 32-37 of the ’562 patent. HIMPP also contends that the Examiner erred in declining to maintain various proposed rejections involving each of claims 1-9, 11-27, and 30-41 (the “proposed rejections”). 1. The Confirmation of Claims 13, 14, and 32-37 Claim 13 depends from claim 1 and adds that “said ear mold is a custom fit ear mold.” Claim 32 depends from claim 22 and adds the same feature. Claim 14 depends from claim 13 and claims 33-37 ultimately depend from claim 32. The Examiner’s refusal to reject the above-noted claims is based on the added features of each of claims 13 and 32. In particular, the Examiner offered the following reasoning: Claims 13 and 32 require an ear mold that is a custom fit ear mold. Shennib teaches away from the use of a custom fit ear mold stating on page 3 in the second and third full paragraphs: Unfortunately, even with custom earpieces or canal devices, small gaps between the ear piece and the wall of the ear canal frequently occur. Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 40 These gaps, which are a significant source of acoustic feedback, occur because ear impressions are unable to mimic the geometry of the ear canal identically. Furthermore, gaps can also occur during canal deformations associated with jaw movements. Proving a tight fit to minimize gaps and improve sealing is usually accompanied by discomfort, irritation, or even pain particularly in the bony portion of the canal which is sensitive and more prone to discomfort and irritation. Accordingly, modifying the completely-in-canal component disclosed by Shennib to use a custom fit ear mold would not have been obvious to one of ordinary skill in the art at the time of the invention. Claims 14 and 33-37 depend from claims 13 and 32, respectively and likewise are confirmed.28 Thus, the basis of the Examiner’s non-adoption of any proposed rejection of claims 13, 14, and 32-37 is premised on a theory that Shennib “teaches away” from a custom fit ear mold. That is a position also advocated by Hear-Wear (2nd PO Resp. Br., pp. 6-7) but disputed by HIMPP (Req. App. Br., pp. 10-12). We are not persuaded that the Examiner’s teaching away position is correct. A reference “teaches away” when it criticizes, discredits or otherwise discourages investigation into the claimed invention. DePuy Spine Inc., 567 F.3d at 1327. Here, however, rather than criticizing, discrediting or discouraging the use of “custom” earmolds, the reproduced portion of Shennib simply notes that “even” with such custom earpieces, 28 See page 34 of the “Office Action In Inter Partes Reexamination” mailed March 31, 2010. Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 41 undesirable gaps may be present between the earpiece and the wall of an ear canal. That such gaps “even” occur with such custom pieces does not convey that such custom ear pieces are undesirable as compared with non- custom ear pieces. Indeed, the logical reading of that disclosure merits the opposite conclusion. That is, such gaps are known to arise when using non- custom ear pieces, such as ear molds, and that, while using custom ear molds may reduce the size of such gaps, they still remain as a detrimental factor or undesired result. Furthermore, even assuming that Shennib recognizes some drawbacks in connection with “custom” ear molds, the reference also sets forth that custom fabrication of ear pieces is a known approach “to ensure an exact fit of the earpiece to the canal of the individual” and that providing a “tighter fit” is intended “to minimize gaps and improve sealing[.]” Shennib, p. 3. While such a tighter fit may be “accompanied by discomfort, irritation, or even pain” (id.), it is clear that there is a trade-off between such detriments and the gap minimization and sealing improvement benefits noted-above. That Shennib may express generally a preference for a technique that minimizes the possibility of discomfort does not mean that it teaches away from investigation into other techniques. See DePuy Spine Inc., 567 F.3d at 1327. We also observe that HIMPP relies on the declaration testimony of Henry Fletcher29 in urging that customized ear molds were known in the art. Req. App. Br., p. 11. Mr. Fletcher testifies that based on the disclosure of 29 See “Declaration of Henry H. Fletcher” dated June 28, 2010 (“Fletcher Decl.”) and filed as “Item 1” in the Evidence Appendix of HIMPP’s Appeal Brief. Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 42 Shennib, one with ordinary skill in the art would have known that “customized ear molds are a known fitting option” despite the recognized drawbacks and that “[f]or some, custom ear molds would have been seen as a viable option and perhaps even the preferred option.” Fletcher Decl. ¶ 16. We credit that testimony, as it is, in our view, consistent and complementary with the disclosure of Shennib. For the foregoing reasons, we disagree with the Examiner and Hear- Wear that Shennib “teaches away” from the use of custom ear molds. We are thus not persuaded the teachings of Shennib are precluded from combination with Reiter in connection with custom fit ear molds. 2. The Proposed Rejections HIMPP contends that the Examiner erred in declining to adopt various proposed claims rejections. By our count, there are ten such rejections that were proposed by HIMPP in its request for inter partes reexamination of the ’562 patent in connection with claims 1-9, 11-27, and 30-41. a. Claims 13, 14, and 32-37 With respect to claims 13, 14, and 32-37, we observe that HIMPP urges the following with respect to the relief that it seeks from this Board in connection with the rejections that were not adopted by the Examiner: In view of the foregoing, Requester requests that the Board reverse the confirmation of claims 13, 14, and 32-37, by overturning the Office’s erroneous finding that Shennib teaches away from a custom ear mold. Req. App. Br., p. 32. Thus, the relief that HIMPP seeks with respect to claims 13, 14, and 32-37 is that this Board “reverse” the Examiner’s Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 43 confirmation of claims 13, 14, and 32-37 as patentable and, in so reversing, presumably enter a corresponding ground of rejection of those claims that was outlined in HIMPP’s request for inter partes reexamination as a new ground of rejection. HIMPP proposed a ground of rejection of claims 13, 14, 32 and 37 involving the teachings of Reiter, Toht, Shennib, and Shennib ’348 and a ground of rejection of claims 33-36 involving Reiter, Toht, Shennib, and Shennib ’348, and Topholm. As discussed above, we are not persuaded that Shennib teaches away from a custom ear mold. We have considered Hear-Wear’s arguments offered in its Second Respondent Brief that a combination involving Reiter, Toht, and Shennib is insufficient to account for certain aspects of the claims. See generally 2nd PO Resp. Br., pp. 7-11 and 22-23. We are not persuaded by any of those arguments. For example, particularly in light of the teachings of Shennib, we are satisfied that a connector that is “sufficiently rigid” to allow insertion and removal of a CIC component from a user’s ear canal is known in the art. We are also persuaded that a person of ordinary skill in the art would have had adequate reasons to combine the teachings of Reither, Toht, and Shennib. We are persuaded that HIMPP’s request for inter partes reexamination establishes that claims 13, 14, and 32-37 would have been obvious in light of the prior art. Accordingly, we enter the following rejections that were proposed by HIMPP: A. Claims 13, 14, 32, and 37 are unpatentable under 35 U.S.C. § 103(a) based on Reiter, Toht, Shennib, and Shennib ’348; and Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 44 B. Claims 33-36 are unpatentable under 35 U.S.C. § 103(a) Reiter, Toht, Shennib, and Shennib ’348, and Topholm. The above-noted grounds of rejection constitute new grounds under 37 C.F.R. § 41.77(b) and are hereby designated as such. b. Claims 1-9, 11, 12, 15-27, 30, 31, and 38-41 We observe that with respect to the remaining rejections that are at issue in HIMPP’s appeal and applied to claims 1-9, 11, 12, 15-27, 30, 31, and 38-41, HIMPP requests the following relief from the Board: Requester submits that if the rejections adopted in the Third Office Action should be reversed as to any claim or claims, that claim or claims are still unpatentable over the combination of references proposed in the twice-adopted and arbitrarily withdrawn proposed [rejections]. Thus, in the event that any of these rejections are reversed, Requester respectfully requests that the Board set forth the corresponding unadopted proposed rejection as a new ground of rejection under 37 CFR 41.77(b) Req. App. Br., p. 32. Thus, the relief that HIMPP seeks is that, “in the event” this Board reverses any claim rejection adopted by the Examiner in the “Third Office Action”30, the Board should enter a corresponding unadopted ground of rejection set forth in HIMPP’s request as a new ground of rejection. Thus, HIMPP’s requested relief is contingent on the Board’s reversal of any claim rejection that was adopted by the Examiner. As discussed above in the context of Hear-Wear’s appeal, the Board has sustained all the rejections that were adopted by the Examiner save for the rejection of claims 2 and 23 based on the combination of Reiter and 30 We understand that the “Third Office Action” is the Office action mailed March 31, 2010. Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 45 Shennib. HIMPP alternatively proposes that claims 2 and 23 are unpatentable over a combination of Toht, Reiter, and Shennib. Dependent claims 2 and 23 add to claims 1 and 22, respectively, that the connector is “detachably coupled” (clam 2) or “operable to detachably couple” (claim 23) to the proximal end of a BTE component. As noted above, we determined that a combination of Reither and Shennib does not account for that detachable coupling feature. HIMPP’s alternative ground of rejection of claims 2 and 23 relies on Toht for that feature. Toht is directed to a hearing aid. Toht’s Figure 1 discloses an embodiment of the invention and is reproduced below: As shown in Figure 1, amplifier unit 1 is attached, via cable conductor 3, to receiver portion 2 that is placed within a user’s ear. Amplifier unit 1 is described as a component that may be worn “behind a person’s ear.” Toht, col. 1, ll. 45-49. Toht also discloses that cable or “connector” 3 is “normally detachably connected to units 1 and 2, as by plug and socket connection.” Id. at col. 1, ll. 61-63. In light of Toht’s disclosure, we are satisfied that a person of ordinary skill in the art would have known that hearing aids, including known components such as a CIC component and a BTE Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 46 component, may be connected via a connector portion that is detachably coupled to the BTE, as well as the CIC component, so as to allow detachment of the connector from each component when desired. Accordingly, we are persuaded that claims 2 and 23 would have been obvious in light of the ground of rejection based on the combination of Toht, Reiter, and Shennib, which was proposed by HIMPP. Accordingly, we enter a ground of rejection of claims 2 and 23 as unpatenble under 35 U.S.C. § 103(a) based on Toht, Reiter, and Shennib. That ground of rejection constitutes a new ground under 37 C.F.R. § 41.77(b) and is hereby designated as such. III. CONCLUSION For the foregoing reasons, we conclude that the record adequately establishes that each of claims 1-9, 11-27, and 30-41 of the ’562 patent is unpatentable over the prior art. IV. ORDER 1. Hear-Wear’s Appeal The Examiner’s decision to reject claims 1, 3-9, 11, 12, 19, 20, 22, 24- 27, 30, 31, and 41 based on Reiter and Shennib is affirmed. The Examiner’s decision to reject claims 15-18 and 38-40 over Reiter, Shennib, and Posen is affirmed. The Examiner’s decision to reject claim 21 over Reiter, Shennib, and Schiess is affirmed. The Examiner’s decision to reject claims 2 and 23 over Reiter and Shennib is reversed. Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 47 2. HIMPP’s Appeal We enter the following new grounds of rejection: A. Claims 13, 14, 32, and 37 are unpatentable under 35 U.S.C. § 103(a) based on Reiter, Toht, Shennib, and Shennib ’348; B. Claims 33-36 are unpatentable under 35 U.S.C. § 103(a) based on Reiter, Toht, Shennib, Shennib ’348, and Topholm; and C. Claims 2 and 23 are unpatentable under 35 U.S.C. § 103(a) based on Toht, Reither, and Shennib. We do not reach the merits of any other grounds of rejection discussed as a part of HIMPP’s appeal. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.77(b) which provides that “[a]ny decision which includes a new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Correspondingly, no portion of the decision is final for purposes of judicial review. A requester may also request rehearing under 37 C.F.R. § 41.79, if appropriate; however, the Board may elect to defer issuing any decision on such request for rehearing until such time that a final decision on appeal has been issued by the Board. For further guidance on new grounds of rejection, see 37 C.F.R. § 41.77(b)-(g). The decision may become final after it has returned to the Board. 37 C.F.R. § 41.77(f). 37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION, must exercise one Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 48 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. . . . Any request to reopen prosecution before the examiner under 37 C.F.R. § 41.77(b)(1) shall be limited in scope to the “claims so rejected.” Accordingly, a request to reopen prosecution is limited to issues raised by the new ground(s) of rejection entered by the Board. A request to reopen prosecution that includes issues other than those raised by the new ground(s) is unlikely to be granted. Furthermore, should the patent owner seek to substitute claims, there is a presumption that only one substitute claim would be needed to replace a cancelled claim. A requester may file comments in reply to a patent owner response. 37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall be limited in scope to the issues raised by the Board's opinion reflecting its decision to reject the claims and the patent owner’s response under paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not permitted as a matter of right. A newly proposed rejection may be appropriate if it is presented to address an amendment and/or new evidence properly submitted by the patent owner and is presented with a brief Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 49 explanation as to why the newly proposed rejection is now necessary and why it could not have been presented earlier. Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for all patent owner responses and requester comments, is required. The examiner, after the Board’s entry of a patent owner response and requester comments, will issue a determination under 37 C.F.R. § 41.77(d) as to whether the Board’s rejection is maintained or has been overcome. The proceeding will then be returned to the Board together with any comments and reply submitted by the owner and/or requester under 37 C.F.R. § 41.77(e) for reconsideration and issuance of a new decision by the Board as provided by 37 C.F.R. § 41.77(f). AFFIRMED-IN-PART; 37 C.F.R. § 41.77(b) peb Appeal 2013-003959 Reexamination Control 95/001,021 Patent 7,110,562 50 THIRD-PARTY REQUESTER: Robert Greene Sterne Jason D. Eisenberg STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 New Yerk Avenue, N.W. Suite 800 Washingten, DC 20005 PATENT OWNER: R. Ross Viguet FULBRIGHT & JA WORSKI L.L.P. 2200 Ross Avenue Suite 2800 Dallas, TX 75201-2784 Copy with citationCopy as parenthetical citation