Ex Parte 5606621 et al

Board of Patent Appeals and Interferences

Nov 19, 2010

90010085 (B.P.A.I. Nov. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/010,085 05/02/2008 5606621 Q105785 8410
29053 7590 11/19/2010
FULBRIGHT & JAWORSKI L.L.P
2200 ROSS AVENUE
SUITE 2800
DALLAS, TX 75201-2784
EXAMINER
BROWNE, LYNNE HAMBLETON
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/19/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte Hear-Wear Technologies, L.L.C.
Appellant
____________

Appeal 2010-007940
Reexamination Control 90/010,085
Patent 5,606,621
Technology Center 3900
____________

Before SALLY C. MEDLEY, SCOTT R. BOALICK and
KEVIN F. TURNER, Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.
DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-007940
Reexamination Control 90/010,085
Patent 5,606,621
2
STATEMENT OF THE CASE
Hear-Wear Technologies, L.L.C. (“Hear-Wear”), the owner of the
patent under reexamination, appeals under 35 U.S.C. §§ 134(b) and 306
from a final rejection of claims 1-4. We have jurisdiction under
35 U.S.C. §§ 134(b) and 306. Oral argument was held 3 November 2010.
We REVERSE.
BACKGROUND
This reexamination proceeding arose from a third-party request for ex
parte reexamination, filed by K/S Hearing Instrument Manufacturers Patent
Partnership (Request for Ex Parte Reexamination, filed 31 Dec. 2007).
Patent 5,606,621 issued with 3 claims. Hear-Wear has added claim 4.
Referring to Hear-Wear’s figure 1 below, [numbers from figure 1
inserted] the invention is related to a hearing aid including a completely-in-
canal (“CIC”) component [18] that is mechanically isolated from a behind-
the-ear (“BTE”) component [10]. Col. 1, ll. 40-44, 51-53; col. 2, ll. 11-20.
Hear-Wear’s figure 1 is below:

Figure 1 depicts a hearing aid.
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Claim 1 is illustrative:
1. A hearing aid, comprising:
a behind-the-ear component, the behind-the-ear
component being shaped to fit behind the ear of a patient and
containing a microphone, battery receiving means and amplifier
means, the amplifier means being operatively connected to the
microphone and a battery received in the battery receiving
means, and producing an amplified electrical signal in response
to sound at the microphone; and
a completely-in-canal component, the completely-in-
canal component being mechanically isolated from the behind-
the-ear component, being shaped to fit into the ear canal of the
patient in such a manner as to touch the bony portion of the ear
canal, the completely-in- canal component containing a hearing
aid receiver and being operatively connected to the amplifier
means.
The Examiner relies on the following prior art references:
McCarrell et al. (“McCarrell”) 3,209,082 28 Sep. 1965
de Vries et al. (“de Vries”) 4,727,582 23 Feb. 1988
Shennib et al. (“Shennib”) 5,701,348 23 Dec. 1997
Hear-Wear appeals the following rejections under 35 U.S.C. § 103(a):
claims 1 and 2 as unpatentable over de Vries and McCarrell;
claims 1 and 2 as unpatentable over de Vries and Shennib;
claim 3 as unpatentable over de Vries, McCarrell and Claes;
claim 3 as unpatentable over de Vries, Shennib and Claes;
claim 4 as unpatentable over de Vries, McCarrell and Guice; and
claims 4 as unpatentable over de Vries, Shennib and Guice.
ISSUE
Does de Vries describe a hearing aid in which the in-the-ear
component is mechanically isolated from the behind-the-ear component?
Appeal 2010-007940
Reexamination Control 90/010,085
Patent 5,606,621
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FINDINGS OF FACT
Hear-Wear’s Patent Specification
1. Hear-Wear’s Patent Specification discloses, referring to Hear-Wear’s
figure 1 above [numbers from figure 1 inserted], a hearing aid
including a CIC component [18] connected to a BTE component [10]
by a thin flexible wire cable [22]. Col. 2, ll. 11-20, 44-48, 63-65.
2. The BTE [10] and CIC [18] components are mechanically isolated
from each other and, due to the mechanical isolation, electroacoustic
feedback is greatly reduced. Col. 1, ll. 40-44, 51-53.
Declaration of David Hotvet
3. Sound is a form of mechanical vibration, which requires a medium
through which it is transmitted. ¶ 7.
4. In the context of the disclosure of the ‘621 patent, because of the
mechanical isolation of the components, there is no meaningful
mechanical medium, in the hearing aid, for transmitting vibrations, in
the normal operation of the hearing aid, from one component to the
other. ¶ 7.
Declaration of Adnan Shennib
5. Mechanical isolation means that, vibrations from one component are
not capable of being conducted to another component. ¶ 13.
de Vries
6. de Vries describes, referring to de Vries’ figure 2 below [numbers
from figure 2 inserted], a hearing aid that includes a first unit [1] with
an amplifier [4] to be worn behind the ear and a second unit [2] with a
earphone [12] intended to be worn in the ear. Col. 4, ll. 22-33, 37-42.
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Patent 5,606,621
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de Vries’ figure 2 is below:

Figure 2 depicts a hearing aid.
7. The hearing aid comprises a first connecting means [14] enabling the
amplifier [4] to be coupled electrically to the earphone [12] and a
second connecting means or tubular element [15] for the mechanical
connection between the BTE unit [1] and the ITE unit [2] within
which the wire or connecting means [14] is accommodated. Abs.; col.
1, ll. 14-18; col. 4, ll. 49-54; figs. 1-6.
8. The tubular element [15] is made of a flexible material. Col. 5, ll. 13-
14.
9. de Vries describes, referring to de Vries’ figure 7 below [numbers
from figure 7 inserted], the first connecting means [14] is constructed
of a plastic core [40] around which electrical conductors [42] and [43]
are wound and accommodated in a sleeve [41]. Col. 6, ll. 39-45.
de Vries’ figure 7 is below:

Figure 7 depicts an electrical connecting means.
10. The core [40] provides stress relief for the first connecting means
[14]. Col. 6, ll. 53-55.
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Reexamination Control 90/010,085
Patent 5,606,621
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11. The ends of the core [40] are mechanically secured in the BTE [1] and
ITE [2] units. Col. 6, ll. 55-56.
12. The tubular element [15] is axially slidable inside the hook [3] of the
BTE unit [1] which enables the hearing aid to be adapted to the size of
the ear of the person wearing the hearing aid. Abs.; col. 4, l. 55-col. 5,
l. 6; col. 5, ll. 13-14.
13. After adaptation, the tubular element [15] is secured in the hook [3]
by an adhesive [21] or a clamping nut (fig. 5). Col. 6, ll. 10-22.
ANALYSIS
Claim 1 recites: “[a] hearing aid comprising: . . . a completely-in-
canal component . . . being mechanically isolated from the behind-the-ear
component . . . .” The Examiner and Hear-Wear dispute whether de Vries
alone or in combination with McCarrell or Shennib describe a hearing aid
with a CIC component that is mechanically isolated from the BTE
component. App. Br. 9-13; Ans. 5, 11, 23-24, 40, 42-46, 60.
Hear-Wear discloses a hearing aid with a CIC component [18]
connected to the BTE component [10] by a thin flexible wire cable [22].
Col. 2, ll. 11-20, 44-48, 63-65. According to Hear-Wear’s Specification,
electroacoustic feedback is greatly reduced because the BTE [10] and CIC
[18] components are mechanically isolated from each other. Col. 1, ll. 40-
44, 51-53. Sound is a form of mechanical vibration which requires a
medium through which it is transmitted. Hotvet Dec. ¶ 7. Mechanical
isolation means that, in the normal operation of the hearing aid, there is no
meaningful mechanical medium for transmitting vibrations from one
component to the other. Hotvet Dec. ¶ 7; Shennib Dec. ¶ 13. In other
words, during use, Hear-Wear’s thin flexible wire cable [22] does not
Appeal 2010-007940
Reexamination Control 90/010,085
Patent 5,606,621
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provide a meaningful mechanical medium for transmitting vibrations
between the BTE [10] and CIC [18] components, thereby reducing
electroacoustic feedback. Therefore, mechanical isolation means that during
normal operation, electroacoustic feedback is reduced because there is no
meaningful mechanical medium for transmitting vibrations from one
component to the other.
The Examiner finds that de Vries describes a hearing aid with a BTE
component [1] and an in-the-ear (“ITE”) component [2] that is mechanically
isolated from the BTE component [1] on the basis that the only connection
between the BTE [1] and CIC [2] components is the wire [14]. Ans. 4-5, 10-
11, 42-43, citing fig. 1.
The Examiner does not rely on de Vries for describing a CIC
component, instead relying on McCarrell or Shennib for describing a hearing
aid with a CIC component. Ans. 5, 11, citing McCarrell col. 2, ll. 18-19 and
Shennib col. 1, ll. 34-41. The Examiner determined that the combined
teachings of de Vries with McCarrell or Shennib would have rendered the
subject matter of claim 1 obvious to one with ordinary skill in the art at the
time the invention was made. Ans. 6, 12.
Hear-Wear’s arguments that the Examiner has not established that de
Vries describes an ITE unit [2] that is mechanically isolated from the BTE
unit [1] (App. Br. 10) are persuasive. The Examiner’s finding that the ITE
component [2] is mechanically isolated from the BTE component [1] based
on wire [14] being the only connection between the components (Ans. 4-5,
10-11, 42-43, citing fig. 1) is not factually supported.
The Examiner’s findings discount de Vries' disclosure of a second
connecting means or tubular element [15] for the mechanical connection
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Reexamination Control 90/010,085
Patent 5,606,621
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between the BTE unit [1] and the ITE unit [2]. Abs. The second connecting
means or tubular element [15] is made of a flexible material inside of which
the wire or first connecting means [14] is arranged. Col. 4, ll. 49-54; figs. 1-
6. The tubular element [15] is secured in the hook [3] of the BTE unit [1] by
an adhesive [21] or clamping nut after the hearing aid is adapted to the size
of the person’s ear. Abs.; col. 4, l. 55-col. 5, l. 6; col. 5, ll. 13-14, col. 6, ll.
10-22; fig. 5. The Examiner does not adequately explain how de Vries’ ITE
unit [2] is mechanically isolated from the BTE unit [1] when it appears that
the flexible tubular element [15] is capable of transmitting vibrations from
one component to the other during use. Since the tubular element [15]
surrounds the connecting means [14] and is secured in the hook [3] of the
BTE unit [1] by an adhesive [21] or clamping nut it appears that it is capable
of transmitting vibrations from one component to the other during use. The
Examiner does not otherwise offer an adequate explanation as to why the
flexible tubular element [15] would not transmit vibrations from one
component to the other during use of the hearing aid.
The Examiner’s findings also discount de Vries disclosure that the
first connecting means [14] is constructed of a plastic core [40]. The
electrical conductors [42] and [43] are wound around the plastic core [40]
which provides stress relief for the first connecting means [14]. Col. 6, ll.
39-45, 53-56; fig. 7. The ends of the core [40] are further mechanically
secured in the BTE [1] and ITE [2] units. Col. 6, ll. 55-56. The Examiner
does not offer a sufficient explanation as to how de Vries’ ITE unit [2] is
mechanically isolated from the BTE unit [1] when it appears that the plastic
core [40] of the connecting means [14] is capable of transmitting vibrations
from one component to the other during use. Since the ends of the core [40]
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Reexamination Control 90/010,085
Patent 5,606,621
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are secured to the ITE [2] and BTE [1] units and the core is stronger than the
electrical conductors [42] and [43], it appears that the plastic core [40] is
capable of transmitting vibrations from one component to the other during
use. The Examiner does not otherwise offer an adequate explanation as to
why the plastic stress relieving core [40] would not transmit vibrations from
one component to the other during use of the hearing aid.
For all these reasons, the Examiner’s findings that de Vries describes
an ITE unit [2] that is mechanically isolated from the BTE unit [1] are not
factually supported. The Examiner does not otherwise rely on McCarrell or
Shennib for teaching mechanical isolation between the hearing aid
components. Accordingly, we cannot sustain the rejections of claims 1 and
2 as unpatentable over de Vries and McCarrell and over de Vries and
Shennib. Since claims 3 and 4 depend from claim 1, for the same reasons
we cannot sustain the rejections of claims 3 and 4 as unpatentable over the
applied prior art.
DECISION
We REVERSE the rejection of claims 1-2 under 35 U.S.C. § 103(a) as
unpatentable over de Vries and McCarrell.
We REVERSE the rejection of claims 1-2 under 35 U.S.C. § 103(a) as
unpatentable over de Vries and Shennib.
We REVERSE the rejection of claim 3 under 35 U.S.C. § 103(a) as
unpatentable over de Vries, McCarrell and Claes.
We REVERSE the rejection of claim 3 under 35 U.S.C. § 103(a) as
unpatentable over de Vries, Shennib and Claes.
We REVERSE the rejection of claim 4 under 35 U.S.C. § 103(a) as
unpatentable over de Vries, McCarrell and Guice.
Appeal 2010-007940
Reexamination Control 90/010,085
Patent 5,606,621
10
We REVERSE the rejection of claim 4 under 35 U.S.C. § 103(a) as
unpatentable over de Vries, Shennib and Guice.
ORDER
REVERSED

FULBRIGHT & JAWORSKI L.L.P
2200 ROSS AVENUE
SUITE 2800
DALLAS, TX 75201-278

Third Party Requester:

DAVID J. CUSHING
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVE., N.W., SUITE 800
WASHINGTON, DC 20037