95001388 (P.T.A.B. Dec. 6, 2013)

Ex Parte 7606382 et al

Patent Trial and Appeal BoardDec 6, 2013

95001388 (P.T.A.B. Dec. 6, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/001,388 07/01/2010 7606382 2989.001REX0 8186 29053 7590 12/09/2013 FULBRIGHT & JAWORSKI LLP 2200 ROSS AVENUE SUITE 2800 DALLAS, TX 75201-2784 EXAMINER TON, MY TRANG ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 12/09/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ K/S HIMPP Requester, Respondent, and Cross-Appellant v. HEAR-WEAR TECHNOLOGIES L.L.C. Patent Owner, Appellant, and Respondent ____________ Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 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 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 2 I. STATEMENT OF THE CASE A. Summary Patent Owner, Hear-Wear, L.L.C. (“Hear-Wear”),1 appeals under 35 U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to reject claims 1-6.2 Third-Party Requester, K/S HIMPP (“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 1-6 on additional grounds.4 Hear-Wear contends that the Examiner’s refusal in that regard was correct.5 Oral argument was held on April 11, 2013. A transcript of the hearing was made of record on May 23, 2013. 1 See Patent Assignment Abstract of Title, Reel 018909 Frame 0181 which was entered into the record of this proceeding as “Title Report” on July 13, 2010. 2 See Hear-Wear’s “Appeal Brief of Patent Owner Hear-Wear, L.L.C.” filed July 25, 2011 (“PO App. Br.”) and “Patent Owner Rebuttal Brief under 37 C.F.R. § 41.71” filed February 17, 2012 (“PO Reb. Br.”). 3 See HIMPP’s “Corrected Third-Party Requester’s Respondent Brief Under 37 C.F.R. § 41.68” filed November 3, 2011 (“Req. Resp. Br.”) 4 See HIMPP’s “Corrected Third-Party Requester’s Brief on Appeal Under 37 C.F.R. § 41.67” filed November 3, 2011 (“Req. App. Br.”) and “Third- Party Requester’s Rebuttal Brief Under 37 C.F.R. § 41.71” filed February 16, 2012 (“Req. Reb. Br.”). 5 See Hear-Wear’s “Patent Owner’s Respondent Brief (Responding to Corrected Requester’s Appeal Brief) Under 37 CFR § 41.68” filed December 2, 2011 (“PO Resp. Br.”). App Reex Paten ’382 emb below “com ear” 6 In t 25, 2 (“An eal 2013-0 amination t 7,606,38 We have The ’382 patent, Ab odiment” o (id. at co As depic pletely-in (or “BTE” his opinio 011 (“RA s.”). 02112 Control 9 2 B2 jurisdicti patent is stract. An f the inve l. 3, ll. 65 ted in Fig -canal” (o ) unit 30. n, we also N”) and th 5/001,388 on under 3 B. Th directed g “explode ntion is sh -67): ure 1 abov r “CIC”) u Id. at col. refer to th e Examine 3 5 U.S.C. § e Inventio enerally to d isometri own in Fig e, earpiece nit 10, con 4, l. 65-co e Right of r’s Answe § 134 and n an earpie c view of ure 1, wh auditory nector 20 l. 5, l. 8. Appeal N r mailed J 315.6 ce auditory an exempl ich is repro device 40 , and “beh otice mail anuary 17 device. ary duced includes ind-the ed April , 2012 Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 4 Claim 1 is the independent claim and is reproduced below: 1. A modular system for assembling an earpiece auditory device tailored to a user, the system comprising: a plurality of behind-the-ear components from which a behind-the-ear component may be selected, wherein each of the behind-the-ear components comprises a module including processing circuitry including a communications port operable to communicate with an external device; and a plurality of connectors from which a connector of sufficient length may be selected to physically couple a selected behind-the-ear component, when the selected behind-the-ear component is placed behind the ear of the user, to a in-canal component when the in-canal component is placed inside the ear canal of the user, wherein the in-canal component provides substantial attenuation of ambient sounds in the ear canal of the user and includes a speaker, and at least a portion of the connector of sufficient length is sufficiently rigid so as to allow the connector of sufficient length to be used to insert and remove the in-canal component from the ear canal of the user. PO App. Br., Claims App’x. C. The Prior Art 1. Hear-Wear’s Appeal Reiter et al. (“Reiter”) US 5,606,621 Feb. 25, 1997 Kerns US 6,144,748 Nov. 7, 2000 Fretz et al. (“Fretz”) US 7,027,608 B2 Apr. 11, 2006 Nonomura JP 62-151100 July 6, 19877 Siemens DE 298 015 67 May 28, 19988 7 An English translation of this Japanese document is included in the record (Request, Exhibit D). Citations in this opinion to page and line numbers of Nonomura refer to the English translation. Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 5 Shennib WO 99/07182 Feb. 11, 1999 2. HIMPP’s Appeal Barton US 5,046,580 Sep. 10, 1991 Reiter et al. (“Reiter”) US 5,606,621 Feb. 25, 1997 Taenzer et al. (“Taenzer”) US 6,009,183 Dec. 28, 19999 Tziviskos et al. (“Tziviskos”) US 6,748,094 B1 Jun. 8, 2004 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 ’382 patent10: References Claims Siemens, Kerns, and Shennib 1-6 Reiter, Siemens, Kerns, and Shennib 1-6 Reiter, Fretz, Kerns, and Shennib 1-6 Nonomura, Siemens, Kerns, and Shennib 1-6 Nonomura, Fretz, and Kerns 1-6 Fretz, Kerns, and Reiter 1-6 8 An English translation of this German document is included in the record (Request, Exhibit E). Citations in this opinion to page and line numbers of Siemens refer to the English translation. 9 The Examiner inadvertently identifies Taenzer as US 7,606,382. RAN 4. 10 See PO App. Br. 6-7. Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 6 2. HIMPP’s Appeal HIMPP contends that the Examiner incorrectly declined to adopt the following proposed rejections under 35 U.S.C. §§ 102(b) and 103(a): Reference[s] Basis Claims challenged Taenzer § 102(b) 1-6 Taenzer, Tziviskos, Barton, and Reiter § 103(a) 1-6 II. ANALYSIS A. HEAR-WEAR’S APPEAL Hear-Wear challenges the Examiner’s decision to adopt six grounds of rejection that were each applied to claims 1-6 of the ’382 patent. We consider those rejections in turn. 1. Siemens, Kerns, and Shennib HIMPP proposed, and the Examiner adopted, a ground of rejection for claims 1-6 of the ’382 patent based on the combination of Siemens, Kerns, and Shennib. In so adopting that ground and determining that the claims would have been obvious, the Examiner incorporated by reference the explanation for the rejection provided by HIMPP in “Claim Chart CC-1” in its Request for inter partes reexamination11. RAN, p. 5. Hear-Wear 11 See “Request for Reexamination under 37 C.F.R. § 1.913” filed July 1, 2010 (“Request”). Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 7 challenges the Examiner’s determination in the following claim groupings: claims 1, 2, 4, and 5; claim 3; and claim 6. a. Claims 1, 2, 4, and 5 Claim 1 is independent and claims 2, 4, and 5 depend from claim 1. Hear-Wear does not argue the patentability of claims 2, 4, and 5 apart from claim 1. Claim 1 is directed to a “modular system for assembling an earpiece auditory device tailored to a user.” PO App. Br., Claims App’x. As a part of that modular system, the claim requires “a plurality of behind- the ear components” that may be selected and “a plurality of connectors” from which one may be selected that is of sufficient length to physically couple to a selected behind-the-ear component. Id. The claims also require that at least a portion of the connector be “sufficiently rigid” to allow the selected connector to insert and remove an “in-canal” component, which includes a speaker, from a user’s ear canal. Id. Hear-Wear contends that certain features of claim 1 are absent from the prior art. Hear-Wear also argues that it would not have been obvious to combine the teachings of Siemens, Kerns, and Shennib. For the reasons that follow, we are not persuaded of error in the rejection of claims 1, 2, 4, and 5 based on those references that was proposed by HIMPP and adopted by the Examiner. i. The Rejection HIMPP contends that Siemens discloses most of the features of claim 1. Request, CC-1. Siemens is directed to a “Hearing aid wearable behind the ear.” Siemens, Title. Siemens’s Figure depicts an embodiment of its disclosed invention, and is reproduced below: App Reex Paten earp be w comp behin Requ desc eal 2013-0 amination t 7,606,38 As show iece 2 cont orn behind onent tha HIMPP d-the-ear est, Ex. C ription of In the i supporti replaced housing compon the curv 02112 Control 9 2 B2 n in the Fi aining ear the ear. t connects contends t componen C-1. In th Siemens (i nventive h ng piece 4 when nec piece can ents as ma ed support 5/001,388 gure abov phone tran Siemens, p the earpie hat Siemen ts and plu at regard, d. at pp. 3 earing ai , and hous essary, w be prov y be neces ing piece 4 8 e, Siemens sducer 6, . 3. Curve ce and hou s’s hearin rality of co HIMPP po -4): d 1, the f ing piece herewith a ided with sary or de may be v hearing a and housin d support sing piece g aid inclu nnectors ints, in-pa itted earp 3 can all given fit different sirable; e.g aried. id 1 includ g piece 3 ing piece 4 . Id. des the pl required b rt, to the f iece 2, cu individual ted earpie or addit ., the leng es fitted intended t is a urality of y claim 1. ollowing rved ly be ce or ional th of o App Reex Paten Siem piece nece with of ea Ex. C curv inser CC- HIM “deta indiv as “a acou eal 2013-0 amination t 7,606,38 ens, p. 4. 4, and ho ssary.” G other part ch part, i.e C-1, pp. 3 Accordin ed support t or remov 1, p. 4. In PP relies o Shennib chably se idual’s ea sectioned stic couple 02112 Control 9 2 B2 Thus, Sie using piec iven Sieme s, HIMPP ., a plural -4. g to HIM ing piece 4 e the fitte so accoun n Shennib discloses cured to a r canal.” S view of th r” and is r 5/001,388 mens discl e 3 may “ ns’s discl contends t ity of such PP, “Siem is suffici d earpiece ting for th . “an acoust receiver a hennib, A e earpiece eproduced 9 oses that e individuall osure that hat Sieme parts, as r ens does n ently rigid 2 into or o at “sufficie ic coupler ssembly fo bstract. S showing below (id ach of ear y be repla those part ns contem equired by ot explicit so as to a ut of the e ntly rigid” ” describe r deep ins hennib’s F a receiver . at p. 6, ll piece 2, su ced when s may be r plates mor claim 1. ly teach th llow it to b ar canal.” requirem d as being ertion into igure 3 is assembly . 35-36): pporting eplaced e than one Request, at the e used to Id. at ent, an described and an Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 10 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. Shennib, p. 8, ll. 10-19. Thus, receiver assembly 48 includes receiver 41 for emitting sound, i.e., a speaker (e.g., see id. at p. 1, l. 13), 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. Shennib’s Figure 20 is reproduced below: App Reex Paten earp 23. HIM the a that into Shen featu alleg eal 2013-0 amination t 7,606,38 Figure 2 iece for co In light of PP conten rt to modi is sufficien and remov Accordin nib are co res requir edly from 02112 Control 9 2 B2 0 above de nnection t the teachin ds that it w fy Siemen tly rigid f ed from an ii. Th g to Hear mbined, th ed by the c the combi 5/001,388 picts as “a o an extern gs of She ould have s’s connec or allowin ear canal e Allegedly -Wear, eve e resulting laims. Sp nation are 11 coronal v al audio d nnib, inclu been obv tor so as to g an in-can . Request Missing n if the te combina ecifically, “a pluralit iew of the evice.” S ding those ious to on incorpor al compo , Ex. CC-1 Claim Fea achings of tion does n those feat y of behin ear canal hennib, p. noted abo e of ordina ate at least nent to be , pp. 5-6. tures Siemens, ot satisfy ures that a d-the-ear with an 7, ll. 22- ve, ry skill in a portion inserted Kerns, an two re absent d Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 12 components from which a behind-the-ear component may be selected” and a connector having at least a portion that is “sufficiently rigid” to allow its insertion into and removal from an ear canal. PO App. Br., pp. 10-11; PO Reb. Br., pp. 6-9. “Plurality of Behind-The-Ear Components” In urging that the pertinent feature of the claims is absent, Hear-Wear focuses on the term “replaced” set forth at page 4 of Siemens and turns to a dictionary definition of the term to establish its meaning as follows: “to restore to a former place or position [or] to take the place of esp. as a substitute or successor [or] to put something new in the place of . . . .” Id. at p. 11. Hear-Wear also points to the declaration testimony of Dr. Wayne Staab12 in support of its position. Id. Hear-Wear concludes the following: Applying the ordinary dictionary meaning to “replaced,” Siemens’ page 4 is properly interpreted as teaching that replacing housing unit 3 means that a housing unit is replaced with a replacement housing unit. However, the replacement housing unit is not necessarily selected from a plurality of housing units. For example, in order to repair a hearing aid, the user may require a replacement of an old housing unit and it is possible, if not probable, that the replacement housing unit is built to specification and sent to the user who uses it to replace the old housing unit. No selection from a plurality of housing units is made in this scenario. 12 See “Declaration of Dr. Wayne Staab” dated October 7, 2010 (“Staab Decl.”) and “Supplemental Declaration of Dr. Wayne Staab” dated February 3, 2011 (“Supp. Staab Decl.”), each filed with Hear-Wear’s Appeal Brief as “Item 2” and “Item 4,” respectively, of the Evidence Appendix. Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 13 Id. Thus, Hear-Wear bases its view on a speculative assertion that there may exist some “scenario” in which replacement parts may be obtained without selection of such parts from among a plurality. HIMPP does not agree with Hear-Wear. In that regard, HIMPP contends that, even accepting Hear-wear’s interpretation of the term “replaced,” Shennib reasonably conveys to one of ordinary skill in the art that, in replacing a particular part, such as a BTE component, selection between multiple components occurs. Req. Resp. Br., pp. 7-8. In that regard, HIMPP contends that replacing an old component with a new component necessarily involves selection between those two components. In support of that contention, HIMPP points to the declaration testimony of Dr. Stephen C. Thompson13 and Henry H. Fletcher14. Id. at p. 8. We have considered the respective views of Hear-Wear on one side and HIMPP and the Examiner on the other. We are not persuaded that Hear- Wear is correct. In particular, we agree with HIMPP and the Examiner that a skilled artisan would have appreciated reasonably that Siemens’s disclosure that the various components of its housing piece 3 worn behind a user’s ear may be individually replaced as needed reflects a selection, at a minimum, between at least two such housing pieces. The claim does not require, as Hear-Wear suggests, that the selection occur between two new 13 See “Declaration of Dr. Stephen C. Thompson Under 37 C.F.R. § 1.132” dated November 11, 2010 (“Thompson Decl.”) and filed as “Evidence Appendix 3” of HIMPP’s Respondent Brief. 14 See “Declaration of Henry H. Fletcher Under 37 C.F.R. § 1.132” dated November 11, 2010 (“Fletcher Decl.”) and filed as “Evidence Appendix 4” of HIMPP’s Respondent Brief. Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 14 housing pieces instead of a selection between the old housing piece and a proposed new housing piece. Giving the claim its broadest reasonable interpretation, therefore, a user can select to retain either the old housing piece or the proposed new housing piece. We conclude, therefore, that the corresponding limitation in claim 1 of “a plurality of behind-the-ear components from which a behind-the-ear component may be selected” is disclosed in the prior art. “Sufficiently Rigid” Claim 1 requires that at least a portion of the connector is “sufficiently rigid” to allow the in-canal component to be inserted into and removed from an ear canal. HIMPP contends that, while Siemens may not disclose that its curved supporting piece 4 includes a portion that is sufficiently rigid as required, Shennib makes up for that deficiency. In that regard, HIMPP relies on Shennib’s disclosure of handle 38 as a part of its connector that “facilitates insertion and removal of the hearing device” in Shennib. Request, Ex. CC-1, pp. 4-5 (citing to Shennib p. 8, ll. 3-4). HIMPP concludes that incorporating such a handle into the connector of Siemens would have been obvious. Id. at p. 5; Req. Resp. Br., p. 12 (citing to Thompson Decl. ¶ 23). Hear-Wear challenges HIMPP’s conclusion. According to Hear- Wear, Shennib’s “[h]andle 38 is formed as a unitary part of speaker assembly 48 and is conceptually inseparable therefrom.” PO Reb. Br., p. 7. In support of that position, Hear-Wear also points to the declaration Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 15 testimony of Adnan Shennib15 (id.), who testifies that handle 38 is “integrated” with receiver assembly 48 and that those components are “mechanically inseparable” from one another. Shennib Decl. ¶ 8. Hear- Wear thus contends that, in allegedly forming part of the receiver assembly, handle 38 is not part of any connector and that no part of any connector in Shennib is “sufficiently rigid” as required by claim 1. PO Reb. Br., pp. 7-8. We are not persuaded by Hear-Wear. 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 wires 37 within cable 39. Id. at p. 8, ll. 3-5. Although handle 38 may be illustrated in Fig. 20 as fixed to earpiece 40 in a manner that is not illustrated as detachably coupled, we do not discern that the handle is something that is properly regarded as “unitary,” 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 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 15 See “Declaration of Adnan Shennib” dated October 11, 2010 (“Shennib Decl.”) and filed as “Item 1” of the Evidence Appendix of Hear-Wear’s Appeal Brief. Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 16 the other connecting components, i.e., wires 37 of cable 39. Thus, 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. Fletcher (a co-inventor with Mr. Shennib16) and Mr. Thompson, who, respectively, dispute that a skilled artisan would have viewed handle 38 and earpiece 40 as integrated and inseparable from one another, and maintain that a skilled artisan would have recognized handle 38 as forming part of a connector. Fletcher Decl. ¶ 9; Thompson Decl. ¶ 29. That testimony is in accord with the plain disclosure of Shennib. We have considered Hear-Wear’s arguments, but we are not persuaded that Shennib’s handle 38 is not regarded reasonably as a portion of a connector between an in-canal component and an external audio device that is of sufficient rigidity to allow the insertion and removal of the in-canal component from a user’s ear canal. iii. The Obviousness Rationales Hear-Wear also challenges the position of HIMPP and the Examiner that there is adequate reason to combine the teachings of Siemens, Kerns, and Shennib. In particular, Hear-Wear submits that there is no “valid” or “rational reason” to incorporate Shennib’s handle into Siemens’s hearing device. PO App. Br., pp. 11-12. Hear-Wear also contends generally that Shennib “teaches away” from the proposed combination and that Shennib’s handle generally is “unfit for use in an auditory device.” Id. at pp. 13-18. For the reasons that follow, none of Hear-Wear’s contentions is persuasive. 16 See Fletcher Decl. ¶ 7. Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 17 Reasons to combine In proposing the rejection of claims 1, 2, 4, and 5 based on Siemens, Kerns, and Shennib, HIMPP proposed that modifying Siemens’s hearing aid device to incorporate a connector with a handle, as in Shennib, would have been a modification involving the “predictable use of prior art elements according to their established functions,” citing to KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Request, Ex. CC-1, pp. 5-6. As discussed above, Shennib’s handle 38 functions to facilitate insertion and removal of the hearing device from a user’s ear canal. Facilitating the insertion and removal of a hearing device into and from a user’s ear canal is, in our view, a suitable and rational reason to combine the noted teachings of Shennib with Siemens. We, thus, do not agree with Hear-Wear that no valid reason exists to combine the teachings of Shennib and Siemens. Hear-Wear also contends that one with ordinary skill in the art would not have had reason to combine the teachings of Siemens and Kerns. In that regard, according to Hear-Wear, “Kerns discloses a digital device while Siemens discloses an analog device,” and that the two types of devices are “completely disparate technologies.” PO App. Br., p. 18. Even assuming that Hear-Wear is correct in its characterization of Kerns as a “digital” device and Siemens as an “analog” device, Hear-Wear does not explain persuasively why such distinction renders the devices “completely disparate.” Indeed, it is not apparent why “analog” versus “digital” presents a dichotomy between the teachings. We are not persuaded that the teachings of Kerns and Siemens are uncombinable. Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 18 The “Unfit” Argument Hear-Wear also generally contends that “Shennib’s handle 38 is unfit for use in an auditory device.” PO App. Br. 13. That contention, however, is puzzling. Shennib’s device, itself, is an auditory device in the form of a hearing-aid. With respect to that hearing-aid, the handle provides a specific, dedicated purpose in allowing the insertion and removal of an in-canal component into and out of a user’s ear canal. It does not follow that the handle is somehow “unfit” for facilitating that specific function. Furthermore, Hear-Wear’s explanation for its position focuses on “visibility” and “aesthetic issues” and concludes that one of ordinary skill in the art would have been dissuaded from modifying Siemens’s hearing-aid device with a handle, such as that of Shennib. See PO App. Br., pp. 13-17. Even assuming that Shennib’s handle 38 does present a less desirable aesthetic, that itself does not somehow preclude a determination that such a handle may be employed in another hearing-aid, such as Siemens’s hearing- aid. Indeed, the inquiry into obviousness does not require that a teaching in one reference be better in every respect than a teaching in another reference. Instead, the test for 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). In this case, Shennib’s handle 38 is a mechanism known in the art that facilitates the manipulation of a hearing-aid component into and out of a user’s ear-canal. That handle also has an additional benefit in “providing strain relief” for wires 37 that are contained within signal cable 39. Shennib, p. 8, ll. 3-5. Thus, even if handle 38, when implemented on a hearing-aid Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 19 device, has a less desirable aesthetic, a skilled artisan would have recognized that the handle provides other functional benefits, i.e., facilitating manipulation of an in-canal component and providing strain relief for connecting wires. We have considered the evidence of record, including the declaration testimony of Wayne Staab, offered by Hear-Wear in support of its position that one with ordinary skill in the art would not incorporate Shennib’s handle 38 into a hearing-aid device. See PO App. Br., pp. 13-18. We have also considered the declaration testimony of Dr. Thompson and Mr. Fletcher, relied upon by HIMPP in support of its obviousness position. In that regard, Mr. Thompson testifies that, based on Shennib’s disclosure: A person of ordinary skill in the art would have further recognized that reinforced portion 38 in Shennib would be applicable to both personal audio system and hearing aids, and that the “handle” could be reoriented to function optimally in a hearing aid with a BTE component in a routine manner. Thompson Decl. ¶ 29. Mr. Fletcher also testifies that while aesthetics are one factor considered in designing hearing-aids, the functionality attributed to Shennib’s rigid handle is also a factor that would be taken into account. Fletcher Decl. ¶¶ 9-10. While, as Dr. Staab testifies (Staab Decl. ¶¶ 10-11), Shennib’s handle 38 may be visible when formed as a part of a hearing-aid device, we are not persuaded that any such increased visibility renders the handle “unfit” for use in a hearing-aid. We credit the testimony of Dr. Thompson and Mr. Fletcher that one with ordinary skill in the art would have taken into account the functional benefits provided by the handle in designing a hearing-aid. Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 20 The “Teaching Away” Argument Hear-Wear argues that “Shennib teaches away from the proposed combination of Siemens, Kerns and Shennib.” PO App. Br., p. 17. Hear- Wear bases that 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. Id. (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 in Siemens, 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 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 Siemens. Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 21 Conclusion –Obviousness of Claims 1, 2, 4, and 5 Based on Siemens, Kerns and Shennib We have considered Hear-Wear’s Appeal Brief and Rebuttal Brief. However, for the foregoing reasons, we are not persuaded of error in the rejection of claims 1, 2, 4, and 5 based on Siemens, Kerns, and Shennib that was proposed by HIMPP and adopted by the Examiner. Accordingly, we sustain the rejection. b. Claim 3 Claim 3 ultimately depends from claim 1. Claim 3 adds that the behind-the-ear component is chosen based on an intended application for the earpiece auditory device that is “one of a broadcast reception application, a media playback application, or a communications application.” PO App. Br., Claims App’x. HIMPP contends that Siemens discloses the selection of a behind-the-ear component based on an intended application, but does not specify that the particular application is one of those set forth in claim 3. Request, Ex. CC-1, p. 6. To make up for that deficiency, HIMPP relies on Kerns, stating the following: Kerns teaches that a hearing aid device can be used for broadcast reception, i.e., FM radio receiver (see col. 1, lines 19- 26); communications, i.e., telephony (see col. 1, lines 50-54); and media playback, i.e. high-fidelity stereo (see col. 1, lines 50-54). As discussed above in connection with claim 1, it would have been obvious to modify Siemens in view of Kerns to augment its functionality. Further, it would have been obvious to augment the functionality of the modified hearing aid with applications like FM radio receiver, telephony, or high-fidelity Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 22 stereo that rely on the user’s ability to hear. This would have been nothing more than the predictable use of prior art elements according to their established functions. See KSR Int’l Co., 127 S. Ct. at 1740. Id. at pp. 6-7. Thus, in light of the combined teachings of Siemens and Kerns, HIMPP contends that claim 3 is satisfied. Hear-Wear disagrees. In that regard, Hear-Wear generally argues that even if the prior art demonstrates that a hearing aid can be used for broadcast reception, it does not convey that the behind-the-ear component is selected “based on a broadcast reception application.” PO App. Br., p. 19. We have considered the respective positions of the parties and are not persuaded that Hear-Wear is correct. At the outset, claim 3 is an apparatus claim drawn to a “modular system.” It is not apparent what, if any, structural distinction arises between the claim and the prior art associated with the reason for selection of a behind-the-ear component. In any event, Siemens makes clear that components of its hearing aid, including its housing piece 3 worn behind a user’s ear, may be individually replaced, and that the replacement parts may be “for repair or to vary the combination of components in the overall hearing aid.” Siemens, pp. 2, 4. Kerns, which is also directed to a hearing device, describes that the type of application for which the hearing device is to be used impacts the configuration of the components of that device. E.g., see Kerns, col. 1, ll. 19-28, 50-54. A person of ordinary skill in the art, who is also a person of ordinary creativity, see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007), would have recognized reasonably from the teachings of the prior art Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 23 that Siemens’s behind-the-ear component may be selected based on the intended application for the hearing device. We are persuaded that claim 3 is unpatentable over the combined teachings of Siemens, Kerns, and Shennib. We sustain the rejection of claim 3 on that basis. c. Claim 6 Claim 6 depends from claim 1 and is reproduced below: 6. The modular system of claim 1 further comprising a plurality of ear molds of varying sizes connectable to the in- canal component, from which a selected ear mold can be chosen, the selected ear mold chosen to fit the user’s ear canal. PO App. Br., Claims App’x. Siemens describes that “in the course of the fitting of the hearing aid” various parts, including the earpiece, may be replaced. Siemens, p. 2. HIMPP bases its proposed rejection on that disclosure in Siemens. Request, Ex. CC-1, p. 7. In support of that rejection, HIMPP also points to Dr. Thompson’s declaration (Req. Resp. Br., p. 19), in which he testifies: One of ordinary skill would have understood that “different” ear molds taught in Siemens would be directed to different sizes or shapes because of genetics of an ear canal of a user. Ear canals vary between large, which are easy to fit, or small, which are very difficult to fit. One of ordinary skill would not have understood “different” to mean anything but different sizes. There is nothing else that is “different” that would allow for tailor fitting. Rather, “different” sizes allow Siemens to meet the challenge presented to any audiologist – fitting ear molds to wide classes of users. It was very well-known in the art to include replaceable earmolds/earpieces of differing sizes. Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 24 Thompson Decl. ¶ 24. Thus, Dr. Thompson is of the view that a skilled artisan would have understood that Siemens discloses a plurality of earmolds of differing sizes. Hear-Wear challenges the rejection offered by HIMPP and characterizes Dr. Thompson’s testimony as “an inaccurate interpretation of the disclosure of Siemens[.]” PO App. Br., p. 19. Hear-Wear also relies on the supplemental declaration of Dr. Staab, in which he testifies: If one were even to assume (which I believe would be improper on the current facts) that Siemens disclosed different ear molds, one of ordinary skill in the art would not conclude that the difference is necessarily with respect to size as Dr. Thompson suggests. There are several other important features that would distinguish one ear mold from another. For example, ear molds may have open or closed designs, different acoustics and made from different material. Therefore, generally, ear molds may differ by a number of features, not only size. Supp. Staab Decl., ¶ 14. We have considered the respective positions of HIMPP and Hear- Wear and the evidence offered by each party in support thereof. We observe that Dr. Staab expresses disagreement with Dr. Thompson with respect to Siemens’s disclosure pertaining to varying “sizes.” In that regard, Dr. Staab is of the view that size is but one factor, among others, when constructing hearing aids. Thus, even there are other factors of concern, there is no apparent dispute that size of an ear mold is a concern when fitting a hearing aid to a particular individual. We are persuaded that one with ordinary skill in the art would have recognized reasonably that Siemens conveys the presence of multiple earmolds of differing sizes for selection as a part of the fitting process. Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 25 Accordingly, we are persuaded that claim 6 is unpatentable over the combined teachings of Siemens, Kerns, and Shennib. We sustain the rejection. 2. (a)Reiter, Siemens, Kerns, and Shennib and (b)Nonomura, Siemens, Kerns, and Shennib HIMPP also proposed a rejection of claims 1-6 based on the combination of Reiter, Siemens, Kerns, and Shennib and also based on the combination of Nonomura, Siemens, Kerns, and Shennib. As noted above, we have sustained the Examiner’s rejection of claims 1-6 based on the combination of Siemens, Kerns, and Shennib. Hear-Wear offers similar arguments in challenging the Examiner’s and HIMPP’s rejections that also include the teachings or Reiter and Nonomura. E.g., see PO App. Br., pp. 20-25, 32-36. We do not discern that the addition of the teachings of Reiter and Nonomura undercut the combined teachings of Siemens, Kerns, and Shennib in accounting for all the features required by claims 1-6. For essentially the same reasons discussed above with respect to the Siemens, Kerns, and Shennib combination, we are not persuaded of error in the rejections that add Reiter and Nonomura. Furthermore, we observe that Reiter and Nonomura, like Siemens, are directed to hearing aids that include each of an in-canal component, an external audio component, and a connector between those components. See Reiter, Abstract; Fig. 1: Nonomura, p. 5; Fig. 1. On the record before us, we are persuaded that a person of ordinary skill in the art would have appreciated that the hearing devices of Reiter and Nonomura may be Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 26 modified based on the teachings of Siemens, Kerns, and Shennib to arrive at the invention called for in Hear-Wear’s claims 1-6. In that regard, we are satisfied that the prior art references taken together demonstrate that claims 1-6 are merely a combination of elements familiar in the hearing aid art, and that those elements predictably would be assembled in known fashion into the configuration of the modular system of Hear-Wear’s claims 1-6. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007) (“[A] combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.) We sustain the rejection of claims 1-6 over Reiter, Siemens, Kerns, and Shennib and also over Nonomura, Siemens, Kerns, and Shennib. 3. Reiter, Fretz, Kerns, and Shennib The proposed rejection of claims 1-6 based on Reiter, Fretz, Kerns, and Shennib, in effect, substitutes the teachings of Fretz for those of Siemens that were applied in the rejection styled Reiter, Siemens, Kerns and Shennib that has been discussed above. Fretz is directed to a hearing aid system incorporating a “behind the ear” portion and an “eartip” portion received in the ear canal of a user. Fretz, Abstract. Fretz’s Figure 1 is reproduced below: App Reex Paten Fretz elect PO A discl techn “mo such estab skill that conn estab eal 2013-0 amination t 7,606,38 As show [A] hear the ear o to the ea end of th , col. 4, ll Accordin rical conta pp. Br., p osing “sou ology ma At the ou dular elect a feature lishes that in the art i it was kno ector may lishing th 02112 Control 9 2 B2 n in Figur ing aid ca f a user, a r canal of e tube wit . 52-57. g to Hear ct between . 29. To th nd tube te king “mod tset, we d rical conta is required such a co n light of wn in the a all be sep ose compo 5/001,388 e 1 above, se 10 whic tube 12 f the user, hin the ear -Wear, “F a behind at end, H chnology” ular electr o not disc ct” as a re , we are of ntact woul the teachin rt that an arable from nents as m 27 Fretz’s he h designe or conduc and an ea canal of t retz does n -the-ear co ear-Wear c that is “d ical contac ern that an quirement the view d have be gs of the p audio devi one anot odular. R aring aid s d to be po ting sound rtip 14 for he user. ot teach m mponent o haracteriz istinctly di t.” Id. y of claim . Howeve that the re en derived rior art. I ce, an in-c her in a m eiter discl ystem inc sitioned be from the anchorin aking mo f the conn es Fretz a fferent” fr s 1-6 recit r, even ass cord suffic by one of t is clear f anal devic anner reas oses that i ludes: hind case g the dular ector.” s om es uming iently ordinary rom Fretz e, and a onably ts BTE and Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 28 CIC components are connected by a wire cable and that other connection types are contemplated that are not “hard-wired.” Reiter, col. 2, ll. 63-67. Thus, Reiter conveys that electrical connected components of a hearing aid, i.e., the BTE and CIC components, need not be ones that are “hard-wired.” Given the teachings of the prior art, including Fretz and Reiter, we do not agree with Hear-Wear that a connection regarded as “electrical,” somehow established a barrier to a skilled artisan from configuring such a connection as detachable or separable. While Mr. Shennib testifies (Shennib Decl. ¶¶ 11-12) that there may be some different design concerns as between detachable electrical connections and detachable mechanical connections, the record does not convey that one with ordinary skill and creativity in the art would be unable to address those concerns. Indeed, we credit the testimony of Dr. Thompson that concerns of that nature would be addressed by skilled artisans as a matter of “routine experimentation.” Thompson Decl. ¶ 25. Furthermore, as noted above, none of Hear-Wear’s claims recites that any particular connection between hearing aid components, electrical or otherwise, must themselves be modular. Instead, it is the system as a whole that is “modular.” We credit Dr. Thompson’s testimony that a “modular system” would not be understood in the art as requiring a releasable or detachable electrical connection. Id. at ¶ 25. We have considered the arguments advanced by Hear-Wear challenging the rejection of claims 1-6 based on Reiter, Fretz, Kerns, and Shennib. See PO App. Br., pp. 26-32; PO Reb. Br., pp. 14-15. We, Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 29 however, are not persuaded that they are correct. We sustain the rejection of claims 1-6 over Reiter, Fretz, Kerns, and Shennib. 4. Nonomura, Fretz, and Kerns In challenging the rejection of claims 1-6 based on Nonomura, Fretz, and Kerns, Hear-Wear first contends that “Fretz explicitly teaches away from a combination with the hearing aid configuration of Nonomura.” PO App. Br., p. 37. In that regard, Hear-Wear points to disclosure in Fretz characterizing an “ear hook” of a hearing aid as being “visible and aesthetically unpleasing.” Id. (citing Fretz, col. 2, ll. 1-3). According to Hear-Wear, the combination of Nonomura with Fretz impermissibly involves the use of a Nonomura’s “hanger (ear hook)” with Fretz’s teachings. We have considered Hear-Wear’s argument but agree with HIMPP that, while Fretz may prefer hearing aids without earhooks because of reasons of aesthetics, Fretz does not “teach away” from the use of such earhooks. See Req. Resp. Br., pp. 16-18. Although Fretz may consider that earhooks have one drawback with respect to their appearances, Fretz also recognizes that such devices have a benefit in leaving the ear canal generally unobstructed which operates to overcome undesirable “occlusion” effects. Fretz, col. 1, ll. 57-64. We credit Dr. Thompson’s testimony (Thompson Decl. ¶ 40) that one of ordinary skill in the art would have appreciated that ear hooks are viable devices for use in hearing aid devices, even if viewed as visually unappealing to some users. Hear-Wear also contends generally that Fretz lacks disclosure of a connector that is “sufficiently rigid.” We do not agree. As noted by HIMPP Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 30 (Req. Resp. Br., p. 17), Fretz discloses that tubing material used for its tube 12 is “substantially stiffer” than other types of tubing material that had been used in the art. See Fretz, col. 6, ll. 35-45. Fretz also discloses that tube 12, has “sufficient rigidity” to maintain eartip 14 within an ear canal. Id. at col. 6, ll. 9-25. Thus, we are persuaded that Fretz discloses a connector, at least a portion of which is “sufficiently rigid” as required by the claims. We have considered the arguments advanced by Hear-Wear in challenging the rejection of claims 1-6 over Nonomura, Fretz, and Kerns. See PO App. Br., pp. 37-42. We, however, are not persuaded or error in the rejection. We sustain the rejection. 5. Fretz, Kerns, and Reiter Hear-Wear offers arguments in contesting the rejection of claims 1-6 over Fretz, Kerns, and Reiter that largely echo those that were advanced in connection with the other rejections applied to the claims, and which, for the reasons given above, we find unpersuasive. See PO App. Br., pp. 42-48. In considering Hear-Wear’s arguments alongside the corresponding rejection proposed by HIMPP in its Request (Ex. CC-4), the arguments of HIMPP in support of the rejection (Req. Resp. Br., 18-19), and the Examiner’s RAN adopting the rejection (RAN, p. 7), we are not persuaded of error in the rejection. Accordingly, we sustain the rejection of claims 1-6 as unpatentable over Fretz, Kerns, and Reiter. 6. Summary – Hear-Wear’s Appeal For the foregoing reasons, we summarize our determination as follows: Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 31 The rejection of claims 1-6 based on Siemens, Kerns, and Shennib is sustained; The rejection of claims 1-6 based on Reiter, Siemens, Kerns, and Shennib is sustained; The rejection of claims 1-6 based on Reiter, Fretz, Kerns, and Shennib is sustained; The rejection of claims 1-6 based on Nonomura, Siemens, Kerns, and Shennib is sustained; The rejection of claims 1-6 based on Nonomura, Fretz, and Kerns is sustained; and The rejection of claims 1-6 based on Fretz, Kerns, and Reiter is sustained. B. HIMPP’S APPEAL HIMPP appeals the Examiner’s decision not to adopt, (1) a rejection of claims 1-6 as anticipated under 35 U.S.C. § 102(b) by Taenzer, and (2) a rejection of claims 1-6 as unpatentable under 35 U.S.C. § 103(a) over Taenzer, Tziviskos, Barton, and Reiter. 1. Anticipation by Taenzer In declining to adopt the proposed anticipation rejection, the Examiner states the following: Requester has set forth this proposed rejection of claims 1-6 of the '382 patent in Claim Chart CC-6. The examiner does not agree with the rejection set forth by requester. Claim 1 requires "wherein the in-canal component provides substantial attenuation of ambient sounds in the ear canal of the user and includes a speaker". Taenzer fails to disclose an in-canal component including a speaker. Rather, Taenzer discloses [] "A Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 32 sound transmission tube (not shown) within the ear hook transmit sound from a receiver or speaker with the body to the sound delivery tube 14." column 3, lines 13-15, wherein the body in question is the body of the behind-the-ear component. Thus, Taenzer fails to disclose each and every limitation of claim 1 and therefore cannot anticipate claim 1 or any of its dependent claims. Accordingly, the examiner does not adopt the proposed rejection of claims 1-6 as being anticipated by Taenzer. RAN, p. 5. Thus, the Examiner determined that Taenzer lacks disclosure of the speaker recited in claim 1. In challenging the Examiner’s determination, HIMPP contends: Requester respectfully disagrees that Taenzer does not anticipate claim 1 of the '382 patent. Taenzer’s disclosure provides many different non-limiting configurations and operations for the hearing devices, including: “a sound delivery system … such as hearing aids, telephone headsets, radio headsets, and other communications and sound transmitting systems, … a communication device, … a multimedia device, and … an ambidextrous sound delivery tube system for delivery of sounds to the ear canal or a user.” (Request, CC-6: pages 4 and 5.) It is at least inherent, if not explicit, that each of these devices, configurations, and operations uses a speaker because the use of a speaker for these devices naturally flows from the functionality and requirements of the devices. Req. App. Br., p. 8. Thus, according to HIMPP, a speaker is “inherent” or “naturally flows” from certain disclosure of Taenzer. HIMPP also points to discussion in Taenzer directed to “related art” at column 1, lines 12-23 that HIMPP contends supports is position as to the inherent existence of a speaker. Id. Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 33 Anticipation under 35 U.S.C. § 102 requires that each and every element in a claim, arranged as is recited in the claim, must be found in a single prior art reference. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). “Thus, it is not enough [in an anticipation rejection] that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Furthermore, inherency is not established by probabilities or possibilities. MEHL/Biophile International Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999). The prior art must necessarily function in accordance with, or include, the claimed limitations, in order to anticipate. See id. We have considered HIMPP’s arguments but are not persuaded that Taenzer necessarily discloses a speaker as a part of its invention. Although speakers generally may be known in art, we share Hear-Wear’s view (PO Resp. Br., p. 7) that the existence of such speakers in the context of some hearing aid devices does not establish that an embodiment of Taenzer’s invention includes such a speaker. Furthermore, even if might be possible or even probable that a speaker may be included in Taenzer’s device, that is insufficient to establish that such a speaker is inherently present. Accordingly, we sustain the Examiner’s decision not to adopt the proposed rejection of claims 1-6 as anticipated by Taenzer. Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 34 2. Taenzer, Tziviskos, Barton, and Reiter In declining to reject claims 1-6 based on Taenzer, Tziviskos, Barton, and Reiter, the Examiner stated the following: Requester has set forth this proposed rejection of claims 1-6 of the '382 patent in Claim Chart CC-5. Requester relies on Tziviskos to teach "a plurality of behind-the-ear components from which a behind-the-ear component may be selected"; however, Tziviskos fails to disclose this limitation. Rather, Tziviskos discloses a plurality of earhooks which are the in-ear component of the hearing aid rather than the behind-the-ear component. Thus, the combined teachings of Taenzer, Tziviskos, Barton and Reiter fail to disclose each and every limitation of claims 1-6, nor do they render each and every limitation obvious. According, the examiner does not adopt the proposed rejection of claims 1-6 as being unpatentable over Taenzer in view of Tziviskos, Barton and Reiter. RAN, p. 8. Thus, the Examiner’s basis for declining to adopt the rejection was that HIMPP’s reliance on Tziviskos to teach “a plurality of behind-the- ear components from which a behind-the-ear component may be selected” was incorrect. HIMPP relies on Tziviskos’s Figure 2A as showing a plurality of behind-the-ear components. Figure 2A is reproduced below: App Reex Paten for u recei Tziv devi 12 o 10 an devi an “a view Thom the ’ earp eal 2013-0 amination t 7,606,38 Figure 2 se with co ver (speak iskos furth ce,” that is f special e Thus, Fi d multipl ce. HIMP ppendage ed as show pson Dec 382 patent iece comp 02112 Control 9 2 B2 A above d nventiona er) proxim er explain connected ar hook 12 gure 2A, o e “ear hoo P urges tha ” of a BTE ing multi l. ¶ 45). W , a behind onent that 5/001,388 epicts “a c l BTE, or o al to the e s that refer via “coax a-12e. Id. n its face, k” compon t the ear h device an ple BTE d e are not -the-ear co is located 35 ross sectio ther heari ar canal.” ence char ial connec at cols. 4- seemingly ents that a ook comp d that Fig evices. Re persuaded mponent i in, or adja nal view o ng aid dev Tziviskos acter “10” tor” 16 to 5. discloses re distinct onents sho ure 2A sho q. App. B by HIMP s distingui cent to, a u f a specia ices, that p , col. 3, ll constitute a standard a single B from the uld be reg uld theref r., p. 10 (c P. In the shed from ser’s ear c l earhook ositions a . 46-49. s a “BTE ear hook TE device BTE arded as ore be iting to context of the anal. Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 36 Those components are connected via a connector portion. Similarly, in Tziviskos, BTE component 10 is distinct from ear hook 12, 12a-12e, that is positioned adjacent a user’s ear canal and connected to the BTE component via connector 16. That HIMPP now seeks to amalgamate an ear hook component with the BTE component into a singular device, is, in our view, at odds with the understanding in the art that the earpiece or ear hook maintains a separate identify from the BTE component. Although Dr. Thompson takes a position to the contrary, it is, in our view, a position inadequately explained or supported by the record at hand. Nothing requires a fact finder to credit inadequately explained or supported testimony. See Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). Accordingly, we have considered HIMPP’s argument, but are persuaded by Hear-Wear (PO Resp. Br., pp. 11-17) and the Examiner (RAN, p. 8), that HIMPP’s proposed rejection is not sufficient to reject claims 1-6 of the ’382 patent. We, therefore, sustain the Examiner’s decision not to adopt the proposed rejection. III. CONCLUSION For the forgoing reasons, we conclude that, (1) the record adequately establishes that the Examiner was correct in rejecting claims 1-6 of the ’382 patent based on the six grounds of rejection that are the subject of Hear- Wear’s Appeal, and (2) that the record does not indicate that the Examiner was incorrect in declining to adopt the two grounds of rejection that are the subject of HIMPP’s appeal. Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 37 IV. ORDER 1. Hear-Wear’s Appeal The Examiner’s decision to reject claims 1-6 as unpatentble under 35 U.S.C. § 103(a) based on Siemens, Kerns, and Shennib is affirmed. The Examiner’s decision to reject claims 1-6 as unpatentble under 35 U.S.C. § 103(a) based on Reiter, Siemens, Kerns, and Shennib is affirmed; The Examiner’s decision to reject claims 1-6 as unpatentble under 35 U.S.C. § 103(a) based on Reiter, Fretz, Kerns, and Shennib is affirmed; The Examiner’s decision to reject claims 1-6 as unpatentble under 35 U.S.C. § 103(a) based on Nonomura, Siemens, Kerns, and Shennib is affirmed; The Examiner’s decision to reject claims 1-6 as unpatentble under 35 U.S.C. § 103(a) based on Nonomura, Fretz, and Kerns is affirmed; The Examiner’s decision to reject claims 1-6 as unpatentable under 35 U.S.C. § 103(a) based on Fretz, Kerns, and Reiter is affirmed; and 2. HIMPP’s Appeal The Examiner’s decision not to reject claims 1-6 as anticipated as under 35 U.S.C. § 102(b) by Taenzer is affirmed. The Examiner’s decision not to reject claims 1-6 as unpatentble under 35 U.S.C. § 103(a) based on Taenzer, Tziviskos, Barton, and Reiter is affirmed. 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 Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 38 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 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 Appeal 2013-002112 Reexamination Control 95/001,388 Patent 7,606,382 B2 39 PATENT OWNER: FULBRIGHT & JAWORSKI LLP 2200 Ross Avenue Suite 2800 Dallas, TX 75201-2784 THIRD-PARTY REQUESTER: STERNE, KESSLER, GOLDSTEIN & FOX PLLC 1100 New York Avenue, NW Washington, DC 20005 cu