Case: 19-1507 Document: 44 Page: 1 Filed: 04/07/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: ANOVA HEARING LABS, INC.,
Appellant
______________________
2019-1507
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 96/000,138.
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Decided: April 7, 2020
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ANTIGONE GABRIELLA PEYTON, Cloudigy Law PLLC,
Tysons Corner, VA, argued for appellant.
PETER JOHN SAWERT, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, ar-
gued for appellee Andrei Iancu. Also represented by
THOMAS W. KRAUSE, WILLIAM LAMARCA.
______________________
Before MOORE, WALLACH, and STOLL, Circuit Judges.
MOORE, Circuit Judge.
Anova Hearing Labs, Inc. appeals the Patent Trial and
Appeal Board’s decision on reexamination holding that
claims 1–6, 9, 10, 12–39, 41–47, 49–58, and 63–70 of U.S.
Patent No. 8,477,978 would have been obvious. Because
Case: 19-1507 Document: 44 Page: 2 Filed: 04/07/2020
2 IN RE: ANOVA HEARING LABS, INC.
the Board’s decision did not articulate a basis or rationale
sufficient for this court to determine whether substantial
evidence supports its motivation to combine finding, we va-
cate and remand.
BACKGROUND
The ’978 patent is directed to a completely-in-canal
(CIC) hearing aid in which a flexible mounting insert se-
cured in the bony region of the ear canal holds the device
case in place. ’978 patent at 5:4–9. The specification de-
scribes the advantages of allowing natural sounds to flow
into the ear canal and mix with the augmented sound gen-
erated by the hearing device. Id. at 2:57–60, 3:3–6, 5:46–
52, Fig. 6. That natural sound flows past the case inserted
into the ear canal and through an open area provided on an
outer portion of a flexible insert mounted within the ear
canal. Id. at 3:3–6. The top portion of the flexible insert is
attached to the receiver section of the case. Id. at 2:65–3:2.
The ’978 patent issued on July 2, 2013. In 2015, Anova
requested supplemental examination for the U.S. Patent
and Trademark Office (USPTO) to consider U.S. Patent
No. 7,421,086 (Bauman ’086) and U.S. Patent No.
7,076,076 (Bauman ’076) as prior art. The USPTO ordered
reexamination, finding Bauman ’086 and Bauman ’076
raised a substantial new question of patentability. In a
Non-Final Office Action, the examiner rejected claim 1 un-
der 35 U.S.C. § 103(a) as obvious over U.S. Patent No.
5,654,530 (Sauer) and U.S. Patent App. Pub. No.
2002/0085728 (Shennib) in view of Bauman ’086 and Bau-
man ’076. Anova amended claim 1 to overcome this rejec-
tion. Claim 1 is representative:
1. A completely in the canal hearing device, said
device comprising:
a case having a power source, a microphone, a re-
ceiver element, and an acoustic passageway,
wherein said case, when mounted in the ear canal,
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IN RE: ANOVA HEARING LABS, INC. 3
provides at least one open passageway between the
ear canal and the case;
at least one flexible insert comprising a hub portion
and an outer portion adjacent to the hub portion,
the hub portion attached to a tip formed at a re-
ceiver end of the case, the outer portion providing
an open area when mounted against a wearer’s ear
canal to create a sound path extending through the
at least one open passageway and said open area,
wherein the open area defined by the outer portion
ranges from about 5 to 70% when the flexible insert
is in its mounted position within the ear canal.
’978 patent at 8:40–52 (emphases added).
In the Final Office Action, the examiner rejected
amended claim 1 as obvious over U.S. Patent No. 6,129,174
(Brown) and the admitted prior art 1 in view of Bau-
man ’086, Bauman ’076, and Sauer.
Anova appealed to the Board, arguing that the exam-
iner erred in asserting that a person of ordinary skill in the
art would modify Brown to have the open areas of Bau-
man ’086, Bauman ’076, and Fretz. Anova argued instead
that combining the behind-the-ear (BTE) insert of Fretz,
Bauman ’076, or Bauman ’086 with the in-the-canal (ITC)
inserts of Brown or Sauer would destroy the seal required
by the ITC references. The Board affirmed the examiner’s
rejection, holding representative claim 1 would have been
obvious based on a combination of Brown, Sauer, Fretz,
Bauman ’076, and Bauman ’086. Anova appeals. We have
jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
1 The examiner noted that, in addition to the admit-
ted prior art, the teachings of U.S. Patent No. 7,027,608
(Fretz) were incorporated by reference in the specification
and considered as admitted prior art.
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4 IN RE: ANOVA HEARING LABS, INC.
DISCUSSION
“We review the PTAB’s factual determinations for sub-
stantial evidence and its legal determinations de novo.” In
re Nuvasive, Inc., 842 F.3d 1376, 1379 (Fed. Cir. 2016) (cit-
ing In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000)).
Obviousness is a question of law which is based on under-
lying factual findings. Id. at 1381.
When considering whether a claim would have been ob-
vious in light of a combination of multiple references, the
Board “consider[s] whether a [person of ordinary skill in
the art] would have been motivated to combine the prior
art to achieve the claimed invention and whether there
would have been a reasonable expectation of success in do-
ing so.” In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
(Fed. Cir. 2016) (internal quotation marks and citation
omitted). Motivation to combine is a factual inquiry, which
we review for substantial evidence. Nuvasive, 842 F.3d at
1381. “The factual inquiry whether to combine references
must be thorough and searching and the need for specific-
ity pervades our authority on the findings on motivation to
combine.” Id. at 1381–82 (internal quotation marks and
citation omitted).
We have explained that the Board “must examine the
relevant data and articulate a satisfactory explanation for
its action including a rational connection between the facts
found and the choice made.” Nuvasive, 842 F.3d at 1382
(quoting Motor Vehicle Mfrs. Assoc. v. State Farm Mut.
Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal quotation
marks and citation omitted)). The requirement that the
Board provide sufficient articulation “appl[ies] with equal
force to the motivation to combine analysis.” Id. at 1383.
Here, the Board’s articulation has left us unable to reason-
ably discern the Board’s motivation to combine findings.
Id. at 1383; see In re Huston, 308 F.3d 1267, 1281 (Fed. Cir.
2002)).
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IN RE: ANOVA HEARING LABS, INC. 5
Anova argues that the Board did not establish a moti-
vation for combining aspects of BTE devices—Bauer ’086,
Bauer ’076, and Fretz—with other aspects of sealed ITE
devices—Brown and Sauer—to achieve the claimed inven-
tion. It argues that the ITE devices seal the ear canal to
prevent acoustic feedback, whereas BTE devices intention-
ally leave a gap in the ear canal. As such, it argues a per-
son of ordinary skill in the art would not modify the ITE
devices to include the claimed acoustic pathway because
doing so would result in significant acoustic feedback is-
sues.
The Board addressed Anova’s motivation to combine
arguments in its final written decision. The Board noted:
[I]t would have been obvious to one of ordinary skill
in the art, being of ordinary creativity and not be-
ing an automaton, to have combined a known hear-
ing aid with an “open passageway” and a flexible
insert creating a sound path through the open pas-
sageway and “open area” formed by the flexible in-
sert (i.e., Brown) with the known feature of flexible
inserts of varying dimensions, sizes, or specifica-
tions (any of Brown, Fretz, Bauman ’076, or Bau-
man ’086) in order to address the known problem
of the “occlusion effect” in hearing aids (any of
Brown, Fretz, Bauman ’076, or Bauman ’086) to
achieve the known, predictable, and expected re-
sult of a hearing aid with an insert of a desired di-
mension, size, or specification (any of Brown, Fretz,
Bauman ’076, or Bauman ’086).
J.A. 11–12.
The Board’s analysis does not indicate why a person of
ordinary skill in the art would modify an ITE device like
Brown or Sauer to include an “open passageway” that al-
lows ambient noise to enter the ear canal. The Board’s gen-
eral statements that a person of ordinary skill in the art
would combine any of these multiple different references to
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6 IN RE: ANOVA HEARING LABS, INC.
address the problem of occlusion effect in hearing aids does
not explain what features of the references, or even which
references, would be combined to achieve the claimed in-
vention. The Board also does not explain why a person of
ordinary skill in the art would be motivated to modify
Brown, which already includes vents, to address occlusion
effect. See J.A 396. The Board does not explain why a per-
son of skill in the art would conclude that Brown needed to
be modified. It is unclear why the Board found a skilled
artisan would be motivated to combine the five separate
references. It is also unclear precisely what the Board was
using the different references for in this five-reference re-
jection.
The Board failed to sufficiently articulate a reason why
a person of ordinary skill in the art would be motivated to
combine the ITE and BTE devices. We vacate and remand
the case to give the Board the opportunity to explain its
reasoning. See Nuvasive, 842 F.3d at 1385.
CONCLUSION
The Board’s reexamination decision is vacated and re-
manded.
VACATED AND REMANDED
COSTS
No costs.