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        NOTE: This disposition is nonprecedential.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.
                   ______________________

                  Decided: April 7, 2020
                 ______________________

    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
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 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.
