Ex Parte Armstrong

Patent Trial and Appeal Board

Dec 20, 2016

13087350 (P.T.A.B. Dec. 20, 2016)

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.
13/087,350 04/14/2011 Robin Elizabeth Armstrong 90064.03US02 6053
24113 7590 12/21/2016
PATTERSON THUENTE PEDERSEN, P.A.
80 SOUTH 8TH STREET
4800 IDS CENTER
MINNEAPOLIS, MN 55402-2100
EXAMINER
HORN, ROBERT WAYNE
ART UNIT PAPER NUMBER
2837
MAIL DATE DELIVERY MODE
12/21/2016 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
Ex parte ROBIN ELIZABETH ARMSTRONG1
Appeal 2015-003200
Application 13/087,350
Technology Center 2800
Before JUSTIN BUSCH, DANIEL N. FISHMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 6—8, 10, and 21—33. Claims 3—5, 9, 11—16, and 18—20 have been
canceled. Final Act. 2. Claim 17 has been allowed. Final Act. 23—26. Oral
arguments were heard on December 9, 2016. A transcript of the hearing will
be placed in the record in due course. We have jurisdiction over the
remaining pending claims under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellant identifies the inventor, Robin Armstrong, as the real party in
interest. App. Br. 1.
Appeal 2015-003200
Application 13/087,350
STATEMENT OF THE CASE
Introduction
Appellant’s claimed invention is directed to “musical notation systems
and[,] more specifically[,] to systems for teaching musical notation in a
school music classroom setting.” Spec. 1. In disclosed embodiments,
magnetic board surfaces, which may be blank or include indicia such as a
music staff, are used with magnetic music symbols (e.g., stick rhythm
notation marks, expression marks, notes, rest symbols, and time signatures)
to enable students to “easily notate the pitch and/or rhythm of their music
compositions by providing a facile, manipulative system.” Spec. 3—8.
Claim 1 is exemplary of the subject matter on appeal and is
reproduced below:
1. A manipulative system for teaching musical notation,
comprising;
a planar workspace;
a plurality of three-dimensional members each including a
magnet for removably affixing the member to the workspace, the
workspace adapted to magnetically receive the members at any position
on the workspace, each of the three-dimensional members indicative of
a musical notation symbol, the plurality of three-dimensional members
including:
a first shorthand rhythm notation member comprising an
elongate, substantially straight body presenting a longitudinal
axis, said first member being symmetrical about the longitudinal
axis and being musically indicative of a quarter-note;
a second shorthand rhythm notation member comprising a
pair of spaced-apart, elongate, substantially straight portions,
each of the spaced-apart portions presenting a longitudinal axis
and a pair of opposing ends, each of the spaced-apart portions
being symmetrical about its own longitudinal axis, the spaced-
apart portions disposed parallel to each other and coupled
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together at one of the opposing ends of each portion with a third
straight portion disposed at a right angle to the longitudinal axis
of each of the spaced-apart portions, the second shorthand
rhythm notation member being musically indicative of a pair of
eighth-notes.
The Examiner’s Rejections2
1. Claims 1, 2, 6, 8, 10, 24, 29, and 30 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Barker (US 1,319,919; Oct.
28, 1919); Micheal Houlahan & Philip Tacka, Kodaly Today A Cognitive
Approach to Elementary Music Education 46, 116, 122—24 (Oxford Univ.
Press 2008) (“Houlahan”); and Fraleigh (US 2,864,275; Dec. 16, 1958).
Final Act. 5—9.
2. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barker, Houlahan, Fraleigh, and Bums (US 3,186,292;
June 1, 1965). Final Act. 9-11.
3. Claims 21 and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Barker, Houlahan, Fraleigh, and Hanington (US
6,967,274 B2; Nov. 22, 2005). Final Act. 11-16.
2 For the various rejections of claims 31—33, which depend from claim 21,
we note the Examiner inadvertently refers to the combination of Barker,
Houlahan, Fraleigh, and Davis (instead of Hanington) as teaching the
limitations of base claim 21. See Final Act. 20—23. Appellant responds to
the rejections as relying on the combination of Barker, Houlahan, Fraleigh,
and Hanington to allegedly teach the base claim in further combination with
Eyerkuss (claim 31) or Wold (claims 32 and 33). App. Br. 17—19. Thus, we
treat Examiner’s typographical error as harmless.
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4. Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barker, Houlahan, Fraleigh, Hanington, and Bums. Final
Act. 17-18.
5. Claims 25, 26, and 33 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Barker, Houlahan, Fraleigh, and Christopher
Davis, Kodaly Rhythm: An Introduction (July 9, 2010),
http://www.classicalguitar.org/2010/07/kodaly-rhythm-introduction/ (guest
post by Yoon Soo Lim), (last visited Apr. 16, 2014) (“Davis”). Final
Act. 18-21.
6. Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barker, Houlahan, Fraleigh, and Wold (US 2009/0173212
Al; July 9, 2009). Final Act. 21.
7. Claim 28 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barker, Houlahan, Fraleigh, and Eyerkuss (US 2,448,302;
Aug. 31, 1948). Final Act. 21-22.
8. Claim 31 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barker, Houlahan, Fraleigh, Davis, and Eyerkuss. Final
Act. 22-23.
9. Claim 32 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barker, Houlahan, Fraleigh, Davis, and Wold. Final
Act. 23.
Issues on Appeal
1. Did the Examiner err in relying on the proposed combinations
of Barker, Houlahan, and Fraleigh and Barker, Houlahan, Fraleigh, and
Davis in rejecting claims 1, 2, 6—8, 10, 24—27, 29, and 30 because the
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proposed combination would render the references unsuitable for their
intended purposes and alter their principles of operation?
2. Did the Examiner err by improperly relying on hindsight
analysis when combining Eyerkuss with other references in rejecting claims
28 and 31?
3. Did the Examiner err by failing to provide articulated reasoning
with rational underpinning for combining the teachings of Hanington with
the other cited references in rejecting claims 21—23 and 31—33?
ANALYSIS3
Claims 1, 2, 6—8, 10, 24—27, 29, and 30
Appellant does not dispute the Examiner’s factual findings of the
references, but instead challenges whether the proposed combination is
proper because, Appellant asserts, it would render the references unsuitable
for their intended purposes and would change their principles of operation.
App. Br. 9-14; Reply Br. 2—5.
a. Proposed combination of Barker and Fraleigh
Barker is generally directed to rhythm charts and “the provision of a
chart for teaching pupils the music symbols which indicate rhythm and to
use them rightly in music notation.” Barker 1,11. 10—14. Barker further
teaches the use of a surface having indicia of a music staff and attaching
3 Throughout this Decision we have considered the Appeal Brief, filed
September 15, 2014 (“App. Br.”); the Reply Brief, filed January 12, 2015
(“Reply Br.”); the Examiner’s Answer, mailed on November 13, 2014
(“Ans.”); the Final Office Action (“Final Act.”), mailed on May 6, 2014,
from which this Appeal is taken; and Appellant’s arguments made during the
Oral Hearing held December 9, 2016.
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musical symbols (notes, rests, and time signatures) using a peg-and-hole
arrangement. Barker 1,11. 60-63, 71—74.
Fraleigh is generally directed to teaching music by using a magnetized
surface having indicia of a musical staff thereon and magnetically attaching
musical symbols. Fraleigh, col. 1,11. 25—39.
Appellant contends the Examiner’s proposed combination of
replacing the peg-and-hole attachment scheme of Barker with the magnetic
attachment arrangement taught by Fraleigh would frustrate Barker’s stated
purpose of having the music symbols be properly aligned with the music
staff. App. Br. 9-12 (citing, e.g., Barker 1,11. 10-23, 64—70, 102-08, and
Barker 2,11. 32—34, 48—51, 57—66); Reply Br. 2. Specifically, Appellant
asserts Fraleigh teaches the music symbols can be “readily moved around”
and that placing the notes “anywhere on the board” would frustrate the
alignment purpose of Barker. App. Br. 11—12.
As an initial matter, we find, as does the Examiner, the purpose of
Barker is teaching music rhythm. Ans. 2—3; see also Barker 1,11. 23—25 (“A
further object is the provision of a method for teaching music rhythm.”).
The attachment of pre-formed musical symbols (as taught in both Barker and
Fraleigh) to a surface having indicia of a music staff thereon is consistent
with Barker’s objective of placing symbols on a chart “with neatness and
despatch [sic].” Barker 1,1. 23.
Additionally, our reviewing court has recognized that a given course
of action often has simultaneous advantages and disadvantages, and this
does not necessarily obviate any or all reasons to combine teachings. See
Winner Int 7 Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000) (“The fact that the motivating benefit comes at the expense of another
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benefit, however, should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”).
Further, we note, replacing the pegs and holes of Barker with the
magnets, as taught by Fraleigh would also maintain the predefined alignment
of Barker’s surface. This is also consistent with Fraleigh’s teaching of
allowing the notes “to be moved on the base in predetermined relation to the
staff.” Fraleigh, col. 1,11. 47-48.
Accordingly, we are unpersuaded the proposed combination of Barker
and Fraleigh is improper.
b. Proposed combination of Barker, Fraleigh, and Houlahan
Houlahan teaches, inter alia, a method for learning rhythm patterns
using stick notation. Houlahan 116. According to Houlahan, stick notation
“is simply a rapid way of writing music without using staff notation.”
Houlahan 122. Further, Houlahan teaches rhythms are written without their
note heads (except for half and whole notes). Houlahan 116.
Appellant asserts the proposed combination of Houlahan with Barker
and Fraleigh is improper because the stick notation of Houlahan is used
without a music staff whereas Barker and Fraleigh are directed to music
notation and require the use of a music staff. App. Br. 9-11. Appellant
further contends the elimination of a music staff would render Barker
unsuitable for its intended purpose. App. Br. 10-11. Additionally,
Appellant argues the use of Houlahan with staff lines “would serve no
purpose since the quarter and eighth note members have no heads to align
with staff lines” and that such use may be “confusing.” App. Br. 10.
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We do not find Appellant’s arguments persuasive of Examiner error.
As an initial matter, the Examiner’s proposed combination does not remove
the music staff of Barker, but rather combines the stick notation of Houlahan
with the rhythm teaching system of Barker. See Final Act. 5—8; see also
Ans. 3. Additionally, Houlahan does not teach the stick notation cannot be
used with a music staff. Contrary to Appellant’s assertions, the proposed
combination would not frustrate the intended purpose or change the
principle of operation of either Barker or Houlahan. Each reference is
intended to teach rhythm. See Houlahan 116, 122; see also Barker 1,11. 10-
13. Additionally, we note rhythm is present in not only the stick notation of
Houlahan, but also in a more complete musical chart as illustrated in
Barker’s Figure 1. Also, although quarter and eighth note members in stick
notation “have no heads to align with staff lines,” Houlahan also teaches half
notes and whole notes do have heads and, thus, could be aligned with a
music staff. See Houlahan 122, Fig. 5.10.
Regarding Appellant’s assertion that the inclusion of staff line with
stick notation might be confusing, it is well settled that mere attorney
arguments and conclusory statements, which are unsupported by factual
evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) (attorney argument is not evidence).
Thus, we are unpersuaded the proposed combination of Barker,
Fraleigh, and Houlahan is improper.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejections of claims 1, 2, 6—8,
24, 27, 29, and 30.
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c. Proposed combination of Barker, Fraleigh, Houlahan, and Davis
In rejecting claims 25 and 26, the Examiner relies on Davis for
teaching a third shorthand rhythm notation member being musically
indicative of four sixteenth notes. Final Act. 18—20. Appellant advances a
similar argument regarding the combination of Davis with Barker, Fraleigh,
and Houlahan. App. Br. 11 n.l. Specifically, Appellant alleges:
Davis, however, does not make up for the deficiency of the
Barker ’919, Houlihan [sic], and Fraleigh ’275 combination set
forth herein, since, like Houlihan [sic], it too fails to suggest use
of shorthand rhythm notation members with a musical staff, and
one of ordinary skill in the art would therefore likewise not
combine it with Barker ’919 and Fraleigh ’275.
App. Br. 11 n.l.
For similar reasons as those discussed supra, we are unpersuaded the
Examiner erred in relying on the combination of Barker, Fraleigh, Houlahan,
and Davis in rejecting claims 25 and 26. Accordingly, we sustain the
Examiner’s rejection of claims 25 and 26.
Claims 28 and 31
Claim 28 depends from claim 1 and adds the further limitation
“further comprising a stop light apparatus.” Claim 31 depends from claim
21 and recites similar language.
In rejecting claims 28 and 31, the Examiner relies on Eyerkuss to
teach a stop light apparatus. Final Act. 22—23. The Examiner finds it would
have been obvious to a person of ordinary skill in the art to modify the
teachings of the other cited references with Eyerkuss “to indicate stop at
some times and to go at other times.” Final Act. 22—23.
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Appellant asserts the Examiner improperly relies on hindsight analysis
in rejecting claims 28 and 31. App. Br. 16—17; Reply Br. 5—6. In particular,
Appellant argues the Examiner’s rationale is conclusory and does not
address why a person of ordinary skill in the art would have modified the
Barker-Houlahan-Fraleigh (claim 1) or Barker-Houlahan-Fraleigh-
Hanington (claim 21) combinations to add a stop light apparatus as taught by
Eyerkuss. App. Br. 15—17; Reply Br. 5—6.
It is improper to base a conclusion of obviousness upon facts gleaned
only through hindsight. “To draw on hindsight knowledge of the patented
invention, when the prior art does not contain or suggest that knowledge, is
to use the invention as a template for its own reconstruction—an illogical
and inappropriate process by which to determine patentability.” Sensonics
Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L.
Gore & Assoc, v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)). The
invention must be viewed not after the blueprint has been drawn by the
inventor, but as it would have been perceived in the state of the art that
existed at the time the invention was made. Sensonics, 81 F.3d at 1570
(citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir.
1985)). Obviousness requires more than a mere showing that the prior art
includes separate references covering each separate limitation in a claim
under examination. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Rather, obviousness requires the additional showing that a person of
ordinary skill at the time of the invention would have selected and combined
those prior art elements in the normal course of research and development to
yield the claimed invention. KSR, 550 U.S. at 421.
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We agree with Appellant. The Examiner has not explained
sufficiently or identified support from the prior art references why an
ordinarily-skilled artisan would further modify the modified music rhythm
and notation system taught by Barker, Fraleigh, and Houlahan with a
“highway traffic signal light[] for toy electric railroads,” as taught by
Eyerkuss. See Eyerkuss, col. 1,11. 1—2. As Appellant notes, “[considering
only the applied references, which do not describe structured competitions as
in Applicant’s specification, there would be nothing to ‘stop’ and ‘go,’ and
so there is no reason that one of ordinary skill in the art would be motivated
to make such a combination.” App. Br. 16.
For the reasons discussed supra, we do not sustain the Examiner’s
rejection of claims 28 and 31.
Claims 21—23 and 31—33
In addition to advancing the same arguments regarding the propriety
of combining Barker, Fraleigh, and Houlahan (which, as discussed supra,
we find unpersuasive), Appellant also asserts “the Examiner has expressed
no rational basis for the combination of Hanington ’274 with the other
references.” App. Br. 18. In particular, Appellant contends the Examiner’s
rationale to combine Hanington with the other references “amounts to a
conclusion drawn from vague and ultimately incorrect assertions about the
teachings of the combined references.” App. Br. 18. Appellant posits the
Examiner must have relied on hindsight analysis in making the proposed
combination of references. App. Br. 19.
In response, the Examiner recognizes the rejection as articulated in the
Final Office Action was “hard to follow” and provides clarification of how
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the teachings of the references are being used. Ans. 6—8. In particular,
regarding Hanington, the Examiner finds, and we agree, Hanington teaches
the use of a workspace that lacks indicia thereon. Final Act. 14 (citing
Hanington, Fig. 18A).
Additionally, we disagree with Appellant and find the Examiner has
articulated reasoning with some rational underpinning in support of the
proposed combination of references, specifically, to allow the progression of
music teaching from simpler concepts (i.e., rhythm only using a blank
surface as taught by Hanington) to more complex musical concepts (i.e., full
music notation, such as taught in Barker). See Final Act. 15—16.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejections of claims 21—23
and 31—33.
DECISION
We affirm the Examiner’s decision to reject claims 1, 2, 6—8, 10,
21-27,29,30, 32, and 33.
We reverse the Examiner’s decision to reject claims 28 and 31.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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