Ex Parte Bodlaender

Board of Patent Appeals and Interferences

Sep 28, 2011

10502153 (B.P.A.I. Sep. 28, 2011)

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.
10/502,153 07/20/2004 Maarten Peter Bodlaender NL 020041 9122
7590 09/28/2011
Corporate Patent Counsel
Philips Electornics North America Corporation
P O Box 3001
Briarcliff Manor, NY 10510
EXAMINER
UHLIR, CHRISTOPHER J
ART UNIT PAPER NUMBER
2832
MAIL DATE DELIVERY MODE
09/28/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MAARTEN PETER BODLAENDER
____________

Appeal 2009-010541
Application 10/502,153
Technology Center 2800
_____________

Before MARC S. HOFF, CARL W. WHITEHEAD, JR., and BRADLEY W.
BAUMEISTER, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/502,153

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STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-11. Appeal Brief 9. We have jurisdiction under 35 U.S.C. § 6(b)
(2002). We reverse.

Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
1. A music retrieval system comprising input means (210) for
inputting user data (310) representative of music, memory means (220) for
storing pieces of music, retrieval means (230) for retrieving a desired piece
of music (330) in accordance with the user input data (310) upon finding a
match between a particular one of the pieces of music stored in the memory
means (220) and the user input data (310), output means (250) for
reproducing at least a fraction of the retrieved piece of music, the system
being characterized in that the system comprises

output control means (240) determining, from the user input data
(310), a current position (360) within the retrieved piece of music (330), said
output control means being adapted to cause a start (370) of the fraction
(380) of the retrieved piece of music to substantially coincide with said
position (360).

Rejection on Appeal
Claims 1-11 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Kakehashi (U.S. Patent Number 5,811,707; issued September
22, 1998).

Issues on Appeal
1. Does Kakehashi disclose “retrieving means for retrieving a desired piece
of music . . . in accordance with the user input data?”
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2. Does Kakehashi disclose “determining a current position within the
retrieved piece of music, and causing a start of the fraction of the retrieved
piece of music to substantially coincide with the determined current position
within the retrieved piece of music?”

ANALYSIS
The invention is a music retrieval system (karaoke machine):
The user may continue singing, humming or whistling
while the system is retrieving the desired piece of music.
Subsequently, the system determines the current position
within the retrieved piece of music which the user is
currently singing, humming or whistling. Thus, the
system identifies the start of the fraction of the retrieved
piece of music which coincides with the determined
position and further reproduces that fraction. In other
words, the system anticipates and reproduces the fraction
within the retrieved piece of music which will match with
a further inputted user data. The system recognizes a song
or other piece of music which the user is singing,
humming or whistling and joins in with it. The user can
continue singing, humming or whistling and listen to the
reproduced music at the same time.
Specification 2.

First Issue
Appellant argues that column 2, lines 1-15 of Kakehashi fails to
disclose “retrieving means for retrieving a desired piece of music . . . in
accordance with the user input data upon finding a match between one of
[the] stored pieces of music in a memory means and the input data.” Appeal
Brief 11.
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We do not find Appellant’s argument to be persuasive because
Kakehashi discloses retrieval means for retrieving a desired piece of music
in accordance to user input data (input means for inputting aural signals
from the outside [column 2, line 1]; the aural signals inputted from the
outside through the input means by singing words of a musical composition
by a person [column 2, lines 16-18]), upon finding a match between a
particular one of the pieces of music stored in the memory means and the
user input means (a storage means for storing prescribed performance
information concerning said musical composition [column 2, lines 3-
5]). See Appeal Brief 12; see also Answer 7-8.

Second Issue
Appellant further argues that assuming, arguendo, that Kakehashi
discloses retrieving music upon finding a match between stored music and
user input, Kakehashi does not disclose determining a current position
within the retrieved piece of music and causing a start of the fraction of the
retrieved piece of music to substantially coincide with the determined
current position within the retrieved piece of music. Appeal Brief 13.
The Examiner contends that Kakehashi discloses effects such as
audible delays to be stored at specific positions within the pieces of music
which start and stop at specified positions. Answer 9. The Examiner
concludes that the delayed fraction piece of music or prescribed interval then
substantially coincides with the current position of the retrieved piece of
music until reaching the control signal turning the delay section off. Id.
Appellant argues that Kakehashi’s delay only discloses a prescribed
interval and does not suggest determining a current position within the
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retrieved piece of music. Appeal Brief 13. Appellant cites column 13, lines
54-65 to show that the features are not disclosed or suggested within
Kakehashi as indicated by the Examiner. Appeal Brief 13; Answer 3-4.
In spite of the Examiner’s contentions that Kakehashi’s delay means
anticipate the fraction of the music/coinciding with the determined current
position, we do not agree. Instead, we agree with the Appellant’s arguments
that Kakehashi is silent and does not disclose the invention as claimed.
We will not sustain the Examiner’s rejection of claims 1-11.

DECISION
We reverse the Examiner’s decision rejecting claims 1-11 under
35 U.S.C. § 102(b).

NEW GROUNDS OF REJECTION
Claim 11 is rejected under 35 U.S.C. § 101 as being directed to non-
statutory matter.
Claim 11 merely recite a computer program per se and does not
positively recite limitations capable of “causing functional change in the
computer.” See M.P.E.P. § 2106.01.I (citing In re Warmerdam, 33 F.3d
1354, 1361 (Fed. Cir. 1994)).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that "[a] new ground of
rejection.., shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
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one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims
so rejected or new evidence relating
to the claims so rejected, or both, and
have the matter reconsidered by the
examiner, in which event the
proceeding will be remanded to the
examiner ....
(2) Request rehearing. Request that
the proceeding be reheard under §
41.52 by the Board upon the same
record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
REVERSED
37 C.F.R. § 41.50(b)

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