Ex Parte Chapman et al

Patent Trial and Appeal Board

Feb 1, 2019

13563643 (P.T.A.B. Feb. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/563,643 07/31/2012 Keith L. Chapman
84278 7590 02/05/2019
PA TENT LAW GROUP: Atkins and Associates P.C.
55 N. Arizona Place, Suite 104
Chandler, AZ 85225
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3023.0117 5721
EXAMINER
FLETCHER, MARLON T
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
02/05/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
main@plgaz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEITH L. CHAPMAN, 1
Charles C. Adams, Stanley J. Cotey, and Kenneth W. Porter
Appeal2017-002855
Application 13/563,643
Technology Center 2800
Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
MARK NAGUMO, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Keith L. Chapman, Charles C. Adams, Stanley J. Cotey, and
Kenneth W. Porter ("Chapman") timely appeal under 35 U.S.C. § 134(a)
from the Final Rejection2 of all pending claims 1-34, and 36. We have
jurisdiction. 35 U.S.C. § 6. We reverse.
1 The real party in interest is identified as Fender Musical Instruments
Corporation. ( Appeal Brief, filed 21 March 2016 ("Br."), 1.)
2 Office Action mailed 21 October 2015 ("Final Rejection"; cited as "FR").
Appeal2017-002855
Application 13/563,643
A. Introduction 3
OPINION
The subject matter on appeal relates to a communication network
(independent claim 1) or a communication system (independent claim 25), a
musical system (independent claims 10 and 19), and a method of
configuring and controlling a musical system (independent claim 30).
The '643 Specification explains that modem electronic musical instruments,
musical related devices, 4 and accessories, s, 6 provide, in addition to the audio
signal or data (i.e., the sound), control data 7 for controlling the operation of
the musical device. (Spec. 1 [0002]-2 [0003].) The Specification teaches
that audio and control data are typically routed along separate audio and data
3 Application 13/563,643, System and method for connecting and
controlling musical related instruments over communication network,
filed 31 July 2012. We refer to the '"643 Specification," which we cite as
"Spec."
4 See original claim 20 for a list of exemplary musical related devices
(various musical instruments, "microphone, audio amplifier, speaker, and
effects pedal"). (Spec. 40.)
5 See original claim 3 for a list of exemplary music related accessories
("speaker, effects pedal, display monitor, computer, mobile communication
device, and synthesizer"). (Spec. 37.)
6 It is evident from the examples that there is no sharp distinction between
"musical related devices" and "musical related accessories," and that
musical instruments can be regarded as special form of musical related
devices.
7 See, e.g., Spec. 2 [0004], 14 [0024]-15 [0025], 7 [0032], and 18-
19 [0031] for examples of control data (also referred to as "configuration
data").
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Application 13/563,643
cables, which can lead to complex assemblies, with associated technical and
logistical problems. (Id. at [0003].)
More specifically, on an electric guitar, for example, the audio signal
is provided via one or more pickups. (Id. at [0004].) Typically, there will be
hand-operated controls on the guitar to select which pickups will be used as
the source of the audio signal, as well as the volume and tonal qualities of
the audio signal. (Id.) Musical related accessories, such as an effects pedal,
may also be used to modify and control the sound. (Id. at 14--15 [0025].)
The audio signal will be sent from the guitar via an output jack and audio
cable to an audio amplifier, which has a complement of adjustable controls
to modify the audio signal, which is then sent to a speaker to audibly
reproduce the sound. (Id.) A musical performance may involve multiple
musical instruments with multiple controls, resulting in multiple
configurations that must be set, coordinated, and modified during or between
performances. (Id. at [0005].) The inventors seek patent protection for a
system in which audio data and control data are transmitted to and from the
musical instrument, its amplifier, and other accessories, through a
communications link on each musical instrument and musical related
devices.
Figure 2, reproduced on the next page, shows an embodiment of a
wireless communication network 50 8 for connecting, configuring,
monitoring, and controlling musical instruments 54 and 56, and musical
related accessories 62---68, using web access point ("W AP") 28 to send and
8 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
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Application 13/563,643
receive audio signals and control signals between the musical instruments
and the musical related accessories. (Spec. 12-13 [0022].)
{Figure 2 is shown below}
{Figure 2 shows musical instruments 54, 56, and accessories 58-68
connected via a wireless access point WAP 28; labels added}
The musical instruments 54, 56, and musical related accessories 58-
68 each include a wireless transceiver or communications link and controller
to send and receive audio signals, control signals, and other data through
W AP 28 to other devices connected to the communication network 20.
(Id. at 13 [0023].) Once the musical instruments have been configured, the
users begin to play, and the audio signals from the musical instruments are
sent through W AP 28 to audio amplifier 62, which processes the audio
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Application 13/563,643
signal according to the configuration data, which is transmitted to the
devices 54---68 in real time. (Id. at 14--15 [0025].) In general, any device
can communicate with any other device through WAP 28. (Id. at [0026].)
The communications link between musical instrument ("MI") 54 and
WAP 28, can be accomplished as shown in Figure 3, below.
w"-':'''"' i . t t.
s.._._ .,,._._ ,._.._,,. N ""-"' "'-"' .._._ ~-.. . .._.._,, N ""-"' "'~: ,,._., ~-.. . .._.._,, N ""-"' ,._._, ,,._., ~-.. . .._.._, .,,._._ ""-"'s
~ . ~
W! RELESS • / 70 : \•veb server '1 ·12
TRANSCEIVER
CONFIGURAJlON. /16;
MEMORY . :
!
ao ~,{. PICKLJP. ~ .. nn~!9E'~~7H'"'
rf\ ... J~;. ~,,l~"1il ~~b
{Figure 3 shows a wireless interface ( communication and signal processing)
for musical instrument 54, dashed box and annotations added}
In the words of the Specification, "[c]ontroller 74 controls routing of
audio signals, control signals, and other data through MI 54."
(Id. at 16 [0028].) In an embodiment, controller 74 is implemented as a web
server. (Id.) The Specification explains that "[w]eb servers allow devices
on communication network 20 to interact ... with web content hosted by the
server." (Id. at 12 [0021]; emphasis added.) In the embodiment depicted in
Figure 3, web server 112 is "implemented through user configuration of
wireless transceiver 70, controller 74, and configuration memory 76."
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Application 13/563,643
(Id. at 20 [0034].) The audio signal of MI 54 is sensed by the pickup
selected and processed according to the control signals stored in
configuration memory 76. (Id. at 17 [0029].) The audio signal is routed
through controller 74 and sent via wireless transceiver 70 and antenna 72 to
the next musical related accessory, such as audio amplifier 62. (Id.)
The relation between the control data and the audio data is illustrated
in more detail in audio amplifier 62, shown in Figure 4, below.
94
USER-DEFlNED
MODULES
90
FRONT PANEL __./ iOS
{Figure 4 shows a wireless interface ( communication and signal processing)
for amplifier 62; annotations and thick lines added}
The audio data (dashed thick lines) and control data (solid thick lines)
are received from and sent to musical instruments and accessories via
antenna 94 and wireless transceiver 92 subject to controller 96.
(Spec. 17 [0030].) Control data is stored in configuration memory 98, while
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Application 13/563,643
audio data is routed to the elements of signal processing section 90, here
comprised of filter 100, effects 102, user-defined modules 104, and
amplification 106, which are operated according to instructions encoded in
the control data. (Id. at 18 [0031].) The processed audio data is routed back
to controller 96 and sent to the next musical related accessory, e.g.,
speaker 64. (Id. at 19 [0032].) In preferred embodiments, controller 96 is
implemented as a web server. (Id. at 17 [0030].) More precisely, as shown
in Figure 4, and as stated in the Specification, "audio amplifier 62 includes
web server 114 implemented through user configuration of wireless
transceiver 92, controller 96, and configuration memory 98."
(Id. at 20 [0034].)
As shown in Figure 5, reproduced below, web servers 112-116 are
WEB -H2
SERVE.R f1r~;-~ i~tri) :~}f1f\{E.~r ()t} r~-·'1~ ~:~4
28 USER CONTROL. ~ri18
INTERFACE
114 ""'• \lVEB
• SERVER
{Figure 5: web servers 112-114 connected to wireless access point WAP 28,
annotations added}
configured by user control interface 118 (id. at [0036]), which can be
implemented as web browser based interfaces with menus (Figures 6a, 6d,
6e ), including virtual rotary knobs, switches, etc. (Figures 6b, 6c ), as well as
links to web pages displaying the status of each musical instrument or
accessory. (Id. at 21 [0037]-25 [0043].)
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Application 13/563,643
The network-based communications system is said to "reduce[] or
negate[] the need for physical cabling," and to "reduce[] the cost,
inconvenience, and hazards associated with physical cabling."
(Id. at 36 [0063].)
Claim 1 is representative and reads:
A communication network [50] for connecting and
controlling a musical instrument [54], comprising:
a musical instrument [54] including a first communication
link [70] disposed on the musical instrument;
an audio amplifier [62] including a second
communication link [92] disposed on the audio amplifier;
an access point [28] coupled to the musical
instrument [54] through the first communication link [70]
and the audio amplifier [62] through the second
communication link [92];
a first web server [112] disposed on the musical
instrument [54] and configured to control the musical
instrument in response to data received over the first
communication link [70];
a second web server [114] disposed on the audio
amplifier [62] and configured to control the audio
amplifier in response to data received over the second
communication link [92]; and
a user control interface [118] coupled to the access
point [28] and configured to poll and identify the musical
instrument [54] and audio amplifier [62], wherein
the user control interface [118] displays a status of the
musical instrument [54] and audio amplifier [62] and
provides links to the first web server [112] and second
web server [114].
(Claims App., Br. 26; some indentation, paragraphing, emphasis, and
bracketed labels to elements shown in Figures 2-5 added.)
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Application 13/563,643
Each of the independent claims requires at least the capability of
receiving control data via a communications link on a musical-related
device. Independent claims 1, 19, and 30 require that a user control
interface be part of the network or system.
The Examiner maintains the following grounds of rejection 9, 10, 11 :
A. Claims 1-9, 16-18, 19-24, 27, 29, 34, and 36 stand rejected
under 35 U.S.C. § I03(a) in view of the combined teachings
of Juszkiewicz, 12 Hasegawa, 13 and Uehara. 14
Al. Claims 10-15, 25, 26, 28, and 30-33 stand rejected under
35 U.S.C. § I03(a) in view of the combined teachings of
Juszkiewicz and Hasegawa.
9 Examiner's Answer mailed 20 October 2016 ("Ans.").
10 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
11 Claims in bold font are the independent claims.
12 Henry E. Juszkiewicz, Wireless electric guitar, WO 2012/058497 Al
(2012).
13 Yutaka Hasegawa, System and method for distributing music data with
advertisement, U.S. Patent No. 6,632,992 B2 (2003).
14 Haruki Uehara, Music reproducing system for collaboration, program
reproducer, music data distributor and program producer, U.S. Patent
No. 7,649,136 B2 (2010).
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Application 13/563,643
B. Discussion
The Board's findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
The Examiner's findings address the major limitations highlighted
supra in a different order than discussed in this Opinion.
In Rejection A, the Examiner finds that Juszkiewicz discloses many of
the limitations required by the rejected claims. (FR 2-3.)
Although the Examiner is silent in Rejection A regarding whether
Juszkiewicz discloses a web server, the Examiner finds expressly in
Rejection Al that "Juszkiewicz does not disclose the use of a server."
(Id. at 6, 1. 11.)
The Examiner finds, referring evidently to Hasegawa Figure 1,
reproduced on the following page, that "Hasegawa discloses a first web
server (3a) disposed on the musical instrument (2d) and configured to
control the musical instrument in response to data received over the first
communication link (column 10, lines 25-34). Hasegawa provides a second
server via (le) as a part of instrument (2b)." (FR 4, 11. 1--4.) The Examiner
states, "[ w ]hile Hasegawa does not provide the servers on each device, the
teachings provide a direct connection of the servers to the instruments or
devices. This provides the same effect of the servers being on the devices."
(Id. at 11. 6-8, emphasis added.)
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Appeal2017-002855
Application 13/563,643
{Hasegawa Figure 1 is shown below}
2a
/"--j
------------------ ----------------1 c 1
I : -----------------------------------
• MUSIC DATA •
PAOVIO!NG •
•APPARATUS•
1b ____ )
ADVERTISE
PC1
1b
~-)
,-----·"'''"",:, . .,
'
·-- - .:ADVERTISE
: PCn
{Hasegawa Figure 1 shows music data providing system 100}
The Examiner makes similar findings in Rejection A regarding
Uehara. Specifically, the Examiner finds, presumably with respect to
Figure 15, below, that "Uehara discloses a first web server (30a) dedicated
to musical instrument (10) and configured to control the musical instrument
in response to data received over the first communication link; a second web
server (30b) dedicated to instrument (20) configured to control the
instrument (20) ([Uehara] column 21, lines 35-58)." (FR 5, 11. 4-7 .) The
Examiner explains that "[w]hile Uehara does not disclose the servers on the
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Application 13/563,643
instruments, the dedication of the servers to the instruments provide the
same." (Id. at 11. 10-11.)
{Uehara Figure 15 is shown below}
50
SERVER COMi'UTER
[ ....... AUDIO F!U·:S I
• [ __ R~:rt::)~,i~~.~ ~ ~ : ]
ACCOUNT SYSTEM
SERVER COMPUTER
MID! Fll.E.'S
COMMUN!t\Tit}N
NEIWORK
SERVER COlvtPU!.l:R
MlOi fll.ES
,\lffOMATIC Pl.t\ YER
SOUND REllR()[)lJCEi< t----1
MUSICAL iNST}W1'.1ENT
{Uehara Figure 15 shows a system configuration of an embodiment of a
music reproducing system}
The Examiner concludes, "[i]t would [have] be[en] obvious to one
skilled in the art to provide the servers on the instruments, since the servers
are directly connected to the devices." (Id. at 11. 16-18.)
Chapman urges several harmful errors in these findings.
First, regarding the presence of a web server on the musical
instruments and musical related accessories or devices, Chapman argues that
"[ m Jo bile phone 3a in Hasegawa is not disclosed to be or include a web
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Application 13/563,643
server." (Br. 10, 11. 4--5.) "Rather, Hasegawa discloses music data
providing apparatus 1 a is a WWW server computer on the internet."
(Id. at 11. 5-7, citing Hasegawa col. 2, 11. 48-55 and Figure 1.) Chapman
continues, "[ m ]usic data receiving apparatus 2a-2d request on-demand
services from music data providing apparatus la." (Id. at 11. 7-9.) Thus,
Chapman explains, "Hasegawa discloses a WWW server at a remote
location, i.e., music data providing apparatus la, accessed over an internet
connection provided by mobile phone 3a, but Hasegawa does not disclose a
web server on a musical instrument, e.g., music data receiving apparatus 2a-
2d." (Id. at 11. 9-13; emphasis added.)
The Examiner responds that the definition of a server provided in
paragraph [0034] of the '643 Specification reads on a web browser. (Ans. 9,
11. 11-12.) The portion of [0034] quoted by the Examiner reads:
Web servers 112, 114, and 116 each denote user configured
functionality within devices 54---68, i.e., each device 54---68
includes a web server interface, such as a web browser, for
configuring and controlling the transmission, reception, and
processing of analog or digital audio signals, control signals,
and other data through W AP 28 and over wireless
communication network 50 or electronic system 10. The
web browser interface provides for user selection and
viewing of the control data in human perceivable form.
(Spec. 19-20 [0034].)
The inclusion of a web server interface, such as a web browser, in a
web server, does not, however, equate the web browser with the web server.
The Examiner appears to have overlooked or misapprehended the
description of the term "web server" provided by the '643 Specification
quoted supra at 5, which reads, "[ w ]eb servers allow devices on
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communication network 20 to interact ... with web content hosted by the
server." (Id. at 12 [0021]; emphasis added.) The web browser provides a
way for the user to interact with the web server-and the web browser may
be implemented as a component of the web server-but these incidents do
not make a web browser equivalent to a web server. In spite of coming
forward with a definition of the term "internet" (Ans. 8), the Examiner has
not come forward with any definitions of the terms "web server" or "web
browser" from probative authority that indicates that the way these terms are
defined and used in the '643 Specification would have been understood by
those skilled in the art in the way proposed by the Examiner.
We conclude that the Examiner erred harmfully in interpreting the
term "web browser" as an equivalent to the term "web server" in the
appealed claims.
Second, Chapman urges that the Examiner errs in finding that the
"direct connection" between the musical instruments and the server has the
same effect as the servers being on the devices. (Br. 10, 11. 14--19.) If this
were so, Chapman argues, the mobile phone would provide the musical data
from, e.g., memory 56 of the phone, shown in Hasegawa Figure 5, below}
MUSICAi. TONI:
GEN€RATOR
CIRCI/II
.,,. .. -- I
1S SOUND
SYSTEM
S2
.,,--)
MODEM
MEMORY
SPEAKER
MICRO·
: PHONE
55
_,.
123
-----_/ ~
DISPLAY 'f'.'.___
BLUETOOTH
1 CIRCUIT
'---...
\
48
I ' 49
{Hasegawa Figure 5 shows the block structure of a mobile phone 3a or
a portable terminal le}
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Application 13/563,643
The Examiner's response is largely based on the improper equation of
a web browser with a web server. The somewhat belated reference, in
Rejection A, to Bluetooth circuit 48 (connected to bus 11 in Hasegawa
Figure 3, showing a block diagram of music data receiving apparatus 2, not
reproduced here), and the conclusion that "[t]hese teachings actually provide
the web browser (web server as disclosed in Appellant's specification, see
para [0034]) on the instrument (2)" (Ans. 9, 11. 10-12) suffers from this
defect.
We conclude that Chapman has demonstrated harmful error in the
Examiner's determination that it would have been obvious, on the present
record, to place the web server on the musical instruments and musical
related devices or accessories.
The Examiner finds, inter alia, that Juszkiewicz discloses "a user
control interface coupled to the access point (inherent wherein users must
connect devices to the network) and configured to poll and identify the
musical instrument and audio amplifier receiving control data to control
operation." (FR, sentence bridging 2-3.)
Chapman argues that "[a] user control interface must in some respect
provide an interface for user control." (Br. 13, 11. 18-20.) Juszkiewicz, in
Chapman's view, provides only a "cursory overview" of technologies to
connect a musical instrument to the network, "and does not identify any user
control interface inherent in the connection." (Id. at 11. 20-23.) Chapman
urges further that Hasegawa and Uehara are also silent regarding polling and
identification of musical instruments and the audio amplifier, or displaying
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Application 13/563,643
the status or providing links to the respective web servers. (Id. at 13, 1. 27-
14, 1. 2.)
It is well settled elements found to be present inherently must
necessarily be present in or result from the prior art. In re Montgomery,
677 F.3d 1375, 1379-80 (Fed. Cir. 2012). Thus, "[i]nherency ... may not
be established by probabilities or possibilities." Id. at 1380. The Examiner
has failed to demonstrate that the user control interface is inherent in the
teachings of Juszkiewicz, and also that the various functions required by the
claims are inherent. To the extent the Examiner is arguing that it would
have been obvious to provide a user controlled interface and the required
functionality, the argument fails for lack of specific findings in the
references, and explanations of how and why it would have been obvious to
combine those teachings to obtain the user control interfaces recited in the
appealed claims.
Furthermore, the Examiner is silent in Rejection A regarding whether
any of Juszkiewicz, Hasegawa, or Uehara discloses "control data."
However, in Rejection Al, the Examiner finds, regarding the disclosure in
Juszkiewicz, paragraph [0020], that "[t]he signals and data transmitted and
received provide control or sound control to the connected devices. This can
be considered control data." (FR 6, 11. 9-11.) The Examiner also finds that
Hasegawa discloses a communication link on the musical instruments, and
that "Bluetooth technology and specifications require pairing (polling)
devices in which identification of each device is required and displayed for
connection via user interface." (FR 7, 11. 1-2.)
A difficulty with the first finding, as Chapman points out (Br. 1 7, 2d
para.), is that Juszkiewicz is concerned, in paragraph [0020], with audio
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signals and devices that "may act as sound receiving/producing devices that
receive an audio signal directly or indirectly from any of the one or more
guitars 102 and reproduce the received audio signal so that the audio signal
is audible by a user of sound system 100." (Juszkiewicz 5 [0020], last
sentence.) Thus, this paragraph does not support the Examiner's findings
regarding control signals, which the '643 Specification, as well as
Juszkiewicz, distinguishes from audio signals.
A difficulty with the findings regarding Bluetooth technology is that
the Examiner does not direct our attention to evidence of record supporting
these findings. Nor does a cursory review of Hasegawa reveal a discussion
of Bluetooth technology. Thus, as Chapman has argued, the Examiner
appears to be taking Official Notice of what is involved in Bluetooth
technology, without providing evidentiary support. (Br. 23, 1st full para.)
Moreover, Chapman challenges the Examiner's statement that pairing
(polling), i.e., control, is required by the Bluetooth specification. (Id., last
sentence.) Official Notice is not appropriate for technical matters,
particularly when there is some dispute about the accuracy of the facts
noticed. See, e.g., In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970)
("Assertions of technical facts in areas of esoteric technology must always
be supported by citation to some reference work recognized as standard in
the pertinent art.")
The Examiner has not made findings regarding further teachings
required to meet the additional limitations recited in the separately argued
dependent claims that cure the defects of the rejections of the independent
claims.
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We conclude that Chapman has demonstrated harmful error in the
appealed rejections, and we therefore reverse.
C. Order
It is ORDERED that the rejection of claims 1-34, and 36 is reversed.
REVERSED
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