Ex Parte Dronge

Board of Patent Appeals and Interferences

Jul 27, 2009

10620235 (B.P.A.I. Jul. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MARK DRONGE
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Appeal 2009-001116
Application 10/620,235
Technology Center 2800
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Decided:1 July 27, 2009
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Before JOSEPH F. RUGGIERO, MARC S. HOFF, and ELENI MANTIS
MERCADER, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 8, 9, 12-14, and 17. Claims 1-6 have been allowed by the Examiner,
claim 7 has been cancelled, and claims 10, 11, and 16 have been indicated

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-001116
Application 10/620,235

by the Examiner to be allowable if rewritten in independent from. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Brief (filed January 11, 2007), the Answer (mailed
October 3, 2007), and the Reply Brief (filed December 3, 2007) for the
respective details. Only those arguments actually made by Appellant have
been considered in this decision. Arguments which Appellant could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

Appellant’s Invention
Appellant’s invention relates to a string set for a musical string
instrument which includes at least four strings with each of the strings
having a color different from the other strings and a size different than the
size of the other strings. The strings are mounted on the musical string
instrument to enable playing of the instrument by association of a colored
note on a sheet of music with the colors of the strings. (See generally Spec.
2:27-3:6).
Claim 8 is illustrative of the invention and reads as follows:
8. A set of strings for a musical string instrument, comprising:
at least four strings, each of said strings having a color different than
the color of the other of said strings in said set and a size different than the
size of the other of said strings in said set,
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said strings being adapted to be mounted on the instrument to enable
playing of the instrument by association of a colored note on a sheet of
music to the colors of said strings.

The Examiner’s Rejection

The Examiner’s Answer cites the following prior art references:
Roberts US 3,820,434 Jun. 28, 1974
Nilsson US 5,268,971 Dec. 7, 1993
Sperzel US 5,492,044 Feb. 20, 1996

Claims 8, 12, 13, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Roberts in view of Sperzel.
Claims 9 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Roberts in view of Sperzel and Nilsson.

ISSUE
The pivotal issue before us is whether Appellant has demonstrated
that the Examiner erred in determining the obviousness to the skilled artisan
of combining the colored musical instrument string teachings of Roberts
with the differently sized musical instrument string teachings of Sperzel,
with the further addition of the color coded core wire wrapping teachings of
Nilsson.
FINDINGS OF FACT
The record supports the following relevant findings of fact (FF) by a
preponderance of the evidence:
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1. Roberts discloses (Fig. 1; col. 2, ll. 25-35) an instruction system
for teaching students how to play a stringed musical instrument, such as a
guitar, by providing each of the strings of the musical instrument with a
different color.
2. Roberts further discloses (Fig. 4, col. 1, ll. 1, ll. 42-47, col. 3, ll.
13-16, and col. 4, ll. 19-23) that the instruction system uses a color coded
music notation sheet in conjunction with the colored string set.
3. Sperzel discloses (Fig. 3; col. 3, ll. 60-65) that the string set of a
conventional stringed musical instrument of a guitar type has strings with
diameters that have varying sizes.
4. Nilsson discloses (col. 3, ll. 22-24) a cable in which core wires
are wrapped with a color coded wrapping for identification purposes.

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (stating that 35 U.S.C.
§ 103 leads to three basic factual inquiries: the scope and content of the prior
art, the differences between the prior art and the claims at issue, and the
level of ordinary skill in the art). “[T]he examiner bears the initial burden,
on review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). Furthermore,
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‘there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek
out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Also, “‘[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.’” Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161
(Fed. Cir. 2007) (quoting KSR, 550 U.S. at 416). “One of the ways in which
a patent's subject matter can be proved obvious is by noting that there
existed at the time of invention a known problem for which there was an
obvious solution encompassed by the patent’s claims.” KSR, 550 U.S. at
419-20.
ANALYSIS
I. The rejection of claims 8, 12, 13, and 17 based on the
combination of Roberts and Sperzel.

With respect to the Examiner’s obviousness rejection of representative
independent claim 8 based on the combination of Roberts and Sperzel,
Appellant’s arguments in response assert a failure by the Examiner to
establish a prima facie case of obviousness since a proper basis for the
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Examiner’s proposed combination of references has not been established.2
Appellant’s arguments focus on the contention that a skilled artisan would
not combine Roberts and Sperzel as proposed by the Examiner. According
to Appellant (App. Br. 5-6), the varying string size teaching of Sperzel,
which is not directed to teaching a student how to play an instrument, adds
little value to Roberts since Roberts discloses that the coloring of strings
alone is sufficient for the learning process.
We do not agree with Appellant. As correctly recognized by the
Examiner (Ans. 3), Sperzel provides an evidentiary disclosure (FF 3) that
string instruments with uncolored strings that have diameters of varying size
are conventional in the art. In fact, this is nothing more that what is
acknowledged by Appellants at page 1, lines 10-14 of the Specification.
Further, Appellant’s arguments (App. Br. 5) correctly recognize that
Roberts provides a disclosure (FF 1) of teaching a student to play a stringed
instrument by adding color to the strings of the string set of a stringed
instrument to distinguish between the various strings. Appellant also
recognizes (id.) that Roberts also discloses (FF 2) that the colored strings,
when used in combination with a color-coded musical notation sheet, aid in
teaching a student how to play a stringed instrument.
With the above discussion in mind, we fail to see why the collective
teachings of Roberts and Sperzel would not have suggested to the ordinarily
skilled artisan the obviousness of adding color to the varying size uncolored

2 Appellant argues rejected claims 8, 12, 13, and 17 together as a group.
See App. Br. 4-9. Accordingly, we select claim 8 as representative. See 37
C.F.R. § 41.37(c)(1)(vii).

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strings of conventional stringed instruments to aid in teaching students how
to play such instruments. According to Leapfrog, when combination of
familiar elements according to methods known to the skilled artisan achieves
a predictable result, it is likely to be obvious.
For the above reasons, since it is our opinion that the Examiner has
established a prima facie case of obviousness based on the combination
of Roberts and Sperzel which has not been overcome by any convincing
arguments from Appellant, the Examiner’s 35 U.S.C. § 103(a) rejection of
representative independent claim 8, as well as claims 12, 13, and 17 not
separately argued by Appellant, is sustained.

II. The rejection of claims 9 and 14 based on the combination of
Roberts, Sperzel, and Nilsson.

In addressing the language of appealed claims 9 and 14, the Examiner
has applied (Ans. 4 and 6) the teachings of Nilsson, which are directed to the
color coding of core wire wrappings for identification purposes (FF 4), to
the collective teachings of Roberts and Sperzel. We find no convincing
arguments from Appellant that convince us of any error in the Examiner
stated position and, accordingly, this rejection is sustained.
In particular, we find to be without merit Appellant’s argument (App.
Br. 9-10) that the applied Nilsson reference is from a disparate and non-
analogous art. Appellant correctly states (id.) that the test for non-analogous
art is first whether the art is within the field of the inventor's endeavor and, if
not, whether it is reasonably pertinent to the problem with which the
inventor was involved. In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). A
reference is reasonably pertinent if, even though it may be in a different field
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of endeavor, it logically would have commended itself to an inventor's
attention in considering his problem because of the matter with which it
deals. In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
We do agree with Appellant that Nilsson cannot reasonably be
interpreted as relating to Appellant’s field of endeavor of providing
instruction for stringed musical instruments. We are in agreement with the
Examiner (Ans. 6), however, that Nilsson’s teaching of providing color
coded wrapping to core wires for identification purposes is reasonably
pertinent to the problem addressed by Appellant, i.e., the use of color coding
to distinguish between the different wire strings of a musical instrument.
Accordingly, we find no error in the Examiner’s finding that the ordinarily
skilled artisan would have logically consulted the color coded wire wrapping
teachings of Nilsson in attempting to solve problems associated with
teaching students how to play a stringed instrument by using color coding to
identify and distinguish the differently sized wire strings of a musical
instrument as taught by the collective teachings of Roberts and Sperzel.

III. The 37 C.F.R. § 1.132 declarations of Dronge and Mari

In support of Appellant’s position of nonobviousness of the claimed
invention, Appellant has submitted declarations by Mark Dronge, the named
inventor of the present application, and Daniel Mari, purporting to show
evidence of commercial success and long-felt need of the present claimed
invention. We agree with the Examiner (Ans. 5-6), however, that the
evidence provided by the Dronge and Mari declarations is not sufficient to
overcome the prima face case of obviousness set forth by the Examiner.
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The Dronge declaration relies on the number of units of the learning
string set sold and the total dollar revenue as providing evidence of
commercial success. The declaration, however, provides no data concerning
whether the amount of sales of the learning string set represents a substantial
share of the market. Our reviewing court has noted in the past that evidence
related solely to the number of units sold provides a very weak showing of
commercial success, if any. See In re Huang, 100 F.3d 135, 137 (Fed. Cir.
1996); Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1026-27
(Fed. Cir. 1985) (finding that sales of 5 million units represents a minimal
showing of commercial success because “[w]ithout further economic
evidence . . . it would be improper to infer that the reported sales represent a
substantial share of any definable market”); see also In re Baxter Travenol
Lab., 952 F.2d 388, 392 (Fed. Cir. 1991).
The evidence provided by the Mari declaration, allegedly showing a
long-felt need for the claimed invention, is equally unpersuasive. We find
no showing of any objective evidence that establishes that an art recognized
problem existed in the learning string set art for a long period of time
without solution. In particular, we find no evidence that any such need was
a persistent one that was recognized by those of ordinary skill in the art. See
In re Gershon, 372 F.2d 535, 539 (CCPA 1967). Mr. Mari’s anecdotal
recollection that the string set disclosed by the Roberts reference was never
sold and the suggested reason for the alleged lack of commercialization is
based purely on speculation without evidentiary support.
In the final analysis, evidence of nonobviousness, although being a
factor that must be considered, is not necessarily controlling. See Newell
Companies, Inc. v. Kenney Manufacturing Co., 864 F.2d 757, 768 (Fed. Cir.
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1988). In view of the foregoing, we are satisfied that when all the evidence
and arguments are considered, the evidence of nonobviousness fails to
outweigh the evidence of obviousness as in Richardson-Vicks Inc. v. Upjohn
Co., 122 F.3d 1476 (Fed. Cir. 1997) and EWP Corp. v. Reliance Universal,
Inc., 755 F.2d 898 (Fed. Cir. 1985).

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has not shown that the Examiner erred in rejecting appealed
claims 8, 9, 12-14, and 17 for obviousness under 35 U.S.C. § 103.

DECISION
The Examiner’s 35 U.S.C. § 103 rejection of claims 8, 9, 12-14, and
17, all of the appealed claims, is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

JRG

BRIAN ROFFE, ESQ
11 SUNRISE PLAZA, SUITE 303
VALLEY STREAM, NY 11580-6111
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