Ex Parte Hammond

Board of Patent Appeals and Interferences

Jun 30, 2010

11201828 (B.P.A.I. Jun. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PATRICK HAMMOND
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Appeal 2009-003018
Application 11/201,828
Technology Center 2800
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Decided: June 30, 2010
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Before KENNETH W. HAIRSTON, MARC. S. HOFF,
and CARL W. WHITEHEAD, Jr., Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1 to 8, 10 to 15, 17 to 22, and 24.1 We have jurisdiction
under 35 U.S.C. § 6(b).

1 Claims 9, 16, and 23 are objected to by the Examiner as being dependent
upon a rejected base claim, but would be allowable if rewritten in
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We will sustain the obviousness rejections of claims 1 to 8, 10 to 15,
and 17 under 35 U.S.C. § 103(a), and reverse the obviousness rejection of
claims 18 to 22 and 24 under 35 U.S.C. § 103(a).
Appellant’s claimed invention is directed to an instructional device
and method for illustrating combinations of note positions on a stringed
instrument such as a guitar (Spec. ¶ [0001]; Figs. 1, 1A). The notes are used
for forming chords with the instrument (Spec. ¶ [0001]). Appellant
discloses and claims an instructional device for defining plural note
positions along each of plural lines (i.e., simulated strings), and plural
markers on each of those lines so that each marker is separately adjustable,
and the markers are adjusted to a predetermined configuration (claim 1;
Abs.; Figs. 1, 1A). Appellant also claims a method of illustrating
combinations of note positions including providing plural markers on each
of plural lines corresponding to strings of an instrument, where (i) each
marker is configured to be independently adjustable from the other, (ii) the
markers are adjusted as a group to a predetermined configuration, and (iii) a
group consisting of less than all of the markers is selectively adjusted (claim
18).
Claim 1 is representative of the claims on appeal, and reads as
follows:
1. An instructional device for illustrating note positions in
combinations corresponding to chords formed on a musical instrument, the
device comprising:

independent form including all of the limitations of base claims 1 and 18,
respectively (Final Rej. 8).
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a display area defining a plurality of note positions along each of a
plurality of lines, the note positions corresponding to positions along the
strings of the musical instrument for forming successive notes on the
instrument; and

a plurality of individual markers disposed along each of the lines such
that each marker is separately adjustable along one of the respective lines
between note positions corresponding to notes of the musical instrument,

wherein the markers are structured to be adjusted to a first
predetermined configuration in which the markers disposed along each line
are disposed at successively adjacent note positions along each line, the
markers having indicia for indicating a chordal relationship between the
corresponding note positions of the markers in the first predetermined
configuration.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Whitlock US 4,289,057 Sep. 15, 1981
Nicklaus US 4,417,497 Nov. 29, 1983

The Examiner rejected claims 1 to 8, 10 to 15, 17 to 22, and 24 under
35 U.S.C. § 103(a) based upon the teachings of Whitlock and Nicklaus.

ISSUES
First Issue: Claims 1 to 8, 10 to 15, and 17
Appellant contends with regard to claim 1 (App. Br. 4-6; Reply Br. 1-
3), that Whitlock teaches away from modifying the indicia to be individual
markers along each line, and, instead, Whitlock’s purpose is to maintain the
relationship of the indicia on each base. More specifically, Appellant
contends (App. Br. 5) that Whitlock’s purpose is to provide an apparatus
with few moving parts, and to optimize its structure in its display by
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providing a simple construction. Appellant asserts (App. Br. 5; Reply Br. 2)
that the proposed modification of Whitlock would result in over 100 slidable
bases, and, thus, the modification would change the principle of operation
and design of Whitlock.
The Examiner contends (Ans. 3-4) that it would have been obvious to
modify the instructional device of Whitlock with the separately adjustable
markers of Nicklaus in order to provide movable note index units that
illustrate the proper location of finger positions for each of the notes.
Accordingly, the first issue is whether or not it would have been
obvious to modify the instructional device of Whitlock in order to make the
markers separately adjustable, as set forth in claim 1 on appeal?
Second Issue: Claims 18 to 22 and 24
Appellant contends (App. Br. 6-7) that neither Whitlock nor Nicklaus
discloses adjusting markers together to their predetermined configuration
and then selectively removing only some of them.
The Examiner contends (Ans. 4) that claim 18 “mirrors” claim 1, and
fails to address Appellant’s arguments addressing claim 18 in the Response
to Arguments section of the Answer (see generally Ans. 5-8).
Thus, the second issue is whether the Examiner has properly
addressed the limitations of, and made a prima facie case of obviousness for,
claim 18 on appeal?

FINDINGS OF FACT
1. Whitlock describes an instructional device for illustrating note
positions corresponding to chords formed on a musical instrument (Figs. 1
and 2) including a display area (Fig. 1) and a plurality of indicia (e.g., plural
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indicia on each note series 10, 20, 30, and 40) which indicate a chordal
relationship disposed along each of plural lines 51-54 simulating the strings
of the instrument (col. 2, ll. 19-31). The device of Whitlock indicates finger
patterns which “display[] the scale degrees in the makeup of a chord or
scale” (col. 2, ll. 21-22).
2. Whitlock describes a plurality of note designations which are fixed
in place at note positions of a particular tuning pattern 45 or fingering
pattern 15 (see Fig. 1; col. 9, ll. 17-21 and 26-38). Fingering pattern 15,
tuning pattern 45, negative note series 30, string stop series 20, and fingering
series 10 all contain plural note designations (e.g., “A,” “b7”) each of which
are fixed in relation not only to other note designations on the same series
(e.g., 10, 20, 30, and 40) but also in relation to other note designations on
other series that are in the same pattern (e.g., 15, 45). Whitlock also
describes using blank indicia in a note series which supplant note
designations (e.g., note designations for sharps or flats) in order to “enhance
legibility and clarity” (col. 6, ll. 24-34).
3. Whitlock describes the existence of “a rich variety in stringed
fingerboard instruments which are in contemporary use in this country and
throughout the world of music” (col. 10, l. 67 to col. 11, l. 1). According to
Whitlock, “[t]his presents a large number of tunings to be addressed by a
music instruction device” (col. 11, l. 2-4).
4. Nicklaus describes an instructional device for stringed instruments
(Figs. 5-10) having plural individual note index units 104 along each of
plural parallel wires 51-54 which each represent a string of the instrument
(col. 3, ll. 29-33). The note index units 104 can be magnetically attached to
the strings and are removable by the user (col. 4, ll. 39-42; col. 5, l. 57 to
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col. 6, l. 3). Nicklaus shows as many as 15 note index units being used for
instruction on a four string instrument such as a violin (see Fig. 18).

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). The
Examiner’s articulated reasoning in the rejection must possess a rational
underpinning to support the legal conclusion of obviousness. In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006). Appellant must, on appeal to the Board,
demonstrate reversible error in the Examiner’s position or rejection. See
Kahn, 441 F.3d at 985-86.
The determination of obviousness must consider, inter alia, 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 doing so. Brown & Williamson
Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000).
If the proposed modification would render the prior art invention being
modified unsatisfactory for its intended purpose, then there is no suggestion
or motivation to make the proposed modification. In re Gordon, 733 F.2d
900, 902 (Fed. Cir. 1984). Further, our reviewing court has held that “[a]
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
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1994); Para-Ordinance Mfg., Inc. v. SGS Importers Int’l., Inc., 73 F.3d
1085, 1090 (Fed. Cir. 1995).

ANALYSIS
First Issue: Claims 1 to 8, 10 to 15, and 17
Turning now to the obviousness rejection of claims 1 to 8, 10 to 15,
and 17 over Whitlock and Nicklaus, we agree with the Examiner’s findings
of fact and conclusions of obviousness (Ans. 3-8), and adopt them as our
own, along with some amplification of the Examiner’s explanation of the
teachings of Whitlock (see FF 1-3) and Nicklaus (see FF 4). See Fine, 837
F.2d at 1073; Kahn, 441 F.3d at 988. We will sustain the Examiner’s
rejections of claims 1 to 8, 10 to 15, and 17 for the reasons that follow.
We agree with the Examiner (Ans. 3-4, 6-7) that the obviousness
rejection of claims 1 to 8, 10 to 15, and 17 is proper because it would have
been obvious to modify Whitlock to employ plural individual and separately
adjustable markers as taught by Nicklaus. Appellant’s contentions (App. Br.
3-6; Reply Br. 1-3) that Whitlock teaches away from making such a
modification are unconvincing.
One of ordinary skill in the art looking at Whitlock and Nicklaus
would understand that separating the note series 10, 20, 30, and 40 shown in
Figure 1 of Whitlock into separately adjustable note units or markers as
taught by Nicklaus would provide more flexibility and an increased number
of patterns for instruction (see FF 3). Thus, a person of ordinary skill in the
art would have been motivated to combine Whitlock and Nicklaus to achieve
the invention as recited in claim 1. Brown & Williamson Tobacco Corp.,
229 F.3d at 1125. The portions of Whitlock cited by Appellant (App. Br. 5)
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for the proposition that fewer moving parts (i.e., a simplified construction)
are desirable do not convince us that the ordinarily skilled artisan would not
be motivated to obtain the significant gains in the usability of an
instructional device had by being able to separately adjust notes of the series
(e.g., 10, 20, 30, 40 shown in Fig. 1 of Whitlock) in order to produce more
and new fingering patterns. A person of ordinary skill, upon reading
Whitlock and Nicklaus, would not be discouraged from using separable
markers as Appellant has done since doing so would provide the significant
benefit of providing more note and fingering patterns for instruction
regarding a particular instrument or instruments. Gurley, 27 F.3d at 553;
Para-Ordinance Mfg., Inc., 73 F.3d at 1090. Such modification would not
render Whitlock unsatisfactory for its intended purpose since Whitlock
suggests the desirability of providing a large number of tunings to a user (FF
3). Gordon, 733 F.2d at 902.
In view of the foregoing and Findings of Fact 1 to 4, Whitlock and
Nicklaus describe all of the elements of claims 1 to 8, 10 to 15, and 17 of an
instructional device for stringed instruments including using plural
individual markers along each line or string where the markers are separately
adjustable along each of the lines or strings.
The Examiner has provided articulated reasoning with a rational
underpinning to support the combination for the legal conclusion of
obviousness (Ans. 3-8). See Kahn, 441 F.3d at 988. Specifically, we agree
with the Examiner (Ans. 3-4) that the motivation to combine Whitlock and
Nicklaus would be to provide an instructional device for a stringed
instrument having movable note index units that illustrate and practice the
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proper finger position locations for each of the notes in each of several keys
of operation of a stringed instrument.
With respect to claim 5, we also agree with the Examiner (Ans. 4-5)
that it would have been obvious to modify Whitlock and Nicklaus to include
a plurality of markers numbering at least 35 in quantity, or as many as
necessary, given the vast number of tunings available for stringed
instruments (FF 3). Accordingly, Appellant’s argument that there is no
reason why a person of ordinary skill in the art would combine Nicklaus
with Whitlock is unconvincing.
With respect to claim 7, we agree with the Examiner (Ans. 7) that
Whitlock teaches note designations being “‘fixed’” as recited in the claim
(FF 2). Appellant’s arguments (App. Br. 8; Reply Br. 4) that Whitlock does
not teach or suggest note designations at note positions which are fixed in
place with respect to note positions of the musical instrument, but instead
discloses note designations in a series (i.e., tuning pattern 45) that are fixed
in place with respect to note designations in other series, are unpersuasive.
Fingering pattern 15, tuning pattern 45, negative note series 30, string stop
series 20, and fingering series 10 all contain plural note designations (e.g.,
“A,” “b7,” etc.) each of which are fixed in relation not only to other note
designations on the same series (e.g., 10, 20, 30, and 40) but also in relation
to other note designations on other series that are in the same pattern (e.g.,
15, 45, etc.) (FF 2).
With respect to claim 12, we agree with the Examiner (Ans. 7-8) that
Whitlock teaches filler markers which indicate a chordal relationship as
recited in claim 12 (see FF 2). Appellant’s contentions (App. Br. 8-9; Reply
Br. 4) that (i) Whitlock does not teach plural markers along a single line, and
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(ii) Whitlock fails to provide any motivation for separating blank spaces on
each base or series into separate markers are unpersuasive in light of the
Examiner’s reliance upon Nicklaus as disclosing separate markers. The
properly combined teachings and suggestions of Whitlock and Nicklaus
meet the limitation of claim 12.
In view of the foregoing, we find that Whitlock and Nicklaus, taken in
combination, disclose or suggest an instructional device for stringed
instruments including using plural individual markers along each line or
string where the markers are separately adjustable along each of the lines or
strings, as set forth in claims 1 to 8, 10 to 15, and 17. Accordingly, we will
sustain the Examiner’s rejection of these claims as being obvious under §
103(a) over the combined teachings of Whitlock and Nicklaus.
Second Issue: Claims 18 to 22 and 24
Turning now to the obviousness rejection of claims 18 to 22 and 24
over Whitlock and Nicklaus, we agree with the Appellant’s assertions that
(i) claim 18 has different scope from claim 1, and (ii) the Examiner has
failed to address the features of claim 18 (e.g., adjusting the markers as a
group to a predetermined configuration, and selectively adjusting less than
all of the markers) (App. Br. 6-7). We will not sustain the Examiner’s
rejections of claims 18 to 22 and 24 for at least the reason that no prima
facie case of obviousness has been made.
The Examiner’s statement that the rejection of claim 18 mirrors that
of claim 1 (Ans. 4) is insufficient as applied to claim 18 because of the
difference in claim scope. Specifically, the Examiner has not sufficiently
addressed the limitations found in claim 18 of (i) adjusting the markers as a
group to a predetermined configuration, and (ii) selectively adjusting less
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than all of the markers. The Examiner fails to address these differing
features of claim 18, or Appellant’s arguments with regard to these features,
in the Response to Argument section of the Answer (see Ans. 5-8). As a
result, we find that the Examiner has neither provided (i) a factual basis to
support the legal conclusion of obviousness (see In re Fine, 837 F.2d at
1073), nor (ii) articulated reasoning possessing a rational underpinning to
support the legal conclusion of obviousness (In re Kahn, 441 F.3d at 988) as
to claim 18 and claims 19 to 22 and 24 which depend therefrom.

ORDER
We affirm the Examiner’s obviousness rejections of claims 1 to 8, 10
to 15, and 17 under § 103(a).
We reverse the Examiner’s obviousness rejection of claims 18 to 22
and 24 under § 103(a).
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-IN-PART

KIS

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