Ex Parte Kira

Patent Trial and Appeal Board

Feb 12, 2018

11989944 (P.T.A.B. Feb. 12, 2018)

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.
11/989,944 02/04/2008 Yoshifumi Kira 135528 9566
25944 7590
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
UHLIR, CHRISTOPHER J
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
02/14/2018 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):
OfficeAction25944@oliff.com
j armstrong @ oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHIFUMI KIRA
Appeal 2017-005101
Application 11/989,944
Technology Center 2800
Before CHRISTOPHER L. OGDEN, AVELYN M. ROSS, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
1 In our Opinion, we refer to the Non-final Action mailed October 29, 2015
(“Non-final Act.”); the Appeal Br. filed August 17, 2016 (“App. Br.”); the
Examiner’s Answer mailed November 23, 2016 (“Ans.”); and the Reply
Brief filed February 13, 2017 (“Reply Br.”).
Appeal 2017-005101
Application 11/989,944
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Non-final Rejection of claims 1—3, 5, 7—9, 11, and 12. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
The subject matter on appeal relates to storing timbre combinations in
electronic musical instruments and apparatuses. Spec. 1,11. 17—24. Claim 3,
reproduced below, is illustrative of the claimed subject matter:
3. A timbre storing apparatus comprising:
a plurality of timbre selection means, each timbre
selection means allowing selection of a single, different timbre
data;
memory means in which are stored, as a timbre
combination, the different single timbre data which have been
respectively selected by different ones of said plurality of
timbre selection means, such that the selected different single
timbre data are stored as the timbre combination in said
memory means in correspondence with one of said timbre
selection means;
first selecting means for selecting one timbre from a
previously stored timbre combination and changing one more
timbres of said previously stored timbre combination in said
memory means in correspondence with one said timbre
selection means which corresponds to said selected one timbre;
means for switching between (i) a first mode in which
each of said timbre selection means selects one of said single
timbres and (ii) a second mode in which each of said timbre
selection means selects one of said stored timbre combinations;
2 Appellant identifies Kawai Musical Instruments Mfg. Co., Ltd. as the real
party in interest. App. Br. 1.
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Application 11/989,944
means for reading said single timbre data corresponding
to the one said timbre selection means according to operation of
the one said timbre selection means, and generating a single
tone corresponding to the read single timbre data, when said
first mode is selected by said switching;
means for reading data of all timbres of one said timbre
combination simultaneously according to operating of the one
said timbre selection means, tones of the all timbres in the
timbre combination being generated simultaneously, when said
second mode is selected by said switching; and
second selecting means to select a timbre in one of the
timbre combinations so that a tone of said timbre selected by
the second selecting means is kept from being generated, and
only tones of a plurality of timbres not selected by the second
selecting means are generated, and an output volume of the
plurality of timbres not selected by the second selecting means
is individually controlled.
Claims App’x A-4—A-5 to App. Br.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Matsuda et al. US 5,177,314 Jan. 5, 1993
(“Matsuda”)
Saito US 5,412,153 May 2, 1995
Arnold et al. US 5,908,997 June 1, 1999
(“Arnold”)
REJECTIONS
The Examiner maintains and Appellant seeks review of the following
rejections under 35 U.S.C. § 103(a): (1) claims 1—3, 5, 7, and 8 over
Matsuda in view of Arnold; and (2) claims 9, 11, and 12 over Matsuda in
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Application 11/989,944
view of Arnold and further in view of Saito. Non-final Act. 4—10; App. Br.
9-11.
OPINION
Appellant substantively argues patentability only of independent
claim 3, as the claim contains all limitations disputed by Appellant. Appeal
Br. 9-11. We, therefore, select claim 3 as representative. 37 C.F.R. §
41.37(c)(l)(iv).
In the Non-final Rejection, the Examiner finds that the combination of
Matsuda and Arnold discloses all elements of claim 3. Non-final Act. 4—8.
The Examiner finds that Matsuda fails to disclose “that the selected different
single timbre data are stored as the timbre combination in the memory
means in correspondence with one of the timbre selection means,” but
determines that Arnold teaches this limitation. Id. at 5—6.
Appellant’s argument is limited to two points: (1) the applied art, even
if combined, would not have included memory means in which a timbre
combination is stored in correspondence with one of said timbre selection
means; and (2) the applied art, even if combined, would not have included
the required means for switching between a first mode and a second mode.
App. Br. 9-11.
In response to Appellant’s first point, the Examiner revises the
rejection, finding that Matsuda teaches the “storing in correspondence with
one timbre selection means” limitation. Ans. 2—A. Specifically, the
Examiner finds that
Matsuda . . . discloses that different single timbre data (two
types of timbre) are stored as a timbre combination in a
memory means in correspondence with one key operation ... in
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Appeal 2017-005101
Application 11/989,944
which musical tones with two types of timbres, the master
timbre set in normal mode and another (second) timbre set [in]
a similar manner ... are simultaneously generated by a single
key operation, where said key operation is one of a timbre
selection means (timbre keys T1-T5).
Id. at 2—3 (citing Matsuda, col. 3,1. 66—col. 4,1. 3 and col. 7,11. 7—11).
Appellant argues that the Examiner’s Answer on this issue is a new
ground of rejection that was not properly designated as such. Reply Br. 1.
We agree with Appellant that the Examiner’s use of Matsuda as
teaching the “memory means in correspondence with one of said timbre
selection means” is an unapproved new ground of rejection. However,
Appellant has not petitioned for review of the rejection as an improper new
ground, thus waiving arguments on this issue.3 Accordingly, we address the
rejection based on the Examiner’s findings and reasoning in the Answer and
Appellant’s response.
Appellant disputes that the Examiner shows Matsuda discloses the
“memory means in correspondence with one of said timbre selection means”
required by claim 3. Reply Br. 3. The Examiner finds that Matsuda’s
timbre keys T1-T5 meet the “timbre selection means” element. Ans. 3.
3 See 37 C.F.R. § 41.40(a) (“Any request to seek review of the primary
examiner’s failure to designate a rejection as a new ground of rejection in an
examiner’s answer must be by way of a petition to the Director under §
1.181 of this title filed within two months from the entry of the examiner’s
answer and before the filing of any reply brief. Failure of appellant to timely
file such a petition will constitute a waiver of any arguments that a rejection
must be designated as a new ground of rejection”); see also, e.g., Manual of
Patent Examining Procedure § 1002.02(c)6 and § 1207.03(b) (9th ed., Rev.
7, November 2015); In re Berger, 279 F.3d 975, 984—85 (Fed. Cir. 2002)
(Issues regarding whether an examiner abused his or her discretion in
matters of practice and procedure are not subject to appeal).
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Appeal 2017-005101
Application 11/989,944
Appellant argues that a “key operation” is not a “key,” (timbre selection
means), thus the Examiner does not show that the timbre combination is
stored “in correspondence with” one of keys T1-T5. Reply Br. 3. Appellant
contends that the Examiner provides no evidence that “operation” of keys
T1-T5 means that the timbre combination is stored “in correspondence with”
one of the keys T1-T5. Id.
Matsuda teaches that timbre keys T1-T5 are assigned to different
timbres. Matsuda, col. 2,11. 44—50. Matsuda also teaches a tone mix mode
in which musical tones with two types of timbres, a master timbre and a
slave timbre, are simultaneously generated by a single key. Id. col. 3,1. 66-
col. 4,1. 3, col. 6,11. In the tone mix mode the tone bank function is enabled,
or “ON.” Matsuda teaches:
[T]he timbre control register comprises a tone bank flag, a
master timbre number register and a slave timbre number
register. The tone bank flag is “1” when the tone bank function
is set ON or enabled, and it is “0” when this function is set OFF
or disabled. When the tone bank function is disabled, the
master timbre number register serving as the first memory
means stores one of timbre numbers (0 to 9) of the timbres
selected by the operation of the select key FI and timbre keys
T1-T5. When the tone bank function is enabled, the slave
timbre number register serving as the second memory means
stores one of timbre numbers (0 to 9) of the timbres similarly
selected.
Id. col. 4,11. 5—19 (bolding omitted). Therefore, Matsuda teaches that the
master timbre and the slave timbre are set separately, one at a time, each set
by select key FI and timbre keys T1-T5. When the tone bank key F2 is set
to ON, musical tones with two types of timbres (master and slave timbres)
are generated. Id. col. 7,11. 7—11.
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Application 11/989,944
Claim 3 requires that “selected different single timbre data are stored
as the timbre combination in said memory means in correspondence with
one of said timbre selection means. ” Claim App’x A-4. The Board gives
claims their broadest reasonable interpretation in light of the specification.
In re Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007). The
broadest reasonable interpretation of “in correspondence with” in the claim
limitation is that a timbre combination is stored in and retrieved from the
memory means by selecting a single timbre selection means. See Spec.
29:3-5.
Matsuda teaches storing the timbre combination in correspondence
with two timbre selection means—one use of timbre keys T1-T5 to set the
master timbre and a second use of timbre keys T1-T5 to set the slave timbre.
The timbre combination could be said to be stored in correspondence with
the single tone bank key F2, but this is not a “timbre selection means.” The
timbre combination in Matsuda is not retrieved from the memory by
selecting a single timbre key.
Based on the above analysis, Matsuda does not disclose the claim
limitation “the selected different single timbre data are stored as the timbre
combination in said memory means in correspondence with one of said
timbre selection means.” The Examiner does not find that Arnold discloses
the limitation. See Ans. 2-4.
Having determined that the combination of cited references does not
teach one limitation, we need not address Appellant’s second argument.
The rejection of claim 3 as obvious over Matsuda in view of Arnold is
not sustained. For the reasons given above, the rejection of claims 1, 2, 5,
7—9, 11, and 12 also is not sustained.
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DECISION
The Examiner’s rejection of claims 1—3, 5, 7—9, 11, and 12 is
reversed.
REVERSED
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