Ex Parte Lee

Board of Patent Appeals and Interferences

Feb 24, 2004

08377027 (B.P.A.I. Feb. 24, 2004)

-1-
The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
Paper No. 35
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte J. ROBERT LEE
________________
Appeal No. 2000-0454
Application 08/377,027
________________
ON BRIEF
________________
Before HAIRSTON, JERRY SMITH and LEVY, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-3, 5-9, 11-15, 17-20
and 22-25, which constitute all the claims in the application.
Appeal No. 2000-0454
Application 08/377,027
-2-
The disclosed invention pertains to a music synthesizer
device for playing at least one prestored tune characterized by a
plurality of harmony parts which are played simultaneously. The
invention is disclosed as having particular utility as a digital
hymnal. One feature of the invention is that each of the harmony
parts is independently orchestrated. Another feature of the
invention is that an amen signal is automatically selected to
play a plagal cadence at the end of the tune.
Representative claim 1 is reproduced as follows:
1. A music synthesizer device for playing at least one
prestored tune characterized by at least first and second
simultaneously-played parts of harmony, comprising:
a data storage medium;
a first data structure stored in the data storage medium,
the first data structure including a first digital data series
representing the first part of harmony of a tune;
a second data structure stored in the data storage medium,
the second data structure including a second digital data series
representing the second part of the harmony of the tune;
a manipulable input surface for generating an orchestration
signal in response to manipulation of the input surface by a
user;
an orchestrator for receiving the orchestration signal and
establishing a first orchestration attribute for the first part
of harmony and a second orchestration attribute for the second
part of harmony in response to the orchestration signal;
Appeal No. 2000-0454
Application 08/377,027
-3-
a computer interfaced with the orchestrator and the data
storage medium for causing the first and second parts of harmony
to be simultaneously played in response to the first and second
digital data series and in accordance with the first and second
orchestration attributes; and
an amen selector for generating an amen signal, wherein the
computer receives the amen signal and causes the music to play a
plagal cadence at the end of the tune.
The examiner relies on the following references:
Baggi 4,468,998 Sep. 04, 1984
Tabata 5,355,762 Oct. 18, 1994
Claims 1-3, 5-9, 11-15, 17-20 and 22-25 stand rejected
under 35 U.S.C. § 103(a). As evidence of obviousness the
examiner offers Baggi in view of Tabata.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
Appeal No. 2000-0454
Application 08/377,027
-4-
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in the
claims on appeal. Accordingly, we reverse.
Appellant has indicated that for purposes of this appeal
the claims will all stand or fall together as a single group
[brief, page 5]. Consistent with this indication appellant has
made no separate arguments with respect to any of the claims on
appeal. Accordingly, all the claims before us will stand or fall
together. Note In re King, 801 F.2d 1324, 1325, 231 USPQ 136,
137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ
1, 3 (Fed. Cir. 1983). Since appellant and the examiner have
argued the limitations which appear in claim 1, we will consider
the rejection against independent claim 1 as representative of
all the claims on appeal.
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
Appeal No. 2000-0454
Application 08/377,027
-5-
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
Appeal No. 2000-0454
Application 08/377,027
-6-
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). 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 brief have not been considered and are deemed to be waived
by appellant [see 37 CFR § 1.192(a)].
The examiner finds that Baggi teaches the claimed
invention except that Baggi does not disclose prestored tunes of
simultaneously played parts nor an amen selector which causes the
synthesizer to play a plagal cadence at the end. The examiner
cites Tabata as disclosing the prestoring of harmony tunes. The
examiner notes that Tabata does not mention an amen signal, but
the examiner finds that an amen signal merely refers to
generating an ending phrase of an amen plagal cadence. The
examiner finds that it would have been obvious to the artisan to
combine the teachings of Tabata with the teachings of Baggi
[final rejection, Paper No. 19, incorporated into Examiner’s
Answer at page 3].
Appeal No. 2000-0454
Application 08/377,027
-7-
Appellant argues that neither Baggi nor Tabata discusses
or suggests the orchestration of individual parts of harmony.
The appellant asserts that the portion of Baggi relied on by the
examiner for the claimed orchestration nowhere discusses first
and second orchestration attributes associated with first and
second parts of harmony. Appellant also argues that Baggi
teaches away from using stored data so that there is no teaching
of the claimed data structures. Finally, appellant argues that
neither Baggi nor Tabata teaches an amen signal that generates a
plagal cadence at the end of the tune. Appellant asserts that
the broad teaching in Tabata of an ending theme does not teach or
suggest an amen signal which generates a plagal cadence at the
end of the tune as claimed [brief, pages 6-12].
The examiner responds that the harmony composition data
of Baggi or Tabata meets the definition of “orchestration” within
the meaning of the claim. With respect to the claimed data
structures, the examiner responds that the stored algorithms of
Baggi are equivalent to these data structures. The examiner
responds that the ending theme as taught by Tabata meets the amen
signal of the claimed invention [answer, pages 4-7].
Appeal No. 2000-0454
Application 08/377,027
-8-
Appellant responds that there is no suggestion in Tabata
of an amen selector or a plagal cadence [reply brief].
We will not sustain the examiner’s rejection of the
claims on appeal. The examiner has not properly interpreted the
claims on appeal, and the examiner has made erroneous findings
with respect to the teachings of the applied references. We
first note that claim 1 recites that an orchestrator establishes
a first orchestration attribute for the first part of harmony and
a second orchestration attribute for the second part of harmony.
The examiner has offered a broad dictionary definition of
“orchestration” in order to interpret the claimed invention. The
specification, however, states that “For purposes of the present
invention, the orchestration of a synthesized tune refers to the
number and types of simulated instruments produced by the
synthesizer system to generate the audible tune” [specification,
page 2]. Thus, the specification has provided a specific
definition of the term “orchestration.” The examiner’s
interpretation of “orchestration” is inconsistent with the
assigned definition. The claims require that the number and
types of simulated instruments be established for each of the
harmony parts. There is no teaching or suggestion in either
Appeal No. 2000-0454
Application 08/377,027
-9-
Baggi or Tabata of establishing the number and types of
instruments for each of the parts of harmony.
We also disagree with the examiner’s finding that the
stored algorithms of Baggi teach the claimed data structures.
The claimed invention requires that separate data structures,
which include a digital data series, be stored for each of the
harmony parts of a tune. The mere presence of a data storage
device in the applied prior art does not teach or suggest that
the data used to synthesize the tunes in Baggi or Tabata consists
of data structures of the type defined in the claimed invention.
Finally, we do not agree with the examiner’s finding that
Tabata suggests the claimed amen signal. The examiner
essentially finds that the teaching of an ending theme in Tabata
suggests the claimed amen signal. The specification, however,
states that “An ‘amen’ phrase is a plagal cadence, keyed to the
subdominant and tonic of the hymn, to which the word ‘amen’ is
sung” [specification, pages 2-3]. Even if it were determined
that Tabata suggests the playing of an amen phrase, there is no
suggestion in Tabata or Baggi that the phrase should be played as
a plagal cadence at the end of the tune. The only suggestion to
play an amen signal as a plagal cadence at the end of the tune
comes from appellant’s own disclosure.
Appeal No. 2000-0454
Application 08/377,027
-10-
In summary, we find that the examiner has improperly
interpreted the claimed invention and has made erroneous findings
with respect to the teachings of the applied prior art.
Therefore, the decision of the examiner rejecting claims 1-3, 5-
9, 11-15, 17-20 and 22-25 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
STUART S. LEVY )
Administrative Patent Judge )
JS/ki
Appeal No. 2000-0454
Application 08/377,027
-11-
Glenn W. Ohlson
Barnes & Thornburg
P.O. Box 2786
Chicago, IL 60690-2786