Ex Parte Ludwig

Patent Trial and Appeal Board

Feb 26, 2014

11004746 (P.T.A.B. Feb. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LESTER F. LUDWIG
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Appeal 2012-007008
Application 11/004,746
Technology Center 2800
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Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and MARC S.
HOFF, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

ON REQUEST FOR REHEARING
Appellant requests that we reconsider our decision of November 1,
2013 (“Dec’n”) where we affirmed the Examiner’s decision to reject claims
39-126 in part. In that decision, we affirmed the Examiner’s rejections of
(1) claims 39-54 under the first and second paragraphs of § 112, and (2)
claims 39-107 under § 103, but reversed the Examiner’s obviousness
rejection of claims 108-126.1

1 Although Appellant asserts that we “substantially affirmed” the Examiner’s
obviousness rejection of claims 39-126 (Req. 1), we did not affirm the
rejection of claims 108-126.
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We have reconsidered our decision in light of Appellant’s arguments
in the Request for Rehearing (“Req.”), but we decline to change our decision
for the following reasons.

THE WRITTEN DESCRIPTION REJECTION
In our decision, we affirmed the Examiner’s rejection of claims 39-54
under § 112, first paragraph because Appellant’s original disclosure failed to
reasonably convey possession of a rotating light system comprising the
combination of (1) at least one controllable light source responsive to a
MIDI light control signal, and (2) a rotating light-travel modulation element
whose motion is responsive to a MIDI motion control signal, as recited in
independent claim 39. Dec’n 3-8.
Appellant contends that all aspects of claim 39 are fully supported,
and cites, for the first time in the request, numerous paragraphs from
Appellant’s pre-grant publication2 that are said to be “relevant to the present
request.” Req. 2-4.3 But Appellant’s briefs only cited paragraphs 337 to
339 and 346 to 377 and Figure 70 of the original disclosure in connection
with written-description support for the limitations of claim 39. Compare
App. Br. 8-9, 20-21; Reply Br. 4 with Req. 2-4. Accord Dec’n 3-7 (citing
various paragraphs from the original disclosure that were cited on App. Br.
8-9, 20-21).
We emphasize “original disclosure” here, for Appellant’s briefs did
not cite the published application in this regard, let alone the particular

2 Although Appellant does not provide a pinpoint citation to this pre-grant
publication, it is US 2005/0126374 A1.
3 Although Appellant’s request is not paginated, we nonetheless refer to
page numbers of the request in the order that its pages appear in the record.
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paragraphs from that publication that are now said to provide written
description support for the limitations of claim 39. For this reason alone,
Appellant’s request improperly raises new arguments and presents new
evidence that we decline to consider here in the first instance after our
decision. See 37 C.F.R. § 41.52(a)(1) (“Arguments not raised in the briefs
before the Board and evidence not previously relied upon in the brief and
any reply brief(s) are not permitted in the request for rehearing except as
permitted by paragraphs (a)(2) and (a)(3) of this section.”).
But even if we were to consider this newly-cited published document
(which we do not), Appellant has not shown how this published disclosure
corresponds to the originally-filed disclosure, let alone to the particular
passages from the originally-filed disclosure that were cited in the briefs.
This is a crucial deficiency, for patent applications are typically published at
least eighteen months after they are filed, and may not reflect the disclosure
as originally filed. See 37 C.F.R. §§ 1.211, 1.215(a) (noting that patent
application publications may be based on amended specifications and
drawings).
Here, the present application was filed on December 3, 2004, and as a
continuing application, was effectively filed at least as early as its earliest
parent utility application (No. 09/313,533) on May 15, 1999. The present
application, however, published on June 16, 2005 as US 2005/0126374 A1
(“’374 Appl’n”). Given this time lapse between the present application’s
original filing and its publication, Appellant’s failure to show that the cited
paragraphs from this publication correspond to those in the original
disclosure is particularly problematic. That at least one of the cited
paragraphs in the request (Req. 3 (citing ¶ 0339)) differs between its version
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in the original disclosure as compared to the published application only
further undermines Appellant’s reliance on the published application for
providing written-description support for the recited limitations.4
In any event, to the extent that the paragraph numbers cited on pages 2
through 4 of the Request are intended to reflect the same numbers in the
original disclosure, only one cited paragraph corresponds to that cited in the
briefs, namely paragraph 0339—a paragraph that we considered in our
decision. Compare Req. 3 with Dec’n 4-5 (citing ¶ 0339). But as we noted
in the decision, we found this paragraph, along with other passages of the
original disclosure, insufficient to reasonably convey possession of the
particular combination recited in claim 39. Dec’n 4-8. To the extent that
Appellant’s arguments regarding multiplexing MIDI channels and using
separate MIDI cables (Req. 3-5) apply to paragraph 0339 that teaches
carrying MIDI control signals using these means, we remain unconvinced
that these features considered with the other cited passages in the original
disclosure reasonably convey possession of the particular combination in
claim 39 for the reasons indicated in the decision.
Therefore, we remain unpersuaded that the Examiner erred in
rejecting claims 39-54 under § 112, first paragraph for the reasons noted
above and in the decision.

4 Compare Spec. ¶ 0339 (“Using MIDI messages and conventions as a
model, control signals may be carried through cables and subsystems in
combinations of multiplexed formats . . . .” with ’374 Appl’n ¶ 0339
(“Sensors may be attached to the human body by means of clothing . . . .”).
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Application 11/004,746

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THE INDEFINITENESS REJECTION
We likewise remain unpersuaded that the Examiner erred in rejecting
claims 39-54 as indefinite under § 112, second paragraph for the reasons
indicated in the decision. Dec’n 8-9. Despite Appellant’s contention that
the term “motion” in the recited MIDI motion control signal must refer to
the target—not the source—of the control signal (Req. 5-7), Appellant
provides no persuasive evidence on this record to support this contention
apart from conclusory assertions that have little probative value. See In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (noting that mere lawyer’s
arguments and conclusory statements that are unsupported by factual
evidence are entitled to little probative value).
Although we recognized in the decision that skilled artisans could
reasonably interpret the recited MIDI control signals as corresponding to
objects being controlled as Appellant contends, nothing on this record
precludes the Examiner’s different interpretation of a “MIDI motion control
signal” that is based on the nature or origin of that control signal, namely
motion from a keyboard or keys. Dec’n 9 (citing Ans. 6). Given these
multiple plausible interpretations, we remain convinced that this ambiguity
renders claims 39-54 indefinite under Ex parte Miyazaki, 89 USPQ2d 1207,
1211 (BPAI 2008) (precedential) for the reasons noted above and in the
decision.

Appeal 2012-007008
Application 11/004,746

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THE OBVIOUSNESS REJECTION
Claims 39, 40, 44, 46, 49, 52, 55, 56, 68, 70, 71, 75, 76, 79, 80, 85, 86, 89,
93, 99-101, 105, and 106

We also remain unpersuaded that the Examiner erred in rejecting
claims 39, 40, 44, 46, 49, 52, 55, 56, 68, 70, 71, 75, 76, 79, 80, 85, 86, 89,
93, 99-101, 105, and 106 as obvious under § 103 for the reasons indicated in
the decision. Dec’n 11-13. First, Appellant’s contention regarding the
recited MIDI motion control signal as limited to the target—not the source—
of the control signal (Req. 6-7) is unavailing for the reasons noted above.
Second, Appellant’s arguments regarding Pierce’s and Shapiro’s
individual shortcomings (Req. 8) do not persuasively rebut the Examiner’s
reliance on these references’ collective teachings—a position that is not
based on modifying Shapiro as Appellant alleges (id.), but rather based on
what the references’ collective teachings would have suggested to ordinarily
skilled artisans. It is well settled that “a determination of obviousness based
on teachings from multiple references does not require an actual, physical
substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir.
2012) (citations omitted). Nor is the test for obviousness whether a
secondary reference’s features can be bodily incorporated into the structure
of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art. Id.
Lastly, we are unpersuaded that combining Pierce and Shapiro as
proposed would render Pierce unsuitable for its intended educational
purpose for the reasons indicated in the decision. Dec’n 12-13. Appellant’s
arguments to the contrary (Req.8-10) are unpersuasive, for there is no
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persuasive evidence on this record to support Appellant’s contentions apart
from conclusory assertions which, as we noted above, have little probative
value. See Geisler, 116 F.3d at 1470.

Claims 41, 43, 47, 48, 50, 51, 53, 54, 57-60, 62-67, 69, 81-83, 87, 88, 90-92,
94-98, 102-104, and 107

We also remain unpersuaded that the Examiner erred in rejecting
claims 41, 43, 47, 48, 50, 51, 53, 54, 57-60, 62-67, 69, 81-83, 87, 88, 90-92,
94-98, 102-104, and 107 as obvious under § 103 for the reasons indicated in
the decision. Dec’n 13-14. Despite Appellant’s reference to “extensive
Office Action responses” during this application’s “long cumulative
prosecution” (Req. 11-12), the arguments raised on appeal for the above-
noted claims are hardly extensive. Indeed, many of these contentions are
only single sentences that merely summarily allege, without analysis, that
the prior art does not teach various recited limitations. See App. Br. 22-23.
As we noted in the decision, these summary assertions do not particularly
show error in the Examiner’s findings and conclusions in rejecting these
claims. Dec’n 13.
The Reply Brief fares no better in this regard, for it merely generally
asserts that the dependent claims are not obvious due to their dependency
from non-obvious independent claims. Reply Br. 5.
To the extent that Appellant seeks to raise, for the first time after our
decision, specific detailed arguments that were advanced previously during
prosecution regarding the above-noted dependent claims, but were not
presented in the Appeal Brief, such arguments are waived and will not be
considered here. See 37 C.F.R. § 41.52(a)(1); see also MPEP 1205.02:
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It is essential that the Board be provided with a brief fully
stating the position of the appellant with respect to each ground
of rejection presented for review in the appeal so that no search
of the record is required in order to determine that position.
Thus, the brief should not incorporate or reference previous
responses.

Therefore, we remain unpersuaded that the Examiner erred in
rejecting claims 41, 43, 47, 48, 50, 51, 53, 54, 57-60, 62-67, 69, 81-83, 87,
88, 90-92, 94-98, 102-104, and 107 as obvious under § 103 for the reasons
noted above and in the decision.

Claims 45, 61, and 84
Despite Appellant’s arguments to the contrary (Req. 12), we likewise
remain unpersuaded of error in the Examiner’s obviousness rejection of
claims 45, 61, and 84 for the reasons indicated in the decision. Dec’n 14.

Claims 72-74, 77, and 78
We also remain unpersuaded of error in the Examiner’s obviousness
rejection of claims 72-74, 77, and 78 for the reasons indicated in the
decision. Dec’n 15. Appellant’s contention that the Examiner allegedly
improperly officially noticed certain facts in the rejection (Req.12-13),
namely that it is known in the art to use pitch, timbre, and overtone as
control signals, was not raised in the Appeal Brief. See App. Br. 23.
Accordingly, this newly-raised argument is deemed to be waived and will
not be considered here. See 37 C.F.R. § 41.52(a)(1).

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Application 11/004,746

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CONCLUSION
For the foregoing reasons, we have granted Appellant’s request to the
extent that we have reconsidered our decision of November 1, 2013, but we
deny the request with respect to making any changes therein.
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).

REHEARING DENIED

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