Ex Parte Ludwig

Board of Patent Appeals and Interferences

Mar 4, 2011

10680591 (B.P.A.I. Mar. 4, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LESTER F. LUDWIG
____________

Appeal 2009-008916
Application 10/680,591
Technology Center 2800
____________

Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and
MARC S. HOFF, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 27-52, 70-86, 96-104, 110-114, and 116. Claims 1-26,
53-69, 87-95, 105-109, and 115 have been withdrawn from consideration.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008916
Application 10/680,591

2
App. Br. 6.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-
part.

STATEMENT OF THE CASE
Appellant’s invention interconnects a wide range of electronic musical
instruments and signal processing systems via an outgoing multi-channel
audio interface and control interface. See generally Abstract.
Claim 27 is illustrative:
27. A method for interconnecting electronic musical
instruments and signal processing systems, said method comprising:

receiving instrument audio signals at an outgoing multi-channel
audio interface, wherein said instrument audio signals comprise at
least three independent audio signals generated by an external musical
instrument;

providing said instrument audio signals to an external signal
processing system;

receiving MIDI control signals at an outgoing control interface,
wherein said MIDI control signals are generated by said external
musical instrument; and

providing said MIDI control signals to said external signal
processing system.

RELATED APPEALS
This appeal is said to be related to six other appeals in connection
with Application Serial Numbers (1) 09/812,400 (Appeal No. 2009-002201);

2 Throughout this opinion, we refer to (1) the Appeal Brief filed March 31,
2008 (supplemented September 8, 2008); (2) the Examiner’s Answer mailed
July 21, 2008; and (3) the Reply Brief filed September 22, 2008.
Appeal 2009-008916
Application 10/680,591

3
(2) 10/676,926 (Appeal No. 2009-006844); (3) 10/702,262 (Appeal No.
2009-009356); (4) 10/703,023 (Appeal No. 2009-010281); (5) 10/702,415
(Appeal No. 2009-008141); and (6) 11/040,163 (Appeal No. 2010-009424).
App. Br. 4; Supp. App. Br. 2; Reply Br. 3. Appellant, however, notes that
prosecution was reopened in the ‘262 application. App. Br. 3; Supp. App.
Br. 2.
We previously decided three of these appeals (09/812,400,
10/676,926, and 10/702,415). See Ex parte Ludwig, No. 2009-002201, 2009
WL 3793386 (BPAI 2009) (non-precedential) (reversing the Examiner’s
anticipation and obviousness rejections); see also Ex parte Ludwig, No.
2009-006844, 2010 WL 4917799 (BPAI 2010) (non-precedential) (same);
Ex parte Ludwig, No. 2009-008141, 2011 WL 486163 (BPAI 2011) (non-
precedential) (reversing Examiner’s obviousness rejections).

CITED REFERENCE
The Examiner relies on the following as evidence of unpatentability:
Ishigaki US 6,271,455 B1 Aug. 7, 2001
(effectively filed Mar.
26, 1999)3

THE REJECTION
The Examiner rejected claims 27-52, 70-86, 96-104, 110-114, and 116
under 35 U.S.C. § 103(a) as unpatentable over Ishigaki. Ans. 3-8.

3 Although Ishigaki’s filing date is after the present application’s U.S.
provisional application filing date of May 15, 1998, it is before the parent
application’s filing date of May 15, 1999. In any event, Appellant does not
dispute Ishigaki’s qualification as prior art under § 102.
Appeal 2009-008916
Application 10/680,591

4
CONTENTIONS
Regarding representative claim 27, the Examiner finds that Ishigaki
discloses a method for interconnecting electronic musical instruments and
signal processing systems as claimed, including generating (1) “instrument
audio” (via elements 48 and 51), and (2) MIDI control signals from a
“musical instrument,” which the Examiner equates to Ishigaki’s music piece
server 2 and its associated MIDI data forming and audio signal generation
functions. Ans. 3-4, 8-9. The Examiner also finds that Ishigaki’s elements
48 and 51 provide audio signals in the form of data which, along with the
MIDI control signals, is received by an “outgoing multi-channel audio
interface” which the Examiner equates to Ishigaki’s multiplexer 44. Id.
Although the Examiner acknowledges that Ishigaki generates only two—not
three—independent audio signals, the Examiner nonetheless takes the
position that generating three such signals would have been obvious. Id. at
3.
Appellant argues that Ishigaki does not generate audio and MIDI
signals from an external musical instrument, let alone the same musical
instrument as claimed. App. Br. 13-15; Reply Br. 5-7. According to
Appellant, Ishigaki’s elements 41 and 45 are separate and distinct and
therefore are not generated by the same musical instrument, and Ishigaki’s
music piece server 2 is not a “musical instrument” in any event. Id.
Appellant adds that Ishigaki’s elements 48 and 51 provide audio data—not
signals—to the multiplexer which is said to have no outgoing interface at all,
let alone an outgoing multi-channel audio interface as claimed. App. Br. 16-
19; Reply Br. 3-7.
Appeal 2009-008916
Application 10/680,591

5
Appellant also argues that the Examiner failed to provide a basis for
rejecting independent claims 70, 96, 110, and 116 which are said to recite
(1) “‘control signals’ on several occasions” (claim 70); (2) “an ‘external
signal processing system’” (claim 96); and (3) a first electronic music
system generating incoming MIDI control signals that are provided to a
second electronic music system (claims 110 and 116). App. Br. 19-21;
Reply Br. 8.
The issues before us, then, are as follows:

ISSUES
Under § 103, has the Examiner erred by finding that Ishigaki would
have taught or suggested:
(1) generating instrument audio and MIDI control signals from the
same external musical instrument, where the signals are received by an
outgoing multi-channel audio interface as recited in claim 27?
(2) the various control signals and associated limitations recited in
claim 70?
(3) an external signal processing system and associated limitations
recited in claim 96?
(4) a first electronic music system generating incoming MIDI control
signals that are provided to a second electronic music system as recited in
claim 110?

FINDINGS OF FACT (FF)
1. Ishigaki’s system distributes and receives music via satellite for
reproduction by a KARAOKE apparatus 7. To this end, a “music piece
Appeal 2009-008916
Application 10/680,591

6
server” 2 compresses music pieces and stores them in a database. Digital
satellite broadcasting equipment 1 then sends distribution data via satellite 4
to a receiving apparatus 5 which can be installed in the KARAOKE box.
Decoder 6 then decompresses the received distribution data which is then
reproduced as a music piece by the KARAOKE apparatus. Ishigaki,
Abstract; col. 4, l. 43 – col. 5, l. 4; Fig. 1. Ishigaki’s music distribution
system is shown in Figure 1 reproduced below:

Ishigaki’s Music Distribution System in Figure 1

2. Ishigaki’s distribution system’s transmitting station includes a
“MIDI data forming apparatus” 41 that forms MIDI data that is (1)
registered into server 42; (2) sent to a “MIDI data transmitting system”; (3)
Appeal 2009-008916
Application 10/680,591

7
packetized; and (4) transmitted to multiplexer 44. Ishigaki, col. 5, ll. 5-12;
Fig. 2. Ishigaki’s transmitting station is shown in Figure 2 reproduced
below:

Ishigaki’s Transmitting Station in Figure 2

3. Ishigaki’s transmitting station also includes a “music piece source
registering system” 45 that registers uncompressed music piece signals. The
music piece source registering system sends a music piece signal to (1)
Moving Pictures Experts Group (MPEG) audio encoder 46, and (2) Adaptive
Transform Acoustic Coding (ATRAC) encoder 49 which respectively
encode the music piece signal. The encoded signals are then registered into
respective MPEG and ATRAC audio servers 47 and 50. Then, the MPEG
and ATRAC audio data is (1) sent to respective MPEG and ATRAC audio
transmitting systems 48, 51; (2) packetized; and (3) sent to multiplexer 44.
Ishigaki, col. 3, ll. 62-63; col. 4, l. 8; col. 5, ll. 12-25; Fig. 2.
Appeal 2009-008916
Application 10/680,591

8
4. The multiplexer’s output is sent to radio wave transmitting system
49 where it is (1) processed, and (2) transmitted from an antenna to satellite
4. Ishigaki, col. 5, ll. 50-57; Figs. 1-2.

ANALYSIS
Claims 27-52
We begin by construing a key disputed limitation of representative
claim 27 which calls for, in pertinent part, an “external musical instrument.”
The Examiner construes “musical instrument” as “any instrument or device
that generates music,” and takes the position that Ishigaki’s music piece
server 2 is a “musical instrument” in light of its associated MIDI data
forming and audio signal generation functions via elements 41 and 45. Ans.
3-4, 8-9. Appellant challenges this interpretation as unreasonably broad,
citing examples of various components, such as car radios, computer
network components, TV program soundtracks and the like, that may
generate music, but are not “musical instruments” as the term is commonly
understood. Reply Br. 3-5.
Although we agree with Appellant that not every device that
reproduces music can be reasonably considered a “musical instrument,” we
nonetheless see no reason why Ishigaki’s music piece server 2 cannot be a
“musical instrument” in light of its associated MIDI data forming and audio
signal generation functions via elements 41 and 45. See FF 1-2. As the
Examiner indicates (Ans. 8), Ishigaki’s “MIDI data forming apparatus”—a
key component associated with the “music piece server”—is a musical
instrument in that it forms MIDI data. See FF 2. Accord Ans. 10 (“MIDI is
generated by a first musical instrument or device (2) via element (41).”). By
Appeal 2009-008916
Application 10/680,591

9
forming MIDI data, Ishigaki’s “MIDI data forming apparatus” associated
with server 2 actually creates instrumental music and, in that sense, is a
musical instrument. That the first two letters of the acronym “MIDI”
actually stand for “musical instrument” as the Examiner indicates (Ans. 8)
only bolsters this conclusion. And merely because this musical instrument
has functions associated with a satellite broadcasting system (FF 1) does not
obviate its status as a “musical instrument” given the scope and breadth of
the limitation.
Nor are we persuaded of error in the Examiner’s equating the audio
data sent from Ishigaki’s MPEG and ATRAC audio transmitting systems to
the multiplexer as audio signals given the scope and breadth of the
limitation. Ans. 3-4, 8-9. As the Examiner indicates (Ans. 9), signals
carrying audio data, such as the packetized encoded MPEG and ATRAC
music piece signals (FF 3) are, by their very nature, audio signals. That
these signals contain compressed and encoded data as Appellant argues
(App. Br. 16-18; Reply Br. 5-7) is of no consequence here, for nothing in the
claim precludes these kinds of audio signals. Accord Ludwig, 2011 WL
486163, at *3 (noting that filtered components of signal comprise part of the
incoming audio signal despite being compressed and encoded); see also
Ludwig, 2010 WL 4917799, at *4 (finding that digital audio output is an
audio control signal despite its binary representation). We therefore find the
Examiner’s interpretation of the term “audio signal” reasonable despite
Ishigaki’s use of the term “signal” and “data” to characterize different parts
of the MPEG and ATRAC signal paths as Appellant indicates (Reply Br. 6;
FF 3). Notwithstanding Ishigaki’s nomenclature, we see no reason why
Appeal 2009-008916
Application 10/680,591

10
encoded and packetized data signals in Ishigaki cannot be considered
“instrument audio signals” given the scope and breadth of the term.
Lastly, we see no error in the Examiner’s equating the input and
output connections associated with Ishigaki’s multiplexer to the recited
outgoing multi-channel audio interface. Ans. 9. Although the multiplexer is
part of satellite broadcasting equipment as Appellant argues (App. Br. 18;
Reply Br. 8), that hardly precludes the multiplexer’s associated connection-
based interfaces as being considered “outgoing,” at least with respect to the
downstream radio transmitting system which receives the multiplexer’s
output for transmission via an antenna. FF 4.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 27, and claims 28-52 not separately argued with
particularity.

Claims 70-86 and 96-104
We will not, however, sustain the Examiner’s rejection of independent
claim 70 which recites, in pertinent part, (1) receiving instrument audio
signals at an outgoing multi-channel audio interface; (2) providing the
instrument audio signals to an external signal processing system; (3)
receiving incoming control signals at an incoming control interface, where
the incoming control signals are generated by the external signal processing
device; (4) receiving control signals at an outgoing control interface, where
the control signals are generated by the external musical instrument; and (5)
providing the control signals to the external signal processing system.
Independent claim 96 recites, in pertinent part, (1) receiving
instrument audio signals at an outgoing multi-channel audio interface; (2)
Appeal 2009-008916
Application 10/680,591

11
providing the instrument audio signals to an external signal processing
system; (3) receiving plural incoming audio signals at an incoming multi-
channel audio interface; and (4) providing the incoming audio signals to the
external musical instrument.
As Appellant indicates (App. Br. 19-21; Reply Br. 8), the Examiner
simply fails to address these particular limitations that are somewhat
different than those recited in claim 27, let alone respond to Appellant’s
arguments regarding claims 70 and 96. See Ans. 9-10. The Examiner’s
rejection of these claims is therefore problematic for this reason alone. Nor
will we speculate regarding how Ishigaki meets the distinct limitations of
claims 70 and 96 here in the first instance on appeal.
We are therefore persuaded that the Examiner erred in rejecting
independent claims 70 and 96, and dependent claims 71-86 and 97-104 for
similar reasons.

Claims 110-114 and 116
We will, however, sustain the Examiner’s rejection of representative
claim 110. The Examiner indicates that MIDI is generated by music piece
server 2 (Ans. 10; FF 1-2) which the Examiner equates to the recited “first
musical instrument”—a reasonable finding given the scope and breadth of
the limitation. The Examiner likewise indicates that MIDI is provided to the
KARAOKE apparatus 7 which, although not explicitly stated, nonetheless
reasonably implies that this apparatus corresponds to the recited “second
electronic music system.” See id. We likewise find this mapping reasonable
given the scope and breadth of the limitation.
Appeal 2009-008916
Application 10/680,591

12
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 110, and claims 111-114 and 116 not separately argued
with particularity.

CONCLUSION
Under § 103, the Examiner did not err in rejecting claims 27-52, 110-
114, and 116, but erred in rejecting claims 70-86 and 96-104.

ORDER
The Examiner’s decision rejecting claims 27-52, 70-86, 96-104, 110-
114, and 116 is affirmed-in-part.
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

llw

Lester F. Ludwig
P.O. Box 128
Belmont, CA 94002