Ex Parte Ludwig

Board of Patent Appeals and Interferences

Mar 30, 2011

10702262 (B.P.A.I. Mar. 30, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LESTER F. LUDWIG
____________

Appeal 2009-009356
Application 10/702,262
Technology Center 2800
____________

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

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-31. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.

STATEMENT OF THE CASE
Appellant’s invention provides phase-staggered panning of multi-
channel audio signals. See generally Spec. ¶¶ 0306-09. Claim 1 is
illustrative:
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1. A system for controlled staggered panning of multi-channel audio
signals, said system comprising:
a master time-varying control signal;
a processor for generating at least three panning control signals
responsive to a distinct phase-staggered function of said master time-varying
control signal; and
at least three controllable audio signal panning elements individually
structured for panning a separate incoming audio signal responsive to an
associated one of said at least three panning control signals.

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) 10/676,926 (Appeal No. 2009-006844); (3) 10/680,591 (Appeal No.
2009-008916); (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. 3; Ans. 2.1
We previously decided four of these appeals (09/812,400, 10/676,926,
10/702,415, and 10/680,591). 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WL 3793386 (BPAI 2009) (non-precedential) (reversing the Examiner’s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2009-006844, 2010 WL 4917799 (BPAI 2010) (non-precedential) (same);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); Ex parte
Ludwig, No. 2009-008916, 2011 WL 794287 (BPAI 2011) (non-
precedential) (affirming Examiner’s obviousness rejection in part).

1 Throughout this opinion, we refer to (1) the Appeal Brief filed August 20,
2008; (2) the Examiner’s Answer mailed November 14, 2008; and (3) the
Reply Brief filed January 15, 2009.
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CITED REFERENCES
The Examiner relies on the following as evidence of unpatentability:
Sgroi US 5,357,048 Oct. 18, 1994
Kinoshita US 5,734,724 Mar. 31, 1998

THE REJECTIONS
1. The Examiner rejected claims 1-8, 12, 14-21, 25, and 27-31 under 35
U.S.C. § 102(b) as anticipated by Kinoshita. Ans. 3-5.
2. The Examiner rejected claims 9-11, 13, 22-24, and 26 under 35
U.S.C. § 103(a) as unpatentable over Kinoshita and Sgroi. Ans. 6.

THE ANTICIPATION REJECTION
Regarding independent claim 1, the Examiner finds that Kinoshita
discloses a system for controlled staggered panning in Figure 16 with every
recited feature including a “master time-varying control signal” which is
said to be produced by Kinoshita’s “signal processing control part” 20 by
detecting various connected terminals over time. Ans. 3-5, 7. The Examiner
also finds that Kinoshita’s “parameter setting part” 14C generates at least
three “panning control signals” that are said to be responsive to a “phase-
staggered function” of the parameter setting part’s “master time-varying
control signal.” Ans. 3-5, 7-9. Moreover, Kinoshita’s “sound image
processing parts” 8-1 to 8-N are said to each pan separate incoming audio
signals responsive to an associated panning control signal. Id.
Appellant argues that Kinoshita’s “signal processing control part” 20
does not produce a “master time-varying control signal” as claimed since
Kinoshita’s signal from element 20 is based on detecting the number of
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conference participants—an event-driven factor that is said to be unrelated
to time. App. Br. 16; Reply Br. 2-3. Appellant also contends that not only
does Kinoshita’s “parameter setting part” 14C fail to generate signals—let
alone panning control signals—Kinoshita’s parameters are also not
responsive to a phase-staggered function of the master time-varying control
signal as claimed. App. Br. 17-24; Reply Br. 3-6.
Appellant also argues that Kinoshita does not disclose (1) varying a
common time-varying control signal (a) periodically (claim 15), or (b)
according to a triggered transient signal (claim 16); (2) providing each
panning control signal to a mixer unit to produce plural mixed output signals
(claim 17); (3) implementing the recited method within one signal
processing layer of a multi-layered signal processing system (claim 25); and
(4) adjusting amplitude of a time-varying value of each of the panning
control signals (claim 30).
The issues before us, then, are as follows:

ISSUES
Under § 102, has the Examiner erred by finding that Kinoshita
discloses:

(1) a master time-varying control signal as recited in claim 1?
(2) a processor for generating at least three panning control signals
responsive to a distinct phase-staggered function of the master time-varying
control signal as recited in claim 1?
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(3) at least three controllable audio signal panning elements
individually structured for panning a separate incoming audio signal
responsive to an associated panning control signal as recited in claim 1?
(4) a common time-varying control signal varies (a) periodically
(claim 15), or (b) according to a triggered transient signal (claim 16)?
(5) providing each panning control signal to a mixer unit to produce
plural mixed output signals as recited in claim 17?
(6) implementing the recited method within one signal processing
layer of a multi-layered signal processing system as recited in claim 25?
(7) adjusting amplitude of a time-varying value of each of the panning
control signals as recited in claim 30?

FINDINGS OF FACT (FF)
1. Kinoshita’s system controls audio signal processing in a multi-
point teleconference via a communication network. To this end, conference
participants’ terminals (e.g., TM-1 to TM-4) connect to audio
communication control unit 100 (comprising switching part 11 and audio
signal mixing control part 10) via network 40. Kinoshita, col. 1, ll. 4-8; col.
5, l. 17 – col. 6, l. 7; Fig. 5. Kinoshita’s multi-point teleconferencing system
with an audio communication control unit in Figure 5 is reproduced below:

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Kinoshita’s multi-point teleconferencing system with an audio
communication control unit in Figure 5

2. In one embodiment, Kinoshita’s audio communication control unit
100 processes audio signals of N participants using different sets of acoustic
transfer functions as sound image control parameters to localize the
participants’ reproduced sounds at different spatial positions. To this end,
switching part 11 selects “J” communication lines from an unspecified
number of communication lines 40, where 1 ≤ J ≤ M (the number of
terminals simultaneously connected to the network). “Signal processing
control part” 20 receives a connection confirm signal and similar control
signals that are transmitted from respective terminals via switching part 11.
Signal processing control part 20 (1) detects the number “M” of connected
terminals from such control signals, and (2) sends the detected number to (a)
“amplification factor setting part” 35, and (b) “parameter setting part” 14C.
Kinoshita, col. 15, l. 6 – col. 16, l. 53; Fig. 16. Kinoshita’s audio
communication control unit in Figure 16 is reproduced below:

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Kinoshita’s audio communication control unit in Figure 16

3. Parameter setting part 14C sets acoustic transfer functions (HJL(θJ)
and HJR(θJ)) corresponding to target spatial positions that “sound image
processing parts” 8-1 to 8-N convolve with audio signals received from
associated amplifiers 36-1 to 36-N to produce respective left and right audio
signals. These audio signals are then sent to corresponding left and right
mixers 5L, 5R of “mixing part” 15. Kinoshita, col. 6, ll. 50-56; col. 15, ll.
25-44; col. 16, ll. 7-53; Figs. 16-17. Kinoshita’s sound image processing
part 8-1 and its convolution functions are shown in Figure 17 reproduced
below:
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Kinoshita’s sound image processing part 8-1 and its convolution
functions in Figure 17

4. In another embodiment, Kinoshita’s system accounts for changes
in the number of terminals participating in a teleconference by updating the
target positions of sounds originating from the remaining terminals. The
corresponding sets of acoustic transfer functions (HL(θJ) and HR(θJ)) are set
accordingly. Kinoshita, col. 26, l. 53 – col. 27, l. 29; Fig. 25.
5. According to Appellant’s Specification:
The invention provides for a much more homogeneous
method for multi-channel periodic-sweep auto-panning, namely
that of arranging the signal pan images in a phase-staggered
constellation swept by a single modulating sweep oscillator. A
simple example is that of stereo cross-panning where two input
signals pan between stereo speakers in synchronized
complementary directions. Another example is that of
staggering the phases of a multiple phase output modulating
sweep oscillator in some preassigned arrangement, such as
offset from each other by a common phase-offset value. This
may be used to pan the sounds from each individual vibrating
element so that the individual panned sound images follow one
another between two speakers.

Spec. ¶ 0308
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ANALYSIS
Claims 1-13 and 27-29
We begin by construing a key disputed limitation of claim 1 which
calls for, in pertinent part, a “master time-varying control signal.” We
emphasize the term “time-varying” here, for the Examiner and Appellant
reach opposite conclusions regarding whether the signal from Kinoshita’s
“signal processing control part” 20—a signal that is based on detecting the
number of conference participants—is “time-varying.”
Based on the record before us, we see no reason why the signal from
Kinoshita’s “signal processing control part” 20 cannot be “time-varying” in
view of the term’s scope and breadth. Notably, Appellant does not squarely
define the term “time-varying” in the Specification, let alone a “time-varying
control signal.” We therefore construe a “time-varying control signal” to
include control signals where at least one aspect or parameter of the signal
varies with time.2,3

2 Accord McGraw-Hill Dictionary of Elec. & Comp. Eng’g 588 (2004)
(defining “time-varying system” as “[a] system in which certain quantities
governing the system’s behavior change with time, so that the system will
respond differently to the same input at different times.”); see also
Comprehensive Dictionary of Electrical Engineering 694 (Phillip A.
Laplante ed.) (2d ed. 2005) (defining “time-invariant system” as “the system
in which the parameters are stationary with respect to time during the
operation of the system.”). But cf. Ferrel G. Stremler, Introduction to
Communication Systems (2d ed. 1982) (“A system is time-invariant if a time
shift in the input results in a corresponding time shift in the output . . . .” and
further noting that “[t]he output of a time-invariant system depends on time
differences and not on absolute values of time. Any system not meeting this
requirement is said to be time-varying.”).
3 Although some of the cited references in n.3 supra were published after the
effective filing date of Appellant’s invention, we see no difficulty in
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Despite Appellant’s contention that Kinoshita discloses an event-
varying signal—not a time-varying signal (App. Br. 16; Reply Br. 2-3)—
nothing in claim 1 precludes the signal from Kinoshita’s “signal processing
control part” 20 from being “time-varying” since it is based on aspects that
change over time, namely the detected number of conference participants.
See FF 2. Simply put, the number of conference participants—a key factor
in formulating the signal produced from Kinoshita’s signal processing
control part” 20 (id.)—can change over time, a fact confirmed by
Kinoshita’s alternative embodiment, which accounts for these changes in a
particular way, namely by updating the corresponding transfer functions. FF
4.
Appellant’s contention that this change in participants in Kinoshita
does not produce a time-varying control signal (App. Br. 16) is unavailing.
Since the value of “M” (the detected number of participants) changes over
time, that change will likewise revise the corresponding control signal from
Kinoshita’s “signal processing control part” 20. See FF 2, 4. Therefore, this
control signal is “time-varying” in that sense.
And we see no reason why Kinoshita’s “parameter setting part” 14C
does not generate at least three “panning control signals” as the Examiner
indicates (Ans. 3-5, 7-9), particularly in view of the term’s scope and
breadth. First, we agree with the Examiner that the outputs from parameter
setting part 14C are “signals,” for they electrically transfer parameter-based
information from the parameter setting part 14C to the respective sound

referring to these standard engineering sources here, for Appellant likewise
cites definitions published after the effective filing date. See, e.g., App. Br.
22.
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image processing parts 8-1 to 8-N. See FF 2-3. Indeed, it is difficult to
envision any other way to electrically transfer this parameter-based
information to Kinoshita’s sound image processing parts other than via
signals.
Appellant’s reliance on Wikipedia to support the contention that
signals are different than parameters (App. Br. 20-21) is unavailing.
Leaving aside the fact that Wikipedia is a non-peer-reviewed Internet source
of dubious reliability with little probative value,4 the fact that parameters
may be static (as Appellant contends) does not obviate their transmission via
signals to the sound image processing parts. Even assuming, without
deciding, that the parameters used to set the acoustic transfer functions in
Kinoshita are static, these parameters will nevertheless be transmitted via
signals. See FF 2-3.
And since these control signals dictate the relative spatial position of
the audio signal in the stereo field (i.e., the relative left and right channels of
the stereo field), the signals fully meet “panning control signals” as claimed.
We reach this conclusion even assuming, without deciding, that the left and
right audio signals produced by Kinoshita’s sound image processing parts
involve switching between channels or otherwise result in all audio being
directed to one channel (left or right) relative to the other as Appellant
suggest (App. Br. 22-24). Even in these extreme cases, the audio signals are

4 See, e.g., Ex parte Three-Dimensional Media Group, Ltd., No. 2009-
004087, 2010 WL 3017280 (BPAI 2010) (non-precedential), at *17
(“Wikipedia is generally not considered to be as trustworthy as traditional
sources for several reasons, for example, because (1) it is not peer reviewed;
(2) the authors are unknown; and (3) apparently anyone can contribute to the
source definition”).
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still panned—albeit “hard left” or “hard right.”5 In any event, Appellant’s
contention that switching between audio channels somehow teaches away
from panning is unavailing not only in view of the art’s recognition of
“hard” panning, but also since such “teaching away” arguments are
irrelevant to anticipation.6
That said, however, we do not find that Kinoshita’s panning control
signals from “parameter setting part” 14C are responsive to a distinct phase-
staggered function of the master time-varying control signal as claimed.
Although Appellant does not squarely define the term “phase-staggered,”
Appellant nevertheless indicates in the Specification that by staggering the
phases of a signal (e.g., from a modulating sweep oscillator) in a

5 The concept of panning—including “hard” panning—is described below:

There’s nothing mysterious about panning. Every channel is
monaural, and when two output channels are used as a stereo
pair, the panning function allows you to alter the percentage of
the signal that is sent through each . . . . This, in turn,
determines where the signal will image.

For example, when the pan is centered, the volume of the left
channel and the right channel are equal, and the instrument will
image in the center. If you move the pan slightly to the left,
you increase the volume of the left channel and decrease the
volume of the right channel, and the instrument images farther
to the left. Finally, if you position the pan “hard left,” meaning
all the way to the left side, you maximize the volume of the left
channel and completely cut off the right channel, and the
instrument images to the far left.

Peter McIan & Larry Wichman, The Musician’s Guide to Home Recording
237 (1994).
6 “‘[T]eaching away’ is irrelevant to anticipation.” Leggett & Platt, Inc. v.
VUTEk, Inc., 537 F.3d 1349, 1356 (Fed. Cir. 2008) (citation omitted).
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predetermined arrangement, sounds can be panned dynamically such that
individual panned sounds follow one another between speakers. FF 5.
Although not limiting, this description nevertheless informs our construction
of the term “phase-staggered function” which, at a minimum, must involve
some sort of staggering of signal phases.
Although the Examiner’s Answer is not a model of clarity on this
point, the Examiner apparently takes the position that since Kinoshita
provides at least three outputs from different, unspecified “sound processing
units, ” a phase-staggered output is allegedly provided. Ans. 8 (emphasis
added). Presumably, the Examiner’s position is based on the multiple
outputs from “sound image processing parts” 8-1 to 8-N as being “phase-
staggered.” See id.
But the claim requires that the panning control signals (which the
Examiner equates to the signals generated by the “parameter setting part”
14C) are responsive to a distinct phase-staggered function of the master
time-varying control signal (which the Examiner equates to the signal from
“signal processing control part” 20). See Ans. 7. Since these panning
control signals are recited as “responsive to” a phase-staggered function of
the “master time-varying control signal,” to produce this response, the
phase-staggered function must therefore be upstream from the device that
generates the panning control signals, namely the “parameter setting part”
14C. The Examiner’s basis for the rejection is therefore problematic for this
reason alone, for the Examiner relies on the outputs from “sound image
processing parts” 8-1 to 8-N in connection with the recited “phase-staggered
function”—components that are downstream from the “parameter setting
part” 14C.
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Nevertheless, the Examiner simply fails to demonstrate how the
“master time-varying control signal” generated by Kinoshita’s “signal
processing control part” 20 has distinct phases at all—let alone that they are
staggered in a predetermined fashion as would be the case with a distinct
phase-staggered function of such a signal.7 See FF 5.
We are therefore persuaded that the Examiner erred in rejecting
independent claim 1 and dependent claims 2-8, 12, and 27-29 for similar
reasons. Since our decision is dispositive regarding our reversing
independent claim 1, we need not address Appellant’s separate arguments
regarding dependent claims 2-4, 8, 12, and 28 (App. Br. 24-27; Reply Br. 6-
8).8

Claim 14
We will, however, sustain the Examiner’s rejection of independent
claim 14. Claim 14 recites “[a] method of controlled staggered panning of
multi-channel audio signals” with limitations similar to those recited in
claim 1, but lacks claim 1’s requirement that the panning control signals are
responsive to a distinct phase-staggered function of a time-varying control
signal.

7 See generally William H. Hayt, Jr. & Jack E. Kemmerly, Engineering
Circuit Analysis 268-70 (3d ed. 1978) (discussing phase relationships of
sinusoidal signals).
8 We do, however, address commensurate arguments made in connection
with claims depending on independent claim 14 since, as noted infra, we
affirm the Examiner’s rejection of that claim.
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It is this distinction that is dispositive, for nothing in claim 14
precludes Kinoshita’s generating panning control signals using an associated
function of a common time-varying control signal noted above. Our
analysis regarding the commensurate features in claim 1 applies equally
here.
We are therefore not persuaded that the Examiner erred in rejecting
claim 14.

Claim 15
We will not, however, sustain the Examiner’s rejection of claim 15
which recites that the common time-varying control signal varies
periodically. We cannot say—nor has the Examiner shown—that the time-
varying signal from Kinoshita’s “signal processing control part” necessarily
varies periodically—it may vary in a non-periodic (or even random) fashion.
See FF 2-4. Indeed, even if it is probable that this control signal varies
periodically, that too is insufficient for inherent anticipation.9
We are therefore persuaded that the Examiner erred in rejecting claim
15.

Claim 16
We will, however, sustain the Examiner’s rejection of claim 16 calling
for the common time-varying control signal to vary according to a triggered
transient signal. Since the value of “M” (the detected number of

9 “Inherency . . . may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)
(citations omitted).
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participants) in Kinoshita changes over time, that change will likewise revise
the corresponding control signal from Kinoshita’s “signal processing control
part” 20. See FF 2, 4. This detection of participants would be based, at least
in part, on signals associated with switching part 11 that are sent to signal
processing control part 20. See id. Since these participant-based signals
would be (1) triggered at least by the participants’ connection to the
conference, and (2) transient by their very nature (and therefore comport
with the Examiner’s undisputed definition of “transient” (Ans. 9)), they
constitute “triggered transient signals” which would vary the common time-
varying control signal as noted previously. See id.
We are therefore not persuaded that the Examiner erred in rejecting
claim 16.

Claims 17-21
We will not, however, sustain the Examiner’s rejection of claim 17
which recites providing each panning control signal to a mixer unit to
produce plural mixed output signals. Although the Examiner alleges that
Kinoshita’s panning control signals are provided to mixer unit (5L, 5R)
(Ans. 4), these identified control signals are actually provided to the sound
image processing parts (8-1 to 8-N)—not the mixing part 15 which includes
the relied-upon left and right mixers 5L, 5R. See FF 2-3.
To the extent that the Examiner’s position is based on Kinoshita’s
sound image processing parts as constituting part of the recited “mixer unit”
(e.g., the “mixer unit” collectively constituting the (1) sound image
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processing parts 8-1 to 8-N, and (2) mixing part 15) has simply not been
articulated on this record. Nor will we speculate in this regard here in the
first instance on appeal.
We are therefore persuaded that the Examiner erred in rejecting claim
17, and dependent claims 18-21 for similar reasons. Since our decision is
dispositive regarding our reversing claim 17, we need not address
Appellant’s separate arguments regarding dependent claim 21 (App. Br. 26;
Reply Br. 7).

Claim 25
We will, however, sustain the Examiner’s rejection of claim 25 which
calls for implementing the method within one signal processing layer of a
multi-layered signal processing system. We see no error in the Examiner’s
mapping each sound image processing part 8-1 to 8-N in Kinoshita as
corresponding to “signal processing layers” (Ans. 10), particularly in view
of their commensurate parallel signal-processing functionality with respect
to the number of detected conferees. See FF 2-3.
We are therefore not persuaded that the Examiner erred in rejecting
claim 25.

Claims 30 and 31
We will not, however, sustain the Examiner’s rejection of claim 30
which recites adjusting amplitude of a time-varying value of each of the
panning control signals. The Examiner has not shown—nor can we find—
anything in Kinoshita indicating that the amplitude of each panning control
signal (i.e., the signals from “parameter setting part” 14C) is adjusted, let
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alone adjusting the amplitude of a time-varying value of these control
signals as claimed. As Appellant indicates (App. Br. 27; Reply Br. 8), the
Examiner’s reliance on the alleged inherent “control portion” of an audio
signal in Kinoshita (Ans. 10) is inapposite, for the recited amplitude
adjustment pertains not to audio signals, but rather to the panning control
signals that (1) were identified as generated by “parameter setting part” 14C
(Ans. 7), and (2) located upstream from the generated audio signals from
sound image processing parts 8-1 to 8-N. See FF 2-3.
To the extent that the Examiner’s position is based on some other
audio signals in Kinoshita as constituting at least in part the recited “panning
control signals” has simply not been clearly articulated on this record, and,
in any event, conflicts with the Examiner’s previous mapping of these
control signals to those generated by Kinoshita’s parameter setting part
14C.10 Nor will we speculate in this regard here in the first instance on
appeal.
We are therefore persuaded that the Examiner erred in rejecting claim
30, and dependent claim 31 for similar reasons.

THE OBVIOUSNESS REJECTION
The Examiner finds that that Kinoshita discloses every recited feature
except for (1) controlling various recited functions via incoming MIDI
signals (claims 22-24), and (2) implementing the recited method within a

10 Compare Ans. 7 (noting that “[e]lement 14C generates at least three
panning control signals”) with Ans. 10 (alleging that “audio signals will
inherently have a control portion to define the output produced by the
signal”) (emphases added).
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spatially-distributed timbral realization system (claim 26). The Examiner,
however, cites Sgroi as teaching these features in concluding the claims
would have been obvious. Ans. 6, 10.
Regarding claims 22-24, Appellant argues that the Examiner’s
reliance on Sgroi is flawed since not only does it fail to teach or suggest the
recited control functions, but there is also no reason to combine the
references since, among other things, (1) Kinoshita’s teleconferencing
system has no need for MIDI, and (2) Sgroi’s MIDI controller has no place
in Kinoshita’s teleconferencing system. App. Br. 27-28; Reply Br. 8-9.
Appellant reiterates the improper combinability argument regarding claim
26. App. Br. 28.
The issue before us, then, is as follows:

ISSUE
Under § 103, has the Examiner erred in rejecting claims 22-24 and 26
by finding that Kinoshita and Sgroi collectively would have taught or
suggested the recited limitations of these claims?
This issue turns on whether the Examiner’s reason to combine the
teachings of these references is supported by articulated reasoning with
some rational underpinning to justify the Examiner’s obviousness
conclusion.

ADDITIONAL FINDINGS OF FACT
6. Sgroi’s MIDI controller can automatically randomize four key
elements of sound (i.e., timbre, pitch, volume, and dynamic response) on
multiple MIDI channels to produce new sounds. Sgroi, Abstract.
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7. Sgroi’s Figure 2 illustrates a MIDI electronic music system
including (1) MIDI source 22 (e.g., a MIDI controller, synthesizer,
sequencer, etc.); (2) MIDI sound generators 24; and (3) sound system 26.
Sgroi, col. 3, ll. 17-27, 50-55; Fig. 2.
8. Sgroi’s Figure 2 shows (1) a MIDI data path between MIDI source
22 (dashed arrows), and (2) an audio signal path between the MIDI sound
generators 24 and sound system 26 (solid arrows). Sgroi, Fig. 2.
9. Sgroi’s Figure 3 shows a MIDI-controllable electronic synthesizer.
A MIDI signal 46 is routed to MIDI data processor 30. Notes are generated
by waveform generators 34 and modified by waveform modifiers 36-40.
Then, the outputs are summed 42 to produce the audio output 44. Sgroi, col.
3, ll. 28-49; Fig. 3.
10. Sgroi’s Figure 4 illustrates a MIDI controller 51 comprising (1)
note modifiers 48; (2) switch inputs 52; and (3) keyboard 56 whose outputs
are routed to scanner 54. The scanner (1) generates events (e.g., note on,
note off, timbre change, volume change, pitch bend, etc.) based on changes
on the received inputs, and (2) writes the events to event compiler 58 (a
buffer). Sgroi, col. 3, l. 56 — col. 4, l. 23; Fig. 4.
11. Sgroi’s MIDI controller processor 62 implements a series of
subroutines that convert events into MIDI commands. Specifically,
processor 62 (1) retrieves the next event from the event compiler; (2)
executes the subroutine corresponding to that event; and (3) transmits the
appropriate MIDI command from the MIDI Out port 66. Sgroi, col. 5, ll. 1-
58; Fig. 4.

Appeal 2009-009356
Application 10/702,262

21

12. Sgroi’s MIDI controller 51 includes a randomizer 64 that performs
a high level additive synthesis where entire timbres (waveforms and
modifiers) are combined to create new sounds. This is fulfilled through the
MIDI standard protocol. Sgroi, col. 6, ll. 25-29; Fig. 4.
13. Sgroi enables changing timbre through MIDI. Sgroi, col. 7, l. 47
– col. 8, l. 26; Figs. 7-8.

ANALYSIS
We will not sustain the Examiner’s rejection of claims 22-24 and 26
essentially for the reasons indicated by Appellant. App. Br. 27-28; Reply
Br. 8-9. Although MIDI is a well known musical instrument digital
interface protocol as the Examiner indicates (Ans. 10)—a fact amply
evidenced by Sgroi’s MIDI generation and control functions (FF 6-12)—that
hardly means that it would have been obvious to use these kinds of musical
control signals in a Kinoshita’s teleconferencing system. Compare FF 1-4
with FF 6-12. As its name suggests, Kinoshita’s teleconferencing system is
a technology used for an entirely different purpose, namely teleconferencing,
and has nothing to do with music, let alone MIDI. To say that skilled
artisans could somehow use MIDI control signals in Kinoshita’s
teleconferencing system as the Examiner proposes simply strains reasonable
limits.
To be sure, patentability under § 103 requires that an improvement
must be more than the predictable use of prior art elements according to their
established functions. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). But here, we cannot say—nor has the Examiner shown—that
Appeal 2009-009356
Application 10/702,262

22
utilizing Sgroi’s MIDI control signals as proposed (FF 6-13) would yield a
predictable result regarding the recited control functions in claims 22-24 in
Kinoshita’s teleconferencing system that has nothing to do with music
generation whatsoever—let alone MIDI protocols. Nor has the Examiner
shown why skilled artisans would have a rational basis for applying Sgroi’s
MIDI-based timbral change capabilities to Kinoshita’s teleconferencing
system. Compare FF 1-4 with FF 13. Here again, we see no rational basis
on this record why skilled artisans would combine a MIDI-based scheme
such as that in Sgroi to Kinoshita’s teleconferencing system absent
impermissible hindsight using Appellant’s own disclosure as a blueprint.11
We are therefore persuaded that the Examiner erred in rejecting
claims 22-24 and 26. For similar reasons, we likewise reverse the
Examiner’s obviousness rejection of claims 9-11 and 13. Nor has the
Examiner shown that Sgroi cures the previously-noted deficiencies of
Kinoshita even if these references were combinable—which they are not.

CONCLUSION
Under § 102, the Examiner did not err in rejecting claims 14, 16, and
25, but erred in rejecting claims 1-8, 12, 15, 17-21, and 27-31.
Under § 103, the Examiner erred in rejecting claims 9-11, 13, 22-24,
and 26.

11 “It is impermissible to use the claimed invention as an instruction manual
or ‘template’ to piece together the teachings of the prior art so that the
claimed invention is rendered obvious . . . .” In re Fritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992).
Appeal 2009-009356
Application 10/702,262

23

ORDER
The Examiner’s decision rejecting claims 1-31 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

pgc
Application/Control No.

10/702,262
Applicant(s)/Patent Under
Reexamination

Notice of References Cited
Examiner

Marlo Fletcher
Art Unit

2800

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William H. Hayt Jr. & Jack E. Kemmerly, "Engineering Circuit Analysis" 268-70

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Ferrel G. Stremler, "Introduction to Communication Systems" 2d ed. 1982

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