Ex Parte Najdenovski

Board of Patent Appeals and Interferences

Sep 21, 2009

10143665 (B.P.A.I. Sep. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT NAJDENOVSKI
____________

Appeal 2008-004278
Application 10/143,6651
Technology Center 2100
____________

Decided: September 21, 2009
____________

Before ALLEN R. MACDONALD, ST. JOHN COURTENAY, III., and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed May 8, 2002. The real party in interest is Sony Ericsson
Mobile Communications AB.
Appeal 2008-004278
Application 10/143,665

2

I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection
of claims 1-11 and 13-19 mailed November 9, 2006, which are all the claims
remaining in the application, as claim 12 is cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellant invented a system and method for creating polyphonic
audio signals in telecommunication devices. A midi-composer application is
used that includes a graphical user interface for assisting a user in creating
the polyphonic audio signal. The graphical user interface includes at least
one track for receiving placement of at least one music block and a plurality
of bars within the at least one track for relating the at least one music block
with a selected time period. The at least one music block includes at least
one type of music block representing an audio lop or sample. (Spec. 23,
Abstract.)

B. ILLUSTRATIVE CLAIM
The appeal contains claims 1-11 and 13-19. Claims 1, 7, and 13 are
independent claims. Claim 1 is illustrative:
1. A method for creating an audio signal in a mobile
telephone including a display and navigation tools, said method
comprising the steps of:
storing at least one library of at least one music block in
the mobile telephone;
Appeal 2008-004278
Application 10/143,665

3
selecting at least one music block from the library of at
least one music block using navigation tools;
displaying at least two tracks on the display, each of the
at least two tracks having a plurality of bars in a graphical user
interface; and
using the navigation tools to place the at least one
selected music block onto at least one of the at least two tracks at a
selected bar of the plurality of bars in the graphical user interface to
compose the audio signal.

C. REFERENCE
The sole reference relied upon by the Examiner as evidence in
rejecting the claims on appeal is as follows:
Hruska US 2002/0170415 A1 Nov. 21, 2002

D. REJECTION
The Examiner entered the following rejection which is before us for
review:
Claims 1-11 and 13-19 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Hruska.

II. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Hruska
1. Hruska discloses “music software that provides a method of
creating, playing and rearranging musical songs on mobile devices.” (¶
[0002].)
Appeal 2008-004278
Application 10/143,665

4
2. Hruska discloses “the desire for an entertaining musical game and
musical composer that operates on and integrates effectively with cellphones
and other mobile devices becomes apparent.” (¶ [0003].)
3. Hruska discloses “creation and rearrangement of musical data
either predetermined by the music composer themselves, or, more uniquely,
by the end user via input commands on a mobile device in real-time, game
playing environment.” (¶ [0004].)
4. In Hruska, “[u]sers are allowed to rearrange which parts and which
part patterns are playing at any given time, . . . the notes of the parts and
patterns . . . chord creation . . .” (¶ [0020].)
5. Hruska discloses that “[o]ne of the most unique features of this
invention is the ability to use the standard button layout found on most
mobile devices such as cellphones to mix or rearrange a musical song.”
(¶ [0088].)
6. In Hruska’s mobile device user interface, “[l]evel 3 allows for
further song editing including changing the notes of the patterns and a
variety of other MIDI effects such as note duration or hold, grace notes,
pitch bend, chord creation, chord inversion and accents.” (Id.)
7. Hruska discloses that “the MIDI file can be created using any
standard commercial MIDI editing software program.” (¶ [0022].)

III. PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005), citing Minn. Mining & Mfg.
Appeal 2008-004278
Application 10/143,665

5
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992).
Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art. (internal citations
omitted).

Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir.
1999) (citation omitted).

IV. ANALYSIS
Grouping of Claims
In the Briefs, Appellant argues claims 1-11 and 13-19 as a group
(App. Br. 6-11). For claims 2-11 and 13-19, Appellant repeats the same
argument made for claim 1. We will, therefore, treat claims 2-11 and 13-19
as standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). See
also In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991).

The Anticipation Rejection
We now consider the Examiner’s rejection of the claims under
35 U.S.C. § 102(e) as being anticipated by Hruska.

Appellant “agrees that Hruska et al. teaches creating or composing
music generally. Hruska et al., however, does not teach creating or
composing music on the mobile device.” (App. Br. 6.)
Appeal 2008-004278
Application 10/143,665

6
Appellant contends that “only the Abstract and paragraphs [0002],
[0004], and [0109] even arguably reference the creation of music in a mobile
telephone. Hruska et al. never describes how such creation can be done.
These general references, lacking any detail, are not enabling and therefore
do not anticipate the claimed invention.” (App. Br. 10; see also Reply Br.
5.)
Appellant further contends that in Hruska “the interface is used to edit
an existing song. Therefore, the navigation tool of Hruska et al. cannot be
understood as having the ability to ‘place’ music blocks into the tracks.”
(App. Br. 11; see also Reply Br. 5-6.)
The Examiner found that “[c]reating music in a mobile telephone is
explicitly described at least in the Title, Abstract, paragraphs 2, 4, 20, 22 and
109.” (Ans. 8.)

Issue: Has Appellant shown that the Examiner erred in finding that
Hruska discloses creating an audio signal in a mobile telephone?

In essence, Appellant contends that while Hruska discloses creating or
composing music generally, Hruska only edits existing songs on the mobile
device and fails to disclose creating music on the mobile device or how such
a creation can be done on the mobile device (App. Br. 6-11). We disagree.
As noted by the Examiner (Ans. 8), Hruska expressly discloses in
various sections that music is created, played, and rearranged on the mobile
devices (FF 1-3). Hruska further discloses that the user can rearrange which
parts are played and determine the notes of the parts and patterns, chord
creation, etc. (FF 4). Here, Appellant seems to suggest that “creating” is
Appeal 2008-004278
Application 10/143,665

7
distinguishable from “rearranging existing data.” We disagree. Creating
simply means to make or bring into existence something new. Merriam-
Webster’s Collegiate Dictionary, 272 (10th ed. 1997). However, changing
an existing item can also be seen as creating something new. Hruska allows
the user to change anything from the instruments being played, tempo, notes,
grace, pitch, and accents, on the mobile device (FF 4-6). Such rearranging
equates to music creation. Furthermore, we find that claim 1 does not
preclude creating an audio signal from an existing signal. In fact,
Appellant’s own Specification states that the midi-composer allows a user to
select from pre-recorded musical loops or samples to compose the
polyphonic audio signal (Spec. 6, ll. 15-20). As such, we find that the
claimed “creating an audio signal in a mobile telephone” and “using the
navigation tools to place . . . music block onto . . . tracks” reads on Hruska’s
above-noted features.
Appellant further attacks Hruska as not enabling music creation on the
mobile device (App. Br. 10). We disagree. For example, Hruska discloses
that its’ mobile device user interface includes a standard button layout that
can be used to mix or rearrange a musical song as noted supra (FF 5-6).
Hruska further discloses that the MIDI file can be created using any standard
commercial MIDI editing software program (FF 7). As such, we conclude
that Hruska enables music creation on the mobile device.
As to the other recited elements of claim 1, Appellant provides no
argument to dispute that the Examiner has correctly shown where all these
claimed elements appear in the prior art. Thus, we deem those arguments
waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2008-004278
Application 10/143,665

8
Thus, Appellant has not persuaded us of error in the Examiner’s
conclusion of anticipation for representative claim 1. Therefore, we affirm
the Examiner’s § 102 rejection of independent claim 1 and of claims 2-11
and 13-19, which fall therewith.

V. CONCLUSION
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1-11 and 13-19.
Thus, claims 1-11 and 13-19 are not patentable.

VI. DECISION
In view of the foregoing discussion, we affirm the Examiner’s
rejection of claims 1-11 and 13-19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2009).

AFFIRMED

llw

WARREN A. SKLAR (SOER)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
19TH FLOOR
CLEVELAND OH 44115