Ex Parte Porzilli

Board of Patent Appeals and Interferences

Nov 27, 2002

09002058 (B.P.A.I. Nov. 27, 2002)

1 Based upon the amendment, the indefiniteness rejection of claims 6 and 28 was
withdrawn (paper numbers 19 and 20).
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for publication and is not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LOUIS B. PORZILLI
____________
Appeal No. 2001-0913
Application No. 09/002,058
____________
ON BRIEF
____________
Before HAIRSTON, FLEMING, and RUGGIERO, Administrative Patent Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 through 34. In an Amendment
After Final (paper number 17), claims 6, 281 and 33 were amended.
The disclosed invention relates to an acoustic wave enhancing means coupled to the resonant
chamber of a stringed instrument to selectively enhance only the acoustic waves of a lower portion
of a range of frequencies.
Appeal No. 2001-0913
Application No. 09/002,058
2 Although this reference is not listed in the prior art of record (answer, page 4), it is
relied on by the examiner to reject several claims on appeal (answer, pages 5 and 6).
3 A copy of the translation of this reference is attached.
2
Claim 1 is the only independent claim on appeal, and it reads as follows:
1. A string instrument comprising:
a first body having a resonant chamber;
a plurality of strings each manifesting a tone of a different frequency secured to and external
to the body and over the chamber for producing first acoustical waves in a range of frequencies, the
chamber exhibiting second acoustic waves in a range of frequencies responsive to and
corresponding to the first waves; and
acoustic wave enhancing means coupled to the body and to the chamber for selectively
enhancing only the acoustic waves of the lower portion of the range of frequencies of the second
waves.
The references relied on by the examiner are:
Dunham 1,303,466 May 13, 1919
Kalaf 1,455,916 May 23, 1923
Redlinger2 1,635,502 Jul. 12, 1927
Pedersen 1,721,710 Jul. 23, 1929
Newton 2,953,052 Sep. 20, 1960
Doschek 3,101,810 Aug. 27, 1963
Desmond 3,524,377 Aug. 18, 1970
Kasha 4,079,654 Mar. 21, 1978
McGill 5,780,758 Jul. 14, 1998
(effective filing date Aug. 11, 1994)
de Cristofaro3 FR 370, 137 Jan. 29, 1907
(French Patent Application)
Appeal No. 2001-0913
Application No. 09/002,058
3
Claims 27 and 34 stand rejected under the second paragraph of 35 U.S.C. § 112 for
indefiniteness.
Claims 1, 8, 13 through 15, 19 through 22 and 31 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over de Cristofaro in view of Pedersen.
Claims 2, 4, 24, 25, 29 and 32 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over de Cristofaro in view of Pedersen and Kalaf.
Claims 3 and 5 through 7 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
de Cristofaro in view of Pedersen, Kalaf and Doschek.
Claims 9 through 11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over de
Cristofaro in view Pedersen and Redlinger.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over de Cristofaro
in view of Pedersen, Redlinger and Kasha.
Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over de
Cristofaro in view of Pedersen and Desmond.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over de Cristofaro
in view of Pedersen, Desmond and Newton.
Claims 23 and 28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over de
Cristofaro in view of Pedersen and appellant’s admitted prior art.
Claim 26 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over de Cristofaro
in view of Pedersen, Kalaf and McGill.
Appeal No. 2001-0913
Application No. 09/002,058
4
Claim 30 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over de Cristofaro
in view of Pedersen and Kasha.
Claim 33 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over de Cristofaro
in view of Pedersen and Dunham.
Reference is made to the final rejection (paper number 8), the briefs (paper numbers 18 and
21) and the answer (paper number 20) for the respective positions of the appellant and the examiner.
OPINION
We have carefully considered the entire record before us, and we will reverse all of the
rejections of record.
Turning first as we must to the indefiniteness rejection, the examiner indicates (final
rejection, page 8) that claims 27 and 34 are indefinite because “it is unclear what is meant by the
phrase ‘traditional instrument’ as recited in line 1 of claims 27 and 34,” and because of the presence
of “the recitation of ‘a traditional instrument’ having a ‘first body’ and a ‘second body’ in lines 1-3
of claim 27, and in lines 1-4 of claim 34.” According to the examiner (final rejection, page 8), “it is
unknown how the ‘instrument’ has two ‘bodies.’” Appellant argues (brief, page 24) that:
Claim 27 merely states that a traditional instrument has a second body of a
given depth greater than the first body. This is not complex or confusing. It is a
mere statement of fact. The claim does not state the same instrument has both
bodies. This is a preamble recitation and would be understood as such by one of
ordinary skill. Claims are directed to one of ordinary skill who would understand the
plain ordinary meaning of garden variety English. The claim states that the second
body of a traditional instrument has a given depth greater than the first body (which
is claimed in claim 1). The specification at page 11, line 23 to page 12, line 17,
explains in detail what is meant by traditional instrument. Claims are not to be read
Appeal No. 2001-0913
Application No. 09/002,058
5
in a vacuum but in light of the specification. The specification explains what is
meant by a traditional instrument.
Although appellant’s claim style of contrasting the conventional/traditional instrument with the
wave enhancing means of his invention is not exactly a model of clarity, when claims 27 and 34 are
read in light of the disclosure, however, we are of the opinion that the skilled artisan would
understand the contrast being made between the traditional instrument and appellant’s disclosed and
claimed instrument. In other words, the skilled artisan would know the metes and bounds of
appellant’s contribution to the stringed instrument art. Accordingly, the indefiniteness rejection of
claims 27 and 34 is reversed.
Turning next to the obviousness rejection of claim 1, appellant has not presented a challenge
to the examiner’s findings concerning the teachings of Pedersen, and the use of this reference in
conjunction with the teachings of de Cristofaro. Instead, the appellant has challenged the
examiner’s findings concerning the sound bar teachings of de Cristofaro. Appellant argues (brief,
page 26) that sound bar e in de Cristofaro is used to reinforce the sound board b, and that it is not
used for low frequency enhancement. Appellant additionally argues (brief, page 27) that:
The assertion of enhanced loudness is not based on scientific evidence, is not based
on known acoustic principles and is erroneous unbelievable subjective impression
not based on modern technology. There is no enhancement of acoustic waves in this
French document in only the lower portion of the acoustic frequency spectrum as
claimed in claim 1.
We agree with appellant’s arguments that de Cristofaro is completely silent as to use of the sound
bar e for the purpose listed by the examiner in the rejection. Thus, the obviousness rejection of
Appeal No. 2001-0913
Application No. 09/002,058
6
claim 1 is reversed because the examiner’s obviousness determination must be “based on evidence
of record,” and not the examiner’s “subjective belief and unknown authority.” In re Lee, 277 F.3d
1338, 1343-44, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
The obviousness rejections of claims 2 through 26 and 28 through 33 are likewise reversed
because none of the other references of record cures the noted shortcoming in the teachings of de
Cristofaro.
DECISION
The decision of the examiner rejecting claims 27 and 34 under the second paragraph of 35
U.S.C. § 112, and claims 1 through 26 and 28 through 33 under 35 U.S.C. § 103(a) is reversed.
REVERSED
Appeal No. 2001-0913
Application No. 09/002,058
7

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
KWH/lp
Appeal No. 2001-0913
Application No. 09/002,058
8
LOUIS B. PERZILLI
164 WEST SHORE TRAIL
SPARTA, NJ 07871
Letty
JUDGE HAIRSTON
APPEAL NO. 2001-0913
APPLICATION NO. 09/002,058
APJ HAIRSTON
APJ RUGGIERO
APJ FLEMING
DECISION: REVERSED
PREPARED: Sep 26, 2003
OB/HD
PALM
ACTS 2

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