Ex Parte Sawhney et al

Patent Trial and Appeal Board

Jul 30, 2014

10861209 (P.T.A.B. Jul. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/861,209 06/04/2004 Ravi K. Sawhney OKC00671 9409
33900 7590 07/31/2014
Hall Estill Attorneys at Law
(MDMMY)
100 NORTH BROADWAY
SUITE 2900
OKLAHOMA CITY, OK 73102-8820
EXAMINER
TRAN, CON P
ART UNIT PAPER NUMBER
2654
MAIL DATE DELIVERY MODE
07/31/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte RAVI K. SAWHNEY, INGVALD A. SMITH-KIELLAND,
PAUL K. JANOWSKI, and PETER SONG

Appeal 2012-005124
Application 10/861,209
Technology Center 2600
__________

Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

PAULRAJ, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a
learning amplifier. The Examiner rejected the claims for lack of written
description support and obviousness. The Examiner also objected to an
Amendment to the Specification for the introduction of new matter. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Appellants identify the Real Party in Interest as RKS Guitars,
LLC (see App. Br. 2).
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STATEMENT OF THE CASE
Background
The Specification indicates that “[t]his invention relates generally to
the field of amplifiers for musical instruments, and more specifically to
amplifiers for electronic instruments such as the electric guitar” (Spec. at 2,
ll. 12–13). “Now [i]t is possible for a talented individual to learn the basics
of one instrument, join up with others of similar talent and enthusiasm, and
create music with a great potential for popularity and success. This
possibility has driven the need for a musical learning method much different
than traditionally practiced” (id. at 3, ll. 6–9). “The present invention
addresses this need by providing a means for the learning musician to
practice phrases and parts of musical passages repeatedly, ingraining the
musical passages into the musicians mind” (id. at 3, ll. 10–12).
The Claims
Claims 11 and 12 are on appeal. Independent claim 11 is
representative, and reads as follows:
11. A learning amplifier comprising an enclosure suitable
for containing an amplifier, a loudspeaker, and interface and
control electronics, in which said control electronics include a CD
player, displays, control knobs, switches, input and output
connections, an integrated handle for easy portability, and wherein
a first display of said displays provides a representation of a user's
ability to play an instrument interacting with said amplifier in
synchronization with recorded music being played through said
CD player.

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The Issues

The Examiner has rejected the claims as follows:
I. Claims 11 and 12 under 35 U.S.C. § 112, ¶ 1 as failing to
comply with the written description requirement.
II. Claim 11 and 12 under 35 U.S.C. § 103(a) as unpatentable over
the combination of Tumblin,2 Wood ’751,3 and Wood ’031.4
Additionally, the Examiner objected under 35 U.S.C. § 132(a) to the
Amendment to the Specification filed on Jan. 22, 2008 for the introduction
of new matter. Because the new matter objection is related to the written
description rejection, the issue is appealable to the Board. See MPEP
§ 2163.06.

I. WRITTEN DESCRIPTION
Findings of Fact
FF1. The original Specification states that “[a]nother object of
the invention is to provide a means of enabling a
musician to play their instrument through the amplifier in
synchronization with recorded music and/or lessons”
(Spec. at 3, ll. 21–23).
FF2. The original Specification states that “[t]he control interface 40,
which may contain a CD player, display, a plurality of control
knobs, and a means of connecting musical instruments, inputs, and
outputs, is positioned on the front bezel surface” (Spec. at 5, ll. 13–

2 Tumblin, US 4,321,853, issued Mar. 30, 1982.
3 Wood et al., US 6,801,751 B1, issued Oct. 5, 2004.
4 Wood et al., US 6,716,031 B2, issued Apr. 6, 2004.
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15). The original Specification did not provide any further
description of a “display.”
FF3. Figure 3 of the Specification shows control interface 40 (which
may contain the display) with two rectangular boxes 41 and 43
which are not described in the Specification.
Principles of Law – Written Description
The written description requirement “requires an objective inquiry
into the four corners of the specification from the perspective of a person of
ordinary skill in the art.” Ariad Pharms, Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc). “Based on that inquiry, the
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed.”
Id.
To satisfy the written description requirement, “the missing
descriptive matter must necessarily be present in the [original] application’s
specification such that one skilled in the art would recognize such a
disclosure.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998);
see also Martin v. Mayer, 823 F.2d 500, 505 (Fed. Cir. 1987) (holding that
the written description requirement is “‘not a question of whether one skilled
in the art might be able to construct the patentee’s device from the teachings
of the disclosure.... Rather, it is a question whether the application
necessarily discloses that particular device’”) (emphasis in original).
Analysis
The Examiner rejected the claims under 35 U.S.C. § 112, ¶ 1 because
the Specification fails to provide written description support for the
limitations reciting “wherein a first display of said displays provides a
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representation of a user's ability to play an instrument interacting with said
amplifier in synchronization with recorded music being played through said
CD player” (Cl. 11) and “a second display of said displays provides status
information for said CD player and said amplifier” (Cl. 12). We agree with
the Examiner’s finding that written description support does not exist for
these limitations in the original disclosure (Ans. 7-8). The Specification
recites the term “display” only once when listing the components that may
be contained in the control interface 40 (FF2-3). Furthermore, the
Specification discloses that “[a]nother object of the invention is to provide a
means of enabling a musician to play their instrument through the amplifier
in synchronization with recorded music and/or lessons” without mentioning
that the means is achieved through the use of a display (FF1).
Appellants acknowledge that the subject matter of claims 11 and 12 is
not described literally, but nonetheless assert that
When a device, such as the claimed learning
amplifier, provides an amplifier, a loudspeaker, and
interface and control electronics that include a compact disc
(CD) player and displays, at least one of the displays would
be understood to provide a representation of a user’s ability
to play the user’s instrument through the amplifier in
synchronization with recorded music or lessons being played
through the CD player

(App. Br. 8). Appellants further assert that “[a] second display would be
understood to provide status information for the CD player and the
amplifier, which includes, at least, the CD track number and time, and the
volume of the amplifier, so that the user can control the CD player and
amplifier” (id.). In support, Appellants cite to affidavits submitted by Victor
B. Mason (Exhs. 1 and 2 to App. Br.).
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We are not persuaded by Appellants’ arguments. As recognized by
Appellants, the Mason affidavits at most demonstrate that the claimed
features are “conventional and can be determined without an undue amount
of experimentation” (App. Br. 6). However, that is not the standard for
satisfaction of the written description requirement. See In re Huston, 308
F.3d 1267, 1277 (Fed. Cir. 2002) (“Entitlement to a filing date does not
extend to subject matter which is not disclosed, but would be obvious over
what is expressly disclosed.”); see also Ariad, 598 F.3d at 1352 (A
“description that merely renders the invention obvious does not satisfy the
[written description] requirement.”). Appellants have not demonstrated that
a skilled artisan would understand that the inventors were in possession of
the claimed invention based on an objective inquiry into the Specification.
There is simply nothing in the Specification that describes any particular role
for a display, let alone a role wherein a display provides a representation of a
user’s ability to play an instrument or status information for the CD or
amplifier. The fact that one of ordinary skill in the art would understand that
a first and second display could potentially be used for those purposes does
not satisfy the statutory requirement. “It is not sufficient for purposes of the
written description requirement of § 112 that the disclosure, when combined
with the knowledge in the art, would lead one to speculate as to
modifications that the inventor might have envisioned, but failed to
disclose.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997). Accordingly, we affirm the written description rejection.
We also therefore affirm the Examiner’s new matter objection under
35 U.S.C. § 132(a) to the Jan. 22, 2008 Specification Amendment, which
sought to amend the Specification to introduce the same limitations recited
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in the pending claims that we have found lacking written description support
in the original disclosure.
II. OBVIOUSNESS
Additional Findings of Fact
FF4. Tumblin teaches an “[a]utomatic ear training apparatus”
that includes a keyboard as an input device, wherein
“[t]he keys of keyboard 14 actuate an array of switches
16, . . . and the outputs thereof, via interface 20 and
output 22, are readable by the controlling processor 12”
(Tumblin, col. 2, ll. 60–64).
FF5. Tumblin teaches that “[t]he system status display 24, of
conventional construction, is used to convey
miscellaneous information useful to the student in
operation of the system” (Tumblin, col. 3, ll. 3–5).
FF6. Tumblin further discloses that a “pitch error display 60
consists of a column of indicator lights (e.g., LEDs 62 as
seen in FIG. 4) placed vertically and lit one at a time
under the control of the LED driver circuit 64, with the
position of the lit LED determined by the controlling
processor 12,” and “[t]he purpose of display 60 is
primarily to give a graphical display of the pitch error of
the student” (Tumblin, col. 3, ll. 38–44).
FF7. Tumblin discloses that “[m]usical exercises could be
coded digitally in a form understandable to the
controlling processor 12 and stored in musical exercise
data storage 108,” and “[t]his would be interfaced to
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controlling processor 12 at 110 as shown in FIG. 1”
(Tumblin, col. 6, ll. 26–30).
FF8. Wood ’751 discloses an “interactive learning appliance”
that can be used for teaching music (Wood ’751, col. 3, l.
66). “[I]n some embodiments, the interactive learning
appliance can be in the form of a child’s laptop computer
or a child’s compact disk player (e.g., a ‘boom-box’)”
(id. at col. 10, ll. 18–21).
FF9. Wood ’751 discloses that:
The interactive learning appliance 21 may comprise a
housing (not shown) which may house a processor 30
such as a microprocessor, a read only memory (ROM),
an erasable memory 29, one or more input devices 33 for
the user to input information, and one or more output
devices 32 for the user to receive information 32.
Suitable input devices may include any suitable
combination of buttons, switches, speech recognizers,
alpha-numeric keypads or keyboards, selection devices
such as styluses, and rotary switches such as rings which
can be used to select certain information (e.g., numbers,
letters). Suitable output devices include speakers, visual
display screens (e.g., LCD screens), vibrational sensors,
etc. The ROM 28, the erasable memory 29, the input
devices 33, and the output device 32 may all be in
operative communication with the processor 30. The
ROM 28 may include content such as music, sounds, and
phrases which can be used with any of the downloaded
content packages.

(Wood ’751, col. 10, ll. 30–47.)

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Principles of Law – Obviousness
Where “a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). A reference may be
read for all that it teaches, including uses beyond its primary purpose. See
id. at 418–21; see also Beckman Instruments, Inc. v. LKB Produkter AB, 892
F.2d 1547, 1551 (Fed. Cir. 1989).
“In order to rely on a reference as a basis for rejection of the
applicant’s invention [under § 103], the reference must either be in the field
of the applicant’s endeavor or, if not, then be reasonably pertinent to the
particular problem with which the inventor was concerned.” In re Oetiker,
977 F.2d 1443, 1447 (Fed. Cir. 1992).
Analysis
The Examiner rejected the claims as obvious based on the combined
teachings of Tumblin, Wood ’751, and Wood ’031. In particular, the
Examiner relies upon Tumblin’s teaching that:
[B]y monitoring immediate changes in pitch error, the
controlling processor can detect errors in the rhythm of
transitions between notes of a student’s input; if the student
changes the pitch of his input to that of the next note, before
or after the reference signal changes, a sudden drastic pitch
error will be registered by the system

(Ans. at 10-11; see also FF4-7).
The Examiner acknowledges that “Tumblin does not explicitly
discloses [sic] the learning amplifier including an enclosure suitable for
containing the amplifier, the loudspeaker, and interface and control
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electronics, [or] musical exercise data storage . . . being a CD player” (Ans.
at 11). However, the Examiner asserts that
It would have been obvious to one of ordinary skill in the art
at the time the invention was made to have incorporated the
teaching of interactive learning appliance of Wood ’751
(i.e., housing, input devices, output device, compact disk
player) with the learning amplifier of Tumblin, in the
absence of new or unexpected results, such that to obtain the
enclosure and the compact disk player as claimed for
purposes of being able to analyze the user’s performance
and able to provide prescriptive content to the user to
address any difficulties that the user may be having, as
suggested byWood ‘751 in column 15, lines 55-57.

(Id.; FF8-9.) The Examiner further relies upon Wood ’031 to assert that it
would have been obvious to include an integrated handle for easy portability
(Ans. at 12).
Appellants’ only argument with respect to this rejection is that there is
no prima facie case of obviousness because “the skilled artisan would
understand that the server based system learning system with delayed
display of user performance would change the principle of operation of the
Tumblin ’853 reference from a real-time learning system, so there is no
motivation to combine Wood ’751 and Tumblin ’853” (App. Br. 12, citing
In re Ratti, 270 F.2d 810 (CCPA 1959)). We are not persuaded by this
argument. Wood ’751, which is directed to an “Interactive Learning
Appliance,” is in the Appellants’ field of endeavor, and is reasonably
pertinent to Appellants’ invention, thereby providing motivation to one of
ordinary skill in the art as to their combination. The rationale presented by
the Examiner only relies upon Wood ’751 for its teaching of the use of an
enclosure and a CD player in an interactive learning appliance, and the
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Examiner does not rely upon the use of a server in the system taught by
Wood ’751 to support his rejection. One of ordinary skill in the art would
understand that an enclosure and a CD player could be used in a system such
as Tumblin’s without changing its overall principle of operation as a musical
training apparatus. See, e.g., In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir.
2012); In re Umbarger, 407 F.2d 425, 430–31 (CCPA 1969) (finding Ratti
inapplicable where the modified apparatus will operate “on the same
principles as before”). Such a modification to the apparatus taught by
Tumblin would be no more than a “predictable use of prior art elements
according to their established functions.” See KSR, 550 U.S. at 417.
Furthermore, Appellants has failed to provide evidence showing that one of
ordinary skill in the art would have considered the inclusion of an enclosure
and a CD player in Tumblin’s real-time learning system to have changed the
principle of operation of Tumblin’s device.
Accordingly, we also affirm the obviousness rejection of claims 11
and 12.

SUMMARY
We affirm the rejection of claims 11 and 12 for failing to comply with
the written description requirement of 35 U.S.C. § 112, ¶ 1.
We affirm the rejection of claims 11 and 12 under 35 U.S.C. § 103(a).
We affirm the new matter objection to the Jan. 22, 2008 Amendment
to the Specification.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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