Ex Parte Sherlock

Board of Patent Appeals and Interferences

Nov 18, 2009

10150093 (B.P.A.I. Nov. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS MALLORY SHERLOCK
____________

Appeal 2009-005486
Application 10/150,0931
Technology Center 3700
____________

Decided: November 19, 2009
____________

Before SCOTT R. BOALICK, STEVEN D. A. MCCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed August 7, 2002. Application 10/150,093 is a
continuation of 09/593,598, filed June 12, 2000, now abandoned. The real
party in interest is the inventor, Thomas Mallory Sherlock.
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This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-4, 6-8, 11, 13-18 and 20-28, all the claims pending in the
application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellant’s invention relates to a method and apparatus for training
users to play musical instruments. (Spec. Abstract.) The apparatus includes
a plurality of light-emitting elements arranged and activated in a sequence
corresponding to the duration of notes being played. (Spec. 4:17 to 5:3.)
These features enable the users to anticipate the notes to be played as well as
the duration times of the notes. (Spec. Abstract, 4:17 to 5:3.)

Claim 1 is exemplary:
1. An apparatus comprising:

controller means for processing a selected piece of music
according to a predetermined tempo and for translating the
selected piece of music into direct play data; and

display means for supported positioning adjacent a
keyboard of a musical instrument having a plurality of
horizontally-arranged keys, the display means having a
plurality of substantially vertical columns, each column for
positioning adjacent a corresponding key of the keyboard, each
column including a group of at least three vertically-arranged
lights arranged directly above each corresponding key of the
keyboard, the display means having a connection to receive the
direct play data for presenting a note activation sequence of the
direct play data, the display means for displaying each note of
the note activation sequence as an illuminated portion above a

2 Claims 5, 9, 10, 12 and 19 have been cancelled.
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corresponding one of the keys, the illuminated portion of the
group of vertically-arranged lights descending at a rate
corresponding to the predetermined tempo from an uppermost
position to a lowermost position in each vertical column.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Haruyama 5,886,273 Mar. 23, 1999
Hulcher 6,407,324 B1 June 18, 2002
(claims priority to
provisional application
60/168,533, filed
Dec. 2, 1999)

Claims 1-4, 6-8, 11, 13-18 and 20-28 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over Hulcher and Haruyama.
Except as noted in this decision, Appellant has not presented any
substantive arguments directed separately to the patentability of the
dependent claims. In the absence of a separate argument with respect to
those claims, they stand or fall with the representative independent claim.
See 37 C.F.R. § 41.37(c)(1)(vii). Only those arguments actually made by
Appellant have been considered in this decision. Arguments that Appellant
did not make in the Briefs have not been considered and are deemed to be
waived. See id.

ISSUES
With respect to claims 1-4, 6-8, 11, 13-18 and 20-28, Appellant
argues that the applied references do not teach or suggest all the claimed
features. (App. Br. 11-16.) In particular, Appellant argues that Hulcher
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does not teach or suggest “the illuminated portion of the group of
vertically-arranged lights descending at a rate corresponding to the
predetermined tempo from an uppermost position to a lowermost position in
each vertical column,” as recited in independent claim 1. (App. Br. 13-14.)
Appellant also argues that the combination of Hulcher and Haruyama does
not teach or suggest the limitations of a “display means for supported
positioning adjacent a keyboard of a musical instrument having a plurality of
horizontally-arranged keys” (App. Br. 14-15) and “each column including a
group of at least three vertically-arranged lights arranged directly above each
corresponding key of the keyboard” (App. Br. 15-16), as recited in
independent claim 1. Independent claims 11, 18, 21 and 26 recite similar
limitations.
Appellant further argues that “the Examiner has failed to adequately
articulate the basis on which he concludes that it would have been obvious to
modify and combine the relevant prior art references” (App. Br. 17; see also
App. Br. 12, 16), that Hulcher teaches away from the Examiner’s proposed
combination (App. Br. 16), that an “ordinary artisan” lacks the specialized
knowledge to arrive at the Appellant’s claimed invention (App. Br. 19-23),
the Examiner used impermissible hindsight reasoning (App. Br. 22), and that
the Examiner has improperly dismissed evidence that Appellant’s invention
satisfied a long-felt need in the art (App. Br. 24-26).
Appellant’s arguments present the following issue:
Has Appellant shown that the Examiner erred in rejecting claims 1-4,
6-8, 11, 13-18 and 20-28 under 35 U.S.C. § 103(a)?
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The resolution of this issue turns on the following subsidiary issues:
1. Has Appellant shown that the Examiner erred in finding that the
combination of Hulcher and Haruyama teaches or suggests “the illuminated
portion of the group of vertically-arranged lights descending at a rate
corresponding to the predetermined tempo from an uppermost position to a
lowermost position in each vertical column,” as recited in claim 1?
2. Has Appellant shown that the Examiner erred in finding that the
combination of Hulcher and Haruyama teaches or suggests a “display means
for supported positioning adjacent a keyboard of a musical instrument
having a plurality of horizontally-arranged keys,” as recited in claim 1?
3. Has Appellant shown that the Examiner erred in finding that the
combination of Hulcher and Haruyama teaches or suggests “each column
including a group of at least three vertically-arranged lights arranged directly
above each corresponding key of the keyboard,” as recited in claim 1?
4. Has Appellant shown that the Examiner erred by improperly
combining Hulcher and Haruyama?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.

Hulcher
1. Hulcher “relates to an improved device which is positionable on a
piano keyboard, and through the use of preprogrammed red and green
LED’s, a person can play songs on the piano.” (Col. 1, ll. 22-24.)

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2. Hulcher describes an apparatus 10 “having sufficient length to be
positioned upon the keyboard of a standard piano 13.” (Col. 2,
ll. 51-53.) The apparatus 10 includes a front face 18 having a readout
board 20 (col. 2, ll. 55-56; figs. 2, 3) and a plurality of LEDs 22
(col. 2, l. 57; fig. 2).

3. The readout board 20 includes a song selector switch 48 with
arrows 49 and 50 for selecting from a group of songs. (Col. 3,
ll. 30-33; fig. 3.) The readout board 20 also includes a second
readout 58 to indicate the tempo of the song (col. 3, ll. 44-45; fig. 3)
and arrows 62, 64 for adjusting the tempo (col. 3, ll. 47-49; fig. 3).

4. The plurality of LEDs 22 includes a first upper row 24 and a second
lower row 26. (Col. 2, ll. 58-60; fig. 2.) When the apparatus 10 is
placed on a piano “each LED 32 in [the] lower row 26 is positioned
over a piano key 34.” (Col. 3, ll. 2-3.) The LEDs in the lower row 26
light up red when a note is to be played with the left hand and the
LEDs in the upper row 24 light up green when a note is to be played
with the right hand. (Col. 3, ll. 9-12.)

Haruyama
5. Haruyama “relates to a performance instructing apparatus provided
with a key-depression instructing function for instructing the timing in
which a key should be depressed (or released).” (Col. 1, ll. 6-9.)

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6. Haruyama describes a prior art keyboard LED that “inform[s] a player
of the timing when the key should be depressed . . . [and] is also able
to determine the coincidence of the key-depression instructed by the
LED with an actual key-depressing action by the player.” (Col. 1,
ll. 18-25.) Haruyama further describes that, for this keyboard LED,
“it is difficult . . . [to] display how the song or tune will proceed in the
near future.” (Col. 1, ll. 39-41.) As a result, “the player guided by
this apparatus is not able to grasp the flow of the song or tune.”
(Col. 1, ll. 42-43.)

7. Haruyama describes another prior art apparatus with a computer that
displays a vertical keyboard (col. 1, ll. 29-31) and a sequencer with
musical scores displayed as horizontal bars “such that the length of
the lateral bar represents a period from the key depression to the key
release” (col. 1, ll. 35-36). Because the keyboard on the computer
display is oriented differently from the actual keyboard, “the player
must instantly associate a key on the display with a corresponding key
on the keyboard to be actually played . . . which is difficult for a
beginner.” (Col. 1, ll. 45-50.)

8. Haruyama describes a performance instructing apparatus that includes
a “key operation region [that] represents a period from the time when
the key should be depressed by the player to the time when the key
should be released” (col. 2, ll. 11-13) and a “display keyboard that is
oriented in the same direction as a keyboard through which a player
enters pitch information” (col. 1, ll. 63-65).
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9. In one embodiment, Haruyama describes a display device 9 including
a miniature display keyboard 31 (col. 8, ll. 27-29; figs. 3A, 3B) and a
piano roll paper 32 with “vertical bars [or scroll bars (see, e.g., col. 8,
ll. 58-59)] . . . displayed so as to represent key operation periods,
namely, periods or time lengths from the time of key depression to the
time of key release” (col. 8, ll. 43-45). The piano roll paper 32
includes a scroll area 32a “in which the vertical bars scroll as the
reproduction of the automatic performance data proceeds.” (Col. 8,
ll. 46-48; figs. 3A, 3B.) The “automatic performance data” includes
bar-line data 24 and tempo data 26 (col. 7, ll. 30-34; fig. 2), and the
bar-line data is used to “draw” the scroll bars (col. 11, l. 18). The
scroll area 32a is equally divided into elongated regions to correspond
with the white keys on the miniature display keyboard 31. (Col. 8,
ll. 60-63.)

10. Figures 3A and 3B illustrate that the scroll bars move from the upper
edge to the lower edge of the scroll area 32a after a given period of
time. (Col. 8, ll. 33-37.) The player depresses a key when the
corresponding scroll bar reaches the lower edge of the scroll area 32a.
(Col. 9, ll. 43-45.) Due to the downward motion of the scroll bars
towards the miniature display keyboard 31 as the musical piece
progresses, the player can “understand the flow of the music piece,
and even a beginner is able to instantly determine a key or keys to be
depressed.” (Col. 2, ll. 14-18.) “The scroll bars are displayed with
different colors with respect to left-hand data and right-hand data.”
(Col. 9, ll. 8-9.)
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11. In one embodiment of Figure 17, “a touch panel may be provided on
the screen of the display device 5, instead of using the keyboard 1,
and the player can directly touch the keys on the miniature display
keyboard 31.” (Col. 22, ll. 18-21.) Figure 17 illustrates that the
miniature display keyboard is adjacent to the piano roll paper.

12. In another embodiment of Figure 17, Haruyama describes displaying
“a model of hands (for example, image data or line drawing of
teacher’s hands)” in conjunction with displaying the position of the
player’s hands on the miniature display keyboard 31. (Col. 21,
ll. 36-41.) The position of the player’s hands on the keyboard 1 can
be detected using a contact sensor, an electrostatic capacity sensor or
an optical sensor. (Col. 21, ll. 41-46.)

13. Figure 15A illustrates that the scroll area 32a includes scroll bars for
the pitch names “C”, “D” and “E.” Figure 15B is an enlargement of
Figure 15A (col. 16, ll. 15-16) and illustrates that the scroll bar is
formed of multiple “dots” (col. 16, ll. 21-25). A “dot” is “the
minimum unit of drawing.” (Col. 16, ll. 25-26.) Figure 16C
illustrates a scroll bar composed of up to ten dots. (Col. 16, ll. 53-55,
58-59.) Furthermore, the display device 9 for displaying the drawings
(col. 1, ll. 62-63) can be “a large-sized LCD or CRT, and LEDs and
others, for example” (col. 6, ll. 24-26).

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PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406
(2007). In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 415, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.” Id.
at 416. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 417. Furthermore, a determination of obviousness “cannot be confined
by a formalistic conception of the words teaching, suggestion, and
motivation.” Id. at 419.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
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(Fed. Cir. 1994). Additionally, simply because “a . . . combination would
not be made by businessmen for economic reasons does not mean that
persons skilled in the art would not make the combination” In re Farrenkopf,
713 F.2d 714, 718 (Fed. Cir. 1983).
The level of ordinary skill in the art may be evidenced by the prior art
references. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
(“Although the Board did not make a specific finding on skill level, it did
conclude that the level of ordinary skill in the art . . . was best determined by
appeal to the references of record . . . . We do not believe that the Board
clearly erred in adopting this approach.”); see also In re Lange, 644 F.2d
856, 860 (CCPA 1981) (“The references are of two types: those applied
against the claims and those cited to establish the level of ordinary skill or
knowledge in the art.”); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978) (“the
PTO usually must evaluate both the scope and content of the prior art and
the level of ordinary skill solely on the cold words of the literature”).
When the examiner establishes prima facie obviousness and the
applicant produces rebuttal evidence, the examiner must consider all of the
evidence anew before reaching a conclusion of obviousness. In re Piasecki,
745 F.2d 1468, 1472 (Fed. Cir. 1984). Objective evidence of
nonobviousness in any given case may be entitled to more or less weight
depending on its nature and its relationship with the merits of the invention.
Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983).
Establishing long-felt need requires objective evidence that an
art-recognized problem existed in the art for a long period of time without
solution. In re Gershon, 372 F.2d 535, 538 (CCPA 1967). The relevance of
long-felt need and the failure of others to the issue of obviousness depends
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on several factors. First, the need must have been a persistent one that was
recognized by those of ordinary skill in the art. Orthopedic Equip. Co. v. All
Orthopedic Appliances, Inc., 707 F.2d 1376, 1382 (Fed. Cir. 1983); see also
Gershon, 372 F.2d at 538. Second, the long-felt need must not have been
satisfied by another before the invention by applicant. Newell Cos. v.
Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988) (“[O]nce another
supplied the key element, there was no long-felt need or, indeed, a problem
to be solved.”). Third, the invention must satisfy the long-felt need. In re
Cavanagh, 436 F.2d 491, 496 (CCPA 1971). “[L]ong-felt need is analyzed
as of the date of an articulated identified problem and evidence of efforts to
solve that problem.” Texas Instruments, Inc. v. ITC, 988 F.2d 1165, 1178
(Fed. Cir. 1993).

ANALYSIS
We find no merit in Appellant’s arguments that the Examiner erred in
rejecting claims 1-4, 6-8, 11, 13-18 and 20-283 under 35 U.S.C. § 103(a).
First, we address Appellant’s arguments (App. Br. 13-16) that the
Examiner erred in finding that the combination of Hulcher and Haruyama
teaches or suggests all the limitations of claim 1.
The Examiner found that Hulcher teaches all the limitations of claim 1
except for “the display means for displaying each note of the note activation
sequence as an illuminated portion above a corresponding one of the keys,
the illuminated portion of the group of vertically-arranged lights descending

3 Appellant argues claims 1-4, 6-8, 11, 13-18 and 20-28 together as a group.
(App. Br. 11-26.) Accordingly, we select claim 1 as representative. See 37
C.F.R. § 41.37(c)(1)(vii).
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at a rate corresponding to the predetermined tempo from an uppermost
position to a lowermost position in each vertical column” (Ans. 3) and “each
column including a group of at least three vertically-arranged lights arranged
directly above each corresponding key of the keyboard” (Ans. 3). Regarding
the first limitation, the Examiner cited Haruyama for the disclosure of a
display device 9 with scroll bars in a piano roll paper 32, in which the scroll
bars move corresponding to tempo data from an upper edge to a lower edge
of the scroll area 32a to indicate when a player should depress a key.
(Ans. 3; FF 10.) Regarding the second limitation, the Examiner also cited
Haruyama for the disclosure of the display device 9 in which the scroll bars
are formed from multiple dots. (Ans. 3; FF 13.) The Examiner concluded
that claim 1 would have been obvious over Hulcher and Haruyama.
(Ans. 3-4.) We generally agree with the Examiner.
Appellant’s arguments (App. Br. 13-14) that the combination of
Hulcher and Haruyama does not teach or suggest “the illuminated portion of
the group of vertically-arranged lights descending at a rate corresponding to
the predetermined tempo from an uppermost position to a lowermost
position in each vertical column” are unconvincing.
Hulcher teaches an apparatus 10 with a readout board 20 for
placement over a keyboard of a standard piano 13. (FF 1-2.) The readout
board 20 includes a first upper row 24 and a second lower row 26 of
LEDs 22 corresponding to each piano key 34, in which the LEDs 22 indicate
if a note is to be played with the left or right hand. (FF 4.) Haruyama
describes that one problem with a prior art LED keyboard is the inability to
inform a player of which keys to depress in the near future. (FF 6.) To
address this problem, Haruyama teaches a performance instructing apparatus
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with a display device 9 containing moving scroll bars corresponding to
tempo data on a piano roll paper 32 to indicate to the player current and
future key depressions. (FF 10; see also FF 6-7). The scroll bars can have
different colors to indicate if a note is to be played with the left or right
hand. (FF 10.) In one embodiment, Haruyama teaches a display device 5
with a touch panel miniature display keyboard 31 located adjacent to the
piano roll paper 32. (FF 11.) The piano roll paper 32 includes a scroll area
32a equally divided into elongated regions to correspond with the keys on
the miniature display keyboard 31. (FF 9.)
Thus, it would have been obvious to modify Hulcher by substituting
Haruyama’s display device 5 with the scroll bars in a piano roll paper 32 in
place of Hulcher’s readout board 20 for placement over a keyboard of a
standard piano 13. A person of ordinary skill in the art would recognize that
Haruyama’s display device 5 would improve the process of piano instruction
by displaying current and future key depressions. See KSR, 550 U.S. at 417.
Although Appellant argues that Hulcher does not teach or suggest “the
illuminated portion of the group of vertically-arranged lights descending at a
rate corresponding to the predetermined tempo from an uppermost position
to a lowermost position in each vertical column” (App. Br. 13-14), the
Examiner does not cite Hulcher for the disclosure of this limitation.
(Ans. 3.)
Therefore, Appellant has not shown that the Examiner erred in finding
that the combination of Hulcher and Haruyama teaches or suggests a “the
illuminated portion of the group of vertically-arranged lights descending at a
rate corresponding to the predetermined tempo from an uppermost position
to a lowermost position in each vertical column,” as recited in claim 1.
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Next, Appellant’s argument (App. Br. 14-15) that the combination of
Hulcher and Haruyama does not teach or suggest “display means for
supported positioning adjacent a keyboard of a musical instrument having a
plurality of horizontally-arranged keys” is unconvincing. In particular,
Appellant argues that “Haruyama does not teach or suggest a full-sized
display for actual positioning adjacent a keyboard of a musical instrument”
(App. Br. 14) and “Haruyama lacks any teaching or disclosure of the
physical relationship (proximate or otherwise) of display keyboard 31 to the
actual keyboard of a musical instrument” (App. Br. 15).
As discussed above, Haruyama teaches a display device 5 with a
touch panel miniature display keyboard 31 located adjacent to the piano roll
paper 32. (FF 11.) Moreover, modifying Hulcher by substituting
Haruyama’s display device 5 for Hulcher’s readout board 20 for placement
over a keyboard of a standard piano 13 would result in the close proximity
of Haruyama’s display device 5 to Hulcher’s keyboard of a standard
piano 13. Although Appellant argues that Haruyama does not teach a
full-sized keyboard, this feature is not claimed.
Thus, Appellant has not shown that the Examiner erred in finding that
the combination of Hulcher and Haruyama teaches or suggests a “display
means for supported positioning adjacent a keyboard of a musical instrument
having a plurality of horizontally-arranged keys,” as recited in claim 1.
Finally, Appellant’s argument (App. Br. 14-15) that the combination
of Hulcher and Haruyama does not teach or suggest “each column including
a group of at least three vertically-arranged lights arranged directly above
each corresponding key of the keyboard” is unconvincing. In particular,
Appellant argues that “Haruyama also lacks any teaching or suggestion of a
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display with columns of lights, each of which is positioned adjacent a
corresponding key of an actual musical instrument.” (App. Br. 15.)
Haruyama teaches that in each scroll area 32a, the scroll bar is
composed of multiple dots, for example, up to ten dots, or “the minimum
unit of [a] drawing.” (FF 13.) As discussed above, the piano roll paper 32
includes a scroll area 32a equally divided into elongated regions to
correspond with the keys on the miniature display keyboard 31. (FF 9.)
Thus, Appellant has not shown that the Examiner erred in finding that
the combination of Hulcher and Haruyama teaches or suggests “each column
including a group of at least three vertically-arranged lights arranged directly
above each corresponding key of the keyboard.”
Next, we address Appellant’s arguments (App. Br. 16-26) that the
Examiner erred in combining Hulcher and Haruyama.
Appellant’s arguments that “it is incumbent upon the Examiner to
show a reason, suggestion or motivation for the proposed combination”
(App. Br. 16) and that the “Examiner has failed to adequately articulate the
basis on which he concludes that it would have been obvious to modify and
combine the relevant prior art reference” (App. Br. 17) are not persuasive.
In particular, Appellant argues that to conclude that the claimed invention
would have been obvious, one skilled in the art
must have suggested a departure from the cited references in the
following ways: (1) dispensing with Hulcher’s teaching of using red
and green LEDs corresponding to the playing of keys with a left hand
or right hand; (2) ignoring Hulcher’s teaching of using only one row
of lights for the leftmost and rightmost keys, and of using only a
single light (red or green) over the keyboard to indicate a note to be
played; and (3) disregarding Haruyama’s teaching of a small,
miniaturized display remotely-located keyboard in favor of a much
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more expensive, full-sized display positioned directly adjacent an
actual keyboard of a musical instrument.

(App. Br. 17-18).
As discussed above, modifying Hulcher by substituting Haruyama’s
display device 5 for Hulcher’s readout board 20 for placement over a
keyboard of a standard piano 13 is no more than the improvement of a
similar device in the same way as in the prior art, with predictable results.
See KSR, 550 U.S. at 417. Moreover, Haruyama teaches a touch panel
miniature display keyboard 31 adjacent to the piano roll paper 32 (FF 11)
including scroll bars having different colors to indicate if a note is to be
played with the left or right hand (FF 10).
Next, Appellant argues that “Hulcher teaches away from the use of
multiple lights arranged in columns over corresponding keys of a musical
instrument because minimizing cost is an important consideration in his
apparatus” (App. Br. 16) and cites additional evidence4 to support this
position (App. Br. 12-13; see also App. Br. 15-16, 23; Reply Br. 6-8). We
do not find this argument persuasive. Even if Appellant is correct that the
combination of Hulcher and Haruyama would result in additional expense,
this does not mean that persons skilled in the art would not make the
combination. See Farrenkopf, 713 F.2d at 718.

4 Appellant cites U.S. Patent No. 5,107,743 to Decker, which describes
prior art devices including: (1) “devices utilizing lights and crystal displays
for teaching piano” (col. 1, ll. 24-25); (2) “[t]he use of computer technology
and control tapes with a sound or sight display accompanying lights on a
keyboard” (col. 1, ll. 31-33); and (3) “[t]he use of audio track with visual
lights” (col. 1, ll. 47-48). However, Decker states that “[o]ne of the major
problems with [the] prior art is the expense associated” (col. 1, ll. 56-57).
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Appellant further argues that an “ordinary artisan” lacks the
specialized knowledge to arrive at the Appellant’s claimed invention. (App.
Br. 19-23; see also Reply Br 9-11.) In particular, Appellant contends that
it would have been beyond the skill level of an ordinary
practitioner to provide at least three lights directly above
corresponding keys of the actual musical instrument keyboard
in order to allow the student to anticipate which keys to be
played in the near future, and to remove the visual distance
between the display of musical notes above corresponding keys
on the keyboard and the players [sic] fingers on the actual
keyboard so as to eliminate the number of mental steps required
of the student.

(App. Br. 21.) We do not find this argument persuasive.
As discussed above, Haruyama teaches a performance instructing
apparatus with a display device 9 containing moving scroll bars on a piano
roll paper 32 to indicate current and future key depressions. (FF 10; see also
FF 6-7.) In one embodiment, a display device 5 includes a touch panel
miniature display keyboard 31 located adjacent to the piano roll paper 32.
(FF 11.) In other words, Haruyama’s touch panel miniature display
keyboard 31 is located in close proximity to the piano roll paper 32
containing the moving scroll bars. Haruyama also teaches that the scroll bar
is formed of multiple dots, for example, up to ten dots (FF 13), and that the
scroll bar corresponds to a key on the miniature display keyboard 31 (FF 9).
Therefore, based on Haruyama’s teachings as evidence of the level of
ordinary skill in the art, one of ordinary skill in the art would possess the
specialized knowledge to combine the applied references. See Oelrich, 579
F.2d at 91.
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Furthermore, Appellant’s argument that “the Examiner fell into the
hindsight trap – using Applicant’s claims as a ‘blueprint’ in order to
combine the right prior art references” (App. Br. 22) is not persuasive. As
discussed above, modifying Hulcher by substituting Haruyama’s display
device 5 in place of Hulcher’s readout board 20 for placement over a
keyboard of a standard piano 13 is no more than the improvement of a
similar device in the same way as in the prior art, with predictable results.
See KSR, 550 U.S. at 417.
Last, Appellant points toward objective evidence of a long-felt need in
the art of piano instruction. (App. Br. 24-26.) As evidence, Appellant
submitted a Declaration by Thomas Mallory Sherlock, dated October 17,
2006 (“First Sherlock Decl.”). Appellant also submitted another Declaration
by Thomas Mallory Sherlock, dated September 20, 2007 (“Second Sherlock
Decl.”), which was accompanied by additional evidence.5 Neither the First
Sherlock Declaration nor the Second Sherlock Declaration persuade us that
the Examiner failed to properly weigh all of the evidence in reaching the
conclusion of obviousness.
The First Sherlock Declaration identifies the problem as “a pressing
need for a simple, intuitive, and effective method and/or apparatus for
teaching a student to play a piece of music on a finger-actuated (e.g.,
keyboard) musical instrument.” (First Sherlock Decl. ¶ 8.) In particular, the

5 As additional evidence, the Second Sherlock Declaration cites: (1)
Amazon.com, Reviews for Yamaha EZ-250i Portable Lighted Musical
Keyboard (Internet URL not provided and undated); and (2) Ernest Lilley,
Review: Allegro Multimedia Piano Wizard,
http://www.informationweek.com/news/showArticle.jhtml?articleID=17710
4438 (Jan. 27, 2006).
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First Sherlock Declaration articulates “the imperative need to eliminate for
the keyboard student as much eye movement and mental interpretation as
possible” based on the observation that “beginning piano players tend to
look almost constantly at their hands because . . . they lift their hands off
(i.e., above) their instrument regularly during the performance [of] a
particular musical piece.” (First Sherlock Decl. ¶ 10.) According to the
First Sherlock Declaration, this can be achieved by “remov[ing] the visual
distance between the display and the fingers on the actual piano keys so that
the fewest number of mental steps separate the notation from the production
of the sound.” (Id.) Similarly, the Second Sherlock Declaration states that
one problem with the “Piano Wizard” video software product is that “the
graphics of this game never approach the actual keyboard” and thus “eye
movement [is] needed to connect the notes on the keyboard at the top of the
computer screen to the actual keys to be played, far below.” (Second
Sherlock Decl. ¶ 11.)
However, even if Appellant is correct in that a long-felt need “to
eliminate for the keyboard student as much eye movement and mental
interpretation as possible” for keyboard instruction exists (First Sherlock
Decl. ¶ 10), Haruyama’s performance instructing apparatus provides several
solutions for this long-felt need (see FF 7-8, 12-13). For one prior art
apparatus, Haruyama describes a computer display with a vertical keyboard
and a sequencer with musical scores displayed as horizontal bars. (FF 7.)
Haruyama recognizes that one difficulty for a beginner is the mental step of
associating a key on the vertical keyboard display with the corresponding
key to be depressed. (Id.) To solve this problem, the keyboard display is
oriented in the same direction as the actual keyboard. (FF 8.) Haruyama
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also describes an embodiment in which the position of both the player’s
hands and a “model of hands” (e.g., “teacher’s hands”) are displayed on the
miniature display keyboard 31. (FF 12.) This embodiment minimizes eye
movement and mental interpretation because the student can determine the
correct hand position by viewing the miniature display keyboard 31 and
piano roll paper 32 simultaneously. Haruyama also describes another
embodiment with a touch panel miniature display keyboard 31, such that the
miniature display keyboard 31 is positioned adjacent to the piano roll
paper 32. (FF 11.) This embodiment also minimizes eye movement and
mental interpretation because the keyboard student can view the touch panel
miniature display keyboard 31 and piano roll paper 32 simultaneously.
Therefore, neither the First Sherlock Declaration nor the Second
Sherlock Declaration sufficiently establish that a long-felt need without
solution existed. Any long-felt need for musical keyboard instruction that
“eliminate[s] for the keyboard student as much eye movement and mental
interpretation as possible” was solved at least by Haruyama. See Newell
Cos., 864 F.2d at 768. Accordingly, we do not address whether the evidence
presented in the Second Sherlock Declaration was sufficient to establish that
the long-felt need was a persistent one recognized by those of ordinary skill
in the art, including the failure of others, and if the invention, in fact,
satisfied the long-felt need.
We conclude that the evidence submitted by Appellant in the First and
Second Sherlock Declarations in an effort to establish long-felt need was not
entitled to persuasive weight in the Examiner’s analysis of the patentability
of claim 1. Appellant has not shown that the Examiner erred in determining
that the probative value of the disclosures of Hulcher and Haruyama as
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evidence supporting the conclusion of obviousness outweighed the probative
value of the First and Second Sherlock Declarations as objective evidence of
nonobviousness.
We conclude that Appellant has not shown that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a). Claims 2-4, 6-8, 11, 13-18 and
20-28 were not argued separately, and fall together with claim 1.

CONCLUSION
Based on the findings of fact and analysis above, we conclude that
Appellant has not shown that the Examiner erred in rejecting claims 1-4,
6-8, 11, 13-18 and 20-28 under 35 U.S.C. § 103(a).

DECISION
The rejection of claims 1-4, 6-8, 11, 13-18 and 20-28 under 35 U.S.C.
§ 103(a) is affirmed.
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

bim

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