Ex parte Spercel et al.

Board of Patent Appeals and Interferences

Mar 28, 2002

09318354 (B.P.A.I. Mar. 28, 2002)

1
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not written for publication and is not binding precedent of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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RONALD R. SPERCEL and ROBERT J. SPERZEL
__________
Appeal No. 2000-1161
Application No. 09/318,354
__________
HEARD: Mar. 5, 2002
__________
Before FLEMING, LALL, and SAADAT, Administrative Patent
Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner’s final rejection of claims 1-13, 15, 16, and 21-
38. Claims 14 and 17-20 have been canceled. Claim 39 is also
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canceled and the rejection of claim 40 has been overcome by
the terminal disclaimer.
The present invention relates to a musical instrument
having a body portion, a neck portion and a head portion. A
plurality of strings extend from the body portion along the
neck portion to the head portion. At the head portion, each
of the strings is connected with a tuning device of a
plurality of tuning devices mounted on the head portion. Each
of the tuning devices includes a generally cylindrical string
post. The string posts extend through the head portion of the
musical instrument. The string posts have parallel central
axes disposed in a linear array. The central axis of each of
the string posts is disposed in a plane. The plane extends
perpendicular to parallel front and rear side surfaces of the
head portion. Each of the tuning devices includes an actuator
post. The actuators are manually rotatable to rotate the
string posts about their central axes to adjust tension in the
strings. The head portion has a linear edge portion and a
nonlinear edge portion. The linear and nonlinear edge
portions extend between the front side surface and rear side
surface of the head portion. The nonlinear edge portion has
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an arcuately curving configuration. The actuator knobs for a
group of tuning devices are disposed adjacent to the arcuate
or nonlinear edge portion while the actuator knobs for the
other group of tuning devices are disposed adjacent to the
linear edge portion of the head. By having the actuators for
some of the tuning devices extend in a direction opposite from
the actuators for the other tuning devices, spacing between
actuator knobs for the tuning devices is maximized. This
provides room for engagement of any one of the actuator knobs
by the hand of a person playing the instrument. A further
understanding of the invention can be achieved from the
following claim.
1. A musical instrument comprising a body portion, a neck
portion connected with and extending from said body portion, a
head portion connected with said neck portion, said head
portion having a front side and a rear side, a plurality of
strings which are connected with said body portion and extend
along neck portion to said head portion, a plurality of
strings posts, each of said strings of said plurality of
strings being connected with one of said string posts of said
plurality of string posts at a location adjacent to said front
side of said head portion, each of said string posts having a
central axis which extends transverse to said front and rear
sides of said head portion, said central axes of said string
posts being disposed in one plane which extends transverse to
said front and rear sides of said head portion, and actuators
which are connected with said strings posts and are manually
rotatable to rotate said string posts and are manually
rotatable to rotate said string posts about the central axes
of said string posts to adjust tension in said strings, a
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first plurality of said actuators extend in a first direction
from a first group of said string posts and a second plurality
of said actuators extend in a second direction from a second
group of said string posts.
The examiner relies on the following references:
Krebs 3,443,018 May 6, 1969
Lieber 4,248,127 Feb. 3, 1981
Claims 36-38 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1-13, 15, 16, and 21-38 stand rejected under 35
U.S.C. § 103 as being unpatentable over Krebs in view of
Lieber.
Rather than repeat the arguments of appellants and the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have considered the rejections advanced by the
examiner and the supporting arguments. We have, likewise,
reviewed the appellants’ arguments set forth in the brief.
We affirm-in-part.
The rejection under 35 U.S.C. § 112, second paragraph
The examiner rejects claims 36 and 37 (final rejection at
page 3 and answer at page 5) as being indefinite and confusing
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because the nomenclature of first, second, and third actuators
in claims 36 and 37 is inconsistent with the nomenclature in
claims 22, 23, and 29. We note that appellants have not
directly responded to the rejection under 35 U.S.C. § 112,
second paragraph. However, we note from Exhibits 2 and 3
attached to the appellants’ brief that the nomenclature in
claims 22 and 36 and corresponding dependent claims is
different from each other. The nomenclature is, however,
consistent in claims 22, 23, and 29 within themselves, and the
nomenclature used in claims 36 and 37 is consistent within
themselves. We observe that appellants can use different
ordinal nomenclature for the same elements in different
independent claims as long as it does not interfere with the
substance of the related claims. In this particular case, the
actuators are being called as first, second, and third
actuators, and the same actuators are designated differently
(e.g., first, third and second) in other unrelated claims
(Exhibits 2 and 3 of brief). Therefore, we are of the view
that the examiner has not presented a prima facie case of a
indefiniteness rejection under 35 U.S.C. § 112, second
paragraph, of claims 36 and 37. However, we reach a different
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conclusion regarding claim 38. The examiner has clearly set
forth the problem with claim 38 at page 5 of the examiner’s
answer. We find that there is a reasonable place for
confusion or indefiniteness in the recited language of claim
38, as is evident from a plain reading of the claim. We again
note that appellants have not responded to this rejection.
Therefore, we pro forma sustain the rejection of claim 38
under 35 U.S.C.
§ 112, second paragraph.
The Rejection of under 35 U.S.C. § 103
The examiner has rejected claims 1-13, 15, 16, and 21-38
(final rejection at pages 4-14 and answer at pages 5-13) over
Krebs and Lieber. Appellants argue, brief at page 11, that:
There is no reason for a person of ordinary skill in
the art to modify the musical instrument disclosed
in the patent to Krebs to have a first plurality of
actuators extend in a first direction and a second
plurality of actuators extend in a second direction
from string posts having central axes disposed in
one plane. This is because the patent to Lieber
does not disclose a first plurality of actuators
which extend in a first direction and a second
plurality of actuators which extend in a second
direction from string posts having central axes
disposed in one plane.
The examiner asserts (answer at page 7) that:
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It would have been obvious . . . to modify Krebs’
instrument as taught by Lieber to include a first
plurality of said actuators extend in a first
direction from a first group of said string posts
and a second plurality of said actuators extend in a
second direction from a second group of said string
posts for the purpose of tuning the instrument.
[Emphasis ours]
We do not agree with the examiner’s motivation to combine in
view of the established law that in rejecting claims under 35
U.S.C.
§ 103, the examiner bears the initial burden of presenting a
prima facie case of obviousness (see In re Rijckaert, 9 F.3d
1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993); In re
Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir.
1992)), which is established when the teachings of the prior
art itself would appear to have suggested the claimed subject
matter to one of ordinary skill in the art (see In re Bell,
991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993)).
In our view, here the examiner has used for motivation
the road map and the blueprint of the appellants’ invention.
This is impermissible. We find no suggestion either in Lieber
or in Krebs or in the combination of Lieber and Krebs which
would have led an artisan to make the modification suggested
by the examiner. The examiner has not pointed to any
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particular place in these two references, nor provided any
line of reasoning to make the suggested modification. Since
all the other independent claims 12, 21, 22, 32, and 36 each
have a limitation similar to the one discussed above we cannot
sustain the rejection of independent claims 1, 12, 21, 22, 32,
and 36, and their dependent claims 2-11, 13-16, 23-31, 33-35,
37, and 38 over Krebs in view of Lieber.
In summary, we have pro forma sustained the rejection of
claim 38 under 35 U.S.C. § 112, second paragraph, while we
have reversed the rejection of claims 36 and 37 under 35
U.S.C. § 112, second paragraph. We have also not sustained
the obviousness rejection of claims 1-13, 15, 16, 21-38
(except that claim 38 is subject to the above noted
clarification under 35 U.S.C. § 112, second paragraph).
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Appeal No. 2000-1161
Application No. 09/318,354
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Michael R. Fleming )
Administrative Patent Judge )
)
)
)
Parshotam S. Lall ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Mahshid Saadat )
Administrative Patent Judge )
PSL:tdl
Appeal No. 2000-1161
Application No. 09/318,354
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