Ex Parte Sugiyama

Board of Patent Appeals and Interferences

Sep 23, 2009

09377827 (B.P.A.I. Sep. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AKIRA SUGIYAMA
____________

Appeal 2009-012806
Application 09/377,827
Technology Center 2800
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Decided: September 23, 2009
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Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1-7 (Final Office Action, mailed Oct. 20,
2004, 1), the only claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b).
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We REVERSE.
STATEMENT OF THE CASE
The invention is directed to a data processor which converts non-
musical input data into musical data in the form of scales on the music staff.
(See Specification (“Spec.”), Summary of the Invention.)
The Examiner relies on the following evidence to establish
unpatentability (Examiner’s Answer (“Ans.”), mailed Apr. 17, 2009, 3):
Tanimoto 4,450,743 May 29, 1984
Satoh 5,038,659 Aug. 13, 1991

Appellant requests review of the sole ground of rejection (Appeal
Brief (“Br.”), filed Aug. 22, 2005, 5): claims 1-7 under 35 U.S.C. § 103(a)
as unpatentable over Satoh in view of Tanimoto.

ISSUE
Has Appellant shown that the Examiner’s proposed motivation for
modifying Satoh’s apparatus to include Tanimoto’s note code table is based
on improper hindsight reasoning?
We answer this question in the affirmative.
FINDINGS OF FACT
1. Appealed claim 1 is reproduced below:
1. A data processor using a computer and a staff notation
comprising:
a computer keyboard for input of character or symbol
data, not related to musical data, into said data processor;
a note code table to correspond the inputted character or
symbol data input into said data processor with musical data
comprising scales of music staff notation;
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a note decoder to decode the inputted character or symbol
data to corresponded to scale code data using said note code
table;
a note code storage device to store output data from said
note decoder in order as music staff notation data; and
an outputting means for outputting the music staff
notation data from the note code storage device.

2. The Examiner finds that Satoh discloses the invention as
claimed with the exception of “a table providing a listing of note codes that
correspond to the input data, in the manner specifically claimed.” (Ans. 4.)
The Examiner relies on Tanimoto for a disclosure of a data processor which
utilizes a note code table as claimed, i.e., “a list corresponding data input to
musical scales or phrases of music staff notation.” (Ans. 4.)
3. Satoh relates to “[a] musical score block copy forming
apparatus.” (Abstract.) The apparatus includes a keyboard for inputting,
into an arithmetic processing unit, the words of a musical score (col. 9, ll. 8-
10; col. 10, 40-41) and a piano keyboard for inputting musical note data for
the musical score (col. 9, ll. 37-38). The musical note data includes tone
pitch data and tone duration data. (Col. 9, ll. 14-15.) The words are
assigned to the corresponding musical notes of the score. (Col. 9, ll. 63-64.)
The length of each word is calculated (col. 9, ll. 65-67) so that the words are
properly positioned with respect to their corresponding notes (col. 11, ll. 24-
25) when displayed on a screen and/or printed as a musical score block
copy. (See col. 6, ll. 31-32 (“A note with a word must be moved so that
adjacent words do not contact each other.”).) Data stored in the memory of
the processing unit includes a Japanese conversion table. (Col. 9, ll. 13-16.)
“The Japanese conversion table is used when words input in Roman
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characters are converted to corresponding Japanese words.” (Col. 9, ll. 17-
20.)
4. Tanimoto discloses an electronic musical instrument having a
plurality of keys, including numeral keys (col. 3, ll. 8-11), which may be
activated to define pitches of musical notes (col. 3, ll. 15-16) and durations
of musical notes (col. 3, ll. 33-34). The Examiner identifies columns 5-6 of
Tanimoto as illustrating the use of a note code table corresponding the input
keys with the musical note data. (Ans. 4.) The note data is stored as musical
information which may be read by a musical generator to produce audio
music in response to the stored musical information. (Abstract.)
5. The Examiner’s proposed motivation for combining Satoh and
Tanimoto is expressed as follows:
It would have been obvious to one of ordinary skill in the
ad [sic, art] at the time the invention was made to utilize the
teachings of Tanimoto with the apparatus of Satoh et al., because
Tanimoto provides a clear correlation of input data with stored
table data including note cedes [sic, codes] to produce output
data, wherein Satoh et al. provide correlation of input data with
output data, only failing to show a clear correlation with note
codes. Satoh et al. clearly shows the correspondence of notes
and input characters as seen in figures 18 and 19.
It would have been obvious in view of Satoh et al. to
provide the input data corresponding with the notes or note
codes, as taught by Tanimoto, wherein the combination provides
teachings of input data to the conversion of output data, wherein
the output data corresponds to musical data.

(Ans. 5.)
PRINCIPLES OF LAW
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
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with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 419 (2007) (quoting
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The fact finder must be
aware “of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 420 (citing
Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a
“temptation to read into the prior art the teachings of the invention in
issue”).)
ANALYSIS
Appellant has persuasively argued that the Examiner’s proposed
motivation for modifying Satoh’s apparatus to include Tanimoto’s note code
table is based on improper hindsight reasoning. As pointed out by
Appellant, Satoh uses separate input sources for entry of word data and
musical note data. (App. Br. 12.) Satoh likewise outputs both the received
word data and corresponding musical notes. (Id.) Satoh does not require
any type of conversion of word data to musical note data, or conversion of
musical note data to word data. (Id.) Rather, the only table required by
Satoh is for conversion of Roman characters into Japanese characters. (Id.)
The Examiner has not explained why the ordinary artisan would have been
motivated to modify Satoh’s apparatus to include a note code table for
converting input word data to musical note data other than identifying the
disclosure of a note code table in Tanimoto. (See App. Br. 10 (characterizing
the Examiner’s rejection as “based on the conclusion that, once combined,
the two references disclose the presently claimed invention”).)
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CONCLUSION
Appellant has identified reversible error in the Examiner’s obvious
determination. Therefore, we do not sustain the rejection of claims 1-7
under 35 U.S.C. § 103(a) as unpatentable over Satoh in view of Tanimoto

REVERSED

PL Initial:
sld

AKIRA SUGIYAMA
3-1-27-102 FUJINOKIDAIDANCHI
SUGESENGOKU, TAMA-KU
KAWASAKI-SHI, KANAGAWA-KEN,
JAPAN