Ex Parte Wilson

Board of Patent Appeals and Interferences

Aug 10, 2010

10684167 (B.P.A.I. Aug. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte ANDREW T. WILSON
_____________

Appeal 2009-003616
Application 10/684,167
Technology Center 2800
______________

Before ROBERT E. NAPPI, JOHN C. MARTIN, and
JOSEPH F. RUGGIERO, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

NEW DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Appellant has filed a “Request for Rehearing Under 37 C.F.R. 41.52”
(hereinafter “Request”) of our “Decision on Appeal” (hereinafter
“Decision”), mailed September 22, 2009.2
In affirming the rejection of independent claims 11 and 27 for
obviousness over Ito in view of Sitrick, we (1) concluded that claim 11 does
not require that each of the recited “at least two such apparatus” include the
recited “audio score mixing mechanism” (Decision 12) and (2) found that Ito
discloses a system including plural musical apparatus each containing an
audio score mixing mechanism, as required by claim 27 (id. at 11-14).
Appellant (Req. Reh’g 3) has requested a remand because the above reasons
differ from those given by the Examiner. This “New Decision on Appeal”
incorporates the contents of the initial “Decision” in its entirety and also
includes a discussion of the arguments in the Request as well as an
explanation of why we agree with the Examiner’s stated rationale for the
rejection. Pursuant to 37 C.F.R. § 41.50(b), we are hereby designating the
above-identified new reasons for affirming the rejection of claims 11 and 27
as constituting a new ground of rejection of those claims, thereby giving
Appellant a right to reopen prosecution before the Examiner (see infra).

2 A “Decision on Petition” mailed April 21, 2010, granted a petition under
37 C.F.R. § 1.181(a) to withdraw the Examiner’s “Notice of Abandonment”
mailed November 24, 2009.
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A. Appellant’s arguments against the new grounds of rejection
We note that the Request does not take issue with our above-noted
interpretation of claim 11 (Decision 12) or our finding that claim 11 thus
interpreted reads on Ito alone (id.).
Appellant takes issue with our finding that “Ito explains that each of
musical instruments 10, 20, and 30 and mixer apparatus 40 can be
implemented with apparatus like that depicted in Figure 3 ([Ito] ¶ 0041) . . .
.” (Decision 13.) Paragraph 0041 reads as follows:
Next, one embodiment of the electronic musical instruments
used as the aforesaid music apparatus 10, 20 and a mixer
apparatus of electronic musical instrument function incorporating
type used as mixer apparatus 40 will be described with reference
to FIG. 3.
Appellant argues that this paragraph
does not mean that the electronic musical instruments 10, 20 and
30 and mixer apparatus 40, when taken individually, must
necessarily include all of the components shown in FIG. 3
(including the mixing circuit 82). Indeed, upon reading
paragraphs 0041-0052 of Ito, it is possible to conclude that the
electronic musical instruments 10, 20 and 30 and mixer apparatus
40, only when taken collectively, include all of the components
shown in FIG. 3 (but when taken individually include only some
of the components shown in FIG. 3).
(Req. Reh’g 2.) This argument overlooks our reliance on paragraphs 0023,
0053, and 0078 (Decision 13-14), which are not addressed in the Request.
Paragraph 0023 describes Figure 3 as “a block diagram illustrating an
embodiment of a music apparatus (electronic musical instrument) and a
mixer apparatus of FIGS. 1 and 2.” Paragraph 0053 explains that “Bluetooth
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modules 11, 21, 31, 41 of apparatus 10 to 40 are set in advance so that music
apparatus 10 to 30 may function as slaves and mixer apparatus 40 may
function as a master.” Note that operation as a master is described in Ito as
employing a mixer. See Ito ¶ 0075 (“[T]raffic (transfer of information) can
be controlled efficiently by allowing mixer apparatus 40 to function as a
master and allowing the plurality of music apparatus 10 to 30 to function as
slaves.”). Paragraph 0078 explains that “even if the combination of mixer
apparatus 40 with plural music apparatus 10 to 30 is changed, one can meet
the change speedily” (emphasis added). We remain of the view that these
and the other paragraphs relied on in Ito would have been understood to
mean that each of apparatuses 10, 20, 30, and 40 includes all of the circuitry
depicted in Figure 3 (including mixing circuit 82) and is therefore capable of
being used as the master. Ito therefore anticipates claims 11 and 27.
Alternatively, we conclude that it would have been obvious to
implement each of Ito’s apparatuses 10, 20, 30, and 40 as a device having all
of the circuitry depicted in Figure 3 in order to avoid the need to produce
different types of master and slave devices.

B. Appellant’s arguments regarding the Examiner’s rationale
We are also affirming the rejection of claims 11 and 27 (and also of
the dependent claims) for the reasons given by the Examiner. In addressing
claims 11 and 27 in the Final Action, the Examiner found that “Ito only
teaches that one apparatus on the network has a mixer, as differentiated from
the claimed invention,” and concluded that “it would have been obvious to
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one of ordinary skill in the art to adapt the Ito/Sitrick combination so that
each device would have a mixing mechanism, as it has been held that the
mere duplication of working parts does not constitute nonobviousness (see
M.P.E.P. 2144.04).” Final Action 3. As correctly pointed out in the Brief
(at page 3), our reviewing court has held that “reliance on per se rules of
obviousness is legally incorrect and must cease.” In re Ochiai, 71 F.3d
1565, 1572 (Fed. Cir. 1995). The Examiner responded to this argument by
modifying the rationale of the rejection to additionally rely on Sitrick for a
teaching of
a music compositions communication system which comprises
workstations 105 which can be configured as either a master of a
network or as a slave in a network of workstations (Col. 9, lines
44-48; Col. 14, lines 48-63; Col. 16 lines 60-66; Col. 17 lines 3-
12), as is known in the art to be desirable so as to allow for
different musicians to be able to shift control of the overall
performance based on the circumstance or particular song being
played.
(Answer 4.) According to the Examiner, “[t]his [disclosure in Sitrick]
suggests to one of ordinary skill in the art that each musical apparatus have
its own mixing mechanism, as Ito teaches that the ‘master’ apparatus has a
mixing mechanism” (id. at 5-6.) We understand the Examiner’s position to
be that it would have been obvious in view of Sitrick to include sufficient
circuitry (including a mixer) in each of Ito’s apparatuses 10, 20, and 30 as
well as in apparatus 40 so that any one of these four apparatuses can serve as
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the master apparatus.3 Appellant responds by taking issue with the
Examiner’s statement, also made in support of the rejection, that
it was not only known by one of ordinary skill in the art that in a
group of such devices or musical instruments that the ability to
switch from a “master” to a “slave” was desirable, but Sitrick
demonstrates that it was both a known problem and a solution was
taught in the prior art.
(Id. (emphasis added).) According to Appellant,
[t]his is an incorrect interpretation of Sitrick. . . . Sitrick
does not disclose any synthesis devices (e.g., instruments)
integrated into the networked devices. That is, Sitrick
contemplates instruments that are separate from the networked
devices. Sitrick discloses networked workstations that can act as
master or master/slave (column 16, lines 65-66), but these
workstations only display musical compositions and record and
play performances—they do not include synthesis mechanisms.
Thus the “problem” and solution which the Examiner alleges
where known in the art w[]ere not actually taught by the prior art.
Instead, they were gleaned from Applicant’s disclosure.
(Reply Br. 3.) This argument is unpersuasive because the Examiner relies
on Ito rather than Sitrick for plural apparatuses each having the recited
“audio score synthesis mechanism.” Specifically, the Examiner finds that
each of Ito’s apparatuses 10, 20, and 30 contains an audio score synthesis
mechanism (Answer 3). The Examiner looks to Sitrick only for a teaching
of providing each of Ito’s apparatuses 10, 20, and 30 with sufficient circuitry
(including a mixer) so that any one of them can serve as the master apparatus

3 This rationale does not depend on the per se rule of “mere duplication of
working parts,” mentioned at page 4 of the Answer.
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as an alternative to apparatus 40, thereby permitting control to be shifted
among the different musicians.
In response to Appellant’s argument that “[i]ncluding a mixing
mechanism in each of the musical apparatus . . . makes possible a real-time
peer-to-peer musical jam session, a real-time peer-to-peer ‘swarm,’ or an ad-
hoc musical jam session (specification, page 6, lines 19-20 and page 7, lines
10-12)” (Br. 4), we adhere to our previous finding that “Appellant has not
demonstrated that the argued claim language requires such a capability.”
Decision 15. This finding is not addressed in the Request.
For the foregoing reasons, we are affirming the Examiner’s rejection
of independent claims 11 and 27 as well as the rejection of dependent claims
12-15 and 28-30, which are not separately agued. In re Nielson, 816 F.2d
1567, 1572 (Fed. Cir. 1987).

SUMMARY
The Examiner’s rejection of claims 11-15 and 27-30 under 35 U.S.C.
§ 103(a) for obviousness over Ito in view of Sitrick is affirmed.
We have also entered a new ground of rejection of claims 11 and 27
under § 102(e) and § 103(a) for anticipation by or obviousness over Ito.

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APPELLANT’S OPTIONS FOR RESPONDING TO
THE DECISION AND NEW GROUND OF REJECTION
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) (2010)
provides that “Appellant may file a single request for rehearing within two
months of the date of the original decision of the Board” (emphasis added).
Regarding the new ground of rejection of claims 11 and 27 entered
pursuant to 37 C.F.R. § 41.50(b), that paragraph explains that “[a] new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review.” Appellant, within two months from the date of this
decision, must exercise one of the following two options with respect to the
new ground of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
37 C.F.R. § 41.50(b) (2010). See also MPEP § 1214.01 (8th ed., rev. 7, July
2008).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(v) (2010).

AFFIRMED; 37 C.F.R. § 41.50(b)
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