Ex Parte Wood

Board of Patent Appeals and Interferences

Jan 20, 2010

10649932 (B.P.A.I. Jan. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LAWSON A. WOOD
____________

Appeal 2008-002593
Application 10/649,932
Technology Center 2400
____________

Decided: January 20, 2010
____________

Before HOWARD B. BLANKENSHIP, JOHN A. JEFFERY, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 5-7, 13, 14, 17, 21-24, 27, 28, and 33-36. Claims 2-4,
8-12, 15, 16, 18-20, 25, and 26 have been cancelled. The Examiner indicates
that claims 29-32 and 37 would be allowable if rewritten in independent
form. (Ans. 2). We have jurisdiction under 35 U.S.C. § 6(b).
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We affirm.
STATEMENT OF THE CASE
INVENTION
Appellant’s invention is related generally to recognizing and
distributing music. More particularly, the invention on appeal is directed to
a method for recognizing a musical composition from a specimen that is
provided by a customer who hums, sings, or vocalizes the specimen or picks
the melody out on a simulated piano or other tone generator. Appellant’s
invention also permits a customer to preview a musical composition before
distributing the composition to the customer over the Internet. (Spec. 1).

ILLUSTRATIVE CLAIM
1. A method for distributing music over the internet,
comprising the steps of:

(a) recognizing a plurality of musical compositions from
a specimen vocalized by a person, by comparing a pattern
derived from the specimen with patterns from a pattern library;

(b) sending information to identify the musical
compositions in writing to the person over the internet;

(c) receiving a request from the person over the internet
for an audio preview of one of the musical compositions, which
has been selected by the person;

(d) sending a corrupted version of some or all of the
selected musical composition to the person over the internet;

(e) receiving a request from the person over the internet
for the selected musical composition without corruption; and

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(f) sending the selected musical composition without the
corruption to the person, wherein the person is provided with a
set of keys to hear and choose from before vocalizing the
specimen, and

wherein the pattern derived from the specimen comprises
pitch information.

PRIOR ART
Wiser US 6,385,596 B1 May 7, 2002

Roger J. McNab et al., “The New Zealand Digital Library MELody inDEX,”
D-Lib Mag., May 1997, pp. 1-11 (“McNab”).

EXTRINSIC EVIDENCE1
Wadhams US 5,225,618 Jul. 6, 1993
Iwamura US 6,188,010 B1 Feb. 13, 2001
Yamaura US 6,287,124 B1 Sep. 11, 2001

THE REJECTION 2
1. The Examiner rejected claims 1, 5-7, 13, 14, 17, 21-24, 27, 28, and
33-36 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Wiser and McNab.

1 We do not reach the issue of the Examiner’s proffered extrinsic evidence
in deciding this appeal. See In re Hoch, 428, F.2d 1341, 1342 n.3 (CCPA
1970) ("Where a reference is relied on to support a rejection, whether or not
in a 'minor capacity,' there would appear to be no excuse for not positively
including the reference in the statement of the rejection.").
2 The Examiner has withdrawn the § 103 rejection set forth in the Final
Rejection of claims 29-32 and 37. The Examiner indicates these claims
would be allowable if rewritten in independent form. (Ans. 2).
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ISSUES
Appellant argues specific limitations (App. Br. 5-10) that we address
infra. The Examiner contends that each argued limitation is taught or
would have been suggested by the combination of cited references or was
well known in the art at the time of the invention. (Ans. 11-15). Based upon
our review of the administrative record, we have determined that the
following issues are dispositive in this appeal:

Issue 1: Under § 103, has Appellant shown the Examiner erred by
finding that the combination of Wiser and McNab would have taught or
suggested “wherein the person is provided with a set of keys to hear and
choose from before vocalizing the specimen”? (Independent claim 1,
emphasis added).

Issue 2: Under § 103, are the limitations argued by Appellant
regarding claims 1, 14, 21, and 28 directed to nonfunctional descriptive
material?

Issue 3: Under § 103, has Appellant shown the Examiner erred in
rejecting claim 34 by finding that the combination of Wiser and McNab
would have taught or suggested a person generating a musical specimen
using an apparatus configured for sending and receiving information via a
communication network?

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Issue 4: Under § 103, has Appellant shown the Examiner erred in
rejecting claim 33 by finding that the combination of Wiser and McNab
would have taught or suggested “displaying the simulated musical
instrument on a monitor that additionally displays a plurality of options for
use by the person, the options including a record option, a play option, a
back-up option, and a send option, the simulated musical instrument and the
options being actuated by the person using a pointing device”?

Issue 5: Under § 103, has Appellant shown the Examiner erred in
rejecting claim 35 by finding that the combination of Wiser and McNab
would have taught or suggested “displaying on the screen a mapping that
associates notes of the scale with keys of the keyboard”?

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF):
The Wiser reference
1. Wiser teaches an online music distribution system whereby
audio data may be previewed prior to purchase over a public
network. (Abstract).
The McNab reference
2. McNab teaches that the user can sing or hum or play a few
notes and search the tune in a database of 9,400 folk songs.
(Abstract, page 1).
3. McNab teaches that the user gets back the notes in musical
notation. (Id.).
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4. McNab teaches that “[i]n some applications, it is desirable to tie
note identification to a particular standard of tuning, such as A-
440. For a melody retrieval application, however, it is often
desirable to adapt to the user’s own tuning and tie note
identification to musical intervals rather than to any standard.”
(Page 4, ¶2).

5. McNab displays on a display screen a grand staff (including
both the bass and treble clefs separated by middle C) that
associates musical notes of the scale with musical notes such as
Db, Gb, F, Gb, Bb, Ab, Gb, and Ab as shown in the bass clef
portion of Figure 6. (Page 9).

6. McNab teaches that the user can listen to (i.e., play) the
displayed tune (Page 8, last paragraph), and McNab also
appears to show “loudspeaker” icons in Figure 6 that may be
selected by the user to play the “best match” tunes. (Fig. 6, page
9).

PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 417.
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Invention or discovery is the requirement which constitutes the
foundation of the right to obtain a patent . . . unless more ingenuity
and skill were required in making or applying the said improvement
than are possessed by an ordinary mechanic acquainted with the
business, there is an absence of that degree of skill and ingenuity
which constitute the essential elements of every invention.

Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v. Greenwood,
52 U.S. 248, 267 (1850)) (Hotchkiss v. Greenwood was cited with approval
by the Supreme Court in KSR, 550 U.S. at 406, 415, 427).
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006). Therefore, we look to Appellant’s Briefs to show error in the
Examiner’s proffered prima facie case.

CLAIM GROUPING
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of claims 1, 14, 21, 28, 33, 34, and 35. See 37 C.F.R.
§41.37(c)(1)(vii).

ANALYSIS
At the outset, we consider Appellant’s arguments in the Briefs only to
the extent that such arguments are directed to claimed subject matter.3

3 Patentability is based upon the claims. “It is the claims that measure the
invention.” SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121
(Fed. Cir. 1985) (en banc). A basic canon of claim construction is that one
may not read a limitation into a claim from the written description.
Renishaw plc v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir.
1998).
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Issue 1
We decide the question of whether Appellant has shown the Examiner
erred in rejecting independent claim 1 by finding that the combination of
Wiser and McNab would have taught or suggested “wherein the person is
provided with a set of keys to hear and choose from before vocalizing the
specimen. (Independent claim 1, emphasis added).
Appellant contends that even if the person elects to play the musical
specimen using an acoustic instrument and thus uses a microphone to pick
up the notes, there is no reason why this person would abandon his original
intention to play the sample and decide to sing or hum it instead. (App. Br.
6, last paragraph). Appellant further avers that because McNab is capable of
handling either standard tuning (e.g., concert A-440)4 or the user’s own
tuning, the McNab reference would not have motivated an artisan to provide
a person who wanted to vocalize a specimen with “a set of keys to hear and
choose from.” (App. Br. 7; see also claim 1).
The Examiner responds that because McNab suggests humming or
playing a few notes (Abstract), it is reasonable for an artisan to have
explored the option of playing a keyboard followed by humming a sample of
the music to see which method produces a better result. (Ans. 9). The
Examiner also avers that an artisan may use a keyboard to tune his own
voice. (Id.).

4 See FF 4.
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We find the Examiner presents the stronger argument. We note that
the Supreme Court has stated that courts should “take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR, 550 U.S. at 418.
This reasoning is applicable here. We find McNab inherently teaches
the use of an instrument because McNab expressly discloses that the user
can sing or hum or play a few notes and search the tune in a database of
songs. (FF 2). Therefore, we find an artisan possessing creativity and
common sense would have known that if they could play an instrument to
provide a melody to be searched and matched by McNab’s invention (FF 2),
that they could also use an instrument to provide a key (i.e., pitch or scale)
reference if they decided to sing or hum the melody.
Because different individuals have different natural vocal ranges, we
find that using an instrument to provide a key reference best suited to one’s
own vocal range would have been readily obvious to an artisan at the time of
the invention. We further conclude that a “set of keys” can consist of a
single key or all the available keys (or any subset thereof); these “keys”
(pitch or scale references) being readily accessible on any common
instrument, such as a piano or a guitar.5
In addition, we find Appellant's arguments for patentability regarding
the claimed set of keys (heard by a person) are predicated on nonfunctional
descriptive material. See our discussion of Issue 2 infra. For at least these

5 Under basic set theory, a set may consist of the empty set, or a set
containing one or more elements.
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reasons, we find Appellant has not sustained the requisite burden on appeal
in providing arguments or evidence persuasive of error in the Examiner’s
obviousness rejection of independent claim 1.

Issue 2
We decide the question of whether the specific limitations argued by
Appellant for claims 1, 14, 21, and 28 are directed to nonfunctional
descriptive material.
In a precedential decision, an expanded panel recently held that
elements that do not affect the claimed process are nonfunctional material
and are merely descriptive. See Ex parte Nehls, 88 USPQ2d 1883, 1887-88
(BPAI 2008) (precedential) available at
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071823.pdf.
We note that functional descriptive material consists of data structures
or computer programs which impart functionality when employed as a
computer component. In contrast, nonfunctional descriptive material refers
to data content that does not exhibit a functional interrelationship with the
substrate and does not affect the way the computing processes are
performed. See MPEP § 2106.01 (“‘Nonfunctional descriptive material’
includes but is not limited to music, literary works, and a compilation or
mere arrangement of data.”) (emphasis added). Thus, musical elements such
as keys (pitch or scale references), musical specimens (melodies), and the
like (that are generated and heard by a person) are nonfunctional descriptive
material per se. (See the “set of keys” limitation recited in claim 1 and
discussed supra).
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Regarding independent claims 14 and 21, Appellant contends that the
recited “codes” distinguish over the Examiner’s proffered combination of
Wiser and McNab. (App. Br. 7-8). We note that claim 14 recites step (a)
where a person picks out a “musical specimen . . . the specimen comprising
codes to identify the notes picked out . . . .” (underline added). However,
nothing in the language of claim 14 positively recites that the claimed
“codes” (representing the musical specimen) are used to perform or affect
any computer-implemented function. We also find the argued language of
claim 21 (“sending codes that identify notes in the specimen”) does not
perform or affect any computer-implemented function. In particular, we
find the type (or arrangement) of codes sent does not affect the recited step
of sending.6
Therefore, we find the functionality of the computer is not changed or
performed differently according to the particular “codes” that represent a
sequence of musical notes (i.e., a musical specimen) within the meaning of
independent claims 14 and 21. As to independent claim 1 (discussed supra),
we find Appellant's arguments for patentability regarding the recited “set of
keys” (that are heard by a person) are also predicated on nonfunctional
descriptive material.

6 But cf. Appellant’s instant claimed “codes” with a functional MIDI
(Musical Instrument Digital Interface) keycode that corresponds to a
particular note on an instrument that can be read by a computer to play or
reproduce that particular note (and thereby affect a computer-implemented
function), in a manner analogous to the function of a player piano roll that
utilizes punched holes in a paper roll to code musical notes to be reproduced
by a machine (player piano).

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Turning to dependent claim 28, Appellant similarly presents
arguments regarding the “tempo” provided to the person for vocalizing the
(musical) specimen. (App. Br. 9). We find a “tempo” heard by a person is
nonfunctional descriptive material. We note that claim 28 and claim 1 (from
which claim 28 depends) do not positively recite any machine functionality
that is involved in generating the “user-adjustable tempo,” which we
conclude could have been provided (and adjusted) by a person tapping the
musical tempo within the meaning of claim 28 (and claim 1).
The content of such nonfunctional descriptive material is not entitled
to weight in the patentability analysis. Because Appellant's arguments
concerning the “codes,” “set of keys,” and musical “tempo” limitations
would require us to give weight to nonfunctional descriptive material, we
find Appellant has not met his burden of showing error in the Examiner’s
specific findings of fact. Accordingly, we sustain the Examiner’s
obviousness rejection of independent claims 1, 14, and 21, and also
associated dependent claims 5-7, 13, 17, 22-24, and 27 (not argued
separately) which fall therewith. For the same reason, we sustain the
Examiner’s obviousness rejection of dependent claim 28 (argued separately).

Issue 3
We decide the question of whether Appellant has shown the Examiner
erred in rejecting independent claim 34 by finding that the combination of
Wiser and McNab would have taught or suggested a person generating a
musical specimen using an apparatus configured for sending and receiving
information via a communication network.
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Appellant contends that nothing in McNab would have led an
ordinarily skilled person who wanted to improve Wiser’s system in some
way to generate a (musical) specimen using an apparatus configured for
sending and receiving information via a communication network. (App. Br.
8).
The Examiner responds, inter alia, that McNab does not restrict itself
to the use of a specific instrument. (Ans. 11).
We note that Wiser teaches sending and receiving music over a
communications network. (FF 1). We found supra that McNab inherently
teaches the use of an instrument to provide a melody to be searched and
matched by McNab’s invention (FF 2). We further note that “[t]he test for
obviousness is what the combined teachings of the references would have
suggested to one of ordinary skill in the art.” In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
Moreover, “when a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.” KSR, 550 US at 417 (citing Sakraida v. AG Pro, Inc., 425 U.S.
273, 282 (1976)).
This reasoning is applicable here. Because we find familiar elements
such as a musical instrument (apparatus) and a network for
sending/receiving music would have been readily combinable by an artisan
using known methods to obtain predictable results, we agree with the
Examiner’s legal conclusion that Appellant’s claim 34 would have been

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obvious to an artisan having knowledge of the combined teachings and
suggestions of Wiser and McNab. Therefore, we find Appellant has not
sustained the requisite burden on appeal in providing arguments or evidence
persuasive of error in the Examiner’s § 103 rejection of claim 34.

Issue 4
We decide the question of whether Appellant has shown the Examiner
erred in rejecting dependent claim 33 by finding that the combination of
Wiser and McNab would have taught or suggested “displaying the simulated
musical instrument on a monitor that additionally displays a plurality of
options for use by the person, the options including a record option, a play
option, a back-up option, and a send option, the simulated musical
instrument and the options being actuated by the person using a pointing
device.”
In the Brief, Appellant merely recites the aforementioned language,
and states that “Section 9” of the Final Rejection takes the position that this
would have been obvious, without identifying any particular item of prior art
or offering an explanation as to why an ordinarily skilled person who wanted
to improve Wiser/McNab would have been drawn to this prior art. (App. Br.
9).
We note that the Examiner provides a detailed response on pages
12-13 in the “Response to Arguments” section of the Answer. In particular,
the Examiner finds that McNab does not tie the “playing” option to any
specific instrument (thus suggesting that any instrument could be used).
(Ans. 12, ¶3; see also FF 2). We agree with the Examiner’s findings.
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The Appellant's Reply Brief (filed Nov. 19, 2007) incorporates by
reference a series of earlier Reply Briefs that refer to the Reply Brief filed
Nov. 6, 2006 that asserts the Examiner has relied on impermissible hindsight
in formulating the obviousness rejection of claim 33. (See Reply Brief filed
Nov. 6, 2006, page 3).
While we are fully aware that hindsight bias often plagues
determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36
(1966), we are also mindful that the Supreme Court has clearly indicated 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,”
KSR, 550 U.S. at 416.
This reasoning is applicable here. We find that McNab at least
temporarily stores the melody provided by the user for comparison with the
database of 9,400 songs (FF 2); therefore, we find McNab must necessarily
record the user’s sampled melody for storage. We also note that McNab
teaches that the user can listen to (i.e., play) the displayed tune, and McNab
also appears to show “loudspeaker” icons that may be selected by the user to
play the closest matching tunes. (Fig. 6, FF 6). Thus, we find McNab at
least suggests the claimed record, play, and backup options. (Claim 33).
Wiser teaches sending music over a network, which we find teaches or
would have suggested the recited “send” option. (FF 1; claim 33).
While the Examiner has introduced extrinsic evidence to support his
legal conclusion of obviousness (Wadhams; see Ans. 13), we need not
address Wadhams to reach a finding that the weight of the evidence supports
the Examiner’s determination that the claimed simulated musical instrument,
and the recited record, play, backup, and send options that can be actuated
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by a pointing device (e.g., a mouse) would have each been well within the
level of knowledge possessed by an artisan having the benefit of Wiser and
McNab at the time of the invention.
Appellant’s arguments are not persuasive since the Examiner need not
show “precise teachings directed to the specific subject matter of the
challenged claim” and can take into account “the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S.
at 418. Therefore, we find Appellant has not sustained the requisite burden
on appeal in providing arguments or evidence persuasive of error in the
Examiner’s § 103 rejection of claim 33.

Issue 5
We decide the question of whether Appellant has shown the Examiner
erred in rejecting dependent claim 35 by finding that the combination of
Wiser and McNab would have taught or suggested “displaying on the screen
a mapping that associates notes of the scale with keys of the keyboard.”
Appellant contends that these limitations would not have been
obvious or well known to an artisan having knowledge of McNab.
(App. Br. 9-10).
We find McNab displays on a display screen a grand staff (including
both the bass and treble clefs) that associates musical notes of the scale (D-
flat major, as clearly indicated by the key signature having five flats) with
specific musical notes such as Db, Gb, F, Gb, Bb, Ab, Gb, Ab, as clearly
shown in the bass clef portion of Figure 6 (FF 5). Because a piano keyboard
also contains each of the notes (Db, Gb, F, Gb, Bb, Ab, Gb, and Ab)
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depicted in the bass clef portion of the grand staff of McNab (FF 5; Fig. 6),
we find the combination of Wiser and McNab clearly teaches “displaying on
the screen a mapping that associates notes of the scale with keys of the
keyboard.”
Clearly, such “mapping” from the notes of the musical staff to the
corresponding notes on an instrument is the essence of musical notation that
has evolved over the centuries. (See FF 3 and 5). Therefore, we agree with
the Examiner’s legal conclusion that the subject matter of Appellant’s claim
35 would have been obvious to an artisan having knowledge of Wiser and
McNab. Accordingly, we find Appellant has not sustained the requisite
burden on appeal in providing arguments or evidence persuasive of error in
the Examiner’s § 103 rejection of claim 35.

CONCLUSION
Appellant has not shown the Examiner erred in rejecting claims 1,
5-7, 13, 14, 17, 21-24, 27, 28, and 33-36 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Wiser and McNab.
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ORDER
We affirm the Examiner’s decision rejecting claims 1, 5-7, 13, 14, 17,
21-24, 27, 28, and 33-36 under 35 U.S.C. § 103(a).
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

pgc

L. Allen Wood
873 N. Frederick St.
Arlington VA 22205