Ex Parte Holm et alDownload PDFPatent Trial and Appeal BoardDec 30, 201310544327 (P.T.A.B. Dec. 30, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JUKKA HOLM and PAULI LAINE ____________________ Appeal 2011-013600 Application 10/544,327 Technology Center 3700 ____________________ Before MICHAEL W. KIM, EDWARD A. BROWN, and LYNNE H. BROWNE, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-013600 Application 10/544,327 2 STATEMENT OF THE CASE Jukka Holm and Pauli Laine (“Appellants”) appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 12, 13, 17, 26, 27, 30, 32, and 35-47. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER Claims 17, 36, and 44 are the independent claims on appeal. Claims 17 and 36, reproduced below, are illustrative of the claimed subject matter: 17. A method comprising: receiving musical synchronization information at a first device of an ensemble, said first device being a mobile phone; and in response to the received information, prompting a user of the first device to shake the first device so as to produce percussion sounds. 36. An apparatus comprising: at least one processor; and at least one memory including computer program code, the at least one memory and the computer program code configured to, with the at least one processor, cause the apparatus to perform at least the following, receive musical synchronization information at the apparatus of an ensemble, said apparatus being a mobile phone; and in response to the received information, prompt a user of the apparatus to shake the apparatus so as to produce percussion sounds. Appeal 2011-013600 Application 10/544,327 3 REJECTIONS Claims 44-47 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.1 Claims 12, 13, 17, 26, 27, 30, 32, and 35-47 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nishitani (US 6,919,503 B2; issued Jul. 19, 2005) and Matsuda (US 2001/0014616; published Aug. 16, 2001).2 ANALYSIS Rejection under 35 U.S.C. § 101 Claim 44 is directed to a “computer-readable storage medium.” The Examiner determined that claim 44 and its dependent claims 45-47 are directed to non-statutory subject matter because the broadest reasonable interpretation of a claim drawn to a “computer-readable medium” typically covers non-transitory, tangible media and transitory propagating signals per se, particularly when the specification is silent. Ans. 4-5 (citing MPEP § 2111.01). Appellants contend that because the Examiner acknowledged a claim interpretation “where the computer-readable storage medium encompasses non-transitory signals,” there is no reasonable basis or valid reason for interpreting the claims as being directed to non-statutory subject matter. Reply Br. 3. However, this contention does not apprise us of any error in the Examiner’s interpretation of “computer-readable storage medium.” 1 This is a new ground of rejection as presented in the Examiner’s Answer. Ans. 3. 2 The Examiner refers to Matsuda as “Matcuda” in the Examiner’s Answer. See, e.g., Ans. 5. Appeal 2011-013600 Application 10/544,327 4 Appellants also contend that the Examiner’s claim interpretation destroys its “right to a patent.” Reply Br. 3. We disagree. The Examiner’s claim interpretation does not eliminate Appellants’ right to re-open prosecution of the application before the Examiner. As one option, Appellants may consider amending claims 44-47 by inserting “non- transitory,” which may be sufficient to overcome the presumption that the “computer-readable storage medium” encompasses a signal.3 Appellants also contend that claims 44-47 may not be interpreted to include transitory signals because these claims recite a “‘computer-readable storage medium.’” Reply Br. 3. According to Appellants, “a transitory signal, per se, is not capable of storing one or more sequences of instructions (they may carry such instructions but they cannot store such instructions).” Id. These contentions are also not persuasive. Appellants have not directed us to a definition of “computer-readable storage medium” in the Specification, or to any disclosure therein, that limits the form of the claimed “computer-readable storage medium” so as to exclude transitory signals. Hence, we determine that the ordinary and customary meaning of “computer-readable storage medium” to one of ordinary skill in the art is sufficiently broad to encompass both non- transitory and transitory media. See Ex parte Mewherter, 107 USPQ2d 1857 (PTAB) (precedential). Accordingly, we agree with the Examiner that claims 44-47 are not directed to patent-eligible subject matter. Thus, we sustain the rejection of claims 44-47 under 35 U.S.C. § 101. 3 See U.S Patent & Trademark Office, Evaluating Subject Matter Eligibility Under 35 USC § 101: August 2012 Update (2012) (pp. 11-14). Appeal 2011-013600 Application 10/544,327 5 Rejection under 35 U.S.C. § 103(a) Regarding claim 17, the Examiner found that Nishitani discloses the claimed method except for the mobile device being a mobile phone. Ans. 5- 6. Particularly, the Examiner found Nishitani discloses: receiving musical synchronization information (i.e. Musical Instruments Digital Interface or background music, col. 10, lines 43-46) at a first device of an ensemble (i.e. stationary musical tone generating apparatus taken together with one of the operating terminals is a first device, wherein the first device is a first operating terminal) and in response to the received information, prompting a user of the first device to shake the first device so as to produce percussion sounds (i.e. a player shakes the first operating terminal with an accelerometer or motion sensor for detecting the device's position to generate musical compositions; col. 19, lines 12-52). Id. The Examiner clarified that Nishitani’s “operating terminal (P1),” and not additionally the tone generating apparatus, corresponds to the claimed “first device” (id. at 8-9). Appellants contend that Nishitani’s operating terminal does not “receive musical synchronization information at a first device.” App. Br. 10; emphasis original. According to the Examiner, “the term ‘at’ does not reflect direct transmittal of the musical composition information to the operating terminal[,]” but “refers to a general location/position which can be a general position of the player holding a first device (i.e. first operating terminal).” Ans. 8; emphasis original. The Examiner determined that “the sound of the musical synchronization information is traveled to the first player operating the first operating terminal. This shows that the musical synchronization information is received at a first device because the Appeal 2011-013600 Application 10/544,327 6 information is receive[d]/heard by the player holding the first device (col. 18, line 64 – col. 19, line 11).” Id. (emphasis added). Nishitani discloses a musical tone generation control system including a musical tone generating apparatus (600’) and operating terminals 800-1 and 800-2. Nishitani, col. 19, ll. 42-52; fig. 15A; see also fig. 12. If an operator at position P1 shakes the operating terminal 800-1, a signal indicative of the acceleration is transmitted as motion information to the musical tone generating apparatus 600’. Id.; see also id. at col. 10, ll. 17-27. The motion information is analyzed by the musical tone generating apparatus, which emits sound from its speaker system according to the motion information. Id. at col. 10, ll. 28-60; see also fig. 2. We agree with Appellants that the Examiner did not show that Nishitani’s operating terminal “receiv[es] musical synchronization information at a first device,” as claimed. The Patent and Trademark Office gives claims their broadest reasonable interpretation consistent with the specification, reading claim language as it would be interpreted by one of ordinary skill in the art. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Appellants contend that it is clear from the claim language that “the musical synchronization information is received by the same device that a user is prompted to shake.” Reply Br. 4. Appellants also contend that “the receipt of information ‘at’ the first device is equivalent to the receipt of the information ‘by’ the first device.” Id. at 6. Accordingly, Appellants contend that claim 17 should be construed as meaning “receiving musical synchronization information by a first device.” Emphasis added. In contrast, the Examiner’s interpretation appears to require only that “musical synchronization information” be heard by Appeal 2011-013600 Application 10/544,327 7 someone holding the first device, or more specifically, only require that sound waves including the musical synchronization information physically reach the first device, without any intake or further processing of the musical synchronization information by the first device. We find Appellants’ interpretation of “at” to be consistent with disclosure in Appellants’ Specification. In this regard, we note that the Specification describes a hand-portable electronic device including “input means operable to receive the musical synchronization information.” Spec. 2, ll. 10-17. According to this disclosure, the hand-portable electronic device itself receives the musical synchronization information. Appellants’ Specification also describes a hand-held electronic device 1 including “an input 15 for receiving data.” Id. at 3, ll. 13-15; fig. 2. In view of these disclosures, we agree with Appellants that the Examiner’s construction of the limitation “receiving musical synchronization information at a first device,” as reading on a person holding Nishitani’s operating terminal hearing sound is unreasonable. As discussed supra, and as noted by Appellants (Reply Br. 5), Nishitani discloses transmitting motion information from the operating terminals 800 to the musical generating apparatus (600, 600’) to cause musical tones to be emitted by its speaker system. The Examiner did not identify any disclosure in Nishitani that the operating terminals receive sound, let alone “musical synchronization information.” The Examiner relied on Matsuda for disclosure pertaining to a mobile phone including an accelerometer. Ans. 6 (citing Matsuda, para. [0067]). As such, the Examiner’s application of Matsuda does not cure the deficiencies of the Examiner’s reliance on Nishitani. Thus, we do not Appeal 2011-013600 Application 10/544,327 8 sustain the obviousness rejection of claim 17, or its dependent claims 12, 13, 26, 27, 30, 32, and 35. Claim 36 is directed to an apparatus and recites, inter alia, “the at least one memory and the computer program code configured to, with the at least one processor, cause the apparatus to . . . receive musical synchronization information at the apparatus of an ensemble.” Emphasis added. Independent claim 44, discussed supra, recites the limitation “receiving musical synchronization information at the apparatus of an ensemble.” The Examiner’s findings for claims 36 and 44 are same as those made for claim 17. Ans. 5-6. Thus, we also do not sustain the obviousness rejection of claims 36 and 44, or their dependent claims 37-43 and 45-47. New ground of rejection Independent claims 17 and 44 both recite the limitation “in response to the received information, prompting a user of the first device to shake the first device so as to produce percussion sounds.” Emphasis added. Independent claim 36 recites similar language. The Examiner correctly found that Appellants’ Specification does not define “prompt.” Ans. 9. In fact, we note that the terms “prompt” and “prompting” are not found in Appellants’ original disclosure. Appellants contend that, according to claim 17, “the first device receives the information and then, using this information, sends a prompt to the user of the device, that an action, i.e., shaking the device, is necessary.” Reply Br. 7 (emphasis added). However, claim 17 (and claims 36 and 44) does not recite that the first device “sends a prompt to the user of the device.” Indeed, claim 17 does not indicate how the user is prompted. Appeal 2011-013600 Application 10/544,327 9 In addition, Appellants have not identified any disclosure in the Specification that describes “prompting” a user of a mobile phone to shake the mobile phone. To satisfy the written description requirement, Appellants’ Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventors had possession of the claimed subject matter as of the filing date of the application. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991). The claimed invention need not be recited in haec verba in the original specification to satisfy the written description requirement. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc). Appellants indicate that support for the limitation “in response to the received information, prompting [or prompt] . . . to produce percussion sounds” is found at page 5, lines 19-32, and Figures 1 and 2 of the application. App. Br. 3, 4, and 6. We note that the Specification states “[e]ach mobile telephone has an accelerometer that detects when the phone is shaken[,]” and [e]ach phone produces percussion sounds when it is shaken.” Spec. 5, ll. 19-20, 24-25. However, this disclosure does not describe that any one of users of the devices 1, 2, 3, and 4 of the network is “prompted” to shake a device, or that any one of the devices sends a “prompt” to its user to shake the device. This disclosure simply does not indicate what causes a user to shake the device. Accordingly, we find that the Specification does not describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventors had possession of the claimed subject matter. Appeal 2011-013600 Application 10/544,327 10 Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection of claims 12, 13, 17, 26, 27, 30, 32, and 35-47 under 35 U.S.C. § 112, first paragraph, for lack of adequate written description. DECISION We REVERSE the Examiner’s rejection of claims 12, 13, 17, 26, 27, 30, 32, and 35-43 and AFFIRM the rejection of claims 44-47. This decision contains a new ground of rejection of claims 12, 13, 17, 26, 27, 30, 32, and 35-47 pursuant to 37 C.F.R. § 41.50(b), which provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE 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.… 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)(iv). AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) Appeal 2011-013600 Application 10/544,327 11 mls Copy with citationCopy as parenthetical citation