Ex Parte Sawhney et alDownload PDFPatent Trial and Appeal BoardJul 30, 201410861209 (P.T.A.B. Jul. 30, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/861,209 06/04/2004 Ravi K. Sawhney OKC00671 9409 33900 7590 07/31/2014 Hall Estill Attorneys at Law (MDMMY) 100 NORTH BROADWAY SUITE 2900 OKLAHOMA CITY, OK 73102-8820 EXAMINER TRAN, CON P ART UNIT PAPER NUMBER 2654 MAIL DATE DELIVERY MODE 07/31/2014 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte RAVI K. SAWHNEY, INGVALD A. SMITH-KIELLAND, PAUL K. JANOWSKI, and PETER SONG Appeal 2012-005124 Application 10/861,209 Technology Center 2600 __________ Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and CHRISTOPHER G. PAULRAJ, Administrative Patent Judges. PAULRAJ, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims to a learning amplifier. The Examiner rejected the claims for lack of written description support and obviousness. The Examiner also objected to an Amendment to the Specification for the introduction of new matter. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the Real Party in Interest as RKS Guitars, LLC (see App. Br. 2). Appeal 2012-005124 Application 10/861,209 2 STATEMENT OF THE CASE Background The Specification indicates that “[t]his invention relates generally to the field of amplifiers for musical instruments, and more specifically to amplifiers for electronic instruments such as the electric guitar” (Spec. at 2, ll. 12–13). “Now [i]t is possible for a talented individual to learn the basics of one instrument, join up with others of similar talent and enthusiasm, and create music with a great potential for popularity and success. This possibility has driven the need for a musical learning method much different than traditionally practiced” (id. at 3, ll. 6–9). “The present invention addresses this need by providing a means for the learning musician to practice phrases and parts of musical passages repeatedly, ingraining the musical passages into the musicians mind” (id. at 3, ll. 10–12). The Claims Claims 11 and 12 are on appeal. Independent claim 11 is representative, and reads as follows: 11. A learning amplifier comprising an enclosure suitable for containing an amplifier, a loudspeaker, and interface and control electronics, in which said control electronics include a CD player, displays, control knobs, switches, input and output connections, an integrated handle for easy portability, and wherein a first display of said displays provides a representation of a user's ability to play an instrument interacting with said amplifier in synchronization with recorded music being played through said CD player. Appeal 2012-005124 Application 10/861,209 3 The Issues The Examiner has rejected the claims as follows: I. Claims 11 and 12 under 35 U.S.C. § 112, ¶ 1 as failing to comply with the written description requirement. II. Claim 11 and 12 under 35 U.S.C. § 103(a) as unpatentable over the combination of Tumblin,2 Wood ’751,3 and Wood ’031.4 Additionally, the Examiner objected under 35 U.S.C. § 132(a) to the Amendment to the Specification filed on Jan. 22, 2008 for the introduction of new matter. Because the new matter objection is related to the written description rejection, the issue is appealable to the Board. See MPEP § 2163.06. I. WRITTEN DESCRIPTION Findings of Fact FF1. The original Specification states that “[a]nother object of the invention is to provide a means of enabling a musician to play their instrument through the amplifier in synchronization with recorded music and/or lessons” (Spec. at 3, ll. 21–23). FF2. The original Specification states that “[t]he control interface 40, which may contain a CD player, display, a plurality of control knobs, and a means of connecting musical instruments, inputs, and outputs, is positioned on the front bezel surface” (Spec. at 5, ll. 13– 2 Tumblin, US 4,321,853, issued Mar. 30, 1982. 3 Wood et al., US 6,801,751 B1, issued Oct. 5, 2004. 4 Wood et al., US 6,716,031 B2, issued Apr. 6, 2004. Appeal 2012-005124 Application 10/861,209 4 15). The original Specification did not provide any further description of a “display.” FF3. Figure 3 of the Specification shows control interface 40 (which may contain the display) with two rectangular boxes 41 and 43 which are not described in the Specification. Principles of Law – Written Description The written description requirement “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharms, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. To satisfy the written description requirement, “the missing descriptive matter must necessarily be present in the [original] application’s specification such that one skilled in the art would recognize such a disclosure.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998); see also Martin v. Mayer, 823 F.2d 500, 505 (Fed. Cir. 1987) (holding that the written description requirement is “‘not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure.... Rather, it is a question whether the application necessarily discloses that particular device’”) (emphasis in original). Analysis The Examiner rejected the claims under 35 U.S.C. § 112, ¶ 1 because the Specification fails to provide written description support for the limitations reciting “wherein a first display of said displays provides a Appeal 2012-005124 Application 10/861,209 5 representation of a user's ability to play an instrument interacting with said amplifier in synchronization with recorded music being played through said CD player” (Cl. 11) and “a second display of said displays provides status information for said CD player and said amplifier” (Cl. 12). We agree with the Examiner’s finding that written description support does not exist for these limitations in the original disclosure (Ans. 7-8). The Specification recites the term “display” only once when listing the components that may be contained in the control interface 40 (FF2-3). Furthermore, the Specification discloses that “[a]nother object of the invention is to provide a means of enabling a musician to play their instrument through the amplifier in synchronization with recorded music and/or lessons” without mentioning that the means is achieved through the use of a display (FF1). Appellants acknowledge that the subject matter of claims 11 and 12 is not described literally, but nonetheless assert that When a device, such as the claimed learning amplifier, provides an amplifier, a loudspeaker, and interface and control electronics that include a compact disc (CD) player and displays, at least one of the displays would be understood to provide a representation of a user’s ability to play the user’s instrument through the amplifier in synchronization with recorded music or lessons being played through the CD player (App. Br. 8). Appellants further assert that “[a] second display would be understood to provide status information for the CD player and the amplifier, which includes, at least, the CD track number and time, and the volume of the amplifier, so that the user can control the CD player and amplifier” (id.). In support, Appellants cite to affidavits submitted by Victor B. Mason (Exhs. 1 and 2 to App. Br.). Appeal 2012-005124 Application 10/861,209 6 We are not persuaded by Appellants’ arguments. As recognized by Appellants, the Mason affidavits at most demonstrate that the claimed features are “conventional and can be determined without an undue amount of experimentation” (App. Br. 6). However, that is not the standard for satisfaction of the written description requirement. See In re Huston, 308 F.3d 1267, 1277 (Fed. Cir. 2002) (“Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.”); see also Ariad, 598 F.3d at 1352 (A “description that merely renders the invention obvious does not satisfy the [written description] requirement.”). Appellants have not demonstrated that a skilled artisan would understand that the inventors were in possession of the claimed invention based on an objective inquiry into the Specification. There is simply nothing in the Specification that describes any particular role for a display, let alone a role wherein a display provides a representation of a user’s ability to play an instrument or status information for the CD or amplifier. The fact that one of ordinary skill in the art would understand that a first and second display could potentially be used for those purposes does not satisfy the statutory requirement. “It is not sufficient for purposes of the written description requirement of § 112 that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Accordingly, we affirm the written description rejection. We also therefore affirm the Examiner’s new matter objection under 35 U.S.C. § 132(a) to the Jan. 22, 2008 Specification Amendment, which sought to amend the Specification to introduce the same limitations recited Appeal 2012-005124 Application 10/861,209 7 in the pending claims that we have found lacking written description support in the original disclosure. II. OBVIOUSNESS Additional Findings of Fact FF4. Tumblin teaches an “[a]utomatic ear training apparatus” that includes a keyboard as an input device, wherein “[t]he keys of keyboard 14 actuate an array of switches 16, . . . and the outputs thereof, via interface 20 and output 22, are readable by the controlling processor 12” (Tumblin, col. 2, ll. 60–64). FF5. Tumblin teaches that “[t]he system status display 24, of conventional construction, is used to convey miscellaneous information useful to the student in operation of the system” (Tumblin, col. 3, ll. 3–5). FF6. Tumblin further discloses that a “pitch error display 60 consists of a column of indicator lights (e.g., LEDs 62 as seen in FIG. 4) placed vertically and lit one at a time under the control of the LED driver circuit 64, with the position of the lit LED determined by the controlling processor 12,” and “[t]he purpose of display 60 is primarily to give a graphical display of the pitch error of the student” (Tumblin, col. 3, ll. 38–44). FF7. Tumblin discloses that “[m]usical exercises could be coded digitally in a form understandable to the controlling processor 12 and stored in musical exercise data storage 108,” and “[t]his would be interfaced to Appeal 2012-005124 Application 10/861,209 8 controlling processor 12 at 110 as shown in FIG. 1” (Tumblin, col. 6, ll. 26–30). FF8. Wood ’751 discloses an “interactive learning appliance” that can be used for teaching music (Wood ’751, col. 3, l. 66). “[I]n some embodiments, the interactive learning appliance can be in the form of a child’s laptop computer or a child’s compact disk player (e.g., a ‘boom-box’)” (id. at col. 10, ll. 18–21). FF9. Wood ’751 discloses that: The interactive learning appliance 21 may comprise a housing (not shown) which may house a processor 30 such as a microprocessor, a read only memory (ROM), an erasable memory 29, one or more input devices 33 for the user to input information, and one or more output devices 32 for the user to receive information 32. Suitable input devices may include any suitable combination of buttons, switches, speech recognizers, alpha-numeric keypads or keyboards, selection devices such as styluses, and rotary switches such as rings which can be used to select certain information (e.g., numbers, letters). Suitable output devices include speakers, visual display screens (e.g., LCD screens), vibrational sensors, etc. The ROM 28, the erasable memory 29, the input devices 33, and the output device 32 may all be in operative communication with the processor 30. The ROM 28 may include content such as music, sounds, and phrases which can be used with any of the downloaded content packages. (Wood ’751, col. 10, ll. 30–47.) Appeal 2012-005124 Application 10/861,209 9 Principles of Law – Obviousness Where “a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). A reference may be read for all that it teaches, including uses beyond its primary purpose. See id. at 418–21; see also Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989). “In order to rely on a reference as a basis for rejection of the applicant’s invention [under § 103], the reference must either be in the field of the applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned.” In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). Analysis The Examiner rejected the claims as obvious based on the combined teachings of Tumblin, Wood ’751, and Wood ’031. In particular, the Examiner relies upon Tumblin’s teaching that: [B]y monitoring immediate changes in pitch error, the controlling processor can detect errors in the rhythm of transitions between notes of a student’s input; if the student changes the pitch of his input to that of the next note, before or after the reference signal changes, a sudden drastic pitch error will be registered by the system (Ans. at 10-11; see also FF4-7). The Examiner acknowledges that “Tumblin does not explicitly discloses [sic] the learning amplifier including an enclosure suitable for containing the amplifier, the loudspeaker, and interface and control Appeal 2012-005124 Application 10/861,209 10 electronics, [or] musical exercise data storage . . . being a CD player” (Ans. at 11). However, the Examiner asserts that It would have been obvious to one of ordinary skill in the art at the time the invention was made to have incorporated the teaching of interactive learning appliance of Wood ’751 (i.e., housing, input devices, output device, compact disk player) with the learning amplifier of Tumblin, in the absence of new or unexpected results, such that to obtain the enclosure and the compact disk player as claimed for purposes of being able to analyze the user’s performance and able to provide prescriptive content to the user to address any difficulties that the user may be having, as suggested byWood ‘751 in column 15, lines 55-57. (Id.; FF8-9.) The Examiner further relies upon Wood ’031 to assert that it would have been obvious to include an integrated handle for easy portability (Ans. at 12). Appellants’ only argument with respect to this rejection is that there is no prima facie case of obviousness because “the skilled artisan would understand that the server based system learning system with delayed display of user performance would change the principle of operation of the Tumblin ’853 reference from a real-time learning system, so there is no motivation to combine Wood ’751 and Tumblin ’853” (App. Br. 12, citing In re Ratti, 270 F.2d 810 (CCPA 1959)). We are not persuaded by this argument. Wood ’751, which is directed to an “Interactive Learning Appliance,” is in the Appellants’ field of endeavor, and is reasonably pertinent to Appellants’ invention, thereby providing motivation to one of ordinary skill in the art as to their combination. The rationale presented by the Examiner only relies upon Wood ’751 for its teaching of the use of an enclosure and a CD player in an interactive learning appliance, and the Appeal 2012-005124 Application 10/861,209 11 Examiner does not rely upon the use of a server in the system taught by Wood ’751 to support his rejection. One of ordinary skill in the art would understand that an enclosure and a CD player could be used in a system such as Tumblin’s without changing its overall principle of operation as a musical training apparatus. See, e.g., In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012); In re Umbarger, 407 F.2d 425, 430–31 (CCPA 1969) (finding Ratti inapplicable where the modified apparatus will operate “on the same principles as before”). Such a modification to the apparatus taught by Tumblin would be no more than a “predictable use of prior art elements according to their established functions.” See KSR, 550 U.S. at 417. Furthermore, Appellants has failed to provide evidence showing that one of ordinary skill in the art would have considered the inclusion of an enclosure and a CD player in Tumblin’s real-time learning system to have changed the principle of operation of Tumblin’s device. Accordingly, we also affirm the obviousness rejection of claims 11 and 12. SUMMARY We affirm the rejection of claims 11 and 12 for failing to comply with the written description requirement of 35 U.S.C. § 112, ¶ 1. We affirm the rejection of claims 11 and 12 under 35 U.S.C. § 103(a). We affirm the new matter objection to the Jan. 22, 2008 Amendment to the Specification. Appeal 2012-005124 Application 10/861,209 12 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED cdc Copy with citationCopy as parenthetical citation