Ex Parte Reed

Board of Patent Appeals and Interferences

Jan 26, 2009

10191776 (B.P.A.I. Jan. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEVIN MATTHEW REED
____________

Appeal 2008-5351
Application 10/191,776
Technology Center 2800
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Decided: January 26, 2009
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Before KENNETH W. HAIRSTON, MAHSHID D. SAADAT, and
CARLA M. KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
3-15, 17-22, 26, and 27. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

Appeal 2008-5351
Application 10/191,776

STATEMENT OF CASE
Appellant’s claimed invention is a musical drum that improves the
vibratory, timbre, and resonant characteristics of a traditional drum
(Spec.¶[0008]). The apparatus includes a plate-like member having a vent
hole extending therethrough, an annular wall having ribs circumferentially
spaced and extending over substantially the entire height of the wall, the
wall attached at a first end to the plate-like member. A hoop rim member
surrounds the wall and is fastened at a second end of the wall. A membrane
covers the second end of the wall and is mounted on the rib member (Spec.
¶¶[0009]-[0014]).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.

1. A drum comprising:

a plate-like member having a vent hole extending therethrough;

a substantially annular wall having ribs circumferentially spaced along
the wall and extending over substantially an entire height of the wall,
the wall attached at a first end to the plate-like member;

a hoop rim member surrounding the wall and fastened to the annular
wall at a second end of the wall; and

a membrane covering the wall second end and mounted on the rim
member.

REFERENCES
Kurosaki US 4,126,075 Nov. 21, 1978
Genna US 5,095,796 Mar. 17, 1992
Yamashita US 5,329,838 Jul. 19, 1994
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Basmadjian US 6,057,499 May 2, 2000
Pedagogy-Drum Set, University of Idaho, Lionel Hampton School of Music,
Percussion.
http://www.class.uidaho.edu/music/content/percussion/pages/peda4.html

The Examiner rejected claims 1, 3-8, 10, and 26 under 35 U.S.C.
§ 103(a) based upon the teachings of Pedagogy Drum Set and Genna.
The Examiner rejected claims 9 and 11 under 35 U.S.C. § 103(a)
based upon the teachings of Pedagogy Drum Set, Genna, and Basmadjian.
The Examiner rejected claims 12, 13, and 27 under 35 U.S.C. § 103(a)
based upon the teachings of Pedagogy Drum Set, Genna, Basmadjian, and
Kurosaki.
The Examiner rejected claim 14 under 35 U.S.C. § 103(a) based upon
the teachings of Pedagogy Drum Set, Genna, and Yamashita.
The Examiner rejected claims 15, 17, 18, 21, and 22 under 35 U.S.C.
§ 103(a) based upon the teachings of Pedagogy Drum Set, Genna,
Basmadjian, and Yamashita.
The Examiner rejected claims 19 and 20 under 35 U.S.C. § 103(a)
based upon the teachings of Pedagogy-Drum Set, Genna, Basmadjian,
Yamashita, and Kurosaki.
Appellant contends the combination of Pedagogy Drum Set
(hereinafter “Pedagogy Drum”) and Genna does not show or suggest the
limitations of the claims, particularly, Pedagogy Drum shows a garbage can
used “as a stage prop and not for a musical performance” (Br. 5).

ISSUE
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Has Appellant shown the Examiner erred in finding the claims
obvious under 35 U.S.C. § 103(a) over the combination of the garbage can
drum shown in Pedagogy Drum with the drum disclosed in Genna?

FINDINGS OF FACT
1. Pedagogy Drum shows a picture of a performance at the
University of Idaho Hampton School of Music Percussion where a garbage
can overturned on a person is being hit with a stick. The garbage can has
ribs along its walls that extend over substantially the entire height of the can.
2. Genna teaches a tuned-port rigid baffle panel that mounts to the
side opposite a beater drumhead membrane (Abstract). The tuned-port rigid
baffle panel is circular in shape and contains a tune-port of sufficient area to
tune the drum to the proper maximum performance frequency (col. 1, ll. 19-
21). The tuned port may be placed at any location on the face of the rigid
baffle panel and may be any shape (col. 2, ll. 45-48).

PRINCIPLES OF LAW
Discussing the question of obviousness of a patent that claims a
combination of known elements, the Court in KSR Int’l v. Teleflex, Inc., 127
S. Ct. 1727 (2007) explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations
of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable
variation, §103 likely bars its patentability. For the same
reason, if a technique has been used to improve one
device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the
same way, using the technique is obvious unless its
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actual application is beyond his or her skill. Sakraida [v.
AG Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black
Rock [, Inc. v. Pavement Salvage Co., 396 U.S. 57
(1969)] are illustrative—a court must ask whether the
improvement is more than the predictable use of prior art
elements according to their established functions.
KSR, 127 S. Ct. at 1740

If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).

ANALYSIS
The Examiner rejected claims 1, 3-15, 17-22, 26, and 27 under 35
U.S.C. § 103(a) as obvious over various combinations of Pedagogy Drum
and Genna with Basmadjian, Kurosaki, and Yamashita. Appellant argued
claims 1, 4-11, and 26 together (Br. 5, 8). We address this rejection with
respect to representative independent claim 1.
The Examiner finds Pedagogy drum discloses all the features of
Appellant’s claimed invention except for a plate-like member having a
circular vent hole extending therethrough, a hoop rim member surrounding
the wall and fastened to the annular wall at a second end of the wall, and a
membrane covering the wall second end and mounted on the rim member
(Ans. 3). However, Genna teaches a plate like member having a circular
vent hole, a hoop rim member, and a membrane covering the wall second
end and mounted on the rim member (Ans. 3-4). Therefore, the Examiner
concludes it would have been obvious to an ordinarily skilled artisan to
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modify Pedagogy Drum as taught by Genna to obtain Appellant’s claimed
invention (Ans. 4).
Appellant counters Pedagogy Drum is a drama performance (not a
musical instrument) and Genna teaches a tuned port rigid baffle panel (Br.
6). However, as found by the Examiner, Pedagogy Drum shows a garbage
can being used as a drum. Although Pedagogy Drum looks like performance
art, and even if it is performance art, the garbage can is definitely being hit
and a sound (whether tuned or not) is emitted once hit.
Appellant further asserts “Pedagogy’s structure would directly impact
Genna’s bass-reflux design parameters as such parameters are a function of
the inside diameter of the drum” (Br. 7). Even if Genna’s sound was
impacted, there is nothing in Appellant’s claims directed to the sound of the
drum. Further, Genna applied to Pedagogy Drum would enhance the sound
of Pedagogy’s drum.
Appellant argues, with respect to claim 1, that the bottom of the
claimed drum is integrally formed with the wall of the drum (Br. 5).
Appellant also contends the rigid baffle panel of Genna is “sufficiently thick,
and made of sufficiently stiff materials so as to resist flexural movement of
the panel” (Br. 5-6). There is no recitation in claim 1 that the bottom of the
drum be integrally formed with the wall of the drum. Further, claim 1
recites a “plate-like” member, which implies a stiff material as taught by
Genna. Thus, these features argued by Appellant are not found in the
claims.
Appellant’s assertion that the claimed “drum” has ribs and these ribs
are not taught or suggested by Pedagogy Drum and Genna is without merit
(Br. 6). The ribs of the garbage can shown in Pedagogy Drum provide
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structural strength only. However, the ribs recited in Appellant’s claimed
invention could also be used to provide structural strength as the claim does
not connect the ribs to impacting the sound of the drum. The ribs recited in
the claims have no relationship to frequency performance of the drum. The
garbage can has ribs for strength. The garbage can in Pedagogy Drum is
used as a drum and thus it has drum frequency capabilities. Therefore,
Appellant’s arguments that Pedagogy Drum does not teach this feature are
not persuasive since a broad interpretation of the claims as written does not
preclude that the ribs could be used only for structural strength. Appellant
has not shown any deficiencies in the Examiner’s rejection of claim 1 based
upon Pedagogy Drum and Genna.
With respect to claims 26 and 27, the Examiner concludes that
Pedagogy Drum teaches the features of these claims (Ans. 3, 4, 6, and 8).
Claims 26 and 27 recite the “annular wall has a tapering conformation over
its length that increase from the plate-like member at the first end to the
membrane at the second end.” Although Pedagogy Drum shows the “drum”
tapering, the taper is in the direction opposite of that claimed as asserted by
Appellant (Br. 8). Because there is no teaching of this feature in any of the
cited references, Appellant has shown error in the Examiner’s rejection
under 35 U.S.C. § 103 of claims 26 and 27 as obvious over the cited art.
Thus, Appellant has not persuaded us of error on the part of the
Examiner with respect to claims 1, 3-15, and 17-22. Appellant has not
shown any deficiencies in the rejection based upon the combination of
Pedagogy Drum and Genna, along with various combinations of
Basmadjian, Kurosaki, and Yamashita.
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The Examiner did not err in rejecting claims 1, 3-15, and 17-22 as
unpatentable over the collective teachings of the cited references for the
reasons set forth above. We reach the opposite conclusion with respect to
the rejection of claims 26 and 27 as unpatentable over Pedagogy Drum and
Genna, along with various combinations of Basmadjian, Kurosaki, and
Yamashita.

CONCLUSION
The Appellant has not shown the Examiner erred in combining
Pedagogy Drum with Genna to reject claims 1, 3-15, and 17-22 under 35
U.S.C. § 103(a).
The Appellant has shown the Examiner erred in rejecting claims 26
and 27 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claims 1, 3-15, and 17-22 is
affirmed.
The Examiner’s decision rejecting claims 26 and 27 is reversed.
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-IN-PART

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Application 10/191,776

gvw

SCOTT A. MCCOLLISTER
FAY, SHARPE, FAGAN, MINNICH & MCKEE, LLP
1100 SUPERIOR AVENUE, 7TH FLOOR
CLEVELAND, OH 44114-2516
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