Ex Parte Salter

Board of Patent Appeals and Interferences

Sep 13, 2010

10338959 (B.P.A.I. Sep. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HAL C. SALTER
____________

Appeal 2009-006417
Application 10/338,959
Technology Center 3700
____________

Before LINDA E. HORNER, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

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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STATEMENT OF THE CASE
Hal C. Salter (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claims 1-27, 29, 30, and 37-44. Claim 28
is objected to as being dependent upon a rejected base claim but is not
rejected.2 Claims 31-36 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
THE INVENTION
Appellant’s claimed invention is to computer-aided instruction for use
with the kalimba, also called thumb piano, gourd piano, mbira, sansa, and
other indigenous names. Spec. 3, para. [0005]. Claim 1, reproduced below,
is representative of the subject matter on appeal.
1. An apparatus for providing musical instruction
comprising:
a) a computing element;
b) a display connected to the computing element;
c) a gamepad connected to the computing element, the
gamepad including a plurality of tongues disposed in an array
wherein ends of the tongues progressively extend with
increased distance from an outer boundary of the array; and

2 The Final Office Action of February 5, 2007, from which this appeal is
taken, states that claim 28 is objected to and is subject to a double patenting
rejection. Final Office Action 17. The Examiner’s statement of the double
patenting rejection, however, omits any reference to claim 28.
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d) software for execution on said computing element
linking a virtual keyboard displayed on the display when the
software is executed on the computing element with actions by
a user of the gamepad as part of the game.
THE EVIDENCE
The Examiner relies upon the following evidence:
Wilson Des. 222,813 Jan. 4, 1972
Haruyama 5,886,273 Mar. 23, 1999
Kitamori US 2001/0036862 A1 Nov. 1, 2001
Moe US 6,388,181 B2 May 14, 2002
Wedel US 2004/0206225 A1 Oct. 21, 2004
THE REJECTIONS
Appellant seeks review of the following Examiner’s rejections:
1. Claims 25-27, 29, and 30 under the judicially-created doctrine of
obviousness-type double patenting over claims 26-29 and 73 of
Application 10/273,353.3
2. Claims 1-4, 7-15, 20, 21, 37, and 39-44 under 35 U.S.C. § 103(a) as
being unpatentable over Haruyama and Wilson.
3. Claims 5, 6, and 22-25 under 35 U.S.C. § 103(a) as being
unpatentable over Haruyama, Wilson, and Wedel.
4. Claims 16-19 under 35 U.S.C. § 103(a) as being unpatentable over
Haruyama, Wilson, and Moe.
5. Claim 38 under 35 U.S.C. § 103(a) as being unpatentable over
Haruyama, Wilson, and Kitamori.

3 Application 10/273,353 issued as U.S. Patent 7,174,510 on February 6,
2007.
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While Appellant states that the claims being appealed include
computer program product claims 20-24 (Br. 3), Appellant presents no
arguments for patentability of these claims. See Br. 30-41. As such, we
summarily sustain the rejections of claims 20 and 21 as being unpatentable
over Haruyama and Wilson and claims 22-24 as being unpatentable over
Haruyama, Wilson, and Wedel.
Appellant also seeks to have us review the Examiner’s objection to an
amendment to paragraph [0039] on the basis that the amendment introduces
new matter. Br. 17. The Examiner’s objection to the Specification is a
petitionable matter. See Manual of Patent Examining Procedure (MPEP)
§§ 1002 and 1201. As such, the objection is not within the jurisdiction of
the Board. In re Mindick, 371 F.2d 892, 894 (CCPA 1967).
ISSUES
The issues presented by this appeal are:
Is the “gamepad” recited in the preamble of claims 25 and 29 entitled
to patentable weight?
Would it have been an obvious matter of design choice to modify the
virtual keyboard of claims 26-29 and 73 of Application 10/273,353 to have
keys corresponding to a plurality of tongues of a gamepad disposed in an
array wherein ends of the tongues progressively extend with increased
distance from an outer boundary of the array?
Is Haruyama’s keyboard a “gamepad”?
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FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. MSN Encarta defines “gamepad” as “control for computer game: a
handheld control mechanism for a computer game.” MSN Encarta,
http://encarta.msn.com/encnet/features/dictionary/DictionaryResults.a
spx?lextype=3&search=gamepad (last visited September 8, 2010).
2. Haruyama discloses a keyboard 1 for entering pitch information that
resembles the keyboard of a piano having eighty-eight keys and that is
to be played by pressing the keys with the fingers and thumbs while
the keyboard is disposed horizontally. Haruyama, col. 6, ll. 10-11;
col. 8, ll. 37-41; figs. 1, 3A, 3B.
PRINCIPLES OF LAW
“Whether to treat a preamble as a limitation is a determination
‘resolved only on review of the entire[ ] ... patent to gain an understanding of
what the inventors actually invented and intended to encompass by the
claim.’” Catalina Mktg Int’l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801,
808 (Fed. Cir. 2002) (quoting Corning Glass Works v. Sumitomo Elec.
U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)). “In general, a preamble
limits the invention if it recites essential structure or steps, or if it is
‘necessary to give life, meaning, and vitality’ to the claim.” Id. (quoting
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
1999)).
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We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)).
ANALYSIS
Claim Construction
Independent claims 25 and 29 recite a method of instructing a user to
read musical notation through interaction with a graphical user interface and
a gamepad. Steps a) through d) of these claims relate to the graphical user
interface. In particular, step a) of each claim recites generating a graphical
user interface including a virtual keyboard wherein each key on the virtual
keyboard has “a corresponding tongue on the gamepad, the plurality of
tongues disposed in an array wherein ends of the tongues progressively
extend with increased distance from an outer boundary of the array.” Step e)
of these claims calls for awarding a value to the user for striking the
corresponding tongue on the gamepad at the appropriate time. Claim 29
further includes a step f), which relates again to the graphical user interface.
While the claims do not explicitly include a step of actually providing a
gamepad to the user or a step of causing the user to take any action with
respect to the gamepad, the use of the gamepad to complete the claimed
method is required in order to complete step e), which calls for the system to
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award a value to the user based on the user striking tongues on the gamepad.
As such, the gamepad is a limitation of the method claims 25 and 29.
An ordinary meaning of “gamepad” is “a handheld control mechanism
for a computer game” (Fact 1).4 Appellant’s Specification describes a
gamepad device 40 having a plurality of tongues 42 and right- and left-hand
controls 44, 46. Spec. 15, paras. [0039] (un-amended) and [0040]; fig. 1.
Figure 2 shows a similar stand-alone gamepad device 50. Spec., fig. 2. The
shape of the gamepad devices 40 and 50 resembles a conventional gaming
controller that is traditionally handheld and operated primarily by the user’s
thumbs. The gamepads disclosed in Appellant’s Specification are consistent
with the ordinary meaning of gamepad in the gaming art. As such, we
construe gamepad in accordance with its ordinary meaning to be a handheld
control mechanism for a computer game.
Obviousness-type double patenting rejection
We construed independent method claims 25 and 29 supra to require
the use of a gamepad having a plurality of tongues disposed in an array
wherein ends of the tongues progressively extend with increased distance
from an outer boundary of the array. As acknowledged by the Examiner
(Ans. 20), claims 26-29 of Application 10/273,353 call for “an input
keyboard” having “keys” instead of the gamepad having a plurality of

4 Appellant provides a similar description of a gamepad as “a type of game
controller held in the hand, where the digits (especially thumbs) are used to
provide input ….” Br. 20 (citing Wikipedia, the free encyclopedia from
Reference.com, http://www.reference.com/browse/wiki/Gamepad (retrieved
May 29, 2007).
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tongues, as called for in claims 25 and 29 on appeal. Claim 73 of
Application 10/273,353 calls for “displaying a graphical user interface
including a virtual keyboard . . . having a plurality of keys corresponding to
at least one octave of a musical keyboard with each key having a back
portion substantially at a top of the graphical user interface and an opposed
lower front portion.” Claim 73 does not recite any input device.
Since the Examiner did not give patentable weight to the gamepad of
claims 25 and 29, the Examiner did not provide any rationale as to why it
would have been obvious to modify the input keyboard of claims 26-29 with
the claimed gamepad having a plurality of tongues or why it would have
been obvious to add the claimed gamepad to the method of claim 73.
To the extent the Examiner’s design choice rationale extends to
modifying the claimed keyboard of Application 10/273,353, we consider
whether the keyboard of Application 10/273,353 performs differently from
the gamepad of the claimed invention. To carry out the claimed method of
instructing, the gamepad and array of tongues of the present claims are used
differently from the keyboard and keys, which resemble a standard musical
keyboard, of the Application 10/273,353. In particular, a user of the claimed
gamepad and array of tongues would hold the gamepad in the user’s hands
and play the tongues with the user’s thumbs. In contrast, a user of the
keyboard of Application 10/273,353 would not hold the keyboard in the
user’s hands, and would play the keys with the user’s fingers and thumbs.
Compare In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (finding of obvious
design choice precluded when claimed structure and the function it performs
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are different from the prior art). As such, the Examiner has failed to
adequately explain why claims 25 and 29 would have been obvious in view
of claims 26-29 and 73 of Application 10/273,353.
Further, we disagree with the Examiner’s finding that it would have
been a mere matter of design choice to vary the length of the virtual
keyboard such that the plurality of tongues are disposed in an array wherein
the ends of the tongues progressively extend with increased distance from an
outer boundary of the array. Ans. 22. Claims 26-29 and 73 contain no such
limitation or suggestion for such a layout of the keys of the virtual keyboard.
Accordingly, we cannot sustain the Examiner’s obviousness-type
double patenting rejection of claims 25-27, 29 and 30.
Rejection of claims 1-4, 7-15, 37, and 39-44 under 35 U.S.C. § 103 as being
unpatentable over Haruyama and Wilson
The Examiner’s rejection is based on the finding that Haruyama
discloses a gamepad. Ans. 4-5. We construed “gamepad” supra to mean a
handheld control mechanism for a computer game. Haruyama discloses a
keyboard 1 that resembles the keyboard of a piano having eighty-eight keys
and that is to be played by pressing the keys with the fingers and thumbs
while the keyboard is disposed horizontally (Fact 2). Based on the fact that
Haruyama discloses a full eighty-eight key keyboard, we find that
Haruyama’s keyboard is not capable of being played while being held by
hand. As such, Haruyama does not disclose a gamepad. Accordingly, we
cannot sustain the rejection of claims 1-4, 7-15, 37, and 39-44.
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Rejections of claims 5, 6, 16-19, 25, and 38
The Examiner’s remaining rejections are based on the same
combination of Haruyama and Wilson, including the underlying finding that
Haruyama discloses a gamepad. Ans. 10-15. For the same reasons provided
supra, we disagree with the finding that Haruyama discloses a gamepad, and
thus we cannot sustain the rejections of claims 5, 6, 16-19, 25, and 38.
CONCLUSIONS
The “gamepad” recited in the preamble of claims 25 and 29 is entitled
to patentable weight.
It would not have been an obvious matter of design choice to modify
the virtual keyboard of claims 26-29 and 73 of Application 10/273,353 to
have keys corresponding to a plurality of tongues of a gamepad disposed in
an array wherein ends of the tongues progressively extend with increased
distance from an outer boundary of the array.
The keyboard of Haruyama is not a “gamepad.”
DECISION
The decision of the Examiner to reject claims 20-24 is AFFIRMED.
The decision of the Examiner to reject claims 1-19, 25-27, 29, 30, and
37-44 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
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AFFIRMED-IN-PART

nlk

Jason P. Webb
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