Ex Parte Tsukamoto et al

Patent Trial and Appeal Board

Dec 13, 2012

10730095 (P.T.A.B. Dec. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KAORU TSUKAMOTO, TOMOHIRO IWANAGA, and
TOSHIHARU OKADA
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Appeal 2010-011318
Application 10/730,095
Technology Center 3700
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Before: WILLIAM V. SAINDON, MICHELLE R. OSINSKI, and
WILLIAM A. CAPP, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/730,095

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 6-12 and 20-25. We have jurisdiction under 35
U.S.C. § 6(b). Claim 6, reproduced below with added emphasis, is
illustrative of the claimed subject matter.
6 A mobile karaoke device comprising:
a memory that stores karaoke contents including karaoke
event data in time order and song data, the song data having
synchronization data embedded therein;
a sound generator that plays sound responsive to the song
data; and
a multimedia processor that provides the song data to
said sound generator, and that executes karaoke events
according to the karaoke event data,
said sound generator responding to receipt of the
synchronization data embedded within the song data by sending
an interrupt signal to said multimedia processor, said
multimedia processor executing the karaoke events in time
order in synchronization responsive to receipt of the interrupt
signal.

Rejections
I. Claims 20-25 are rejected under 35 U.S.C. § 101, for being directed to
non-statutory subject matter.
II. Claims 6-12 and 20-25 are rejected under 35 U.S.C. § 102(e) as
anticipated by Naples (US 2002/0162445 A1, pub. Nov. 7, 2002).

SUMMARY OF DECISION
We AFFIRM.

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OPINION
Anticipation Rejection
The Examiner found that Naples anticipates the subject matter of the
claims. Ans. 5-10, 13-15. In particular, with respect to the “synchronization
data” limitation, the Examiner found that Naples discloses a data file that
contains a performance of music. Ans. 5-6 (citing Naples, paras. [0048]-
[0049]); see also Ans. 13-14. The Examiner construes “synchronization
timing” (i.e., synchronization data) to be the synthesizer control data
allowing the system of Naples to manage synchronous playback of the audio
contents (i.e., to play music). Ans. 14. With respect to the “interrupt signal”
limitation, the Examiner found that Naples discloses karaoke event data
(Ans. 6) and that Naples synchronizes the audio-visual information (e.g.,
cues, lyrics) according to timing information, which the Examiner considers
to describe the “interrupt signal” (Ans. 14-15).
Having reviewed all of Appellants’ arguments in both briefs, we are
not apprised of error in the Examiner’s anticipation rejection.1 With respect
to the “synchronization data” limitation, Appellants do not point to a
deficiency in the Examiner’s reading of “synchronization data” on the
identified components and underlying operations of Naples’ audio content
playback features. Instead, Appellants’ arguments generally state that the
claim limitation is not found in the reference in so many words. See, e.g.,
App. Br. 13 (“Naples … does not even mention the words ‘synchronized
timing’”). However, a reference need not teach a limitation in haec verba.
In re Bode, 550 F.2d 656, 660 (CCPA 1977); In re Bond 910 F.2d 831, 832

1 Appellants argue claims 6-12 and 20-25 as a group (App. Br. 20); we select
claim 6 as representative.
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(Fed. Cir. 1990). The Examiner’s claim interpretation is reasonable, given
that the Specification likewise treats the “synchronization data” as the audio
content. See, e.g., Spec. 6 (“the data of MIDI channel 10 of note number
127 is assigned as synchronization data”). Accordingly, we are not apprised
of error in the Examiner’s findings with respect to “synchronization data.”
With respect to the “interrupt signal” limitation, Appellants likewise
merely state that the references do not discuss the words of the limitation,
but Appellants fail to point to any deficiency in the Examiner’s reading of
“interrupt signal” on the audio-visual synchronization component of Naples.
Again, the Examiner’s claim construction is reasonable, because the
Specification likewise discusses the “interrupt signal” as the signal
responsible for executing the karaoke events (e.g., the non-music portions of
the karaoke contents, such as lyrics). See, e.g., Spec. 4 (“The multimedia
processor reads a group of events and executes the event immediately at
each … event request interruption”); Naples, para. [0049] (“The data file
contains additional content such as timing cues, lyrics, and other features.”
“The additional content is time-correlated to the audio content for
synchronous playback.”); see also Naples, para. [0050]. Accordingly, we
are not apprised of error in the Examiner’s findings with respect to “interrupt
signal.”
In view of the above, we are not apprised of error in the Examiner’s
anticipation rejection of claim 6. Claims 7-12 and 20-25 fall therewith.

Section 101 Rejection
The Examiner rejects method claims 20-25 for being directed toward
non-statutory subject matter, on the basis that the claims are not tied to a
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particular machine and do not transform an article. Ans. 3. In particular, the
Examiner’s analysis is directed to the “machine” prong of the somewhat
erstwhile “machine-or-transformation” test. Ans. 4-5, 11-12; see Bilski v.
Kappos, 130 S. Ct. 3218, 3231 (2010) (“disapproving [of] an exclusive
machine-or-transformation test”). The Examiner finds that that mobile
device and its components (memory, sound generator, processor) do not
serve to tie the method to a particular machine. See id. Appellants argue
that the claim is tied to a particular machine, one having the particular
components claimed. App. Br. 5-9; Reply Br. 2-4.
We agree with Appellants. The particular steps are those of a
machine responding to the contents of the karaoke contents (i.e., data).
While some of the steps plausibly could describe actions of a person (storing
data in memory, perhaps even playing sound), the broadest reasonable
interpretation of “generating an interrupt signal” “using a sound generator”
“executing … events … using a multimedia processor” would appear to be
limited to performance by a machine. Further, the machine’s performance in
these steps is not mere data gathering or extra-solution activity in the context
of these claims. The particular data here is, essentially, a list of things for
the device to do in a particular order, whether it is event data or song data.
The steps of the method intimately describe the way that particular device
reacts to the data: the data controls the device. Without the device, it is not
clear how the method steps could be performed or the data utilized.
Accordingly, it is our view that the subject matter of claim 20 is sufficiently
tied to a machine. The Examiner has not attempted to show that the subject
matter is non-statutory under any other theory. As such, we do not sustain
the Examiner’s rejection of claims 20-25 under section 101.
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DECISION
We AFFIRM the Examiner’s decision regarding the anticipation
rejection of claims 6-12 and 20-25.
We REVERSE the Examiner’s decision regarding the non-statutory
subject matter rejection of claims 20-25.
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

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