Ex Parte Woo

Board of Patent Appeals and Interferences

Jun 26, 2009

10637377 (B.P.A.I. Jun. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARK WOO
____________________

Appeal 2009-005500
Application 10/637,377
Technology Center 2100
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Decided: June 26, 20091
____________________

Before HOWARD B. BLANKENSHIP, THU A. DANG, and STEPHEN C.
SIU, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Data (electronic delivery).

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I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-16 and 22-35. Claims 17-21 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

A. INVENTION
According to Appellant, the invention relates to a method of searching
for a song and, more particularly, to a simplified search method adapted for
use on a computer (Spec. 1, ll. 14-16).

B. ILLUSTRATIVE CLAIMS
Claim 1 is exemplary and is reproduced below:
1. A music search method for finding a desired song in a
song database, the method comprising the steps of:

a) generating a difference sequence for each of a plurality of songs in
the song database by determining relative difference values between
adjacent notes of the corresponding song;

b) choosing a note sequence for the desired song to be found within
the song database;

c) generating an input difference argument for the note sequence by
determining a relative difference values between adjacent notes of the note
sequence;

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d) comparing the input difference argument to the difference sequence
for each song in the song database; and

e) determining a match has occurred between the note sequence and a
matching song in the song database when the input difference argument
corresponds to at least a portion of the difference sequence for the matching
song.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lui US 5,146,833 Sep. 15, 1992

Ghias, “Query for Humming – Musical Information Retrieval in an
Audio Database,” ACM 1995.

McNab, “Towards the Digital Music Library: Tune Retrieval from
Acoustic Input,” ACM 1996.

Claims 1-12, 22-24, and 26-35 stand rejected under 35 U.S.C.
§ 103(a) over the teachings of Ghias in view of McNab.
Claim 25 stands rejected under 35 U.S.C. § 103(a) over the
teachings of Ghias in view of McNab and Lui.
Claims 13-16 stand rejected under 35 U.S.C. § 103(a) over the
teachings of Ghias in view of Lui.

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II. ISSUE
The issue is whether Appellant has shown that the Examiner erred in
determining that the combination of Ghias and McNab teaches and/or would
have suggested “generating a difference sequence for each of a plurality of
songs in the song database by determining relative difference values
between adjacent notes of the corresponding song” (claim 1).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Appellant’s Invention
1. In Appellant’s invention, the desired song is found if the difference
argument for the note sequence corresponds to a portion of the
difference sequence for the desired song (Spec. 4, ll. 9-11).
2. A “difference sequence” may be applied to relative changes in note
duration (rhythm) as well as frequency (Spec. 5, ll. 13-16).
Ghias
3. Ghias discloses using approximate pattern matching, wherein the
sequence of relative differences in pitch between successive notes can
be used to discriminate between melodies (Ghias 1, right column).
4. Relations between pitches (‘U’, ‘D’, and ‘S’) represent situations
where a note is above, below or the same as the previous note (id.).

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McNab
5. McNab discloses retrieving and displaying melodies containing a
sequence of notes sung by a user, wherein the music databases are
searched and items are retrieved in which a given theme or sequence
of notes occurs (McNab 11, right column).
6. The frequency of each note is identified and each note is labeled with
a musical pitch name and rhythmic value (id. at 12, right column).
7. By regarding a melody as a sequence of notes, each with an associated
pitch and rhythm, a distance metric between notes can be constructed
by defining the distance between two pitches, and between two
rhythms (id. at 14, right column).
8. Scale degrees (do=1, re=2, and so forth) are used to allow melodies in
minor keys to be mapped to ones in major keys (id.)

IV. PRINCIPLES OF LAW
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)). Our reviewing court has repeatedly warned against confining the
claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
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One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).

The Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” and
discussed circumstances in which a patent might be determined to be
obvious. Id. at 415 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)). The Court reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416.
We must determine whether or not the differences between the subject
matter sought to be patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
See KSR, 550 U.S. at 406. Obviousness determination is not the result of a
rigid formula, and we will consider the facts of a case and the common sense
of those skilled in the art. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1161 (Fed. Cir. 2007). That is, the test for obviousness is rather
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what the combined teachings of the references would have suggested to
those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA
1981); In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).

V. ANALYSIS
Claims 1, 2, and 12
Though Appellant admits that “McNab discloses ‘A distance metric
between notes can be constructed by defining the distance between two
pitches and between two rhythms’” (App. Br. 6), Appellant argues that
“McNab does not specifically teach whether the distance is constructed
between two successive notes of the same melody or not” (id). Appellant
then contends that, “after studying both the cited references Wagner and
Fisher, and Lowrance and Wagner [referenced by McNab], it is understood
that the distance metric is constructed… between two different strings of
notes” (id.). However, the Examiner responds that “McNab describes
quantizing pitches by the twelve semitones of an octave” (Ans. 14), and
thus, “the pitch ratios or musical intervals taught in McNab are clearly
between notes of the same string” (id.).
By arguing that McNab does not teach a distance constructed between
two successive notes (App. Br. 6), Appellant appears to be arguing that
McNab alone fails to disclose or suggest the claim limitations. However, the
Examiner has rejected the claims based on the combination of Ghias and
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McNab, and nonobviousness cannot be shown by attacking the references
individually. See In re Merck, 800 F.2d at 1097.
Thus, the issue we address on appeal is whether the combination of
Ghias and McNab teaches and/or would have suggested “generating a
difference sequence for each of a plurality of songs in the song database by
determining relative difference values between adjacent notes of the
corresponding song,” as claimed in claim 1.
Ghias discloses using approximate pattern matching, wherein the
sequence of relative differences in pitch between successive notes can be
used to discriminate between melodies (FF 3). An artisan would have
understood such a step of discriminating between melodies using differences
in pitch between successive notes to be a step of “determining relative
difference values between adjacent notes” (claim 1).
Furthermore, McNab discloses searching music databases and
retrieving items in which a sequence of notes occurs (FF 5). In particular,
the frequency of each note is identified (FF 6), and by regarding a melody as
a sequence of notes, each with an associated pitch and rhythm, a distance
metric between notes can be constructed by defining the distance between
two pitches, and between two rhythms (FF 7). As the Examiner finds,
“McNab describes quantizing pitches by the twelve semitones of an octave”
(Ans. 14). An artisan would have understood such defining the distance
metric between notes in the sequence of notes to be a step of “determining
relative difference values between adjacent notes” (claim 1).
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Thus, we find an artisan would have understood Ghias in view of
McNab would teach or at least suggest “generating a difference sequence for
each of a plurality of songs in the song database by determining relative
difference values between adjacent notes of the corresponding song” (claim
1). Accordingly, we conclude that the Appellant has not shown that the
Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 103(a).
Because Appellant does not provide separate arguments with respect to
claim 2 depending from claim 1, claim 2 falls with claim 1.
Claim 12 depends from claim 1 and is rejected by the Examiner for
similar reasons. Appellant does not provide arguments for claim 12. Thus,
we conclude that the Appellant also has not shown that the Examiner erred
in rejecting claim 12 under 35 U.S.C. § 103(a).
Claims 3-5
As to claims 3-5, Appellant argues that “Ghias et al. fails to teach
every element as claimed” and that “there is no suggestion or motivation for
modifying Ghias by incorporating the step of assigning scale index of the
notes” (App. Br. 10). As to Appellant’s contention that Ghias does not
disclose the claimed invention, Appellant appears to be repeating the
argument that Ghias alone fails to disclose or suggest the claim limitations
when the Examiner has rejected the claims based on the combination of
Ghias and McNab.
Ghias discloses assigning values to each note to determine the
relationship between adjacent notes (FF 4). McNab discloses assigning
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scale values to each note (FF 8). Appellant has presented no evidence that
adding the teachings of McNab of assigning scale values to a note to the
teachings of Ghias of assigning values to a note "was uniquely challenging
or difficult for one of ordinary skill in the art" (see Leapfrog, 485 F.3d at
1162), nor has Appellant presented evidence that these "represented an
unobvious step over the prior art" (id.). Rather, Appellant’s’ invention is
simply an arrangement of the well-known teachings of using scale values
with the well-known teaching of using assigned values to determine the
relationship between adjacent notes. The combined teachings of the
references represent merely a combination of familiar elements according to
known methods and do no more than yield predictable results. See KSR, at
416.
Accordingly, we conclude that the Appellant has not shown that the
Examiner erred in rejecting claims 3-5 over the combination of Ghias and
McNab under 35 U.S.C. § 103(a).
Claim 6
As to claim 6, Appellant argues that “Applicant does not understand
why the mere teaching of ‘conducting search on the basis of pitch ratio or
musical interval [as taught by McNab]’ may be expanded as the teaching of
subtracting the prescribed scale value of the precedent note from that of the
subsequent note [as recited in claim 6]” (App. Br. 11). However, the
Examiner interprets the subtracting step to be using an “exact difference in
scale values to determine the difference value between adjacent notes” (Ans.
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5), and that “[p]itch ratios and musical intervals [in the combined teachings]
clearly imply differences in value between adjacent notes” (Ans. 15).
Appellant provides no argument to dispute that the Examiner has correctly
shown that this claimed limitation is taught and suggested in Ghias and
McNab.
Accordingly, we conclude that the Appellant has not shown that the
Examiner erred in rejecting claim 6 over the combination of Ghias and
McNab under 35 U.S.C. § 103(a).
Claims 7-8
As to claims 7-8, Appellant argues that “Ghias teaches away from the
teaching ‘when the input difference argument varies from the difference
sequence for that song by a prescribed variance’” (App. Br. 11). However,
the Examiner finds that “[t]he claimed variance prescribed by the user is met
by the fact that Ghias takes into consideration inaccuracies caused by
humming errors of each person” (Ans. 16). Appellant provides no argument
to dispute that the Examiner has correctly shown that this claimed limitation
is taught and suggested in Ghias and McNab.
Accordingly, we conclude that the Appellant has not shown that the
Examiner erred in rejecting claims 7-8 over the combination of Ghias and
McNab under 35 U.S.C. § 103(a).
Claims 9-11
As to claims 9-11, Appellant argues that Ghias does not teach “to
‘filter the string converted from the melody pre-stored in the database’” and
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that “such filtering step is not performed prior to ‘determining a near
match’” (App. Br. 12). However, the Examiner finds that Ghias discloses
such teachings because Ghias “shows cutting down on irrelevant
information” and thus, “clearly suggests filtering the input difference
argument and the difference sequence prior to determining a near match”
(Ans. 16). Appellant provides no argument to dispute that the Examiner has
correctly shown that this claimed limitation is taught and suggested in Ghias
and McNab.
Accordingly, we conclude that the Appellant has not shown that the
Examiner erred in rejecting claims 9-11 over the combination of Ghias and
McNab under 35 U.S.C. § 103(a).
Claim 22
As to claim 22, though Appellant admits that “McNab teaches
‘retrieve music, ranked by how closely it matches the input’… and “All
exact-matching regimes require few notes,” Appellant argues that
“Applicant cannot find any teaching [in McNab] that suggests performing a
near match in the condition when no match is found” (App. Br. 12).
However, the Examiner finds that “appellant seems to ignore the capabilities
of one of ordinary skill in the art having both Ghias and McNab references
as teaching” (Ans. 16), and that “[s]ince exact matching requires fewer notes
as shown by Mcnab[sic], it would have been obvious to one of ordinary skill
in the art to perform a near match only when no exact match is found in
order to save processing time” (id.). Appellant provides no argument to
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dispute that the Examiner has correctly shown that this claimed limitation is
suggested in Ghias and McNab.
Accordingly, we conclude that the Appellant has not shown that the
Examiner erred in rejecting claim 22 over the combination of Ghias and
McNab under 35 U.S.C. § 103(a).
Claim 23 and 24
As to claim 23, Appellant argues that “Claim 23… also includes the
step of assigning the index values, the step of searching the difference
sequence exactly matching the difference argument, the step of comparing
the hit number of exact matches to a predetermined threshold number, and
the step of performing a near search when the it number is smaller than the
predetermined threshold number” (App. Br. 13). In particular, Appellant
argues that “Ghias and McNab, individually or in combination, further fail to
disclose the step of comparing the number of exact matches found in the
search against a predetermined threshold” (id.).
Though the Examiner responds with “[t]he examiner disagrees and
maintains the rejection as discussed in the final office action” (Ans. 16), in
the section relied by the Examiner in Ghias and McNab, there is no teaching
of comparing the number of exact matches found in the search against a
predetermined threshold.
Accordingly, we conclude that the Appellant has shown that the
Examiner erred in rejecting claim 23 and claim 24 depending therefrom over
the combination of Ghias and McNab under 35 U.S.C. § 103(a).
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Claim 26
As to claim 26, Appellant repeats that “McNab does not teach or
suggest the pitch ratio or musical interval being the exact intervals between
adjacent notes of the same melody” (App. Br. 14). As discussed above with
respect to claim 1, we agree with the Examiner that the combination of
Ghias and McNab discloses and strongly suggests such claimed feature.
Accordingly, we conclude that the Appellant has not shown that the
Examiner erred in rejecting claim 26 and claims 27-29 depending therefrom
over the combination of Ghias and McNab under 35 U.S.C. § 103(a).
Claims 30-32
As to claim 30, Appellant argues that “McNab teaches transposing the
input sequence… but not transposing the matching song” (App. Br. 15).
However, the Examiner finds that “appellant seems to ignore the capabilities
of one of ordinary skill in the art” (Ans. 17), and that “one of ordinary skill
in the art certainly knows how to apply the transposition technique to either
the input or the matching song depending on users applications” (id.).
Appellant provides no argument to dispute that the Examiner has correctly
shown that this claimed limitation is suggested in Ghias and McNab.
Accordingly, we conclude that the Appellant has not shown that the
Examiner erred in rejecting claim 30 and claims 31-32 falling therewith over
the combination of Ghias and McNab under 35 U.S.C. § 103(a).
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Claims 33-35
As to claims 34-35, Appellant repeats that “McNab, as discussed
above, did not disclose determining pitch ratio or musical interval between
‘successive notes’ of the same input sequence or the song” (App. Br. 15).
As discussed above with respect to claims 1 and 2, we agree with the
Examiner that the combination of Ghias and McNab discloses and strongly
suggests such claimed feature.
Accordingly, we conclude that the Appellant has not shown that the
Examiner erred in rejecting claims 34-35 over the combination of Ghias and
Mcnab under 35 U.S.C. § 103(a).
Claim 33 depends from claim 2 and is rejected by the Examiner for
similar reasons. Appellant does not provide separate arguments for claim
33. Thus, we conclude that the Appellant also has not shown that the
Examiner erred in rejecting claim 33 over the combination of Ghias and
McNab under 35 U.S.C. § 103(a).
Claim 25
As to claim 25, Appellants argue that “Ghias and McNab do not only
fail to disclose the index value for each note includes a duration, but also
fails to teach calculating a difference of durations” and that “nowhere does
Lui teaches [sic] calculating the duration difference between successive
notes” (App. Br. 16). Appellant appears to be repeating the argument of
nonobviousness by attacking the references individually.
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McNab discloses labeling each note with a rhythmic value (FF 6),
wherein a distance metric between notes can be constructed by defining the
distance between two rhythms (FF 7). An artisan would have understood
such rhythm value for each note to be an index value which includes a
duration, and would have understood such distance between two rhythms as
the duration difference between successive notes. In fact, Appellant’s own
specification defines “duration” as “rhythm” and describes “difference
sequence” as “changes in note duration (rhythm)” (FF 1-2).
However, as discussed above regarding claim 23 from which claim 25
depends, in the section relied by the Examiner in Ghias and McNab, there is
no teaching of comparing the number of exact matches found in the search
against a predetermined threshold as recited in claim 23. Lui also does not
suggest such a teaching.
Accordingly, we conclude that the Examiner erred in rejecting claim
25 over the combination of Ghias, Mcnab and Lui under 35 U.S.C. § 103(a).
Claims 13-16
As to claims 13-16, Appellant argues that “[t]he Examiner, without
any basis or support in the references, contended that Lui teaches the
claimed element missing from Ghias” (App. Br. 18). However, the
Examiner finds that “appellant again seems to ignore the capabilities of one
of ordinary skill in the art” (Ans. 17), and that “Lui was cited merely to
show that it is customary to take duration into consideration for sounds”
(id.).
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Appellant provides no argument to dispute that the Examiner has
correctly shown that this claimed limitation is suggested in Ghias and Lui.
In fact, Appellant has presented no evidence that adding the teachings of Lui
to the teachings of Ghias "was uniquely challenging or difficult for one of
ordinary skill in the art" (see Leapfrog, 485 F.3d at 1162), nor has Appellant
presented evidence that these "represented an unobvious step over the prior
art" (id.).
Accordingly, we conclude that the Appellant has not shown that the
Examiner erred in rejecting claims 13-16 over the combination of Ghias and
Lui under 35 U.S.C. § 103(a).

VI. CONCLUSION OF LAW
(1) Appellant has not shown that the Examiner erred in finding that
claims 1-12, 22, and 26-35 are unpatentable under 35 U.S.C. § 103(a) over
the teachings of Ghias and McNab.
(2) Appellant has shown that the Examiner erred in finding that claims
23 and 24 are unpatentable under 35 U.S.C. § 103(a) over the teachings of
Ghias and McNab.
(3) Appellant has shown that the Examiner erred in finding that claim
25 is unpatentable under 35 U.S.C. § 103(a) over the teachings of Ghias,
McNab and Lui.
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(4) Appellant has not shown that the Examiner erred in finding that
claims 13-16 are unpatentable under 35 U.S.C. § 103(a) over the teachings
of Ghias and Lui.
(5) Claims 1-16, 22, and 26-35 are not patentable.

VII. DECISION
We affirm the Examiner’s rejections of claims 1-16, 22, and 26-35
under 35 U.S.C. § 103(a). We reverse the Examiner’s rejections of claims
23-25 under 35 U.S.C. § 103(a).
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-IN-PART

PEB

Kit M. Stetina, Esq.
STETINA BRUNDA GARRED & BRUCKER
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