Gerald Rogers

Patent Trials and Appeals Board

Dec 7, 2020

2019005991 (P.T.A.B. Dec. 7, 2020)

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.
14/745,734 06/22/2015 Gerald Rogers 5514
140407 7590 12/07/2020
Gerald Rogers
4524 Park Lane.
Dallas, TX 75220
EXAMINER
FLETCHER, MARLON T
ART UNIT PAPER NUMBER
2837
MAIL DATE DELIVERY MODE
12/07/2020 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 GERALD ROGERS1
____________

Appeal 2019-005991
Application 14/745,734
Technology Center 2800
____________

Before CATHERINE Q. TIMM, CHRISTOPHER C. KENNEDY, and
JEFFREY R. SNAY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–9 and 12.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as “the
applicant and the inventor, Gerald Rogers.” Appeal Br. 2.
2 The Examiner indicates that claims 10 and 11 “would be allowable if
rewritten in independent form including all of the limitations of the base
claim and any intervening claims.” See Final Act. 6.
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BACKGROUND
The subject matter on appeal relates to devices for tuning musical
instruments. E.g., Spec. ¶ 1; Claim 1. Claim 1 is reproduced below from
the Appendix of the Appeal Brief:
1. A device for tuning a musical instrument, said device
comprising:
a vibration sensor with a means for receiving a vibration output
from a musical instrument;
said vibration sensor comprising an analog to digital converter
for converting said vibration output from said musical instrument
to a digital value that represents the amplitude of said musical
instrument vibrations during tuning;
said vibration sensor comprising a microprocessor for receiving
said digital value that represents the amplitude of said musical
instrument vibrations from said analog to digital converter;
wherein said microprocessor, stores, processes and analyzes said
digital value to determine said instrument's vibration frequency
and transmits said vibration frequency digital value to a
computer device through a wireless transceiver located within
said vibration sensor; and
wherein a processor of said computer device compares and
calculates a difference between said vibration frequency digital
value of said musical instrument and a reference pitch value
incorporated within said processor of said computer device and
displays said difference between said vibration frequency digital
value of said musical instrument and a reference pitch value as,
sharp, flat, or in tune on said computer device display screen.
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § 103 as follows:
1. Claims 1, 3, 4, 7, 9, 12 over Nagakura (US 7,655,851 B2, issued
Feb. 2, 2010), Korg “Cable-free wireless tuning systems complete with
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transmitter and tuner” (of record, dated Feb. 11, 20113) (“Korg”), Ribner
(US 2013/0139672 A1, published June 6, 2013), and “10 best guitar tuner
apps for Android” (of record, dated Sept. 12, 20144) (“Android”).
2. Claims 2, 5, 6, and 8 over Nagakura, Korg, Ribner, Android, and
Yagi (US 2003/0140767 A1, published July 31, 2003).
ANALYSIS
Claims 1, 4, 7, and 12. The Examiner’s statement of the rejection
appears at pages 2–5 of the Final Action. Of particular relevance to the
issues raised by the Appellant concerning claim 1, the Examiner finds that
Nagakura discloses a tuning device similar to the device recited by claim 1
except that “Nagakura does not disclose the use of an A/D converter.” Final
Act. 4. The Examiner finds that Korg discloses a tuning device with a
“vibration sensor comprising an analog to digital converter for converting
said vibration output from said musical instrument to a digital value that
represents the amplitude of said musical instrument vibrations during
tuning,” as required by claim 1. Id. The Examiner finds that Ribner also
discloses a tuning device with “a vibration sensor (52) comprising an analog
to digital converter (58).” Id. at 4–5. The Examiner determines that it
would have been obvious “to provide an A/D converter, since it merely
converts the signal format for utilization in a digital environment,” id. at 5,

3 February 11, 2011 is the date for this reference identified by the Examiner.
See Notice of References Cited dated Nov. 30, 2016. The Appellant does
not dispute that date.
4 September 12, 2014 is the date for this reference identified by the
Examiner. See Notice of References Cited dated Nov. 30, 2016. The
Appellant does not dispute that date.
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such as that of Nagakura. In the Answer, the Examiner also finds that a
person of ordinary skill in the art would have understood that “it is clear and
inherent that there is an analog to digital conversion” in tuning devices such
as Nagakura’s. Ans. 4.
As to the “display screen” recited by claim 1, the Examiner relies on
Nagakura’s disclosure that a tuning needle meter may be displayed on a
liquid crystal display (LCD) or one or multiple LEDs. Final Act. 3.
The Appellant first argues that “one skilled in the art knows a needle
meter is not a display screen as would be found with a computer device
identified in Applicant’s claims.” Appeal Br. 4.
As the Examiner explains in the Answer, see Ans. 2–4, that argument
is not persuasive because Nagakura explicitly discloses that its “needle type
meter” may be used with display methods “such as a method of using a
pseudo needle type meter displayed using a liquid crystal display or one or
multiple LEDs.” Nagakura at 5:15–22. We agree with the Examiner, see
Ans. 2–4, that Nagakura’s disclosure of liquid crystal and LED displays falls
within the broadest reasonable scope, consistent with the Specification, of
the term “computer device display screen” as recited by claim 1, see, e.g.,
Nagakura Fig. 3 (disclosing display section 34 receiving output from
computing section 31).
In the Reply Brief, the Appellant argues that “[c]omputer display
screen . . . has a specific definition,” and that “Applicants [sic] claims 1, 6,
and 11 disclose a computer device display screen where computer device is
detailed in the Applicants [sic] patent and specifically in paragraph 21 as a
smart phone (iOS, Android or other Microsoft computer device) and its
display screen.” Reply 4. That argument is unpersuasive for at least two
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reasons. First, the Appellant has not persuasively identified any portion of
claims 1, 6, or 11, or any portion of the Specification, that would limit the
disputed term to iOS, Android, or Microsoft computer devices, and we do
not readily discern a clear definition in the Specification that might support
the Appellant’s position. Second, even if we were to limit the disputed term
in the way proposed by the Appellant, in the Final Action the Examiner
expressly finds that “Android is provided to show the well known use of a
smart phone ‘Android phone’ to be used for tuning an instrument.” Final
Act. 5. The Appellant fails to address or otherwise show error in that
finding. See generally Appeal Br. On this record, we are not persuaded of
reversible error in the Examiner’s determination that the prior art teaches or
suggests a display screen within the scope of claim 1.
The Appellant also provides argument concerning Korg and Ribner,
but it is not clear precisely what the Appellant is arguing. See Appeal Br. 4–
5. It appears that the Appellant may be arguing that neither Korg nor Ribner
describes an analog to digital converter in a tuning system that is identical to
that of claim 1. See id. Ribner discloses, for example, an analog to digital
converter (58) in a tuning system comprising a vibration sensor (54). See
Ribner Fig. 4. We understand the Examiner’s proposal of combining Korg
and Ribner with Nagakura to involve the use of a known element (i.e.,
analog to digital converter) according to its established function (i.e.,
converting analog sound signals to digital sound signals in a tuning device).
The use of a known element according to its established function typically
does not result in nonobvious subject matter. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416–21 (2007) (“The combination of familiar elements
according to known methods is likely to be obvious when it does no more
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than yield predictable results.”); see also id. at 416 (“[W]hen 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.”). The Appellant’s arguments
concerning Korg and Ribner do not persuade us otherwise in this case.
In the Reply Brief, the Appellant argues that the use of an analog to
digital converter is not inherently required by Nagakura, and that “zero
crossing technology” could be used instead. See Reply 4–5. Even assuming
that the use of an analog to digital converter is not inherently required by
Nagakura, as set forth above, the prior art of record is consistent with the
Examiner’s proposal of using a known element (analog to digital converter)
according to its established function (converting analog sound signals to
digital sound signals in a tuning device). Even if “zero crossing technology”
was a known alternative, that does not show error in the Examiner’s finding
that the use of a known analog to digital converter would have been obvious
in Nagakura’s tuning device. Cf. Merck & Co. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a
multitude of effective combinations does not render any particular
formulation less obvious.”).
On the record before us, we are not persuaded of reversible error in
the Examiner’s rejection of claim 1.5 See In re Jung, 637 F.3d 1356, 1365

5 In the event of further examination of the application on appeal, the
Appellant and the Examiner may wish to consider whether the “device for
tuning a musical instrument” of claim 1 is intended to encompass the
“computer device” recited in the next to last wherein clause. The words “to
a computer device” imply that the “computer device” is external to the
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(Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an
applicant to identify the alleged error in the examiner’s rejections . . . .”).
The Appellant raises no separate arguments as to claims 4, 7, and 12, which
are also subject to Rejection 1. Consistent with the provisions of 37 C.F.R.
§ 41.37(c)(1)(iv), those claims fall with claim 1.
Claims 2, 3, 5, and 8. Claim 2 recites a system comprising a
vibration sensor and a computer device, and it requires that “a program
within said computer device outputs an audio signal of varying audio
frequencies related to the difference between a computed vibration
frequency of said musical instrument and a reference pitch.” Appeal Br.
(Appendix). Claims 3, 5, and 8 include similar limitations. In the Final
Action, the Examiner finds that “[n]either [Nagakura, Korg, Ribner, nor
Android] provide outputting an audio signal.” Final Act. 6. The Examiner
finds that “Yagi discloses a tuner wherein a program within the computer
device . . . outputs an audio signal . . . of varying audio frequencies related to
the difference between the computed vibration frequency . . . and a reference
pitch.” Id. The Examiner determines that it would have been obvious “to

“device for tuning a musical instrument” to which the claim is directed, but
the last wherein clause of the claim recites limitations on the processor
within the “computer device.” The limitations of the last wherein clause are
superfluous if the “computer device” is not part of the “device for tuning a
musical instrument.” The limitations on the processor are only meaningful
if the “computer device” is affirmatively recited as a structure within the
“device for tuning a musical instrument.” Claim 2, for example, recites a
system affirmatively including a “computer device.” Should the Appellant
intend the “computer device” recited by claim 1 to be a structural limitation
of the “device for tuning a musical instrument,” an affirmative limitation,
such as that recited in claim 2, should be included in claim 1.
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utilize the teachings of Yagi” with the other prior art of record “because the
teachings provide an audible sound for assisting a user in distinguishing
musical input pitch to reference pitch.” Id.
Consistent with the Appellant’s arguments, Appeal Br. 6, a
preponderance of the evidence does not support the Examiner’s finding that
“Yagi discloses a tuner wherein a program within the computer device . . .
outputs an audio signal . . . of varying audio frequencies related to the
difference between the computed vibration frequency . . . and a reference
pitch,” Final Act. 6. Yagi discloses a tuning device that emits a “reference
sound” that is set in advance by the user and allows the user to compare the
pitch of a “target sound” (i.e., the instrument being tuned) to the reference
sound. Yagi ¶ 4. Yagi does not disclose “varying audio frequencies related
to the difference between the computed vibration frequency . . . and a
reference pitch”; Yagi simply discloses outputting a reference pitch. See id.
In the Answer, the Examiner provides a new rationale, and, in contrast
to the finding in the Final Action that “[n]either [Nagakura, Korg, Ribner,
nor Android] provide outputting an audio signal,” Final Act. 6, the
Examiner finds that “[t]he primary reference (Nagakura) already teaches the
limitation of producing auditory signal representing the difference between
the reference sound and the target sound.” Ans. 5. The Examiner finds that
Nagakura “discloses an output terminal (35) . . . which performs output to an
external device,” and that “[t]he output terminal (35) has the function of
outputting the computation (the difference between the input and reference
pitch) by the computing section (31), wherein the output is a sound signal
output from the computing section (31).” Id. For support, the Examiner
cites column 7 of Nagakura, which discloses:
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The output terminal 35 performs output to an external device. For
instance, the output terminal 35 has a function of 30 outputting
the result of the computation by the computing section 31, a
function of outputting the sound signal demodulated by the
receiving section 29 through the computing section 31, and a
function of subjecting a signal inputted from the input terminal
30 to throughout.
Nagakura at 7:29–35.
The Appellant argues that the cited disclosure of Nagakura lacks
adequate clarity to establish that Nagakura teaches or suggests the “outputs
an audio signal” limitation of claim 2. Reply Br. 6.
We agree with the Appellant that the cited disclosure of Nagakura
lacks clarity. It is not adequately clear what is output by Nagakura’s output
terminal 35, or that a “sound signal demodulated by the receiving section 29
through the computing section 31” falls within the scope of the term “audio
signal of varying audio frequencies related to the difference between a
computed vibration frequency . . . and a reference pitch,” as recited by
claim 2. The lack of clarity is exacerbated by the fact that the Examiner
relied on that portion of Nagakura for the first time in the Examiner’s
Answer, after expressly stating in the Final Action that Nagakura does not
output an audio signal. See Final Act. 6.
On the record before us, the Examiner has not adequately established
that the prior art teaches or suggests the audio signal limitation of claim 2.
We reverse the Examiner’s rejection of claim 2. We likewise reverse the
Examiner’s rejection of claim 3, which depends from claim 2 and thereby
includes the same limitation.
The Examiner interprets the “audio output” limitation of claim 5, and
the “audible output” limitation of claim 8, as having the same scope as the
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“audio signal” limitation of claim 2. See Final Act. 6 (failing to address
claims 5 and 8 separately from claim 2); Ans. 5 (same). For the reasons
discussed above as to claim 2, we determine that the Examiner has not
adequately established that the prior art teaches or suggests those limitations
of claims 5 and 8.6 Accordingly, we reverse the Examiner’s rejection of
claims 5 and 8.
Claims 6 and 9. Claims 6 and 9 recite “a vibration alert output.”
Appeal Br. (Appendix). Claim 9 describes “a vibration alert output” as
“indicating to the user the difference between the vibration data and the
identified reference pitch using varying vibrations per second indicating
sharp, flat, or in tune to the user.” Id. We understand the term “vibration
alert output” to require some amount of physical vibration of a computer
device. See, e.g., Spec. ¶ 38 (“The Smartphone 10 vibration alert will be
similar to the audio output, with the Smartphone 10 increasing or decreasing
the vibration of the Smartphone 10 relative to the computed vibration
frequency’s difference from the reference pitch.”), ¶ 38 (explaining that the
“vibration alert . . . can be used by visually impaired musicians as well as
musicians that do not want to use the display of the Smartphone 10. A
musician can leave the Smartphone 10 in a pocket and feel the
vibration . . . .”).

6 Claim 2 recites “an audio signal,” claim 5 recites an “audio output,” and
claim 8 recites “an audible output.” The Examiner and the Appellant treat
those terms as having the same scope. In the event of further examination of
the application on appeal, and assuming that the scope of those three terms is
intended to be the same, the Appellant may wish to consider whether claim
clarity could be improved by using a consistent term throughout the claims.
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In the Final Action, the Examiner identifies Nagakura’s “display unit
102” as corresponding to the claimed “vibration alert output.” Final Act. 3.
In the Appeal Brief, the Appellant contests the Examiner’s reliance on
Nagakura’s display unit 102 and argues that the cited prior art does not
include a “mechanoreceptor system such as a vibration motor.” Appeal
Br. 7.
In the Answer, the Examiner fails to address the Appellant’s
arguments concerning the claims reciting a “vibration alert output.” See
generally Ans.
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). On the record before us,
the Examiner has not adequately established that Nagakura’s display
unit 102 teaches or suggests the “vibration alert output” of claims 6 and 9.
Even accepting that the display 102 visually depicts a representation of the
output of a vibration sensor, the Examiner fails to show how the display
physically vibrates to indicate a difference between a sound and reference
pitch. As set forth above, we interpret the recited “vibration output alert” as
requiring an actual physical vibration rather than merely a visual
representation. The Examiner provides no persuasive basis to interpret the
claim in a different way. Accordingly, we reverse the Examiner’s rejections
of claims 6 and 9.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ References Affirmed Reversed
1, 3, 4, 7, 9,
12 103
Nagakura, Korg,
Ribner, Android 1, 4, 7, 12 3, 9
2, 5, 6, 8 103
Nagakura, Korg,
Ribner, Android,
Yagi
2, 5, 6, 8
Overall
Outcome 1, 4, 7, 12
2, 3, 5, 6,
8, 9
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