Ex Parte Ludwig

Patent Trial and Appeal BoardJun 19, 2014

11004449 (P.T.A.B. Jun. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LESTER F. LUDWIG ____________ Appeal 2012-002070 Application 11/004,449 Technology Center 2800 ____________ Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and MARC S. HOFF, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 39, 41-62, and 64-83. Claims 1-38, 40, and 63 were cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellant’s invention controls light sources attachable to musical instruments responsive to music signals generated by a transducer. See generally Abstract. Claim 39 is illustrative: Appeal 2012-002070 Application 11/004,449 2 39. A lighting system for a musical instrument, comprising: a transducer generating a music signal responsive to user manipulation of a musical producing component of said musical instrument; a signal processor generating a control signal responsive to an amplitude of said music signal; and a controllable light source attachable to said musical instrument, said light source emitting light responsive to said control signal. RELATED APPEALS This appeal is said to be related to 11 other appeals, all of which have been decided. See App. Br. 5.1 See also Ex parte Ludwig, No. 2009-002201 (BPAI Nov. 10, 2009) (reversing Examiner’s rejection); Ex parte Ludwig, No. 2009-006844 (BPAI Nov. 26, 2010) (reversing Examiner’s rejection); Ex parte Ludwig, No. 2009-008141 (BPAI Feb. 11, 2011) (reversing Examiner’s rejection); Ex parte Ludwig, No. 2010-008330 (PTAB Oct. 18, 2012) (affirming Examiner’s rejection), reh’g denied (PTAB Jan. 28, 2013); Ex parte Ludwig, No. 2010-006457 (PTAB Oct. 18, 2012) (reversing Examiner’s rejection); Ex parte Ludwig, No. 2009-008916 (BPAI Mar. 8, 2011) (affirming Examiner’s rejection in part); Ex parte Ludwig, No. 2009- 010281 (BPAI May 11, 2011) (reversing Examiner’s rejection); Ex parte Ludwig, No. 2009-009356 (BPAI Apr. 1, 2011) (affirming Examiner’s rejection in part); Ex parte Ludwig, No. 2010-009424 (BPAI Nov. 7, 2011) (affirming Examiner’s rejection); Ex parte Ludwig, No. 2011-004940 (PTAB Oct. 15, 2013) (affirming Examiner’s rejection in part); Ex parte 1 Throughout this opinion, we refer to (1) the Appeal Brief filed March 23, 2011 (“App. Br.”); (2) the Examiner’s Answer mailed June 28, 2011 (“Ans.”); and (3) the Reply Brief filed August 29, 2011 (“Reply Br.”). Appeal 2012-002070 Application 11/004,449 3 Ludwig, No. 2012-007008 (PTAB Nov. 1, 2013) (affirming Examiner’s rejection in part), reh’g denied (PTAB Feb. 28, 2014). THE REJECTIONS2 The Examiner rejected claims 39, 41-46, and 48 under 35 U.S.C. § 103(a) as obvious over Breitweiser (US 5,408,914; iss. Apr. 25, 1995) and Haake (US 5,796,025; iss. Aug. 18, 1998). Ans. 5-7. The Examiner rejected claim 47 under 35 U.S.C. § 103(a) as obvious over Breitweiser, Haake, and “the case law.” Ans. 8. The Examiner rejected claims 49-54, 56-62, and 64-83 under 35 U.S.C. § 103(a) as obvious over Breitweiser, Haake, Pierce (US 5,394,784; iss. Mar. 7, 1995), and Starr (US 5,986,201; iss. Nov. 16, 1999). Ans. 8-12. The Examiner rejected claims 55, 88, and 89 under 35 U.S.C. § 103(a) as obvious over Breitweiser, Haake, Pierce, Starr, and Official Notice. Ans. 12-13. The Examiner rejected claims 84-87 under 35 U.S.C. § 103(a) as obvious over Breitweiser, Haake, and Official Notice. Ans. 13-14. THE OBVIOUSNESS REJECTION OVER BREITWEISER AND HAAKE The Examiner finds that Breitweiser discloses every recited element of claim 39 including (1) a transducer (pickup 27) generating a music signal responsive to user manipulation of a musical producing component of a musical instrument; (2) a signal processor (microprocessor 62) generating a 2 Because the Examiner withdrew a rejection under § 112 (Ans. 4), it is not before us. Appeal 2012-002070 Application 11/004,449 4 control signal responsive to the music signal; and (3) a controllable light source (light emitting diode (LED) units 53) attachable to the instrument, where the light source emits light responsive to the control signal. Ans. 5-6. According to the Examiner, although Breitweiser’s control signal is inherently responsive to a music signal amplitude, it is not “directly recited” in Breitweiser. Ans. 7. The Examiner then cites Haake for teaching this feature, particularly in light of Haake’s teaching in column 10 that the intensity of light emanating from a light source on a guitar can be modulated by electric signals generated by the guitar’s pickup coils. Ans. 7, 14-15. Appellant argues that the cited prior art does not teach or suggest a control signal responsive to the amplitude of a music signal, and a light source emitting light responsive to the control signal. App. Br. 29-37; Reply Br. 3-6. According to Appellant, Breitweiser discusses amplitude only in connection with a manual volume knob for adjusting volume during performance, but does not teach a control signal responsive to amplitude. App. Br. 32-33. Although Appellant acknowledges that Breitweiser controls lights via a control signal, this signal is said to be based on signals received from a CD player—not the instrument’s pickup. Reply Br. 3. Appellant adds that the Examiner’s reliance on Haake is likewise flawed because Haake does not specify what attribute affects the lights in the relied-upon teaching from column 10, let alone specify that this attribute is a music signal amplitude. App. Br. 34-36; Reply Br. 4-5. ISSUE Under § 103, has the Examiner erred by finding that Breitweiser and Haake collectively would have taught or suggested a controllable light Appeal 2012-002070 Application 11/004,449 5 source attachable to a musical instrument, where the light source emits light responsive to a control signal, where the control signal is responsive to a music signal amplitude as recited in claim 39? ANALYSIS We begin by noting that the Examiner’s rejection cites two different embodiments in Breitweiser, namely that shown in Figures 7 and 8, respectively. See Ans. 6 (citing Breitweiser, col. 5, ll. 46-60 (discussing Figure 7) and col. 7, ll. 18-41 (discussing Figure 8)). This distinction is notable, for Appellant’s arguments are directed principally to Breitweiser’s Figure 7 embodiment, but do not squarely address the Examiner’s reliance on the Figure 8 embodiment. See App. Br. 29-37; Reply Br. 3-6. Breitweiser’s Figure 8 provides a tuning capability such that when a selected string 36 is plucked, pickup 27 senses the tone that is transmitted to comparator 87 where its frequency is compared to signals from a six-tone generator 85 to produce an output signal that is used to energize the appropriate LED of units 84. Breitweiser, col. 7, ll. 7-41. Based on this functionality, nothing in claim 39 precludes Breitweiser’s “signal processor” (frequency comparator 87) that generates a control signal responsive to an amplitude of the plucked string’s tone-based signal (“music signal”), where light sources 84 emit light responsive to this control signal to indicate tuning. Notably, the frequency comparator’s control signal is based on some amplitude of the incoming music signal from the pickup; otherwise, no control signal would be produced for tuning. See Breitweiser, col. 7, ll. 33-41. Appeal 2012-002070 Application 11/004,449 6 Although this optical tuning function fully meets the limitations of claim 39, we are nonetheless unpersuaded of error in the Examiner’s position even if it were limited to the embodiment of Breitweiser’s Figure 7. To be sure, signals from Breitweiser’s pickup 27 are not in the optical signal path in Figure 7, but rather are directed (possibly with output from a synthesizer) to sound system 22 via volume and tone controls 44 and 47 as Appellant indicates. App. Br. 33-34; Reply Br. 3-4; Breitweiser, col. 6, ll. 18-38. Notably, the control signals for the lights of visual display 54 are produced from the right channel of CD player 48—not the pickup. See Breitweiser, col. 5, ll. 37-60. Although the instrument can be played through the sound system while viewing the optical fingering information on the visual display, the pickup has no effect on this visual information. See id. Therefore, the Examiner’s assertion that Breitweiser’s signal processor 62 is responsive to transducer (pickup) 27 (Ans. 14) is incorrect. We nonetheless deem this error harmless, for the Examiner’s position is not based solely on Breitweiser, but rather on the collective teachings of Breitweiser and Haake. In this regard, we find no error in the Examiner’s reliance on Haake’s Figure 13 and Haake’s teaching that light intensity can be modulated by electrical signals generated by pickup coils 58. Ans. 7, 14- 15 (citing Haake, col. 10, ll. 46-51). Although Haake does not specify the nature of these electrical signals, as Appellant indicates (App. Br. 35), skilled artisans would nonetheless recognize that the pickup coils generate music signals with some amplitude; otherwise, no signal is produced. Therefore, the signal processor would generate a control signal responsive to some amplitude of the music signal to modulate light intensity using these signals. Appeal 2012-002070 Application 11/004,449 7 We reach a similar conclusion regarding controlling the light sources in Haake’s Figure 13. Here again, the control signal generated by the light source control circuit 80 (“signal processor”) is responsive to some amplitude of music signals from the pickup despite the frequency-based aspect of this control as Appellant indicates. App. Br. 35-36; Reply Br. 5-6. Combining these teachings with Breitweiser would predictably yield a system that would not only generate and process music signals from a musical instrument’s transducer for audible playback, but also visual indications. That Haake’s light sources are turned on and off via a switching network as Appellant indicates (App. Br. 35; Reply Br. 6 (citing col. 12, ll. 6-16)) does not change our conclusion. To the extent that Appellant contends that Haake’s system is incapable of varying light intensity responsive to a music signal amplitude, such an argument is not only unsupported by any persuasive evidence on this record, it is not commensurate with the scope of the claim. Nor has Appellant shown that varying the rate and duty cycle of Haake’s switching network to correspondingly vary the light intensity responsive to an amplitude of a music signal would have been beyond the level of ordinarily skilled artisans. In any event, the Examiner does not rely solely on Haake in this regard, but rather the cited references’ collective teachings. As such, Appellant’s individual attack on Haake does not show nonobviousness where, as here, the rejection is based on the references’ collective teachings. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appeal 2012-002070 Application 11/004,449 8 Therefore, we are not persuaded that the Examiner erred in rejecting representative claim 39, and claims 41-46 and 48 not argued separately with particularity. THE OBVIOUSNESS REJECTION OVER BREITWEISER, HAAKE, PIERCE, AND STARR Claims 49-54, 56-62, and 64-67 We also sustain the Examiner’s rejection of representative claim 49 reciting, in pertinent part, that the control signals are MIDI signals. We see no error in the Examiner’s reliance on Pierce and Starr merely to show that providing MIDI-based control signals to control lights used in connection with musical instruments is known in the art, and that providing such control signals in the Breitweiser/Haake system would have been obvious. Ans. 8- 12, 15. Despite Appellant’s contention that the Examiner’s rationale in combining the references3 is conclusory (App. Br. 38), the Examiner’s rationale for improving lighting control nonetheless has a rational underpinning, at least to the extent that such an improvement would be realized by using the same control signals for both instruments and lighting. See Ans. 11-12, 15. Such an enhancement predictably uses prior art elements according to their established functions—an obvious improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). 3 Although Appellant refers to the Examiner’s allegedly attempting “to modify the Rapport system with features from Bernstein’s teaching” in connection with this argument (App. Br. 38; emphases added), these references were not cited in the rejection and are, therefore, inapposite. Nevertheless, we presume that this inconsistency is a harmless typographical error, and that the argument was intended to be directed to the combination of references actually cited in the rejection. Appeal 2012-002070 Application 11/004,449 9 Nor are we persuaded that combining Haake and Starr with Breitweiser would render Breitweiser unsuitable for its intended training purpose as Appellant contends. App. Br. 39-40; Reply Br. 7-8. First, we are unpersuaded of error in combining Breitweiser and Haake for the reasons noted above. Although the control signals in Breitweiser’s training system are provided by a CD player, Haake teaches that an instrument-based pickup can provide music signals for light control in Figure 13, as noted previously. See Breitweiser, col. 5, ll. 37-60; Haake, col. 10, ll. 47-51; col. 11, l. 45 – col. 12, l. 16. Combining these features would not render Breitweiser unsuitable for its intended training purpose, but rather would enhance that purpose by providing visual as well as audible feedback as the instrument is played. Although these control signals are not MIDI signals, we see no error in the Examiner’s position that using these signals would have been obvious in light of Pierce and Starr—a predictable use of prior art elements according to their established functions. See KSR, 550 U.S. at 417. Lastly, we find Appellant’s contention that Breitweiser and Pierce fail to teach various disputed limitations of claims 49, 68, and 84 unavailing. App. Br. 40-42; Reply Br. 8. Leaving aside Appellant’s failure to address Breitweiser’s Figure 8 embodiment, noted above, the Examiner’s rejection is not based solely on Breitweiser in connection with the disputed limitations, but rather on the collective teachings of Breitweiser and Haake (along with Pierce and Starr for teaching MIDI signals). So even if the Examiner’s rejection is limited to Breitweiser’s Figure 7 embodiment, Appellant does not persuasively rebut the Examiner’s position that is not based on Breitweiser alone, but rather on the cited references’ collective teachings. That is, Appellant’s contention that (1) the combination of Breitweiser and Appeal 2012-002070 Application 11/004,449 10 Pierce fails to teach the recited limitations (App. Br. 40-42), and (2) neither Pierce nor Starr teach the recited transducer (Reply Br. 8) is unavailing where, as here, the Examiner’s rejection is not limited to these references, but rather their collective teachings along with those of the other cited references. See Merck, 800 F.2d at 1097. Therefore, we are not persuaded that the Examiner erred in rejecting representative claim 49, and claims 50-54, 56-62, and 64-67 not argued separately with particularity. Claims 68-83 We also sustain the Examiner’s rejection of claim 68 reciting, in pertinent part, an actuator, where the actuator comprises a button as recited in claim 69. First, Appellant’s contention that claim 69 recites a foot control (App. Br. 43; Reply Br. 8) is inconsistent with the language of the claim that recites a button. Nevertheless, to the extent that Appellant’s arguments regarding claim 69 apply to claim 55 that recites a foot controller, we address those arguments later in this opinion in connection with the Examiner’s rejection of that claim. Although Appellant contends that claim 84 recites a foot controller (App. Br. 42), it actually recites a floor controller. Nevertheless, to the extent that Appellant’s arguments apply to the floor controller of claim 84, we treat those arguments later in this opinion in connection with the Examiner’s rejection of that claim. Turning to the rejection of claims 68 and 69, Appellant does not persuasively rebut the Examiner’s particular findings from Breitweiser in connection with the recited actuator (Ans. 8-10), but rather argues that Appeal 2012-002070 Application 11/004,449 11 modifying Breitweiser or Pierce with an actuator would destroy their teaching functions. App. Br. 42-43; Reply Br. 8. Appellant, however, provides no persuasive evidence on this record to support this contention apart from these conclusory assertions that have little probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). To the extent that Appellant’s argument pertains to the proposed combination of references as rendering Breitweiser unsuitable for its intended training purpose in a manner similar to that previously discussed, we disagree for the reasons noted previously. The Examiner’s proposed enhancement predictably uses prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417. Accordingly, the weight of the evidence on this record favors the Examiner’s position. Therefore, we are not persuaded that the Examiner erred in rejecting claims 68 and 69, and claims 70-83 not argued separately with particularity. THE OBVIOUSNESS REJECTION OVER BREITWEISER, HAAKE, PIERCE, STARR, AND OFFICIAL NOTICE We also sustain the Examiner’s rejection of claim 55 reciting, in pertinent part, a foot controller. Although the Examiner acknowledges that the cited references lack this feature, the Examiner takes official notice that this feature is known in the art, and cites five patents as examples in concluding that the claim would have been obvious. Ans. 12-13. Although Appellant apparently challenges this official notice (see App. Br. 42-43), Appellant does not squarely address—let alone persuasively rebut—the Examiner’s particular findings from the exemplary cited references in this regard, let alone explain why the noticed facts are not considered to be Appeal 2012-002070 Application 11/004,449 12 common knowledge or well known in the art to constitute an adequate traversal under MPEP § 2144.03(C). Nor are we persuaded that the proposed modification would render Breitweiser unsuitable for its intended training purpose for reasons similar to those previously discussed. In short, the Examiner’s proposed enhancement predictably uses prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417. Therefore, we are not persuaded that the Examiner erred in rejecting claim 55. THE OBVIOUSNESS REJECTION OVER BREITWEISER, HAAKE, AND OFFICIAL NOTICE We also sustain the Examiner’s rejection of representative claim 84 reciting, in pertinent part, a floor controller essentially for the reasons indicated with respect to the other rejection where the Examiner relied similarly on official notice in connection with the recited foot controller. See Ans. 13-14 (taking official notice that generating control signals responsive to user manipulation of a foot or floor controller is known in the art and citing five examples of this fact). To the extent that Appellant’s arguments apply to this rejection despite erroneously indicating that claim 844 contains a foot controller (see App. Br. 42-43), we are unpersuaded by these arguments for the reasons previously discussed. 4 Although Appellant also indicates that claim 94 has a foot controller (App. Br. 42), there is no such claim on appeal. Nevertheless, we presume that Appellant intended to refer to claim 84 in this regard (despite this claim lacking a foot controller) in view of the repeated references to that claim in the same paragraph. Appeal 2012-002070 Application 11/004,449 13 Therefore, we are not persuaded that the Examiner erred in rejecting representative claim 84, and claims 85-87 not argued separately with particularity. THE REMAINING OBVIOUSNESS REJECTIONS We also sustain the Examiner’s obviousness rejections of dependent claims 47, 88, and 89. Ans. 8, 12-13. Appellant does not argue these claims separately apart from reiterating arguments made for the independent claims. See App. Br. 43-44; Reply Br. 8-9. We are not persuaded by these arguments, however, for the reasons previously discussed. CONCLUSION The Examiner did not err in rejecting claims 39, 41-62, and 64-83 under § 103.5 DECISION The Examiner’s decision rejecting claims 39, 41-62, and 64-83 is affirmed. 5 The independent system claims recite active method steps in connection with recited structural elements (e.g., “transducer generating . . . ,” signal processor generating . . . ,” “light source . . . emitting . . . ,” etc.). As such, these claims are effectively hybrid apparatus/method claims that have been held indefinite under § 112(b). See Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331, 1339 (Fed. Cir. 2011) (holding apparatus claim reciting active transmitting step indefinite). That is, it is unclear whether the independent claims cover devices that are merely capable of performing the recited functions (e.g., generating, emitting, etc.), or if those functions actually must be performed. We, therefore, leave the question of whether this issue renders the claims indefinite under § 112(b) to the Examiner. Appeal 2012-002070 Application 11/004,449 14 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 msc