CITE: 155 USPQ 42
CMON: October 1966
PLAIN: Ex parte Glenn (Helen Gregg)
DEFND: US Patent and Trademark Office
COURT: US Patent and Trademark Office Board of Appeals
DATE: October 11, 1966
HISTORY:
Appeal from PTO Group 430. Application for patent of Helen Gregg Glenn,
Serial No. 375,002, filed June 15, 1964. From decision rejecting claims
23 to 44, applicant appeals (Appeal No. 611-00). Affirmed as to claims
23 to 40, 43 and 44; reversed as to claims 41 and 42.
SUMMARY:
A sheet of paper marked with (music) symbols to form a message is
printed matter that is not patentable.
JUDGE: BREWRINK, Examiner in Chief
Before Dracopoulos and Brewrink, Examiners in Chief, and Horton, Acting
Examiner in Chief.
DECISION:
This is an appeal from the final rejection of claims 23 through 44. No
claim is allowed. The references relied upon by the examiner are:
Clemens 438,429 Oct. 14, 1890
Robberson 482,442 Sept. 9, 1892
Burgess 1,594,194 July 27, 1926
All appealed claims are rejected by the examiner as being drawn to no more
than printed matter and thus not within the classes of subject matter
provided for as patentable under 35 U.S.C. 101 which reads as follows:
"Inventions patentable. Whoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter,
or any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title."
In support of such position the examiner refers to such decisions as:
In re Rice, 547 O.G. 399, 30 CCPA 730, 132 F.2d 140, 1943 C.D. 141;
Kieferle v. Kingsland, 78 USPQ 60, affirmed 83 USPQ 442; In re Lockert,
435 O.G. 219, 65 F.2d 159, 1933 C.D. 468; Ex parte Gwinn, 716 O.G. 15,
1957 C.D. 18.
All appealed claims are further rejected by the examiner under 35 U.S.C.
103 as unpatentable over anyone of Clemens, Burgess and Robberson. As
applied at pages 2 and 3 of the answer it is the examiner's position that
the claims only distinguish over such references by symbols and the
arrangements thereof, which is dismissed as a distinguishing factor on
the basis that such pertains to "printed matter". As to claims 41 and
42 the examiner considers it obvious to designate keys on a keyboard in
keeping with a musical system as recorded in sheet music form.
We have considered appellant's disclosure and arguments as presented
in the record and at oral hearings but are not persuaded that the subject
matter expressed in claims 3 through 40, 43 and 44 comes within the statutory
classes of patentable subject matter as recited in 35 U.S.C. 101. While a
sheet of paper having characters in ordered relation imprinted thereon is
a "manufacture" within the general meaning of this term, a long line of
decisions as detailed in Ex parte Gwinn, supra, supports the position taken
by the examiner that such an article is not a "new-manufacture" within the
meaning of 35 U.S.C. 101, when the sole difference is in the meaning
ascribed to the characters imprinted thereon. It is not material to such
"manufacture" whether the symbols used be a known alphabet or characters
of arbitrary and novel form. The use of characters and lines in
arrangements, colors, and other relationships to convey a message under
known or assigned meanings still remains a mere sheet of paper marked to
convey a message by "printed matter". As fully established in the precedent
decisions such is held not to come within the stated statutory classes of
invention. The stated rejection of claims 23 through 40, 43 and 44 as drawn
to non-statutory subject matter is affirmed.
Claims 41 and 42 by expression of piano keyboards with identifying means
to differentiate "between the set of finger-keys belonging to a C whole-step
series and the set of finger-keys belonging to the C# whole-step series",
appear to us to present a different situation. While the drawings do not
illustrate keyboard structures as required by claims 41 and 42, the
specification at pages 14 and 15 describes the use of "black" and "white"
keys to implement the claimed identification. Within the structural and
functional considerations presented in the piano field it appears to us
that the matter of "black" and "white" keys is more than a matter of
surface ornamentation and rises to the stature of a structural feature by
reason of its attendent physical and operational relationships. As a guide
to key relationships color becomes as useful in optical orientation of the
fingers with the keys as would be a difference in surface texture in
providing such guidance by the sense of touch. The recited identifiable
sets of keys are urged by appellant to have advantages, when used with the
claimed music notation sheet, in the case of reading and playing music and
particularly in transposing from one key to another. Upon this record it
appears to us that claims 41 and 42 exceed what can be dismissed as
arbitrary symbols and their use as "printed matter" apart from a new
relation to structure. The stated rejection of claims 41 and 42 upon
the grounds of printed matter is reversed.
In rejecting all appealed claims on each of the cited references the
examiner makes no attempt to satisfy argued distinctions as to symbols
or orientation of markings on a sheet, or the meanings to be ascribed
thereto. By dismissing such distinctions as "printed matter" the
rejection on the references is reduced to the same issue as is presented
in the rejection under 35 U.S.C. 101. In view of our holding as stated
above we would agree as to claims 23 through 40, 43 and 44 that no
patentable subject matter is presented over the use of a sheet of paper
to convey a message. The further rejection of the above listed claims
under 35 U.S.C. 103 is supported as cumulative to the rejection under
35 U.S.C. 101.
Rejection of claims 41 and 42 as unpatentable over each of the cited
references is not supported. As pointed out above we find in these
claims useful relationships of keyboard structure which are not suggested
by the references or rendered obvious by consideration of conventional
piano keyboard arrangement and the use of charts therewith as proposed
by the examiner in the paragraph spanning pages 2 and 3 of the Answer.
The rejection of claims 41 and 42 under 35 U .S.C. 103 is reversed.
The decision of the examiner is affirmed as to claims 23 through 40, 43
and 44; and reversed as to claims 41 and 42.