CITE:  132 F.2d 140
CMON:  December 1942
PLAIN: In re Rice
DEFND: US Patent and Trademark Office
COURT: Court of Customs and Patent Appeals
DATE:  December 1, 1942

Appeal from the Board of Appeals of the United States Patent Office,
Serial No. 194,981.

Proceedings in the matter of the application of Harlow Gale Rice for a
patent.  From a decision of the Board of Appeals of the United States
Patent Office affirming a decision of the Primary Examiner rejecting the
application, the applicant appeals.  Affirmed.

  Printed/graphical instructions for playing a piano not patentable.

JUDGE: LENROOT, Associte Judge
Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, AND
JACKSON, Associate Judges. 


This appeal brings before us for review a decision of the Board of Appeals of
the United States Patent Office affirming a decision of the Primary Examiner
rejecting, upon the grounds hereinafter stated, claims 17 to 29, inclusive,
of appellant's application for a patent. No claims were allowed.

Claim 17 is illustrative of the subject matter of the claims before us and
reads as follows: 

    17. The art of writing sheet music which comprises reproducing upon
    a paper sheet a plurality of spaced charts consisting of a pictorial
    representation of a portion of a piano keyboard, the top surfaces of
    the black and white keys affording fields for indicating indicia, and
    applying indicating indicia to selected keys of each chart to indicate
    the keys to be played on the count or measure represented by the
    respective charts. 

The reference cited is: 

Dickson, 1,053,366, February 18, 1913. 

Appellant's alleged invention is sufficiently described in the above quoted

The examiner rejected the claims upon three grounds, viz, 

1. That the claims are directed to subject matter not patentable under
Section 4886, R.S. (U.S.C. title 35, sec. 31). 

2. That the claims are not proper method claims. 

3. That the claims lack invention over the disclosure of the Dickson patent. 

The Board of Appeals in its decision specifically ruled only upon the third
ground above stated, viz, the rejection of the claims on the Dickson patent;
but it did recite all of the grounds of rejection by the examiner, and, after
stating that certain claims had been withdrawn by appellant, concluded its
decision with the following: 
   "* * * The remaining claims are rejected on the grounds given above
   and discussed by the examiner. 

   The decision of the examiner is affirmed."

This general affirmance was a complete affirmance of all the grounds upon
which the examiner finally rejected the claims. In re Wagenhorst, 20 C.C.P.A.
991, 64 F.2d 780. 

In view of our conclusion with respect to the first ground of rejection
above stated, it is unnecessary to discuss the other grounds, or further to
refer to the Dickson patent, other than to say that it was issued in 1913;
and, in view of the judicial decisions rendered since that time, we must
assume such a patent would not now be granted by the Patent Office. 

We are in accord with the view that the claims before us are directed to
subject matter not patentable under Section 4886, R. S., supra. 

All of the claims before us are directed to the art of writing sheet music,
which comprises reproducing upon a paper sheet certain information as an
aid to beginners in learning to play the piano. 

It is well established in patent law that invention cannot rest alone in novel
printing arrangement, although it may reside in some physical structures of
printed matter. In re Reeves, 20 C.C.P.A. 767, 62 F.2d 199; In re Sterling, 21
C.C.P.A. 1134, 70 F.2d 910; Conover v. Coe, 69 App. D.C. 144, 99 F.2d 377. 

It is true that the above cited cases did not involve method claims, but
the principles therein declared are equally applicable to method and
article claims. 

The case of In re McKee, 20 C.C.P.A. 1018, 64 F.2d 379, did embrace method
as well as article claims. That case involved, among other things, the
patentability of a method of marking meat. One ground of rejection of the
claims by the Patent Office tribunals was that the marking of meat does not
come within the purview of the patent statute. 

In affirming this ground of rejection by the Patent Office we said: 

    "In oral argument and in brief counsel has urged that under the
    case of Cincinnati Traction Company v. Pope, 210 F. 443, his claims
    should be allowed. That case is quite a famous one and may be said
    to be the leading case in this field. The patent involved a railway
    ticket comprising a body portion and a coupon, the ticket bearing
    conventional indications showing that the body alone was good at one
    time of the day and that the body and the coupon were required for
    the other portion of the day. The court there held that the device
    of the patent clearly involved physical structure and that the claims
    were limited to such structure. 

    We see nothing more in appellant's alleged invention than the
    arrangement of printed matter upon meat. We are not impressed with
    the contention that the Cincinnati Traction Company case, supra, is
    authority for sustaining appellant's contention. On the contrary,
    the case is easily distinguishable from the case at bar. There the
    material upon which the printing appeared had a novel form, which
    form served a new and useful purpose. In the case at bar, the form
    of the meat is not in any respect made to depend upon the printing

So in the case at bar we see nothing in appellant's alleged invention other
than the arrangement of printed matter and other indicia upon a sheet of

Appellant relies upon the case of In re Sheffield, 53 App. D.C. 109, 288 F.
463, wherein a decision of the Commissioner of Patents was reversed, which
decision held that a method of visually indicating the structure and meaning
of a sentence in the printing of books was unpatentable over two patents
cited as prior art. 

The court held that the said patents did not negative invention of the
claims before it, and that the appellant there had made a substantial
contribution to the art. 

However, so far as appears from said case, the question here involved was
not before the court and was not considered by it. The only question there
considered was the patentability of the claims over the cited prior art. 

Therefore that case has no bearing upon the question of whether the involved
claims embody subject matter patentable under Sec. 4886 R.S., supra. 

It is our opinion that, under the many decisions of this and other courts
relating to subject matter patentable under the patent laws,  the claims
before us were properly rejected upon the first ground hereinbefore stated. 

The decision appealed from is affirmed.