CITE:  1943 J. Patent Office Society 905
CMON:  August 1943
PLAIN: Ex parte S
DEFND: US Patent and Trademark Office
COURT: US PTO Board of Appeals
DATE:  August 4, 1943


  Music on phonographic record is analogous to printed matter and not




The appealed claims are for the combination, as apparatus, of a phonograph
record (the "sound record carrier", 13) and the accompanying structural
elements of electrical pick-up ("record translating means", 14) and "sound
reproducing means" (recievers, 25).  The novelty of the combination lies
in the elaborate description of what is recorded on the sound record -
the different predetermined frequencies of the audible frequency range,

It was the examiner's position that the appealed claims recite a conventional
phonograph set-up except as to the subject matter recorded on the record
disk.  He holds that the claims should be construed and treated
according to the law applicable to printed matter.  Since differences of
printed matter placed on a conventional carrier, such as a sheet of paper,
do not afford a basis for different patents, so by analogy, differences
in sound records embodied in a conventional carrier, such as a disk record,
cannot afford a basis for different patents.

The examiner cited a patent to Lybarger to show that the combination of a
disk record and sound reproducing means is old.  Presumably many other
patents could have been cited to show this combination, but Lybarger was
cited because it is in the same art.  Applicant has presented a lengthy
argument against the reference accompanied by affidavit.  We have not
considered the affidavit because we do not regard it as necessary to
remand the affidavit to the examiner for report.  It is readily seen that
applicant's argument pertains to the method, which is not in issue,
because the method claims have been allowed.

We are in agreement with the examiner's position.  If the subject matter
contained on the record could be considered as a material limitation in
appraising the patentable novelty of the combination, a large number of
records containing widely different kinds of novel and meritorious
subject matter, such as classroom lectures, advertising formulas, music
experimental data and many other subjects could be presented for patent.
Moreover, we do not find that applicant has traversed the precise
rejection made by the examiner.  As before stated, applicant's argument
relates to the merits of the novel method, by stressing the functional
significance in the method of the recorded matter.