DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Claims 12-16, 18-19, and 21-22 are pending and have been considered below. Claims 1-11, 17, and 20 are cancelled by Applicant.
Applicant’s arguments, see page 9, lines 26-31, filed 2/24/2026, with respect to claims 12, 14, 16, 19, and 20, have been fully considered and are persuasive. The objections of record are withdrawn. See below for new objections regarding the amended claims.
Applicant’s arguments, see page 10, line 1 – page 11, line 11, filed 2/24/2026, with respect to claims 12-16 and 18-20, have been fully considered and are persuasive. The 35 U.S.C. 112(b) rejections of record are withdrawn. See below for a new 35 U.S.C. 112(b) rejection regarding the amended claims.
Applicant’s arguments, see page 11, line 12 – page 17, line 26, filed 2/24/2026, with respect to all claims, have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The phrase, “to the extent understood,” refers to claims that are simultaneously rejected under 35 U.S.C. 112 and under 35 U.S.C. 102 or 103. Rejecting unclear claims over prior art “to the extent [that the claims are] understood” promotes compact prosecution as instructed in MPEP § 706.03. Please see the 35 U.S.C. 112(b) rejection below regarding amended claim 22. This examiner would welcome a telephonic interview if Applicant wishes to discuss instant claim 22 toward the goal of allowability.
Claim Objections
Claim 12 is objected to because of the following informality: In line 1, "digital practice-shortened saxophone-like horn" should read, "digital practice shortened saxophone-like horn." Appropriate correction is required.
Claim 12 is objected to because of the following informality: In line 13, "wherein, in said digital practice, shortened saxophone-like horn, said plurality of magnets activate" should read, "wherein, in said digital practice-shortened saxophone-like horn, said plurality of magnets activate." Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 22 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 22, Applicant's inconsistent use of commas and semicolons, as well as Applicant's inconsistent use of a mixture of "or" and "and" within a list of elements establishes an ambiguous claim construction. Applicant's intent regarding conjunctive or disjunctive relationships of the recited functions of the keys is unclear especially in view of successive amendments and related arguments. Clarification is required. (See MPEP § 2173.05(h).) In the interest of advancing prosecution, the phrase, "and wherein at least one of the following is held true: an octave key configured to change range; a High E key, for an Eb-like horn, configured to shift tonal range up; a C key configured to shift to a normal tonal range; a Bb key, for a Bb-like horn, configured to shift tonal range down; and at least one of an F key, an E/F# key, or a D key configured to facilitate or change a MIDI channel; an additional F# key configured to power the horn off; or an Eb/D3 key and a low C key, when pressed together, configured to enter a processor command mode," will be interpreted as an overarching disjunctive list whose elements may comprise separate hierarchical lists.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 12, 14-15, 18, and 21 are rejected under 35 U.S.C. as unpatentable over Odisei (https://www.youtube.com/watch?v=LhmQ_-fwiUc, March 1, 2019, accessed September 3, 2025), hereinafter Odisei, in view of Onozawa et al. (US 20050217464 A1, October 6, 2005), hereinafter Onozawa.
Regarding claim 12, Odisei teaches a digital practice shortened saxophone-like horn (Odisei 0:56: "Practice without disturbing others." Odisei 2:00 discloses a man playing a TravelSax in bed while his partner sleeps peacefully beside him.), comprising: a body that is shorter than a pre-altered horn (Odisei 0:33 discloses a length of approximately 22 cm: "Its size is comparable to a small water bottle") by lacking bell and bow sections (Odisei 0:33 discloses a horn comprising no bell nor bow sections.); a communication module configured to enable connection with a DAW application via MIDI- USB or Bluetooth modules (Odisei 1:20: "It can be easily paired with any smartphone device via Bluetooth and works with thousands of music apps, opening a whole world of endless possibilities, for example, if you use compatible apps such as GarageBand." GarageBand comprises a DAW.), and thereby connection with computers or smartphones (Odisei 1:20: "It can be easily paired with any smartphone device), speakers, or headphones thereof (Odisei 1:01 discloses plugging headphones into a smartphone and listening to the TravelSax.); and wherein a right-hand portion of a key mechanism is relocated upwardly (Odisei 1:05 visually discloses a right-hand portion of a key mechanism relocated upwardly.) to allow the key mechanism to be useful in the shortened horn (MPEP § 2114(II) states: "[R]ecitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus." Notwithstanding, Odisei 1:01 states: "To ensure that playing the travel sax is as close as possible to practicing with a conventional saxophone, we have mimicked the design and position of the keys") and to provide a platform for electronics (MPEP § 2114(II) states: "[R]ecitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus." Notwithstanding, Odisei 1:41 discloses soldering together a TravelSax PCB which is mounted in the horn.).
Odisei does not explicitly disclose a flexible printed circuit board (PCB) disposed inside the body; one or more sensors usable with the flexible PCB; a plurality of magnets positioned to activate one or more of said sensors; a processor and an operating system configured to process keying and air blowing via a mouthpiece of the horn; and wherein said pre-altered horn comprises a plurality of apertures that provide a change in tune, and wherein, in said digital practice, shortened saxophone-like horn, said plurality of magnets activate said one or more sensors to provide said change in tune.
However, Onozawa teaches a flexible printed circuit board (PCB) disposed inside the body (Onozawa ¶0039: "A flexible circuit board 14 is secured to the tubular body 10 below the key mechanism 12 (see FIG. 1)"); one or more sensors usable with the flexible PCB (Onozawa ¶0039: "On the other hand, conductive lines 14a are printed on a flexible board 14b, and the Hall-effect elements 15 are provided on the conductive lines 14a."); a plurality of magnets positioned to activate one or more of said sensors (Onozawa ¶0039: "and the pieces of magnet 13 are attached to the link works 11c and keys 11a."); a processor and an operating system configured to process keying and air blowing via a mouthpiece of the horn (Onozawa ¶0041: "The microprocessor periodically fetches the pieces of playing data, which are carried on the digital detecting signals, and stores the pieces of playing data in the working memory. The microprocessor analyzes the pieces of playing data in the working memory to see whether or not the player changes the position of the tongue, strength of breath, pressure on the bill-like portion and/or the depressed/released keys 11 a. When the answer is given affirmative, the microprocessor determines the pitch, loudness and length of the electric tone to be produced, and produces the music data code representative of these pieces of music data representative of the attributes of the electric tone. The microprocessor determines the length of tone and loudness on the basis of the pieces of playing data supplied from the tonguing sensor 23 and the pieces of playing data supplied from the breach sensor 23 a, respectively."); and wherein said pre-altered horn comprises a plurality of apertures that provide a change in tune (Onozawa ¶0024: "The acoustic saxophone 2 includes a tubular body 10, a mouthpiece 20 and a key mechanism 12... The tone holes 10b define the length of vibrating air column inside the tubular body 10 in cooperation with the key mechanism 12."), and wherein, in said digital practice-shortened saxophone-like horn, said plurality of magnets activate said one or more sensors to provide said change in tune (Onozawa ¶0004: "The music data codes are supplied to an electronic tone generator, and an audio signal is produced on the basis of the music data codes through the electronic tone generator. The audio signal is supplied to a sound system so as to be converted to the electric tones.").
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the silent digital practice horn of Odisei by adding the sensors and processor of Onozawa to provide a wind instrument that is available for a performance through electronic tones (Onozawa ¶0008).
Regarding claim 14, Odisei (in view of Onozawa) teaches a digital practice shortened saxophone-like horn comprising the features of claim 12 as discussed above.
Onozawa further teaches that the operating system is configured to process keying and air blowing via said horn (Onozawa ¶0041: "The microprocessor periodically fetches the pieces of playing data, which are carried on the digital detecting signals, and stores the pieces of playing data in the working memory. The microprocessor analyzes the pieces of playing data in the working memory to see whether or not the player changes the position of the tongue, strength of breath, pressure on the bill-like portion and/or the depressed/released keys 11a. When the answer is given affirmative, the microprocessor determines the pitch, loudness and length of the electric tone to be produced, and produces the music data code representative of these pieces of music data representative of the attributes of the electric tone. The microprocessor determines the length of tone and loudness on the basis of the pieces of playing data supplied from the tonguing sensor 23 and the pieces of playing data supplied from the breach sensor 23a, respectively.").
Regarding claim 15, Odisei (in view of Onozawa) teaches a digital practice shortened saxophone-like horn comprising the features of claim 12 as discussed above.
Onozawa further teaches that said operating system is configured to process keying and air blowing via the mouthpiece of said horn (Onozawa ¶0041: "The microprocessor periodically fetches the pieces of playing data, which are carried on the digital detecting signals, and stores the pieces of playing data in the working memory. The microprocessor analyzes the pieces of playing data in the working memory to see whether or not the player changes the position of the tongue, strength of breath, pressure on the bill-like portion and/or the depressed/released keys 11 a. When the answer is given affirmative, the microprocessor determines the pitch, loudness and length of the electric tone to be produced, and produces the music data code representative of these pieces of music data representative of the attributes of the electric tone. The microprocessor determines the length of tone and loudness on the basis of the pieces of playing data supplied from the tonguing sensor 23 and the pieces of playing data supplied from the breach sensor 23 a, respectively." Onozawa's "bill" corresponds to a woodwind mouthpiece (Onozawa fig. 3).).
Regarding claim 18, Odisei (in view of Onozawa) teaches a digital practice shortened saxophone-like horn comprising the features of claim 12 as discussed above.
Odisei further suggests a kit comprising said digital practice shortened saxophone-like horn (Odisei 1:17 teaches assembling the TravelSax, which inherently comprises a kit.).
Regarding claim 21, Odisei (in view of Onozawa) teaches a digital practice shortened saxophone-like horn comprising the features of claim 12 as discussed above.
Onozawa further suggests that the horn is usable with (Onozawa ¶0010: "In accordance with one aspect of the present invention, there is provided a wind instrument for selectively producing acoustic tones and electric tones comprising an acoustic wind instrument including a tubular body defining a column of air inside thereof, a mouthpiece connected to one end of the tubular body and giving rise to vibrations of the column of air for producing the acoustic tones when a player blows thereinto.") or without a mouthpiece (Onozawa ¶0010: "and an electronic system including a quasi mouthpiece connectable to the aforesaid one end of the tubular body instead of the mouthpiece and permitting the player to blow thereinto without provocation of the vibrations." Replacing a mouthpiece with a "quasi mouthpiece" that does not provoke vibrations reasonably suggests "without a mouthpiece." Besides, the device of Odisei is inherently usable with or without a mouthpiece.).
Claims 13, 16, 19, and 22 are rejected under 35 U.S.C. as unpatentable over Odisei in view of Onozawa, and further in view of Casio (https://web.archive.org/web/20130927110255/https://www.manualslib.com/products/Casio-Dh-100-692475.html, Captured September 27, 2013, accessed September 3, 2025), hereinafter Casio, to the extent understood.
Regarding claim 13, Odisei (in view of Onozawa) teaches a digital practice shortened saxophone-like horn comprising the features of claim 12 as discussed above.
Odisei (in view of Onozawa) does not explicitly disclose that said horn comprises a siphon that causes saliva and moisture to run down a pipe inside said horn and to drip out of a moisture outlet in a bottom cap located at the distal-most portion of said horn.
However, Casio teaches that said horn comprises a siphon that causes saliva and moisture to run down a pipe inside said horn and to drip out of a moisture outlet in a bottom cap located at the distal-most portion of said horn (Casio discloses a water drain on the distal most portion of the horn, labeled in fig. 2 from Casio p. 6.).
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the digital practice horn of Odisei (as modified by Onozawa) by adding the moisture drain of Casio to drain water from the horn (Casio, p. 6).
Regarding claim 16, Odisei (in view of Onozawa and further in view of Casio) teaches a digital practice shortened saxophone-like horn comprising the features of claim 13 as discussed above.
Onozawa further teaches that said operating system is configured to process keying and air blowing via the mouthpiece of said horn (Onozawa ¶0041: "The microprocessor periodically fetches the pieces of playing data, which are carried on the digital detecting signals, and stores the pieces of playing data in the working memory. The microprocessor analyzes the pieces of playing data in the working memory to see whether or not the player changes the position of the tongue, strength of breath, pressure on the bill-like portion and/or the depressed/released keys 11 a. When the answer is given affirmative, the microprocessor determines the pitch, loudness and length of the electric tone to be produced, and produces the music data code representative of these pieces of music data representative of the attributes of the electric tone. The microprocessor determines the length of tone and loudness on the basis of the pieces of playing data supplied from the tonguing sensor 23 and the pieces of playing data supplied from the breach sensor 23 a, respectively." Onozawa's "bill" corresponds to a woodwind mouthpiece (Onozawa fig. 3).).
Regarding claim 19, Odisei (in view of Onozawa and further in view of Casio) teaches a digital practice shortened saxophone-like horn comprising the features of claim 13 as discussed above.
Odisei further suggests a kit comprising said digital practice shortened saxophone-like horn (Odisei 1:17 teaches assembling the TravelSax, which inherently comprises a kit.).
Regarding claim 22, Odisei (in view of Onozawa) teaches a digital practice shortened saxophone-like horn comprising the features of claim 12 as discussed above.
Onozawa further suggests that the horn is usable with (Onozawa ¶0010: "In accordance with one aspect of the present invention, there is provided a wind instrument for selectively producing acoustic tones and electric tones comprising an acoustic wind instrument including a tubular body defining a column of air inside thereof, a mouthpiece connected to one end of the tubular body and giving rise to vibrations of the column of air for producing the acoustic tones when a player blows thereinto.") or without a mouthpiece (Onozawa ¶0010: "and an electronic system including a quasi mouthpiece connectable to the aforesaid one end of the tubular body instead of the mouthpiece and permitting the player to blow thereinto without provocation of the vibrations." Replacing a mouthpiece with a "quasi mouthpiece" that does not provoke vibrations reasonably suggests "without a mouthpiece." Besides, the device of Odisei is inherently usable with or without a mouthpiece.).
Odisei (in view of Onozawa) does not explicitly disclose a single octave key cup located at a body portion of the horn, replacing two octave keys located in a neck portion of a conventional horn; and wherein at least one of the following is held true: an octave key configured to change range; a High E key, for an Eb-like horn, configured to shift tonal range up; a C key configured to shift to a normal tonal range; a Bb key, for a Bb-like horn, configured to shift tonal range down; and at least one of an F key, an E/F# key, or a D key configured to facilitate or change a MIDI channel; an additional F# key configured to power the horn off; or an Eb/D3 key and a low C key, when pressed together, configured to enter a processor command mode.
However, Casio teaches a single octave key cup located at a body portion of the horn, replacing two octave keys located in a neck portion of a conventional horn (Casio teaches a single octave key on the body of the instrument labeled in fig. 1 from Casio p. 11.); and wherein at least one of the following is held true: an octave key configured to change range; a High E key, for an Eb-like horn, configured to shift tonal range up; a C key configured to shift to a normal tonal range; a Bb key, for a Bb-like horn, configured to shift tonal range down; and at least one of an F key, an E/F# key, or a D key configured to facilitate or change a MIDI channel; an additional F# key configured to power the horn off; or an Eb/D3 key and a low C key, when pressed together, configured to enter a processor command mode (Casio teaches a single octave key on the body of the instrument labeled in fig. 1 from Casio p. 11.).
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the digital practice horn of Odisei (as modified by Onozawa) by adding the moisture drain of Casio to drain water from the horn (Casio, p. 6).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP SCOLES whose telephone number is (703)756-1831. The examiner can normally be reached Monday-Friday 8:30-4:30 ET.
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/PHILIP G SCOLES/
Examiner, Art Unit 2837
/DEDEI K HAMMOND/Supervisory Patent Examiner, Art Unit 2837