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 .
Claim Rejections - 35 USC § 101
2. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 101 that form the basis for the rejections under this section made in this Office action:
35 U.S.C. 101 reads as follows:
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.
3. Claims 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Under the 2019 PEG (now been incorporated into MPEP 2106), the revised procedure for determining whether a claim is "directed to" a judicial exception requires a two-prong inquiry into whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human interactions such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP § 2106.0S(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
Claims 1-12 are directed to an abstract idea of controlling an electronic musical instrument.
Specifically, representative claim 1 recites:
An electronic instrument comprising:
at least one processor, wherein the at least one processor is configured to:
determine, based on previously acquired fingering time information relating to a time required for a fingering operation performed by a performer, a delay set time for confirming a new fingering operation in response to the new fingering operation.
The claim limitations in the abstract idea have been highlighted in bold above; the remaining limitations are “additional elements”.
The highlighted portion of the claim constitutes an abstract idea under the 2019 Revised Patent Subject Matter Eligibility Guidance and the additional elements are NOT sufficient to amount to significantly more than the judicial exceptions, as analyzed below:
Step
Analysis
1. Statutory Category ?
Yes.
System/apparatus
2A - Prong 1: Judicial Exception Recited?
Yes.
See the bolded portion as listed above.
Under its broadest reasonable interpretation (BRI), the bolded portion encompasses mathematical concepts and/or calculations, namely a series of calculations leading to one or more numerical results or answers, which also encompasses mental processes, i.e. data manipulation, evaluation and judgment, that can be performed in the human mind or by a human using a pen and paper.
The limitation regarding “acquired fingering time information relating to a time required for a fingering operation performed by a performer” encompasses characteristics of the data gathered for performing the abstract idea, which can be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment or field of use.
Nothing in the bolded portion precludes these limitations from practically being performed in the mind and/or with the aid of pen/paper. Note, the courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). See also to MPEP 2106.04(a)(2).III
Therefore, the bolded portion of instant claim 1, reciting mathematical concepts and a mental process, amounts to an abstract idea falling within a combination of the “Mental Process” and “Mathematical Concepts” groupings of Abstract Ideas defined by the 2019 PEG.
2A - Prong 2: Integrated into a Practical Application?
No.
The limitation of “at least one processor” is recited at a high level of generality. Under the BRI, “at least one processor” encompasses a general-purpose computer. According to the MPEP 2106.04(a)(2), if a claim limitation, under its broadest reasonable interpretation, covers mental processes except for the mention of generic computer components performing computing activities via basic function of the computer, then the claim is likely considered to be directed to an ineligible abstract idea, as it essentially describes a mental process that could be performed by a human without the computer components adding any significant practical application beyond the abstract concept itself.
The claim as a whole does not meet any of the following criteria to integrate the abstract idea into a practical application:
An additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to affect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Various considerations are used to determine whether the additional elements are sufficient to integrate the abstract idea into a practical application. However, in all of these respects, the claim fails to recite additional elements which might possibly integrate the claim into a particular practical application. At most, it only generally links the judicial exception to a particular technological environment or field of use. See MPEP 2106.04(d)(2).
2B: Claim provides an Inventive Concept?
No.
As discussed with respect to Step 2A Prong Two above, the claim does not include any additional limitation that can be treated as “significantly more” or an “inventive concept”. See MPEP 2106.05.
The claim is therefore ineligible under 35 USC 101.
The dependent claims 2-10 inherit attributes of the independent claim 1, but does not add anything which would render the claimed invention a patent eligible application of the abstract idea. The claim merely extends (or narrows) the abstract idea which does not amount for "significant more" because it merely adds details to the algorithm which forms the abstract idea as discussed above.
In particular, claims 9 and 10 recites: “ … disposition of a pitch designation operator of an analog wind instrument” or “ … disposition of a pitch designation operator of an analog stringed instrument”. Under the BRI to the claim, these limitations are treated as insignificant post-solution activities attached to the identified judicial exception. They are qualified for meaningful limitations to integrate the identified judicial exception into a practical application. At most, it generally links the judicial exception to a particular technological environment or field of use. See MPEP 2106.04(d) and 2106.05(g).
Claims 11-12 are treated as ineligible subject matter under 35 U.S.C. § 101 for the same reason as that for claims 1-10 set forth above.
Claim Rejections - 35 USC § 102
4. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
5. Claims 1-9 and 11-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by SAKASHITA (JP 2604431 B2, machine translation).
Regarding claims 1, 11 and 12, SAKASHITA discloses an electronic instrument (Figs. 1-2), including computer programs encoded on a storage device for implementing a method (see discussion of Fig. 2) for practicing the electronic instrument, comprising: at least one processor, wherein the at least one processor (e.g., CPU 6) is configured to: determine, based on previously acquired fingering time information relating to a time required for a fingering operation (e.g., the fingering operation for playing C4 in Fig. 3) performed by a performer, determine a delay set time for confirming a new fingering operation in response to the new fingering operation (page 8-9: “this invention is configured so that when the fingering operation state of the pitch setting switch group 2 is changed, the timer 11 is operated from the time of the change, and based on an instruction from the timer 11, the output of pitch information from the pitch setting switch group 2 to the musical tone generating circuit 7 is delayed by a predetermined delay time (at least the time required for the fingering operation to stabilize in the correct state). Therefore, the CPU 6 sends the musical tone generation start instruction information to the musical tone generating circuit 7 with a delay of the delay time, and as a result, musical tones of the desired pitch are generated without generating any undesired musical tones ….”).
Regarding claim 2, SAKASHITA discloses: wherein the fingering time information is information relating to a maximum time of the time required for the fingering operation performed a plurality of times (page 11-12: “even if the fingering is in a transient state where it has not stabilized to a predetermined operating state, that is, even if the timing of the operation of the pitch setting switches 2-1 to 2-8 by multiple fingers is not synchronized and there is a time lag between them, no tone of an unnecessary pitch will be produced”).
Regarding claim 3, SAKASHITA discloses: wherein the fingering operation includes an operation of a fingering pattern which is a combination of fingerings allowing the performer to sequentially designate any plurality of pitches (page 4: “provide an electronic wind instrument that can delay and emit musical tones of pitches corresponding to changes in fingering technique, depending on the level of the player's fingering technique”; page 11-12: “even if the fingering is in a transient state where it has not stabilized to a predetermined operating state, that is, even if the timing of the operation of the pitch setting switches 2-1 to 2-8 by multiple fingers is not synchronized and there is a time lag between them, no tone of an unnecessary pitch will be produced”).
Regarding claim 4, SAKASHITA discloses: a timer (11 of Fig. 2) configured to measure the time required for the fingering operation performed by the performer.
Regarding claim 5, SAKASHITA discloses: a timer (11 of Fig. 2) configured to measure the delay set time for confirming the new fingering operation in response to the new fingering operation (page 12: “the timer 11 is connected to a timer value setting operator 11a which allows the performer to arbitrarily set a delay time for delaying the output of pitch information in accordance with his/her playing skill”).
Regarding claim 6, SAKASHITA discloses: wherein a fingering pattern of the fingering operation performed by the performer for obtaining the time required for the lingering operation performed by the performer is set with a difficulty level corresponding to a performance level of the performer (page 32: “for beginners, by setting the delay time long, musical tones after fingering can be sounded sufficiently quickly, making it extremely easy to play. For advanced players, by setting the delay time short, the sound production after fingering changes will not be delayed more than necessary, and an electronic wind instrument can be obtained that is capable of playing music at a fast tempo and with fast passages”).
Regarding claim 7, SAKASHITA discloses: a pitch designation operator configured to designate pitch information (page 7: “when there is a change in the designation operation of at least one switch of the pitch setting switches 2, new pitch information corresponding to the changed fingering is output to the musical tone generating circuit 7 based on an instruction from the timer 11 after a predetermined delay time has elapsed since the time of the change”).
Regarding claim 8, SAKASHITA discloses: a timer (11 of Fig. 2) configured to measure the time required for the fingering operation performed by the performer, wherein the timer is configured to measure the time required for the fingering operation performed on the pitch designation operator by the performer (page 7-10: see discussion of timer 11).
Regarding claim 9, SAKASHITA discloses: wherein the pitch designation operator is disposed to correspond to disposition of a pitch designation operator of an analog wind instrument (page 4: see discussion of “Purpose of the Invention”, here, the term “an analog wind instrument” is given a broad interpretation in light of the Specification).
Claim Rejections - 35 USC § 103
6. 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 of this title, 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.
7. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over SAKASHITA.
Regarding claim 10, SAKASHITA does not mention explicitly: wherein the pitch designation operator is disposed to correspond to disposition of a pitch designation operator of an analog stringed instrument.
Examiner takes official notice that an analog stringed instrument is well-known in the art. In view of SAKASHITA’s teaching of disposing the pitch designation operator to an analog wind instrument, it would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to apply the pitch designation operator of SAKASHITA to an analog stringed instrument. The merely application of a known technique to a specific instance by those skilled in the art would be obvious and involve only routine skill in the art.
Contact Information
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANCHUN QIN whose telephone number is (571)272-5981. The examiner can normally be reached 9AM-5:30PM EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dedei Hammond can be reached at (571)270-7938. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JIANCHUN QIN/Primary Examiner, Art Unit 2837