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
2. Applicant's arguments received 05/08/2026 have been considered but are moot in view of the new ground(s) of rejection. Detailed response is given in sections 3-4 as set forth below in this Office action.
Applicant’s arguments regarding the rejection under 35 USC 102 in reference to the amended claims are deemed persuasive. The corresponding rejection is therefore withdrawn.
Claim Rejections - 35 USC § 101
3. 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.
4. Claims 1-2, 5-7, 9-12, and 16-20 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 1-2, 5-7, 9-12, and 16-20 are directed to an abstract idea of automatically performing a performance pattern in which sound generation timings of notes to be sounded are set.
Specifically, representative claim 1 recites:
An automatic performance apparatus which automatically performs a performance pattern in which sound generation timings of notes to be sounded are set, the automatic performance apparatus comprising:
an input part configured to input performance information;
an input pattern storage part configured to store a plurality of input patterns;
a sound source configured to generate waveform data according to automatic performance information;
a converter configured to convert the waveform data generated by the sound source into analog waveform data for audio output; and
a processor configured to:
(a) calculate a likelihood for each of all or part of notes composing the plurality of input patterns stored in the input pattern storage part based on the performance information inputted to the input part;
(b) maximum-likelihood-estimate (i.e., estimate) one input pattern as a maximum-likelihood-estimated input pattern from among the plurality of input patterns based on the calculated likelihood;
(c) acquire (i.e., obtain or select) a maximum-likelihood-estimated probability corresponding to the maximum-likelihood-estimated input pattern;
(d) acquire (i.e., obtain or select) a sound generation probability pattern in which the maximum-likelihood-estimated probability is set as a probability of sounding a note for each sound generation timing of the performance pattern;
(e) determine whether to sound the note for each sound generation timing of the performance pattern based on the probability of each sound generation timing set in the acquired sound generation probability pattern; and
(f) output, to the sound source, the automatic performance information corresponding to the determination of whether to sound the note for each sound generation timing of the performance pattern.
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.
Apparatus/System
2A - Prong 1: Judicial Exception Recited?
Yes.
See bolded portion listed above.
Under its broadest reasonable interpretation (BRI), the limitation “(a) …” encompasses mathematical concepts, namely a series of calculations leading to one or more numerical results or answers (see Spec. para. 0074-0075), which can also be performed in the human mind or with the aid of pen and 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
Under the BRI, each of the limitations “(b) …”, “(c) …”, “(d) …”, and “(e) …” encompasses a mental process, namely concepts that a person could realistically carry out through thinking, observation, or evaluation, such as identifying patterns, making judgments, drawing conclusions, or performing mathematical calculations, that can be performed in the human mind or with pen and paper.
Further, each of the limitations “(c) …” and “(d) …” encompasses a process for gathering the data/information necessary for performing the abstract idea which can be performed by a human using pan and paper. The claimed “acquire” does not require any particular devices or sensors to acquire the information. It could just as easily relate to the acquisition (selection) of a sound generation probability pattern from, e.g., look-up tables as opposed to the generation of actual measurement data. Thus claim 1 would monopolize the abstract idea across a wide range of applications.
Moreover, the limitation of “a processor” is recited at a high level of generality. Under the BRI, it encompasses a general-purpose computer and related computing components. 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.
Nothing in the claim precludes these limitations from practically being performed in the mind and/or using a pen and paper. As such, the bolded portion of instant claim 1 falls within a combination of the “Mathematical Concepts” and “Mental Process” Groupings of Abstract Ideas defined by the 2019 PEG.
2A - Prong 2: Integrated into a Practical Application?
No.
Claim 1 recites: “an input part configured to input performance information”. Under the BRI, this additional limitation encompasses an input device such as a keyboard of a general-purpose computer or a conventional electronic keyboard instrument.
Claim 1 recites: “an input pattern storage part configured to store a plurality of input patterns”. Under the BRI, this additional limitation encompasses a storage or memory component of a general-purpose computer or a conventional electronic keyboard instrument.
Claim 1 recites: “a sound source configured to generate waveform data according to automatic performance information”. Under the BRI, this additional limitation encompasses an audio output device of a general-purpose computer that outputs waveform data and renders digital audio streams in a format such as WAVE PCM, which can be sent to the audio hardware of the computer for playback.
Claim 1 recites: “a converter configured to convert the waveform data generated by the sound source into analog waveform data for audio output” encompasses a digital-to-analog converter (DAC) of a general-purpose computer that converts the digital waveform data into analog waveform data for audio output.
As such, the combination of “An automatic performance apparatus which automatically performs a performance pattern in which sound generation timings of notes to be sounded are set, the automatic performance apparatus comprising: an input part configured to input performance information; an input pattern storage part configured to store a plurality of input patterns; a sound source configured to generate waveform data according to automatic performance information; a converter configured to convert the waveform data generated by the sound source into analog waveform data for audio output; and a processor” encompasses a general-purpose computer comprising generic computer components configured to perform computing activities via basic function of the computer. In particular, the generic limitation of “automatically performs a performance pattern in which sound generation timings of notes to be sounded are set” is no more than mere instructions to apply the abstract idea using the general-purpose computer. It is held that performing an abstract idea using a general-purpose computer system would not amount to significantly more than the abstract algorithm itself. See, for example, Whitserve LLC v. Dropbox, Inc. and MPEP 2106.05(f).
Under the BRI, the limitation “(f) …” reads on an insignificant post-solution activity to the judicial exception, which is not qualified for meaningful limitations to integrate the identified judicial exception into a practical application. MPEP 2106.05(g) and 2106.04(d).
In general, 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 effect 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. Instead, based on the above considerations, the claim would tend to monopolize the algorithm across a wide range of applications.
2B: Claim provides an Inventive Concept?
No.
Focusing on what the inventors have invented exactly, it is considered that the “core” of pending claim 1 is directed to an abstract algorithm of determining whether to sound a note for each sound generation timing of the performance pattern based on the probability of each sound generation timing set in a predetermined or provided sound generation probability pattern. The claim does not recite any additional element that amounts to “significantly more” or an “inventive concept” under the 2019 PEG (see discussion of the prior art in the previous Office action, see also MPEP 2106.05).
The claim is therefore ineligible under 35 USC 101.
The dependent claims 1-2, 5-7, 9-12, and 16-18 inherit attributes of the independent claim 1, but do not add anything which would render the claimed invention a patent eligible application of the abstract idea. These claims merely extend (or narrow) the abstract idea which do not amount for "significant more" because they merely add details to the algorithm which forms the abstract idea as discussed above.
Claims 19 and 20 are treated as ineligible subject matter under 35 U.S.C. § 101 for the same reason as for claim 1 set forth above.
Examiner’s Note
5. While there are related references that discuss techniques of automatically performing a performance pattern in which sound generation timings of notes to be sounded are set, the prior art of record does not specifically provide teachings for the limitations including: (a) calculate a likelihood for each of all or part of notes composing the plurality of input patterns stored in the input pattern storage part based on the performance information inputted to the input part; (b) maximum-likelihood-estimate (i.e., estimate) one input pattern as a maximum-likelihood-estimated input pattern from among the plurality of input patterns based on the calculated likelihood; (c) acquire a maximum-likelihood-estimated probability corresponding to the maximum-likelihood-estimated input pattern; (d) acquire a sound generation probability pattern in which the maximum-likelihood-estimated probability is set as a probability of sounding a note for each sound generation timing of the performance pattern; (e) determine whether to sound the note for each sound generation timing of the performance pattern based on the probability of each sound generation timing set in the acquired sound generation probability pattern. It is these limitations in combination with the rest of the limitations as recited in claims 1, 19 and 20, that have not been found, taught or suggested by the prior art of record, which make these claims distinguish over the prior art of record.
Conclusion
6. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Contact Information
7. 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.
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/JIANCHUN QIN/Primary Examiner, Art Unit 2837
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