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 Amendment
Receipt is acknowledged of applicants’ amendment filed December 7, 2022. Claims 1-5 are pending and an action on the merits is as follows.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Objections
Claims 1, 2, 4 and 5 are objected to because of the following informalities:
Claims 1 and 2 include limitations corresponding to “each section”. These limitations should be changed to state “each of a plurality of sections” for proper antecedent basis
Claim 4 includes the limitation “averaging results of scoring for each sections of the target musical piece”. This limitation should be changed to state “averaging results of scoring for each of a plurality of sections of the target musical piece” for proper antecedent basis
Claim 5 includes the limitation “represented by the pitch information in all the sections about the target musical piece”. This limitation should be changed to state “represented by the pitch information in all of a plurality of sections about the target musical piece” for proper antecedent basis
Appropriate correction is required.
Claim 1 is objected to because the following elements lack proper antecedent basis in the claim:
Line 13: “the pitch information (about the target musical piece)”
Line 16: “the pitches (recommended)”
Line 16: “the notes (recommended)”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 1 includes limitations pertaining to “pitch information into/of a/the plurality of types”. However applicants’ originally filed disclosure does not properly describe what is intended as a plurality of types of pitch information. A pitch of a note is known in the art as describing where on a musical staff said note is found. Although different notes can have different pitches, different pitches describe the same type of sound characteristic, i.e. position on a staff. It is unclear how notes can have a plurality of types of pitch information. Therefore these limitations are considered as not meeting the enablement requirement.
Claims 2-5 depend from claim 1 and therefore inherit all claimed limitations. These claims then also contain the limitations which do not meet the enablement requirement.
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.
Claims 1-5 are 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.
Claims 1 includes the limitation “aligned in a time series in the section”. However there is a lack of antecedent basis for “the section”. It is unclear whether applicants intend to reference each of multiple sections, or only one of multiple sections. For examining purposes, this limitation is interpreted as stating “aligned in a time series in a section”.
This claim further includes the limitation “changing pitches of notes represented by the pitch information”. However it is unclear whether applicants intend to reference the pitch information about the target music piece, or pitch information of the musical piece.
Additionally, the claim includes limitations pertaining to “pitch information into/of a/the plurality of types”. However applicants’ originally filed disclosure does not properly describe what is intended as a plurality of types of pitch information. As shown above, a pitch of a note describes where on a musical staff said note is found. It is unclear how notes can have a plurality of types of pitch information since all pitch information correspond to the same sound characteristic.
Claims 2-5 depend from claim 1 and therefore inherit all claimed limitations. These claims do not correct the deficiencies of claim 1.
Allowable Subject Matter
Claims 1-5 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph 35 and U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 1: Although the prior art (US 2023/0014315 A1) teaches a recommendation information provision device providing recommendation information (page 10 paragraph [0095]), the recommendation information provision device comprising: at least one processor being configured to: acquire a result of scoring (degree of satisfaction) relating to a user's performance of a musical piece in the past (page 2 paragraph [0022]), where the user’s performance is singing (page 2 paragraph [0021]), acquire pitch information representing pitches of notes configuring the musical piece and aligned in a time series in the section (page 4 paragraph [0045]); build a learning model predicting (estimating) a result of scoring relating to the user's singing of a musical piece from the pitch information; acquire a result of scoring relating to a user's singing of a target musical piece on the basis of an output of the learning model and output a recommendation to the user as the recommendation information on the basis of results of scoring for the pitch information about the target musical piece as a target (page 11 paragraph [0103]), the prior art does not teach nor suggest the scoring to relate to each of a plurality of sections of the musical piece, the pitch information about the target musical piece to be inputted to the learning model while changing pitches of notes represented by the pitch information into a plurality of types, and output a setting detail of the pitches of the notes recommended to the user on the basis of results of scoring for the pitch information of the plurality of types about the target musical piece.
The combinations of the claimed limitations are novel and found to be allowable over prior art. The cited references taken singly or in combination do not anticipate nor make obvious applicant's claimed invention.
Claims 2-5 depend from claim 1 and therefore inherit all allowed claim limitations.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18/000,210 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because any limitations missing from the claims of the reference application are described in the specification of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2023/0009481 A1, US 12,067,871 B2 pertaining to estimating a result of a scoring, and US 2012/0046771 A1, US 11,967,302 B2 pertaining to using machine learning to vary an inputted musical piece.
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/Christopher Uhlir/Primary Examiner, Art Unit 3619 January 22, 2026