In re Fox, Patent Appeal No. 8862.

• Decision Date: 01 February 1973
• Docket Number: Patent Appeal No. 8862.
• Citation: 471 F.2d 1405,176 USPQ 340
• Parties: Application of Calvin L. FOX.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

176 USPQ 340, 471 F.2d 1405 (1973)

Application of Calvin L. FOX.

Patent Appeal No. 8862.

United States Court of Customs and Patent Appeals.

February 1, 1973.

Amster & Rothstein, New York City, attorneys of record, for appellant. Jesse Rothstein, New York City, of counsel.

S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Jere W. Sears, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and WATSON, Judge, United States Customs Court, sitting by designation.

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of all five claims in appellant's application, serial No. 621,145, filed March 7, 1967, for "Process for Audio Information Distribution," We affirm.

To epitomize the description of appellant's process in his specification in non-claim language, the invention consists of making, by conventional equipment, a tape-recording of a lecture or the like,¹ transmitting this master tape to a suitable distribution point, such as a school library, making a plurality of copies of the master tape at the library for use by those wishing to hear the lecture on their own playback equipment and at their own convenience, and letting the users bring back their tape copies when they are through with them and have new lectures reproduced thereon from other master tapes at the library, which would, of course, entail erasing the record then on the tape. As to the copying equipment at the library or other distribution point, the specification states:

The recording device is of conventional design and the structural details thereof are not necessary for an understanding of the method of the present invention. For purposes of this description it suffices to note that the recording device which is employed is capable of accommodating at least one, and preferably three, so-called slave tapes in cartridges for recording an audio program of a selected one of the master tapes and of achieving this recording at a fraction of the 30 minute play-back time of the program. This, in an obvious manner, enables wide dissemination of the audio information of the master tapes.

There is one main claim and there are four dependent claims. In claim terminology, the first recording is the "master tape," the library is the "first remote location," the copies there made are tapes in "slave cartridges,"² and the place where the listener plays his slave tape is "a further remote location." Claim 1 reads:

1. A method of transmitting audio information from an origin location to a first remote location and then, in multiple copies of such audio information, to a plurality of further remote locations comprising the steps of:

(a) Recording at an origin location a plurality of programs of audio information on a plurality of individual master tapes, one for each program, and packaging said individual master tapes in individual master tape cartridges;

(b) Transmitting a plurality of said recorded programs in said master tape cartridges to a first remote location;

(c) Selectively recording at said first remote location onto at least one tape in a slave cartridge one said recorded program from a selected one of said master tape cartridges at a recording speed greater than the audio playback speed of said recorded program;

(d) Transporting said recorded slave tape cartridge from said first remote location to a further remote location;

(e) Reproducing the audio information on said transported slave tape cartridge at said further remote location;

(f) Transporting said slave tape cartridge back from said further remote location to said first remote location; and

(g) Repeating steps (c) through (f) herein repeatedly with different programs.

The examiner cited no prior art and rejected on two grounds: under 35 U.S.C. § 101 for the reason that the invention is "a method of doing business, i. e. subject matter which does not fall within any one of the statutory classes of invention," and under 35 U.S.C. § 103 for the reason that the invention would have been obvious to those of ordinary skill in the art at the time it was made in view of practices so well known that judicial notice may be taken thereof.

The board affirmed on both grounds, first discussing the obviousness rejection. It considered each element of the main claim and the details added by the dependent claims and held:

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