Beattie, In re

• Decision Date: 04 September 1992
• Docket Number: No. 91-1396,91-1396
• Citation: 974 F.2d 1309,24 USPQ2d 1040
• Parties: In re John R. BEATTIE.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1309

974 F.2d 1309

24 U.S.P.Q.2d 1040

In re John R. BEATTIE.

No. 91-1396.

United States Court of Appeals,

Federal Circuit.

Sept. 4, 1992.

John R. Beattie, New York City, argued Pro Se.

Jameson Lee, Associate Sol., Office of the Sol., Arlington, Va., argued for appellee. With him on the brief was Fred E. McKelvey, Sol. Of counsel was Richard E. Schafer.

Before NIES, Chief Judge, ARCHER and CLEVENGER, Circuit Judges.

ARCHER, Circuit Judge.

John R. Beattie (Beattie) appeals from the decision of the Patent and Trademark Office Board of Patent Appeals and Interferences (board), No. 91-0646, dated April 30, 1991, affirming the rejection of claims 1 through 7 in application Serial No. 07/300,488 as unpatentable under 35 U.S.C. § 103 (1988). We affirm.

BACKGROUND

A. The Invention

Beattie's application, entitled "Apparatus and Method for Reading and Playing Music on Keyboard or Stringed Instruments," claims a marker intended to rest on the keys of a piano or other keyboard or fretboard instrument and to facilitate the reading and playing of music. The marker consists of a horizontal and a vertical portion. Displayed on the horizontal portion is the traditional musical notation C D E F G A B corresponding to the seven tones of the diatonic scale played by the white keys that make up an octave on a piano. The vertical portion displays numbers, preferably 0 1 2 3 4 5 6 7 8 9 10 11, and corresponds to the twelve half-tones of the chromatic scale played by the white and black keys that together make up an octave. Claim 1 reads:

A marker adapted for use in a basic instructional method for facilitating the reading and playing of music on a keyboard instrument having a standard keyboard with twelve keys per octave of which seven are white and five are black, said marker comprising a body portion formed from a thin material and adapted to rest vertically behind the black keys and upon the white keys of said keyboard instrument, said body portion having displayed thereon in vertical register

with each of said twelve black and white keys a number representing dodecatonically the chromatic semitone pitch sounded by each said black and white key, and tabs extending horizontally forward from the lower edge of said body portion and registering with each of said seven white keys, each of said horizontal tabs having displayed thereon the letter designation C, D, E, F, G, A, or B representing heptatonically the diatonic scale degree pitch sounded by each said white key, the said vertical twelve dodecatonic number designations juxtaposed with the said horizontal seven heptatonic letter designations giving linear and regular expression to the chromatic semitone twelve-pitch structure of the keyboard and of music and, simultaneously, linear and regular expression to the diatonic scale degree seven-pitch structure of the keyboard and of music, said marker adapted to be used in combination with a method of display for written music which likewise gives linear and regular expression to both chromatic semitone twelve-pitch structure and diatonic scale degree seven-pitch structure simultaneously through superimposition of the dodecatonic numbers upon the traditional heptatonic noteheads.

B. The Prior Art

United States Patent No. 1,725,844 to Barnes discloses a marker corresponding to a keyboard with a horizontal portion displaying traditional alphabetical notation and a vertical portion displaying that alphabetical notation plus attendant sharps and flats: C; C-Sharp or D-Flat; D; D-Sharp or E-Flat; E; F; F-Sharp or G-Flat; G; G-Sharp or A-Flat; A; A-Sharp or B-Flat; B.

United States Patent No. 566,388 to Eschemann teaches a musical marking system with a lower register displaying the traditional seven letters on the white keys and those letters with attendant sharps and flats on the black keys of the octave and an upper register with a numerical rather than alphabetical notation. Specifically, the traditional letters are represented as numbers one through seven with attendant sharps and flats indicated as those numbers outlined to correspond to the twelve tones of the octave: 1 1 2 2 3 4 4 5 5 6 6 7.

United States Patent No. 608,771 to Guilford discloses a system of musical notation that identifies the series of twelve half-tones of the chromatic scale with numbers 1 2 3 4 5 6 7 8 9 10 11 12. Guilford characterizes alphabetical notation with sharps and flats as "perplexing and irrational."

C. The Rejection

The board affirmed the examiner's rejection of claims 1 through 7 under 35 U.S.C. § 103 as obvious in view of the combined teachings of Barnes, Eschemann and Guilford. Because the claims are not separately argued, they stand or fall together. In re Kaslow, 707 F.2d 1366, 1376, 217 USPQ 1089, 1096 (Fed.Cir.1983); In re Albrecht, 579 F.2d 92, 93-94, 198 USPQ 208, 209 (CCPA 1978). The board concluded that Eschemann taught a marking system displaying a combination of two different notations, viz., alphabetical and numerical, and then determined that it would have been obvious to substitute the 1 2 3 4 5 6 7 8 9 10 11 12 numerical notation of Guilford for the 1 1 2 2 3 4 4 5 5 6 6 7 numerical notation of Eschemann.

DISCUSSION

I.

This court reviews an obviousness determination by the board de novo, while we review underlying factual findings for clear error. In re Woodruff, 919 F.2d 1575, 1577, 16 USPQ2d 1934, 1935 (Fed.Cir.1990). What a reference teaches is a question of fact. Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1579 n. 42, 1 USPQ2d 1593, 1606 n. 42 (Fed.Cir.1987). When determining the patentability of a claimed invention which combines two known elements, "the question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination." Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1462, 221 USPQ 481, 488 (Fed.Cir.1984).

II.

In his specification, Beattie refers to the alphabetical designation C D E F G A B as a heptatonic representation of the diatonic scale degrees and the numerical designation 1 2 3 4 5 6 7 8 9 10 11 12 as a dodecatonic representation of the chromatic semitones. These two theories combined on a single marker achieve, in Beattie's words, a "mutual reinforcement of the advantages inherent in each approach, permitting both types of scales, the diatonic and the chromatic, to appear as smooth progressions, easy for students to visualize and understand."

There is no dispute that Barnes and Eschemann each disclose the heptatonic theory and that Guilford teaches the dodecatonic theory such that Guilford's notation substituted on the upper register of the marking systems of either Barnes or Eschemann describes the claimed invention. The question here is whether the board correctly held that it would have been obvious to one having ordinary skill in the art to combine the references in order to meet the claimed invention. Beattie contends that the board, in arriving at its conclusion of obviousness, did not accord due weight to the notion that Guilford teaches away from the claimed combination and that the declarations of seven music teachers provide convincing evidence of nonobviousness of the invention.

Eschemann displays on the lower register of his marking system the traditional letters alone and those letters with attendant sharps and flats for "those familiar with the ordinary musical notation." On the upper register, Eschemann displays 1 1 2 2 3 4 4 5 5 6 6 7 "for those unfamiliar with the theory of music." Eschemann, then, provides the suggestion to retain traditional alphabetical notation when introducing a new numerical notation.

Guilford teaches the advantages of a dodecatonic twelve tone music theory over the traditional heptatonic seven and twelve tone music theories. Specifically, Guilford discloses the deficiencies of traditional music theory of twelve tones based on a notation system having only seven intervals thus requiring five sharps and flats. He arrives at a "simple and rational" solution by utilizing the uniform series of numbers 1 2 3 4 5 6 7 8 9 10 11 12 instead of the "perplexing and irrational" system of C, C#/Db, D, D#/Eb, E, F, F#/Gb, G, G#/Ab, A, A#/Bb, B. This reference suggests the desirability of implementing a simple numerical alternative to the complex alphabetical music notation.

Armed with a reference teaching the old alphabetical notation on a marking system with a new numerical notation in one hand and a reference teaching a different numerical notation in the other hand, the obviousness of substituting Guilford's numerical twelve tone system for Eschemann's numerical twelve tone system to arrive at Beattie's claimed invention is clearly established.

Although Guilford's twelve tone theory is said to be "dodecatonic" while Eschemann's twelve tone theory is said to be "heptatonic," as Beattie defines those terms, the absence of a single express teaching of a marker with the two theories combined does not make impossible a sound prima facie case of obviousness. As long as some motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the references be combined for the reasons contemplated by the inventor. In re Kronig, 539 F.2d 1300, 1304, 190 USPQ 425, 427-28 (CCPA 1976); In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).

Moreover, Guilford's endorsement of a dodecatonic twelve tone notation over the traditional twelve tone notation does not establish a teaching away from the older system such that Guilford cannot be combined with Eschemann. Guilford merely presents an alternative to a well-entrenched musical theory, which, of course, he considers better and urges as a replacement. The recommendation of a new musical notation system, however, does not require obliteration of another; coexistence of the teachings of Guilford and traditional musical notation for...