COMMISSIONER'S DECISION
SUPPORT IN DISCLOSURE: Arpeggio System For Electronic Organ
Claims 34 to 36 were refused for lack of support m the disclosure. A suitable
amendment was agreed upon and amended claims 34 to 36 were accepted.
Final Action: Affirmed and Modified
*********************
This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated May 10, 1976, on application
149,193, (Class 84-1.2). The application was filed on August 11, 1972, in
the name of Walter Munch Jr. et al, and is entitled "Arpeggio System For
Electronic Organ." The Patent Appeal Board conducted a Hearing on Novem-
ber 2, 177, at which Mr. J. Woodley and Mr. D. Johnson represented the
applicant.
The application is related to an automatic arpeggio system for an electric
organ which consists of a multi-stage counter, a plurality of tone signal
sources, a separate hey for each of said sources, means for priming the
counter, means for making a count of the counters arid means for selecting
a tone source.
In the Final Action the examiner refused claims 23 to 41 for lack of support
in the disclosure. To support his position he had this to say (in part):
The instant subject matter can be best seen by referring
to block diagram Figure 1 and the description related
thereto at pages 5 and 6 of the disclosure. In this figure,
key switches 10 are labelled in respect to notes called for.
A note played detector 21 is common to all said key switches.
When at least one key is actuated, the detector provides a
control voltage to a sequential readout (multi-stage counter)
13. Each key has, via a bus, a signal gate 23 and each gate
is connected to a tone signal source 25 of appropriate fre-
quency. There are four sets of three busses per set to cover
all the octaves and all the notes of each octave. All C note
key switches are connected to a C bus; all C# switches are
connected to a C# bus, etc. Different signal gates, for
instance 23, 24 and 24a, providing notes C2, C2# and D2 are
tied together at their outputs to a tone gate. It is four of
such tone gates, say 36, 37, 38 and 39 that cover a first
octave. All the tone gates lead to tone filters 14, then to
amplifier 15 and loudspeaker 16. When an input signal is
present in any one of the tone gates, it is read out or
scanned by the counter; others are skipped. This readout con-
trols and effects arpeggiation.
...
The disclosure, needless to say, appears clear; the invention
described could be readily ascertained. On the other hand, the
language in claim 34 and as well in claims 35 through to 41 is
clear and unequivocal in its general terminology. Notwithstand-
ing any flexible meaning imported into that language, it is
definitely held that elements of substance in claim 34 are
different from those described. They do not perform the same
functions in the same way. Least of all, they do not coordinate
to form the unitary combination disclosed.
In view of the above comments, claim 34 therefore is again
rejected as contrary to Rule 25 for lack of support. Independ-
ent Claim 37 which is of narrower scope and claims 35, 36 and 38 to
41 which are in dependent form are also rejected on the same
ground.
In response to the Final Action the applicant cancelled claims 37 to 41, and
presented arguments, in support of claims 34 to 36, which read (in part):
In the Final Action under the title, "Consideration of Applic-
ant's Remarks" the Examiner has stated that dates 23 and 36
are not the "control" but passive type gates, and therefore, do
not disclose a series of control gates for selectively inter-
connecting the key-operable switches in circuit with said gener-
ator means for producing tones and response to operation of said
gates as claimed in part (d) of claim 34. Applicant respectfully
submits that gates 23 and 36 referred to in the disclosure as
signal gates and tone gates do in fact have an active operation
and do selectively interconnect the key-operable switches with the
generator means. The argument seems to boil down to the inter-
pretation of the terminology appearing in the disclosure. The
Examiner feels that the signal gates are keyed on by the key
switches via a respective bus, as taught on lines 27 and 28 of
page 5 and that the tone gates are turned on in sequence by the
sequential read-out 13, as taught on lines 12 and 13 at page 6.
Applicant admits that what the Examiner has stated is correct,
however, this does not mean that the signal and tone gates are
passive gates. The above quotes merely show that these gates are
operated as claimed in the last two lines of part (d) of claim 34
wherein it is claimed, "in response to operation of said gates".
When the signal gates and the tone gates are rendered operative,
they then become active gates to control the a-c signal or pulses
and to selectively interconnect the key-operable switches with the
generator means. The argument seems to boil down to the inter-
pretation of the terminology appearing in the disclosure. The
Examiner feels that the signal gates are keyed on by the key switches
via a respective bus, as taught on lines 27 and 28 of page 5 and
that the tone gates are turned on in sqeuence by the sequential read-
out 13, as taught on lines 12 and 13 at page 6. Applicant admits
that what the Examiner has stated is correct, however, this does not
mean that the signal and tone gates are passive gates. The above
quotes merely show that these gates are operated as claimed in the
last two lines of part (d) of claim 34 wherein it is claimed, "in
response to operation of said gates". When the signal gates and the
tone gates are rendered operative, they then become active gates
to control the a-c signal or pulses and to selectively inter-
connect the key-operable switches with the generator means.
Signal gates 23 and tone gates 36 in combination control the flow
of a-c tone signal from the tone signal sources 25 to the tone
output circuits 40. Applicant supports this position with a
number of references appearing in the disclosure. It is taught on
page 5, at lines 10 and 11 that each key has a signal gate as
23 for C2, 24 for C2$, and each signal gate is connected to a tone
signal source as 25. This particular description shows that the
signal gates do connect the key-operable switches with the
generator, which in this case is the tone signal source 25. The
active participation of the signal gate is taught on page 9, at
lines 6 through 9, "Discussing key switches #13, #14, and #15, each
supplies gating voltage, as via a lead 100, to a three signal
gate SG, (23, 24, 25a of Figure 1) pertain ing to three keys, which
sum and pass tone signal to tone gate TG1 via a single lead (shown
in Figure 5)." The signal gates which do the summing and passing
of tone to the tone gate do in fact have an active role as taught
in the above quote taken from page 9 of the disclosure. Further
support for this position is found on page 9, at lines 22 through 27,
"Any key which is actuated thus can close the gates which serve to
pass all notes of the same nomenclature as the key which is actuated,
in higher octaves. Circuit details to this end are illustrated in
Figure 1. The tone signals passed by the signal gates SG1 - SG20 are
passed to the tone gates NG1 - NG20, respectively." By this description
it can be seen that the signal gates are not merely passive gates
but do in fact have an active function in passing tone signals from
the keys to the tone signal gates.
...
Therefore, in the summary of the invention, applicant describes that
the actuated keys operate as bistable devices and the unactuated
keys operate a mono-stable devices. The Examiner seems to feel that
the scanning operation of all keys, whether actuated or not, is not
described in the detailed description of the invention. However, a
good description of the scanning operation is given on page 8, at
the second last paragraph wherein it is stated, "A positive voltage source
is available at lead U, which is conveyed via any one or more of
key switches 10, identified as S1, S2, S3, to terminal 74, and
thence to the collector of transistor Q1, of flip-flop N, shown as 71.
This transistor is normally on and Q2 of flip-flop 71 is normally off.
...
In view of the above arguments, applicant feels that the present
disclosure does support parts (a) through (f) of Claim 34. The
generator means of part (a) have been defined on page 5 at lines
10 to 13 as tone signal sources which are well known in the art
as generator means. The control gates are a combination of the
signal gates and the tone gates as argued hereinabove. The
discrepancy in the disclosure with respect to the scanning of all
positions and reading out only those which are enabled as well as
the halting operation of the scanner has also been explained above.
Therefore, applicant believes this application to be in condition
for allowance and requests your review at the earliest convenience.
The consideration before the Board is whether or not claims 34 to 36 are
supported by the disclosure. At the Hearing Mr. Woodley argued strongly
that there was support for claims 34 to 36 in the disclosure. He did how-
ever, make it clear that. if there was any doubt he was willing to amend
the claims if a suitable amendment could be agreed upon. As this is a
complex invention no successful conclusion was reached at the Hearing.
After the hearing, and in an attempt to expedite the prosecution of this
application, the Board with the gainful help of Examiner Toyooka made some
suggested amendments to claim 34 which, in our view, would be supported by
the disclosure. That amendment was submitted to the applicant by phone on
or about November 20, 1977.
On December 8, 1977, the applicant submitted a proposed claim 34 with further
amendments to parts (c) and (f) of the claim. The Board then considered that
amendment, but would not accept part (e) and advised the applicant accordingly.
On January 13, 1978, the applicant cancelled refused claim 34, and submitted
an amended claim 34 in accordance with our original suggestion. That claim
now reads:
A musical instrument comprising:
a) generator means for producing a series of signals corresponding
to a plurality of musical tones;
b) a keyboard;
c) a set of key-operable switches operable by the keys of said keyboard;
d) a series of control gates for selectively inter-connecting the key-
operable switches in circuit with said generator means for producing
tones in response to operation of said gates;
e) scanning means for sequentially scanning and operating said control
gates;
f) control means associated with said scanning means at operated ones
of said key operable switches for successively holding the scanning
operation of said scanning means from proceeding and for operating
said control gates;
and
g) means to restart the scanning operation of said scanning means.
The applicant also made a minor suggested amendment to claim 36, vis. he
changed the word "haulting" in line 6 to "holding."
In the circumstances we find it unnecessary to comment further because the
amendments to the claims now overcome the rejection in the Final Action. We
recommend that claims 34 to 36 be accepted as amended.
J.F. Hughes
Assistant Chairman
Patent Appeal Board, Canada
I have studied the prosecution of this application and I concur with the recom-
mendation of the Patent Appeal Board. Accordingly, the application is returned
to the examiner for resumption of prosecution.
J.H.A. Gariepy
Commissioner of Patents
Agent for Applicant
Douglas S. Johnson
133 Richmond St. W.
Toronto, Ontario
M5H 2L3
Dated at Hull, Quebec
this 18th. day of January, 1978