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June 13, 2009


William Guess and George Morgan filed a patent application for "a musical instrument that includes a keyboard attached to a guitar body." Claim 1, the only independent, was a Jepson claim: a product claim listing a preamble that is typically in the prior art, followed by a listing of novel improvements. Rejected over a single prior art reference. Upheld all the way through the CAFC.

In re William Younger Guess and George Earl Morgan (CAFC 2009-1219) nonprecedential

During examination, "claims . . . are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990).

The Jepson form of claiming permits a patentee to recite prior art in the preamble of the claim. "Although a preamble is impliedly admitted to be prior art when a Jepson claim is used, unless the preamble is the inventor's own work, the claimed invention consists of the preamble in combination with the improvement." Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 315 (Fed. Cir. 1985) (citations omitted). In this case, appellants do not claim that the preamble, the language that precedes "the improvement comprising" in claim 1, is their own work. Thus, claim 1 consists of a prior art preamble, a "keyboard secured to a guitar body and a neck . . . comprising a playing surface . . . [that] is substantially rigid" combined with an allegedly inventive improvement. That improvement comprises:

a means for producing musical tones from said playing surface in which a musician is able to contact and smoothly slide a finger relative to said playing surface in order to produce and change said musical tones thereby.

The improvement limitation of claim 1 is thus in means-plus-function format, as permitted by 35 U.S.C. § 112, ¶ 6. The claim uses the presumptive "means for" language and does not contain structure detailing how to achieve the function of "producing musical tones." See TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259-60 (stating that "means" creates presumption of § 112 ¶ 6). We must therefore construe the the means-plus-function lmitation of claim 1 in light of the "corresponding structure, material or acts described in the specification and equivalents thereof." 35 U.S.C. § 112, ¶ 6. "In construing a means-plus-function limitation, a court must identify both the claimed function and the corresponding structure in the written description for performing that function." Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346, 1350 (Fed. Cir. 2003) (citing Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999)).

In this case, the claimed function is that of "producing musical tones." In order to determine the corresponding structure, we turn to the specification. The specification of the '782 application describes producing musical notes in the traditional manner of bass guitars.

Appellants appear to argue that the Board erred in not including as corresponding structure the resistors and power supply incorporated into the neck of their instrument. Because appellants are correct that the resistors and power supply serve as an alternative means of producing musical tones, that means-plus-function clause becomes a quasi-generic claim whose species include at least the guitar with strings secured adjacent a neck playing surface and the resistors and power supply. A means-plus-function limitation encompasses all of the structures in the specification that perform the recited function. See Ishida Co. v. Taylor, 221 F.3d 1310, 1316 (Fed. Cir. 2000). Thus, for anticipation purposes, a prior art reference that discloses any of the structures encompassed by the means-plus-function clause anticipates that claim. A disclosure of a species anticipates a claim to a genus. In this case, therefore, any prior art reference with structure that performs the claimed function of producing musical tones by means of a "guitar with strings attached adjacent a neck playing surface" anticipates the '782 reference.

We now turn to the Ludwig reference to determine whether it describes "a guitar with strings secured adjacent a neck playing surface" for "producing musical tones." Figure 5 of the Ludwig reference demonstrates that it does.

What it came down to was inept claiming, based upon lack of understanding.

Appellants' primary argument for reversal of the Board's decision is that the '786 application discloses various structures, including resistors, power supply, and a MIDI processor whereas the Ludwig reference does not. However, that argument fails to comprehend that, for purposes of anticipation, what is important is what is claimed by the patentee, not what is disclosed in the specification. If appellants had desired to distinguish their invention from prior art, such as the Ludwig reference, they could have claimed only those elements that they felt were novel over the prior art. However, the '786 application, which relies only on a single means-plus-function limitation to distinguish itself from prior art, is broad enough by virtue of its multiple disclosed structures to be anticipated by the Ludwig reference.


Posted by Patent Hawk at June 13, 2009 10:20 AM | Prior Art


Maybe Appellants should have also argued the patentability of the dependent claims?

Posted by: John Prosecutor at June 13, 2009 3:01 PM

Interesting. Why do you suppose they didn't argue the patentability of dependent claims?

Posted by: Teresa Hotchkiss-Brown at June 14, 2009 8:06 AM

"a means for producing musical tones from said playing surface in which a musician is able to contact and smoothly slide a finger relative to said playing surface in order to produce and change said musical tones thereby."

I think it would be a slam dunk if the claim was amended to include "...wherein this one goes to 11"

Posted by: Just sayin' at June 14, 2009 5:32 PM