NOTE: This disposition is nonprecedential. 

## United States Court of Appeals for the Federal Circuit

2009-1219 (Serial No. 10/841,782)

IN RE WILLIAM YOUNGER GUESS and GEORGE EARL MORGAN

William Younger Guess and George Earl Morgan , of Baton Rouge, Louisiana, pro se. Raymond T. Chen , Solicitor, Office of the Solic itor, United States Patent and Trademark Office, of Alexandria, Virginia, for the Director of the United States Patent and Trademark Office. With him on the brief were Nathan K. Kelley and Benjamin D.M. Wood , Associate Solicitors. Appealed from: United States Patent and Trademark Office Board of Patent Appeals and InterferencesNOTE: This disposition is nonprecedential. 

## United States Court of Appeals for the Federal Circuit

2009-1219 (Serial No. 10/841,782)

IN RE WILLIAM YOUNGER GUESS and GEORGE EARL MORGAN

Appeal from the United States Pa tent and Trademark Office, Board of Patent Appeals and Interferences.

____________________________ DECIDED: June 9, 2009

____________________________ Before MICHEL, Chief Judge , NEWMAN, and LOURIE, Circuit Judges

. LOURIE, Circuit Judge

. DECISION William Y. Guess and George E. Morgan (c ollectively, “appellants”) appeal from the final decision by the Board of Patent Appeals and Interferences (“Board”) rejecting all five claims of appellant’s patent applicati on as anticipated under 35 U.S.C. § 102. Ex parte Guess , No. 2008-5385 (B.P.A.I. Nov. 18, 2008). Because the Board’s decision was supported by substantial evidence, we affirm

. BACKGROUND Appellants filed U.S. Patent Applicat ion No. 10/841,782 (the “’782 application”) on May 7, 2004. Appellants’ invention is a mu sical instrument that includes a keyboard attached to a guitar body. Claim 1, the only independent claim reads as follows:1. In a musical instrument of the type which comprises a keyboard secured to a guitar body and a neck, said neck further comprising a playing surface in which sa id playing surface is substantially rigid, the improvement comprising a means for producing musical tones from said playing surface in which a musician is able to contact and smoothl y slide a finger relative to said playing surface in order to produce and change said musical tones thereby.

The patent examiner assigned to the ’782 application issued a final rejection of all pending claims. The examiner found that the claims were antici pated by published U.S. Patent Application 0,099,131 (the “Ludwig re ference”). U.S. Patent App. No. 2004/0,099,131 A1 (filed Oct. 16, 2003) (publis hed May 27, 2004). Appellants appealed that decision to the Board. The Board affirmed the examiner’s decision that Figure 5 of the Ludwig reference, which depicts a stringed guitar wit h a keyboard built into the guitar body, anticipates the ’782 application. The Board st ated that “the means-plus-functi on limitation of claim 1 [of the ’782 application] when construed to cover corresponding structure in the Specification or its equivalents reads on t he stringed guitar with attached keyboard in Figure 5 of Ludwig.” Ex parte Guess , No. 2008-5385, slip op. at 8. Appellants have timely appealed the Board’ s decision. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A). DISCUSSION Anticipation is a question of fact, and the Board's findings thereon are reviewed to determine whether they are supported by substantial evidence. See e.g. , In re Berger , 279 F.3d 975, 980 (Fed. Cir. 2002). During examination, “claims . . . are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim

2009-1219 -2-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). Before the Board, Appellants failed to argue that any limitations unique to dependent claims 2 through 5 survive a finding of anticipation. Appellants have theref ore waived any such arguments on appeal. In re Watts , 354 F.3d 1362, 1367 (Fed. Cir. 2004). We therefore will analyze only claim 1, upon which all other claims must stand or fail. Claim 1 of the ’782 applicati on is written as a Jepson claim. The Jepson form of claiming permits a patentee to recite prior art in the preamble of t he claim. “Although a preamble is impliedly admitt ed to be prior art when a Jepson claim is used, unless the preamble is the inventor's ow n work, the claimed invention consists of the preamble in combination with the improvement.” Pent ec, 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 comp rising” 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 . . . compri sing a playing surface . . . [that] is substantially rigid” combined with an allegedly inventive improvem ent. That improvement comprises: a means for producing musical tones from said playing surface in which a musician is able to contact and smoothl y 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 m eans-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 deta iling 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

2009-1219 -3-the means-plus-function lmitati on of claim 1 in light of t he “corresponding structure, material or acts described in the specification and equivalents t hereof.” 35 U.S.C. § 112, ¶ 6. “In construing a means -plus-function limitation, a court must identify both the claimed function and the corres ponding 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 specificat ion. The specification of the ’782 application describes producing musica l notes in the tradi tional manner of bass guitars. “The bass guitar strings travel along the neck 26 and are capable of producing discrete musical notes by pr essing each string to a plurality of frets 36a-36x as is common with most bass guitars.” ’786 application at 11. Although that section of the specification refers to “not es” and not the claimed “tones,” the specification uses those two terms interchangeably. See e.g. , id. (“There are techniques whereby a musician may cause the string to vibrate sufficient to produce musical tones by the ‘neck’ hand only.”). We thus agree with t he Board that the s pecification describes a structure for producing musical tones as “a guitar with strings secured adjacent a neck playing surface.” Ex parte Guess , No. 2008-5385, slip op. at 7. 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. The resistors and power suppl y found in the ’782 applicatio n’s specification produce electronic signals that are indeed converted into MIDI notes. Because appellants are

2009-1219 -4-Because appellants are correct that the resistors and pow er supply serve as an alternative means of produci ng musical tones, that means-plus-function clause becomes a quasi-generic claim whose species include at least the guitar with strings securedadjacent a neck playing surface and the resistors and power supply. A means-plusfunction limitation encompasses a ll 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 referenc e that discloses any of the structures encompassed by the means-plus-function clause ant icipates that claim. A disclosure of a species anticipates a claim to a genus. In th is case, therefore, any prior art reference with structure that performs t he claimed function of producing musical tones by means of a “guitar with strings attac hed adjacent a neck playing surf ace” 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. That figure, reproduced below, consists of a guitar (500) with guitar strings (501) for producing musical tones and it has “a keyboard secured to a guitar body” (521) . Thus, it anticipates the claims of the ’782 application.

2009-1219 -5-Appellants’ primary argument for reversal of the Board’s decision is that the ’786 application discloses various structures, in cluding resistors, powe r 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 s pecification. If appe llants 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 si ngle means-plus-function limitation to distinguish itself from prior art, is br oad enough by virtue of its multiple disclosed structures to be anticipated by the Lud wig reference. We therefore affirm the judgment of the Board.
2009-1219 -6-2009-1219 -7- COSTS No costs

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