                      NOTE: This disposition is nonprecedential.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 Solicitor, 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 Interferences
                         NOTE: This disposition is nonprecedential.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


         Appeal from the United States Patent 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 (collectively, “appellants”) appeal from

the final decision by the Board of Patent Appeals and Interferences (“Board”) rejecting all

five claims of appellant’s patent application 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 Application No. 10/841,782 (the “’782 application”) on

May 7, 2004. Appellants’ invention is a musical 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 said 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 smoothly 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 anticipated by published U.S.

Patent Application 0,099,131 (the “Ludwig reference”).            U.S. Patent App. No.

2004/0,099,131 A1 (filed Oct. 16, 2003) (published 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 with a keyboard built into the guitar body, anticipates the

’782 application. The Board stated that “the means-plus-function limitation of claim 1 [of

the ’782 application] when construed to cover corresponding structure in the

Specification or its equivalents reads on the 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

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                                         -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 therefore 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 application is written as a Jepson claim. 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

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                                         -3-
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. “The bass guitar strings travel along the neck 26 and are capable of producing

discrete musical notes by pressing 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 “notes” 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 the Board that the specification 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 supply found in the ’782 application’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 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. 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, 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. We therefore affirm the judgment

of the Board.

2009-1219
                                       -6-
                       COSTS

     No costs.




2009-1219
                 -7-
