CITE: 1943 J. Patent Office Society 905 CMON: August 1943 PLAIN: Ex parte S DEFND: US Patent and Trademark Office COURT: US PTO Board of Appeals DATE: August 4, 1943 HISTORY: SUMMARY: Music on phonographic record is analogous to printed matter and not patentable. JUDGE: DECISION: [........] The appealed claims are for the combination, as apparatus, of a phonograph record (the "sound record carrier", 13) and the accompanying structural elements of electrical pick-up ("record translating means", 14) and "sound reproducing means" (recievers, 25). The novelty of the combination lies in the elaborate description of what is recorded on the sound record - the different predetermined frequencies of the audible frequency range, etc. It was the examiner's position that the appealed claims recite a conventional phonograph set-up except as to the subject matter recorded on the record disk. He holds that the claims should be construed and treated according to the law applicable to printed matter. Since differences of printed matter placed on a conventional carrier, such as a sheet of paper, do not afford a basis for different patents, so by analogy, differences in sound records embodied in a conventional carrier, such as a disk record, cannot afford a basis for different patents. The examiner cited a patent to Lybarger to show that the combination of a disk record and sound reproducing means is old. Presumably many other patents could have been cited to show this combination, but Lybarger was cited because it is in the same art. Applicant has presented a lengthy argument against the reference accompanied by affidavit. We have not considered the affidavit because we do not regard it as necessary to remand the affidavit to the examiner for report. It is readily seen that applicant's argument pertains to the method, which is not in issue, because the method claims have been allowed. We are in agreement with the examiner's position. If the subject matter contained on the record could be considered as a material limitation in appraising the patentable novelty of the combination, a large number of records containing widely different kinds of novel and meritorious subject matter, such as classroom lectures, advertising formulas, music experimental data and many other subjects could be presented for patent. Moreover, we do not find that applicant has traversed the precise rejection made by the examiner. As before stated, applicant's argument relates to the merits of the novel method, by stressing the functional significance in the method of the recorded matter.