Ex Parte 7142948 et alDownload PDFPatent Trial and Appeal BoardJan 4, 201695002037 (P.T.A.B. Jan. 4, 2016) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/002,037 07/18/2012 7142948 36563-0004RX1 1070 131059 7590 01/05/2016 Honeywell/Husch Patent Services 101 Columbia Road P.O. Box 2245 Morristown, NJ 07962 EXAMINER RALIS, STEPHEN J ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 01/05/2016 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ NEST LABS, INC., Requester, Respondent, and Cross-Appellant v. HONEYWELL INTERNATIONAL INC., Patent Owner, Appellant, and Cross-Respondent ____________________ Appeal 2015-007693 Reexamination Control 95/002,037 Patent 7,142,948 B2 Technology Center 3900 ____________________ Before JOHN A. JEFFERY, DENISE M. POTHIER, and JENNIFER L. McKEOWN, Administrative Patent Judges. McKEOWN, Administrative Patent Judge. Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 2 DECISION ON APPEAL Honeywell International Inc. (“Patent Owner”) appeals from the decision in the Examiner’s Right of Appeal Notice rejecting claims 1–711 of the ’948 patent. PO App. Br. 2.2 Nest Labs, Inc. (“Requester”) cross-appeals the Examiner’s decision not to adopt or maintain certain proposed rejections. See 3PR App. Br. 3– 8. I. STATEMENT OF CASE Requester requested inter partes reexamination of U.S. Patent No. 7,142,948 B2 (“the ’948 patent”) issued to Stephen V. Metz on November 28, 2006. We have been informed that the ’948 patent was the subject of a district court proceeding, namely Honeywell International Inc. v. Nest Labs, Inc. et al., Civil Action No. 0:12-cv-00299-SRN-JSM (D. Minn.). See PO App. Br. 1. An oral hearing was conducted on December 2, 2015. The transcript of the oral hearing will be made of record in due course. We have jurisdiction under 35 U.S.C. §§ 134 and 315 (pre-AIA). We AFFIRM. 1 Patent Owner appeals the rejection of claims 1–5, 7, 9–12, 14–17, 42–46, 48–50, 58–64, 68, 69, and 71 and cancels claims 6, 8, l3, 18–41, 47, 51–57, 65– 67, and 70 in an amendment accompanying Patent Owner’s Appeal Brief that the Examiner entered. See PO App. Br. 1; Ans. 1 (noting that the amendment filed Sept. 2, 2014 was entered). 2 In this opinion, we refer to (1) the Right of Appeal Notice mailed May 16, 2014 (“RAN”); Action Closing Prosecution mailed August 1, 2013, (3) Patent Owner’s Corrected Appeal Brief filed January 9, 2015 (“PO App. Br.”); (4) Requester’s Respondent Brief filed February 9, 2015 (“3PR Resp. Br.”); (5) Patent Owner’s Rebuttal Brief filed June 16, 2015 (“PO Reb. Br.”), and (6) Requester’s Corrected Cross-Appeal Brief filed September 22, 2014 (“3PR App. Br.). Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 3 II. THE ’948 PATENT The ’948 patent generally relates to programmable controllers for devices and, more specifically, to simplified interfaces for device controllers having a dynamic schedule display. One embodiment of the invention, shown in Figure 2 reproduced below, includes a user interface displaying at least a portion of a programmable schedule along a time axis. The ’948 patent describes that “the current time indicator is positioned to indicate the current time in relation to the time axis 228, and thus the schedule. ’948 patent, col. 4, ll. 1–2. The programmable schedule may be broken into segments 229 and 230 and messages 226 and 227 may be associated with each segment, e.g., “Wake” for one segment and “Leave” for another. See ’948 patent, col. 4, ll. 5–20. Displayed message 215 may include additional information, such as “current scheduled parameter setting (e.g. temperature, humidity), a current parameter reading, and/or any other information as desired.” ’948 patent, col. 4, ll. 31–36. Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 4 Claims 1, 7, 9, and 68 are illustrative and read as follows: 1. (Amended) A method comprising the steps of: operating a programmable controller to cause an HVAC system to change an environmental condition of an inside space from a first initial set point to a second desired set point, the HVAC system achieving the change in the environmental condition to the second desired set point in an amount of time; and providing a message via a user interface during the amount of time indicating when the desired second set point is anticipated to be achieved in the inside space, wherein the user interface is further configured to display at least a portion of a programmable schedule along a time axis, the programmable schedule comprising two or more parameters representing different schedule set points. 7. (Original) A method comprising the steps of: operating a programmable controller to cause an HVAC system to change an environmental condition of an inside space from a first initial set point to a second desired set point, the HVAC system achieving the change in the environmental condition to the second desired set point in an amount of time; allowing a user to change the set point to a third over- controlling set point during the amount of time; and informing the user that changing the set point to the third over- controlling set point will not decrease the amount of time needed to achieve the second desired set point. 9. (New) An HVAC controller for controlling an HVAC system of a building, the HV AC controller comprising: a memory for storing a schedule, wherein the schedule includes a plurality of scheduled set points; a user interface including a display; a programmable controller coupled to the memory and the user interface, the programmable controller arranged and configured to cause the HVAC system to change an environmental condition of an inside space of the building from a first initial set point, which is one of the plurality of scheduled set points of the schedule, to a second Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 5 desired set point, the HVAC system achieving the change in the environmental condition to the second desired set point in an amount of time; and a message displayed on the user interface of the HVAC controller during the amount of time indicating when the desired second set point is anticipated to be achieved in the inside space. 68. (New) An HVAC controller for controlling an HVAC system of a building, the HVAC controller comprising: a memory for storing a schedule, wherein the schedule includes a plurality of scheduled set points; a user interface; a programmable controller coupled to the memory and the user interface, the programmable controller arranged and configured to cause the HV AC system to change an environmental condition of an inside space of the building from a first initial set point, which is one of the plurality of scheduled set points of the schedule, to a second desired set point, the HV AC system achieving the change in the environmental condition to the second desired set point in an amount of time; a message displayed on the user interface of the HVAC controller during the amount of time indicating when the desired second set point is anticipated to be achieved in the inside space; and an indication displayed on the user interface of the HVAC controller of the second desired set point simultaneously with an indication displayed on the user interface of the HV AC controller of a current temperature reading. PO App. Br., Claims App’x. III. REJECTIONS A. Evidence Relied Upon The Examiner relies on the following as evidence of unpatentability: Garvey US 6,286,764 B1 Sept. 11, 2001 Hull US 2004/0262410 Al Dec. 30, 2004 Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 6 (provisional application filed on Apr. 11, 2003) Nippon Denso JP 59–106311 A June 20, 1984 Mitsubishi JP 1–252850 A Oct. 9, 1989 Simonin EP 0434 926 A2 July 3, 1991 Alpine JP 2002–87050 A Mar. 26, 2002 Shah WO 02/35304 A2 May 2, 2002 We note that Patent Owner relies on the Declaration of Gregor Henze, dated August 1, 2013 (“Henze Decl.”). Requester additionally relies on the Declaration of Therese E. Peffer, dated January 22, 2013 (“Peffer Decl. I”) and Declaration of Therese E. Peffer, dated October 3, 2013 (“Peffer Decl. II”). B. The Adopted Rejections3 The Examiner maintains the following rejections: 1. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over each of Nippon Denso, Mitsubishi, and Garvey. RAN 12. 2. Claims 9–12, 14–16 and 68 are rejected under 35 U.S.C. § 102(b) as anticipated by Garvey. RAN 16. 3. Claims 16,17, 42, 44, 45, and 48 are rejected under 35 U.S.C. § 103(a) as unpatentable over Garvey. RAN 16–17. 4. Claims 1–5, 43, and 49 are rejected under 35 U.S.C. § 103(a) as unpatentable over Garvey and Hull. RAN 17–20. 5. Claims 46, 50, 58–60, and 69 are rejected under 35 U.S.C. § 103(a) as unpatentable over Garvey and Alpine. RAN 21. 3 Because Patent Owner canceled certain claims such that they are no longer at issue in this appeal, we do not include the adopted rejection of these claims. Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 7 6. Claims 61, 63, and 64 are rejected under 35 U.S.C. § 103(a) as unpatentable over Garvey and Mitsubishi. RAN 21. 7. Claim 62 is rejected under 35 U.S.C. § 103(a) as unpatentable over Garvey, Mitsubishi, and Alpine. RAN 22. 8. Claims 1–3, 5, 9, 10, 12, 14–17, 42–45, 48, 49, 61, 63, 68, and 71 are rejected under 35 U.S.C. § 103(a) as unpatentable over Shah and Mitsubishi. RAN 23–26. 9. Claims 46, 50, 58–60, 62, and 69 are rejected under 35 U.S.C. § 103(a) as unpatentable over Shah, Mitsubishi, and Alpine. RAN 31. 10. Claims 1–5, 9–17, 42–44, 48, 49, and 68 are rejected under 35 U.S.C. § 103(a) as unpatentable over Simonin and Nippon Denso. RAN 32–33. 11. Claims 42–45, 48, 49, 61, and 68 are rejected under 35 U.S.C. § 103(a) as unpatentable over Simonin and Mitsubishi. RAN 33–34. 12. Claims 46, 50, 58 and 69 are rejected under 35 U.S.C. § 103(a) as unpatentable over Simonin, Nippon Denso, and Alpine. RAN 35. 13. Claims 46, 50, 58 and 69 are rejected under 35 U.S.C. § 103(a) as unpatentable over Simonin, Mitsubishi, and Alpine. RAN 35. 14. Claim 71 is rejected under 35 U.S.C. § 103(a) as unpatentable over Simonin, Nippon Denso, and Hull. RAN 36–39. 15. Claims 59 and 60 are rejected under 35 U.S.C. § 103(a) as unpatentable over Simonin, Nippon Denso, Alpine, and Hull. RAN 40–41. 16. Claims 63, 64, and 71 are rejected under 35 U.S.C. § 103(a) as unpatentable over Simonin, Mitsubishi, and Hull. RAN 41. Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 8 IV. ANALYSIS We review the appealed rejections for error based upon the issues identified by Patent Owner, and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). “Any arguments or authorities not included in the briefs permitted under this section or [37 C.F.R.] §§ 41.68 and 41.71 will be refused consideration by the Board, unless good cause is shown.” 37 C.F.R. § 41.67(c)(1)(vii). A. The Obviousness Rejections of Claim 7 Based on the record before us, we are not persuaded that the Examiner erred in rejecting claim 7 under 35 U.S.C. § 103(a) as unpatentable over each of Nippon Denso, Mitsubishi, and Garvey. The Examiner finds that “informing the user,” as recited in claim 7, “does not require a specific message to be provided to user [sic], only that information, via some mechanism, is provided to the user to make them aware of the change/no- change condition.” RAN 58; see also RAN 60, 65. Patent Owner contends that this interpretation is unreasonably broad and inconsistent with the ’948 patent’s specification. See PO App. Br. 5–7. According to Patent Owner, to be consistent with the ’948 patent’s disclosure that a message is adapted to inform the user (’948 patent, col. 5, ll. 50–54), the informing of claim 7 requires “a positive and definite action (i.e., adapting the message) [] to inform the user. . . .” PO App. Br. 5–6 (citing Henze Decl. ¶ 21); see also PO Reb. Br. 3–4. On the other hand, Requester points out that the claim does not limit how the user is informed. See, e.g., 3PR Resp. Br. 3. According to Requester, a device can “inform” a user without giving detailed messages. Patent Owner chose, not to recite the actual output of the device, but instead Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 9 to recite the effect on the observer-and Patent Owner thus must deal with whatever outputs could have the relevant effect on a typically user-i.e., that would “inform” the user. 3PR Resp. Br. 3. Requester also points out that the Examiner’s interpretation is consistent with the ’948 patent’s specification. See 3PR Resp. Br. 4. We agree with Requester. Notably, claim 7 broadly recites “informing” without limiting the manner in which the user is informed. Patent Owner does not identify, nor do we see, any language of the claim that requires a “positive action” to inform the user. As Requester and the Examiner point out, a user can be informed by positive action or lack thereof. 3PR Resp. Br. 4 (citing RAN at pages 59–60). We are similarly not persuaded that the Specification supports Patent Owner’s proposed interpretation. The ’948 patent discloses that once a user enters an over-controlling set point in an attempt to increase the rate of temperature change, “message 450 can be adapted to inform the user that entering an over- controlling set point will not increase the rate of temperature change and/or decrease the amount of time required to change the temperature of the inside space.” ’948 patent, col. 5, ll. 50–58. Notably, nothing in this passage, or any other portion of the ’948 patent, defines, or even suggests, that the claimed “informing the user” requires a “positive action.” Rather, the ’948 patent merely describes an exemplary to “inform” the user. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (“It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must clearly express an intent to redefine the term.” (citations omitted) (internal quotation marks omitted)). Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 10 Furthermore, the ’948 patent, itself, seems to imply that no positive action is required. Namely, the sentence immediately following the above cited portion of the ’948 patent identifies that an alternative to adapting the message would be to continue to inform the user of the time until the space will reach the next set point, even if the user modified the current temperature setting. See ’948 patent, col. 5, ll. 54–58 (“In some embodiments, the message 450 can continue to inform the user of the time and/or duration of time until the inside space reaches the next scheduled set point value, even if the user modifies the current temperature setting.”). In other words, a skilled artisan would reasonably interpret the ’948 patent’s disclosure of the continuing to display the time-until-temperature message after user modification to the temperature setting as an alternative method for informing the user that the temperature rate change will not increase by entering an over- controlling set point. As such, we are not persuaded that the “informing” of claim 7 requires a “positive action” as asserted by Patent Owner. Turning to the prior art, Patent Owner asserts that The cited prior art merely updates the indicated time to reach the new set point after the user changes a set point. The references each require the user to remember the time that was previously displayed or spoken, and/or how long it previously took to reach a previous set point. The prior art does not “inform” the user as does the invention of claim 7, but simply performs its usual functionality. PO App. Br. 6–7; see also PO App. Br. 7 (asserting that because “the user that must realize and determine that changing the set point to a third over-controlling set point will not decrease the amount of time needed to achieve the second desired set point,” this “reads out much of the language in the last paragraph of claim 7.”); PO Reb. Br. 6–7. We understand, then, that Patent Owner interprets “informing” Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 11 to require expressly or directly informing, i.e. “informing” does not allow a user to draw any inferences. Requester responds that “if the device provides enough information for a user to make the determination, then the device is informing the user.” 3PR Resp. Br. 3 (citing Peffer Decl. II ¶5). Specifically, “under the BRI standard, if a user changes the setpoint and a time-to-temperature display does not change (or if the time increases), then the thermostat is ‘informing the user that changing the set point ... will not decrease the amount of time needed.’” 3PR Resp. Br. 3. The Examiner agrees with Requester and finds that informing the user that changing the temperature set point would not decrease the amount of time required to achieve the second desired temperature in the informing the user of the increase resulting in new desired set point different from the second desired set point (i.e. informing the user of an increase inherently informs the user that a decrease will not occur). RAN 59; see also RAN 62, 65–66. We agree with the Examiner. As discussed above, claim 7 does not limit the manner in which a user is informed, nor does claim 7 preclude a user from inferring certain reasonable information. As Requester points out, informing a user, which would generally be a human having ordinary intelligence, that a time to temperature will increase for a third over-controlling set point, would also inform the user that the third over-controlling set point will not decrease the amount of time needed to achieve a previous set point. See 3PR Resp. Br. 6. As such, for the reasons discussed above and presented by the Examiner, we are not persuaded of error in the Examiner’s interpretation of “informing the user.” Specifically, with respect to Nippon Denso, Patent Owner contends that Nippon Denso fails to teach “informing the user that changing the set point to the Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 12 third over-controlling set point will not decrease the amount of time needed to achieve the second desired set point.” PO App. Br. 7–8. Patent Owner acknowledges that Nippon Denso addresses the same issue as the ’948 patent, namely that a user may enter a high or lower temperature with the intention of getting to the actual desired temperature quicker. PO App. Br. 7; see also 3PR Resp. Br. 4 (citing Nippon Denso 53–54). But, according to Patent Owner, Nippon Denso teaches a “different solution” by informing the user of the time to temperature. PO App. Br. 7–8 (citing Nippon Denso 54); see also PO Reb. Br. 4– 5. Because we disagree with Patent Owner’s narrow interpretation of informing the user, we also disagree that Nippon Denso fails to disclose this limitation. As the Examiner points out and as discussed above, “informing the user of an increase [in the time to temperature] inherently informs the user that a decrease will not occur.” RAN 59; see also 3PR Resp. Br. 4. As such, we are not persuaded of error in the Examiner’s finding that Nippon Denso teaches the limitations of claim 7. Furthermore, even under Patent Owner’s proposed construction, we agree with the Examiner that modifying Nippon Denso to inform the user by stating explicitly that “changing the set point to the third over-controlling set point will not decrease the amount of time needed to achieve the second desired set point” would have been obvious. See RAN 58; 3PR Resp. Br. 4–5. As Requester points out, “[Nippon Denso] identifies the very same concern that motivated the ’948 patent, i.e., that users improperly think that over-setting a thermostat will make the system respond more quickly. . . .” 3PR App. Br. 4–5 (citing Nippon Denso 53). Given this express desire to dissuade users from setting an over-controlling set point that would damage the system in conjunction with Nippon Denso’s teaching of Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 13 informing users of the time to temperature, it would have been readily apparent to a skilled artisan to modify Nippon Denso’s informing voice or text message to state explicitly that changing the set point to the third over-controlling set point will not decrease the amount of time needed to achieve the second desired set point. See 3PR Resp. Br 4–5 (citing Peffer Decl. I ¶ 32); ACP 8. Patent Owner fails to address persuasively these findings and, as such, we are not persuaded of error. Similarly unconvincing is Patent Owner’s argument that Mitsubishi fails to teach the informing limitation of claim 7 because Mitsubishi “is capable of displaying only an estimate of when the room temperature is expected to be within 2 ºC, not the anticipated amount of time required to reach a desired setpoint temperature.” PO App. Br. 8; see also PO Reb. Br. 5. For example, Patent Owner does not persuasively explain how the claim precludes use of estimated values. In particular, Mitsubishi teaches informing the user of an estimated time needed to reach a set room temperature and displaying that estimated value. See RAN 60–62. As such, according to the Examiner, by increasing this displayed estimated time to temperature when a set room temperature is entered, Mitsubishi teaches “informing the user that changing the set point to the third over-controlling set point will not decrease the amount of time needed to achieve the second desired set point.” RAN 62. Whether the calculated time to temperature is exact or estimated, it is the increase in time that informs the user that the set point change does not decrease the time needed to achieve the desired temperature. Further, we agree with the Examiner that “Mitsubishi undeniably discloses calculating the time until a temperature is expected to be close to a set point, which clearly renders a more precise time-to-temperature message at least obvious.” RAN 60; see also Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 14 3PR Resp. Br. 5 (citing Mitsubishi 283)(contending that Mitsubishi discloses calculating a needed time to temperature). Patent Owner next contends that Mitsubishi’s concern of informing the user that the system is working properly does not suggest modifying Mitsubishi to inform the user that changing the set point to the third over-controlling set point will not decrease the amount of time needed to achieve the second desired set point. See PO App. Br. 8. “Informing the user whether the system is working properly in order to reduce the user's anxiety does not require nor suggest the desirability of ‘informing the user that changing the set point to the third over- controlling set point will not decrease the amount of time needed to achieve the second desired set point,’ as recited in claim 7.” PO App. Br. 8 (citing Henze Decl. ¶23); see also PO Reb. Br. 6. We note, though, that this argument only applies under Patent Owner’s narrow interpretation requiring expressly informing the user. As discussed above, we disagree with Patent Owner’s proposed construction. As such, we are not persuaded that the Examiner erred in concluding that Mitsubishi renders claim 7 obvious. Finally, with respect to claim 7, Patent Owner asserts that the Examiner relies “solely on hindsight” in finding that Garvey teaches the claimed limitations, and that there is no support for the Examiner’s rejection. See PO App. Br. 8–9; PO Reb. Br. 6–7. We disagree. Garvey teaches providing a master control panel that displays a projected time required to heat a room to a desired set temperature. See Garvey, col. 19, ll. 5–17; see also RAN 64. Garvey also describes that users may change the desired temperature. See, e.g., Garvey, col. 18, ll. 61–64; RAN 64. As the Examiner explains, Garvey’s displaying an increase in time to achieve the desired set Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 15 temperature informs the user that there would not be a decrease in the amount of time needed to achieve the second desired set point. RAN 64. In other words, “informing the user of an increase inherently informs the user that a decrease will not occur.” Id. (parenthesis omitted). We are not persuaded of error in these findings. Moreover, even under Patent Owner’s narrow interpretation, we conclude that Garvey renders claim 7 obvious. Garvey describes a user-informative signal to warn users if certain conditions are excessive and maintaining the current temperature setting. See RAN 66 (citing Garvey, col. 8, ll. 42–46; col. 11, ll. 46– 57). The Examiner reasons that since Garvey [] seeks to avoid “excessive” conditions in the utilization of a heating/cooling system and entering an extreme temperature set point after initial operation would create an extremely large amount of time that would create “excessive” condition, one of ordinary skill in the art would establish that providing the same message (i.e. not decreasing the amount of time needed to achieve the second desired set point) to the user changing the set point to the third over- controlling set point would be obvious to one of ordinary skill in the art. RAN 67. Garvey also teaches that audible signals may be provided to users to inform them about set system parameters, such as desired temperature. Garvey, col. 15, ll. 53–61. In other words, providing a user-informative signal to the user to inform expressly a user that the change in set point temperature will not decrease the time is precisely the type of information contemplated by Garvey and, thus, would have been an obvious modification to a skilled artisan at the time of the invention. Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 16 Therefore, for the reasons discussed above and identified by the Examiner, we find that claim 7 is unpatentable over each of Nippon Denso, Mitsubishi, and Garvey. B. The Anticipation Rejection Based on Garvey Claims 9, 10, 12, 15, and 16 Based on the record before us, we are not persuaded that the Examiner erred in rejecting claims 9, 10, 12, 15, and 16 under 35 U.S.C. § 102(b) as being anticipated by Garvey. With respect to claim 9, Patent Owner does not dispute that Garvey displays a message indicating when a desired set point is anticipated to be achieved in the inside space is displayed, but asserts that Garvey “is silent on when and under what circumstances it conveys the time required to heat a particular room to a desired set temperature.” PO App. Br. 10. Specifically, Patent Owner contends that Garvey does not disclose that the message is displayed during the recited “amount of time” -- that is, the amount of time for the change in environmental condition to the second desired set point to be achieved by the HVAC system. PO App. Br. 10; see also PO Reb. Br. 8. Requester responds that a skilled artisan would understand Garvey displays a time-to-temperature message during the amount of time needed to reach the desired temperature set point. 3PR Resp. Br. 9 (citing Peffer Decl. II ¶¶ 10–11). In particular, Requester notes that Garvey describes that the user display includes “running or static time displays corresponding to an estimated time period before a set temperature is reached.” Garvey, col. 15, ll. 53–57; 3PR Resp. Br. 9. Notably, a skilled artisan would understand a “running” time display to be a countdown in Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 17 time until the desired temperature is reached or, in other words, while the time the system is working to achieve the set temperature. To be clear, by identifying a “running time” display that corresponds to the time before a set temperature is reached, Garvey at least implicitly discloses that the time to temperature will be displaying “during” the time it takes to achieve the change in temperature. This is consistent with the immediately-following passage that describes the display may notify a user when the desired temperature is reached. See In re Preda, 401 F.2d 825, 826 (CCPA 1968) (noting that “in considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom”). Furthermore, Garvey discloses that system information may be displayed in response to user input or by “automatic, sequential display of system parameters.” Garvey, col. 15, ll. 35–40; see also Garvey, col. 15, ll. 25–29 (describing that the user display “provides a commensurate array of display functions and information to facilitate user monitoring of input selection and system status”). According to Garvey, a time display corresponding to an estimated time period before a desired set temperature is reached is an example of a system function and parameter. See Garvey, col. 15, ll. 53–57. As such, based on these disclosures, a skilled artisan would understand this time display would be displayed upon user input of the next desired set temperature or displayed automatically, sequentially with other system parameters. Notably, claim 9 does not require the time to temperature to be during the entire time it takes to reach the temperature, but the message must merely be provided at a point during the time it takes to achieve the desired temperature. Either automatically displaying the time to temperature sequentially while the Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 18 system is working to achieve the temperature, or merely displaying the time to temperature upon entering the next desired temperature, as disclosed by Garvey, would satisfy the claimed limitation. Additionally, Patent Owner contends that Garvey does not disclose a first set point being one of a plurality of scheduled set points of a schedule. PO App. Br. 10. We disagree. Garvey expressly discloses a schedule or program of set temperatures and user input to change a set temperature. See, e.g., Garvey, col. 17, ll. 64–67 (describing that the gas control system allows for pre-programming different temperature that will change at pre-set times and/or dates); col. 18, ll. 50– 56 (discussing that users may input desired set temperatures through either a master control panel or local control panel); col. 18, ll. 61–64 (disclosing that a user may change the desired temperature or a temperature may change due to a timed program change); see also RAN 68–69; Garvey, col. 12, ll. 17–27. As such, we are not persuaded that Garvey fails to disclose a first initial set point, which is one of the plurality of set points of the schedule. We similarly find unconvincing Patent Owner’s assertion that “Garvey could display the projected time required to heat a particular room to a desired set temperature when, for example, the HVAC system is switched on from an off state or when switching between two manually entered set points.” PO App. Br. 10 (citing Henze Decl. ¶ 8). We understand Patent Owner to be arguing that Garvey does not necessarily or inherently display the time to the desired set temperature “during the amount of time” as claimed. Patent Owner’s argument, however, fails to consider Garvey’s disclosure of pre-programming the times/dates for temperature changes with the ability to change manually the desired temperature. See, e.g., Garvey, col. 17, ll. 64–67, col. 18, ll. 61–64. As such, Garvey discloses Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 19 changing from a first initial set point, which is one of a plurality of scheduled set points of a schedule, to a manually entered or pre-programmed second desired set point. Moreover, Patent Owner fails to explain why the identified “examples” would not satisfy the claim limitation. For example, claim 9 does not preclude the first initial set point from being the set point recognized by the system from being turned on or that the scheduled set points cannot be manually entered. In fact, presumably each set point of a schedule of set points must be at least initially entered manually. Patent Owner’s arguments, thus, are unavailing. Therefore, for the reasons discussed above and identified by the Examiner, we find that claim 9, as well as claims 10, 12, 15, and 16 not argued with particularity, are anticipated by Garvey. Claim 11 Patent Owner argues that Garvey lacks a “message indicat[ing] a time of day that the second desired set point is anticipated to be achieved in the inside space.” PO App. Br. 11. According to Patent Owner, Garvey’s explicit reference to displaying a “static time” display corresponding to an estimated time period before a set temperature is reached is unclear and undefined and, thus, cannot disclose indicating a time of day. PO App. Br. 11; PO Reb. Br. 9–10. We disagree. Garvey discloses two formats for displaying the time to reach the desired set temperature, either running or static. Garvey, col. 15, ll. 53–57. A skilled artisan would understand the “running” time display to be a countdown whereas the “static” time display must identify the point in time but remain unchanging. For example, a display may identify that the temperature will be reached in one hour (e.g., “running” or counting down to the time when the Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 20 temperature will be reached). Alternatively, a display may identify that the temperature will be reached at a particular time of day, i.e. a “static” point in time. We agree with Requester, and the Examiner, that a Garvey’s disclosure of a static time display, corresponding to an estimated time period before a desired set temperature is reached, discloses a particular time of day when a desired set point is anticipated to be achieved.4 Patent Owner additionally asserts that the Examiner “improperly relies on disclosure that is not directed at the HVAC embodiment of Garvey.” PO App. Br. 11; see also PO App. Br. 11–12. Patent Owner, though, fails to recognize that Garvey elsewhere expressly states that a time to temperature is displayed. See, e.g., Garvey, col. 19, ll. 12–17; RAN 70. The disclosure of a running or static time display corresponding to an estimated time period before a set temperature is reached merely discloses the format of the time display. This disclosure is equally applicable to the Garvey’s user display of a water or gas control system. We are also not convinced that the relied-upon disclosure in Garvey is limited to the water supply control system embodiment as asserted by Patent Owner. In particular, the disclosure relied upon by the Examiner (Garvey, col. 15, ll. 53–57) more generally discusses user input operations. Specifically, a preceding paragraph begins by referring to the “aforementioned user input operations.” These user input operations, discussed, for example, at column 9, line 4 We further note that claim 11 merely recites that the message “indicates” a time of day. A broad, but reasonable interpretation by one of ordinary skill in the art would be that even a running time display, i.e., a countdown to when the temperature will be achieved, would at least indirectly “indicate” a time of day when the desired set temperature will be achieved. Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 21 50 to column 10, line 40, broadly discuss user input operations without limitations to a particular embodiment. See, e.g., Garvey, col. 10, ll. 27–29 (“Other basic user input operations within the gas and fluid supply systems of the invention allow for user selection and fine tuning of desired flow and temperature parameters.” (emphasis added)). Garvey further describes a system that heats and cools. See e.g., Garvey col. 4, ll. 45–47, col. 17, ll. 46–63, col. 18, ll. 8–23, col. 19, ll. 42–44, Fig. 6. Also, although some presented examples are directed to a fluid control system, a skilled artisan would understand the disclosure to be equally applicable to a gas control system. Therefore, for the reasons discussed above and identified by the Examiner, we find that claim 11 is anticipated by Garvey. Claim 14 Claim 14 recites that the second set point corresponds to a subsequent one of the plurality of scheduled set points of the schedule. According to Patent Owner, claim 14 together with the limitations of claim 9, further defines the claimed “during the amount of time.” “That is, in claim 14, the ‘amount of time’ corresponds to when changing from a first initial set point, which is one of the plurality of scheduled set points of the schedule, to a second desired set point (which according to claim 14 is a subsequent one of the plurality of scheduled set points of the schedule).” PO App. Br. 13. However, claim 14 merely requires the second set point to correspond to any one of the set points of the schedule that is subsequent to the first, including for example, the set point immediately subsequent or following the first initial set point. As such, Patent Owner’s argument, regarding the claimed “during the Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 22 amount of time” is the same as the arguments presented as for claim 9. For the reasons discussed above, we find these arguments unpersuasive. Therefore, for the reasons discussed above and identified by the Examiner, we find that claim 14 is anticipated by Garvey. Claim 68 We are not persuaded that Garvey fails to disclose displaying “an indication” of “the second desired set point simultaneously with an indication. . . of a current temperature reading.” See PO App. Br. 13; see also PO Reb. Br. 10–11. Notably, claim 68 only requires an indication for each of the desired set point and the current temperature by simultaneously displayed, not that the temperatures themselves. As Requester points out, Garvey discloses a graphic display to plot past changes in temperature versus time and to project the time required to heat a room to a desired set temperature. 3PR Resp. Br. 11. As such, this plotted graphic display would include an indication of the initial point or start point, i.e. current temperature reading, as well as an indication of the second desired set point. 3PR Resp. Br. 11; see also RAN 75–76. Patent Owner’s arguments to the contrary are, thus, unpersuasive. Therefore, for the reasons discussed above and identified by the Examiner, we find that claim 68 is anticipated by Garvey. C. The Obviousness Rejections Based on Garvey Claims 16, 17, 42, 44, 45, and 48 Based on the record before us, we are not persuaded that the Examiner erred in rejecting claims 16, 17, 42, 44, 45, and 48 under 35 U.S.C. § 103(a) as unpatentable over Garvey. Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 23 Patent Owner notes that the arguments presented for claim 9 apply to certain of these claims. See, e.g., App. Br. 13–15 (contending for claims 42 and 48 that Garvey does not disclose displaying recited message “during the amount of time”). For the reasons discussed above, we find these arguments unpersuasive. Additionally, with respect to claims 17, 42, and 48, Patent Owner contends that Garvey does not include a message configured to display the recited message in response to a user manually changing the set points from the first initial set point to the second desired set point. PO App. Br. 14. According to Patent Owner, “there is no explicit or inherent disclosure in Garvey of this feature.” Id. Patent Owner ffurther contends that the Examiner merely provides a conclusory statement of obviousness to support the rejection and, thus, has not established a prima facie case of obviousness. Id. The Examiner, though, adopted Requester’s proposed reasoning, namely that it would have been obvious to display Garvey’s time-until-temperature message for a manually entered set point in order to inform the user about the time until the manually set temperature will be reached. RAN 16 (adopting Requester’s proposed rejection). Requester, further elaborates that a skilled artisan would instantly recognize from Garvey the value of having time-to-temperature information, and would thus also recognize that providing the information to a user at the time that they changed the setpoint would be most useful (e.g., to give the user an opportunity to reconsider the adjustment after the user changes the setpoint, but before the user walks away). 3PR Resp. Br. 11. Further, “updat[ing] Garvey's time-until temperature graphic display with each user adjustment ... [would] keep the user continually updated about the operating condition of the HVAC system.” 3PR Resp. Br. 11; see also Peffer Decl. II ¶ 22. Garvey also expressly recites displaying certain information Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 24 in response to user input. See Garvey, col. 15, ll. 36–40. As such, we agree with Requester that Garvey at least suggests displaying the recited message in response to the user manually changing the set point. Therefore, for the reasons discussed above and identified by the Examiner, we find that claims 16, 17, 42, 44, 45, and 48 are unpatentable over Garvey. D. The Obviousness Rejections Based on Garvey and Hull Based on the record before us, we are not persuaded that the Examiner erred in rejecting claims 1–5, 43, and 49 under 35 U.S.C. § 103(a) as unpatentable over Garvey and Hull. Similar to the arguments presented with respect to claim 9, Patent Owner contends that Garvey fails to teach providing a message during the recited amount of time. See App. Br. 15–16. For the reasons discussed above, we find these arguments unpersuasive. Moreover, we agree with the Examiner, and Requester, that displaying the time to temperature during the recited amount of time would have been obvious to a skilled artisan. See RAN 17–20; 3PR Resp. Br. 12. With respect to claim 2, Patent Owner argues that neither Garvey nor Hull teach “entering a third over-controlling set point and still providing a message during the amount of time indicating when the desired second set point is anticipated to be achieved in the inside space.” PO App. Br. 16. Specifically, according to Patent Owner, the Examiner relies on merely conclusory statements to support the rejection and, thus, the rejection is improper. Id. Furthermore, Patent Owner alleges that Even if Garvey did disclose continually updating the so-called time- until-temperature with each user adjustment, a point not conceded here, then a time-until-temperature would be displayed for the third Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 25 over-controlling set point, not the second desired set point as recited in claim 2. There is no motivation to modify Garvey or Hull to arrive at the particular method of claim 2, beyond the speculative statements in the RAN. PO App. Br. 17. As Requester points out, though, Garvey in combination with Hull teaches displaying the time to temperature in graphical format. As such, Garvey and Hull’s graphical display of time-versus-temperature would continue to display a time even when a third over-controlling set point is entered until a previously- entered set point would be achieved, because the slope of such graphical display would not change. 3PR Resp. Br. 12; see alsoPeffer Decl. II ¶ 22. Moreover, we agree with the Examiner that it would have been obvious for Garvey to “simply continue displaying various temperature values [e.g., previous time-to-temperature values] ... where it already displays ‘more than one type of information.’” RAN 78–80. As such, we are not persuaded that the Examiner erred finding claim 2 unpatentable over Garvey. Patent Owner present no separate argument for claim 3, relies on the arguments presented with respect to claim 11 to distinguish claim 4, and relies on the arguments presented with respect to claims 42 and 49 to distinguish claims 43 and 49. See PO App. Br. 17. For the reasons discussed above, we find these arguments unpersuasive. Therefore, for the reasons discussed above and identified by the Examiner, we find that claims 1–5, 43, and 49 are unpatentable over Garvey and Hull. E. The Obviousness Rejection based on Garvey in combination with Additional Cited References Claims 46, 50, 58–64, and 69 Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 26 Patent Owner relies on arguments presented for claim 9, 17, 42, 48, and 68 to distinguish claims 46, 50, 58–64, and 69. See App. Br. 17–18. For the reasons discussed above, we find these arguments unpersuasive. Therefore, for the reasons discussed above and identified by the Examiner, we find that claims 46, 50, 58–64, and 69 are unpatentable over the cited combinations of prior art. F. The Obviousness Rejection Based on Shah and Mitsubishi Claims 1–3, 5, 9, 10, 12, 14–17, 42–45, 48, 49, 61, 63, 64, 68, and 71 Based on the record before us, we are not persuaded that the Examiner erred in rejecting claims 1–3, 5, 9, 10, 12, 14–17, 42–45, 48, 49, 61, 63, 64, 68, and 71 under 35 U.S.C. § 103(a) as unpatentable over Shah and Mitsubishi. Shah is primarily directed to a graphical user interface system for a thermal comfort controller. The system includes a display that can graphically represent the actual temperature history compared to the desired temperature schedule. Shah, p. 3, ll. 12–13. For example, Figure 2 of Shah, reproduced below, depicts a comparison of a graphical representation of the temperature history (dashed line 22) and a graphical representation of the temperature schedule (solid line 215). Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 27 Shah’s Fig 2 Depicting the User Interface System with a Display Tracking a Graphical Representation of the Actual Temperature History and a Graphical Representation of the Temperature Schedule A user then, based on review of graphical representations, may make adjustments to the schedule. See Shah, Abstract. Patent Owner contends that the Examiner fails to provide sufficient support for the combination of Shah and Mitsubishi. First, Patent Owner challenges the Examiner’s finding that a skilled artisan would combine the reference to provide a user with a complete understanding of when the next set point temperature will be achieved. According to Patent Owner, these reasons are “purely speculative, and cannot support an obviousness rejection.” PO App. Br. 19. Additionally, Patent Owner maintains that one skilled in the art would understand Shah does not teach that calculating, predicting, or displaying the anticipated time to heat or cool a room to the desired set point is desirable or even necessary, Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 28 since Shah teaches an alternative way to inform the user of how long it will take to reach the next set point. PO App. Br. 19 (citing Henze Decl. ¶ 27) (underlining in original); see also PO App. Br. 20; PO Reb. Br. 15–16. Thus, a skilled artisan would not be motivated to combine Shah with Mitsubishi to provide a complete understanding about when the next set point temperature will be achieved. Patent Owner’s arguments are unavailing. For example, Patent Owner fails to identify Shah’s “alternative method” to inform the user of how long it will take to reach the next set point. If Patent is contending that Shah’s displayed historical data informs the user about how long it will take to reach the next set point, this displayed data itself would satisfy the claimed providing a message limitation. Moreover, Patent Owner fails to persuasively explain why the Examiner erred in finding that a skilled artisan would find it obvious to modify Shah to include Mitsubishi’s teaching of informing the user of the time to temperature. As Requester explains, the Examiner properly found that Mitsubishi is concerned about the status of the air conditioner and wants to know if the air conditioner is operating properly. RAN at 94. On the other hand, Shah’s display of historical information does not identify how the air conditioner is currently working or reduce a user's anxiety about whether the system is currently working. Under these circumstances, the Examiner found that incorporating Mitsubishi's time-to-temperature display in Shah’s device would relieve such anxiety and uncertainty. Moreover, the combination would even improve the time-to-temperature display, because Shah’s historical information could be used in the algorithm for Mitsubishi's time-to- temperature display. 3PR Resp. Br. 14 (citing Peffer Decl. II ¶ 20) (quotations omitted). Furthermore, Shah expressly states that an object of the invention is for the display to be more informative. Shah, p. 3, ll. 16–18. Mitsubishi teaches a display Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 29 that provides the user with additional information, namely the amount of time anticipated to reach the desired temperature. Mitsubishi, p. 281–282. We agree with the Examiner that it would be readily apparent to a skilled artisan to modify Shah’s display system to include the time to temperature, as taught by Mitsubishi, to provide a user with a complete understanding about when the next set point temperature will be achieved, i.e. provide more information as expressly desired by Shah. See RAN 94. Patent Owner additionally contends that Shah only teaches tracking the actual temperature against the temperature schedule from a historical perspective and not in a predictive manner. PO App. Br. 19 (citing Shah, p. 2, ll. 8–16). Then, Patent Owner alleges that predictive information is irrelevant to Shah because Shah’s graphical representation of temperature history over time provides the user with better information to identify how the air conditioner is working. PO App. Br. 20. We disagree. As Patent Owner points out, Shah’s graphical representations allows a user to observe how the actual temperature is tracking against the temperature schedule. PO App. Br. 19 (citing Shah at page 2, lines 8–16). Although we agree that Shah does not expressly teach providing time to temperature of information, this modification would have been obvious in view of the teachings of Mitsubishi. In particular, Shah describes the ability to make make adjustments and updating the schedule easily. Shah, p. 7. A skilled artisan would have recognized the benefit to provide a message informing the user of when the time to temperature is anticipated to be reached, particularly for example, when selecting a new temperature set-point where historical data would not be available. As such, we agree with the Examiner and Requester that the benefit of modifying Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 30 Shah to provide a message during the amount of time indicating when the desired second set point is anticipated to be achieved in the inside space, as taught by Mitsubishi, would have been readily apparent to a skilled artisan to reduce anxiety about whether the system is currently working. See RAN 94–95. Patent Owner also argues that Shah does not teach or even suggest displaying a predictive aspect to the temperature schedule. The Examiner, however, relies on Mitsubishi for this limitation. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Therefore, for the reasons discussed above and identified by the Examiner, we find that claim 1, as well as claims 2, 3, 5, 9, 10, 12, 14–17, 42–45, 48, 49, 61, 63, 64, 68, and 71 not argued with particularity, are unpatentable over Shah and Mitsubishi. G. The Obviousness Rejection based on Shah, Mitsubishi, and Alpine Claims 46, 50, 58–60, 62, and 69 Patent Owner here relies on the arguments presented with respect to claim 1 and alleges that the additionally cited references fail to cure their purported deficiencies. See App. Br. 20. For the reasons discussed above, we find these arguments unpersuasive. Therefore, for the reasons discussed above and identified by the Examiner, we find that claims 46, 50, 58–60, 62, and 69 are unpatentable over Shah, Mitsubishi, and Alpine. Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 31 H. The Obviousness Rejection Based on Simonin and Nippon Denso Claims 1, 3, 6, 8–10, 12, 14–16, and 68 Based on the record before us, we are not persuaded that the Examiner erred in rejecting claims 1, 3, 9, 10, 12, 14–16 and 68 under 35 U.S.C. § 103(a) as unpatentable over Simonin and Nippon Denso. Patent Owner contends that “[Nippon Denso] does not disclose or suggest conveying its time-to-temperature message to the user during the amount of time to change the temperature from a first set point to a second set point, as recited in the claim.” PO App. Br. 21. Specifically, according to Patent Owner, Nippon Denso’s initial temperature is an ambient temperature, not a first initial set point, and Nippon Denso does not teach providing its time-to-temperature message “during the amount of time” as required by claim 1. Id. We disagree. As Requester points out, Patent Owner’s argument fails to consider the teachings of the combination of references. See 3PR Resp. Br. 15. Namely, Simonin includes scheduled temperature settings whereas Nippon Denso discloses providing messages of the time required to obtain a desired temperature. As such, the combination modifies Simonin to provide time-to-temperature messages, as taught by Nippon Denso, between Simonin’s scheduled temperature settings. RAN 108–10; see also 3PR Resp. Br. 15. Further, we are not convinced that Nippon Denso lacks a first initial set point as suggested by Patent Owner. Notably, claim 1 does not limit how the first initial set point is set. In other words, Nippon Denso’s system recognizes the ambient temperature as an initial set point in order to calculate the time required to obtain the desired temperature. Patent Owner has not persuasively explained why Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 32 this first initial set point of Nippon Denso would be precluded from satisfying the limitation of claim 1. We likewise find unavailing Patent Owner’s argument that Nippon Denso fails to teach providing the message “during the amount of time” as required by claim 1. Specifically, [Nippon Denso] (throughout page 55 and at Figure 6) clearly explains that the algorithm periodically updates the time-to-temperature display (e.g., when Tl becomes larger than TO). Thus, the time-to- temperature value would also update if a user changed the desired setpoint. . . . As such, [Nippon Denso] provides further support that the combination of references discloses that the message is provided “during the amount of time.” 3PR Resp. Br. 16. As such, we find that Simonin and Nippon Denso combined teach the limitations of claim 1. Patent Owner also asserts that a skilled artisan would not have combined Simonin with Nippon Denso, because Nippon Denso’s concern of damaging the air conditioning system is limited to an issue with automotive air conditioners and, thus, does not apply to Simonin’s home HVAC controller having a pre-set schedule. PO App. Br. 22; see also PO App. Br. 22–23 (explaining that additional reasons to combine identified by the Examiner would be irrelevant to Simonin). As the Examiner explains though, Regardless of an air conditioning device being related to a vehicle or a home HV AC system, . . . all air conditioning equipment when misused can be damaged.. . .[Nippon Denso] specifically teaches eliminating extra operation by a user so that the essential function of the air conditioning device is maintained ([Nippon Denso] page 56). . . . [O]ne of ordinary skill in the art would clearly look to the teaching of [Nippon Denso] and providing a message of the time required to heat/cool an environment in order to prevent misuse and extras operations. Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 33 RAN 111; see also 3PR Resp. Br. 16. We are not persuaded of error in these findings. Therefore, for the reasons discussed above and identified by the Examiner, we find that claim 1, as well as claims 3, 9, 10, 12, 14–16 and 68 not argued with particularity, are unpatentable over Simonin and Nippon Denso. Claims 4 and 11 Patent Owner contends that the cited combination of Simonin and Nippon Denso does not teach a message indicating the time of day that the second desired set point is anticipated to be achieved. See PO App. Br. 24. According to Patent Owner, Nippon Denso discloses displaying a message that includes a time measured in minutes, not time of day and because Nippon Denso’s time are determined based on stored values, there would be no motivation to modify Nippon Denso message to indicate time of day instead of minutes to achieve the set point. Id. Patent Owner, however, does not persuasively respond to the Examiner’s findings that since Simonin teaches providing all temperature information relative to the time-of-day only, . . . one of ordinary skill in the art would look to the teaching of displaying information relative to the time-of-day and keep the functionality of Simonin consistent. In this light, the Examiner finds that providing a message of the actual time-of-day a particular environment will achieve a desired temperature would be obvious to one of ordinary skill in the art. RAN 114. Moreover, we agree with Requester that static time-of-day displays and running countdown clocks are known substitutes, as evidenced by Garvey. 3PR Resp. Br. 18. Therefore, for the reasons discussed above and identified by the Examiner, we find that claims 4 and 11 are unpatentable over Simonin and Nippon Denso. Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 34 I. The Obviousness Rejection Based on Simonin, Nippon Denso, and Hull Claim 71 Patent Owner here relies on the arguments presented with respect to claim 68 and alleges that the additionally cited references fail to cure their purported deficiencies. See App. Br. 29. For the reasons discussed above, we find these arguments unpersuasive. Therefore, for the reasons discussed above and identified by the Examiner, we find that claim 71 is unpatentable over Simonin, Nippon Denso, and Hull. J. The Remaining Obviousness Rejections Because our decision is dispositive regarding patentability of all appealed claims based on the foregoing prior art references, we need not reach the merits of the Examiner’s decision to reject also the claims based on the additionally cited combinations of prior art. See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching other rejections after upholding an anticipation rejection); see also Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (approving ITC’s determination based on a single dispositive issue, and not reaching other issues not decided by the lower tribunal). REQUESTER’S APPEAL OF THE NON-ADOPTED REJECTIONS Because our decision is dispositive regarding patentability of all appealed claims based on the adopted rejections, we need not address whether the Examiner erred in deciding not to adopt the additionally proposed rejections. See id. Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 35 V. CONCLUSION We affirm the Examiner’s decision to reject claims 1–5, 7, 9–12, 14–17, 42–46, 48–50, 58–64, 68, 69, and 71. VI. TIME PERIOD FOR RESPONSE Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED Appeal 2015-007693 Control 95/002,037 Patent 7,142,948 B2 36 Patent Owner: HONEYWELL/HUSCH PATENT SERVICES 101 COLUMBIA ROAD P.O. BOX 2245 MORRISTOWN, NJ 07962 Third Party Requestor: FISH & RICHARDSON PC (TC) P O BOX 1022 MINNEAPOLIS, MN 55440-1022 Copy with citationCopy as parenthetical citation