Ex Parte 7142948 et al

Patent Trial and Appeal Board

Jan 4, 2016

95002037 (P.T.A.B. Jan. 4, 2016)

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.

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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.).
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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.
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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
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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
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(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.
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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.

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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
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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)).
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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”
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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
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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
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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
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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
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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.
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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
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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
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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
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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
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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.

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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
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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.
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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
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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
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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
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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).
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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,
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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
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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
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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.

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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
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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.
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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.
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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.

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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
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MORRISTOWN, NJ 07962

Third Party Requestor:

FISH & RICHARDSON PC (TC)
P O BOX 1022
MINNEAPOLIS, MN 55440-1022