Ex Parte 7634504 et al

Patent Trial and Appeal Board

Oct 31, 2017

95002041 (P.T.A.B. Oct. 31, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
95/002,041 07/18/2012 7634504 36563-0006RX1 6352
131059 7590 10/31/2017
Honeywell/Husch
Patent Services
101 Columbia Road
P.O. Box 2245
Morristown, NJ 07962
EXAMINER
ENGLAND, DAVID E
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/31/2017 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 2017-000943
Reexamination Control 95/002,041
Patent 7,634,504 B2
Technology Center 3900
____________________

Before JOHN A. JEFFERY, DENISE M. POTHIER, and JENNIFER L.
McKEOWN, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL
Honeywell International Inc. (“Patent Owner”) appeals from the
decision in the Examiner’s Right of Appeal Notice rejecting claims 1, 2, and
4–54 of the ’504 patent. App. Br. 1.1

1 In this Opinion, we refer to (1) Nest Labs, Inc.’s Request for Inter Partes
Reexamination, filed July 16, 2012 (“Reexamination Request”); (2) the
Examiner’s Right of Appeal Notice, mailed March 14, 2016 (“RAN”); (3)
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I. STATEMENT OF THE CASE
Nest Labs, Inc. (“Requester”) requested inter partes reexamination of
U.S. Patent No. 7,634,504 B2 (“’504 patent”) issued to John B. Amundson
on December 15, 2009.
We have been informed that the ’504 patent was the subject of a
district court proceeding, namely Honeywell Int’l Inc. v. Nest Labs, Inc. et
al., Civil Action No. 0:12-cv-00299-SRN-JSM (D. Minn.). See App. Br. 1.
We have jurisdiction under 35 U.S.C. §§ 134 and 315 (pre-AIA).
We AFFIRM.
II. THE ’504 PATENT
The ’504 patent generally relates to programmable controllers for
devices and, more specifically, “to simplified interfaces for such controllers
having interview programming capabilities.” ’504 patent, col. 1, ll. 14–18.
The ’504 patent, in one illustrative example of the invention, describes
the steps of providing one or more interview questions to a user
via a user interface, prompting the user to selected [sic] between
at least two answers simultaneously displayed on the user
interface, accepting one or more user responses to the interview
questions via the user interface, and modifying the operational
parameters of the controller and/or one or more components
controlled by the controlled [sic] based at least in part on the user
responses. The interview questions can include at least one
question relating to the installation or setup of the controller as
well as any components controlled by the controller.

the Examiner’s Action Closing Prosecution, mailed September 18, 2015
(“ACP”); (4) Requester’s Third Party Comments, filed May 28, 2014 (“TPR
Comments”); (5) Requester’s Third Party Comments, filed December 18,
2015 (“TPR ACP Comments”); (6) Patent Owner’s Appeal Brief, filed June
14, 2016 (“App. Br.”); and (7) Patent Owner’s Rebuttal Brief, filed
September 7, 2016 (“Reb. Br.”).
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’504 patent, col. 2, ll. 51–61.
Figure 13J, reproduced below, depicts a schematic drawing of an
exemplary user interface for programming configuration information within
a controller.

Figure 13J of the ’504 Patent Depicting an Exemplary User Interface
Displaying A Component Selection Screen
As shown, the user interface of Figure 13J displays a component selection
screen that allows the user or installer “to select from among several
different categories of equipment for configuration.” ’504 patent, col. 19,
ll. 3–5. For each category, there may be an icon button that corresponds to a
system component. ’504 patent, col. 19, ll. 11–12. In the exemplary
embodiment, “[t]he selection of the icon buttons on the component selection
screen 1264 causes the interface 1200 to display one or more interview
questions and answers on the display panel 1204 based on the type of
equipment to be configured.” ’504 patent, col. 19, ll. 18–21.
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Claims 1, 17, and 19 are illustrative and read as follows:
1. (Amended) A method of programming configuration
information of an HVAC controller, wherein the configuration
information is related to characteristics of one or more system
components of an HVAC system to be controlled by the HVAC
controller, the HVAC controller is configured to use the
configuration information to properly control the one or more
system components of the HVAC system to be controlled by the
HVAC controller, the method comprising the steps of:
displaying one or more grammatically complete sentences
on a display panel of a user interface of the HVAC controller,
wherein the HVAC controller and the display panel are disposed
in a common housing, the one or more grammatically complete
sentences being displayed in a question format and soliciting a
response from a user related to configuration information of the
HVAC system, wherein the configuration information is related
to characteristics of one or more system components of the
HVAC system to be controlled by the HVAC controller, and
wherein the configuration information is not indicating an Off or
On status of any system component that is to be controlled by the
HVAC controller;
in response to displaying at least one of the grammatically
complete sentences in a question format on the display panel of
the user interface of the HVAC controller, allowing the user to
select one of a plurality of selectable responses simultaneously
displayed on the display panel, each selectable response
identifying a different system component type or a different
characteristic of one of the system components that are to be
controlled by the HVAC controller [between at least two
responses simultaneously displayed on the user interface];
accepting a user selection of one of the plurality of
selectable responses;
modifying the configuration information of the HVAC
controller based at least in part on said accepted user selection;
and
using the modified configuration information of the
HVAC controller to generate control signals for the [when
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controlling] one or more system components of the HVAC
system.

17. (Original) A method of programming configuration
information for an HVAC controller, wherein the HVAC
controller is configured to control different types of HVAC
system components and to use the programmed configuration
information to properly control the one or more HVAC system
components, the method comprising the steps of:
displaying a first query in the form of a grammatically
complete sentence to a user via a user interface of the HVAC
controller while not displaying a second query, the first query
requesting information regarding a type of system component to
be controlled by the controller;
allowing the user to select between at least two types of
system components to be controlled by the controller;
accepting a first selection by the user;
after accepting the first selection, displaying a second
query in the form of a grammatically complete sentence to a user
via the user interface while not displaying the first query, the
second query requesting additional information regarding the
selected type of system component selected in the first selection;
allowing the user to select between at least two second
responses relating to additional information regarding the
selected type of system component made by the user in the first
selection;
accepting a second selection by the user;
modifying the configuration information of the HVAC
controller based at least in part on said first and second
selections; and
using the modified configuration information of the
HVAC controller when controlling one or more HVAC
components of an HVAC system.

19. (New) A method of programming configuration
information of an HVAC controller, wherein the HVAC
controller is configured to control one or more system
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components of an HVAC system, wherein the configuration
information is related to characteristics of the one or more system
components of the HVAC system to be controlled by the HVAC
controller, the HVAC controller is configured to use the
configuration information to properly control the one or more
system components of the HVAC system to be controlled by the
HVAC controller, the method comprising the steps of:
displaying one or more grammatically complete sentences
in a question format on a display panel of a user interface of the
HVAC controller, wherein the display panel and the HVAC
controller are disposed in a common housing, the one or more
grammatically complete sentences soliciting a response from a
user relating to configuration information of the HVAC system,
wherein the configuration information is related to
characteristics of one or more system components of the HVAC
system to be controlled by the HVAC controller, and wherein the
configuration information is not indicating an Off or On status of
any system component that is to be controlled by the HVAC
controller;
in response to displaying at least one of the grammatically
complete sentences on the display panel of the user interface,
allowing the user to select one of a plurality of selectable
response indicators that are simultaneously displayed at different
locations on the display panel, each selectable response indicator
identifying a system component type or a system component
characteristic for selection by the user;
accepting a user selection of one of the plurality of
selectable response indicators using the user interface of the
HVAC controller;
modifying the configuration information of the HVAC
controller based at least in part on the accepted user selection;
and
using the modified configuration information of the
HVAC controller to generate control signals for the one or more
system components of the HVAC system.
App. Br. 29–30, 33–35, Claims App’x.

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III. REJECTIONS
A. Evidence Relied Upon
The Examiner relies on the following as evidence of unpatentability:
Kobayashi US 4,948,040 Aug. 14, 1990
Rovan SI 20556 A Oct. 31, 2001
Wacker US 6,851,621 B1 Feb. 8, 2005
Rosen US 7,156,318 B1 Jan. 2, 2007
Bryant Heating & Cooling Systems, Installation and Start-Up Instructions
Evolution™ Control: SYSTXBBUIDP1, 1–12 (2004) (“Bryant”).
Invensys™, 9700i, 9701i, 9715i, 9720 Deluxe Programmable Thermostats:
User’s Manual, 4–13, 15–22, 26, and 28 (published prior to Dec. 2, 2003)
(“Invensys”).2
Requester also relies on the first Declaration of Therese E. Peffer,
Ph.D., dated January 21, 2013 (“Peffer Decl. I”), the second Declaration of
Therese E. Peffer, Ph.D., dated October 7, 2013 (“Peffer Decl. II”), and a
third Declaration of Therese E. Peffer, Ph.D., dated May 28, 2014 (“Peffer
Decl. III”).
Patent Owner relies on the Declaration of Marcus D. Stoner dated
September 5, 2013 (Stoner Decl. I), which responds to the ACP, and the
Declaration of Marcus D. Stoner dated April 27, 2014 (“Stoner Decl. II”),
which respond to the second Non-Final Office Action.

2 We note that Invensys is not dated, but Patent Owner identifies the
publication date as prior to December 3, 2003. See the ’504 patent, p. 3
(listing Invensys under Other Publications).
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B. The Adopted Rejections
The Examiner maintains at least the following rejections:
1. Claims 17 and 18 are rejected under 35 U.S.C. § 102(e) as
anticipated by Wacker. RAN 14.
2. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Wacker and Rovan. RAN 14–15.
3. Claims 1, 2, 4–16, and 19–54 are rejected under 35 U.S.C. § 314(a)
as enlarging the scope of the claims of the patent being
reexamined. RAN 22–23.
4. Claims 1, 2, 4–10, 19–25, 37–39, 42, 43, 45, and 46 are rejected
under 35 U.S.C. § 112, first paragraph (pre-AIA), for lack of
written description support. RAN 24.
5. Claims 26 and 52 are rejected under 35 U.S.C. § 112, first
paragraph (pre-AIA), for lack of written description support. RAN
24–25.
6. Claims 26 and 52 are rejected under 35 U.S.C. § 112, second
paragraph (pre-AIA), for indefiniteness. RAN 27.
7. Claims 1, 2, 4–16, 25, 37, 39, and 42 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wacker, Rosen, and Rovan. RAN
28.
8. Claims 19–21, 23, 24, 26–29, 38, 40, and 45–48 are rejected under
35 U.S.C. § 103(a) as unpatentable over Kobayashi and Rosen.
RAN 29–30.
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9. Claims 22, 30–36, 41, 43, 44, and 49–51 are rejected under 35
U.S.C. § 103(a) as unpatentable over Kobayashi, Rosen, and
Invensys. RAN 30.
10. Claims 52–54 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kobayashi, Rosen, Invensys, and Wacker. RAN
30.
11. Claims 19–24, 26–36, 40, 41, 44–50, and 52–54 are rejected under
35 U.S.C. § 103(a) as unpatentable over Bryant and Rosen. RAN
30–31.
12. Claims 43 and 51 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bryant, Rosen, and Invensys. RAN 31.
13. Claim 38 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Bryant, Rosen, and Kobayashi. RAN 31.
14. Claims 52–54 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bryant, Rosen, and Wacker. RAN 31.

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 brief[s] 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).

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A. Anticipation Rejection of Claims 17 and 18 Based on Wacker
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 17 and 18 under 35 U.S.C. § 102(e) as anticipated
by Wacker.
Patent Owner contends that Wacker fails to disclose “displaying a first
query in the form of a grammatically complete sentence to a user via a user
interface of the HVAC controller while not displaying a second query, the
first query requesting information regarding a type of system component to
be controlled by the controller,” as recited by claim 17. In particular, Patent
Owner asserts that “Wacker’s queries do not include any complete sentences
requesting information regarding a type of system component to be
controlled as claimed, especially in combination with a second query
requesting additional information regarding the selected type of system
component selected in the first selection.” App. Br. 7; see also Reb. Br. 4.
According to the Patent Owner, the ’504 patent explains that the
recited “type” of system component is, for example, a “general category”
and not the “very specific questions regarding the fan, cooling stage, etc.[,]”
that are described in Wacker. App. Br. 8. Further, the ’504 patent, “at the
very least, makes clear the applicant understood the term ‘type of system
component’ to refer to a category or kind of equipment, not to a specific
question about a specific piece of equipment. (Stoner Decl. II. at ¶ 5).”
App. Br. 8; see also App. Br. 9 (asserting that the Examiner’s broad
interpretation of “type of” system component improperly reads out the
limitation).
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We find this argument unpersuasive. As the Examiner and Requester
point out, claim 17 merely recites requesting information regarding a type of
system component and does not require identifying the type of system
component. ACP 11–12; see ACP 11 (quoting TPR Comments 15 (stating
“But information identifying a type of the equipment is wholly different
that information regarding a type of the equipment”)). The Examiner
further finds that the definition of “regarding” is “relating to.” ACP 12.
“Therefore, the broadest reasonable interpretation of ‘information regarding
a type of system component’ could be any information that is related to the
type of system component and not necessarily the type of component itself,
much as the Requester argues.” ACP 12.
Wacker is directed to thermostats and, more specifically, the control
of air management systems. Wacker, col. 1, ll. 5–6. Wacker discloses, at
least in Figures 29B, 31B, 31C, and 31D, displaying a grammatically
complete sentence that requests information, such as status information,
regarding a type of system component. For example, the exemplary screen
of Figure 31C displays the grammatically correct sentence “Please confirm it
is safe to start the Fan.” Because a fan is a system component type, Wacker
displays a grammatically correct sentence requesting status information
regarding a type of system component as recited. See also ACP 12–13.
Moreover, Patent Owner’s assertion that “type of system component”
is limited to a “general category” of system components is unsupported.
Figure 13C of the ’504 patent and the corresponding disclosure, which is
relied upon by the Patent Owner, merely provide examples of the types of
equipment that may be configured. ’504 patent, Fig. 13C, col. 17, ll. 1–50;
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see also, e.g., ’504 patent, col. 14, ll. 9–28 (describing that Figure 11 shows
several illustrative interview questions that can be provided); ’504 patent,
Fig. 11 (depicting at 1002 examples of types of equipment that can be
selected to be controlled including (A) conventional, (B) heat pump, (C) heat
only, and (D) other). As such, we are not persuaded that the Examiner erred
in finding that Wacker discloses the recited selection between types of
system components. For example, Wacker discloses selection between two
types of system components, e.g. a fan that is safe to operate and a fan that is
not safe to operate. See Reexamination Request 26–28; RAN 14
(incorporating by reference pages 11–30 of the Reexamination Request).
We further note that claim 17 does not limit the recited selection
between two types of system components to be in response to the first query.
Nor does claim 17 require that the selection of the type of system component
is in response to a grammatically complete sentence. Rather, claim 17
merely requires the user to select between two types of system components.
The Examiner, thus, properly finds that Wacker also discloses selecting a
type of system component. See, e.g., RAN 14 (incorporating by reference
pages 11–30 of the Reexamination Request); see also Reexamination
Request 27–28 (citing and reproducing Wacker’s Fig. 14Q to disclose the
selecting between two types of system components); App. Br. 8 (noting by
the Patent Owner that “Wacker teaches using a pull-down menu, as shown in
Fig. 14Q of Wacker, to allow the user to identify what type of system
component is to be controlled. . .”).
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Therefore, for the reasons discussed above and identified by the
Examiner, we sustain the rejection of claim 17, as well as claim 18 not
argued with particularity, as anticipated by Wacker.

B. The Obviousness Rejection Based on Wacker and Rovan
Claim 17
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claim 17 under U.S.C. § 103(a) as unpatentable over
Wacker and Rovan.
In response to this rejection, Patent Owner refers to the anticipation
arguments and maintains that Wacker fails to disclose “each selectable
response to the first query identifying a type of system component to be
controlled by the HVAC controller.” App Br. 10; Reb. Br. 5. Patent Owner
also alleges that Rovan does not cure the deficiencies of Wacker. App Br.
10. However, as discussed above, we are not persuaded that the Examiner
erred in finding that Wacker discloses the selectable response limitation.
Further, Patent Owner admits that Wacker discloses selecting a type of
system component to be controlled from a pull down menu. App. Br. 8.
Wacker’s selecting, together with Rovan’s disclosure of displaying questions
via text on the thermostat's screen in colloquial language (see, e.g., Rovan, p.
1), would have taught or suggested the disputed limitation. See, e.g.,
Reexamination Request p. 27.
Therefore, for the reasons discussed above and identified by the
Examiner, we sustain the rejection of claim 17 as unpatentable over the
combination of Wacker and Rovan.
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C. The Obviousness Rejection Based on Wacker, Rosen, and Rovan
Claims 1, 2, 4–16, 25, 37, 39 and 42
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 1, 2, 4–16, 25, 37, 39, and 42 under 35 U.S.C. §
103(a) as unpatentable over Wacker, Rosen, and Rovan.
Patent Owner contends that the combination of Wacker, Rosen, and
Rovan fails to teach or suggest allowing a user to select “one of a plurality of
selectable responses simultaneously displayed on the display panel, each
selectable response identifying a different system component type or a
different characteristic of one of the system components that are to be
controlled by the HVAC controller,” as recited in claim 1. Independent
claim 11 recites a similar limitation. App. Br. 14.
According to the Patent Owner,
whenever Wacker displays a plurality of selectable responses,
they are always either yes/no or pass/fail, and do not 1) identify
a system component type or 2) identify a different characteristic
of a system component that is to be controlled by the HVAC
controller, as claimed. Wacker's one-word yes/no and pass/fail
selectable responses most definitely do not identify a component
type, and cannot reasonably be considered to identify component
characteristics.
App. Br. 13. Patent Owner further alleges that the Examiner’s interpretation
reads out the “identifying” limitation. Id.
We disagree. Claim 1 recites that the selectable response may identify
a system component or identify a different characteristic of the system
component. The Examiner finds that Wacker teaches these limitations.
ACP 35–36 (adopting TPR Comments 19–44). For example, the Requester
identifies Figure 14I as simultaneously depicting characteristics, intermittent
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or continuous behavior, of a fan. TPR Comments 20–27. Another example
is shown in Figure 31B. Wacker’s selectable response, “Yes,” identifies the
system component characteristic that it is safe to operate the fan, whereas the
selectable response, “No,” identifies a different system component
characteristic, that it is not safe to operate the fan. See, e.g., TPR Comments
24–26.
Patent Owner merely makes conclusory assertions and fails to
persuasively explain why Wacker’s selectable responses do not identify a
characteristic of a system component. See, e.g., App. Br. 13; Reb. Br. 7
(asserting that Wacker’s selectable responses “cannot reasonably be
considered to identify component characteristics” without more). As such,
we are not persuaded that the Examiner erred in finding that Wacker, Rosen,
and Rovan combined teach the disputed limitation.
Therefore, for the reasons discussed above and identified by the
Examiner, we find that claims 1, 2, 4–16, 25, 37, 39, and 42 are unpatentable
over Wacker, Rosen, and Rovan.

D. The Obviousness Rejections Based on Bryant and Additionally Cited
Prior Art
Claims 19–24, 26–36, 40, 41, 44–50, and 52–54
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 19–24, 26–36, 40, 41, 44–50, and 52–54 under 35
U.S.C. § 103(a) as unpatentable over Bryant and Rosen.
Patent Owner alleges that Bryant does not teach or suggest a plurality
of selectable response indicators simultaneously displayed on a display
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panel, as required by claims 19, 26, 46, 47, 49, and 52. App. Br. 24.
According to Patent Owner,
Fig. 16 of Bryant only identifies a single selectable response
indicator in each screen. The annotated “At least two responses”
is an incorrect description as these fields are not selectable, but
are simply a description of some of the possible selection
responses. For example, the middle screen shows the description
“18000 to 60000 BTU” which is not a possible selection, but
rather indicates the range of possible selections; e.g., the 36000
BTU selectable response. The only selectable response
displayed in each screen is shown in the black box to the right,
and consists of the single response “NONE,” “3600 BTU,” or
“l.”
App. Br. 24–25; see also Reb. Br. 11–12.
We find this argument unconvincing. Bryant expressly teaches, for
example, that a user may “[p]ress either Time or Temp +/- buttons to select
AC (air conditioner), HP (heat pump), or None (no unit installed).” Bryant
5 (emphasis added). Each displayed response, namely, AC, HP, or none, are
selectable and, as shown in Figure 16 below (left display), each of these
selectable response indicators are simultaneously displayed (i.e., “NONE,”
“AC,” and “HP”) at different locations on the display.

Fig. 16 of Bryant depicting three displays with selectable responses
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See id. We recognize that once a response is selected, this response is also
highlighted and displayed on the right side of the screen. See id. This
additional display of the selected response, though, does not negate Bryant’s
express teaching that a plurality of selectable response indicators are
simultaneously displayed on the display. The right display of Figure 16,
also shown above, provides another example of a simultaneous display of
selectable responses. Bryant simultaneously depicts the selectable response
indicators, namely speed selections 1 and 2 as “SPEEDS, 1 or 2.” Id. As
such, we are not persuaded that Bryant fails to teach or suggest this
limitation.
Therefore, for the reasons discussed above and identified by the
Examiner, we sustain the rejection of claims 19–24, 26–36, 40, 41, 44–50,
and 52–54 as unpatentable over Bryant and Rosen.
Claims 43 and 51
With respect to claim 43, Patent Owner relies on the arguments
presented for claim 19. App. Br. 25–26. With respect to claim 51, Patent
Owner presents similar arguments as for claims 26 and 31. For the reasons
discussed above, we find these arguments unpersuasive.
Additionally, Patent Owner asserts that “Bryant in view of Rosen ’318
fails to disclose ‘the third query requesting additional information based on
the selected system component type selected in the second selection,’ as
recited in claim 51.” App. Br. 26. This conclusory assertion, without more,
is similarly unavailing. See 37 C.F.R. § 41.37(c)(1)(vii) (presenting “[a]
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”). As such,
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we are not persuaded that the Examiner erred in finding that the combination
of Bryant, Rosen, and Invensys teaches or suggests the disputed limitations.
Therefore, we sustain the rejection of claims 43 and 51 as
unpatentable over Bryant, Rosen, and Invensys.
Claim 38
With respect to claim 38. Patent Owner again relies on the
arguments presented for claim 19. App. Br. 27; Reb. Br. 14. For the reasons
discussed above, we find these arguments unpersuasive. As such, we are not
persuaded that the Examiner erred in finding that Bryant, Rosen, and
Kobayashi teaches or suggest the limitations of claim 38. Therefore, we
sustain the rejection of claim 38 as unpatentable over Bryant, Rosen, and
Kobayashi.
Claims 52–54
With respect to claims 52–54, Patent Owner relies on the
arguments presented for claim 19. App. Br. 27. As discussed above, we
find these arguments unpersuasive. As such, we are not persuaded that the
Examiner erred in finding that Bryant, Rosen, and Wacker teaches or
suggest the limitations of claims 52–54. Therefore, we sustain the rejection
of claims 52–54 as unpatentable over Bryant, Rosen, and Wacker.

E. The Obviousness Rejection Based on Kobayashi and Additionally Cited
Prior Art
Claims 19–21, 23, 24, 26–29, 38, 40, and 45–48
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Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 19–21, 23, 24, 26–29, 38, 40, and 45–48 under 35
U.S.C. § 103(a) as unpatentable over Kobayashi and Rosen.
Patent Owner argues that neither Kobayashi nor Rosen teach “a
plurality of selectable response indicators that are simultaneously displayed
at different locations on the display panel,” as recited in claim 19. Patent
Owner, in particular, points out that Kobayashi describes yes and no keys
that are physical keys below the display panel. According to Patent Owner
then, the keys “are clearly not displayed on the display panel” nor are they
“simultaneously displayed on the display panel.” App. Br. 17. Turning to
Rosen, Patent Owner alleges that Rosen “fails to disclose the step of
allowing a user to select one of a plurality of simultaneously displayed
selectable response indicators in response to a query.” App. Br. 17–18.
These arguments, however, attack the references individually rather
than address the combination. As the Requester explains,
To the extent that Kobayashi does not explicitly disclose
displaying the responses directly on a touch screen, such a
feature was well known in the prior art. For example, Rosen ’318
discloses a “touch screen thermostat 110 with a housing 111 and
touch screen 112” and describes that the thermostat 110 displays
selectable buttons that are related to HVAC configuration
information. (Rosen '318 at 7:36-42; see also FIGS. 4-5 and 12.)
TPR comments 74; see also ACP 39 (incorporating Requester’s comments).
In other words, the rejection merely relies on Rosen for the touch screen
limitation and not for allowing a user to select a response indicator in
response to the displaying of the sentence, as suggested by the Patent
Owner. One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.
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See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
Likewise, unconvincing is Patent Owner’s argument that Kobayashi
and Rosen combined fail to teach “a plurality of selectable response
indicators, each selectable response indicator identifying a system
component type or characteristic.” App. Br. 18 (emphasis omitted).
Specifically, Patent Owner maintains that
“YES” and “NO” represent an affirmation or a dissent to a
question, not an identification of a system component type or
component characteristic. Claims 19, 26, 46 and 47 require a
plurality of selectable response indicators, each selectable
response indicator identifying a system component type or
characteristic. Kobayashi can at most only question the presence
of a single component in each query; e.g., “at step 118, the
installer is asked if there is a heat pump” and at “step 120, if the
installer responds with a positive reply, the response is stored.”
(Kobayashi col. 8:27-29.)
Id.
We disagree. Kobayashi describes providing yes or no answers in
response to grammatically correct sentences. These responses at least
identify system component characteristics. “For example, in the example
above, the installer is asked if there is a heat pump. The selectable responses
“YES” and “NO” identify the existence or non-existence of a heat pump in
the system, which are characteristics of the heat pump.” TPR Comments 73-
74; see also ACP (adopting the Requester’s comments); Kobayashi 8:23–43
(describing other system component characteristics, such as information
identifying “a crossover temperature where one heat source will be more
economical than the other,” and “the number of zones”).
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Therefore, for the reasons discussed above and identified by the
Examiner, we sustain the rejection of claims 19–21, 23, 24, 26–29, 38, 40,
and 45–48 as unpatentable over Kobayashi and Rosen.

Claims 22, 30, and 43
Patent Owner does not present separate patentability arguments for
claims 22, 30, and 43, but instead rely on the arguments presented for claims
19 and 26. See App. Br. 18–19. For the reasons discussed above, we find
these arguments unpersuasive. Therefore, we sustain the rejection of claims
22, 30, and 43 as unpatentable over Kobayashi, Rosen, and Invensys.

Claims 31–36, 41, 44, and 49–51
With respect to claims 31–36, 41, 44, and 49–51, Patent Owner relies
on the arguments presented for claims 19 and 26. Namely, that Kobayashi
in view of Rosen fails to teach or suggest “selectable response indicators,
where each selectable response indicator identifies a system component type
(i.e., the words "YES" and "NO" do not each identify a system component
type), and that the selectable response indicators are simultaneously
displayed (for claims 49 and 51), as required by claims 31, 49 and 51.” App.
Br. 20. As discussed above, we find these arguments unpersuasive.
Additionally, Patent Owner contends that the Kobayashi, Rosen, and
Invensys combined does not teach or suggest a “‘second query requesting
additional information based on the type of system component selected in
the first selection,’ as recited in claim 31 and using similar language in
claims 49 and 51.” App. Br. 20; see also App. Br. 21 (arguing that the
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Invensys does not teach dependency). Claim 31, however, recites that the
requested additional information is regarding the type of system component
selected. See App. Br. 38 (claim 31), Claims App’x; see also RAN 5–6
(denying enter of Patent Owner’s submitted amendment). As such, we find
these arguments regarding the claim’s dependency unavailing.
Patent Owner also alleges that Invensys does not teach the recited
sequence or order of displays. The Examiner, however, relies on Kobayashi
for the limitation of the second query immediately succeeding the first
query. See TPR Comments 102; RAN 30 (incorporating by reference TPR
Comments 85–123). 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 sustain the rejection of claims 31–36, 41, 44, and 49–51 as
unpatentable over Kobayashi, Rosen, and Invensys.

Claims 52–54
Patent Owner asserts that the language of claim 52 is similar to claim
31 and relies on the arguments presented for claim 31. App. Br. 22. For the
reasons discussed above, we find these arguments unpersuasive. Therefore,
we sustain the rejection of claims 52–54 as unpatentable over Kobayashi,
Rosen, Invensys, and Wacker.

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F. The Written Description Rejection of Claims l, 2, 4–10, 19–25, 37–39,
42, 43, 45, and 46
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 1, 2, 4–10, 19–25, 37–39, 42, 43, 45, and 46 under
35 U.S.C. § 112, first paragraph (pre-AIA).
The Examiner agrees with Requester that because the configuration
information limitation excludes indicating an off or on status,3 it is a
negative limitation and there is insufficient written description support for
this negative limitation. RAN 24 (incorporating by reference TPR
Comments 6–7). In adopting the proposed rejection, the Examiner points
out that nothing in the specification shows the inventors possessed a method
where configuration information excludes indicating an off or on status of
any system component. ACP 31.
Patent Owner, on the other hand, alleges that Figures 12, 13A–13J,
and corresponding disclosure support the limitation that the configuration
information cannot indicate an off or on status of any system component.
App. Br. 4; Reb. Br. 1–2. In particular, Patent Owner asserts that
The configuration information presented in the drawings and in
the supporting sections of the specification (see ’504 patent col.
17:1 – 19:32) refer to configuration choices and does not include
a configuration option information indicating an “Off” or “On”
status for any of the controlled system components. Thus, one of

3 Specifically, claim 1 recites “wherein the configuration information is
related to characteristics of one or more system components of the HVAC
system to be controlled by the HVAC controller, and wherein the
configuration information is not indicating an Off or On status of any system
component that is to be controlled by the HVAC controller.” App. Br. 29
(claim 1), Claims App’x. This limitation is also recited in independent
claims 19 and 46.
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ordinary skill in the art would have known that configuration
option information as described in the ’504 specification does not
include operational status indicators including “Off” and “[O]n.”
App. Br. 4; see also Reb. Br. 2 (repeating the same). As such, we
understand Patent Owner to be relying on the absence of any depiction or
discussion of “off” and “on” indicators to provide written description
support. In other words, because there is no discussion of these indicators in
the general discussion of configuration choices, an ordinarily skilled artisan
would have understood the inventor to be in possession at the time of filing
of the claimed limitation that configuration information cannot indicate the
“off” or “on” status as recited by claim 1.
We disagree. The absence of a depiction or discussion of a negative
limitation is insufficient to establish written description support. See, e.g.,
MPEP § 2173.05(i)(“Any negative limitation or exclusionary proviso must
have basis in the original disclosure. If alternative elements are positively
recited in the specification, they may be explicitly excluded in the
claims.”(emphasis added)). Specifically, in the case of a negative limitation,
there is sufficient description support when the specification provides a
reason to exclude the particular limitation. Santarus v. Par Pharm, Inc., 694
F.3d 1344, 1351 (Fed. Cir. 2012); see also Inphi Corp. v. Netlist, Inc., 805
F.3d 1350, 1354 (Fed. Cir. 2015).
Patent Owner fails to identify any disclosure of the specification that
provides a reason to exclude the off and on indicators. For example, the
specification does not discuss any advantages or disadvantages of excluding
the off and on indicators. Nor are the off and on indicators presented as
alternatives to some other types of indicators. Moreover, while Patent
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Owner identifies the specification’s discussion of configuration information,
notably absent is any suggestion that indicating an off or on status would be
excluded or that these indicators are alternatives. Instead, the ’504 patent
specification “says nothing one way or the other about configuration
information being (or not being) an ‘Off or On status’ of a piece of
equipment.” TPR Comments 7. This lack of discussion “does not describe a
reason why the controller shown in the patent's configuration information
needs to exclude on/off status. . . .” Id. (citing Peffer Decl. III ¶ 13). As
such, we are not persuaded that the Examiner erred in finding insufficient
written description support.
Therefore, for the reasons discussed above and identified by the
Examiner, we sustain the rejection of 1, 2, 4–10, 19–25, 37–39, 42, 43, 45,
and 46 under 35 U.S.C. § 112, first paragraph (pre-AIA) for insufficient
written description support.

G. The Written Description and Indefiniteness Rejections of Claims 26–30
and 52–54
We are similarly not persuaded that the Examiner erred in rejecting
claims 26–30 and 52–54 for lack of written description support under 35
U.S.C. § 112, first paragraph (pre-AIA), and as indefinite under 35 U.S.C. §
112, second paragraph (pre-AIA). The Examiner, in particular, explains that
“it is unclear how the ‘relationship’ between the response indicators and the
second query make the response indicators ‘independently selectable’. None
of this is explained by the PO nor does it make clear in the specification
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what is meant by this limitation.” ACP 32–33 (rejecting the claims for lack
of written description); see also ACP 34 (rejecting the claims as indefinite).
With respect to the written description rejection, Patent Owner
contends that the specification describes multiple instances of response
indicators where the user can independently select between multiple choices.
App. Br. 5. Patent Owner then addresses the indefiniteness rejection by
asserting that “the word ‘independently’ accurately describes the
relationship between the possible selections presented to a user during
configuration. Specifically, the selections presented to the user have no
inter-dependencies, and thus the user is able to select any of the presented
options.” App. Br. 5–6. Neither argument, though, addresses the
Examiner’s points that limitation requiring the indicators to be
independently selectable in response to a query is unsupported and unclear.
As such, Patent Owner fails to persuade us of error in the Examiner’s
rejections.
Therefore, for the reasons discussed above and identified by the
Examiner, we sustain the rejection claims 26–30 and 52–54 for lack of
written description support under 35 U.S.C. § 112, first paragraph (pre-
AIA), and as indefinite under 35 U.S.C. § 112, second paragraph (pre-AIA).

H. Rejection under 35 U.S.C. § 314(a) for Enlarging the Scope of the Claims
Claims 1, 2, 4–16, and 19–54
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 1, 2, 4–16, and 19–54 under 35 U.S.C. § 314(a) for
enlarging the scope of the claims.
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Patent Owner amended claim 1 to delete “when controlling” and
replace it with “to generate control signals for the.” Specifically, the
amendment to the limitation at issue is as follows:
using the modified configuration information of the HVAC
controller to generate control signals for the [when controlling]
one or more system components of the HVAC system.
According to the Patent Owner,
It is simply not logical for the RAN to contend that the very
specific recitation of generating a control signal is broader than
the general recitation of “controlling.” Put another way,
generating a control signal is a subset of “controlling”; that is, a
particular way of controlling. It cannot possibly broaden the term
“controlling.”
Reb. Br. 4 (emphasis omitted); see also App. Br. 6 (asserting the same).
While we agree that the amendment may be more specific or narrower
as to how the controlling is done (i.e., to generate control signals), the
deletion of “when” also broadens the claim as to when the modified
configuration information must be used. See RAN 12 (“A claim is
broadened if it is broader in any one respect, even though it may be narrower
in other respects”). As such, we agree with the Examiner that claim 1, as
well as claim 11, which was also amended, and new claims 19, 26, 31, 46,
47, 49, 51, and 52, which each include a similar limitation, improperly
enlarge the scope of the claims.
Therefore, for the reasons discussed above and identified by the
Examiner, we sustain the rejection of claims 1, 2, 4–16, and 19–54 under 35
U.S.C. § 314(a) as enlarging the scope of the claims of the patent being
reexamined.

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I. 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).

V. CONCLUSION
We affirm the Examiner’s decision to reject claims 1, 2, and 4–54.

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

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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