Ex Parte 7,775,452 B2 et al

Patent Trial and Appeal Board

Mar 31, 2016

95002314 (P.T.A.B. Mar. 31, 2016)

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.
95/002,314 09/14/2012 7,775,452 B2 074908.0116 9825
26111 7590 04/01/2016
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
04/01/2016 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
____________________

GOODMAN GLOBAL HOLDINGS, INC.
Third Party Requester

v.

CARRIER CORP.
Patent Owner
____________________

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Technology Center 3900
____________________

Before: STEVEN D.A. McCARTHY, DANIEL S. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued to Shah et al. on August 17, 2010 (hereinafter the ’452 patent).
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STATEMENT OF THE CASE
Appellant/Patent Owner appeals under 35 U.S.C. §§ 134(b) and
315(a) from the Examiner’s rejections of claims 1–81. We have jurisdiction
under 35 U.S.C. §§ 134(c) and 315(b). The Patent Owner requested, but
subsequently waived, an oral hearing. We AFFIRM.
We are informed that the ’452 patent is involved in a litigation
between the parties styled Carrier Corporation v. Goodman Global Inc. et
al., 1:12-cv-00930-SLR (D. Del.) and that there is also a reexamination
proceeding ongoing of the related patent US 7,243,004.

THE INVENTION
The Patent Owner’s invention is directed generally to “a heating,
ventilating and air conditioning ([H]VAC) system wherein several
interconnected units communicate control signals to and from each other
over a communication bus.” Spec., col. 1, ll. 5–8. Claims 1 and 12,
reproduced below, are illustrative of the claimed subject matter:
1. An HVAC system comprising:
a thermostat incorporating a central control, and operator
input switches;
a data bus communicating control signals from said central
control to an indoor HVAC unit, said indoor HVAC unit being
operable to provide a heating function to air within an
environment, said indoor HVAC unit being provided with a
control that directly controls said indoor HVAC unit, and which
receives control signals on said data bus from said central
control.

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12. An HVAC system comprising:
a data bus including four wires communicating signals
from a central control to a control for an indoor HVAC unit, said
data bus including two control wires carrying a plurality of
distinct control signals and two power wires carrying power, said
indoor HVAC unit providing a power source for providing
power over said two power wires, said central control being a
system control for generating and sending controls signals to
said indoor HVAC unit control, said indoor HVAC unit being
operable to provide heating and a fan function to move air
within an environment; and
an outdoor HVAC unit provided with four wires, with two
power wires carrying power signals, and two control wires
carrying a plurality of distinct control signals from said outdoor
HVAC unit to said central control, said central control providing
control signals to said outdoor HVAC unit control to operate said
outdoor HVAC unit.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hartsell
Stewart
Heckenbach
Dushane
Bessler
Bahel
Sugiyama
Wada
US 4,298,946
US 4,382,544
US 4,616,325
US 5,348,078
US 5,410,230
US 5,475,986
US 5,632,155
US 6,453,689
Nov. 3, 1981
May 10, 1983
Oct. 7, 1986
Sep. 20, 1994
Apr. 25, 1995
Dec. 19, 1995
May 27, 1997
Sep. 24, 2002

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THE REJECTIONS ON APPEAL
The Examiner made the following rejections: 2
1. Claims 1–3, 5, 6, 8–13, 18, 19, 21–29, 31–39, 57, 59–62, and
81 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Bahel.
RAN 4, 25.
2. Claims 12, 13, 18, 19, and 21–25 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Bahel and Sugiyama. RAN
10, 26.
3. Claims 4, 6, 13, 15–17, 52, 58, 73, and 80 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Bahel and Dushane. RAN
12, 27.
4. Claims 10, 15–17, 22, 44, 46, 65, and 67 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Bahel and Heckenbach. RAN
14.
5. Claims 7 and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bahel and Stewart. RAN 16.
6. Claims 14, 53, and 74 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bahel, Dushane, and Heckenbach. RAN 17.
7. Claims 13 and 15–17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bahel, Sugiyama, and Dushane. RAN 18, 28.
8. Claims 15–17 and 22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bahel, Sugiyama, and Heckenbach. RAN 20.

2 The numbers assigned to the rejections are for the convenience of the
present opinion and do not correspond in all cases to those appearing in the
RAN.
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9. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bahel, Sugiyama, and Stewart. RAN 21.
10. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bahel, Sugiyama, Dushane, and Heckenbach. RAN 22.
11. Claims 1, 5–7, 9, 11, and 81 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Stewart. RAN 22.
12. Claim 43 stands rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to point out and distinctly claim the
subject matter regarded as the invention. RAN 28.
13. Claims 38, 39, 61, and 62 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Bahel and Bessler. RAN 29.
14. Claims 30, 40, 41, 63, and 64 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Bahel and Wada. RAN 30.
15. Claims 42 and 78 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bahel, Wada, and Dushane. RAN 32.
16. Claims 43 and 79 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bahel, Wada, Dushane, and Heckenbach. RAN 33.
17. Claims 45 and 66 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bahel, Heckenbach, and Dushane. RAN 33.
18. Claims 47–51 and 68–72 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Bahel, Heckenbach, and
Wada. RAN 34.
19. Claims 54, 55, 75, and 76 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Bahel, Dushane, and Wada.
RAN 34.
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20. Claims 56 and 77 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bahel, Dushane, Wada, and Heckenbach. RAN 35.
21. Claims 31 and 32 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bahel and Hartsell. RAN 35.
22. Claim 30 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stewart and Wada. RAN 36.
23. Claims 38–56 and 61–79 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. RAN 37.
24. Claims 30, 47, 48, 68, and 69 stand rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. RAN 39.
ANALYSIS
Written Description
The Examiner makes two written description rejections, one of claims
38–56 and 61–79; and the other of claims 30, 47, 48, 68, and 69. Both
rejections arise out of amended claim subject matter that is not described
using the same words as in the Specification, but using terminology that is
similar. In both instances, we must determine whether the claim language at
issue is supported by this similar, but not identical language found in the
Specification.
The first rejection deals with the term “control information” such as
that in claims 38 and 61, which recite “control information for both a
furnace and a fan/heater combination.” Claims 39–56 and 62–79 depend
ultimately either from claim 38 or claim 61, and incorporate the challenged
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language by reference. As the Patent Owner admits, the Specification does
“not use the words ‘control information’ in ipsis verbis, [but] the ’452
specification still nevertheless describes that the central control has the
information to control the various HVAC units in the system” via the
generation and communication of “control signals.” See App. Br. 38, citing
Spec. Abstract. As the Patent Owner further explains “the central control
can generate control signals for a furnace, fan/heater combination, air
conditioner, or heat pump depending on the particular system
configuration.” App. Br. 38.
We also note that original claim 12 clearly recites that the central
control is “a system control for generating and sending control signals to
said indoor HVAC unit control.” See also Spec. col. 2, ll. 58–66 and col. 3,
ll. 4–6. By being able to generate as well as communicate control signals,
the central control necessarily must include control information required to
generate those control signals. See App. Br. 38. We do not agree with the
Requester that this is an instance where the Patent Owner is arguing that the
control information is an obvious teaching derived from the specific
teaching of control signals (see Resp. Br. 37), but rather we find that the
original Specification describes the generation and communication of
control signals sufficiently to find that the Patent Owner had possession of
those control signals containing control information. Accordingly, we do
not sustain this rejection.
The second rejection relates to the use of the terms “access module”
and “remote access module.” The Requester argues that the Specification
merely states “at most that an ‘access module’ would be a desired feature”
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and that there is “insufficient [support] to demonstrate that the patentee was
in possession of the feature.” Resp. Br. 37. We disagree.
As the Patent Owner points out, the Specification describes a
“systems access module 68” as shown in Figure 2. The Specification
describes that “[a]n access module 68 may also be connected into the data
bus 59, through its own data bus 69. As known, an access module allows
remote access to the HVAC system.” Spec. col. 4, ll. 49–54. We agree that
“[t]he ’452 patent explains not only what the access module does, but how it
communicates with the rest of the overall system.” App. Br. 40. As such,
we conclude that the Specification sufficiently supports the claim language
at issue and thus do not sustain the rejection of claims 30, 47, 48, 68, and 69.
Indefiniteness
The Examiner rejects claim 43 for reciting “said at least one
peripheral HVAC unit” for lack of antecedent basis because claim 42 recites
only “a peripheral HVAC unit.” While it certainly would be clearer if claim
43 were amended to use the same language used in claim 42 (or vice versa),
given that these are the only uses of “peripheral HVAC unit” we agree with
the Patent Owner that one of ordinary skill in the art would have been able to
reasonably ascertain the scope of the claim. See App. Br. 40. Accordingly,
we do not sustain this rejection.
Anticipation
The Examiner rejected claims 1–3, 5, 6, 8–13, 18, 19, 21–29, 31–39,
57, 59–62, and 81 as anticipated by Bahel. This rejection encompasses all of
the independent claims at issue in this reexamination. The main thrust of the
Patent Owner’s argument regarding this rejection is that Bahel does not
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properly teach the claimed “central control” and also that whatever Bahel
does teach, it is not located at the thermostat as required by the claims, but
rather “Bahel discloses an indoor control unit that ‘functions as the master.”
App. Br. 10.
The Patent Owner asserts that Bahel cannot teach centralized control
because it teaches “distributed control, which is diametrically opposed to the
centralized control claimed in the ’452 patent.” App. Br. 9. As the Patent
Owner points out, the Examiner does not dispute that Bahel is a distributed
architecture, but “contends that Bahel discloses distributed operational
control, but centralized system control.” App. Br. 9 (citing RAN 6
(describing “operational control” as “direct control of an HVAC unit” and
“system control” as “overall control of an HVAC system.”); see also Resp.
Br. 7). The Patent Owner further argues that Bahel’s “distributed system
does not render it capable of receiving user desired settings, receiving
information from HVAC units, and communicating several distinct control
signals to an indoor unit, much less in a centralized architecture.” App. Br.
10.
We agree, however, with the Requester that “[d]istributed operational
control does not preclude central system control.” Resp. Br. 8. We also
agree with the Requester that in the systems taught by both Bahel and the
’452 patent, “[o]perational control is distributed among the HVAC unit
controllers, but system control is limited to the central system master.”
Resp. Br. 8; see Dec. Auslander, paras. 16–20, 23–28.
We are also unpersuaded by the Patent Owner’s argument that “[t]he
Examiner attempts to make up for these [alleged] deficiencies in Bahel by
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pointing to a single boilerplate sentence describing a potential modification
to Bahel that ‘from a system standpoint, any one of the microprocessor-
based modules could serve as the master.’” App. Br. 10 (citing RAN 4,
Bahel col. 9, l. 59 – col. 10, l. 7). Far from being boilerplate, this sentence
teaches that while the preferred embodiment describes the master control
features as being at the indoor unit, such features could reside at either of
two other locations, one of which being the claimed location of the
thermostat.
Furthermore, we agree with the Requester that the Patent Owner’s
“argument that Bahel does not describe ‘what functions must be moved to
the thermostat and what function must stay with the indoor unit’ is
irrelevant” because the claims refer only generally to system control and do
not claim specific control features that may or may not need to be moved.
Resp. Br. 8 (quoting App. Br. 11). Bahel sufficiently describes that overall,
general system/master control features may reside at any one of three
locations, including the thermostat, which is all that is claimed.
Furthermore, contrary to the Patent Owner’s assertion, this is not a
modification that moves the rejection from the anticipation realm to the
obviousness realm, but it is a teaching within Bahel itself that the master
controls may be located at any one of three locations, including the
thermostat as claimed.
The Patent Owner also argues that moving the master control
functions to the thermostat would have been beyond one of skill in the art
(App. Br. 11). We do not subscribe to the Patent Owner’s characterization
of the rejection as “moving” the functions in the sense of modifying the
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system so that a microprocessor at the thermostat performs functions already
resident elsewhere. Bahel teaches a system in which the master control
functions reside at any one of a small number of locations, including the
thermostat. Given that Bahel specifically teaches that the master controls
may be located in any of three locations, we are not persuaded that one of
skill in the art would have been incapable of implementing a system in
which master control functions resided at the thermostat.
On the contrary, the implementation merely would have required
applying well-known bus communication technology to a field where it had
previously not been widely used, although both Bahel and Stewart show that
such field-specific bus communication was known prior to Patent Owner’s
patent. That there may have been technical hurdles in accomplishing this, as
the Patent Owner argues, is not dispositive of this issue. Given that a prior
art patent is presumed enabled for that which it teaches, and Bahel
specifically teaches the master controls being located at the thermostat, we
agree with the Requester that implementing such a system would not have
been beyond the level of ordinary skill in this art. See Resp. Br. 9, citing
Dec. Auslander, paras. 30–32.
The Patent Owner next argues that “Bahel, however, does not
anticipate . . . a power source located in its indoor unit” as recited in claims
12, 34 and 81. See App. Br. 12–13. As the Requester points out, Bahel
specifically teaches that “communication link 48 is a four wire bus
supplying AC power and ground to all three units and also providing a pair
of serial communication data lines.” Resp. Br. 9 (quoting Bahel col. 7, ll.
34–37). The Requester sufficiently explains how this teaching provides
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power as claimed and thus we are not persuaded of error on this point. See
Resp. Br. 9–10.
The Patent Owner further argues that “Bahel does not anticipate ‘at
least one peripheral unit’ because Bahel’s ‘auxiliary electronic heater’ is not
a ‘peripheral unit,’ as recited in claim 6.” App. Br. 13. The Patent Owner
first argues that the auxiliary heater cannot be the peripheral unit of claim 6
while also serving as the furnace of claim 37. Id. While this might be true if
claim 37 depended from claim 6, thus potentially requiring two separate
elements to anticipate the two claimed elements, claim 37 in this instance is
entirely separate from claim 6. Accordingly, it is acceptable for an element
of Bahel to be considered a peripheral unit for one claim while also being a
furnace in relation to an entirely separate claim. Additionally, as the
Requester states, it is not necessary for the auxiliary heaters to be wired to
the thermostat because, as Bahel teaches, the auxiliary heaters are wired to
the indoor unit (Bahel col. 7, ll. 56–61) and then “[t]he thermostat exercises
system control while the indoor unit exercises operational control over the
auxiliary heaters.” Resp. Br. 10.
Regarding claims 37 and 60, while we are unpersuaded by the Patent
Owner’s argument, we agree that the Examiner erred in rejecting these
claims as anticipated by Bahel. We do not agree with the Patent Owner that
the claimed “furnace” necessarily requires combustion, but we ascertain
from the state of the art that a furnace and a heat pump fall into two different
classes of devices and one of skill in the art of HVAC systems would not
have referred to a heat pump as a furnace. That said, the furnace recited in
claims 37 and 60, and the heat pump described by Bahel, are both
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conventional HVAC units. We also agree with the Requester that the Patent
Owner “acknowledged that it had not invented either a furnace or a
fan/heater combination [or a heat pump, for that matter], but clarified that its
invention ‘was to incorporate a control on [an indoor HVAC unit or an
outdoor HVAC unit] and communicate with the central control over the data
bus.’” Resp. Br. 5 (citing January 30, 2008 Appeal Brief 36-37).
We see no evidence that there was any specific technical hurdle in
communicating with a heat pump versus a furnace in the manner described
in the ʼ452 patent so as to lend novelty to this recitation of a furnace. We
recognize that while they operate by different thermodynamic principles,
heat pumps and furnaces are essentially interchangeable from a control
standpoint. Additionally, the ’452 patent asserts that “all of this control may
be known in the art. It is how the control signals are communicated that is
novel.” Spec. col. 4, ll. 65-67. Accordingly, having determined above that
Bahel does teach the allegedly novel manner of communicating control
signals, we conclude that it would have been an obvious substitution to use a
furnace as the heating device as claimed rather than a heat pump as disclosed
in Bahel. This finding amounts to new grounds of rejection not previously
made by the Examiner.
Obviousness Rejections
Bahel and Dushane
The Patent Owner’s main argument regarding this combination is that
Dushane fails to teach the requisite central control. See App. Br. 23–24.3

3 The Patent Owner also asserts, in summary fashion, that the Examiner’s
stated reason for combining the teachings of Bahel and Dushane is
conclusory (see App. Br. 28–29). As the Requester points out, the Patent
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As the Requester properly points out, however, the Examiner does not need
to rely upon Dushane for that element because it is already taught in Bahel.
Resp. Br. 16. Dushane is merely used for the teaching in the claims at issue
that there be a peripheral HVAC unit that is hard-wired to the indoor HVAC
unit control and, as the Requester notes, “Patentee does not contest that
‘room thermostat 50’ or ‘registers or dampers 30’ meet the limitation
‘peripheral HVAC unit [that] includes its own control.’” Id. Additionally,
we agree with the Requester that Dushane discloses the hard-wired aspect by
disclosing that “the thermostat units 50 [i.e., the peripheral units] may be
hardwired to the central controller 60 [i.e., the indoor HVAC unit control].”
Id (quoting Dushane col. 16, ll. 44–46). Accordingly we sustain this
rejection of claims 4, 6, 13, 42, 52, 73, 78, and 80.
Regarding claim 58, which, as noted by the Requester, recites a
connection admitted by the ’452 patent as being known in the art,4 Patent
Owner argues what appears to be an overly-narrow claim interpretation.
The Patent Owner argues the Examiner errs by relying “on Dushane’s
statement that an ‘individual zone thermostat may be mounted in
a…specifically designed junction box.” App. Br. 25 (quoting Dushane col.
3, ll 29–32); see also RAN 12–14. Patent Owner believes the finding is
incorrect because “‘an individual zone thermostat’ is clearly not an outdoor
unit.” App. Br. 25. Claim 58, however, only requires that “said outdoor

Owner fails to explain this assertion further (see Resp. Br. 19). The
Examiner’s reasoning is not conclusory on its face and the argument is not
persuasive.
4 “Wires 43A-D are connected to wires 28A-D, as known, such as at a
routing or junction box 31.” Spec. col. 3, ll. 15–16 (emphasis added).
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HVAC unit is connected to said data bus through a junction box.” This
claim language does not place any specific location restriction upon the
junction box and only requires that one thing be connected to another
through a junction box. As we understand the Examiner’s interpretation,
Dushane teaches the zone thermostat to be mounted in a junction box and
that zone thermostat sits between an outdoor unit and a data bus, thus
satisfying the claim. Given that a) the ’452 patent admits that connecting
through a junction box is a known manner of connection and b) the
arguments provided are not commensurate with the much more general
scope of claim 58, we are not persuaded of error in this rejection.
Bahel and Stewart
The Examiner relies on Stewart to teach the “interface module”
recited in claims 7 and 20. RAN 16–17. The Patent Owner’s argument
regarding this limitation is that the Examiner improperly relies upon a single
element, the energy controller, to teach both the “indoor HVAC unit control”
and the “interface module.” App. Br. 17–18. As the Requester points out,
“[t]he Federal Circuit has held that the same structure may satisfy distinct
claim elements.” Resp. Br. 16 (citing Powell v. Home Depot, 663 F.3d
1221, 1231 (Fed. Cir. 2011)). We agree with the Requester that “the energy
controller 12 of Stewart wears several hats and can meet several elements.”
Resp. Br. 17. Given that these elements are essentially microprocessors, we
see no reason that a single microprocessor cannot perform two different
functions. Accordingly we sustain this rejection of claims 7 and 20.
Remaining Rejections
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The Patent Owner provides no specific arguments regarding the
remaining obviousness rejections over Bahel in combination with one or
more of Dushane, Heckenbach, Bessler, and Wada, which encompass all of
the remaining claims. The Patent Owner’s only argument against the
remaining rejections is to allege deficiencies in the Examiner’s bases for
combining the various references. See App. Br. 26–30. Contrary to the
Patent Owner’s assertion, and as the Requester points out, the Examiner
provided a detailed explanation for each combination that includes a
reasonable basis for combining with rational underpinnings. See Resp. Br.
17–19. Accordingly, we agree with the Requester that these rejections are
proper and “each Ground of Rejection Patent Owner cited as lacking ‘any
reason’ to ‘combine the[] references’ cites the specific reasons first given for
each combination.” Resp. Br. 18–19.
Because the obviousness rejections over Bahel in combination with
one or more of Dushane, Heckenbach, Bessler, and Wada encompass all of
the appealed claims, we decline to reach the obviousness rejections based on
Bahel and Sugiyama, alone or in combination with other references. Also,
because anticipation and obviousness rejections based upon Bahel
encompass all of the pending claims, we decline to reach the remaining
rejections based upon Stewart as an anticipatory or primary reference.
Secondary Consideration Evidence
After a careful review of the declaration evidence (see RAN 40–44),
the Examiner concluded that the prior art demonstrating obviousness was
more persuasive than the Patent Owner’s evidence of non-obviousness based
on secondary considerations. We do not give the declaration executed by
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Dr. C. Keith Rice as much weight as granted by the Examiner.
Nevertheless, we agree with the Examiner’s conclusion and adopt the
Examiner’s findings by reference.
The Patent Owner argues that its evidence establishes that the claimed
subject matter satisfies a long felt but unsatisfied need; a failure by others to
solve the same problem; and industry recognition of the solution. The Patent
Owner asserts that HVAC systems as of the filing date of the ʼ452 were
becoming increasingly complicated; that an increasing number of control
wires required was increasing; and that, as a consequence, such systems
were increasingly difficult to install and operate. (App. Br. 30, citing
Jeffries Decl. ¶ 5; Vickers Decl. ¶¶ 5 & 6; see also col. 1, ll. 9–12, 19–38
and 61–64). The Patent Owner asserts that the teachings of Bahel are
embodied in a VARITECH system marketed by a competitor of the Patent
Owner (see Henze Decl. ¶ 24; Hickey Decl. ¶¶ 6–10; Hughes Decl. ¶¶ 4–7).
One of the Patent Owner’s witnesses, Hughes, testifies that the VARITECH
system was prone to control failures and improper installation (see ¶¶ 8–12);
and attempts to solve the control failures by replacing the control algorithm
for the indoor control unit was unsuccessful (see ¶ 10). Hughes testifies that
the VARITECH system was not commercially viable and had to be recalled
(Hughes Decl. ¶ 13).
The Patent Owner asserts that the subject matter claimed by the ʼ452
patent solved these problems (see App. Br. 30, citing Jeffries Decl. ¶¶ 10 &
11; Vickers Decl. ¶¶ 9–13). More specifically, the Patent Owner asserts that
its BRYANT EVOLUTION and INFINITY systems embodied the subject
matter claimed in the ʼ452 patent; and that these systems solved the
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problems experienced by the VARITECH system embodying the teachings
of Bahel (see Meyers Decl. ¶ 4). One of the Patent Owner’s witnesses,
David Meyers, testifies that the BRYANT EVOLUTION and INFINITY
systems “received much praise and numerous awards for their revolutionary
HVAC control technology,” as detailed in paragraph 7 of his declaration.
Meyers also testifies that the sales of the BRYANT EVOLUTION and
INFINITY systems increased as a percentage of the Patent Owner’s sales
over their first three years on the market. (See Meyers Decl. ¶ 9; see also
Jeffries Decl. ¶ 14).
At the outset, we observe that claims 1–3, 5, 6, 8–13, 18, 19, 21–29,
31–39, 57, 59–62, and 81, which grouping includes all of the independent
claims on appeal, are rejected as anticipated by Bahel. Evidence of
secondary considerations is not pertinent to an anticipation rejection under
35 U.S.C. § 102. See In re Malagari, 499 F.2d 1297, 1302 (CCPA 1974).
Therefore, the secondary considerations evidence, if ultimately
persuasive at all, can only be persuasive as to the remaining claims on
appeal. We recognize the testimony of the Patent Owner’s witnesses
regarding the commercial failure of the VARITECH system, as well as the
testimony of those witnesses as to the performance of the BRYANT
EVOLUTION and INFINITY systems. Nevertheless, the Patent Owner has
not established sufficient nexus between this testimony and the claims
rejected for obviousness in this proceeding. Like the Examiner, we are
persuaded that the subject matter of the remaining claims on appeal has been
shown to have been obvious despite this testimony.
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The Patent Owner’s witnesses merely testify that the INFINITY
system “is a communicating system that connects using four wires, with
central control located in the thermostat.” (Meyers Decl. ¶ 4; see also
Vickers Decl. ¶¶ 4, 10 & 11). As noted earlier, we credit the Auslander
Declaration over the Henze Declarations; and we find that Bahel describes a
system with a master controller exercising overall system control and
localized controllers controlling the functions of individual system
components. We additionally find that a system embodying the subject
matter of the appealed claims would operate in a similar manner. In
addition, Bahel describes a communication link 48 that is a four wire bus
including a pair of serial communication data lines. Resp. Br. 9 (quoting
Bahel col. 7, ll. 34–37). In other words, those features that the Patent
Owner’s witnesses credit with solving the problems exhibited by the
VARITECH system have been described in Bahel. The testimony of the
Patent Owner’s witnesses does not address the subject matter of the claims
rejected under 35 U.S.C. § 103 specifically; and does not persuade us that
the subject matter of the claims rejected for obviousness, as opposed to other
advantages possessed by the commercial BRYANT EVOLUTION and
INFINITY systems but not by the VARITECH system, overcame the
problems with the VARITECH system.
The Patent Owner argues that the Requester is using a protective order
entered by a district court in pending litigation to hide material evidence
from the Examiner and the Board. The scope of the protective order and its
use by the Requester are issues to be addressed in the first instance by the
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district court and not by the Board. We will not speculate as to what
evidence the Patent Owner might have presented absent the protective order.

DECISION
We REVERSE the Examiner’s written description rejections of claims
30, 38–56, 61–79; we REVERSE the Examiner’s indefiniteness rejection of
claims 37, 38, 43, 60, and 61; and we AFFIRM certain of the Examiner’s
art-based rejections that encompass all of pending claims 1–81 as described
above. Specifically, we enter a new grounds of rejection with respect to
claims 37 and 60.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that "[a]ny decision which includes a new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review." Correspondingly, no portion of the decision is final for
purposes of judicial review. For further guidance on new grounds of
rejection, see 37 C.F.R. § 41.77(b)–(g). The decision may become final
after it has returned to the Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file
a response requesting reopening of prosecution
before the examiner. Such a response must be either
an amendment of the claims so rejected or new
evidence relating to the claims so rejected, or both.
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(2) Request rehearing. The owner may
request that the proceeding be reheard under
§ 41.79 by the Board upon the same record. . . .
Any request to reopen prosecution before the Examiner under 37
C.F.R. § 41.77(b)(1) shall be limited in scope to the "claims so rejected."
Accordingly, a request to reopen prosecution is limited to issues raised by
the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted. Furthermore, should the Patent Owner seek to
substitute claims, there is a presumption that only one substitute claim would
be needed to replace a cancelled claim.
Requester may file comments in reply to a Patent Owner response. 37
C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall be
limited in scope to the issues raised by the Board's opinion reflecting its
decision to reject the claims and the Patent Owner's response under
paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not
permitted as a matter of right. A newly proposed rejection may be
appropriate if it is presented to address an amendment and/or new evidence
properly submitted by the Patent Owner and is presented with a brief
explanation as to why the newly proposed rejection is now necessary and
why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b) for
all Patent Owner responses and Requester comments is required.
The Examiner, after the Board's entry of a Patent Owner response and
Requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board's rejection is maintained or has been overcome. The
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proceeding will then be returned to the Board together with any comments
and reply submitted by the Patent Owner and/or Requester under 37 C.F.R. §
41.77(e) for reconsideration and issuance of a new decision by the Board as
provided by 37 C.F.R. § 41.77(f).
The Requester may also request rehearing under 37 C.F.R. § 41.79, if
appropriate. However, the Board may elect to defer issuing any decision on
such request for rehearing until such time that a final decision on appeal has
been issued by the Board.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956.
AFFIRMED; 37 C.F.R. § 41.77(b)

Klh

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Patent Owner:

STERNE, KESSLER, GOLDSTEIN & FOX PLLC
1100 New York Avenue, N.W.
Washington, D.C. 20005

Third Party Requester:

Michael Hawes
Baker Botts LLP
910 Louisiana Street
Houston, TX 77002