Ex Parte Siddaramanna et al

Patent Trial and Appeal Board

Jul 26, 2018

14015896 (P.T.A.B. Jul. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/015,896
90545 7590
HONEYWELL/STW
Patent Services
115 Tabor Road
P.O. Box 377
08/30/2013
07/30/2018
MORRIS PLAINS, NJ 07950
FIRST NAMED INVENTOR
Lokesh T. Siddaramanna
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
H0016673C2-l 161.1342103 1086
EXAMINER
FURDGE, LARRY L
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
07/30/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentservices-us@honeywell.com
Honeywell. USPTO@STWiplaw.com
sherry. vallabh@honeywell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LOKESH T. SIDDARAMANNA,
HARSHA N. CHANDRASHEKAR, GARY J. HOBART,
and THOMAS G. PETERSON
Appeal2017-007082
Application 14/015,896 1
Technology Center 3700
Before LINDA E. HORNER, BRETT C. MARTIN, and
PAUL J. KORNICZKY, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-12 and 14-20. Final Office Action
(February 25, 2016) (hereinafter "Final Act."). 2 We have jurisdiction under
35 U.S.C. § 6(b).
1 Lokesh T. Siddaramanna et al. ("Appellants") identify Honeywell
International, Inc. as the real party in interest. Appeal Brief (August 9,
2016) (hereinafter "Appeal Br."), at 3.
2 Claim 13 is canceled.
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Application 14/015,896
The claimed subject matter relates to "HV AC controllers such as
thermostats that include a display panel." Specification (August 30, 2013)
(hereinafter "Spec."), at 1, 11. 7-8. The Examiner rejected the claims as
unpatentable over the prior art and under the doctrine of obviousness-type
double patenting. For the reasons explained below, we do not find error in
the Examiner's rejections. Accordingly, we AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1, 10, and 16 are the independent claims on appeal. Claims 1
and 16 are illustrative of the subject matter on appeal and are reproduced
below.
1. A method for operating a thermostat that controls at
least in part an HV AC system of a building or other structure,
wherein the building or other structure includes a non-HVAC
system appliance, the method comprising:
controlling the HV AC system to achieve a desired set
point;
receiving information either directly or indirectly from a
utility, another service provider, and/or a meter, wherein the
information is indicative of energy consumption; and
displaying on a display of the thermostat a display
indicator that is based on the received information, wherein the
display indicator comprises one or more display messages,
wherein one display message comprises two or more words that
collectively describe in a narrative form a suggestion as to how
to take action to reduce energy consumption by the non-HVAC
system appliance.
16. An HV AC controller for controlling at least in part
an HV AC system of a building or other structure, wherein the
building or other structure includes a non-HV AC system
appliance, the HVAC controller comprising:
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an output for providing one or more control signals to
control the HV AC system;
an input for receiving information related to energy
consumption;
a display; and
a controller in communication with the input, the output
and the display, the controller displaying an indicator on the
display that is based on the information received via the input of
the HVAC controller, wherein the display indicator comprises
two or more words that collectively describe in a narrative
manner a suggestion as to how to take action to reduce energy
consumption by the non-HVAC system appliance.
Br. 15, 17 (Claims Appendix).
EVIDENCE
Dick us 5,012,973 May 7, 1991
Ehlers et al. US 6,216,956 Bl Apr. 17, 2001
Howard et al. US 2002/0196124 Al Dec. 26, 2002
Glicken US 2003/0178070 Al Sept. 25, 2003
Horst US 2004/0098171 A 1 May 20, 2004
Hunt et al. US 2006/0103549 Al May 18, 2006
Ehlers et al. ("Ehlers '719") US 7,130,719 B2 Oct. 31, 2006
Garozzo US 2006/0283964 Al Dec. 21, 2006
Mueller et al. US 2006/0283965 Al Dec. 21, 2006
Siddaramanna et al. US 7,954,726 B2 June 7, 2011
("the '726 patent")
Siddaramanna et al. US 8,091,794 B2 Jan. 10,2012
("the '794 patent")
Siddaramanna et al. US 8,523,084 B2 Sept. 3, 2013
("the '084 patent")
Baek KR 2006-029736 A Apr. 7, 2006
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REJECTIONS
The Final Office Action includes the following rejections under
pre-AIA 35 U.S.C. § 103(a):
1. Claims 1, 6-12, and 14 stand rejected as unpatentable over
Horst, Howard, and Mueller.
2. Claims 2-5 stand rejected as unpatentable over Horst, Howard,
Mueller, and Hunt.
3. Claim 15 stands as unpatentable over Horst, Howard, Mueller,
and Glicken.
4. Claims 16, 19, and 20 stand rejected as unpatentable over
Ehlers, Howard, and Mueller.
5. Claims 17 and 18 stand rejected as unpatentable over Ehlers,
Howard, Mueller, and Hunt.
The Final Office Action also includes the following rejections under
the doctrine of obviousness-type double patenting:
6. Claims 1-12 and 14-20 stand rejected as unpatentable over
claims 1-5 of the '084 patent in view of Ehlers '719, Dick, Baek, and
Garozzo.
7. Claims 1-12 and 14-20 stand rejected as unpatentable over
claims 1-29 of the '794 patent in view of Ehlers '719, Dick, Baek,
and Garozzo.
8. Claims 1-12 and 14-20 stand rejected as unpatentable over
claims 1-26 of the '726 patent in view of Ehlers '719, Dick, Baek,
and Garozzo.
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ANALYSIS
First through Third Grounds of Rejection
In response to the first ground of rejection, Appellants argue claims 1,
6-11, and 14 as a group. Appeal Br. 6-10. Appellants present additional
arguments for dependent claim 12. Id. at 10-11. We select claim 1 as
representative of the group, and claims 6-11 and 14 stand or fall with claim
1. 37 C.F.R. § 4I.37(c)(l)(iv). We address claim 12 separately below. In
response to the second and third grounds of rejection, Appellants contend
only that Hunt and Glicken do not remedy the asserted deficiencies in the
rejection of independent claims 1 and 10 over Horst, Howard, and Mueller.
Id. at 11-12. Thus, the outcome of the appeal of the first through third
grounds of rejection turns on our analysis of the rejection of claims 1 and 12
over Horst, Howard, and Mueller.
The first ground of rejection relies on a modification of Horst's
automated thermostat control method to display a message describing a
suggestion on how to reduce energy consumption by the non-HVAC system
appliance, as taught by Howard, "in order to conserve energy." Final Act. 3.
The rejection also proposes further modifying Horst's automated thermostat
control method to display a message that comprises two or more words, as
taught by Mueller, "to allow a user to receive information from a service
provider in an automated fashion." Id. at 3--4.
Appellants argue that the Examiner's proposed modification of
Horst's method to display a message "in order to conserve energy" is not
based on rational underpinnings. Appeal Br. 8. Appellants assert that
displaying a suggestion on Horst's display as to how the user can take action
to reduce energy consumption by a non-HV AC appliance does not make
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sense because in Horst's system "energy curtailment signals from the utility
are forwarded direct[ly] to each of the various appliances, with no user
required action." Id.; see also Reply Brief (April 3, 2017) (hereinafter
"Reply Br."), at 2 (Appellants arguing that "Horst actually teaches away
from relying on the user to curtail his/her own energy usage"). Appellants
contend that the Examiner's proposed modification "would remove the
specific advantage taught by Horst, and would likely result in less
'conserved energy."' Reply Br. 3 ( quoting Final Act. 3). Appellants further
contend that because Horst already teaches automatic curtailment signals
from a utility to the appliance, "Mueller would not appear to provide any
advantage over what is already taught by Horst." Appeal Br. 8; see also
Reply Br. 4 (relying on the same arguments against modifying Horst to
include the claimed display message).
The Examiner elaborated on the reason to modify Horst in the
Answer. Examiner's Answer (February 2, 2017) (hereinafter "Ans."), at 18.
Specifically, the Examiner pointed to paragraphs 34-37 of Horst, which
describe that when a controller receives a curtailment signal, the controller
determines whether to control the HV AC to achieve resource reduction by
checking to see whether doing so would conflict with the user's desire to
maintain a set household temperature. Id. The Examiner explained:
If the signal is found to be in conflict with a set household
temperature the curtailment will not be engaged and thus would
not necessarily achieve the desired goal of conserving energy.
One skilled in the art at the time of the invention would
recognize the advantage taught by Howard in at least
[paragraphs 26, 31, 34, 51, 52, 54 and Figure 3] where upon
receipt of a curtailment signal the user receives a message
which specifically asks the user to reduce the use of an air
conditioner and in response to the message the user may then
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advantageously reduce the use of the system and thereby
conserve energy.
Id. The Examiner further explained additional benefits of the display from
the teachings of Mueller. Ans. 19 (citing Mueller, paras. 13, 29, 30). In
other words, the Examiner posits that it would have been obvious to modify
Horst to allow a user to override the user's own predetermined settings on a
case-by-case basis to conserve additional energy over that amount conserved
by the automated system of Horst.
Appellants do not specifically address the Examiner's elaborated
reasoning in the Reply Brief. Instead, Appellants continue to assert that the
Examiner erred in proposing to replace Horst's automated system with a
system that prompts the user to place an appliance in energy saving mode.
Reply Br. 2. We do not understand the Examiner to propose that one would
have been led to replace Horst's automated control. Rather, the Examiner
provides an example of a specific instance, described in Horst, in which
Horst's system would not engage in energy saving mode operations of an
appliance due to predetermined user settings. The Examiner's proposed
modification is to provide the user with an opportunity to override the
predetermined settings that would otherwise call for automated operation of
the appliance in normal mode in order to conserve additional energy.
Indeed, Horst recognizes the need to allow a user to override the
automated control of the appliance. Horst ,r 6 ("The appliance may also
include an override device to allow a user to prevent the controller from
operating the at least one component in the recourse savings mode"), ,r 33
("The load reduction system may also include an override device 30 that
allows the user to deactivate the load reduction system"). Horst describes
that the override device may be "a touch panel, or any other type of device
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associated with the appliance that allows for the user to activate or
deactivate the load reduction system". Id. ,r 33.
Horst also discloses that the home controller may be programmed by
the user to maintain specific household settings regardless of whether a
curtailment signal is received by the home controller. Horst ,r 37 ("For
example, a user may program the home controller to maintain a household
temperature below 70 degrees Fahrenheit"). If such a maximum temperature
limit were entered by the user, then the home controller would not signal the
HV AC to operate in resource savings mode upon receipt of a curtailment
signal if doing so would increase the household temperature above 70
degrees. Id.
The Examiner's reasoning is simply to modify Horst's programmed
controller to allow the user the option to override his/her own predetermined
settings on a case-by-case basis to achieve further energy conservation. In
the example above, the user would be prompted via a display on the
thermostat to conserve energy by allowing operation in the resource savings
mode despite the fact that doing so will conflict with the user's pre-set
maximum temperature limit. This is akin to asking the user, "Are you sure
you do not want to conserve energy?" Thus, the Examiner's proposed
modification is not intended to replace the automated curtailment method of
Horst. Rather, the proposed modification is intended to supplement this
method to achieve further energy conservation. For these reasons, we find
that the Examiner's articulated reasoning for the combination of Horst,
Howard, and Mueller is supported by rational underpinnings.
Further, the language in claim 1 that is directed to the specific content
of the narrative displayed on the display is akin to printed matter. See King
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Pharms., Inc. v. EON Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010)
( extending the printed matter rationale to the situation in which an
instructional limitation is added to a method, as opposed to a product, known
in the art). Specifically, the recited content of the displayed suggestion does
not have a new and unobvious functional relationship with the claimed
method. In other words, suggesting to a user how to take action to reduce
energy consumption by the non-HV AC system appliance does not transform
the process of operating the thermostat. Irrespective of the content of the
message displayed to the user, the step of displaying a message to the user
remains the same. As such, Appellants cannot rely on the content of the
narrative to patentably distinguish the claimed method over the prior art.
See King Pharms., 616 F.3d at 1278 (holding that an otherwise anticipated
method claim does not become patentable because it includes a step of
"informing" someone about the existence of an inherent property of that
method); see also In re DiStefano, 808 F.3d 845, 848 (Fed. Cir. 2015)
( explaining that printed matter cannot be the basis for distinguishing prior
art). In other words, the same method as recited in claim 1 that differs from
claim 1 only in that it recites different content of the narrative should not be
worthy of a separate patent.
For these reasons, we find that the Examiner has articulated adequate
reasoning based on rational underpinnings explain how the combined
teachings of Horst, Howard, and Mueller would have led one having
ordinary skill in the art to the method of claim 1. Accordingly, we sustain
the rejection of claim 1, and claims 6-11 and 14 which fall with claim 1,
under 35 U.S.C. § 103(a). Likewise, we sustain the rejections of claims 2-5
and 15 under 35 U.S.C. § 103(a).
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Claim 12 depends from independent method claim 10 and recites
"wherein the two or more words of the first display message describe in a
narrative manner that the user refrain from running the non-HVAC
appliance until later, wherein the non-HVAC appliance is not controlled by
the thermostat." Appeal Br. 17 (Claims Appendix). Claim 12 thus adds a
more specific recitation as to the content of the message displayed to the
user. In the case of claim 12, the suggestion as to how to reduce energy
consumption specifically includes a suggestion to refrain from running the
non-HV AC appliance until later. As explained above, this language is akin
to printed matter and cannot be relied upon to patentably distinguish the
claimed method over the prior art.
Further, we find no error in the Examiner's rejection. The Examiner
relied on the teaching in paragraph 32 of Horst, which recognizes that in
energy saving mode, one may wish to change the operation of a dryer for a
certain time period. Final Act. 8. Contrary to Appellants' assertion, the
Examiner did not rely on Horst alone to render obvious the recited displayed
message. Appeal Br. 11. Rather, as is clear from the rejection of claim 10,
from which claim 12 depends, the Examiner proposed modifying Horst, with
the teachings of Howard and Mueller, to include displayed messages. Final
Act. 6-7. The Examiner relied on paragraph 3 2 of Horst to demonstrate that
the specific content of such a displayed message as recited in claim 12
would have been obvious to one having ordinary skill in the art. Id. at 8;
Ans. 20. As such, the Examiner did not err in rejecting claim 12 as
unpatentable over Horst, Howard, and Mueller. Accordingly, we sustain the
rejection of claim 12 under 35 U.S.C. § 103(a).
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Fourth and Fifth Grounds of Rejection
In response to the fourth ground of rejection, Appellants argue claims
16, 19, and 20 as a group. Appeal Br. 12-13. We select claim 16 as
representative of the group, and claims 19 and 20 stand or fall with claim 16.
37 C.F.R. § 4I.37(c)(l)(iv). In response to the fifth ground of rejection,
Appellants contend only that Hunt does not remedy the asserted deficiencies
in the rejection of independent claim 16 over Ehlers, Howard, and Mueller.
Id. at 13-14. Thus, the outcome of the appeal of the fourth and fifth grounds
of rejection turns on our analysis of the rejection of claim 16 over Ehlers,
Howard, and Mueller.
Appellants argue the Examiner erred in finding that Ehlers discloses
the claimed HV AC controller that displays an indicator on the display as
recited in claim 16. Appeal Br. 12. Appellants contend that the passages
relied on by the Examiner relate to functions of the central processor 30 that
is connected to an external HV AC system and does not relate to the
functions of an HVAC controller. Id. at 13; see also Reply Br. 7 ("Ehlers
teaches a central processor 30 that provides signals to an HV AC
controller").
The Examiner found that "Ehlers teaches an HV AC controller (Fig. 1)
for controlling at least in part an HVAC system of a building or other
structure, wherein the building or other structure includes a non-HVAC
system appliance (Col. 7, lines 59-67 and Col. 25, lines 17-33)." Final
Act. 11-12; see also Ans. 21 (Examiner further explaining that the cited
passages teach that the processor controls a heating and cooling system to
maintain an indoor temperature). The Examiner identified the controller as
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corresponding to "at least process function 36" depicted in Figure 3 of
Ehlers. Final Act. 12.
Appellants draw a distinction between the claimed HVAC controller
and Ehler's processor 30, which controls the functions of an external device
50. Ehler's processor 30 "provides output signals ... to user interface and
external device control block 40" which may include a display device, and
"a control device, which controls an external environmental condition
control device 50." Ehlers, col. 7, 11. 37--44. Ehlers describes that "[o]ne or
more energy-consuming external devices 50 (loads) are controlled to
maintain desired levels of environmental conditions while minimizing
energy consumption" and the devices 5 may include HVAC systems. Id. at
col. 7, 11. 45--47. Specifically, Ehlers discloses that based on user-input
parameters, the processor computes a deadband temperature range for all
possible energy unit price points (received from energy supply companies)
and "control[ s] a heating and cooling system to maintain an indoor
temperature within the deadband range for each then-current energy unit
price point." Id. at col. 7, 11. 59-67. Further, according to various
embodiments disclosed in Ehlers, the main processor can be either central or
local, with additional multiple local processors. Ehlers, col. 8, 11. 36-67
( describing Figures 6 and 7).
We do not see any language in claim 16 that requires the claimed
"HV AC controller" to reside within the thermostat or elsewhere in the
HV AC system. In other words, claim 16 as written broadly encompasses
any controller that operates to control "at least in part an HV AC system of a
building or other structure." As noted above, Ehler' s HV AC controller
depicted in Figure 1 includes processor 30 that has "an output for providing
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one or more control signals to control the HV AC system," and "an input for
receiving information related to energy consumption." Ehler's HVAC
controller also has a user interface and external control device 40 that
includes "a display." Ehler's processor 30 is a controller "in communication
with the input, the output and the display, the controller displaying an
indicator on the display that is based on the information received via the
input of the HVAC controller." Thus, Ehler's system depicted in Figure 1
includes processor 30 and user interface and external control device 40 that
receive input and issue output to control an HVAC system, and, as such,
Ehler's system corresponds to the claimed HV AC controller.
For these reasons, we find that the Examiner's finding as to Ehler's
disclosure is supported by a preponderance of the evidence. Accordingly,
we sustain the rejection of claim 16, and claims 19 and 20 which fall with
claim 16, under 35 U.S.C. § 103(a). Likewise, we sustain the rejection of
claims 17 and 18 under 35 U.S.C. § 103(a).
Sixth through Eighth Grounds of Rejection
Appellants do not contest the grounds of rejection based on
obviousness-type double patenting, and state that they "will consider filing
appropriate terminal disclaimer( s) if/when the current claims are otherwise
indicated as being in condition for allowance." Appeal Br. 14. As
Appellants have chosen not to contest these grounds of rejection, we
summarily sustain the sixth through eighth grounds of rejection of claims 1-
12 and 14-20 as unpatentable on the basis of obviousness-type double
patenting.
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DECISION
The decision of the Examiner rejecting claims 1-12 and 14-20 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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