Johnson Controls Technology Company

Patent Trials and Appeals Board

Mar 31, 2022

2022000427 (P.T.A.B. Mar. 31, 2022)

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. 16/283,532 02/22/2019 Akib Islam 19-0003-US (116048-0679) 1096 146598 7590 03/31/2022 Foley & Lardner LLP 3000 K Street N.W. Suite 600 Washington, DC 20007-5109 EXAMINER MASINICK, MICHAEL D ART UNIT PAPER NUMBER 2117 NOTIFICATION DATE DELIVERY MODE 03/31/2022 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): ipdocketing@foley.com uspatents@jci.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AKIB ISLAM, AMANDEEP SINGH JOHAR, ANKUR THAREJA, and SACHIN YASHWANT PATE Appeal 2022-000427 Application 16/283,532 Technology Center 2100 Before JAMES R. HUGHES, JOHNNY A. KUMAR, and JOHN A. EVANS, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Claims 1-20 are pending, stand rejected, are appealed by Appellant, and are the subject of our decision under 35 U.S.C. § 134(a).1 See Final Act. 1.2 We have jurisdiction under 35 U.S.C. § 6(b). We Reverse. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Johnson Controls International plc. Appeal Br. 2. 2 We refer to Appellant’s Specification (“Spec.”), filed Feb. 22, 2019; Appeal Brief (“Appeal Br.”), filed July 16, 2021; and Reply Brief (“Reply Br.”), filed Oct. 29, 2021. We also refer to the Examiner’s Final Office Action (“Final Act.”), mailed Feb. 16, 2021; and Answer (“Ans.”) mailed Aug. 31, 2021. Appeal 2022-000427 Application 16/283,532 2 CLAIMED SUBJECT MATTER The claimed subject matter, according to Appellant, “relates generally to building management systems or building automation systems,” and “more particularly to building management systems having an energy blockchain network for energy optimization.” Spec. ¶ 1. More specifically, Appellant’s claimed subject matter is directed to computer readable media, methods, and related building management systems that are connected to an energy blockchain network. An exemplary system includes an energy load balancer that distributes energy from multiple energy suppliers to a buyer (user), e.g., a building load. The system monitors energy pricing data from the energy suppliers, calculates a balanced load payload corresponding to forecast energy demand, and receives energy from the multiple energy suppliers. The system also generates a smart contract for the balanced load payload in the energy blockchain network. See Spec. ¶¶ 5-24; Abstr. Claims 1 (directed to a system), claim 8 (directed to a method), and claim 9 (directed to a computer readable medium) are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A building management system communicably connected to an energy blockchain network to reduce energy costs of a building, the system comprising: an energy load balancer configured to distribute energy from a plurality of energy suppliers to power a load in the building; one or more processors; and memory coupled to the one or more processors and storing instructions that, when executed by the one or more processors, cause the one or more processors to: monitor energy pricing data from each of the plurality of energy suppliers; Appeal 2022-000427 Application 16/283,532 3 calculate a balanced load payload corresponding to an energy demand forecast for the building according to the energy pricing data from the plurality of energy suppliers, wherein the balanced load payload is calculated to cause the building to concurrently receive energy from two or more of the plurality of energy suppliers based on the energy pricing data; generate a smart contract corresponding to the balanced load payload in one or more blocks of the energy blockchain network, the smart contract corresponding to an agreement by the two or more energy suppliers to provide energy to power at least a portion of the balanced load payload based on the energy pricing data; and generate load balancing instructions for the energy load balancer based on the smart contract, wherein the energy load balancer is configured to switch to distribute energy concurrently from the two or more energy suppliers according to the load balancing instructions. Appeal Br. 14 (Claims App.) (emphases added). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Baraty et al. (“Baraty”) US 2009/0287736 A1 Nov. 1, 2007 Forbes, Jr. et al. (“Forbes”) US 2017/0358041 A1 Dec. 14, 2017 REJECTION3 The Examiner rejects claims 1-20 under 35 U.S.C. § 103 as being unpatentable over Forbes and Baraty. See Final Act. 3-9. 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. §103. Because the present application Appeal 2022-000427 Application 16/283,532 4 ANALYSIS The Examiner rejects independent claim 1 (as well as claims 2-20) as being obvious over Forbes and Baraty. See Final Act. 3-5; Ans. 4-6. The Examiner relies on Forbes for teaching most of the features of Appellant’s claim 1, including a smart contract between two participants and multiple suppliers for an “Advanced Energy Settlement (AES)” process. See Final Act. 3-5; Ans. 4-6 (citing Forbes ¶¶ 163, 167, 252, 262). The Examiner relies on Baraty for disclosing contracting with multiple suppliers. See Final Act. 5; Ans. 4-6 (citing Baraty ¶ 58). Appellant contends that Forbes and Baraty do not teach the disputed limitations of claim 1. See Appeal Br. 7-10; Reply Br. 2-5. Specifically, Appellant contends, inter alia, that “neither Forbes nor Baraty describe a single smart contract (or any contract) that corresponds to an agreement by two or more energy suppliers” (Reply Br. 3) because “Forbes only teaches smart contract agreements between individual energy buyers and sellers” (Appeal Br. 9), and “the cited portion of Baraty does not teach a single smart contract, or any contract, that corresponds to an agreement by two or more energy suppliers” (Appeal Br. 9). See Appeal Br. 7-10; Reply Br. 2-5. We find Appellant’s arguments persuasive of Examiner error. Claim 1 recites a system including “an energy load balancer . . . to distribute energy from a plurality of energy suppliers to power a load in the building” where the system “calculate[s] a balanced load payload corresponding to an energy demand forecast for the building” and “the balanced load payload is calculated to cause the building to concurrently receive energy from two or has an effective filing date after the AIA’s effective date (March 16, 2013), this decision refers to 35 U.S.C. § 103. Appeal 2022-000427 Application 16/283,532 5 more of the plurality of energy suppliers.” Appeal Br. 14 (Claims App.) (emphases added). The system then “generate[s] a smart contract corresponding to the balanced load payload . . . corresponding to an agreement by the two or more energy suppliers to provide energy to power at least a portion of the balanced load payload.” Appeal Br. 14 (Claims App.) (claim 1). Thus, we agree with Appellant that claim 1 requires “generating a single smart contract that corresponds to an agreement by two or more energy suppliers.” Reply Br. 3; see Appeal Br. 7-10; Reply Br. 2-5. As pointed out by Appellant (see Appeal Br. 7-10; Reply Br. 2-5), the Examiner-cited portions of Forbes and Baraty do not explicitly disclose one smart contract between multiple suppliers for energy to building load (i.e., a buyer or user). The Examiner concedes that the combination of Forbes and Baraty does not explicitly disclose or teach the disputed features, but finds that the features would have been obvious to one of ordinary skill in the art: “The examiner’s position is that multiple agreements signed by multiple energy providers for the same time period with the same energy purchaser is functionally equivalent to a single contract signed by all energy providers and the energy purchaser.” Ans. 5-6; see Ans. 4-6. We disagree with the Examiner’s position for the reasons outlined above. “A rejection based on section 103 clearly must rest on a factual basis[.]” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” Id. Here, the Examiner resorts to speculation to supply missing recited claim features. Appeal 2022-000427 Application 16/283,532 6 Consequently, we are constrained by the record before us to find that the Examiner erred in finding that the combination of Forbes and Baraty renders obvious Appellant’s claim 1. Independent claims 8 and 15 include limitations of commensurate scope. Claims 2-7, 9-14, and 16-20 depend from and stand with their respective base claims. Thus, we do not sustain the Examiner’s obviousness rejection of claims 1-20. CONCLUSION Appellant has shown that the Examiner erred in rejecting claims 1-20 as being obvious under 35 U.S.C. § 103. We, therefore, do not sustain the Examiner’s rejection of claims 1-20. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-20 103 Forbes, Baraty 1-20 REVERSED