Don T. Mak et al.

Patent Trials and Appeals Board

Jan 24, 2020

12984191 - (D) (P.T.A.B. Jan. 24, 2020)

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.
12/984,191 01/04/2011 Don T. MAK END920100155US1 1831
46583 7590 01/24/2020
Roberts Mlotkowski Safran Cole & Calderon, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
EXAMINER
NGUYEN, THUY-VI THI
ART UNIT PAPER NUMBER
3664
NOTIFICATION DATE DELIVERY MODE
01/24/2020 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):
docketing@rmsc2.com
lgallaugher@rmsc2.com
secretaries@rmsc2.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DON T. MAK, KEVIN M. MONAGLE, SRI RAMANATHAN,
JEAN-GAEL F. REBOUL, MATTHEW A. TERRY, and
MATTHEW B. TREVATHAN
Appeal 2018-005932
Application 12/984,191
Technology Center 3600
Before CAROLYN D. THOMAS, HUNG H. BUI, and SCOTT RAEVSKY,
Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 23, 24, and 30–36. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as International
Business Machines Corporation. Appeal Br. 2.
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Application 12/984,191

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CLAIMED SUBJECT MATTER
The claims relate to a system and method for managing events in a
smart grid. See Spec., Abstract. Claim 23, reproduced below, is illustrative
of the claimed subject matter:
23. A method of managing electrical consumption,
comprising:
providing a computer infrastructure, being operable to:
send, by a smart meter of a subscriber, a Session
Initiation Protocol (SIP) register message to a remote register in
a network;
monitor, by the smart meter, electrical consumption and
potential critical electrical events of at least one electrical
device connected to the smart meter;
record, by the smart meter, the electrical consumption
and a critical electrical event of the at least one electrical device
at a client specified location, wherein the critical electrical
event comprises at least one of a malfunction, a problem, and
an electrical fault with the at least one electrical device;
send, by the smart meter, a SIP notify message
comprising presence information of the critical electrical event
of the at least one electrical device at the client specified
location, to a remote presence server in the network, wherein
the presence server is configured to store presence information
of the smart meter and a subscriber device of the subscriber;
receive, by the smart meter, from a remote watcher
device in communication with the presence server, at least one
rule set by the subscriber wherein the at least one rule
comprises at least one action to take in response to the critical
electrical event; and
perform, by the smart meter, the at least one action to
take in response to the critical electrical event to initiate
changes to the at least one electrical device.
REJECTIONS
Claims 23, 24, and 30–36 stand rejected under 35 U.S.C. § 112 (pre-
AIA), second paragraph, as being indefinite. Final Act. 2.
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Claims 23 and 30–36 stand rejected under pre-AIA 35 U.S.C § 103(a)
over Nacke (US 8,340,832 B1, Dec. 25, 2012), Batterberry (US
2010/0138363 A1, June 3, 2010), and Yamamoto (US 2009/0015711 A1,
Jan. 15, 2009). Id. at 3 –4.
Claim 24 stands rejected under pre–AIA 35 U.S.C. § 103(a) as being
unpatentable over Nacke, Batterberry, Yamamoto, and Tu (US
2008/0270542 A1, Oct. 30, 2008). Id. at 9.
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
ANALYSIS
Rejection under § 112
In the Final Action, the Examiner finds the following limitation of
claim 23 (and a similar limitation in claim 33) indefinite: “perform[,] by the
smart meter, the at least one action to take in response to the critical
electrical event to initiate changes to the at least one electrical device.”
Final Act. 2. The Examiner finds this limitation “unclear because it is
inconsistent with Applicant’s specification.” Id. The Examiner points to the
Specification’s teaching of “send[ing] a rule comprising at least one action
to take in response to the monitored state of the at least one electrical device,
to the smart meter” and finds “this does not [mean] that the smart meter
actual[ly] performs some action as required by the claim.” Id. at 2–3 (citing
Spec. ¶¶ 3–7, 57).
Appellant contends, “the Examiner appears to be arguing that the
claim phrase at issue is not supported by the specification, which is not an
argument applicable to a § 112 indefiniteness rejection.” Appeal Br. 5. In
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Application 12/984,191

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any event, Appellant contends, “[o]ne of ordinary skill in the art would
understand that the smart meter actually performs an action to take.” Id.
Appellant points to the following portions of the Specification as support:
For example, the subscriber (user) device 210 can send
notifications to the utility manager 105 regarding the managing
of electrical consumption in a house or other location, via the
use of the smart meter 205. Illustratively, through SIP
messaging, the subscriber (e.g., user) 210 can instruct the utility
manger 105 to turn off an appliance, e.g., air conditioner, using
the logic of the smart meter 205.

At step S445, the watcher 340 may send the rule indicating the
actions to take to the smart meter 205 or may perform (initiate)
actions necessary to make changes in the smart grid, such as
control the smart meter 205.

In another example, the subscriber can react to a notification
“in-band,” e.g., send an SIP message via a smartphone to his or
her smart meter at home to decrease a thermostat temperature.
Id. at 5–6 (quoting Spec. ¶¶ 30, 57, 48) (certain emphasis added).
The Examiner responds, “Applicant’s specification does not describe
structure with the smart meter that would have accomplished ‘the smart
meter performs action’ as recited by the claim.” Ans. 12. The Examiner
also finds that paragraph 48 of the Specification (quoted above) “does not
require that the smart meter necessarily or inherently perform[] actions.” Id.
Yet the Examiner also states the rejection “is not [an] attempt to introduce
112 first paragraph as Appellant assert[s].” Id.
We disagree. The Examiner’s rejection is plainly a rejection under
§ 112, first paragraph, “under the guise of a [§] 112, second paragraph
rejection.” See Reply Br. 2. Regardless, Appellant’s citations to the
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Specification persuade us that the Specification supports the disputed claim
language. See Appeal Br. 5 (quoting Spec. ¶¶ 30, 57, 48).
Therefore, we do not sustain the Examiner’s § 112 rejection.

Rejections under § 103(a)
Appellant contends the combination of Nacke, Batterberry, and
Yamamoto fails to teach or suggest “wherein the critical electrical event
comprises at least one of a malfunction, a problem, and an electrical fault
with the at least one electrical device,” as recited in claim 23. See Appeal
Br. 13.
Appellant contends that neither Nacke nor Batterberry teach
determining any problem with an electrical device connected to a smart
meter. Id. at 14. Rather, Appellant contends, “Batterberry teaches
optimizing energy consumption based on pricing information.” Id.
Appellant also contends that Batterberry’s price report module 245, which
sends the pricing information, “is not a smart meter and would not inherently
have knowledge of some critical event of a remote electrical device, and
therefore, the pricing information coming from the price report module 245
would not inherently include some critical event.” Id. (internal citation
omitted). Batterberry, Appellant contends, “is concerned with balancing
energy supplies using energy prices,” not “with any critical electrical events
of an electrical device at a client specified location (e.g., air conditioner).”
Id.
In response, the Examiner takes the position that “the pricing signal
would . . . inherently include some critical event compris[ing] at least a
problem in order to trigger the smart meter [to] perform the turning off
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(action) for the device.” Ans. 18. The Examiner also finds, “there is no
restriction on what type of a problem and since ‘a problem’ is broad as being
recited, therefore the problem could also be the cost of electricity as shown
in Batterberry as [t]he Examiner indicated above.” Id.
In the Reply, Appellant argues, “the pricing signal indicated by the
Examiner in Nacke is a signal that is sent to the smart meter 240 of
Batterberry, it is not a signal from the smart meter 240 and does not concern
‘a critical electrical event’ recorded by the smart meter 240.” Reply Br. 6.
Appellant also contends, “the Examiner’s assertion that the smart meter
would capture data indicating a problem of the device is mere speculation,
and inconsistent with the teachings in Batterberry.” Id. at 7. Further,
Appellant disagrees with the Examiner’s finding of inherency, contending,
“it would not be reasonable to interpret ‘the cost of electricity’ as ‘a critical
electrical event of the at least one electrical device at a client specified
location’ wherein the critical electrical event comprises ‘a problem . . . with
the at least one electrical device.” Id. at 8; see also Appeal Br. 13–14
(contesting Examiner’s similar inherency findings in the Final Action).
We agree with Appellant. In general, a limitation is inherent if it is
the “‘natural result flowing from’ the explicit disclosure of the prior art.”
Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1379 (Fed. Cir. 2003)
(citation omitted). “Inherency . . . may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” MEHL/Biophile Int’l Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999) (quoting In re Oelrich, 666 F.2d 578,
581 (CCPA 1981)). The Examiner incorrectly finds inherency here, as the
claimed “critical electrical event” is not the natural result flowing from
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Batterberry’s disclosure of a “pricing signal.” To the contrary, Batterberry’s
“real-time pricing” is “determined . . . based on energy usage forecasts . . .
us[ing] a probabilistic or statistical model to evaluate the behavior of one or
more groups of energy consumers 210 over time,” not based on a “critical
electrical event” as claimed. Batterberry ¶ 33.
We also agree with Appellant that “the Examiner’s assertion that the
smart meter would capture data indicating a problem of the device is mere
speculation, and inconsistent with the teachings in Batterberry.” See Ans.
18; Reply Br. 7. Further, we agree with Appellant that “it would not be
reasonable to interpret ‘the cost of electricity’ as ‘a critical electrical event of
the at least one electrical device at a client specified location’ wherein the
critical electrical event comprises ‘a problem . . . with the at least one
electrical device.” Reply Br. 8.
We note the Examiner has not relied on any of the other cited
references to teach this element. Accordingly, we do not sustain the
Examiner’s rejection of claim 23 and its corresponding dependent claims.
Independent claim 33 recites identical language to the above-quoted
limitation of claim 23. Accordingly, we also do not sustain the Examiner’s
rejection of claim 33 and its corresponding dependent claims.
We do not reach Appellant’s further allegations of error because we
find the issue discussed above to be dispositive of the rejection of all the
pending claims.
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CONCLUSION
In summary,
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
23, 24, 30–36 112 ¶ 2 Indefiniteness 23, 24, 30–36
23, 30–36 103(a) Nacke, Batterberry,
Yamamoto
23, 30–36
24 103(a) Nacke, Batterberry,
Yamamoto, Tu
24
Overall
Outcome:
23, 24, 30–36
REVERSED