Ex Parte 7,243,004 B2 et al

Patent Trial and Appeal Board

Oct 31, 2016

95002304 (P.T.A.B. Oct. 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.
95/002,304 09/14/2012 7,243,004 B2 074908.0116 8724
26111 7590 11/01/2016
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
GAGLIARDI, ALBERT J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/01/2016 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.
Requester

v.

CARRIER CORPORATION
Patent Owner
____________________

Appeal 2016-006650
Reexamination Control 95/002,304
Patent US 7,243,004 B21
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

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1–
92. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 Issued to Shah et al. on July 10, 2007 (hereinafter the ’004 patent).
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CLAIMED SUBJECT MATTER
The claims are directed to “a heating, ventilation and air conditioning
system wherein the various units report to a central control about
characteristics of the units.” Spec. col. 1, ll. 7-9. Claim 6, reproduced
below, is illustrative of the claimed subject matter:
6. An HVAC system comprising:
an indoor unit having a control operable to communicate
characteristic information of said indoor unit to a central control,
an outdoor unit having a control operable to communicate
characteristic information of said outdoor unit to said central
control; and
said central control communicating with said indoor unit
and said outdoor unit, and said central control receiving said
characteristic information from said indoor unit and said outdoor
unit, and determining an optimal control strategy for said indoor
unit and said outdoor unit based upon said reported characteristic
information, said central control storing a plurality of optimal
control strategies, and selecting a particular one of said optimal
control strategies to utilize based upon the particular
characteristic information reported from said indoor unit and said
outdoor unit; and
wherein said indoor unit is one of a furnace and a
heater/fan combination, and said outdoor unit is one of an air
conditioner and a heat pump.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Heckenbach
Rein
Bahel
Baldwin
Wada
US 4,616,325
US 5,390,206
US 5,475,986
US 5,971,597
US 6,126,080
Oct. 7, 1986
Feb. 14, 1995
Dec. 19, 1995
Oct. 26, 1999
Oct. 3, 2000
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Hoog
Lentz
Wada
Dolan
Amundson
US 6,385,510
US 6,438,971
US 6,453,689
US 6,535,138
US 7,225,054
May 7, 2002
Aug. 27, 2002
Sept. 24, 2002
Mar. 18, 2003
May 29, 2007
Moroney
Yoon
US 2002/0082884 A1
US 2004/0204793 A1
June 27, 2002
Oct. 14, 2004

REJECTIONS
Claims 21,2 25–29, 31, 32, 34–39, 41–43, 46, 50–52, 54, 55, 60, 63–
67, 69, 70, and 73–92 stand rejected under 35 U.S.C. § 112 first paragraph
as failing to comply with the written description. RAN 14.
Claim 73–92 stands rejected under 35 U.S.C. § 314 as enlarging the
scope of the claims of the patent under reexamination. RAN 17.3
Ground 1: Claims 1, 2, 4, 6, 13, and 16–18 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Matsumoto. Id.4
Ground 2: Claims 1–4, 6–8, 13, and 16–18 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Matsumoto and Bahel. RAN 24.

2 The Examiner lists claim 22 as rejected, but provides no explanation as to
why this claim was rejected. RAN 14.
3 The Patent Owner cancelled claims 73-92, which obviates this rejection as
well as Rejections 1a and 7a, which pertain only to claim 73.
4 The Examiner also rejects claims 20–92 as anticipated or unpatentable over
Matsumoto, either alone or in combination with a number of other
references. RAN 5–8. The Patent Owner states that these grounds (1b–1p
and 4) stand or fall with Ground 1. PO App. Br. 5.
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Ground 3: Claims 1, 2, 6, 9, 15, and 17–19 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Matsumoto and Ishizaki. RAN
29.5
Ground 7: Claims 1–4, 6–8, 13, and 16–18 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Bahel and HVAC Handbook.
RAN 36.6
OPINION
Matsumoto
The Examiner relies on Matsumoto in whole or in part for each of
Grounds 1–6. In that regard, the Requester and the Examiner assert, among
other things, that Matsumoto teaches the claimed central control. RAN 18,
Req. Resp. Br. 4. Dr. Auslander states that Matsumoto’s “central controller
controls the entire system, and for each interior unit in that system, the
central controller performs the operations in the flow chart of Figure 3.”
Auslander Dec. ¶ 45. Based upon this statement, both the Examiner and the
Requester assert that Matsumoto’s central control performs the operations in
Figure 3, and thus “[f]or each interior unit (and corresponding exterior
unit(s)), the central controller decides whether those units are capable of
simultaneous and/or automatic heating and cooling.” Req. Resp. Br. 4.

5 The Examiner also rejects claims 10–12 as unpatentable over Matsumoto
in combination with Ishizaki and either of Narishima and Rein. RAN 8.
The Patent Owner states that these grounds (5 and 6) stand or fall with
Ground 3. PO App. Br. 6.
6 The Examiner also rejects claims 20–92 as unpatentable over Bahel and
HVAC Handbook as the primary references in combination with numerous
other references. RAN 9–12. The Patent Owner states that these grounds
(7b–7n and 8–11) stand or fall with Ground 7. PO App. Br. 6.
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This, however, is a misreading of Matsumoto and a fatal defect of the
rejection. Matsumoto explains the context for the operation of the system
under the heading “Problems that the invention is to solve.” Mastsumoto ¶
5. Matsumoto explains that the problem is solved by “providing an air
conditioner with a good installation process in which, upon a start-up of the
air conditioner or a restart after a reset, information regarding the exterior
unit is sent from the exterior unit to the connected interior units, which
switch their operational control automatically.” Matsumoto ¶ 6 (emphasis
added). This set up is in contrast to prior art systems where “the setting
switch [DIP switch or the like] must be set to accord with the type of the
configured system when installing the air-conditioning system.” Matsumoto
¶ 4. In other words, the purpose of Matsumoto is to eliminate physical
setting of DIP switches at the interior unit and allows the interior and
exterior units to communicate and set their operational controls accordingly
without the use of physical switches.
As the Patent Owner points out in regard to selecting a control
strategy, “[t]he rejections are premised on equating this limitation with a
decision made in Matsumoto regarding whether ‘simultaneous heating and
cooling operation can be selected,’ but that decision is made by
Matsumoto’s interior units, not Matsumoto’s ‘central controller.’” PO App.
Br. 8. Regarding Figure 3, the Patent Owner further points out:
Matsumoto’s “central controller” does not receive any
information from the interior or exterior units until steps S7 and
S8.7 (Matsumoto ¶24.) Matsumoto’s “central controller”

7 The Patent Owner’s description of Figure 3 is not entirely complete
because Matsumoto actually states that “interior unit 3-I sends its
equipment-identification information and operational control selection
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therefore would not have any information about the units at the
time of step S6, and therefore would not be able to make a
selection as recited in the ’004 patent.
PO Rebuttal Br. 2. Matsumoto makes clear that the purpose of the
information exchange either at start up or on a reset is that “the exterior unit
sends to the connected interior units equipment-type information regarding
the exterior unit, and each interior unit automatically switches its operational
control, obviating the need for setting a switch during installation.”
Matsumoto ¶ 28. Accordingly, while similar in nature, the setting of
operational parameters based on communicated information takes place in
Matsumoto at the units themselves and not at the central control as required.
Once the interior and exterior units communicate and set their operational
parameters, then these possible operational parameters are sent for selection
by a user at either the remote or central control.
Furthermore, as the Patent Owner points out, the Requester and the
Examiner rely upon an inherency argument for the fact that the central
control of Matsumoto picks from a set of algorithms once it receives the
characteristic information from the interior and exterior units. See Resp. Br.
4, Auslander Dec. ¶ 44–46. As the Patent Owner asserts, inherency requires
“that Matsumoto’s ‘central controller’ necessarily stores and selects control
strategies” (PO Rebuttal Br. 3), but given that Matsumoto teaches that

information to remote control 5-I or central controller 7 in step 5.”
Matsumoto ¶ 23. This, however, does not affect the analysis of Matsumoto
as a whole, because as the Patent Owner correctly points out, the sent
information is not received until S7 and S8, and by that time, the control
decision of step 6 has already been performed, not at the controller, but at
the interior/exterior units.
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operational control is automatically done at the units themselves, we see no
basis to conclude that such selection occurs at the central control, necessarily
or otherwise.
Bahel
Although each of Grounds 1–6 relies upon Matsumoto for this
teaching, the Examiner and Requester also assert an alternative basis in
Ground 2 that Bahel also teaches the central control receiving the necessary
characteristic information and also performing the selection of control
algorithms as claimed. Resp. Br. 7–9. In asserting this, the Requester relies
on the teaching in Bahel relating to “self-test/configuration,” which is
labeled as element 224. Resp. Br. 7. We do not deny that Bahel includes a
box 224 in a schematic that is labeled “self-test/configuration,” but we
cannot ascribe the same function to this scant disclosure as does the
Requester. Bahel Fig. 6. The only description in Bahel for this states: “If
desired, the system may be programmed to perform self-tests and self-
configuration. This is performed by block 224.” Bahel col. 10, ll. 54–56.
The Patent Owner’s expert has stated that this self-test disclosure relates
only to tuning the vapor compression cycle. Henze Supp. Dec. ¶ 20. As the
Patent Owner also states, Dr. Auslander “admitted that nothing in Bahel,
including this specific passage, discloses auto-configuration.” App. Br. 39.
We further agree with the Patent Owner that “[e]ven if the lone phrase
‘self-configuration and self-tests’ envisioned the self-configuration concept
embodied in the ’004 patent, Bahel still does not teach the claimed
invention” because “[i]nventions are not rendered obvious by vague and
general guidance to possibly explore an entire arena or new technology.” Id.
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Simply put, we have insufficient information in Bahel to determine what is
meant by self-test and self-configuration to adequately assess whether it
teaches the claimed invention.
We also agree with the Patent Owner that the Requester
mischaracterizes the teaching in Bahel by asserting that “Bahel discloses
multiple control algorithms, but does not use all of them at once. Thus an
algorithm must be selected in Bahel.” App. Br. 41 citing Ex. 11, 12. As the
Patent Owner correctly points out, “the ‘strategies’ and ‘algorithms’ recited
in the ’004 patent refer to system-level strategies and are associated with a
certain combination of equipment,” but “are not to be confused with the
many functions of HVAC systems that Bahel loosely refers to as
‘algorithms’ or ‘routines.” App. Br. 41. We agree with the Patent Owner
that there is “no basis for concluding that the ‘non-use’ of an algorithm
would necessarily be based on characteristic information received rather
than such things as temperature observed or a user preference.” Id.
Accordingly, we are persuaded that Matsumoto is deficient as noted
above and Bahel does not cure this deficiency. Because each of Grounds 1,
2, and 4 erroneously relies upon either Matsumoto or Bahel for these
teachings, we do not sustain these rejections. Furthermore, Ground 7 relies
on Bahel for the aspects relating to the central control and self-configuration
and the HVAC Handbook does not cure these deficiencies. Accordingly, we
also do not sustain Ground 7.
Ishizaki
Regarding Ground 3, we agree with the Patent Owner that this ground
“relies on the Examiner’s same erroneous interpretation of Matsumoto
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described above, and for that reason alone cannot stand.” PO Rebuttal Br.
16. Furthermore, as stated by the Patent Owner, “Ishizaki does not teach or
suggest a ‘central control’ that uses any information collected from the
attached units to ‘select’ a ‘control strategy.’” PO Rebuttal Br. 17.
Accordingly, Ishizaki does not make up for the deficiencies stated above
with regard to Matsumoto and therefore Grounds 3, 5, and 6 are also not
sustained.
Written Description
In general, we note that the detailed description of the ’004 patent
includes only approximately two columns of disclosure. During the
Reexamination, the Patent Owner attempted to add an additional 72 claims.
Many of these claims include details about specific elements that perform
the general capabilities outlined in the patent. The Examiner and the
Requester assert that while the general nature of the functionality is
described in the ’004 patent, many of these specific details are not
sufficiently described in the Specification so as to provide adequate written
description to support the claims.
Claims 25, 34, 35, 50, 80, and 92
The Examiner asserts that each of these claims contain limitations
describing a specific auxiliary element of the system configured to send the
claimed “one or more characteristics” to the central control. RAN 14–15.
The Examiner accepts that these various devices may be part of the system,
but asserts that there is no disclosure that they perform the action of sending
information to the central control. Id.; see also Req. Comments dated April
10, 2013, 42–43. As noted above, while the ’004 patent generally discloses
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that characteristics of the indoor and outdoor units are sent to the central
control, we see nothing to support that the individual elements of these
claims may also be said to send such information. Accordingly, we sustain
the rejection of claims 25, 34, 35, 50, 80, and 92.
Claims 21, 43, and 75
The Examiner asserts that there “is no support for an outdoor unit
[that] communicates with auxiliary equipment.” RAN 15. As with the
above, we do not agree that the Specification supports the outdoor unit
communicating as claimed. We do not agree that the disclosure that a
reporting unit “may carry information from various accessing units to report
to microprocessor 23” necessarily means that the specifics of the claimed
“characteristics” is what is communicated as claimed. PO Comments to
ACP dated June 16, 2014, p. 23. Accordingly, we sustain this rejection.
Claims 26, 36, 51, 63, and 82
The Examiner asserts that the Specification’s disclosure of
information being programmed “into each unit’s microprocessor” is
insufficient to support the claimed programming of information “onto the
indoor and outdoor units at [the] time of manufacture.” RAN 15. While the
Patent Owner may have chosen language that is not identical to the
Specification, we do not agree that this arises to the level of lack of written
description. Whether it is programmed “into each unit’s microprocessor” or
“onto the unit” is not significantly different so as to warrant rejection.
Accordingly, we do not sustain this rejection.
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Claims 27, 28, 37, 38, 64, 65, 66, 83, and 84
The Examiner asserts that there is a difference between
“programming” and “setting” and so the Specification does not teach the
claimed “programming” by way of disclosing “setting” the devices by
means of switches, jumpers, or model plugs. RAN 15–16. Again, whether
setting or programming, the Specification make clear that these devices
receive information by way of switches, jumpers, or model plugs. We see
no basis to reject the claims for merely using the word “programming” over
the disclosed “setting” and agree with the Patent Owner that one of ordinary
skill in the art would appreciate that the Patent Owner was in possession of
the claimed invention. As such we do not sustain this rejection.
Claims 29, 39, 52, 67, and 85
The Examiner again makes a distinction between “microprocessors,
and electronic control” as not supporting “‘programming information onto’
the unit.” RAN 16. Again, we do not see that the mere use of different
terms and stating that information is programmed onto the unit rather than
the microprocessor supports a rejection for lack of written description. We
do not sustain this rejection.
Claims 31, 41, 54, 69, and 87
The Examiner asserts that the claimed “configured to display an
indication that said characteristics of the plurality of HVAC units were
received properly” is not supported by the disclosure that the “display would
merely indicate that the information has be[en] received from the reporting
units.” RAN 16. The Examiner asserts that it is up to the installer to ensure
proper installation. Id. We do not read the claim limitation as referring to
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the accuracy of the installation, but merely that whatever information is
received has been properly received. The Specification adequately supports
that the information regarding the reporting units is displayed, which means
the information was “received properly” as claimed. We do not sustain this
rejection.
Claims 32, 42, 55, 70, and 88
Similar to the rejection of claim 31 above, the Examiner asserts that
this claim group is improper because “it is up to the installer to ensure
proper installation and that the information has been properly reported.”
RAN 16. We agree with the Patent Owner, however, “[i]f the installer can
use this displayed information to determine proper receipt and installation,
then the information displayed is ‘an indication’ of such.” PO Comments to
ACP dated June 16, 2014, p. 21. Accordingly, we do not sustain this
rejection.
Claims 73–92
Having already summarily sustained the broadening rejection of these
claims, we need not reach the written description rejection as to these
claims.

DECISION
The Examiner’s art-based rejections of claims 1–72 are REVERSED.
The Examiner’s written description rejection of claims 26–29, 31, 32, 36–
39, 41–43, 46, 51, 52, 54, 55, 60, 65–67, 69, 70, 82–85, 87, and 88 is
REVERSED. The Examiner’s written description rejection of claims 21, 25,
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34, 35, 43, 50, 75, 80, and 92 is AFFIRMED. The Examiner’s broadening
rejection of claims 73–92 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)(1)(iv).

AFFIRMED-IN-PART

PATENT OWNER:

STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005

THIRD PARTY REQUESTER:

BAKER BOTTS L.L.P.
910 LOUISIANA STREET
HOUSTON, TX 77002