Ex Parte Casilli et al

Patent Trial and Appeal Board

Feb 9, 2018

13890898 (P.T.A.B. Feb. 9, 2018)

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.
13/890,898 05/09/2013 Chris Casilli 2013P03141US 5623
28524 7590 02/13/2018
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
EXAMINER
HUNTLEY, MICHAEL J
Orlando, EL 32817 ART UNIT PAPER NUMBER
2121
NOTIFICATION DATE DELIVERY MODE
02/13/2018 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHIRS CASILLI, DAVID A. HINGOS, MARTIN OTTO,
SAMUEL NEGRON, and MITHUN VAIDHYANATHAN
Appeal 2017-008322
Application 13/890,8981
Technology Center 2100
Before ROBERT E. NAPPI, ERIC S. FRAHM, and JOHN D. HAMANN,
Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1 through 21.
We affirm.
INVENTION
The invention is directed to a configuration of a building automation
system controller where the system is accessed without a network
connection. Abstract and paragraphs 12 through 14 of Appellants’
1 According to Appellants, the real party in interest is Siemens Industry Inc.
App. Br. 1.
Appeal 2017-008322
Application 13/890,898
Specification. Claim 1 is illustrative of the invention and is reproduced
below:
1. A device for configuration of a mobile device for
controlling a building automation system, comprising:
a memory;
a display; and
a processor coupled to the memory executing a first
building synergistic interface system (BSIS) mobile application
for controlling a building automation system, where the first
BSIS mobile application generates a non-network dependent
code that contains data for configuration of a second BSIS
mobile application and authentication data.
REJECTIONS AT ISSUE
The Examiner provisionally rejected claims 2, 9, and 16 under non-
statutory obviousness-type double patenting over claims 1, 8, and 17 of co­
pending Application No. 13/890,898. Final Act. 4—5.2
The Examiner rejected claims 1, 2, 7 through 9, 14 through 16, and 21
under 35 U.S.C. §102 (a)(2) as anticipated by Hilbrink et al. (US 8,918,719
B2, issued Dec. 23, 2014). Final Act 8—13.
The Examiner rejected claims 3 through 6, 10 through 13, and 17
through 20 under 35 U.S.C. §103(a) as unpatentable over Hilbrink in view of
Jayaprakash et al. (US 2014/0061293 Al, published Mar. 6,2014). Final
Act. 14—20.
2 Throughout this Opinion, we refer to the Appeal Brief, filed July 25, 2016
(“App. Br.”); the Examiner’s Answer, mailed November 28, 2017
(“Answer”); the Final Office Action, mailed December 10, 2015 (“Final
Act.”); and Appellants’ Specification filed May 9, 2013
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Application 13/890,898
ANALYSIS
We have reviewed Appellants’ arguments in the Brief, the Examiner’s
rejections and the Examiner’s response to Appellants’ arguments.
Appellants’ arguments have not persuaded us of error in the Examiner’s a)
provisional double patenting rejection of claims 2, 9, and 16, b) rejection of
claims 1, 2, 7 through 9, 14 through 16, and 21 under 35 U.S.C. § 102(a)(2);
or c) rejection of claims 3 through 6, 10 through 13, and 17 through 20 under
35 U.S.C. § 103(a).
Initially, we note Appellants have not addressed the Examiner’s
provisional double patenting rejection. Thus, Appellants have not identified
an error in this rejection, and we sustain it pro-forma.
Appellants argue, on pages 8 and 9 of the Appeal Brief, that the
application on appeal is a continuation-in-part of application no. 13/218,132
(published as application US 2013/0054033) and as such should be afforded
the priority date of that application (August 25, 2011). Further, the
Appellants argue that provisional application no. 61/694,436 (filed August
29, 2012), which also is incorporated by reference into the application on
appeal, makes use of codes containing authentication data and configuration
data. Id
The Examiner determined that the claims of the application on appeal
are not entitled to the priority of Application no. 13/218,132, as that
application does not demonstrate the Appellants had possession of the
current claims when the priority application was filed. Specifically, the
Examiner finds that the recitation directed to code that contains data for
configuration of a second BSIS mobile application and authentication data is
not disclosed in the 13/218,132 application. Final Act. 10; Answer 3.
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Appeal 2017-008322
Application 13/890,898
The Examiner has provided a comprehensive response to Appellants’
arguments on pages 3 through 5 of the Answer comparing the relevant
disclosures of application no. 13/218,132 and of the Specification in the
application on appeal. 35 USC § 120 “expressly requires an earlier
application to disclose the claimed subject matter in compliance with 35
USC §112, first paragraph [35 USC §112(a)].” In Re Scheiber 587 F.2d 59,
61 (CCPA 1978). We have reviewed the specification of application no.
13/218,132, Appellants’ arguments, the Examiner’s findings, and the
Examiner’s response to Appellants’ arguments. We find that the Examiner
has shown that the disclosure of the 13/218,132 application does not
demonstrate Appellants had possession of the claimed code that contains
data for configuring a building synergistic interface mobile application and
authentication data, as recited in representative claim 1. We note that
Appellants’ arguments do not cite specific paragraphs in either application
no. 13/218,132 (from which priority is asserted) or the provisional
application no. 61/694,436. Notably, Appellants identify that support for the
disputed limitation is in Figure 14 (App. Br. 5) and paragraphs 104—105
(Appeal Br. 9—10) of the application under appeal, which portions are not
present in either the 13/218,132 application or provisional application no.
61/694,436. We note that the provisional application does discuss
authentication using a QR code key, but we do not find it contains any
discussion of using these codes for configuration of a mobile application of a
building synergistic interface system as claimed. Accordingly, we find no
error in the Examiner’s failure to grant the claims of this case the August 25,
2011, priority date of the 13/218,132 Application.
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Appeal 2017-008322
Application 13/890,898
With respect to the anticipation rejection, Appellants argue that
Hilbrink’s teaching of “device specific information that can identify the
device such as brand, type, model number, serial number” does not meet the
claimed authentication code. App. Br. 10. Specifically, Appellants argue
that the authentication data is discussed in paragraphs 104—105 of the
Application, that the plain meaning of authentication is “to provide that
something is real, tme, or genuine: to provide something is authentic,” and
that the data in Hilbrink does not meet this definition. App Br. 10 (citing
Merriam-Webster dictionary).
These arguments have not persuaded us of error. The Examiner has
provided a comprehensive response to Appellants’ arguments finding that
Hilbrink teaches using data in a QR code, containing authentication
information, to configure a device to provide direct access to an appliance
control system. Answer 5—6. We concur with the Examiner. We note that
Hilbrink teaches in Figure 6 and column 6, lines 2—12, that the QR code can
contain several pieces of information, including a serial number field. As is
commonly known, a serial number is a unique identifier. Paragraph 105 of
Appellants’ Specification identifies that authentication data may contain a
unique identifier. We further note that the act of proving that something is
real, true, or genuine are functions for using of the data that are not claimed,
rather the representative claim which merely requires that the data contains
authentication data. Thus, we find that the Examiner’s interpretation of the
data in Hilbrink containing authentication data is consistent with Appellants’
Specification and we are not persuaded of error by Appellants’ arguments.
Accordingly, we sustain the Examiner’s rejection of claim 1 and claims 2, 7
through 9, 14 through 16, and 21, which are grouped with claim 1.
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Appeal 2017-008322
Application 13/890,898
With respect to the obviousness rejection, Appellants argue:
The Hilbrink, et al. patent fails to teach or describe
authentication data being included in the code as discussed
above. Furthermore, Jayaprakash, et al. publication has a filing
date of September 4, 2012 that is well after the priority date of
August 25, 2011.
App. Br 11.
This argument has not persuaded us of error in the Examiner’s
obviousness rejection. As discussed above, we agree with the Examiner’s
determination that the claims are not entitled to the August 25, 2011, priority
date and with the Examiner’s determination that Hilbrink teaches the
claimed authentication data. Thus, Appellants have not persuaded us of
error in the Examiner’s obviousness rejection of claims 3 through 6, 10
through 13, and 17 through 20. Accordingly, we sustain the Examiner’s
rejection of claims 3 through 6, 10 through 13, and 17 through 20.
DECISION
The decision of the Examiner to reject claims 1 through 21 is
affirmed.
AFFIRMED
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