Ex Parte Chambers et al

Patent Trial and Appeal Board

Dec 31, 2018

12126556 (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/126,556 05/23/2008
29150 7590 01/03/2019
LEE & HA YES, P.C.
601 W. RIVERSIDE A VENUE
SUITE 1400
SPOKANE, WA 99201
FIRST NAMED INVENTOR
Gregory L. Chambers
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.
IQI-0047US 6674
EXAMINER
EVANS, KIMBERLYL
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
01/03/2019 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):
lhpto@leehayes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY L. CHAMBERS and KENNETH D. VAN METER
Appeal2017-000222 1
Application 12/126,5562
Technology Center 3600
Before JOSEPH A. FISCHETTI, BRADLEY B. BAY AT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 2, 5-10, 12-16, 20, and22-31, which are all the
pending claims in the application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 Our Decision references the Appellants' Appeal Brief ("Appeal Br.," filed
Jan. 14, 2016), Reply Brief ("Reply Br.," filed Oct. 3, 2016), the Examiner's
Answer ("Ans.," mailed Aug. 11, 2016) and the Final Office Action ("Final
Act.," mailed Aug. 27, 2015).
2 The Appellants identify "Ecova, Inc." as the real party in interest (Appeal
Br. 3); "Wells Fargo Bank, National Association" is the assignee recorded
(Aug. 1, 2012) with the US PTO as per reel/frame number 028700/0311.
Appeal2017-000222
Application 12/126,556
STATEMENT OF THE CASE
Claimed Subject Matter
Process claim 1 and system claims 8 and 15 are the independent
claims on appeal. Claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A computer-implemented method, comprising:
providing a graphical user interface via a display device, the graphical
user interface being operative to display a plurality of selections, a first of
the selections being associated with a first business rule, a second of the
selections being associated with a second business rule;
automatically monitoring:
an environmental parameter of a first environment; and
at least one operational parameter of equipment
associated with the first environment, the operational
parameter being based at least in part on energy consumption
of the equipment;
receiving, via a communication network, information corresponding
to a user selection at the user interface, the user selection corresponding to
the first business rule;
automatically determining operating settings for the equipment, via
computer processor-executed instructions, based at least in part on, the
information received and the at least one operational parameter, the
equipment being operative to alter the environmental parameter; and
automatically instructing, via the communication network, the
equipment to implement the first business rule by operating at the settings
being determined;
wherein, responsive to receiving the information corresponding to a
user selection corresponding to the second business rule, the equipment is
automatically instructed, via the communication network, to alter the
operating settings to implement the second business rule.
Appeal Br. 45, Claims App.
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Application 12/126,556
Rejections
Claims 1, 2, 5-10, 12-16, 20, and 22-31 are rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter. Final Act. 16-19.
Claims 1, 2, 5-10, 12-16, 20, and 22-31 are rejected under 35 U.S.C.
§ I02(b) as being anticipated by Ehlers et al. (US 2004/0133314 Al, pub.
July 8, 2004) ("Ehlers"). Id. at 19-48.
ANALYSIS
Subject Matter Eligibility
Appellants' invention "enable[s] a client to ensure performance of
assets, critical business equipment, and systems to reduce the total cost of
energy by reducing energy usage, optimizing energy demand, optimizing
energy performance[,] optimization [ of] systems and energy using asset
efficiencies, and reducing maintenance service costs, prolonging the useful
life of assets, and enhancing reliability of business operations." Spec. ,r 22.
Specifically, the invention "allows a client to regulate energy usage, asset
repair and replacement, and equipment maintenance to reduce operating
costs, via a connection to an organization's Energy Management System
(EMS) or Building Management System (BMS) using a virtual audit tool
and/or other diagnostic routines." Id. For example, a control system is
configured to communicate data to and from one or more assets, such as an
air-conditioning unit, a heater unit, security system, associated with an
environment, which allows for more efficient utilization of assets within the
environment. Id. ,r 29.
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
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Application 12/126,556
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014) (internal quotation marks and
citation omitted).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Incorporated, 566 U.S. 66, 82-84 (2012), "for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice,
134 S. Ct. at 2355. The first step in that analysis is to "determine whether
the claims at issue are directed to one of those patent-ineligible concepts."
Id. If the claims are not directed to a patent-ineligible concept, e.g., to an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered "individually
and 'as an ordered combination'" to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Id. (quoting Mayo, 566 U.S. 66, 78-79).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. The Federal Circuit has instructed
that claims are to be considered in their entirety to determine "whether their
character as a whole is directed to excluded subject matter." McRO, Inc. v.
Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016)
(quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015)).
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Application 12/126,556
Under step one of the Alice framework, the Examiner determines the
claims recite the steps of: (1) providing a graphical user interface, (2)
displaying a plurality of selections, (3) automatically monitoring an
environmental parameter and at least an operational parameter, ( 4) receiving
information via a user selection corresponding to the first business rule, ( 5)
automatically determining operating settings for the equipment, ( 6)
automatically instructing the equipment to implement the first business rule,
(7) receiving information corresponding to the second business rule, and (8)
automatically instructing the equipment to alter the operating settings to
implement the second business rule via the communication network, "which
is considered at least a fundamental economic practice relating to the
concepts such as agreements between people in the form of contracts, legal
obligations, and business relations [buySAFEJ, and [Bilski] ( concept of
mitigating risk-hedging); the claims are also related to the concept of an idea
of itself ( collecting and comparing known information) [Classen],
comparing new and stored information and using rules to identify options
[SmartGene] and also similar to various mathematical concepts identified by
the courts [Flook]." Final Act. 16-17. Further, the Examiner determines
"the abstract notion of providing, monitoring, receiving, determining, and
instructing is merely embellished by a basic linking of this conventional
technological environment to the abstract ideas involved in a business
environment for monitoring/adjusting/regulating an environmental
parameter and/or operational equipment which is considered a fundamental
economic practice." Id. at 17, 18 ("Examiner contends that the invention
directed toward is a 'business solution' to a business problem utilizing a
computing device, rather than a technical solution to a technical problem.").
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Application 12/126,556
In response to Appellants' arguments, the Examiner additionally
determines "[ t ]he claims are directed to a method for monitoring operational
parameter( s) of equipment associated with an environment." Ans. 3.
Appellants contend "the Examiner has failed to meet her burden
in establishing patent-ineligible subject matter, and the§ 101 rejection
should be reversed." Appeal Br. 17 (citing July 2015 Update). In
particular, Appellants argue the Examiner has not provided a reasoned
rationale as to why the alleged abstract idea is any of a fundamental
economic practice, a mathematical concept, or an idea of itself. Id.
For example, the claims "do not recite a 'fundamental economic
practice long prevalent in our system of commerce' because
independent claims 1, 8, and 15 do not recite economic practices per
se .... these functions are not economic practices at all, much less
fundamental ones." Id. According to Appellants, the claims recite
"monitoring and controlling network-connected energy-consuming
assets." Id.
We are persuaded by Appellants' argument because we also do
not see how the claims as a whole are directed to a fundamental
economic practice, a mathematical concept, or a mental process. The
Examiner does not explain how, and we do see how, the claims here
parallel the financial concepts of Bilski, Alice, or buySAFE. The
Examiner has not identified any mathematical concept in the claims,
apart from pointing to the claimed business rules; but the fact that
computer implementation necessarily involves computers performing
calculations does not indicate that any given computer implementation
is necessarily directed to a mathematical concept. And, we do not see
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how the interaction between two different machines ( e.g., control
system and HVAC unit) could be performed in the human mind or
with pen and paper.
For example, the Examiner does not explain why, in view of the
express claim language read in light of the pertinent portions of the
Specification, the claimed invention would not be considered an
improvement in the functionality of the HV AC control system. The
Background of the Specification acknowledges that "many homes
and/or businesses utilize control systems including ... timers and
other scheduling mechanisms to automatically activate or deactivate
one or more assets at predetermined times and operate equipment to
defined business parameters." Spec. ,r 2. According to the
Specification, the problem with prior art control systems is their
inflexibility and ineffectiveness in accommodating for continuing
business changes to equipment operations and schedules. Id. ,r,r 2-3.
Appellants' invention allegedly improves upon known control
systems by tracking and managing parameters of individual
equipment performance and automatically monitoring an operational
parameter associated with energy consumption of the equipment (i.e.,
HV AC unit) for "entire building system optimization of multiple units
operating in tandem. Id. ,r 3. But the Examiner, without looking to
the Specification, concludes the "claim as a whole is based on
conventional technology which is a fundamental economic practice
(monitoring/adjusting/sensing based on environment conditions,
mathematical algorithms, operating parameters, and the like),
mathematical concepts (first business rule, second business rule), the
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claimed invention is directed to the abstract idea of managing the
consumption of energy and merely utilizes generic computing devices
to compare information using rules." Ans. 4. On this record, the
Examiner has not properly identified the judicial exception under step
one of Alice. Because the Examiner has not established that the
claims are directed to a patent-ineligible concept, our inquiry under
the Alice framework ends.
Accordingly, we are persuaded that the Examiner has not sufficiently
established that the claims are directed to patent-ineligible subject matter.
Therefore, we do not sustain the Examiner's rejection under 35 U.S.C.
§ 101.
Anticipation by Ehlers
Independent claim 1
"[R]ejections under 35 U.S.C. § 102 are proper only when the
claimed subject matter is identically disclosed or described in the prior art."
In re Arkley, 455 F.2d 586, 587 (1972) (emphasis and internal quotation
marks omitted)). "Thus, it is not enough that the prior art reference discloses
part of the claimed invention, which an ordinary artisan might supplement to
make the whole, or that it includes multiple, distinct teachings that the
artisan might somehow combine to achieve the claimed invention." Net
Moneyin, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
"[T]he [prior art] reference must clearly and unequivocally disclose the
claimed [invention] or direct those skilled in the art to the [invention]
without any need for picking, choosing, and combining various disclosures
not directly related to each other by the teachings of the cited reference."
Arkley, 455 F.2d at 587.
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Application 12/126,556
Appellants argue Ehlers does not disclose "automatically determining
operating settings for the equipment ... based at least in part on, the
information received and the at least one operational parameter," as called
for in claim 1. Appeal Br. 30 ( emphasis added). The Examiner maintains
that paragraphs 8 8 and 182 of Ehlers disclose this disputed limitation. Ans.
9--10.
Ehlers discloses a system 1.02 adapted to receive from a customer a
budget goal for a specified time period ( e.g., one month), which then
monitors the customer's usage and sends a notification if the budget is
exceeded during that time period. Ehlers ,r 87. Paragraph 88 of Ehlers
discloses that system 1.02 manages its operation of environmental resources
"based on user defined minimum and maximum values for comfort indices
and price of energy indices." Although we agree that Ehlers's disclosure of
user-defined minimum and maximum values properly corresponds to the
claimed user information received, we disagree that the price of energy
indices constitutes an operational parameter, as required by claim 1. Claim
1 requires the claimed "operational parameter being based at least in part on
energy consumption of the equipment" or HV AC unit, but the price of
energy indices are independent from an operation parameter associated with
energy consumption of the equipment. As such, system 1.02 fails to disclose
automatically determining operating settings for the equipment based on
both required variables. The Examiner's reliance on a separate and distinct
embodiment in paragraph 182 of Ehlers in combination with system 1.02
described in paragraph 88 cannot establish anticipation because that would
require an artisan to combine those embodiments to achieve the claimed
invention.
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Accordingly, we do not sustain the anticipation rejection of
independent claim 1 by Ehlers, including claims 2, 5-7, 22-25, 28, and 29
dependent thereon.
Independent claim 83
Appellants argue "Ehlers does not disclose the totality of claim 8 in a
single embodiment," including the limitation:
a determining component configured to determine
settings for a first asset of a first environment communicating
according to a first protocol and settings for a second asset of a
second environment communicating according to a second
protocol, the settings being based at least in part on a plurality
of monitored parameters of the first environment and the
second environment relating to environmental conditions such
that the settings enforce [a] business rule [ selected via a user
interface] from among the plurality of business rules
[ represented by the user interface].
Appeal Br. 35.
Examiner interprets the first and second load control
nodes associated its heating and air conditioning systems one
controlling the main living space, and the other controlling the
second floor bedroom space as teaching appellant's " ... first
asset of a first environment communicating according to a first
protocol and settings for a second asset of a second
environment communicating according to a second protocol
"
Ans. 14. Similarly, the Examiner relies on Figures 2E, 5F, and paragraphs
81, 82, 183, 184, and 355 of Ehlers for teaching various features of this
disputed limitation to establish anticipation. See Ans. 14--16. Even if we
3 The Examiner determines "claim elements that do not use the word
'means' (or 'step for') are presumed not to invoke 35 U.S.C. 112(±)." Final
Act. 16.
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accept the Examiner's position that these claimed features are disclosed in
the various embodiments of Ehlers, we agree with Appellants that
Ehlers does not disclose a single embodiment in which a
component determines settings based on readings from an
indoor thermostat, a humidity sensor, or other sensors to
enforce an economic profile, a mode, or a program, or an
individual component configured to determine settings for
assets according to a protocol by which an asset communicates,
as claim 8 describes.
Reply Br. 18.
Accordingly, we do not sustain the anticipation rejection of
independent claim 8 by Ehlers, including claims 9, 10, 12-14, 26, 27, and 30
dependent thereon.
Independent claim 15
In contesting the anticipation rejection of independent claim 15,
Appellants argue "Ehlers does not disclose ... means for sending a signal to
the plurality of assets to implement the selected business rule such that
the first asset and the second asset operate to implement the selected
business rule within the building and the other than within the building,
respectively." Reply Br. 19.
The Examiner contends, and we agree, that the "means" recitation in
claim 15 is a means-plus-function limitation. See Final Act. 15. Appellants
do not dispute this interpretation. Accordingly, this contested limitation of
claim 15 is properly constnied in accordance with 35 U.S.C. § 112, sixth
paragraph. A means-plus-function limitation is met by the corresponding
structure disclosed in the specification or an equivalent thereof In re
Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en bane) (quoting 35
U.S.C. § 112, sixth paragraph (1988)). "Corresponding structure" is
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structure disclosed in the Specification that is clearly linked or associated
with the function recited in the claim. B. Braun Med., Inc. v. Abbott Labs.,
124 F.3d 1419, 1424 (Fed. Cir. 1997).
However, in rejecting the claim, the Examiner fails to identify the
corresponding structure disclosed in Appellants' Specification that is linked
with the function of "sending a signal to the plurality of assets" as recited in
the claim. The contested limitation of claim 15, written in means-plus-
function format, covers the corresponding structure of Appellants'
Specification and equivalents thereof. The Examiner does not explain, for
example, how Ehlers' utility control system (Ans. 18) are the same as or
equivalent to the corresponding structure of Appellants' Specification. In
light of this, a prima facie case of anticipation has not been established.
Thus, we reverse the rejection of independent claim 15, and dependent
claims 16, 20, and 31, as being anticipated by Ehlers.
DECISION
The rejection under 35 U.S.C. § 101 is reversed.
The rejection under 35 U.S.C. § 102(b) is reversed.
REVERSED
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