Ex Parte Doherty

Board of Patent Appeals and Interferences

Jun 25, 2009

10029928 (B.P.A.I. Jun. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES M. DOHERTY
____________

Appeal 2008-006174
Application 10/029,928
Technology Center 2400
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Decided:1 June 25, 2009
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Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
ST JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 29-43, which are all of the claims remaining in this

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Data (electronic delivery).
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application. Claims 1-28 are cancelled. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.

Invention
Appellant’s invention relates to the field of residential networks.
More specifically, the present invention relates to automated control of
residential devices using a residential gateway. (Spec. 1, ll. 3-5).

Claim 29 is illustrative:
29. A residential gateway that connects a Wide Area
Network (WAN) to an in-home network, said residential
gateway connecting at least one residential device over said in-
home network, the residential gateway;

forwarding state information of said at least one
residential device to a control server over said WAN;

forwarding economic setpoint information to said control
server over said WAN;

receiving control parameters from said control server
over said WAN, said control parameters determined by the
control server based on at least the following information:
relevant control information accessed from one or more
climatic information providing servers on said WAN, said
forwarded state information of said at least one residential
device and said forwarded economic setpoint information,

whereby said residential gateway controls said at least
one residential device based on said received control
parameters.

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Prior Art
The Examiner relies on the following references:
Mecham US 6,314,340 B1 Nov. 6, 2001
Petite US 6,437,692 B1 Aug. 20, 2002

Examiner’s Rejection
The Examiner rejected claims 29-43 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Petite and Mecham.

Claim Groupings
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 29. See 37 C.F.R. § 41.37(c)(1)(vii).

FINDINGS OF FACT
1. Petite discloses a customer workstation that periodically
downloads and reviews rain gauge data that can initiate an automatic control
signal appropriate with the customer’s watering requirements. (Col. 13, ll.
23-28).
2. Mecham discloses in the “Description of Related Art” section,
that considerable effort has been expended in developing evapotranspiration
formulas which mimic the results provided by the weather station climatic
information equations, but do not require access to such large amounts of
specific weather station collected climatic information. (Col. 2, 11-16).
3. Mecham discloses that the requested watering needs are
compared to a watering budget, with the central control unit granting
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permission to actuate the control valves only if the requested irrigation
amounts meet any imposed budget limitations. (Col. 18, ll. 55-62).
4. Appellant’s Specification does not define what is meant by
“economic setpoint.”
5. Appellant’s Specification states that “a user can configure an
economic setpoint for the control of irrigation system 207.” “This allows a
user to be able to make economic decisions that may give less than optimal
performance for his/her lawn, but may yield a lawn acceptable at a given
economic point.” (Spec. 9, ll. 8-16).
6. Mecham discloses a PC 400 which serves as a centralized
control unit with software for managing water resources and controlling and
programming the irrigation controller 10, host controller 202, and
evapotranspiration module(s) 204. (Col. 17, ll. 61-65). The controllers and
modules communicate through communications serial ports 30, 232, and
234. Mecham discloses that the controllers and modules are “networked”
together via communications link 236 where each node or element is given a
unique address. (Col. 18, ll. 4-9).

APPELLANT’S CONTENTIONS
1. Appellant contends the cited references fail to teach or suggest
the limitation of an “economic setpoint” as recited in the independent
claims. (App. Br. 8-9 and Reply Br. 1-3).
2. Appellant contends that Mecham “teaches away” from using
climatic information from a server. (App. Br. 11).
3. Appellant contends the Examiner relied on impermissible
hindsight in combining the teachings of Petite and Mecham. (Id).
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4. Appellant contends the Examiner did not provide an adequate
motivation to combine the teachings of Mecham and Petite. (App. Br. 13).

ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:
1. Has Appellant shown the Examiner erred in determining that
the cited references teach or suggest the claimed “economic setpoint?”
2. Has Appellant shown the Examiner erred in combining the
teachings of Mecham and Petite?

PRINCIPLES OF LAW
Claim Interpretation
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). During prosecution
before the USPTO, claims are to be given their broadest reasonable
interpretation, and the scope of a claim cannot be narrowed by reading
disclosed limitations into the claim. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).

Obviousness
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
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“more than the predictable use of prior art elements according to their
established functions.” Id. at 417.
Invention or discovery is the requirement which constitutes the
foundation of the right to obtain a patent . . . unless more ingenuity
and skill were required in making or applying the said improvement
than are possessed by an ordinary mechanic acquainted with the
business, there is an absence of that degree of skill and ingenuity
which constitute the essential elements of every invention.
Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v. Greenwood,
52 U.S. 248, 267 (1850)) (Hotchkiss v. Greenwood was cited with approval
by the Supreme Court in KSR, 550 U.S. at 406, 415, 427).
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006). Therefore, we look to Appellant’s Briefs to show error in
the Examiner’s proffered prima facie case.

ANALYSIS
Issue 1
As noted above, Appellant argues that the cited references, most
notably Petite, fail to teach or suggest the claimed “economic setpoint.” We
disagree for the reasons discussed infra.
We do not find that the term “economic setpoint” is specifically
defined in Appellant’s Specification. (FF 4). We further note that
Appellant’s Specification does not discuss “economic setpoint information”
in the form of some economic measure such as a monetary amount.
Accordingly, we broadly but reasonably construe the phrase “economic
setpoint” as a measure of controlling water and/or electricity usage based
upon an economic determination.
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The Examiner relied on Petite to disclose the claimed “economic
setpoint.” However, we find that Mecham, in fact, teaches actuating control
valves by comparing irrigation amounts against any imposed budget
limitations. (FF3). Thus, we find that Mecham strongly suggests using an
economic determination to control water usage, i.e., an “economic setpoint.”
Based on the record before us, we find Appellant has not shown the
Examiner erred in determining that the cited references teach or suggest an
“economic setpoint.”

Issue 2
As noted above, Appellant contends that the Examiner erred in
combining the teachings of Mecham and Petite because: (1) the Mecham
reference purportedly “teaches away” from using climatic information
obtained from servers, (2) the combination of Mecham and Petite is based on
hindsight, and, (3) there is a lack of motivation to combine the teachings of
the two cited references. (App. Br. 11-14).
Regarding Appellant’s contention that Mecham teaches away from
obtaining climatic information from servers, we adopt the Examiner’s
findings as set forth in the Examiner’s Answer. (Ans. 9-10). We note that
the cited portion of Mecham is not a total discouragement of using climatic
information from servers, but instead merely discusses the feasiblilty of
using alternative evapotranspiration formulas that do not require access to
large amounts of specific weather station collected climatic information. (FF
2).

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Further, as noted by the Examiner, Mecham discloses
evapotranspiration modules 204 which are coupled to and considered to be
part of the controller 10 (col. 9, ll. 39-42 and Fig. 1). Each of the modules is
positioned at different zones. (Col. 16, ll. 40-42).
We further find that Mecham strongly suggests a network of
controllers and modules that are linked together and given unique addresses.
(FF 6). Thus, it is our view that Mecham strongly suggests a “network”
which comprises climatic servers (modules). Thus, we disagree with
Appellant’s assertion that the evapotranspiration modules cannot be equated
to servers providing climatic information because the servers are remote and
accessible via a wide area network.
As for Appellant’s contention that the cited combination of references
is based upon hindsight, we disagree.
As pointed out by the Examiner in the Answer, “[a]ny judgment on
obviousness is in a sense necessarily a reconstruction based on hindsight
reasoning, but so long as it takes into account only knowledge which was
within the level of ordinary skill in the art at the time the claimed invention
was made and does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper.” In re McLaughlin 443 F.2d
1392, 1395 (CCPA 1971) (Ans. 10). In the present case, the Examiner has
provided a motivation to combine the references based upon the teachings of
Petite and Mecham, and the knowledge of one of ordinary skill in the art, as
follows:
Here, Petite disclosed a control sever that determined control
parameters from state information and economic setpoint
information but not information from climactic information
providing servers. Mecham improves upon Petite's irrigation
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system by providing a system with distributed climatic
information providing servers that returned temperature and
evapotranspiration information to a control server. This
information improves upon Petite's irrigation system because it
improves the efficiency for watering the specific site [see
Mecham, column 6, lines 50-56]. Thus, one of ordinary skill in
the art would have been motivated to modify Petite to
incorporate Mecham's teachings. Such a reconstruction is not
based on hindsight reasoning but based on Petite and Mecham's
teachings and the available knowledge to one of ordinary skill
in the art.
(Ans. 10-11).
“[T]he best defense against the subtle but powerful attraction of a
hindsight-based obviousness analysis is rigorous application of the
requirement for a showing of the teaching or motivation to combine prior art
references.” In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999). Here, it is
our view that the Examiner’s motivation includes knowledge which was
within the level of ordinary skill in the art at the time the invention was
made, and was not gleaned from Appellant’s disclosure.
Moreover, we find the Examiner’s proffered modification of Petite by
the teachings of Mecham would have been in accordance with what the
Supreme Court considers “common sense.”
Common sense teaches, however that familiar items may have
obvious uses beyond their primary purposes, and in many cases
a person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle.

(KSR. 550 U.S. at 420).

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For at least the aforementioned reasons, we find Appellant’s
arguments directed to the combinability of Petite and Mecham to be
unavailing.

REPLY BRIEF
We note that the Reply Brief is properly used to respond to points of
argument raised by the Examiner in the Answer and not as a means for
presenting new arguments. See Optivus Tech., Inc. v. Ion Beam Applications
S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (an issue not raised in an opening
brief is waived). While we have fully considered Appellant’s responses in
the Reply Brief, we decline to address any new arguments not originally
presented in the principal Brief.

CONCLUSIONS
Appellant has not shown the Examiner erred in determining that the
cited references teach or suggest the claimed “economic setpoint.”
Appellant has not shown the Examiner erred in combining the
teachings of Petite and Mecham.
Based on the above, we are not persuaded of error in the Examiner’s
rejection and sustain the § 103(a) rejection of representative claim 29 and
claims 30-43 which fall therewith, over Petite and Mecham.

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DECISION
The Examiner’s rejection of claims 29-43 under 35 U.S.C. §103(a) 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).

AFFIRMED

pgc

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