Ex Parte Frader-Thompson et al

Patent Trial and Appeal Board

Jun 29, 2018

12946011 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/946,011 11/15/2010
23623 7590 07/03/2018
AMIN, TUROCY & WATSON, LLP
127 Public Square
57th Floor, Key Tower
CLEVELAND, OH 44114
FIRST NAMED INVENTOR
Seth Prader-Thompson
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.
EHUBPlOlUS 9053
EXAMINER
BORISSOV, IGOR N
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
hmckee@thepatentattomeys.com
rveri@thepatentattomeys.com
docket@thepatentattomeys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SETH PRADER-THOMPSON, THOMAS
KENNEDY, ANDREW MARTIN, DANIEL RIEGEL, and
STEPHAN VON MUEHLEN
Appeal2017-010096
Application 12/946,011
Technology Center 3600
Before BENJAMIN D. M. WOOD, BRETT C. MARTIN, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-010096
Application 12/946,011
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-22 and 34--47. Claims 23-33 were cancelled during
prosecution. See App. Br. 25. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants' claims are directed generally "to management of
resources or utility service consumption and more specifically to a
communications architecture for managing consumption endpoints." Spec.
i-f 2. Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A system that manages resource consumption,
compnsmg:
a processor that facilitates execution of instructions stored
by a memory;
a first communications component configured to
communicatively couple to a command server device associated
with a resource provider entity that provides a resource at a
premises or a predefined portion of the premises, wherein the
command server device transmits a first message comprising a
first instruction that instructs a consumption endpoint to perform
a first defined operation, and wherein the consumption endpoint
supports changing operation in response to a direct load control
message received from the command server device of the
resource provider entity;
a second communications component configured to
communicatively couple to a set of consumption endpoints,
comprising the consumption endpoint, that facilitate local
consumption of the resource at the premises or the predefined
portion of the premises; and
a proxy component that
facilitates interception of the first message,
determines a modification to the first instruction
based on the first message and policy data relating to the
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Application 12/946,011
premises or the predefined portion, wherein the
modification comprises a second instruction that instructs
the consumption endpoint to perform a second defined
operation that is not the first defined operation, and
forwards a second message comprising the first
message and the modification to the consumption endpoint
to control the operation of the consumption endpoint based
on the modification, wherein the second message imitates
the direct load control message from the command server
device.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Roos
Sharood
Tessier
US 7,486,782 Bl Feb. 3, 2009
US 2002/0022991 Al Feb. 21, 2002
US 2005/0194456 Al Sep. 8, 2005
REJECTIONS
The Examiner made the following rejections:
Claims 1-22 and 34--47 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Ans. 3.
Claims 1-22 and 34--47 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Id.
Claims 1-22, 34--36 and 44--47 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Sharood, Roos, and Tessier. Id.
Claims 37, 39, and 41--43 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tessier. Id.
Claims 38 and 40 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tessier and Sharood. Id.
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Application 12/946,011
ANALYSIS
Indefiniteness and Written Description
The Examiner bases both of these rejections on a supposed lack of
explanation and understanding of the term "imitate" as used in the claims.
According to the Examiner in relation to written description, "the
specification does not provide any disclosure of how the second message
[has] to be generated in order to imitate the first message." Final Act. 4.
The Examiner likewise bases the indefiniteness rejection on this same lack
of understanding of the term "imitate." See Final Act. 5---6.
Turning first to explicit support in the Specification, we agree with
Appellants that "[p ]aragraph [0062] of appellant's specification gives
express support." Reply Br. 2 ("Yet, by pairing with (see for Example
FIGS. 19C and 20A) and potentially imitating both smart resource metering
device 106 and individual consumption endpoints 114, hub 102 can operate
as an additional layer of logic and control." (emphasis added)). Appellants
next point out that the Examiner utilizes an inappropriate standard for
determining written description. See Reply Br. 2-3 (quoting the Examiner's
analysis asserting that "[t]he specification does not provide examples of
techniques that may be used to perform said 'imitating'" (quoting Ans. 4--
5)). We agree that this "analysis is specifically directed to means-plus-
function claims" and is therefore improper when applied to claims that do
not utilize means- or step-for claim language. Id. at 3.
It is clear to us from reading the Specification that as used, "imitating"
means that the proxy formats the second message in a manner similar to the
first message so that it is understood by the endpoint in the same way the
first message would be understood. In other words, the endpoint is capable
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of performing whatever instructions are necessary regardless of whether the
instructions are sent from the resource provider or from the proxy
component. Accordingly, we find that there is both written description
support and that the term is not indefinite. As such, we do not sustain the
Examiner's§ 112 rejections.
Obviousness
The Examiner bases all of the rejections in one form or another over
Tessier alone or in combination with one or more of Sharood and Roos.
With respect to claims 1-22, 34--36, and 44--47, Appellants argue that
the cited references do not disclose the claimed first message, the claimed
second message, and/or the claimed first instruction. App. Br. 13-17.
Appellants also argue that the cited references do not disclose "the
consumption endpoint supports changing operation in response to a direct
load control message received from the command server device of the
resource provider entity" or "a proxy component that facilitates interception
of the first message." Id. at 17-19. Appellants' arguments are not
persuasive at least because Tessier teaches these limitations.
Appellants argue that "Tessier discloses at [0046] a utility company
that sends a 'call for reduced consumption' to a gateway that forwards the
'call for reduced consumption' to thermostats 5 21-5 61." App. Br. 15. The
thermostats then "respond by 'changing temperature set points' for HV AC
equipment, etc." Id. Because of this forwarding, Appellants assert that
Tessier fails to modify the instruction so as to meet the second message
limitation. While it is true that Tessier, in one embodiment, forwards the
message unchanged, Tessier also discloses an alternative whereby the
gateway receives and stores instructions from the thermostat and utilizes
those instructions to modify the utility instruction based upon user
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preferences. In that alternative, if the gateway contains stored instructions
that require modification of the utility instruction, the gateway performs the
modification and then sends the modified instructions on to the thermostat.
See Ans. 8-9 (citing Tessier i-f 47).
Appellants' Specification makes clear that a thermostat can be the
claimed endpoint (see, e.g., Spec. i-f 17). As such, we agree with the
Examiner that Tessier's disclosure of the gateway modifying the instruction
before sending it on to the thermostat meets the utility
company/proxy/endpoint configuration of the claims with the gateway
operating as the proxy and the thermostat as the end point. As is clear from
Tessier, and noted above, the gateway can act as a pass-through or it can
intercept and modify, so the instruction sent from the utility is the same type
of instruction that can either go directly to the endpoint or the gateway can
modify it before sending it on to the thermostat as is claimed. Appellants'
only discussion of the gateway is in the pass-through mode and Appellants'
provide no argument against the Examiner's explanation of the proxy mode
with instruction modification. Accordingly, we are not persuaded of error
with regard to the Examiner's rejection of claims 1-22, 34--36 and 44--47.
As to claim 37 and its dependent claims, Appellants rely on the same
arguments above (see App. Br. 19-20), which do not deal with the gateway
as proxy embodiment relied upon by the Examiner. Accordingly, we sustain
the rejection of claims 37, 39, and 41--43 for the same reasons as stated
above.
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DECISION
For the above reasons, we REVERSE the Examiner's decision to
reject claims 1-22 and 34--47 under 35 U.S.C. § 112 and AFFIRM the
Examiner's decision to reject claims 1-22 and 34--47 under 35 U.S.C. § 103.
AFFIRMED
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