Ex Parte HARROD et al

Patent Trial and Appeal Board

Jun 6, 2018

12342252 (P.T.A.B. Jun. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/342,252
75576 7590
Johnson Controls, Inc.
c/o Fletcher Yoder PC
P.O. Box 692289
Houston, TX 77269
12/23/2008
06/06/2018
FIRST NAMED INVENTOR
Gregory Ralph HARROD
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.
26431-0027-01 2350
EXAMINER
JOSEPH, TONY A S
ART UNIT PAPER NUMBER
3628
MAILDATE DELIVERY MODE
06/06/2018 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
Ex parte GREGORY RALPH HARROD
and JEFFREY NORRIS NICHOLS
Appeal2017-003266 1
Application 12/342,252
Technology Center 3600
Before ALLEN R. MACDONALD, ADAM J. PYONIN, and
AARON W. MOORE, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1, 2, and 5-12, which are all of the pending claims. See
App. Br. 17. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Per the Appeal Brief, "[ t ]he real parties in interest are the Inventors,
Gregory Ralph Harrod, Jeffrey Norris Nichols and the Assignee, Johnson
Controls Technology Company." App. Br. 1.
Appeal2017-003266
Application 12/342,252
STATEMENT OF THE CASE
Introduction
The Application is directed to "a method and apparatus to
dynamically determine a balance point of an HV AC [(heating ventilation
and air conditioning)] system having a heat pump and a fossil fuel furnace."
Spec. i-f 2. Claims 1 and 12 are independent. Claim 1 is reproduced below
for reference (formatting added):
1. A method for adjusting a balance point temperature by
monitoring operating costs for the furnace and the heat pump, 2
the method comprising:
providing a heating ventilation and air conditioning
(HV AC) system comprising a furnace, a heat pump and a control
system;
the HV AC system configured to operate on one of two
fuels; and
via the contro 1 system:
accessing fuel cost data;
determining an economic balance point temperature
based on the fuel cost data;
determining at least one predetermined parameter of
the heat pump at a plurality of exterior temperatures;
continually determining the at least one
predetermined parameter and incorporating the at least one
predetermined parameter into a preprogrammed algorithm
to calculate an application balance point temperature,
below which the heat pump heating capacity is less than
the rate of heat loss of structure, in response to a change in
the at least one predetermined parameter;
2 In the event of further prosecution, Appellants may wish to delete or
amend the preamble recitation of "the furnace and the heat pump," to ensure
proper antecedent basis for the claim limitations.
2
Appeal2017-003266
Application 12/342,252
determining an actual balance point temperature
compnsmg:
(i) a higher temperature value of the
application balance point temperature and the
economic balance point temperature in response to
the capacity of the heat pump being less than a
capacity required to generate sufficient heat to
maintain the desired interior temperature of
structure or
(ii) the lower temperature value of
application balance point temperature and the
economic balance point temperature in response to
the capacity of the heat pump being equal to or
greater than a capacity required to generate
sufficient heat to maintain the desired interior
temperature of structure; and
automatically updating a balance setpoint in the
preprogrammed algorithm to adjust a balance setpoint of
the HV AC system corresponding to the actual balance
point temperature, the balance setpoint being the exterior
temperature below which the HV AC system switches
from the heat pump to the furnace as a heat source.
References and Re} ections
The following is the prior art relied upon by the Examiner in rejecting
the claims on appeal:
Harrod
Schnell
Takach
Lifson
US 2005/0234597 Al Oct. 20, 2005
US 2007/0044501 Al Mar. 1, 2007
US 2008/0161977 Al July 3, 2008
US 2009/0125150 Al May 14, 2009
Claims 1, 2, and 5-12 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Ans. 3.
3
Appeal2017-003266
Application 12/342,252
Claims 1, 2, 5-8, and 10-12 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lifson, Schnell, and Harrod. Final Act. 4, 8.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lifson, Schnell, Harrod, and Takach. Final Act. 8.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments. Any arguments Appellants could have made but chose not to
make in the Briefs are deemed to be waived. See 3 7 C.F .R. §
41.37( c )(1 )(iv).
A. 35 US.C. § 101
In the Answer, the Examiner issues a new ground of rejection under
35 U.S.C. § 101, determining the claims are unpatentable because they "are
directed to the abstract idea of adjusting a balance point temperature, which
falls into the categories of (iii) an idea of itself," and the "additional claim
elements do not provide meaningful limitations to transform the abstract
idea into a patent eligible application of the abstract idea." Ans. 3--4.
Appellants argue the Examiner erred in finding the claims are directed
to non-statutory subject matter because the claims "cover an improvement
on a machine (e.g., an HV AC system) that enables the machine (e.g., the
HV AC system) to operate more efficiently," and "the claimed heat pump
and furnace do not operate in a well-understood, routine, and conventional
manner." Reply Br. 9-10 (emphases omitted).
Appellants' arguments persuade us the Examiner erred. Claim 1
recites a method of controlling an HV AC system, comprising a furnace and
4
Appeal2017-003266
Application 12/342,252
a heat pump, by continually determining a parameter and adjusting a balance
setpoint of the HV AC system. We find the claim to be patent eligible based
upon our controlling precedent, such as Diamond v. Diehr, 450 U.S. 175
(1981 ). As the Supreme Court explains:
In Diehr, ... we held that a computer-implemented process for
curing rubber was patent eligible, but not because it involved a
computer. The claim employed a "well-known" mathematical
equation, but it used that equation in a process designed to solve
a technological problem in "conventional industry practice. "
Id., at 177, 178, 101 S. Ct. 1048. The invention in Diehr used a
"thermocouple" to record constant temperature measurements
inside the rubber mold-something "the industry ha[ d] not been
able to obtain." Id., at 178, and n. 3, 101 S. Ct. 1048. The
temperature measurements were then fed into a computer, which
repeatedly recalculated the remaining cure time by using the
mathematical equation. Id., at 178-179, 101 S. Ct. 1048. These
additional steps, we recently explained, "transformed the process
into an inventive application of the formula." Mayo, supra, at-
-, 132 S. Ct., at 1299. In other words, the claims in Diehr were
patent eligible because they improved an existing technological
process, not because they were implemented on a computer.
Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2358 (2014)
(emphases added).
The present claims are comparable to those in Diehr, as the claimed
method of adjusting a balance point temperature for an HV AC system
allows the system to run more efficiently. See Reply Br. 9 ("independent
claims 1 and 12 are directed to a system and method that enhance the
efficiency of the HVAC system"); see also Spec. i-fi-15, 6, 10, 39, 53, 60, 64.
That is, the claimed method is designed to solve a technological problem in
the conventional industry practice of controlling an HV AC system. See
Alice, 134 at 2358. Accordingly, we agree with Appellants that independent
claim 1 recites statutory subject matter. See Reply Br. 8.
5
Appeal2017-003266
Application 12/342,252
We do not sustain the Examiner's 35 U.S.C. § 101 rejection of
independent claim 1, independent claim 12 which recites limitations
commensurate in scope, or the claims that depend therefrom.
B. 35 US.C. § 103
Teachings of the References
Appellants argue the Examiner erred in finding claims 1 and 12 to be
obvious in view of the prior art, because "[i]n contrast to the cited
references, the system of the present invention continually monitors various
parameters and in response to a change in one or more parameters compares
the application balance point ... and the economic balance point." App. Br.
5; see also App. Br. 12. Particularly, Appellants contend Harrod's "balance
point setting does not necessarily reflect an optimized balance between fuel
sources" because "the cost of fossil fuel and electricity changes
continuously." App. Br. 6-7; see also App. Br. 12-13. With regard to
claim 12, Appellants argue additionally Schnell "does not teach or suggest
of a preprogrammed algorithm" configured as claimed. App. Br. 13.
We are not persuaded the Examiner's obviousness rejection is in
error. We adopt the Examiner's findings and conclusions (see Final Act. 2-
1 O; Ans. 5-8) as our own, and we add the following primarily for emphasis.
Appellants' arguments are unpersuasive of error for failing to address
the Examiner's findings. First, regarding the Harrod-based arguments, the
Examiner explains that "Lifson, and not Harrod was relied upon to teach the
limitation regarding an automatic updating of a balance setpoint
temperature." Ans. 7; see also Final Act. 4 ("Lifson teaches ...
automatically updating a balance setpoint temperature to adjust a balance
6
Appeal2017-003266
Application 12/342,252
setpoint of the HVAC system (see para. 11)."). Second, regarding Schnell's
teaching of the claim 12 algorithm, Appellants restate the claim
requirements but do not provide an explanation of why Schnell does not
teach or suggest the disputed limitations. See App. Br. 13; see also In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (merely reciting the claim
elements and asserting that the corresponding elements were not found in the
prior art are not sufficient for establishing patentability). Further,
Appellants' arguments attack the references individually, whereas the
Examiner relies on the combination of cited references to teach or suggest
the disputed limitations. See Final Act. 2-3, 8-10; Lifson i-fi-f 10-13; Harrod
i13, 23; Schnell i137; see also In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986) ("Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.").
Accordingly, we are not persuaded the Examiner erred in finding the
limitations of independent claims 1 and 12 to be taught or suggested by
Lifson, Harrod, and Schnell. See Final Act. 4, 8.
Combination of Cited References
Appellants argue further "the Examiner's statements are borne from
the use of impermissible hindsight reconstruction." App. Br. 9; see also
App. Br. 15. Particularly, Appellants contend "the cited references require
an extensive amount of modification to provide" the claim limitations, as
"Schnell teaches away from," and "Harrod fails to disclose," various claim
limitations. App. Br. 8; see also App. Br. 15.
7
Appeal2017-003266
Application 12/342,252
We are not persuaded the Examiner erred. We agree with the
Examiner that Appellants have not shown that Schnell teaches away from
the claim limitations, because "[ n ]othing in Schnell tends to disparage the
aforementioned claim language or otherwise present it as an unworkable
solution." Ans. 8; see also Schnell i-f 37 ("Th[ e] switch from furnace to heat
pump may occur at any time during the furnace heating cycle."). Moreover,
Appellants' conclusory argument regarding the amount of modification
required does not show the Examiner erred in finding the combined
teachings of Lifson, Harrod, and Schnell teaches or suggests the limitations
of claims 1 and 12. 3 See Final Act. 4--5, 8-10; see also In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997) (Mere attorney arguments and conclusory
statements that are unsupported by factual evidence are entitled to little
probative value.); In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir.
1991) ("It is not the function of this court to examine the claims in greater
detail than argued by an appellant, looking for [patentable] distinctions over
the prior art.").
Accordingly, we are not persuaded the Examiner erred in finding one
of ordinary skill would combine the teachings of Lifson, Harrod, and Schnell
to perform the system and method as claimed.
3 We note Appellants contend "this is not a case of a simple substitution of
one known element for another," however, the Examiner does not mention
simple substitution in the rejection. App. Br. 8; see also Final Act. 2-10.
Appellants cite to case law, but do not otherwise challenge the Examiner's
combination reasoning. SeeHyattv. Dudas, 551F.3d1307, 1313-14 (Fed.
Cir. 2008) (the Board may treat arguments Appellants failed to make for a
given ground of rejection as waived).
8
Appeal2017-003266
Application 12/342,252
Reply Brief Arguments
Appellants raise new arguments in the Reply Brief. See Reply Br. 3-
5. We do not find there was a shift in the Examiner's position in the Answer
with respect to the obviousness rejections, therefore these arguments could
have been raised in the initial brief. See Final Act. 2-10; Ans. 5-8. As such,
Appellants waived these new arguments by not timely raising them.
See 37 C.F.R. § 41.41(b)(2); see also Ex parte Borden, 93 USPQ2d 1473,
1473-74 (BPAI 2010) (informative opinion).
CONCLUSION
We do not sustain the Examiner's 35 U.S.C. § 101 rejection of claims
1, 2, and 5-12.
We sustain the Examiner's 35 U.S.C. § 103(a) rejection of
independent claims 1 and 12. Appellants advance no further argument on
dependent claims 2 and 5-11. Accordingly, we sustain the Examiner's
35 U.S.C. § 103(a) rejections of these claims for the same reasons discussed
above.
DECISION
The Examiner's decision rejecting claims 1, 2, and 5-12 is affirmed.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See
37 C.F.R. § 41.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
9