Ex Parte Matsen et al

Patent Trial and Appeal Board

Jul 21, 2014

12435993 (P.T.A.B. Jul. 21, 2014)

1
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DEAN C. MATSEN and MICHAEL UNDERHILL
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Appeal 2012-004138
Application 12/435,993
Technology Center 2400
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Before: EDWARD A. BROWN, CHARLES N. GREENHUT, and
LYNNE H. BROWNE, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Dean C. Matsen and Michael Underhill (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s decision rejecting claims 1–6, 9–11, 13,
and 15–19 under 35 U.S.C. §103(a) as being unpatentable over Shike (US
2009/0287736 A1, issued Nov. 19, 2009) and Swainston (US 2010/0142535
A1, issued Jun. 10, 2010). 1 We have jurisdiction under 35 U.S.C. § 6(b).

1 The Examiner withdrew the rejection of at least claims 1, 9, and 17 under
35 U.S.C. § 112, first paragraph in the Advisory Action mailed July 8, 2011.
The Examiner indicates that the rejection of claims 5, 12, 16, and 19 under
35 U.S.C. § 112, first paragraph was, or is now, similarly withdrawn. Ans.
16.
Appeal 2012-004138
Application 12/435,993

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We REVERSE.

CLAIMED SUBJECT MATTER
The claims are directed to an approach for automatically setting the
device instance of a BACnet device. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A device instance setting mechanism comprising:
a building and automation control network;
a global controller connected to the network, wherein the
global controller has a global controller identifier; and
at least one unitary controller connected to the network,
wherein each of the at least one unitary controllers includes a
unique device instance; and
wherein each of the at least one unitary controllers
receive the global controller identifier via the network, and
automatically generate the unique device instance of the
corresponding at least one unitary controller based, at least in
part, on the global controller identifier.

OPINION
The Examiner concludes that the combined teachings of Shike and
Swainston render independent claim 1 obvious. Ans. 8–9. In particular, the
Examiner finds that Swainston “discloses wherein each of the at least one
unitary controllers receive the global controller identifier via the network,
and automatically generate the unique device instance of the corresponding
at least one unitary controller based, at least in part, on the global controller
identifier.” Id. at 8.
Swainston states that “[t]he identification unit 210 is operably coupled
to the control unit 200, and is configured to assign an identifier to each of
the plurality of network devices 110.” Swainston, para. 20 (emphasis
Appeal 2012-004138
Application 12/435,993

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added). 2 Swainston further explains the hierarchy by which the
identification unit 210 assigns an identifier (unique device instance) based
on the devices operation and location within a building control system 100.
Swainston, para. 22.
Appellants argue that “Swainston does not necessarily automatically
generate the unique device instance of the corresponding at least one unitary
controller based, at least in part, on the global controller identifier” as
required by independent claim 1. App. Br. 12.
The Examiner does not identify, nor do we discern, where Swainston
describes unitary controllers that automatically generate a unique device
instance based, at least in part, on the global controller identifier. Although,
a global identifier (Swainston’s universal level designation “U”) is a part of
each unique device instance, there is no indication that the remainder of the
unique device instance is based on the global identifier. Furthermore, there
is no indication in Swainston that the global identifier even pertains to a
controller. We have been instructed that “we may not resolve doubts in
favor of the Patent Office determination when there are deficiencies in the
record as to the necessary factual bases supporting its legal conclusion of
obviousness.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
For these reasons, we do not sustain the Examiner’s decision rejecting
independent claim 1, and claims 2–6 which depend therefrom. Claims 9 and
17 contain similar limitations. Accordingly, we do not sustain the

2 We note that Swainston does not indicate where the unitary controller
receives the global controller identifier from and the Examiner has not
identified what element in Swainston is considered to equate to the global
controller identifier or what “network device[s]” are interpreted as the
“unitary controllers.”
Appeal 2012-004138
Application 12/435,993

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Examiner’s decision rejecting independent claims 9 and 17, and claims 10,
11, 13, and 15–19 which depend therefrom.

DECISION
The Examiner’s rejection of claims 1–6, 9–11, 13, and 15–19 is
reversed.

REVERSED

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