Ex Parte Pennington et al

Patent Trial and Appeal Board

Mar 14, 2017

13211967 (P.T.A.B. Mar. 14, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/211,967 08/17/2011 RICKY JEFF PENNINGTON CYMB101 5318
21658 7590 03/16/2017
SHAVER & SWANSON, LLP
P.O. BOX 877
BOISE, ID 83701-0877
EXAMINER
QUIGLEY, KYLE ROBERT
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
03/16/2017 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):
bob @ shaverswanson. com
amy @ shaverswanson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICKY JEFF PENNINGTON,
DEREK JOHN GABLE, and
ADAM JUSTIN HIEB
Appeal 2015-001906
Application 13/211,967
Technology Center 2800
Before JOSEPH L. DIXON, KEN B. BARRETT, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-001906
Application 13/211,967
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to an energy monitoring device. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An energy use display device for monitoring energy
consumption of an electrical appliance, comprising:
a device body comprising a housing with a front side and
a back side, with protruding electrodes for insertion into a wall
outlet with said device body further comprising electrode
receiving wells equivalent to a wall outlet for electrical plug-in
of an electrical appliance to be monitored;
a monitoring circuit to sense how much electricity said
electrical appliance is using;
a time tracking unit to aid in energy monitoring;
a memory unit to record historical energy usage;
a forecasting unit to project the monthly use of electricity
of said appliance based on measured energy usage over a selected
period of time for said appliance for a period of time;
a visual display of the energy use projection of a particular
appliance, comprising a plurality of LED indicators, with each
LED indicator corresponding to an amount of electricity
projected to be used in a month.
1 Appellants indicate that the inventors (Ricky Jeff Pennington, Derek John
Gable, and Adam Justin Hieb) are the real party in interest. (App. Br. 1).
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hicks US 4,399,510 Aug. 16, 1983
Lee US 5,811,966 Sept. 22, 1998
Rodilla Sala US 6,429,642 B1 Aug. 6, 2002
Rodenberg, III et al. US 7,043,380 B2 May 9, 2006
REJECTIONS
The Examiner made the following rejections:
Claims 1, 17, and 18 were rejected under 35 U.S.C. § 112 (pre- AIA),
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor or a joint inventor, or
for pre-AIA the applicant regards as the invention.2
Claims 1—11 and 16—18 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Rodenberg III in further view of Hicks,
Rodilla Sala, and Lee.
Claims 12—14 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Rodenberg III in view of Hicks.
Claim 15 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Rodenberg III in view of Hicks as applied above, and
further in view of Rodilla Sala.
2 Appellants indicates that the § 112 rejection "could be easily addressed if
rejections under 35 USC §103 are overcome." (App. Br. 4). The Examiner
“does not oppose this wish. As such, the rejections of Claims 1,17, and 18
under 35 U.S.C. 112 from the Office Action of 3/13/2014 are not subject to
this appeal.” (Ans. 2). Consequently, we limit our review to the
obviousness rejections.
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Application 13/211,967
ANALYSIS
Appellants present arguments to independent claims 1 and 17
together. (App. Br. 5). We further note that independent claim 12 is the
broadest of the three independent claims and is rejected over only two of the
four references relied upon to reject independent claims 1 and 17. We select
independent claim 1 as the representative claim for review because
Appellants have presented arguments in this manner.
Appellants contend the Examiner fails to consider claim 1 as a
whole. See App. Br. 21—22.
The U.S. Supreme Court has held “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 416 (2007). “If the claim extends to what is obvious, it is invalid
under § 103” and “the analysis need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” Id. at 418—19.
Contrary to Appellants’ argument, we find the Examiner has
considered the claim as a whole, and provided articulated reasoning with a
rational underpinning as to why one skilled in the art would have found it
obvious to combine the teachings of Rodenberg, Hicks, Rodilla Sala, and
Lee. See Final Act. 4—8. Appellants do not persuasively show why such
reasoning is incorrect.
The Examiner’s findings and conclusion are reasonable because the
skilled artisan would “be able to fit the teachings of multiple patents together
like pieces of a puzzle” since the skilled artisan is “a person of ordinary
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creativity, not an automaton.” KSR, 550 U.S. at 420-21. Appellants do not
present adequate evidence or technical reasoning that the resulting
arrangements would have been “uniquely challenging or difficult for one of
ordinary skill in the art” or “represented an unobvious step over the prior
art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. at 418-19).
Furthermore, we find Appellants’ general arguments to be
unpersuasive because they are not commensurate in scope with the express
language of independent claim 1. “‘[T]he main purpose of the examination,
to which every application is subjected, is to try to make sure that what each
claim defines is patentable. . . . [T]he name of the game is the
claim . . . In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)
(quoting Giles S. Rich, The Extent of the Protection and Interpretation of
Cl aims American Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L.
497, 499 (1990)). In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (rejecting
arguments “not based on limitations appearing in the claims.)
Appellants contend that the Rodenberg and Hicks references pertain
to full household consumption are not capable to measure energy usage for
an individual appliance (“the entire purpose of the claimed technology”)
which is the opposite of the Hicks and the Rotenberg references. (App. Br.
6—7). Appellants further contend that Appellants’ claim technology is an
“integrated, stand-alone unit for profiling individual outlet-to-outlet
electricity consumption.” (App. Br. 7). We disagree with Appellants and
find Appellants’ argument is not commensurate in scope with the express
language of independent claim 1.
Appellants contend that the Sala reference provides multiple
indicators of electric usage but is directed to the “instantaneous usage of
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electricity.” (App. Br. 8). Appellants further contend “[tjhere is no
capability in Sala to sense, report, project or evaluate the energy usage of a
single appliance.” Appellants argue that the Sala invention does not
describe each one of the optical indicators to be able to take on a different
color. (App. Br. 8—9). Appellants further argue that this difference is
“subtle, but very important point as well.” (App. Br. 9). Again, Appellants’
argument is not commensurate in scope with the express language of
independent claim 1 which merely recites “a visual display of the energy use
projection of a particular appliance, comprising a plurality of LED
indicators, with each LED indicator corresponding to an amount of
electricity projected to be used in a month.” Consequently, Appellants’
argument does not show error in the Examiner’s factual findings with the
conclusion of obviousness.
Appellants further contend:
What the examiner fails to understand is that the
Rodenberg III invention separates the measuring and
transmitting unit from the display unit. The measuring and
transmitting unit is integrated in the main circuit breaker and
adding a receptacle to the display unit would serve no purpose
unless it was to serve as a pass-through to the receptacle being
covered up by the display unit. In order for the display unit to
act as a pure pass through, it would need to include a second plug
element, to plug into the receptacle being covered up, the first
receptacle being occupied by the first plug in the display unit
which is used to power the display unit.
(App. Br. 9). We find Appellants’ argument to be arguing the references
separately rather than in the combination as set forth by the Examiner in the
statement of the rejection.
Appellants further argue that:
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[t]he Lee invention is cited because it provides a place for the
electrodes of an appliance to plug in. Compared to the other cited
power meters, the device of Lee is the only one which is capable
of sensing power usage of a single appliance. However, the
device of Lee is strictly for showing the instantaneous energy
usage, or cumulative/ accumulated use. The Lee device includes
a light bar 22, with the separate lights of the light bar to show
different levels of electricity usage, for a low energy usage on the
leftmost light, to a high energy usage on the right hand light. The
present invention specifically claims the display of a projected
energy usage, and is not a display of present current usage. As
noted in paragraph 4 of the original application: “A device which
operates in this manner is different from the prior art because it
is not an instantaneous meter, it has predictive calculations, and
through a simplified visual display methodology it provides the
user with highly personalized or localized information that can
be used to help change a user’s energy consumption habits and
decrease his utility bill.”
(App. Br. 9-10).
We find Appellants’ argument is not commensurate in scope with the
express language of independent claim 1, and Appellants’ reliance upon the
Specification does not show error in the Examiner’s proffered combination
of the prior art teachings.
Additionally, Appellants generally contend that the proposed
modification would render the prior art invention being modified
unsatisfactory for its intended purpose, the proposed modification cannot
change the principle of operation of a reference, the presence of all claimed
elements in the prior art is not found, and the applicants invention cannot be
used as a blueprint for rejection. (App. Br. 10-15). The Examiner addresses
Appellants’general contentions. (Ans. 13—14). We find Appellants’general
arguments do not show error in the Examiner's factual findings or
conclusion of obviousness of the invention recited in independent claim 1.
Consequently, Appellants’ arguments do not show error in the Examiner’s
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factual findings or conclusion of obviousness is based upon the unclaimed
subject matter.
The Examiner responds to Appellants’ arguments and identifies how
the prior art teaches and fairly suggests the invention recited in independent
claim 1. The Examiner further articulates a reason for combining the
references that is supported by sufficient rational underpinning. (Ans. 3—8).
We adopt the Examiner’s specific findings and responses as detailed in the
Examiner’s Answer.
Additionally, the Examiner further addresses Appellants’ general
arguments regarding independent claim 1 and the Examiner interprets the
arguments to apply to various dependent claims which are not specifically
identified by Appellants in the arguments. We find Appellants have not set
forth specific arguments for patentability of any of the dependent claims.
We find Appellants’ arguments are merely directed to unclaimed subject
matter in independent claim 1. Alternatively, we adopt the Examiner’s
specific findings and responses as detailed in the Examiner’s Answer. (Ans.
8-14).
Appellants do not file a Reply Brief to respond to the Examiner’s
further clarifications. As a result, Appellants do not show error in the
Examiner’s factual findings or conclusion of obviousness of independent
claim 1.
Claims 10—12 and 15
With respect to claims 10-12 and 15, Appellants rely upon the
arguments advanced with respect to independent claim 1. As a result,
Appellants’ arguments do not show error in the Examiner’s findings of fact
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or conclusion of obviousness because we found Appellants’ arguments to be
unpersuasive with respect to representative independent claim 1.
CONCLUSIONS
The Examiner did not err in rejecting claims 1—18 based upon
obviousness under 35 U.S.C. § 103.
DECISION
For the above reasons, we sustain the Examiner’s rejection of claims
1—18 based upon obviousness under 35 U.S.C. § 103
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
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