Ex Parte Verfuerth et al

Patent Trial and Appeal Board

Jun 11, 2013

11744083 (P.T.A.B. Jun. 11, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/744,083 05/03/2007 Neal R. Verfuerth 042365-0112 8115
104747 7590 06/11/2013
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
DASS, HARISH T
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
06/11/2013 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 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte NEAL R. VERFUERTH and MICHAEL J. POTTS 7
___________ 8
9
Appeal 2012-003460 10
Application 11/744,083 11
Technology Center 3600 12
___________ 13
14
15
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and 16
ANTON W. FETTING, Administrative Patent Judges. 17
FETTING, Administrative Patent Judge. 18
DECISION ON APPEAL 19
Appeal 2012-003460
Application 11/744,083

2

STATEMENT OF THE CASE1 1
Neal R. Verfuerth and Michael J. Potts (Appellants) seek review under 2
35 U.S.C. § 134 of a final rejection of claims 1-7, which along with claims 3
8-30 withdrawn from consideration, are the only claims pending in the 4
application on appeal. We have jurisdiction over the appeal pursuant to 5
35 U.S.C. § 6(b). 6
The Appellants invented a utility financial model (Specification para 7
0001). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 1, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
1. A method 12
for financing installation of a new utility technology by a 13
utility consumer 14
after installation of the new utility technology 15
at a facility associated with the utility consumer, 16
the method comprising: 17
[1] obtaining, 18
at a metering device, 19

1 Our decision will make reference to the Appellants’ Appeal Brief
(hereinafter “App. Br.,” filed July 18, 2011) and Reply Brief (hereinafter
“Reply Br.,” filed December 30, 2011), and the Examiner’s Answer
(hereinafter “Ans.,” mailed November 1, 2011).
Appeal 2012-003460
Application 11/744,083

3

power usage information 1
associated with operation of a second technology; 2
[2] calculating, 3
at a processor 4
and 5
based on the power usage information obtained 6
from the metering device, 7
a power base load capacity relief 8
of an electrical system 9
to a utility provider 10
resulting from change 11
from a first technology to the second 12
technology; 13
[3] receiving, 14
at the processor, 15
a technology cost 16
including fixed and variable costs 17
to install and maintain the second technology; 18
[4] calculating, 19
at the processor, 20
a return needed 21
for repayment of the technology cost; 22
[5] determining, 23
by the processor, 24
a new utility rate 25
by apportioning the return needed for repayment of 26
the technology cost 27
as a function of the power base load capacity 28
relief; 29
Appeal 2012-003460
Application 11/744,083

4

and 1
[6] calculating and providing 2
a utility invoice 3
to the utility consumer 4
for a power reduction over time at the new utility 5
rate, 6
the power reduction over time provided 7
by use of the second technology; 8
[7] wherein the amount billed 9
to the utility consumer 10
via the utility invoice 11
is less than a cost savings 12
attained by the utility consumer 13
via the power base load capacity relief 14
such that the amount billed to the utility consumer is 15
financed 16
via a portion of the cost savings. 17
The Examiner relies upon the following prior art: 18
Matsubayashi US 6,983,210 B2 Jan. 3, 2006
Bannai US 7,130,832 B2 Oct. 31, 2006
Raines US 2008/0147465 A1 Jun. 19, 2008
L. R. Harris et al. "Pacific Northwest Laboratory's Lighting Technology 19
Screening Matrix"; PNL-SA-23871, U.S. Department of Energy; Pacific 20
Northwest Laboratory, (April 1994), Richland, Washington 99352.. 21
Michael Deru, Shanti D Pless, and Paul A Torcellini. BigHorn Home 22
Improvement Center Energy Performance ASHRAE Transactions, Vol. 23
112 Part 2. pg. 349, Atlanta: 2006, 18 pgs. 24
Appeal 2012-003460
Application 11/744,083

5

Claims 1-3 and 6-7 stand rejected under 35 U.S.C. § 103(a) as 1
unpatentable over Bannai, Matsubayashi, Harris, and Deru. 2
Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as unpatentable 3
over Bannai, Matsubayashi, Harris, Deru, and Raines. 4
ISSUES 5
The issues of obviousness turn primarily on whether Bannai describes 6
how utility customer’s billing would be affected. 7
FACTS PERTINENT TO THE ISSUES 8
The following enumerated Findings of Fact (FF) are believed to be 9
supported by a preponderance of the evidence. 10
Facts Related to the Prior Art 11
Bannai 12
01. Bannai is directed to the energy service business. Bannai 13
1:7-8. 14
02. The investment cost for energy-saving measure is derived 15
from contribution of funds by energy service enterprises and 16
energy conservation effect, i.e., curtailment of the energy costs. 17
This entails the steps of applying energy-saving measures to 18
object facilities at the cost of an energy service enterprise, 19
measuring the energy consumption after taking energy-saving 20
measures, and calculating the amount of curtailment of the energy 21
costs by comparing the thus measured value with the energy 22
consumption before taking the energy-saving measures previously 23
Appeal 2012-003460
Application 11/744,083

6

stored in a database, and allowing the energy service enterprise to 1
receive at least a part of the amount of curtailment. Bannai 1:51-2
64. 3
03. The amount received by the energy service enterprise is, 4
when the total amount of the fixed costs such as depreciation and 5
tax and tariffs for a single fiscal year for taking energy-saving 6
measures and the variable costs such as maintenance cost of 7
energy-saving equipment is Q, the annual amount of curtailment 8
of energy costs is P, and α and β are positive coefficients (where α 9
> β): 10
X1% of curtailment amount of energy cost when P≥ βQ; 11
X2% of curtailment amount of energy costs when βQ≤P< α Q 12
(where, X1