Honeywell International Inc.

Patent Trials and Appeals Board

Mar 16, 2021

2020004069 (P.T.A.B. Mar. 16, 2021)

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.
15/189,912 07/08/2016 Cary Leen H0051907-1456.1068101 2599
90545 7590 03/16/2021
HONEYWELL/STW
Intellectual Property Services Group
300 S. Tryon Street
Suite 600
Charlotte, NC 28202
EXAMINER
STIVALETTI, MATHEUS R
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
03/16/2021 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):
Honeywell.USPTO@STWiplaw.com
patentservices-us@honeywell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARY LEEN, ANDREW DAVID HALFORD,
ROY ALAN KOLASA, VINAY PRASAD, JAYAPRAKASH MERUVA,
and
EVAN JOHN KINGSTON
Appeal 2020-004069
Application 15/189,912
Technology Center 3600
Before ST. JOHN COURTENAY III, CARL L. SILVERMAN, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–20, which are all claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Honeywell
International Inc. See Appeal Br. 3.
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Application 15/189,912

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STATEMENT OF THE CASE2
The claimed subject matter relates to “devices, methods, and systems
for multi-user commissioning.” See Spec. 1.
Representative Independent Claim 1
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A system for commissioning a building having a
plurality of physical controllers by a plurality of mobile
computing device [sic] each associated with a different
technician, the system comprising:

a first mobile computing device of the plurality of mobile
computing devices, associated with a first technician,
configured to:
[L1] retrieve first configuration data for a first
sub-set of the plurality of physical controllers of the
building from the remote database, wherein the first
subset of the plurality of physical controllers correspond
to a first portion of a commissioning project;

install the first configuration data on the first sub-
set of the plurality of physical controllers;

receive first data associated with a status of the
first sub-set of the plurality of physical controllers after
the first configuration data is installed on the first sub-set
of the plurality of physical controllers;

2 Our decision refers to the Final Office Action (“Final Act.,” mailed August
19, 2019; the Appellant’s Appeal Brief (“Appeal Br.,” filed February 3,
2020); the Examiner’s Answer (“Ans.,” mailed March 12, 2020); and the
Reply Brief (“Reply Br.,” filed May 12, 2020).
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synchronize the first data associated with the status
of the first sub-set of the plurality of physical controllers
with the remote database;

a second mobile computing device of the plurality of
mobile computing devices, associated with a second technician,
configured to:

[L2] retrieve second configuration data for a
second sub-set of the plurality of physical controllers of
the building from the remote database, wherein the
second sub-set of the plurality of physical controllers
does not intersect with the first sub-set of the plurality of
physical controllers, and wherein the second sub-set of
the plurality of physical controllers correspond to a
second portion of the commissioning project;

install the second configuration data on the second
sub-set of the plurality of physical controllers;

receive second data associated with a status of the
first sub-set of the plurality of physical controllers after
the second configuration data is installed on the second
sub-set of the plurality of physical controllers; and
synchronize the second data associated with the
status of the second sub-set of the plurality of physical
controllers with the remote database.

Claims Appendix, Appeal Br. 17–18 (emphasis added regarding disputed
limitations L1 and L2 with disputed negative limitation in bold).

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EVIDENCE
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Nordlinger US 2009/0313225 A1 Dec. 17, 2009
Lavrov et al. (“Lavrov”) US 2015/0169791 A1 June 18, 2015
Beoughter et al. (“Beoughter”) US 2016/0132046 A1 May 12, 2016
REJECTIONS
Rej. Claims Rejected 35 U.S.C.
§
Reference(s)/Basis
A 1–18, 20 103 Beoughter, Lavrov
B 19 103 Beoughter, Lavrov, Nordlinger

ISSUES AND ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. To the extent Appellant has not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are
forfeited.3 See 37 C.F.R. § 41.37(c)(1)(iv). Throughout this opinion, we

3 See In re Google Technology Holdings LLC, 980 F.3d 858, 862 (Fed. Cir.
2020):
It is well established that “[w]aiver is different from forfeiture.”
United States v. Olano, 507 U.S. 725, 733 (1993). “Whereas
forfeiture is the failure to make the timely assertion of a right,
waiver is the ‘intentional relinquishment or abandonment of a
known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458, 464
(1938)) (additional citations omitted). The two scenarios can
have different consequences for challenges raised on appeal, id.
at 733–34, and for that reason, it is worth attending to which label
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give the claim limitations the broadest reasonable interpretation (BRI)
consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997).
Appellant nominally argues the claim 1 “retrieve” limitations L1 and
L2 together. See Appeal Br. 9–12.4 However, Appellant focuses the
argument on the recited “does not intersect” negative limitation L2, and
notes that the Examiner relies upon paragraphs 5, 8, 100, 11, 142, and 148 of
Beoughter as teaching or suggesting the disputed L1 and L2 limitations, as
identified in emphasis above in claim 1. In support, Appellant urges:
The Examiner states in the Advisory Action, the phrase
“does not intersect” is interpreted to mean “two different
controllers”. The Examiner states under BRI the different pieces
of equipment, communicating with the system using different
controllers and different technicians performing shutdowns,
patch uploads, maintenance or replacement of parts during
different shifts to function similarly to the invention as described
in claim l.” Appellants respectfully disagree. Even under the
broadest reasonable interpretation (BRI), two different
technicians using different controllers to perform[] different
functions does not equate to: retrieving using a first mobile
computing device, first configuration data for a first sub-set of
the plurality of physical controllers ... AND ... retrieving, using
a second mobile computing device, second configuration data for
a second sub-set of the plurality of physical controllers, where
the second sub-set of the plurality of physical controllers DOES
NOT INTERSECT (e.g. do not contain any common controllers)
with the first sub-set of the plurality of physical controllers.
Nowhere do the cited parts of Beoughter teach or suggest such

is the right one in a particular case.
4 See 37 C.F.R. § 41.37(c)(1)(iv) (“A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim.”).
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features, particularly in combination with other elements of
claim 1. Nor does Lavrov.
Appeal Br. 11 (underline in original, emphasis added in bold).
Claim Construction
As an initial matter of claim construction, we focus on the contested
negative limitation that was added by amendment during prosecution on
May 20, 2019: “wherein the second sub-set of the plurality of physical
controllers does not intersect with the first sub-set of the plurality of
physical controllers . . . .” (Claim 1, emphasis added).
We find Appellant’s cited support in the Specification (Appeal Br. 4,
referring to the written description at page 5, lines 4–14, 21–32), does not
sufficiently identify “a reason to exclude the relevant limitation.” Santarus,
Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012)
(“Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation. Such
written description support need not rise to the level of disclaimer. In fact, it
is possible for the patentee to support both the inclusion and exclusion of the
same material.”). See also MPEP § 2173.05(i) (“Any negative limitation or
exclusionary proviso must have basis in the original disclosure . . . . The
mere absence of a positive recitation is not basis for an exclusion.”).
For example, we note the Specification, at page 5, lines 21–32,
describes:
In some examples, the system 102 can allow the plurality
of users 104-1, 104-2, 104-3, 104-4 to simultaneously update a
status of the project. In some examples, the project can include a
plurality of subprojects and/or portions of the project. In some
examples, a first user 104-1 can download information for a first
portion of the project and a second user 104-2 can download
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information for a second portion of the project. In this example,
the first user 104-1 and the second user 104-2 can synchronize
the respective portion of the project simultaneously. In some
examples, it can be advantageous to have real time status of the
project to determine a timeline for completion of the project,
determine when a different user can begin a project, and/or
resources that may be needed for completion of the project.
(emphasis added).
However, we find providing support in the Specification (id.) for the
first and second users to synchronize respective portions of the project
simultaneously, to advantageously “have [the] real time status of the project
to determine a timeline for completion of the project” (Spec. 5, ll. 29–30),
does not provide sufficient written description support to show a reason to
exclude any intersection between the second sub-set of the plurality of
physical controllers and the first sub-set of the plurality of physical
controllers, as expressly recited in claim 1 (i.e., “the second sub-set of the
plurality of physical controllers does not intersect with the first sub-set of
the plurality of physical controllers.”) (emphasis added).
Based upon the portions of the Specification (page 5, lines 4–14, 21–
32) cited by Appellant (Appeal Br. 3), as support for the negative limitation,
we find Appellant has not established a nexus between synchronizing
respective portions of the project simultaneously, as described on page 5 of
the Specification, and the claimed first and second subsets of physical
controllers that do not intersect, as added by amendment to claim 1 during
prosecution. In particular, Appellant has provided no evidence showing that
an artisan could not synchronize portions of the project, even if a particular
project involved two subsets of physical controllers that intersected.
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Moreover, the Examiner notes that the Specification describes a
system for multi-user commissioning, as depicted in Appellant’s Figure 1.
See Ans. 5. The Examiner notes that “it is evident that each user 104 (1–4)
is manipulating a mobile device 106 (1–4) in communication with the
system via paths 108 (1–4).” Ans. 5.
The Examiner finds that paragraph 22 and Figure 1 of Appellant’s
Specification (Patent Application Publication US 2018/0012173 A1, Pub.
Date: Jan. 11, 2018), “directly contradicts the notion the systems don’t
intersect as suggested by the [A]ppellant in Claim 1.” Ans. 5 (emphasis
added).
Because we find a significant question arises as to whether any
patentable weight should be given to the unsupported negative limitation, on
this record, we are not persuaded of error regarding the Examiner’s
underlying factual findings and ultimate legal conclusion of obviousness.5
Assuming arguendo that our reviewing court may give full patentable
weight to the aforementioned “does not intersect” claim 1 negative
limitation, we alternatively find that the result of such added negative
limitation would have merely yielded a predictable result. The Supreme
Court guides that a “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, 401 (2007).

5 In the event of further prosecution of this application, we leave it to the
Examiner to consider a rejection of at least claim 1 under 35 U.S.C.
§112(a), written description, regarding the contested negative limitation.
Although the Board is authorized to reject claims under 37 C.F.R. §
41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) §1213.02.
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Moreover, in reviewing the record, we are of the view that combining
the teachings of Beoughter and Lavrov in the manner proffered by the
Examiner (Final Act. 3–6) would not have been “uniquely challenging or
difficult for one of ordinary skill in the art” or would have “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).
Appellant urges that because paragraph 100 of Beoughter describes
having first and second users working on a common device (e.g., a furnace)
having a shared user interface (UI), that “the cited passages of Beoughter
would appear to teach away from what is recited in claim 1.” Appeal Br. 11.
However, a reference does not teach away if it merely expresses a
general preference for an alternative invention but does not “criticize,
discredit, or otherwise discourage” investigation into the invention claimed.
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Here, Appellant has not shown that Beoughter criticizes, discredits, or
otherwise discourages investigation into the invention claimed.
Accordingly, based upon a preponderance of the evidence, we sustain
the Examiner’s obviousness Rejection A of representative independent claim
1. For the same reasons, we sustain Rejection A of associated grouped
claims 2, 5–18, and 20 (not separately argued), that fall with representative
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).

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Rejection A of Dependent Claim 3

Claim 3 recites: “The system of claim 2, wherein the notification
includes a description of the commissioning project and a location of each of
the physical controllers in the first sub-set of the plurality of physical
controllers.”
Appellant contends that paragraphs 92–94 of Beoughter as relied upon
by the Examiner do not teach the notification of “the first sub-set of the
plurality of controllers as defined in claim 1.” Appeal Br. 13.
We find paragraph 91 expressly teaches the use of location data for
plant devices and/or assets:
In some instances, the plant map may include navigation
functionality. For example, the first user may select a particular
plant area/device/asset as a destination. The routine may then use
location data (e.g., received from a GPS receiver) to provide
directions to the particular plant area/device/asset. The tablet
may also send visual and or tactile indications to the wearable
device to help direct the first user to turn at a particular location
or to move in a particular direction.
Beoughter ¶ 91 (emphasis added).
Beoughter at paragraph 92, inter alia, describes a user tablet that
receives a unique identifier from an NFC or RFID tag on or near the asset
(e.g., a pump). The received unique identifier is used to “access a database
that correlates the unique identifier to entities in the process plant. For
example, the unique identifier may correlate to pump data, such as display
data, parameter data, and alarm data pertaining to the pump.” Id.
As an issue of claim construction, we interpret the recited notification
that “includes a description of the commissioning project and a location of
each of the physical controllers in the first sub-set of the plurality of physical
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controllers” (claim 3) as non-functional descriptive material (NFDM) merely
intended for human perception. The Manual of Patent Examining Procedure
(MPEP) guides: “where the claim as a whole is directed to conveying a
message or meaning to a human reader independent of the intended
computer system, and/or the computer-readable medium merely serves as a
support for information or data, no functional relationship exists.” MPEP §
2111.05 (III). And “the nature of the information being manipulated does
not lend patentability to an otherwise unpatentable computer-implemented
product or process.” Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008)
(precedential).
For the aforementioned reasons, and based upon a preponderance of
the evidence, we are not persuaded the Examiner erred. Accordingly, we
sustain the Examiner’s Rejection A of dependent claim 3.

Rejection A of Dependent Claim 4
Claim 4 recites: “The system of claim 1, wherein the first
configuration data configures a number of settings for functionality of each
of the physical controllers in the first sub-set of the plurality of physical
controllers upon being installed on the corresponding physical controller.”
Appellant notes that “[t]he cited passage of Beoughter relates to
hardware devices that run applications that may enable an operator to
perform functions with respect to controlling a process.” Appeal Br. 13.
Appellant urges: “If anything, this would be considered a generic disclosure
that does not teach the particular system recited in claim 4.” Id.
We note that Beoughter (paragraph 3) describes, inter alia, a plurality
of controllers that are coupled to one or more field devices:
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Distributed process control systems, like those used
in chemical, petroleum or other process plants, typically
include one or more process controllers communicatively
coupled to one or more field devices via analog, digital or
combined analog/digital buses, or via a wireless communication
link or network.
Beoughter ¶ 3 (emphasis added).
We note the Examiner relies principally upon Beoughter at paragraph
4 to teach or suggest the claim 4 configuring limitation. Paragraph 4 of
Beoughter expressly teaches “keeping and updating a configuration
database.” (emphasis added).6
Given this evidence, we are not persuaded the Examiner erred.
Accordingly, we sustain the Examiner’s Rejection A of dependent claim 4
Rejection B of Dependent Claim 19

Regarding the Examiner’s Rejection B dependent claim 19, Appellant
avers that “[t]he cited portions of Nordlinger cannot be seen to cure the
deficiencies of Beoughter and Lavrov with respect to claim 13.” Appeal Br.
15. Appellant points out that “claim 19 depends from claim 13.” Id.
However, we find no deficiencies regarding the Examiner’s proffered
combination of Beoughter and Lavrov, for the same reasons discussed above

6 Our reviewing court guides: “‘the question under 35 USC 103 is not
merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made.’” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). (emphasis
added); see also MPEP § 2123.

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regarding Rejection A of claim 1. Accordingly, we sustain the Examiner’s
Rejection B of dependent claim 19.

CONCLUSION
Based upon a preponderance of the evidence, the Examiner did not err
with respect to the obviousness Rejection A of claims 1–18 and 20, and
obviousness Rejection B of claim 19, over the cited combinations of
references.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1–18, 20 103 Beoughter, Lavrov 1–18, 20
19
103
Beoughter,
Lavrov,
Nordlinger
19
Overall
Outcome 1–20

FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).

AFFIRMED