VIVINT, INC. et al.

Patent Trials and Appeals Board

Feb 28, 2020

90014007 - (D) (P.T.A.B. Feb. 28, 2020)

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.
90/014,007 08/30/2017 6147601 3750.010REX1 3932
26111 7590 02/28/2020
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
CARLSON, JEFFREY D
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/28/2020 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 VIVINT, INC.
____________________

Appeal 2020-000371
Reexamination Control 90/014,0071
Patent No. US 6,147,601
Technology Center 3900
____________________

Before JOHN A. JEFFERY, MARC S. HOFF, and CHARLES J.
BOUDREAU, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
3, 16, 24, 32, 42, and 43.2 We have jurisdiction under 35 U.S.C. §§ 134(b)
and 306.
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant states that the real party in interest is Vivint, Inc.
App. Br. 7.
2 Claims 1, 2, 4, 6, 7, 10–15, 17, 18, 22, 23, 25, 29, and 38 were determined
to be unpatentable in a final written decision in Inter Partes Review
IPR2016-00116, May 2, 2017. Claims 5, 8, 9, 19–21, 26–28, 30, 31, 33–37,
and 39–41 are not subject to reexamination.
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The ’601 patent issued to Sandelman on November 14, 2000. The
’601 patent concerns monitoring remote equipment. When a sensor detects
an exception condition in a piece of remote equipment, an interface unit
generates an incoming exception message and forwards the message to a
server. ’601 Patent Abstract. Incoming messages are normalized at a
normalization module so that all incoming messages can then be processed
without regard to their incoming medium. ’601 Patent, col. 7:16–18.
Multiple outgoing exception messages may be forwarded to multiple
communication devices in accordance with a user-defined message profile.
’601 Patent Abstract.
Claim 42 is exemplary of the claims on appeal:
42. A method for monitoring remote equipment
comprising the steps of:
a) determining a state of at least one parameter of at least
one piece of the remote equipment;
b) communicating a message indicative of the state to a
computer server as an incoming message, the incoming
message having a respective incoming format;
c) normalizing the incoming message to form a
corresponding normalized message having a predetermined
uniform format;
d) storing the normalized message in a normalized
message database on the computer server;
e) determining from the incoming message whether at
least one exception message related to the incoming message is
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to be sent to at least one remote communication device
specified by a plurality of message profiles stored at the
computer server;
f) if it is determined in step e) that at least one exception
message related to the incoming message is to be sent, deriving
the at least one exception message from the stored normalized
message corresponding to the related incoming message and the
message profiles, the at least one exception message derived
thereby having a respective format suitable for reception by the
at least one remote communication device to which the at least
one exception message is to be sent; and
g) sending the at least one exception message derived in
step f) to the at least one remote communication device
specified by the message profiles,
wherein the message profiles may be created or modified
at least in part by a user by remote access of the computer
server.

The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Shetty et al. US 5,808,907 Sep. 15, 1998
Wewalaarachchi et al. US 6,067,477 May 23, 2000
Oberlander US 5,509,000 Apr. 16, 1996
Cheng US 6,970,081 B1 Nov. 29, 2005

Throughout this decision, we make reference to Appellant’s Brief
(“App. Br.,” filed Aug. 30, 2017), the Reply Brief (“Reply Br.,” filed
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Oct. 18, 2019) and the Examiner’s Answer (“Ans.,” filed Aug. 15, 2019) for
their respective details.
REJECTIONS
Claims 3, 16, 24, 42, and 43 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Shetty and Wewalaarachchi.
Claim 32 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shetty, Oberlander, Cheng, and Wewalaarachchi.
ISSUES
Appellant’s arguments present us with the following issues:
1. Does Shetty teach an exception message sent to at least one remote
communications device?
2. Does the combination of Shetty and Wewalaarachchi teach or
suggest “storing the normalized message in a normalized message database
on the computer server”?
3, Does the combination of Shetty and Cheng disclose or suggest an
interface unit periodically generating a normal status message indicative of
the proper operation of a piece of equipment to which a sensor is connected?
4. Did the Examiner err in combining Shetty and Wewalaarachchi to
achieve the claimed invention?
PRINCIPLES OF LAW
Section 103(a) forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

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KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C.
§ 103(a) (2000)). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966). See also KSR, 550 U.S. at 407 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”).
If the proposed modification or combination of the prior art would
change the principle of operation of the prior art invention being modified,
then the teachings of the references are not sufficient to render the claims
prima facie obvious. In re Ratti, 270 F.2d 810 (CCPA 1959).
ANALYSIS
Claims 42 and 43
We are not persuaded by Appellant’s argument that Shetty does not
teach an exception message sent to at least one remote communications
device specified by a plurality of message profiles stored at the computer
server, as required in claim 42. App. Br. 18. We agree with the Examiner’s
finding that Shetty teaches notification means 112 capable of delivering
facsimile reports, email reports and pager reports. Ans. 35. We agree with
the Examiner that the facsimile machine, computer, and pager implied by
these types of reports “represent the claimed ‘remote communication
devices.’” Ans. 35.
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Appellant further contends that the combination of Shetty and
Wewalaarachchi does not teach “storing the normalized message in a
normalized message database on the computer server,” as required by
claim 42. App. Br. 19. We are not persuaded, however, that the Examiner
erred in combining Shetty and Wewalaarachchi to obtain the claimed
invention. Contrary to Appellant’s assertions, the Examiner’s rejection relies
on Wewalaarachchi merely to teach the concept of normalizing incoming
messages into a uniform format to create normalized messages. Ans. 36;
Final Act. 11–12; Wewalaarachchi col. 8:22–46. The Examiner relied on
Shetty for a teaching of storing messages. Ans. 36.
Appellant further asserts that the combination of Shetty and
Wewalaarachchi does not teach deriving the at least one exception message
from the stored normalized message, as recited in claim 42. App. Br. 21.
Appellant’s argument is not persuasive. As discussed supra, the Examiner’s
proposed combination of Shetty and Wewalaarachchi relies on Shetty for a
teaching of storing messages. The Examiner relies on Wewalaarachchi,
rather than Shetty, for a teaching of normalizing incoming messages into a
uniform format, and proposes to modify Shetty in view of Wewalaarachchi’s
teachings. Ans. 37.
Appellant argues that the Examiner does not explain how the
combination of Shetty and Wewalaarachchi generates outgoing exception
messages. App. Br. 23. We are not persuaded that the Examiner erred. The
Examiner finds that Shetty teaches “forwarding at least one outgoing
exception message based on the incoming message to at least one user-
defined communication device,” as recited in claim 1. Final Act. 6; Shetty
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col. 1:33–35, col. 2:42–45. As explained supra, the Examiner relies on
Wewalaarachchi for a teaching of normalizing incoming messages into a
uniform format. Ans. 37.
Claims 3 and 24
Appellant argues that the Examiner admits that “Shetty does not
explicitly call for normalizing the incoming message into a uniform format”
and relies on Wewalaarachchi to teach standardizing data, but that the
Examiner does not explain how the cited references teach generating
outgoing exception messages. App. Br. 23; Final Act. 14, 17.
We do not find Appellant’s argument persuasive of Examiner error.
As discussed with reference to claims 42 and 43, supra, the Examiner finds
that Shetty discloses forwarding at least one outgoing exception message, as
claimed. Final Act. 6; Shetty col. 1:33–35, col. 2:42–45. Also as discussed
supra, the Examiner proposes to modify Shetty in view of Wewalaarachchi’s
teaching of normalizing incoming messages into a uniform format. Ans. 36–
37; Final Act. 11–12; Wewalaarachchi col. 8:22–46.
Claim 16
Claim 1, from which claim 16 depends, recites “communicating a
message indicative of the state from the piece of remote equipment to a
computer server as an incoming message,” and “determining whether an
incoming message is an incoming exception message indicative of improper
operation of the piece of remote equipment.” Dependent claim 16 further
recites “wherein the remote equipment includes heating, ventilating, and
cooling equipment.”
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Appellant argues that Wewalaarachchi does not teach receiving
messages from heating, ventilation, and/or cooling devices sensors
indicative of their improper operation. App. Br. 24–25.
The Examiner finds that Wewalaarachchi teaches remote monitoring
of equipment using sensors, including “raw, real time data from the field
devices . . . such as lights, heating units, thermostats, window controls,
ventilation systems, elevator banks, and so forth.” Final Act. 12;
Wewalaarachchi col. 4:22–26. We agree with the Examiner that
Wewalaarachchi thus teaches monitoring of heating, ventilating, and cooling
equipment for improper operation. Ans. 39. The Examiner finds, and we
agree, that the Specification suggests that “improper operation” is an
operating condition where an operating parameter is outside its preferred
range. Ans. 39; ’601 Patent col. 3:46–48. Wewalaarachchi teaches notifying
the user “of a critical temperature level,” and teaches testing “whether the
temperature exceeds a threshold value.” Ans. 39; Wewalaarachchi col. 16:
53–54, col. 18:33–34. Given such teaching in Wewalaarachchi, we agree
with the Examiner that it would have been obvious to monitor such
equipment using Shetty’s approach so that Shetty could monitor a wide
variety of remote equipment. Ans. 39.
Claim 30
Appellant argues that the combination of Shetty and Cheng does not
disclose or suggest an interface unit periodically generating a normal status
message indicative of the proper operation of a piece of equipment to which
a sensor is connected. App. Br. 25. Appellant argues that Cheng provides the
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same teaching as Britton,3 which the Board previously found did not provide
a message “specifically indicative of the proper operation of the piece of
remote equipment.” App. Br. 25–26.
Appellant’s argument is not persuasive. We agree with the Examiner’s
finding that Cheng teaches “normal status message reflecting the integrity of
actual remote equipment being monitored.” Ans. 41. “[E]ach appliance 100
includes a status reporter 120 that communicates messages regarding the
status of the appliance 100.” Ans. 41; Cheng col. 3:46–48. “[T]he
communicated status 121 of the appliance 100 is used as a direct or indirect
indication of the security status of the appliance 100. For example . . . the
status reporter 120a within the computer 100a reports an ‘I’m OK’, or ‘I am
appliance XYZ’, message periodically. The absence of an expected ‘I’m
OK’ message from the status reporter 120a could be cause for an alarm.”
Ans. 41; Cheng col. 3:55–63.
Further, we do not agree with Appellant that the teachings of Britton,
a reference not applied against the claim, are relevant to this ground of
rejection. App. Br. 26–27. The Board’s prior conclusions concerning a
combination of references including Britton, rather than Cheng, are not
binding upon this panel in this matter. See Ans. 40–41; App. Br. 27.
Combinability of Shetty and Wewalaarachchi
Appellant contends that the Examiner has not shown exactly how
Shetty and Wewalaarachchi would be combined, or why the person having
ordinary skill in the art would have combined them. App. Br. 28. Appellant

3 U.S. Patent No. 6,040,770.
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argues that the fact that a person of ordinary skill “could have made” the
combination is legally insufficient. App. Br. 28–29.
With specific regard to claims 3, 24, 42, and 43, Appellant alleges that
the Examiner does not explain how a person of ordinary skill would have
used Wewalaarachchi’s real-time system in Shetty’s non-real-time system.
App. Br. 30. Appellant further argues that (a) Shetty modified by
Wewalaarachchi would be inoperable and unsatisfactory for its intended
purpose, (b) the Examiner does not consider the teachings of Shetty and
Wewalaarachchi in their entirety, and (c) Shetty’s principle of operation
must be changed if combined with Wewalaarachchi. App. Br. 30–31.
We are not persuaded that the Examiner erred in combining Shetty
and Wewalaarachchi We agree with the Examiner that the asserted
combination of references does not propose to convert the system of Shetty
to handle real-time data. Ans. 43. Rather, the Examiner’s asserted
combination would have allowed Shetty’s batch mode system to use
converted / normalized data, as suggested by Wewalaarachchi, so that Shetty
could monitor a wide variety of remote equipment, by combining prior art
elements according to known methods to yield predictable results. Id. Thus,
we also agree with the Examiner that there is no issue of Shetty being
rendered inoperable or unsatisfactory for its intended purpose.
In reply, Appellant continues to argue that the Examiner fails to
articulate a proper rationale to combine Shetty and Wewalaarachchi (Reply
Br. 3–4), but Appellant’s argument continues to rely on the allegation that
the Examiner proposes to convert Shetty from batch processing to real-time
operation. Reply Br. 5. As emphasized supra, the Examiner’s combination
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of references does not propose such a modification of Shetty. Appellant’s
contention that the Examiner fails to demonstrate how Shetty stores
normalized messages is not germane to the Examiner’s rejection, because
the Examiner relies on Wewalaarachchi, rather than Shetty, for a teaching of
storing normalized messages. Reply Br. 5.
With regard to claim 16, Appellant again argues that Shetty’s
principle of operation must be changed if Shetty is reconfigured to permit its
batch processing means to operate in real time. App. Br. 31–32. Appellant’s
argument with respect to claim 16 is unpersuasive, because as discussed
supra, the Examiner does not propose to change Shetty to real-time
operation. We agree with the Examiner that the real-time handling of data
taught by Wewalaarachchi is not inseparable from the formatted nature of
the standardized data. Ans. 45.
Shetty and Wewalaarachchi – Teaching Away
Appellant argues that Wewalaarachchi teaches away from Shetty’s
batch processing, because Wewalaarachchi teaches real-time operation and
that having a single point of access that is not real-time “degrade[s]
performance” App. Br. 34. We are not persuaded by this argument because,
as discussed supra, we agree with the Examiner’s asserted combination of
Shetty and Wewalaarachchi does not propose to convert Shetty to real-time
operation. Ans. 44.
Shetty and Wewalaarachchi - Impermissible Hindsight
Appellant argues that the Examiner’s combination of Shetty and
Wewalaarachchi amounts to impermissible hindsight, because the
Examiner’s asserted rationale for combining the references repeats one of
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the objectives of the ’601 Patent, “to be adaptable to all forms of electronic
communication.” App. Br. 36.
We do not agree with Appellant’s contention of hindsight
reconstruction. We find that the Examiner provided articulated reasoning
showing a reason to combine. Contrary to Appellant’s contention, the
Examiner did not rely on Wewalaarachchi for the objective of being
adaptable to a wide variety of electronic communication. As was cited by the
Examiner, Shetty teaches the objective of providing notification by plural
methods, such as “electronic mail message or report 114 or by an pager
report via a pager 116 or by a facsimile report 122.” Ans. 46; Shetty col.
2:43–48.
Combinability of Shetty, Oberlander, and Cheng
With regard to claims 26 and 30, parent claims to appealed claim 32,
Appellant argues that the Examiner’s combination of Shetty, Oberlander,
and Cheng would require an improper change to the principle of operation of
Shetty, reconfiguring Shetty to have information managers send status
check-in messages in real time. App. Br. 38.
Appellant’s argument regarding this combination fails for the same
reasons as the combination of Shetty and Wewalaarachchi. The Examiner
does not propose changing Shetty to real-time operation. Ans. 49. Further,
the Examiner relied on Cheng for its teachings of a normal status message
indicating normal operation. We agree with the Examiner that there is no
reason why introducing additional messages would destroy the principle of
operation of Shetty. Ans. 50.
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Appellant again argues that the Examiner exercised impermissible
hindsight in combining references, in that the Examiner’s stated reasoning
repeats one of the objectives of the ’601 patent. App. Br. 39. This argument
is not persuasive. Just as discussed supra with respect to the combination of
Shetty and Wewalaarachchi, we find that the Examiner provided articulated
reasoning showing motivation to combine. We find that Shetty teaches the
objective of providing notification by plural methods, such as “electronic
mail message or report 114 or by an pager report via a pager 116 or by a
facsimile report 122.” Ans. 46, 51; Shetty col. 2:43–48.
Combinability of Shetty, Oberlander, Cheng, and Wewalaarachchi
With respect to the rejection of claim 32, Appellant argues that Shetty,
Oberlander, Cheng, and Wewalaarachchi are not properly combinable, in
that the Examiner has not explained how and why the combination would
take place, the combination would require an improper change in Shetty’s
principle of operation, Wewalaarachchi teaches away from combination with
Shetty, and the combination could only be made through impermissible
hindsight. App. Br. 40–46.
As discussed supra, Appellant previously presented these arguments
concerning the combination of Shetty and Wewalaarachchi alone. We are
not persuaded that the Examiner erred. We agree with the Examiner’s
conclusion that it would have been obvious to modify Shetty in view of
Wewalaarachchi’s teaching of normalizing incoming messages into a
uniform format. Final Act. 33. Appellant’s argument concerning principle of
operation fails because the Examiner does not propose to convert Shetty
from batch to real-time operation. See App. Br. 42. Appellant’s argument
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that Wewalaarachchi teaches away from Shetty is unpersuasive for the same
reason: the Examiner does not propose to modify Shetty to real-time
operation. See App. Br. 44–45; Ans. 52. As mentioned supra, we are not
persuaded that the Examiner’s combination involves improper hindsight,
because Shetty suggests the advantage of adaptability to a variety of forms
of electronic communication. See App. Br. 46; Shetty col. 2:43–48.
We conclude that the Examiner did not err in rejecting appealed
claims 3, 16, 24, 32, 42, and 43, and stated reasons to combine the cited
references having a rational underpinning. We sustain the Examiner’s
§ 103(a) rejection of claims 3, 16, 24, 42, and 43 over Shetty and
Wewalaarachchi. We sustain the Examiner’s § 103(a) rejection of claim 32
over Shetty, Oberlander, Cheng, and Wewalaarachchi.
Substantial New Question of Patentability
Appellant argues in the Brief that no substantial new question of
patentability exists because the same question was previously presented to
the Board. App. Br. 47. Appellant contends that the same references and/or
same or “repackaged” arguments were presented in one or more petitions for
inter partes review. Id. at 50.
Appellant’s arguments, however, are untimely and are, therefore, not
before us. Notably, Appellant must first request reconsideration of the SNQ
before the Examiner before we can review that issue. Manual of Patent
Examining Procedure (MPEP) § 2274(VI) (9th ed. Rev. 08.2017, Jan. 2018).
That was not done here.
Appellant’s response to the Examiner’s first action in reexamination,
filed September 20, 2018, does not request reconsideration of the SNQ
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finding before the Examiner. Appellant’s Response to the Final Action in
Reexamination argues that the USPTO improperly granted the request for
reexamination. However, Appellant’s argument was that the Board should
deny review under 35 U.S.C. § 325(d) because “the same or substantially the
same prior art or arguments previously were presented to the office.”
35 U.S.C. § 325(d); Appellant’s Response filed Feb. 5, 2019. Appellant did
not request reconsideration, before the Examiner, of the conclusion under 35
U.S.C. § 304 that a substantial new question of patentability exists.4
Because we conclude that the question of the Examiner’s SNQ
determination is not properly before us, we are unpersuaded of error in the
Examiner’s SNQ determination.

CONCLUSIONS
1. Shetty teaches an exception message sent to at least one remote
communications device.
2. The combination of Shetty and Wewalaarachchi suggests “storing
the normalized message in a normalized message database on the computer
server.”

4 We observe, for completeness of the record, that Appellant petitioned
under 37 C.F.R. § 1.181 to vacate the reexamination order, and that the
petition was dismissed and ultimately denied. Petition filed November 8,
2017; Decision Dismissing Petition mailed June 15, 2018; Decision Denying
and Expunging Petition mailed October 24, 2018. These petition decisions
are not reviewable by the PTAB, and the filing of the petitions does not
affect our conclusion that Appellant did not request reconsideration of the
SNQ before the Examiner.
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3. The combination of Shetty and Cheng suggests an interface unit
periodically generating a normal status message indicative of the proper
operation of a piece of equipment to which a sensor is connected.
4. The Examiner did not err in combining Shetty and Wewalaarachchi
to achieve the claimed invention.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
3, 16, 24,
42, 43
103 Shetty,
Wewalaarachchi
3, 16, 24,
42, 43

32 103 Shetty, Oberlander,
Cheng,
Wewalaarachchi
32
Overall
Outcome

3, 16, 24,
32, 42, 43

ORDER
The Examiner’s decision to reject claims 3, 16, 24, 32, 42, and 43 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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CC

Patent owner:

STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.,
WASHINGTON, DC 20005

Third Party Requester:

SUGHRUE MION, PLLC
2100 PENNSYVANIA AVENUE, NW, SUITE 800,
WASHINGTON, DC 20037