Cushing, Vincent J. et al.

Patent Trials and Appeals Board

May 26, 2020

13405153 - (R) (P.T.A.B. May. 26, 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.
13/405,153 02/24/2012 Vincent J. Cushing A202884 6703
23373 7590 05/26/2020
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
KONERU, SUJAY
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
05/26/2020 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):
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
sughrue@sughrue.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VINCENT J. CUSHING and GREGOR P. HENZE

Appeal 2019-001268
Application 13/405,153
Technology Center 3600

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
MICHAEL A. VALEK, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a request for rehearing under 37 C.F.R. § 41.79 (“Req. Reh’g”)
of the Decision on Appeal entered January 15, 2020 (“Dec.”). We have
considered Appellant’s arguments, but are not persuaded to change the
outcome of the Decision with respect to the rejection under 35 U.S.C. § 103.
We do, however, grant Appellant’s request to designate our prior Decision
affirming the rejection under 35 U.S.C. § 103 as a new ground of rejection
under 37 C.F.R. § 41.50(b).

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Application 13/405,153

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REPRESENTATIVE CLAIM
Appellant requests a rehearing of the Decision affirming the rejection
of claims 21–31 and 37–58 as obvious in view Drees, Brickfield, and
Crabtree. Dec. 2. Claim 21 is illustrative and is reproduced below (bracketed
numbers have been added for reference to the steps recited in the claim):
21. A method of managing energy consumption in a portfolio of
facilities, each facility having at least one controllable energy-
consuming component and at least one energy response
attribute, the method comprising the steps of:
[1] unbundling energy response attributes from each of
the facilities;
[2] rebundling the unbundled attributes into aggregations,
with at least one said aggregation including attributes from
plural facilities and representing a synthetic resource;
[3] predicting energy consumptive behavior of said
synthetic resource in response to possible future stimuli and
based on said attributes included in said synthetic resource; and
[4] controlling the components of each building, via a
processor-based control system, to support deployment of said
synthetic resource in at least one market;
[5] wherein at least one of said unbundling and
rebundling steps are optimized with respect to at least one
objective.
DISCUSSION
Rejected independent claim 21 is directed to a method of “managing
energy consumption in a portfolio of facilities, each facility having at least
one controllable energy consuming component and at least one energy
response attribute.” The claim requires unbundling and rebundling of
“energy response attributes” (steps [1] and [2]), predicting energy
consumptive behavior (step [3]), controlling the components of each
building (a facility) (step [4]), where “at least one of said unbundling and
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rebundling steps are optimized with respect to at least one objective” (step
[5]).
In the Decision on Appeal, the obviousness rejection of the claims
over Drees, Brickfield, and Crabtree was affirmed. The Examiner cited
Drees for describing substantially all the steps of the claimed method. Dec.
3. The Examiner further relied on Brickfield for disclosing rebundling of
energy response attributes as step [2]. Id. Crabtree was also cited by the
Examiner for disclosing steps [2]–[4] of claim 21. Id.

New ground of rejection:
Appellant states that the Decision “proceeded to support the
examiner-stated rejection with various detailed rationales not found in the
rejection as stated, sufficiently widespread and fundamental as to change the
underlying rationale for the rejection, and constitute a new ground of
rejection.” Req. Reh’g 2. Appellant states that the Decision “presents a
detailed analysis of various parts of Drees that the examiner never referred
to and never alleged as support for his rejection.” Id. at 3. Appellant states
that “from the last six lines of page 9 to the first six lines of page 13, and in
the discussion of Brickfield at pages 17-18, the Board presents a discussion
of Brickfield that is not found anywhere in the arguments of the examiner in
the final Office action.” Id. Appellant further states that it may amend the
claims “to obviate the positons now taken by the Board.” Id. Upon
reflection, we grant Appellant’s request to designate our prior Decision
affirming the rejection under 35 U.S.C. § 103 a new ground of rejection
under 37 C.F.R. § 41.50(b).

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Energy response attribute
Appellant argues that the term “energy response attribute” as recited
in the claim was misconstrued by the Examiner. Req. Reh’g 2.
We disagree. The Decision addresses the proper interpretation of this
term and agreed with Examiner’s interpretation that an energy response to a
change in an HVAC setpoint meets the limitation of an energy response
attribute. Dec. 5–6. The Decision cited paragraphs 38 and 40 of Drees to
support this conclusion; the Decision also referred to rejected dependent
claim 29. Id. The Examiner also cited paragraphs 38 and 40, inter alia, of
Drees as meeting the “energy response attribute.” Final Act. 14 (in
discussing claim 29). Accordingly, we find no difference in the way the term
“energy response attribute” was construed by the Examiner and in the
Decision. Because Appellant had challenged the Examiner’s interpretation
of this term (Appeal Br. 15–17), the Decision responded by explaining how
the term should be construed in light of the Specification, but we did not
interpret the term any differently than did the Examiner.
Unbundling and rebundling of “energy response attributes”
Steps [1] and [2] of claim 21 requires unbundling and rebundling of
“energy response attributes.” Appellant argues that there is “no mention . . .
of unbundling the thermal energy storage attributes of multiple buildings,
nor is there any discussion of combining these unbundled attributes into an
aggregation representing a synthetic resource” in paragraphs 91 and 92 of
Drees cited in the Board Decision. Req. Reh’g 4–5.
This argument is not persuasive. The Decision on Appeal explained
how paragraphs 91 and 92 of Drees describes managing subsystems of a
building together, which the Decision determined meets the claimed
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limitation “rebundling” “attributes into aggregations.” Dec. 17. The Decision
reasoned that because the subsystems are bundled together, “they necessarily
were unbundled from the building and then rebundled in a different grouping
to control their performance.” Id. See also Dec. 10–12 for the same
reasoning based on Brickfield’s disclosure. Appellant did not identify a
defect in this rationale.
The claim requires in step [2] that the aggregations are rebundled into
a “synthetic resource.” The Decision explained, citing to the Specification
what a “synthetic resource” means, namely, “an aggregation of attributes.”
Dec. 13. Each of Drees, Brickfield, and Crabtree were found in the Decision
to describe aggregated attributes, therefore meeting the claim limitation.
Dec. 9–10, 13, 17. Appellant did not identify a defect in this fact-finding nor
reasoning.

Step [3] of claim 21
Step [3] of claim 21 recites:
predicting energy consumptive behavior of said synthetic
resource in response to possible future stimuli and based on
said attributes included in said synthetic resource.
The Decision cited the Examiner’s discussion of Crabtree as
disclosing this step, and stated that “Appellant did not identify a defect in
Crabtree’s disclosure nor the Examiner’s reasoning.” Dec. 15. Appellant did
not further address this issue in the Request for Rehearing.
The Decision also cited disclosure in Brickfield for step [3] of claim
21. Dec. 8. Appellant states that the Decision is incorrect because Brickfield
at paragraph 109
is predicting energy consumptive behavior of a building in
response to possible future stimuli, but is not predicting energy
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consumptive behavior of a synthetic resource in response to
possible future stimuli, where a synthetic resource is something
represented by an aggregation of energy response attributes that
have been unbundled from a plurality of buildings.
Req. Reh’g 5.
This argument does not persuade us that we misapprehended a point
or made an error in the Decision. For clarity, paragraph 109 of Brickfield is
reproduced below:
Building managers, financial managers, energy managers,
and/or others via browser-based user interface 27 may view
information that would be of interest to them. For example, a
building manager may use the system of FIG. 5 to monitor the
current state of devices 11, 11A, 11B in the buildings 10, 10A,
10B. Building managers can see the temperature setting of air-
conditioners, the consumption of chillers, the speed of fans, etc.
The building managers can also optionally simulate one or
more “what if” scenarios, using the intelligent agents, to predict
the effect of control actions on the energy bill and the comfort
in the building. Building managers optionally may manipulate
the parameters of the intelligent agents, such as by constraining
the temperature band used by a “supply air rest” agent. The
building manager no longer needs to control individual devices
(as he would conventionally do) because the intelligent use of
energy system of FIG. 5 is “goal based”. The manager gives the
system a goal (such as to save 40 KW in the next two hours)
and the intelligent use of energy system of FIG. 5 determines
how to best achieve the goal. A building manager can rely on
and use the intelligent agents like highly specialized, 24x7 staff
members, switching them on or off, or giving them different
goals to accomplish.
Brickfield ¶ 109 (emphasis added).
Brickfield describes, in the paragraph reproduced above, monitoring
the state of “devices 11, 11A, 11B in the buildings 10, 10A, 10B.” Id.
Brickfield further explains that building managers “can see the temperature
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setting of air-conditioners, the consumption of chillers, the speed of fans,
etc.” Id. Brickfield describes using intelligent agents to implement control
actions to achieve energy goals. Id. In our opinion, this disclosure in
Brickfield teaches, and reasonably suggests, that specific devices (“devices
11, 11A, 11B,” such as air-conditioners, chillers, or fans, can be unbundled
from the buildings (“buildings 10, 10A, 10B”) and rebundled as an
aggregate and then controlled by the “intelligent agents” to achieve an
energy goal (“Building managers optionally may manipulate the parameters
of the intelligent agents, such as by constraining the temperature band used
by a ‘supply air rest’ agent.”). This reasoning is supported by Brickfield’s
disclosure in paragraphs 102:
The real-time queries and/or commands formulated by the data
processing or computer system 25 are communicated in real-
time via the network (such as the Internet) to the respective
protocol drivers 14, 14A, 14B which leads to devices 11, 11A,
11B being controlled in an overall energy use reducing manner
but with minimized discomfort or inconvenience to occupants
or users of buildings 10, 10A, 10B. Discomfort or
inconvenience to occupants or users of buildings 10, 10A, 10B
is considered and included in the data processing or computer
system 25 so that a particular energy-using device in the
plurality of devices 11, 11A, l1B will not be curtailed in its
energy use in a manner that would cause discomfort or negative
impact. Thus, certain energy-using devices (such as computer
equipment, hospital equipment, etc.) are treated differentially
and intelligently so as not to be subjected to energy curtailment
in the same manner as other energy-using devices, while other
energy-using devices that are otherwise identical but in
different buildings may be subjected to different energy
curtailment based on time of day and occupancy or the like in
the respective buildings.
Brickfield ¶ 102.
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It is clear from the above-reproduced passages that Brickfield is
describing controlling devices (11, 11A, 11B) in multiple buildings (10,
10A, 10B), and thus is “unbundling energy response attributes from each of
the facilities” because the energy attributes of each device are separated
from the building and then grouped together in an aggregate to be controlled
differently than other devices in the buildings (“certain energy-using devices
(such as computer equipment, hospital equipment, etc.) are treated
differentially and intelligently so as not to be subjected to energy curtailment
in the same manner as other energy-using devices”). This is discussed in the
Decision on pages 10–12.
Crabtree is also cited by the Examiner for these limitations. Dec. 13–
14 (see discussion of paragraphs 78 and 88 of Crabtree). Appellant did not
address Crabtree’s disclosure in the Request for Rehearing.

Step [4] of claim 21
With respect to step [4] of claim 21, Appellant further argues that
“aggregation of attributes from different buildings to represent a deployable
synthetic resource is not mentioned in the art” and therefore “there can
therefore be no teaching in the art as to the better allocation of resources and
optimization of transmission and distribution of the grid system and
improvement in management of markets that might have resulted from use
of such a synthetic resource.” Req. Reh’g 5.
The Decision provides evidence, as discussed above, that the concept
of unbundling energy response attributes from buildings and bundling them
together is described in at least each of Brickfield and Crabtree. Dec. 9–13.
While the terms used in the claims are different, it is clear that the cited
publications recognized the benefit of controlling different devices in the
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buildings to achieve an energy goal. Appellant has not persuasively
identified an error in the Decision with regard to these findings.
As to the “use of such a synthetic resource,” we assume that appellant
is referring to step [4] of claim 21 of “controlling the components of each
building, via a processor-based control system, to support deployment of
said synthetic resource in at least one market.” The Decision found that the
Examiner correctly applied Drees in meeting this limitation. The Decision
cited paragraph 69 of Drees, which is reproduced below:
The smart building manager 106 or the DR layer 112 may
further include control logic for purchasing energy, selling
energy, or otherwise participating in a real-time or near real-
time energy market or auction. For example, if energy is
predicted to be expensive during a time when the DR layer 112
determines it can shed extra load or perhaps even enter a net-
positive energy state using energy generated by solar arrays, or
other energy sources of the building or campus, the DR layer
112 may offer units of energy during that period for sale back
to the smart grid (e.g., directly to the utility, to another
purchaser, in exchange for carbon credits, etc.).
Drees ¶ 69.
Drees expressly describes deploying energy from the building in a
market (“the DR layer 112 may offer units of energy during that period for
sale back to the smart grid (e.g., directly to the utility, to another purchaser,
in exchange for carbon credits, etc”). Id. The Decision acknowledged that
this specific disclosure does not “describe deployment of a synthetic
resource from aggregated energy response attributes from multiple facilities
as required by the claim,” but explained that paragraph 91 of Drees discloses
managing subsystems in multiple buildings (“In such an example, the
building subsystems shown . . . may be a collection of building subsystems
for multiple buildings in a campus”). Dec. 16. Once the skilled worker is
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aware of this teaching from Drees that energy from a building may be
deployed back to market, it would have been obvious, as explained by the
Examiner, that the rebundled energy response attributes described in
Brickfield and Crabtree could also be deployed to achieve better allocation
of resources. Final Act. 11. Appellant did not adequately explain why this
reasoning is defective.

Claim 27, 40, and 51
Appellant states the Decision overlooked the requirement of claims
27, 40, and 51 that “the selection of the market in which to deploy and when
to deploy is part of the optimization step, inherently requiring that the
market and timing selection be based on some sort of optimization criteria.”
Req. Reh’g 6.
The claims recite “wherein optimizing at least one of said unbundling
and rebundling steps comprises selecting which of the markets in which to
deploy said synthetic resource and further selecting when said synthetic
resource is deployed.” The claims require that a market and resource is
selected to be deployed. Appellant did not explain what language in the
claim “inherently” invokes “timing” as an optimization criteria.
Consequently, we consider Appellant’s argument unavailing.

Claims 28, 41, and 52
Appellant states that claims 28, 41 and 52 require “optimization over
multiple time periods” and that if “the cited art teaches optimization over
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some period (which has not been shown), there is certainly no suggestion of
optimization over multiple time periods.” Req. Reh’g 6.
This argument is not persuasive. The claims use the term “multiple
time horizons.” The Decision interpreted that phrase and explained how it is
met by Drees. Dec. 25–26. Appellant did not explain why this reasoning is
inadequate.
Summary
Appellant did not identify any misapprehended or overlooked points.
37 C.F.R. § 41.52(a)(1).

CONCLUSION

Outcome of Decision on Rehearing:
Claims 35 U.S.C. § Reference(s)/Basis Denied Granted
21–31, 37–58 103 Drees, Brickfield,
Crabtree
21–31,
37–58

Final Outcome of Appeal after Rehearing:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
21–31,
37–58
103 Drees, Brickfield,
Crabtree
21–31,
37–58
21–31,
37–58
21–31,
37–58
112 Written description 21–31,
37–58

Overall
Outcome
21–31,
37–58
21–31,
37–58

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TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.

Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01.
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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). See 37 C.F.R.
§§ 41.50(f), 41.52(b).

GRANTED; 37 C.F.R. § 41.50(b)