DELTA T, LLCDownload PDFPatent Trials and Appeals BoardJul 20, 20212020006660 (P.T.A.B. Jul. 20, 2021) Copy Citation 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. 16/265,461 02/01/2019 James M. DESMET 1527-533 CON II 5875 35161 7590 07/20/2021 DICKINSON WRIGHT PLLC - WASHINGTON, DC 1825 EYE ST., NW SUITE 900 WASHINGTON, DC 20006 EXAMINER SCHULT, ALLEN ART UNIT PAPER NUMBER 3762 NOTIFICATION DATE DELIVERY MODE 07/20/2021 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): dwpatents@dickinsonwright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES M. DESMET, CHRISTIAN R. TABER, and DAVID R. BANKS Appeal 2020-006660 Application 16/265,461 Technology Center 3700 Before JENNIFER D. BAHR, DANIEL S. SONG, and MICHAEL L. WOODS, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 19–36. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). The Appellant identifies the real party in interest as Delta T, LLC. Appeal Br. 3. Appeal 2020-006660 Application 16/265,461 2 CLAIMED SUBJECT MATTER The claims are directed to an integrated thermal comfort control system that utilizes circulating fans. Claim 1, reproduced below, is illustrative of the claimed subject matter: 19. A system for providing thermal comfort in a space comprising a plurality of interconnected zones, comprising: at least one fan positioned in each zone of the space, the at least one fan comprising an overhead fan for circulating air within the space and mounted to a ceiling in a room including the space comprising the plurality of interconnected zones; a first sensor for sensing an occupancy condition in at least one of the zones; and a controller adapted for controlling one of the at least one fans independent of another of the at least one fans based on the sensed condition in the at least one zone including the controlled fan. Appeal Br. 16 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Sayegh US 4,407,447 Oct. 4, 1983 Imaiida US 5,029,451 July 9, 1991 Mehta US 5,627,527 May 6, 1997 Parker US 5,996,898 Dec. 7, 1999 Hornback US 2005/0078837 A1 Apr. 14, 2005 Smith US 2009/0208333 A1 Aug. 20, 2009 Toy US 2010/0291858 A1 Nov. 18, 2010 Oexman US 2011/0010014 A1 Jan. 13, 2011 Aiken US 2011/0127340 A1 June 2, 2011 Fadell 2012/0125592 A1 May 24, 2012 Appeal 2020-006660 Application 16/265,461 3 REJECTIONS 1. Claims 31 and 32 are rejected under 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite. Final Act. 5. The Examiner also rejects various claims under pre-AIA 35 U.S.C. § 103(a) as follows: 2. Claims 19–22, 24–26, 34, and 35 as being unpatentable over Imaiida in view of Parker. Final Act. 7. 3. Claim 23 as being unpatentable over Imaiida in view of Parker and Fadell. Final Act. 9. 4. Claim 27 as being unpatentable over Imaiida in view of Parker and Toy. Final Act. 10. 5. Claim 28 as being unpatentable over Imaiida in view of Parker and Mehta. Final Act. 10. 6. Claim 29 as being unpatentable over Imaiida in view of Parker and Oexman. Final Act. 11. 7. Claim 30 as being unpatentable over Imaiida in view of Parker and Hornback. Final Act. 11. 8. Claims 31 and 32 as being unpatentable over Imaiida in view of Parker and Aiken. Final Act. 12. 9. Claim 33 as being unpatentable over Imaiida in view of Parker and Smith. Final Act. 13. 10. Claim 36 as being unpatentable over Imaiida in view of Parker and Sayegh. Final Act. 13. Appeal 2020-006660 Application 16/265,461 4 OPINION Rejection 1: Indefiniteness The Examiner rejects claims 31 and 32 as being indefinite, due to the terms “particular individual” and “a device” recited in claims 31 and 32, respectively. Final Act. 5. Claim 31 Claim 31 recites “[t]he system of claim 19, wherein the sensor is adapted for detecting the presence of a particular individual.” Appeal Br. 18 (Claims App.). According to the Examiner, “[t]he term ‘particular individual’ . . . has multiple interpretations which renders the claim indefinite.” Final Act. 5. Specifically, the Examiner explains that the recited sensor “can sense the particular individual the same as any other individual, or the sensor can identify who the particular individual is and sense that.” Final Act. 5.2 The Appellant argues that the rejection is improper and that the Examiner’s interpretation that “the sensor can identify who the particular individual is and sense that” is the correct interpretation.” Appeal Br. 8 (citing Non-Final Action 5 (Jan. 27, 2020)). We agree with the Appellant that this rejection is improper because the plain and ordinary meaning of the limitation “a particular individual” is not amenable to multiple interpretations. The Examiner’s assertion that “particular individual” can be interpreted such that the sensor “can sense the particular individual the same 2 The Examiner also states that “[f]or the purposes of examination, ‘particular individual’ has been construed to be that the sensor can recognize the specific person.” Final Act. 5. Appeal 2020-006660 Application 16/265,461 5 as any other individual,” improperly renders the term “particular” meaningless. Therefore, we reverse this indefiniteness rejection of claim 31. Claim 32 Claim 32 recites “[t]he system of claim 19, further including a device carried by an individual and adapted for being detected by from [sic] the sensor.” Appeal Br. 18 (Claims App.). According to the Examiner, the recitation “a device” renders the claim indefinite because it invokes 35 U.S.C. § 112, sixth paragraph, but the Specification “fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. There is no further structure present in the claims for this function of being carried and being detected by the sensor.” Final Act. 5. The Appellant argues that the Specification “expressly discloses the corresponding structure for ‘the device’ so that one of ordinary skill in the art would recognize the structure for performing the claimed function,” and in particular, discloses that “a person may have a device, such as a smart phone.” Appeal Br. 9 (citing Spec. ¶ 983, i.e., Spec. 21). Thus, the Appellant asserts that “when claim 32 is read in light of the specification, one skilled in the art would understand what is claimed.” Reply Br. 2. The Appellant’s argument is unpersuasive. The cited portion of the Specification teaches that “a person (P) may have a device (D), such as a smart phone, adapted to communicate with either the fan (110) in a particular zone, or with the master controller (160) (but potentially limited to control of a particular fan or fans in the associated zone).” Spec. 21. 3 The Appellant cites to the corresponding publication US 2019/0162433 A1 (pub. May 30, 2019). Appeal 2020-006660 Application 16/265,461 6 Accordingly, the disclosed device, i.e., smart phone, is used to communicate with, and control the fan/controller, but is not detected by the sensor as recited by claim 32. Thus, the Examiner is correct that although the Specification does disclose a device, “there is no mention of any devices performing the corresponding function [of] being detected by the sensor,” and that the disclosed devices are “mentioned in a different context for a different purpose.” Ans. 13.4 Accordingly, because the Appellant’s argument does not persuade us of error, we affirm the Examiner’s indefiniteness rejection of claim 32. Rejection 2: Imaiida in View of Parker The Examiner rejects claims 19–22, 24–26, 34, and 35 as being unpatentable over Imaiida in view of Parker. Final Act. 7. As to independent claim 19, the Examiner finds that Imaiida discloses a system having a ceiling fan positioned in each of a plurality of interconnected zones of a space as claimed, but fails to disclose a sensor for sensing an occupancy condition in at least one of the zones, or a controller adapted for controlling a fan independent of another fan based on the sensed condition in the at least one zone as claimed. Final Act. 7 (citing Imaiida Fig. 9). The Examiner finds that Parker discloses a fan with a sensor and a controller, and further finds that such “sensors of [P]arker attached to each fan would control each fan in accordance with the specific sensor attached to it via the control system in Parker.” Final Act. 8 (citing Parker Fig. 6). The 4 The Examiner does not reject this claim based on lack of written description. Appeal 2020-006660 Application 16/265,461 7 Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify the system of Imaiida: by adding sensors and local controllers to each ceiling fan, as taught by Parker, with a reasonable expectation of success of arriving at the claimed invention . . . with the motivation of allowing the ceiling fans to operate even when the HVAC system does not need to supply airflow allowing the system to better circulate air when people are present and allow for a more comfortable environment. Final Act. 8 (emphasis added). We agree with the Examiner’s findings and conclusion, and address the Appellant’s arguments. The Appellant argues that the prior art does not “contemplate[] controlling the fan in at least one zone independent of another fan based on the sensed condition” considering that Imaiida “fails to disclose a sensor or a controller,” and that “Parker only discloses turning a single ceiling fan on and off based on a passive infrared sensor sensing room occupancy.” Appeal Br. 10–11. We initially note that the Appellant’s assertion as to Imaiida is incorrect in that Imaiida actually does disclose a controller. See Imaiida, col. 5, ll. 49–58 (“wherein means for starting and stopping the fan in synchronization with the start and stop of the conditioning air generator is provided in an operation control device of the conditioning air generator.”); see also Ans. 15 (the rejection finds that “Imaiida does not teach a controller adapted for controlling a fan independent[ly]. This is not merely stating that no controller exists in Imaiida (which is obviously incorrect), but instead that no controller performing the claimed control is found in Imaiida.”). The rejection set forth modifies the apparatus of Imaiida to “add[] sensors and local controllers to each ceiling fan, as taught by Parker.” Final Act. 8. Appeal 2020-006660 Application 16/265,461 8 In addition, the Appellant’s argument is unpersuasive because it essentially attacks Imaiida and Parker individually. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). As the Examiner explains: with the controllers of Figure 6 of Parker placed on the EACH fan [of Imaiida], both fans have the respective controller and sensors of Parker. Therefore, each fan in their separate zone is controlled based on the sensor data in that specific zone thereby being independent of the other fan’s zone because they are collecting and controlling based on completely different, local data. Ans. 13. The Appellant also argues that “the Examiner fails to provide any reason based on a rational underpinning for modifying the Imaiida reference to utilize a sensors and local controllers for each fan.” Appeal Br. 11. However, the Examiner’s articulated reason of “allowing the ceiling fans to operate even when the HVAC system does not need to supply airflow allowing the system to better circulate air when people are present and allow for a more comfortable environment” is based on rational underpinnings. Final Act. 8; see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). The Appellant also argues that the reason articulated by the Examiner in modifying the system of Imaiida “does not qualify as an articulated reason for combining the references,” and that the rejection “is merely speculating about a proposed benefit of the combination without citing any Appeal 2020-006660 Application 16/265,461 9 substantial evidence to support the combination.” Appeal Br. 11–12. According to the Appellant, the asserted benefit “is completely absent in the cited references and the only motivation in the record for combining those references in the manner proposed by the Action is found in the present application.” Appeal Br. 12. However, notwithstanding the fact that the reason for the proposed combination need not be explicitly set forth in the applied art, we agree with the Examiner that “circulating air while people are present to create a more comfortable environment is literally the point of Parker and one of ordinary skill in the art would certainly be motivated to add that functionality to the fans of Imaiida.” Ans. 14; see Parker, col. 1, ll. 22–25. The Appellant further argues that because Imaiida discloses starting and stopping the fan synchronously with the start and stop of the air conditioner, it teaches away from the proposed combination. Appeal Br. 12. However, we agree with the Examiner that: the combination does not change the primary function of Imaiida, but merely adds an addition[al] mode/feature to the ceiling fans. If the HVAC system is turned on, the ceiling fans are still synchronously activated . . . [and] while the HVAC system is not required to change the temperature or other condition of the air, circulation of the air is still beneficial and having the controller/sensors of Parker on EACH fan would allow for that additional feature of being able to circulate airflow while users are present while not changing the primary operation of Imaiida. Ans. 14. Accordingly, if the HVAC system is off and a condition warranting circulation is not present, such as lack of occupancy, the fans may be turned off. Thus, we do not agree with the Appellant that Imaiida Appeal 2020-006660 Application 16/265,461 10 teaches away from providing such additional functionality provided by the proposed modification to Imaiida. Therefore, in view of the above, we affirm the Examiner’s rejection of independent claim 19. Except for specific arguments directed to various dependent claims addressed below, the Appellant relies on dependency for patentability of dependent claims 20, 25, 26, and 34. Accordingly, claims 20, 25, 26, and 34 fall with claim 19. Appeal Br. 12. Claim 21 Claim 21 depends from claim 19 and recites “wherein the controller comprises a master controller for controlling each fan in the space.” Appeal Br. 16 (Claims App.). The Appellant argues that “if Imaiida does not disclose the controller recited in claim 19, it cannot disclose that the controller is a master controller as recited in claim 21.” Appeal Br. 13. However, as discussed above, the assertion of the Appellant as to Imaiida lacking a controller is incorrect. The Appellant also submits new arguments in its Reply Brief seeking to distinguish the recited “master controller” from the controller of Imaiida. Reply Br. 4. However, we decline to consider such belated arguments submitted without a showing of good cause for the delay. 37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply brief which was not raised in the appeal brief . . .with not be considered by the Board . . . unless good cause is shown.”). Therefore, we affirm this rejection as to claim 21. Claim 22 Claim 22 depends from claim 19 and recites “further including an individual controller for controlling at least one of the fans.” Appeal Br. 17 (Claims App.). The Appellant argues that because of its dependency on Appeal 2020-006660 Application 16/265,461 11 claim 19, claim 22 requires more than one fan, and that because “Parker only discloses a single ceiling fan . . . it cannot possibly disclose an individual controller for each of the fans.” Appeal Br. 13. However, as the Examiner explains, the Appellant argues Parker individually, and in the rejection “[t]he control/sensor system of Parker is applied to EACH fan of Imaiida, thereby giving them independent control based on their respective local data collected from their own sensors.” Ans. 15. The Appellant further argues that the rejection is improper because “claim 19 recites a controller, while claim 22 recites an individual controller. The Examiner appears to point to the same controller in Parker as both of these elements, which is improper.” Appeal Br. 13. However, the basis of the Appellant’s distinction between “a controller” and “an individual controller” is not clarified by any limitation that distinguishes structure or function therebetween. In particular, the recited “controller” of claim 19 is “for controlling one of the at least one fans independent of another,” while the recited “individual controller” of claim 21 is “for controlling at least one of the fans.” Appeal Br. 16–17 (Claims App.). Accordingly, it is not apparent that there is any distinction between the controllers in these claims so as to distinguish the controllers provided by the proposed combination of Imaiida and Parker.5 Moreover, to any extent that an “individual controller” is separate from a “controller,” we further observe that making elements of a device integral or separate is generally considered to be an obvious design choice and does not render an invention patentable unless such construction is for an unobvious purpose or results in an unobvious effect. See In re 5 We note that the Examiner did not reject this claim as being indefinite. Appeal 2020-006660 Application 16/265,461 12 Larson, 340 F.2d 965, 968 (CCPA 1965); In re Fridolph, 309 F. 2d 509, 512 (CCPA 1962). Therefore, in view of the above, we also affirm the rejection of claim 21. Claim 24 Claim 24 depends from claim 19 and recites “further including an HVAC system for conditioning the space, said HVAC system controlled by the controller.” Appeal Br. 17 (Claims App.). The Appellant argues that “[a]gain, the Examiner admits that Imaiida does not teach a controller in claim 19, so it cannot disclose that the HVAC system is controlled by the controller that is admittedly lacking.” Appeal Br. 14. However, this argument is unpersuasive for reasons already discussed above in that Imaiida discloses a controller. See Ans. 15. Claim 35 Claim 35 depends from claim 19 and recites “wherein the controller is adapted to activate or shutdown a fan in any zone depending upon a sensed thermal and/or occupancy condition.” Appeal Br. 19 (Claims App.). The Appellant argues that “nowhere does Parker even remotely contemplate activating or shutting down ‘a fan in any zone’ as it only discloses a single fan in a single zone.” Appeal Br. 14–15. Again, the Appellant argues Parker individually. Imaiida clearly discloses multiple fans, and thus, multiple zones. Hence, the rejection of claim 35 is also affirmed. Rejections 5, 7, and 8: Claims 28 and 30–32 As to claims 28 and 30–32, the Appellant does not proffer separate arguments directed to the limitations of these claims, but relies on their dependency on claim 19 for patentability, and also asserts that the Appeal 2020-006660 Application 16/265,461 13 Examiner’s application of the additional tertiary references in these rejections does not remedy the deficiencies of the combination of Imaiida and Parker. Appeal Br. 12. Accordingly, having found no deficiencies as to the proposed combination of Imaiida and Parker, we affirm these rejections. Rejections 3, 4, and 6: Claims 23, 27, and 296 These claims recite peripherally related features such as a hand held device (claim 23) or an automated blind (claim 29), or the positioning of the sensors (claim 27). Appeal Br. 17–18 (Claims App.). The Examiner relies on various tertiary references in rejecting the claims, and reasons that the proposed combination would have been obvious in order to make the system “more convenient” or “more easily accessible.” Final Act. 10, 11. In addition to relying on ultimate dependency on claim 19, the Appellant simply argues that such reasons of convenience or accessibility “cannot qualify as a proper motivation or reason to combine the reference teachings.” Appeal Br. 13–14. We do not agree with the Appellant. General considerations such as convenience and accessibility can serve as a basis for modifying a prior art apparatus. See Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (implicit motivation to 6 For Rejections 3, 4, 6, 9, and 10 addressed here and below, the Appellant fails to provide separate headings identifying the rejection being argued as required by 37 C.F.R. § 41.37(c)(iv) (“Each ground of rejection contested by appellant must be argued under a separate heading, and each heading shall reasonably identify the ground of rejection being contested.”). Although we overlook this deficiency in this case, the Appellant is advised that the Board need not consider such improperly presented arguments. Appeal 2020-006660 Application 16/265,461 14 combine exists when the improvement is technology-independent and the combination of references results in a product that is more desirable, for example, because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient). In that regard, the Examiner explains in further detail how the proposed combination would improve convenience or accessibility, and thus, would have been obvious to one of ordinary skill. Ans. 15–16. The Appellant does not provide a persuasive rebuttal. Thus, we agree with the Examiner’s assessments, and affirm the rejections of claims 23, 27, and 29. Rejection 9: Claim 33 Claim 33 depends from claim 19 and recites “wherein a user is allowed to control the fan in the at least one zone by transmitting a code to the controller.” Appeal Br. 18 (Claims App.). The Examiner rejects claim 33, finding that “Smith teaches a user is allowed to control the fan in the at least one zone by transmitting a code to the controller.” Final Act. 13 (citing Smith ¶ 112, ll. 4–11). The Examiner concludes that it would have been obvious for one of ordinary skill in the art to have further modified Imaiida “by making the user enter a code to be able to control the system, as taught by Smith . . . with the motivation of preventing anyone except specific people from messing with the HVAC controls.” Final Act. 13. The Appellant argues that the Examiner relies on the remote control of Smith for this teaching, but “the passage of Smith that the Examiner relies upon . . . is silent regarding ‘transmitting a code.’” Appeal Br. 14. Although the cited portion of Smith does not include the term “transmitting a code,” the Examiner is correct that it teaches that “the user must enter a password to Appeal 2020-006660 Application 16/265,461 15 prevent setting from being unwantedly changed.” Ans. 16; see Smith ¶ 12, ll. 4–11. We agree with the Examiner that “[s]ubmitting a password with the remote control to the control system certainly qualifies as transmitting a code.” Ans. 16. Accordingly, we affirm the rejection of claim 33. Rejection 10: Claim 36 Claim 36 depends from claim 19, and recites, inter alia, that “the controller is adapted for controlling an HVAC system.” Appeal Br. 19 (Claims App.). The Appellant argues that because “Imaiida does not disclose the controller recited in claim 19, it cannot disclose that the controller is adapted for controlling an HVAC system recited in claim 36.” Appeal Br. 15. This argument is unpersuasive for the reasons discussed above relative to claims 19 and 21. Ans. 15. Accordingly, we affirm the rejection of claim 36. CONCLUSION The Examiner’s rejections are affirmed, except for the indefiniteness rejection of claim 31, which is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 31, 32 112 Indefiniteness 32 31 19–22, 24– 26, 34, 35 103(a) Imaiida, Parker 19–22, 24– 26, 34, 35 23 103(a) Imaiida, Parker, Fadell 23 27 103(a) Imaiida, Parker, Toy 27 Appeal 2020-006660 Application 16/265,461 16 28 103(a) Imaiida, Parker, Mehta 28 29 103(a) Imaiida, Parker, Oexman 29 30 103(a) Imaiida, Parker, Hornback 30 31, 32 103(a) Imaiida, Parker, Aiken 31, 32 33 103(a) Imaiida, Parker, Smith 33 36 103(a) Imaiida, Parker, Sayegh 36 Overall Outcome 19–36 TIME PERIOD FOR 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation