Edward Koch

Patent Trials and Appeals Board

Aug 2, 2019

14481452 - (D) (P.T.A.B. Aug. 2, 2019)

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.
14/481,452 09/09/2014 Edward Koch H0044269-1161.1890101 8022
90545 7590 08/02/2019
HONEYWELL/STW
Patent Services
115 Tabor Road
P.O. Box 377
MORRIS PLAINS, NJ 07950
EXAMINER
HENRY, MATTHEW D
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
08/02/2019 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 EDWARD KOCH
____________

Appeal 2018-007008
Application 14/481,452
Technology Center 3600
____________

Before ST. JOHN COURTENAY III, CATHERINE SHIANG, and
SCOTT E. BAIN, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–8 and 10–21, which are all the claims pending in this application.1
Claim 9 is canceled. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.

1 The real party in interest is Honeywell International Inc. App. Br. 3.
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STATEMENT OF THE CASE 2
Introduction
Appellant’s claimed invention relates to “energy systems and
particularly to demand response systems.” Spec. ¶ 1.
Exemplary Claim
1. A demand management system comprising:
a demand response interface connectable to a
utility/ISO;
a demand dispatch subsystem connected to the demand
response interface and connected to one or more facilities that
are energy customers of the utility/ISO; and
a demand level optimization subsystem connected to the
demand dispatch subsystem; and wherein:
the demand dispatch subsystem monitors the energy
demand of a facility;
the demand dispatch subsystem and the demand level
optimization subsystem set an energy demand limit based on
costs to the facility of issuing the events needed to maintain the
energy demand limit and benefits to the facility of keeping the
energy demand of the facility within the energy demand
limit; and
the demand dispatch subsystem produces signals for the
facility to meet the energy demand limit based on the monitored
energy demand of the facility and the facility reduces energy
demand in response to the signals.
App. Br. 11, “CLAIMS APPENDIX.” (Emphasis added regarding the contested
limitations under 35 U.S.C. § 103).

2 We herein refer to the Final Office Action, mailed Aug. 23, 2017 (“Final
Act.”); Appeal Brief, filed Jan. 31, 2018 (“App. Br.”), including the
corrected Claims Appendix to the Appeal Brief, filed on March 14, 2018;
the Examiner’s Answer, mailed Apr. 27, 2018 (“Ans.”), and the Reply Brief,
filed June 27, 2018 (“Reply Br.”).
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Rejection
Claims 1–8 and 10–21 are rejected under 35 U.S.C. § 103 as being
obvious over the combined teachings and suggestions of Taft et al. (US
2010/0138065 A1, published June 3, 2010) (hereinafter “Taft”), and Parsons
et al. (US 2013/0253721 A1; published Sept. 26, 2013) (hereinafter
“Parsons”).
Grouping of Claims
Based upon Appellant’s arguments (App. Br. 6–10), and our
discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the
rejection of claims 1–8 and 10–21 on the basis of representative claim 1.

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 waived.
See 37 C.F.R. § 41.37(c)(1)(iv). Based upon our review, and for the reasons
discussed below, Appellant does not provide sufficient argument or evidence
to persuade us the Examiner erred with respect to all rejections on appeal.
See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

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Rejection of Representative Independent Claim 1 under 35 U.S.C. § 103
Issue: Under 35 U.S.C. § 103, did the Examiner err by finding Taft
and Parsons collectively teach or suggest the contested limitations:
the demand dispatch subsystem and the demand level
optimization subsystem set an energy demand limit based on
costs to the facility of issuing the events needed to maintain the
energy demand limit and benefits to the facility of keeping the
energy demand of the facility within the energy demand
limit; and the demand dispatch subsystem produces signals for
the facility to meet the energy demand limit based on the
monitored energy demand of the facility and the facility reduces
energy demand in response to the signals.
within the meaning of representative claim 1?3 (Emphases added). We note
the disputed limitations of claim 1 are recited in similar form having
commensurate scope in remaining independent claims 6 and 10. See App.
Br. 6–9. Appellant focuses the arguments in the Briefs on the demand limit
of a facility, as recited in claim 1. Id.

The Examiner’s Findings
The Examiner finds Taft (¶¶ 9, 19–21, 26–31, 40, 81–84) and Parsons
(¶¶ 4–5, 7, 49, 168) teach or suggest the demand limit of a facility, in
accordance with the supporting evidence relied upon in the Final Office
Action 5–9.

3 We give the contested claim limitations the broadest reasonable
interpretation (“BRI”) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Appellant’s Contentions
Specifically, Appellant contends:
In applying Taft to independent claims 1 and 6, the
Office Action indicates ¶¶ 0026, 0027, and 0031 disclose a
system setting an energy demand limit of a facility. . . . Instead
of disclosing a demand limit of/for a facility, the cited portions
of Taft disclose a supply limit of the utility, which cannot be
considered to reasonably disclose a demand limit of a
facility, particularly in the context of the claimed subject matter
. . .
In applying Parsons to the independent claims, the
Examiner appears to indicate that ¶¶ 0004, 0005, 007, 0038,
0049, 0058, and ¶ 0168 of Parsons disclose setting a demand
limit of a facility and sending signals to a facility to maintain a
load demand below a demand limit. . . . The Office Action
provides no rationale for combining the different concepts
disclosed in Parsons and it is not clear how they individually or
in combination apply to the claimed concepts of setting a
demand limit for a facility based on costs and benefits to the
facility. . . .
As a result, it appears that Parsons does not disclose
setting a demand limit of a facility based on costs to the facility
of issuing events needed to maintain a set energy demand
limit and benefits to the facility of keeping energy demand
within set limits. Moreover, as Parsons indicates that a building
operator sets the power demand limits, it appears that Parsons
does not disclose a system that sets a demand limit of a facility
in the manner recited in the claims . . . Further, there does not
appear to be any rationale in the art to modify any of claims 1,
6, and 10 to arrive at the claimed subject matter.
App. Br. 6–9 (emphasis omitted).
The Examiner’s Response in the Answer
In response, the Examiner further explains the basis for the rejection.
The Examiner finds Taft teaches:
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an energy demand limit in Paragraph 0026 – “The system level
VPP optimization system 104 may determine, for the particular
load at a particular time, the amount of power that needs to be
“generated” by the VPP using demand response . . . for a peak
load of 900 MWatts, that 150 MWatts of demand response is
needed to reduce the actual load to 750 MWatts,” Paragraph
0027, and Paragraph 0031, where the 750 MWatts is the
demand limit.
Ans. 3 (emphasis added).
The Examiner explains that Parsons teaches an energy demand limit:
Parsons does also disclose setting an energy demand limit (See
Paragraph 0049[ )]. . . The Examiner further asserts that the
Appellant’s claimed limitations for claims 1 and 6 do not claim
that the demand limit is a demand limit of the facility (as in
claim 10), but rather just claim a demand limit. The Examiner
asserts that the 750MW “supply limit” as argued by Appellant
in pages 7-8 of arguments is a demand limit as claimed.
Ans. 3 (emphasis added).
Regarding the combination of Taft and Parsons, the Examiner finds
Taft and Parsons are analogous art to the claimed invention:
The Appellant further argues that the Examiner has
provided no rationale for combining the cited prior art
references. The Examiner respectfully disagrees. The Examiner
asserts that the teachings of Taft and Parsons are related
because both are analyzing demand response to make
determinations.
Ans. 4 (emphasis added).
Thus, the Examiner finds both Taft and Parsons implement Demand
Response (DR) events to reduce energy consumption. In particular, the
Examiner finds Taft teaches setting an energy demand limit (paragraphs 20,
26, 27, 31), where paragraph 20 and paragraph 26 of Taft disclose setting a
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demand limit based upon market price conditions (e.g. costs), where
lower costs are a benefit to the facility. See Ans. 5 (emphasis added).
The Examiner notes Taft, at paragraph 19, further describes the
availability of energy at particular times when renewables, such as solar, are
available, in which the availability of renewable energy is a benefit. See
Ans. 6.
Thus, the Examiner addresses Appellant’s arguments (App. Br. 7–29),
based upon the demand limits of the utility provider / facility. See Ans. 3–7.

Claim Construction
We begin our analysis with claim construction.4 The disputed
limitation of claim 1 recites:
the demand dispatch subsystem and the demand level
optimization subsystem set an energy demand limit based on
costs to the facility of issuing the events needed to maintain the
energy demand limit and benefits to the facility of keeping the
energy demand of the facility within the energy demand

4 Claim construction is an important step in a patentability determination. A
legal conclusion that a claim is obvious involves two analytical steps,
assuming the references have been properly combined under § 103. See
Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (“Both
anticipation under § 102 and obviousness under § 103 are two-step inquiries.
The first step in both analyses is a proper construction of the claims. . . . The
second step in the analyses requires a comparison of the properly construed
claim to the prior art.” (Internal citations omitted)). Under the second step,
the Board must compare the construed claim to one or more prior art
references and make factual findings regarding the limitations contested by
Appellant. See In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
Because the PTO is entitled to give claims their broadest reasonable
interpretation, a court’s review of the Board’s claim construction is limited
to determining whether it was reasonable. See Morris, 127 F.3d at 1055.

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limit; and the demand dispatch subsystem produces signals for
the facility to meet the energy demand limit based on the
monitored energy demand of the facility and the facility reduces
energy demand in response to the signals.
(Emphasis added).
We turn to the Specification for context regarding the claimed facility.
Appellant provides non-limiting, exemplary descriptions of the claim term
“facility,” as follows:
The term “facility” may refer to virtually any location in which
there are loads influenced by DR [Demand Response] events.
Where there are such loads may be regarded as a “DR
resource”. The term “utility” may be used in a general sense to
refer to a utility, independent system operator, service provider,
and the like.
Spec. 4, ll. 13–18 (emphasis added).
Figure 3 is a diagram of a customer demand management
system. A customer domain 11 may incorporate a
demand management system (DMS)) 12 and one or more
facilities, for example, a customer facility 21, facility 22, and
facility 23.
Spec. 10, ll. 17–23 (emphasis added).
Given this supporting description of a facility that can be located at
virtually any location in which there are loads influenced by Demand
Response (DR) events, we look to the evidence relied upon by the Examiner
(Final Act. 5–9; Ans. 3–7). The Examiner finds the disputed limitations of
claim 1 are taught or suggested by Taft, at ¶¶ 19–20, 26–31, and 84, in
combination with Parsons, at ¶¶ 4–5, 49. Final Act. 5–9; Ans. 3–7.
Turning to the evidence, we reproduce the pertinent portions of Taft
and Parsons below. In particular, we note paragraph 19 of Taft describes:
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Demand response (DR), as a general matter, is the ability
to control loads and/or control generation. Demand response
may be used in power grids to manage customer consumption
of electricity in response to supply conditions. The supply
conditions may relate to reducing consumption at critical times,
relate to changes in market prices (such as providing a pricing
signal to the customer to indicate energy costs at different
times), relate to changes in availability of energy (such as
particular times when renewables, such as solar, are available),
etc.
Taft ¶ 19 (emphasis added).
in response to a request by a utility or market price conditions
. . . [u]nder conditions of tight electricity supply, demand
response may significantly reduce the peak price and, in
general, electricity price volatility.
Taft ¶ 20 (emphasis added).
Cf. with Appellant’s description of Demand Response (DR) in the
detailed “Description” section of the Specification:
One mechanism that may be used to encourage
customers to reduce demand and thereby reduce the peak
demand for electricity may be referred to as demand response
(DR). DR may refer to management of the demand by
customers in response to supply conditions. For example,
electricity customers may reduce their consumption at critical
times and/or costs in response to market prices. These
customers may be regarded as DR resources.
DR programs may require that a utility and/or
independent service operator (ISO) deliver DR signals to
participants via a communications channel. The programs may
relate to a distribution of resources such as, but not limited to,
electricity, water and natural gas.
Spec. 3, ll. 9–20.
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We agree with the Examiner that at least paragraph 26 of Taft teaches
or suggests the “demand level optimization” and the “energy demand limit”
recited in claim 1, e.g., 750 MWatts:
The system level VPP optimization system 104 may
determine, for the particular load at a particular time, the
amount of power that needs to be “generated” by the VPP using
demand response. Typically, demand response may request a
specific amount of power (which may be measured in
megawatts) to be reduced. For example, the system level VPP
optimization system 104 may determine, for a peak load of 900
MWatts, that 150 MWatts of demand response is needed to
reduce the actual load to 750 MWatts.
Taft ¶¶ 26–27 (emphasis added).
Moreover, we find the industrial, commercial and/or residential users
described in Taft ¶ 31 are located at corresponding industrial, commercial
and/or residential facilities:
A utility may use an automated system, such as depicted in
FIG. 1, connected to industrial, commercial and/or residential
users that may reduce consumption at times (such as at times of
peak demand), essentially delaying draw marginally. The
automated system may turn down or off certain appliances or
sinks (and, when demand is unexpectedly low, potentially
increasing usage). For example, heating may be turned down
or air conditioning or refrigeration may be turned up (turning
up to a higher temperature thereby using less electricity),
delaying slightly the draw until a peak in usage has passed. The
grid may thus benefit by delaying peak demand (allowing
peaking plants time to cycle up or avoiding peak events), and
the participant benefits by delaying consumption until after
peak demand periods, when pricing may be lower.
Taft ¶ 31 (emphasis added).

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We note Parsons ¶ 3 teaches a literal “facility” in which power
consumption is monitored, i.e., “some type of continuous monitoring of the
power meter correlated to events in the facility.” We find Parsons
additionally describes “monitoring energy demand of the facility,” within
the meaning of claim 1:
More recently, a general societal trend towards increased power
consumption efficiency, along with corresponding
governmental policies and regulations, has driven demand for
increased ability to monitor detailed power consumption . . .
Parsons ¶ 4 (emphasis added).
See also Parsons, ¶¶ 5 and 49:
In the demand response system, when a utility provider
recognizes that peak load will exceed capacity (or allowable
limits), the utility provider can contact one or more building
operators and instruct the operators to remove their loads from
the power grid. This contact can also be implemented by
sending a demand response signal to the buildings.
Parsons ¶ 5 (emphasis added).
As an example, the building operator may establish,
through the central controller 30, a desired peak power demand
of 10 KW for building 10 and a maximum peak power demand
of 20 KW. The central controller 30 can then monitor power
meter 13 and make adjustments to the various loads in the
building 10 to ensure that the power demand does not exceed
the setpoints established by the building operator.
Parsons ¶ 49 (emphasis added).
We read the disputed claim 1 language on the corresponding
feature(s) in Taft, as follows: “the demand dispatch subsystem and the
demand level optimization subsystem set an energy demand limit,” see Taft
¶¶ 26–27:
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The system level VPP optimization system 104 may determine,
for the particular load at a particular time, the amount of power
that needs to be “generated” by the VPP using demand
response. Typically, demand response may request a specific
amount of power (which may be measured in megawatts) to be
reduced. For example, the system level VPP optimization
system 104 may determine, for a peak load of 900 MWatts, that
150 MWatts of demand response is needed to reduce the actual
load to 750 MWatts. . . . In the example given, if there are
1000 customers in the demand response pool, the Sub VPP
Allocation System 108 may select the subset of the 1000
customers to meet the 150 MWatts in power reduction and
reduces or minimizes the losses in the feeder circuits.”)
(emphasis added).
We understand the disputed claim limitations to be taught or
suggested, mapped generally as follows:
Claim 1 (“based on costs to the facility of issuing the events needed to
maintain the energy demand limit”), see Taft ¶¶ 19–20:
The supply conditions may relate to reducing consumption at
critical times, relate to changes in market prices (such as
providing a pricing signal to the customer to indicate energy
costs at different times), relate to changes in availability of
energy (such as particular times when renewables, such as
solar, are available), etc. . . . response to a request by a utility or
market price conditions. . . . . . Under conditions of tight
electricity supply, demand response may significantly reduce
the peak price and, in general, electricity price volatility,

Claim 1 (“and benefits to the facility of keeping the energy demand of
the facility within the energy demand limit”), see Taft ¶ 31:
A utility may use an automated system, such as depicted in
FIG. 1, connected to industrial, commercial and/or residential
users that may reduce consumption at times (such as at times of
peak demand), essentially delaying draw marginally. . . . The
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grid may thus benefit by delaying peak demand (allowing
peaking plants time to cycle up or avoiding peak events), and
the participant benefits by delaying consumption until after
peak demand periods, when pricing may be lower.”

Parsons
Parsons ¶ 3 teaches monitoring or measuring the total power
consumption of a facility. Parsons ¶ 5 describes a particular known prior art
method of monitoring the energy demand of a facility:
We find the disputed claim 1 language “the demand dispatch
subsystem produces signals for the facility to meet the energy demand limit
based on the monitored energy demand of the facility and the facility
reduces energy demand in response to the signals” is taught or suggested by
Parsons ¶ 5:
One method to prevent power grid failures that has
recently been implemented is called a demand response system.
In the demand response system, when a utility provider
recognizes that peak load will exceed capacity ( or allowable
limits), the utility provider can contact one or more building
operators and instruct the operators to remove their loads
from the power grid.
Parsons ¶ 5 (emphasis added).
See also Taft ¶ 29, in which we also read the claim term “facility” on
the described “customer premises” in Taft:
The DR Management System 116 generates the signals to send
to the customer premises in order to control load at the
customer premises 118. Specifically, the DR Management
System 116 may send commands/signals to the customer
premises 118, and the customer premises 118 may send
responses/availability to the DR Management System 116.
Though FIG. 1 depicts customer premises 118 as a single block,
signals from the DR Management System 116 may be sent
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individually to each of the customer premises 118 selected for
demand response. For example, one or more customer
premises may receive signals that control one or more devices
at the customer premises.
Taft ¶ 29:
Based upon a preponderance of the evidence, and on this record, we
are not persuaded of error regarding the Examiner’s finding that the
combination of Taft and Parsons teaches or suggests the disputed limitations
of claim 1. See Final Act. 4–9.
Moreover, in reviewing the record, we find Appellant is arguing the
references separately. One cannot show non-obviousness by attacking
references individually where the rejections are based on combinations of
references. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1989). Further, “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) (emphasis added)
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)); see also MPEP
§ 2123.
We note there is no requirement in an obviousness analysis for the
prior art to “contain a description of the subject matter of the appealed claim
in ipsissimis verbis.” In re May, 574 F.2d 1082, 1090 (CCPA 1978)
(emphasis added). “[A] reference must be considered for everything it
teaches by way of technology and is not limited to the particular invention it
is describing and attempting to protect.” EWP Corp. v. Reliance Universal
Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphasis omitted). See also KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“[N]either the particular
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motivation nor the avowed purpose of the [Appellant] controls” in an
obviousness analysis.).
Additionally, the skilled artisan is “[a] person of ordinary creativity,
not an automaton.” KSR, 550 U.S. at 421. “Every patent application and
reference relies to some extent upon knowledge of persons skilled in the art
to complement that [which is] disclosed . . . .” In re Bode, 550 F.2d 656,
660 (CCPA 1977) (quoting In re Wiggins, 488 F.2d 538, 543 (CCPA 1973)).
Those persons “must be presumed to know something” about the art “apart
from what the references disclose.” In re Jacoby, 309 F.2d 513, 516 (CCPA
1962).
Therefore, on this record, and based upon a preponderance of the
evidence, we are not persuaded of error regarding the Examiner’s underlying
factual findings and ultimate legal conclusion of obviousness for
independent representative claim 1.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent representative system claim 1, and also independent claims 6
and 10, which recite similar limitations of commensurate scope. See Final
Act. 4–29. Therefore, all remaining grouped dependent claims on appeal
(not argued separately) fall with representative independent claim 1. See
37 C.F.R. § 41.37(c)(1)(iv).
Accordingly, we sustain the Examiner’s obviousness rejection of all
claims 1–8 and 10–21 on appeal.
CONCLUSION
The Examiner did not err in rejecting claims 1–8 and 10–21, as being
obvious under 35 U.S.C. § 103.

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DECISION
We affirm the Examiner’s decision rejecting claims 1–8 and 10–21
under 35 U.S.C. § 103.
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