ENTIC, LLC

Patent Trials and Appeals Board

Sep 17, 2021

2020004542 (P.T.A.B. Sep. 17, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/307,489 06/18/2014 Manuel Rosendo 1995-006U 3437
7590 09/17/2021
Carey Rodriguez O'Keefe Milian Gonya
Adam Underwood
1395 Brickell Avenue
Suite 700
Miami, FL 33131
EXAMINER
POUDEL, SANTOSH RAJ
ART UNIT PAPER NUMBER
2115
MAIL DATE DELIVERY MODE
09/17/2021 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 MANUEL ROSENDO and BIN ZHENG
____________________

Appeal 2020-004542
Application 14/307,489
Technology Center 2100
____________________

Before ROBERT E. NAPPI, JOHNNY A. KUMAR, and NORMAN H.
BEAMER, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1 through 8. 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). According to Appellant, Entic, LLC. is the real party-in-interest.
Appeal Br. 2.
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Application 14/307,489

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INVENTION
The invention is directed to a method for virtually connecting design,
construction, equipment and control systems as a holistic system to discover
the peak performance of energy consuming systems based on system
inherent characteristics. Abstract. Claim 1 is illustrative of the invention
and is reproduced below.
1. A method for virtually connecting design, construction,
equipment and control systems as a holistic system to determine
the peak performance of an energy consuming system based on
system inherent characteristics, the method comprising:
collecting primary information from the energy
consuming system;
developing energy consuming system schematics;
evaluating energy consuming system performance;
determining discrepancy and field verification
information;
defining an energy system limitation for optimization;
generating a virtual holistic system using the primary
information, the system schematics, the discrepancy and field
verification information; and,
activating the virtual holistic system.

EXAMINER’S REJECTIONS 2
The Examiner has rejected claims 1 through 8 under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement).
Final Act. 6–8.
The Examiner has rejected claims 4 and 8 under 35 U.S.C. § 112(b) as
being indefinite. Final Act. 8–9.

2 Throughout this Decision we refer to the Appeal Brief filed December 26
2019 (“Appeal Br.”); Final Office Action mailed February 25, 2019 (“Final
Act.”); and the Examiner’s Answer mailed January 27, 2020 (“Ans.”).
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Application 14/307,489

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The Examiner has rejected claims 1 through 3 and 5 through 7 under
35 U.S.C. § 102(a)(1) as anticipated by Chambers (US 2010/0262313 A1;
published Oct. 14, 2010). Final Act. 9–15.
The Examiner has rejected claims 4 and 8 under 35 U.S.C. § 103 as
unpatentable over Chambers and Resnick (US 2006/0235556 A1; published
Oct. 19, 2006). Final Act. 15–17.
ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have not persuaded us of error in the
Examiner’s rejections of claims 1 through 8.
Rejection under 35 U.S.C. § 112 (a), written description.
The Examiner rejects claims 1 through 8 as the Specification does not
demonstrate that the Appellant had possession of the claimed invention at
the time of filing. Final Act. 6–8. With regard to independent claims 1 and
5, the Examiner finds that Appellant’s Specification does not demonstrate
Appellant possessed the limitation of “generating a virtual holistic system
using the primary information, the system schematics, the discrepancy and
field verification information.” Final Act. 6 (emphasis omitted). The
Examiner notes the Specification discloses collecting information from
different sources and that the information includes: (a) primary information,
(b) system schematics a measure/determination of discrepancy and (c) field
verification information. Final Act. 7 (citing Spec. Fig. 2 ¶¶ 12, 13). The
Examiner states:
However, nowhere in the originally filed disclosure describes
generating of a virtual holistic system using these data types
(a) to (c). The disclosure does not show how (equations,
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Application 14/307,489

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formulae, algorithms etc.) virtual system is generated using
these three types of data.

Final Act. 7 (emphasis original). Further, the Examiner states
the limitation defines the desired result of “generating a virtual
holistic system”, but the disclosure fails to sufficiently identify
how the generation of the “virtual holistic system” is achieved
by using “the primary information, the system schematics, the
discrepancy and field verification information”. Applicant's
specification does not show any specific way of using these
data to generate the virtual holistic system. Therefore, this
subject matter is not described in the specification in such a
way as to reasonably convey to one skilled in the relevant art
that the inventor or a joint inventor, or for pre-AIA the
inventor(s), at the time the application was filed, had possession
of the claimed invention.

Final Act. 8.
Appellant argues the Examiner’s rejection is in error. Appeal Br. 5–6.
Appellant cites the recitation in original claim 4 of verifying system design
by inspection and the disclosure in paragraph 12, of the originally filed
Specification, as teaching generating a virtual holistic system using primary
information including collecting other information. Appeal Br. 6.
We have reviewed the disclosure in the originally filed Specification,
cited by Appellant in the Brief, and are not persuaded of error in the
Examiner’s rejection. The Examiner has provided a comprehensive
response to Appellant’s arguments on pages 3 through 5 of the Answer. We
have reviewed and concur with the Examiner’s analysis and conclusions in
this response. The written description requirement serves “to ensure that the
inventor had possession, as of the filing date of the application relied on, of
the specific subject matter later claimed by him; how the specification
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accomplishes this is not material.” In re Wertheim, 541 F.2d 257, 262
(CCPA 1976). Here, the Examiner’s rejection is based upon the
Specification not describing, and thus not showing possession, of how the
information is used to generate the holistic system. Final Act. 6–7; Ans. 4.
Paragraph 12 of the Specification and original claim 4, cited in the Appeal
Brief, discuss collecting information and generating the virtual holistic
system, but does not describe how the information is used to generate the
virtual holistic system. Accordingly, we are not persuaded the Examiner
erred in finding the Specification does not demonstrate how Appellant’s
possessed the claimed invention and we sustain the Examiner’s written
description rejection of claims 1 through 8.

Rejection under 35 U.S.C. § 112 (b), indefiniteness.
The Examiner rejects claims 4 and 8 as the limitations “verifying
system design by inspection and control system sensor readings” and
“system design information” are ambiguous as it is not clear which of the
recited systems are being referred to. Final Act. 9–10.

Appellant argues the Examiner’s rejection is in error as:
The Examiner ignores the language of independent claim 1 in
which a holistic system virtually connects design, construction,
equipment and control systems to determine the peak
performance of an energy consuming system. As such, a virtual
holistic system is basically a model of the energy consuming
system and any control systems that are connected to the energy
consuming system.
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Appeal Br. 7. Further, Appellant states “‘collecting system design
information’ relates to collecting primary information from the energy
consuming system and its related subsystems.” Appeal Br. 7–8.
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection. Independent claim 1, recites serval systems including
“a holistic system” and “an energy consuming system.” Claim 4 further
recites “the collecting primary information from subsystems of the energy
consuming system includes . . . collecting system design information . . .
verifying system design by inspection and control system sensor readings.”
Claim 8 recites similar limitations. We concur with the Examiner that the
claims do not identify which of the systems is verified or which of the
system’s design information is collected. As claims 1 and 5 recite collecting
the primary information from the energy consuming system and using it to
generate the holistic system, the generic recitation of “system” in the
disputed limitations of claims 4 and 8, could be logically referring to either
the holistic system or the energy consuming system. “[I]f a claim is
amenable to two or more plausible claim constructions, the USPTO is
justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim unpatentable under
35 U.S.C. § 112 second paragraph.” Ex parte Miyazaki, 89 USPQ2d 1207,
1211 (BPAI 2008) (precedential); see also Ex parte McAward, Appeal No.
2015-006416, 2017 WL 3669566, at *2 (PTAB Aug. 25, 2017)
(precedential). Accordingly, we sustain the Examiner’s rejection of claims 4
and 8 under 35 U.S.C. § 112(b).
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Rejection under 35 U.S.C. § 102 (a)(1)
Appellant argues the Examiner’s anticipation rejection of independent
claims 1 and 5 is in error as Chambers does no teach the claim limitations
directed to: a) collecting primary information from the energy consuming
system, b) developing energy consuming system schematic and c)
generating and activating a virtual holistic system. Appeal Br. 10–15.
Specifically, Appellant argues that the “primary information” is described in
the Specification, paragraph 12, as “‘the performance [specifications] and
tolerances of all the systems that are connected to the entire building’, ‘the
performance data [i.e., specifications] from the equipment manufacturers for
all mechanical systems’, and ‘original mechanical design drawings.’”
Appeal Br. 12 (citing Spec. ¶ 12) (emphasis omitted). Thus, Appellant
asserts the Examiner unreasonably equated Chambers “‘transactional data’
of ‘energy consumption acquired from sensors’” to the claimed “primary
information.” Appeal Br. 12.
Further, with respect to the limitation directed to “developing energy
consuming system schematics,” Appellant asserts that the Specification
describes “system schematics” as “typically refer to methods to ‘define data
sources from which the system sensors are available to collect data,
equipment information such as the size of equipment ( HP, tonnage, Delta T
of system and display control components such as flow meters, temperature
sensors, pressure sensors, IR sensors, Vibration Sensors, kw meters.’”
Appeal Br. 13 (citing ¶ 12 of the Specification).3

3 The Appellant cites to paragraph 14 of the published version of this patent
application, which corresponds to paragraph 12 of the originally filed
Speciation.
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Finally, Appellant argues that the “‘holistic system’ of Chambers is
not equivalent to the ‘virtual holistic system’ as recited in claims 1 and 5.”
Appeal Br. 15.
The Examiner has provide a detailed, comprehensive response to
Appellant’s arguments on pages 7 through 14 of the Answer. We have
reviewed the Examiner’s response, the cited disclosures in Appellant’s
Specification and the cited teaching of Chambers; we concur with the
Examiner’s findings and conclusions.
With respect to Appellant’s arguments concerning Chambers
teaching the claimed “primary information,” the Examiner considers
Appellant’s arguments to be importing limitations from the Specification
into the claims. Ans. 8–9. The Examiner finds that the discussion of
“primary information” in the Specification is exemplary of what may be
considered “primary information” and that when the term is given it’s plain
meaning Chambers’ transactional data meets the claimed information. Ans.
9. We concur with the Examiner. Initially, we note that independent claim
1 merely recites the primary information as coming from the energy
consuming system and provides no further description of the information.
Further, Appellant’s Specification, does not define “primary information”,
rather it provides examples of the types of information that can be primary
information, including performance of systems. Spec. ¶ 12. Chambers
identifies that the “transactional data” can include performance of systems in
the building such as HVAC, Lighting etc. Chambers ¶ 27. Thus, we find
that Chambers identifies that the “transactional data” includes one of the
types of information that Appellant identifies is a type of “performance
information.” According, Appellant’s arguments have not persuaded us the
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Examiner erred in finding that Chambers teaches the claimed “primary
information.”
With respect to Appellant’s arguments concerning Chambers teaching
the claim limitation of “developing energy consuming system schematic;”
similar to our discussion above, the Examiner considers Appellant’s
arguments to be importing limitations from the Specification into the claims.
Ans. 11–12. The Examiner states “Appellant’s specification broadly defines
the phrase ‘system schematics’ also to ‘include energy analysis formulae and
methods.’” Ans. 11 (citing Spec.¶ 12) (emphasis omitted).4 We concur with
the Examiner’s claim interpretation and findings concerning Chambers.
Independent claim 1 recites “developing energy consuming system
schematics” and recites no further properties or definition of the schematics.
Appellant’s Specification does not define “energy consuming system
schematics” but rather identifies:
The schematics can include energy analysis formulae and
methods. The energy analysis formulae and methods are any
mathematical formulas that are used to calculate energy
consumption.

Spec. ¶ 12. Thus, the Examiner’s interpretation of the term is reasonable
and supported by Appellant’s Specification. Based upon this interpretation,
the Examiner finds that Chambers’ teaching of using the electric signature of
the equipment and standard mathematical functions meets the claims. Ans.
11–12; Final Act. 13 (citing Chambers ¶¶ 85 and 97). Appellant has not
contested the Examiner’s finding that Chambers teaches using the electric

4 The Examiner cites to paragraph 14 of the published version of this patent
application, which corresponds to paragraph 12 of the originally filed
speciation.
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signature of the equipment and standard mathematical functions as found by
the Exmianer. Thus, we find no error in the Examiner’s finding that
Chambers discloses the limitation of “developing energy consuming system
schematic.”
With respect to Appellant’s arguments concerning Chambers’
teaching of “a virtual holistic system” the Examiner states
although the exact trigger word “virtual” is not disclosed by
Chambers, one ordinary skill in the art would understand
software system and suits of applications can be an example of
the claimed “virtual” because user cannot touch the “software”.
Since Chambers uses its intelligent software to “generates
control instructions that are transmitted back to the sensor”,
clearly this software and its suits of applications are not only
created by using three types (“primary information”, “system
schematics”, “discrepancy and field verification information”)
of information but also activated as well as required by the
disputed limitation.

Ans. 12–13. We concur with the Examiner. Chambers identifies their
invention as “[a]n energy management system . . . providing a holistic
premise energy optimization and energy efficiency reclamation system
comprised of an interconnected system of software.” Chambers, abstract,
see also ¶ 2. Thus, Chambers clearly identifies that the system is a holistic
system and that the system is implemented in software. While Chambers
does not use the term “virtual holistic system” the system is nonetheless a
virtual (software) holistic system. As such, Appellant’s arguments have not
persuaded us of error in the Examiner’s anticipation rejection of independent
claim 1 and claims 2, 3, and 5 through 7 grouped with claim 1. Accordingly,
we sustain the Examiner’s anticipation rejection.

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Rejection under 35 U.S.C. § 103
Appellant argues that the Examiner’s obviousness rejection of
dependent claims 4 and 8 is in error for the reasons discussed with respect to
claim 1 and because the secondary reference to Resnick fails to cure the
deficiencies noted in the rejection of independent claim 1. Appeal Br. 16–
17. As we discussed above, we are not persuaded of error in the Examiner’s
rejection of claim 1. Accordingly, we sustain the Examiner’s obviousness
rejection of claims 4 and 8 for the same reasons discussed above with
respect to claim 1.

CONCLUSION
We reverse the Examiner’s rejections of claims 1 through 8.
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8 112 Written Description 1–8
4, 8 112 Indefiniteness 4, 8
1–3, 5–7 102 Chambers 1–3, 5–7
4, 8 103 Chambers, Resnick 4, 8
Overall
Outcome
1–8

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