ENTIC, LLCDownload PDFPatent Trials and Appeals BoardSep 17, 20212020004542 (P.T.A.B. Sep. 17, 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. 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. Appeal 2020-004542 Application 14/307,489 2 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.”). Appeal 2020-004542 Application 14/307,489 3 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, Appeal 2020-004542 Application 14/307,489 4 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 Appeal 2020-004542 Application 14/307,489 5 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. Appeal 2020-004542 Application 14/307,489 6 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). Appeal 2020-004542 Application 14/307,489 7 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. Appeal 2020-004542 Application 14/307,489 8 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 Appeal 2020-004542 Application 14/307,489 9 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. Appeal 2020-004542 Application 14/307,489 10 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. Appeal 2020-004542 Application 14/307,489 11 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 Copy with citationCopy as parenthetical citation