Ex Parte 7634504 et alDownload PDFPatent Trial and Appeal BoardOct 31, 201795002041 (P.T.A.B. Oct. 31, 2017) 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. 95/002,041 07/18/2012 7634504 36563-0006RX1 6352 131059 7590 10/31/2017 Honeywell/Husch Patent Services 101 Columbia Road P.O. Box 2245 Morristown, NJ 07962 EXAMINER ENGLAND, DAVID E ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 10/31/2017 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 ____________________ NEST LABS, INC., Requester, Respondent, and Cross-Appellant v. HONEYWELL INTERNATIONAL INC., Patent Owner, Appellant, and Cross-Respondent ____________________ Appeal 2017-000943 Reexamination Control 95/002,041 Patent 7,634,504 B2 Technology Center 3900 ____________________ Before JOHN A. JEFFERY, DENISE M. POTHIER, and JENNIFER L. McKEOWN, Administrative Patent Judges. McKEOWN, Administrative Patent Judge. DECISION ON APPEAL Honeywell International Inc. (“Patent Owner”) appeals from the decision in the Examiner’s Right of Appeal Notice rejecting claims 1, 2, and 4–54 of the ’504 patent. App. Br. 1.1 1 In this Opinion, we refer to (1) Nest Labs, Inc.’s Request for Inter Partes Reexamination, filed July 16, 2012 (“Reexamination Request”); (2) the Examiner’s Right of Appeal Notice, mailed March 14, 2016 (“RAN”); (3) Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 2 I. STATEMENT OF THE CASE Nest Labs, Inc. (“Requester”) requested inter partes reexamination of U.S. Patent No. 7,634,504 B2 (“’504 patent”) issued to John B. Amundson on December 15, 2009. We have been informed that the ’504 patent was the subject of a district court proceeding, namely Honeywell Int’l Inc. v. Nest Labs, Inc. et al., Civil Action No. 0:12-cv-00299-SRN-JSM (D. Minn.). See App. Br. 1. We have jurisdiction under 35 U.S.C. §§ 134 and 315 (pre-AIA). We AFFIRM. II. THE ’504 PATENT The ’504 patent generally relates to programmable controllers for devices and, more specifically, “to simplified interfaces for such controllers having interview programming capabilities.” ’504 patent, col. 1, ll. 14–18. The ’504 patent, in one illustrative example of the invention, describes the steps of providing one or more interview questions to a user via a user interface, prompting the user to selected [sic] between at least two answers simultaneously displayed on the user interface, accepting one or more user responses to the interview questions via the user interface, and modifying the operational parameters of the controller and/or one or more components controlled by the controlled [sic] based at least in part on the user responses. The interview questions can include at least one question relating to the installation or setup of the controller as well as any components controlled by the controller. the Examiner’s Action Closing Prosecution, mailed September 18, 2015 (“ACP”); (4) Requester’s Third Party Comments, filed May 28, 2014 (“TPR Comments”); (5) Requester’s Third Party Comments, filed December 18, 2015 (“TPR ACP Comments”); (6) Patent Owner’s Appeal Brief, filed June 14, 2016 (“App. Br.”); and (7) Patent Owner’s Rebuttal Brief, filed September 7, 2016 (“Reb. Br.”). Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 3 ’504 patent, col. 2, ll. 51–61. Figure 13J, reproduced below, depicts a schematic drawing of an exemplary user interface for programming configuration information within a controller. Figure 13J of the ’504 Patent Depicting an Exemplary User Interface Displaying A Component Selection Screen As shown, the user interface of Figure 13J displays a component selection screen that allows the user or installer “to select from among several different categories of equipment for configuration.” ’504 patent, col. 19, ll. 3–5. For each category, there may be an icon button that corresponds to a system component. ’504 patent, col. 19, ll. 11–12. In the exemplary embodiment, “[t]he selection of the icon buttons on the component selection screen 1264 causes the interface 1200 to display one or more interview questions and answers on the display panel 1204 based on the type of equipment to be configured.” ’504 patent, col. 19, ll. 18–21. Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 4 Claims 1, 17, and 19 are illustrative and read as follows: 1. (Amended) A method of programming configuration information of an HVAC controller, wherein the configuration information is related to characteristics of one or more system components of an HVAC system to be controlled by the HVAC controller, the HVAC controller is configured to use the configuration information to properly control the one or more system components of the HVAC system to be controlled by the HVAC controller, the method comprising the steps of: displaying one or more grammatically complete sentences on a display panel of a user interface of the HVAC controller, wherein the HVAC controller and the display panel are disposed in a common housing, the one or more grammatically complete sentences being displayed in a question format and soliciting a response from a user related to configuration information of the HVAC system, wherein the configuration information is related to characteristics of one or more system components of the HVAC system to be controlled by the HVAC controller, and wherein the configuration information is not indicating an Off or On status of any system component that is to be controlled by the HVAC controller; in response to displaying at least one of the grammatically complete sentences in a question format on the display panel of the user interface of the HVAC controller, allowing the user to select one of a plurality of selectable responses simultaneously displayed on the display panel, each selectable response identifying a different system component type or a different characteristic of one of the system components that are to be controlled by the HVAC controller [between at least two responses simultaneously displayed on the user interface]; accepting a user selection of one of the plurality of selectable responses; modifying the configuration information of the HVAC controller based at least in part on said accepted user selection; and using the modified configuration information of the HVAC controller to generate control signals for the [when Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 5 controlling] one or more system components of the HVAC system. 17. (Original) A method of programming configuration information for an HVAC controller, wherein the HVAC controller is configured to control different types of HVAC system components and to use the programmed configuration information to properly control the one or more HVAC system components, the method comprising the steps of: displaying a first query in the form of a grammatically complete sentence to a user via a user interface of the HVAC controller while not displaying a second query, the first query requesting information regarding a type of system component to be controlled by the controller; allowing the user to select between at least two types of system components to be controlled by the controller; accepting a first selection by the user; after accepting the first selection, displaying a second query in the form of a grammatically complete sentence to a user via the user interface while not displaying the first query, the second query requesting additional information regarding the selected type of system component selected in the first selection; allowing the user to select between at least two second responses relating to additional information regarding the selected type of system component made by the user in the first selection; accepting a second selection by the user; modifying the configuration information of the HVAC controller based at least in part on said first and second selections; and using the modified configuration information of the HVAC controller when controlling one or more HVAC components of an HVAC system. 19. (New) A method of programming configuration information of an HVAC controller, wherein the HVAC controller is configured to control one or more system Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 6 components of an HVAC system, wherein the configuration information is related to characteristics of the one or more system components of the HVAC system to be controlled by the HVAC controller, the HVAC controller is configured to use the configuration information to properly control the one or more system components of the HVAC system to be controlled by the HVAC controller, the method comprising the steps of: displaying one or more grammatically complete sentences in a question format on a display panel of a user interface of the HVAC controller, wherein the display panel and the HVAC controller are disposed in a common housing, the one or more grammatically complete sentences soliciting a response from a user relating to configuration information of the HVAC system, wherein the configuration information is related to characteristics of one or more system components of the HVAC system to be controlled by the HVAC controller, and wherein the configuration information is not indicating an Off or On status of any system component that is to be controlled by the HVAC controller; in response to displaying at least one of the grammatically complete sentences on the display panel of the user interface, allowing the user to select one of a plurality of selectable response indicators that are simultaneously displayed at different locations on the display panel, each selectable response indicator identifying a system component type or a system component characteristic for selection by the user; accepting a user selection of one of the plurality of selectable response indicators using the user interface of the HVAC controller; modifying the configuration information of the HVAC controller based at least in part on the accepted user selection; and using the modified configuration information of the HVAC controller to generate control signals for the one or more system components of the HVAC system. App. Br. 29–30, 33–35, Claims App’x. Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 7 III. REJECTIONS A. Evidence Relied Upon The Examiner relies on the following as evidence of unpatentability: Kobayashi US 4,948,040 Aug. 14, 1990 Rovan SI 20556 A Oct. 31, 2001 Wacker US 6,851,621 B1 Feb. 8, 2005 Rosen US 7,156,318 B1 Jan. 2, 2007 Bryant Heating & Cooling Systems, Installation and Start-Up Instructions Evolution™ Control: SYSTXBBUIDP1, 1–12 (2004) (“Bryant”). Invensys™, 9700i, 9701i, 9715i, 9720 Deluxe Programmable Thermostats: User’s Manual, 4–13, 15–22, 26, and 28 (published prior to Dec. 2, 2003) (“Invensys”).2 Requester also relies on the first Declaration of Therese E. Peffer, Ph.D., dated January 21, 2013 (“Peffer Decl. I”), the second Declaration of Therese E. Peffer, Ph.D., dated October 7, 2013 (“Peffer Decl. II”), and a third Declaration of Therese E. Peffer, Ph.D., dated May 28, 2014 (“Peffer Decl. III”). Patent Owner relies on the Declaration of Marcus D. Stoner dated September 5, 2013 (Stoner Decl. I), which responds to the ACP, and the Declaration of Marcus D. Stoner dated April 27, 2014 (“Stoner Decl. II”), which respond to the second Non-Final Office Action. 2 We note that Invensys is not dated, but Patent Owner identifies the publication date as prior to December 3, 2003. See the ’504 patent, p. 3 (listing Invensys under Other Publications). Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 8 B. The Adopted Rejections The Examiner maintains at least the following rejections: 1. Claims 17 and 18 are rejected under 35 U.S.C. § 102(e) as anticipated by Wacker. RAN 14. 2. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over Wacker and Rovan. RAN 14–15. 3. Claims 1, 2, 4–16, and 19–54 are rejected under 35 U.S.C. § 314(a) as enlarging the scope of the claims of the patent being reexamined. RAN 22–23. 4. Claims 1, 2, 4–10, 19–25, 37–39, 42, 43, 45, and 46 are rejected under 35 U.S.C. § 112, first paragraph (pre-AIA), for lack of written description support. RAN 24. 5. Claims 26 and 52 are rejected under 35 U.S.C. § 112, first paragraph (pre-AIA), for lack of written description support. RAN 24–25. 6. Claims 26 and 52 are rejected under 35 U.S.C. § 112, second paragraph (pre-AIA), for indefiniteness. RAN 27. 7. Claims 1, 2, 4–16, 25, 37, 39, and 42 are rejected under 35 U.S.C. § 103(a) as unpatentable over Wacker, Rosen, and Rovan. RAN 28. 8. Claims 19–21, 23, 24, 26–29, 38, 40, and 45–48 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kobayashi and Rosen. RAN 29–30. Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 9 9. Claims 22, 30–36, 41, 43, 44, and 49–51 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kobayashi, Rosen, and Invensys. RAN 30. 10. Claims 52–54 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kobayashi, Rosen, Invensys, and Wacker. RAN 30. 11. Claims 19–24, 26–36, 40, 41, 44–50, and 52–54 are rejected under 35 U.S.C. § 103(a) as unpatentable over Bryant and Rosen. RAN 30–31. 12. Claims 43 and 51 are rejected under 35 U.S.C. § 103(a) as unpatentable over Bryant, Rosen, and Invensys. RAN 31. 13. Claim 38 is rejected under 35 U.S.C. § 103(a) as unpatentable over Bryant, Rosen, and Kobayashi. RAN 31. 14. Claims 52–54 are rejected under 35 U.S.C. § 103(a) as unpatentable over Bryant, Rosen, and Wacker. RAN 31. IV. ANALYSIS We review the appealed rejections for error based upon the issues identified by Patent Owner, and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). “Any arguments or authorities not included in the brief[s] permitted under this section or [37 C.F.R.] §§ 41.68 and 41.71 will be refused consideration by the Board, unless good cause is shown.” 37 C.F.R. § 41.67(c)(1)(vii). Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 10 A. Anticipation Rejection of Claims 17 and 18 Based on Wacker Based on the record before us, we are not persuaded that the Examiner erred in rejecting claims 17 and 18 under 35 U.S.C. § 102(e) as anticipated by Wacker. Patent Owner contends that Wacker fails to disclose “displaying a first query in the form of a grammatically complete sentence to a user via a user interface of the HVAC controller while not displaying a second query, the first query requesting information regarding a type of system component to be controlled by the controller,” as recited by claim 17. In particular, Patent Owner asserts that “Wacker’s queries do not include any complete sentences requesting information regarding a type of system component to be controlled as claimed, especially in combination with a second query requesting additional information regarding the selected type of system component selected in the first selection.” App. Br. 7; see also Reb. Br. 4. According to the Patent Owner, the ’504 patent explains that the recited “type” of system component is, for example, a “general category” and not the “very specific questions regarding the fan, cooling stage, etc.[,]” that are described in Wacker. App. Br. 8. Further, the ’504 patent, “at the very least, makes clear the applicant understood the term ‘type of system component’ to refer to a category or kind of equipment, not to a specific question about a specific piece of equipment. (Stoner Decl. II. at ¶ 5).” App. Br. 8; see also App. Br. 9 (asserting that the Examiner’s broad interpretation of “type of” system component improperly reads out the limitation). Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 11 We find this argument unpersuasive. As the Examiner and Requester point out, claim 17 merely recites requesting information regarding a type of system component and does not require identifying the type of system component. ACP 11–12; see ACP 11 (quoting TPR Comments 15 (stating “But information identifying a type of the equipment is wholly different that information regarding a type of the equipment”)). The Examiner further finds that the definition of “regarding” is “relating to.” ACP 12. “Therefore, the broadest reasonable interpretation of ‘information regarding a type of system component’ could be any information that is related to the type of system component and not necessarily the type of component itself, much as the Requester argues.” ACP 12. Wacker is directed to thermostats and, more specifically, the control of air management systems. Wacker, col. 1, ll. 5–6. Wacker discloses, at least in Figures 29B, 31B, 31C, and 31D, displaying a grammatically complete sentence that requests information, such as status information, regarding a type of system component. For example, the exemplary screen of Figure 31C displays the grammatically correct sentence “Please confirm it is safe to start the Fan.” Because a fan is a system component type, Wacker displays a grammatically correct sentence requesting status information regarding a type of system component as recited. See also ACP 12–13. Moreover, Patent Owner’s assertion that “type of system component” is limited to a “general category” of system components is unsupported. Figure 13C of the ’504 patent and the corresponding disclosure, which is relied upon by the Patent Owner, merely provide examples of the types of equipment that may be configured. ’504 patent, Fig. 13C, col. 17, ll. 1–50; Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 12 see also, e.g., ’504 patent, col. 14, ll. 9–28 (describing that Figure 11 shows several illustrative interview questions that can be provided); ’504 patent, Fig. 11 (depicting at 1002 examples of types of equipment that can be selected to be controlled including (A) conventional, (B) heat pump, (C) heat only, and (D) other). As such, we are not persuaded that the Examiner erred in finding that Wacker discloses the recited selection between types of system components. For example, Wacker discloses selection between two types of system components, e.g. a fan that is safe to operate and a fan that is not safe to operate. See Reexamination Request 26–28; RAN 14 (incorporating by reference pages 11–30 of the Reexamination Request). We further note that claim 17 does not limit the recited selection between two types of system components to be in response to the first query. Nor does claim 17 require that the selection of the type of system component is in response to a grammatically complete sentence. Rather, claim 17 merely requires the user to select between two types of system components. The Examiner, thus, properly finds that Wacker also discloses selecting a type of system component. See, e.g., RAN 14 (incorporating by reference pages 11–30 of the Reexamination Request); see also Reexamination Request 27–28 (citing and reproducing Wacker’s Fig. 14Q to disclose the selecting between two types of system components); App. Br. 8 (noting by the Patent Owner that “Wacker teaches using a pull-down menu, as shown in Fig. 14Q of Wacker, to allow the user to identify what type of system component is to be controlled. . .”). Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 13 Therefore, for the reasons discussed above and identified by the Examiner, we sustain the rejection of claim 17, as well as claim 18 not argued with particularity, as anticipated by Wacker. B. The Obviousness Rejection Based on Wacker and Rovan Claim 17 Based on the record before us, we are not persuaded that the Examiner erred in rejecting claim 17 under U.S.C. § 103(a) as unpatentable over Wacker and Rovan. In response to this rejection, Patent Owner refers to the anticipation arguments and maintains that Wacker fails to disclose “each selectable response to the first query identifying a type of system component to be controlled by the HVAC controller.” App Br. 10; Reb. Br. 5. Patent Owner also alleges that Rovan does not cure the deficiencies of Wacker. App Br. 10. However, as discussed above, we are not persuaded that the Examiner erred in finding that Wacker discloses the selectable response limitation. Further, Patent Owner admits that Wacker discloses selecting a type of system component to be controlled from a pull down menu. App. Br. 8. Wacker’s selecting, together with Rovan’s disclosure of displaying questions via text on the thermostat's screen in colloquial language (see, e.g., Rovan, p. 1), would have taught or suggested the disputed limitation. See, e.g., Reexamination Request p. 27. Therefore, for the reasons discussed above and identified by the Examiner, we sustain the rejection of claim 17 as unpatentable over the combination of Wacker and Rovan. Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 14 C. The Obviousness Rejection Based on Wacker, Rosen, and Rovan Claims 1, 2, 4–16, 25, 37, 39 and 42 Based on the record before us, we are not persuaded that the Examiner erred in rejecting claims 1, 2, 4–16, 25, 37, 39, and 42 under 35 U.S.C. § 103(a) as unpatentable over Wacker, Rosen, and Rovan. Patent Owner contends that the combination of Wacker, Rosen, and Rovan fails to teach or suggest allowing a user to select “one of a plurality of selectable responses simultaneously displayed on the display panel, each selectable response identifying a different system component type or a different characteristic of one of the system components that are to be controlled by the HVAC controller,” as recited in claim 1. Independent claim 11 recites a similar limitation. App. Br. 14. According to the Patent Owner, whenever Wacker displays a plurality of selectable responses, they are always either yes/no or pass/fail, and do not 1) identify a system component type or 2) identify a different characteristic of a system component that is to be controlled by the HVAC controller, as claimed. Wacker's one-word yes/no and pass/fail selectable responses most definitely do not identify a component type, and cannot reasonably be considered to identify component characteristics. App. Br. 13. Patent Owner further alleges that the Examiner’s interpretation reads out the “identifying” limitation. Id. We disagree. Claim 1 recites that the selectable response may identify a system component or identify a different characteristic of the system component. The Examiner finds that Wacker teaches these limitations. ACP 35–36 (adopting TPR Comments 19–44). For example, the Requester identifies Figure 14I as simultaneously depicting characteristics, intermittent Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 15 or continuous behavior, of a fan. TPR Comments 20–27. Another example is shown in Figure 31B. Wacker’s selectable response, “Yes,” identifies the system component characteristic that it is safe to operate the fan, whereas the selectable response, “No,” identifies a different system component characteristic, that it is not safe to operate the fan. See, e.g., TPR Comments 24–26. Patent Owner merely makes conclusory assertions and fails to persuasively explain why Wacker’s selectable responses do not identify a characteristic of a system component. See, e.g., App. Br. 13; Reb. Br. 7 (asserting that Wacker’s selectable responses “cannot reasonably be considered to identify component characteristics” without more). As such, we are not persuaded that the Examiner erred in finding that Wacker, Rosen, and Rovan combined teach the disputed limitation. Therefore, for the reasons discussed above and identified by the Examiner, we find that claims 1, 2, 4–16, 25, 37, 39, and 42 are unpatentable over Wacker, Rosen, and Rovan. D. The Obviousness Rejections Based on Bryant and Additionally Cited Prior Art Claims 19–24, 26–36, 40, 41, 44–50, and 52–54 Based on the record before us, we are not persuaded that the Examiner erred in rejecting claims 19–24, 26–36, 40, 41, 44–50, and 52–54 under 35 U.S.C. § 103(a) as unpatentable over Bryant and Rosen. Patent Owner alleges that Bryant does not teach or suggest a plurality of selectable response indicators simultaneously displayed on a display Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 16 panel, as required by claims 19, 26, 46, 47, 49, and 52. App. Br. 24. According to Patent Owner, Fig. 16 of Bryant only identifies a single selectable response indicator in each screen. The annotated “At least two responses” is an incorrect description as these fields are not selectable, but are simply a description of some of the possible selection responses. For example, the middle screen shows the description “18000 to 60000 BTU” which is not a possible selection, but rather indicates the range of possible selections; e.g., the 36000 BTU selectable response. The only selectable response displayed in each screen is shown in the black box to the right, and consists of the single response “NONE,” “3600 BTU,” or “l.” App. Br. 24–25; see also Reb. Br. 11–12. We find this argument unconvincing. Bryant expressly teaches, for example, that a user may “[p]ress either Time or Temp +/- buttons to select AC (air conditioner), HP (heat pump), or None (no unit installed).” Bryant 5 (emphasis added). Each displayed response, namely, AC, HP, or none, are selectable and, as shown in Figure 16 below (left display), each of these selectable response indicators are simultaneously displayed (i.e., “NONE,” “AC,” and “HP”) at different locations on the display. Fig. 16 of Bryant depicting three displays with selectable responses Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 17 See id. We recognize that once a response is selected, this response is also highlighted and displayed on the right side of the screen. See id. This additional display of the selected response, though, does not negate Bryant’s express teaching that a plurality of selectable response indicators are simultaneously displayed on the display. The right display of Figure 16, also shown above, provides another example of a simultaneous display of selectable responses. Bryant simultaneously depicts the selectable response indicators, namely speed selections 1 and 2 as “SPEEDS, 1 or 2.” Id. As such, we are not persuaded that Bryant fails to teach or suggest this limitation. Therefore, for the reasons discussed above and identified by the Examiner, we sustain the rejection of claims 19–24, 26–36, 40, 41, 44–50, and 52–54 as unpatentable over Bryant and Rosen. Claims 43 and 51 With respect to claim 43, Patent Owner relies on the arguments presented for claim 19. App. Br. 25–26. With respect to claim 51, Patent Owner presents similar arguments as for claims 26 and 31. For the reasons discussed above, we find these arguments unpersuasive. Additionally, Patent Owner asserts that “Bryant in view of Rosen ’318 fails to disclose ‘the third query requesting additional information based on the selected system component type selected in the second selection,’ as recited in claim 51.” App. Br. 26. This conclusory assertion, without more, is similarly unavailing. See 37 C.F.R. § 41.37(c)(1)(vii) (presenting “[a] statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”). As such, Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 18 we are not persuaded that the Examiner erred in finding that the combination of Bryant, Rosen, and Invensys teaches or suggests the disputed limitations. Therefore, we sustain the rejection of claims 43 and 51 as unpatentable over Bryant, Rosen, and Invensys. Claim 38 With respect to claim 38. Patent Owner again relies on the arguments presented for claim 19. App. Br. 27; Reb. Br. 14. For the reasons discussed above, we find these arguments unpersuasive. As such, we are not persuaded that the Examiner erred in finding that Bryant, Rosen, and Kobayashi teaches or suggest the limitations of claim 38. Therefore, we sustain the rejection of claim 38 as unpatentable over Bryant, Rosen, and Kobayashi. Claims 52–54 With respect to claims 52–54, Patent Owner relies on the arguments presented for claim 19. App. Br. 27. As discussed above, we find these arguments unpersuasive. As such, we are not persuaded that the Examiner erred in finding that Bryant, Rosen, and Wacker teaches or suggest the limitations of claims 52–54. Therefore, we sustain the rejection of claims 52–54 as unpatentable over Bryant, Rosen, and Wacker. E. The Obviousness Rejection Based on Kobayashi and Additionally Cited Prior Art Claims 19–21, 23, 24, 26–29, 38, 40, and 45–48 Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 19 Based on the record before us, we are not persuaded that the Examiner erred in rejecting claims 19–21, 23, 24, 26–29, 38, 40, and 45–48 under 35 U.S.C. § 103(a) as unpatentable over Kobayashi and Rosen. Patent Owner argues that neither Kobayashi nor Rosen teach “a plurality of selectable response indicators that are simultaneously displayed at different locations on the display panel,” as recited in claim 19. Patent Owner, in particular, points out that Kobayashi describes yes and no keys that are physical keys below the display panel. According to Patent Owner then, the keys “are clearly not displayed on the display panel” nor are they “simultaneously displayed on the display panel.” App. Br. 17. Turning to Rosen, Patent Owner alleges that Rosen “fails to disclose the step of allowing a user to select one of a plurality of simultaneously displayed selectable response indicators in response to a query.” App. Br. 17–18. These arguments, however, attack the references individually rather than address the combination. As the Requester explains, To the extent that Kobayashi does not explicitly disclose displaying the responses directly on a touch screen, such a feature was well known in the prior art. For example, Rosen ’318 discloses a “touch screen thermostat 110 with a housing 111 and touch screen 112” and describes that the thermostat 110 displays selectable buttons that are related to HVAC configuration information. (Rosen '318 at 7:36-42; see also FIGS. 4-5 and 12.) TPR comments 74; see also ACP 39 (incorporating Requester’s comments). In other words, the rejection merely relies on Rosen for the touch screen limitation and not for allowing a user to select a response indicator in response to the displaying of the sentence, as suggested by the Patent Owner. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 20 See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Likewise, unconvincing is Patent Owner’s argument that Kobayashi and Rosen combined fail to teach “a plurality of selectable response indicators, each selectable response indicator identifying a system component type or characteristic.” App. Br. 18 (emphasis omitted). Specifically, Patent Owner maintains that “YES” and “NO” represent an affirmation or a dissent to a question, not an identification of a system component type or component characteristic. Claims 19, 26, 46 and 47 require a plurality of selectable response indicators, each selectable response indicator identifying a system component type or characteristic. Kobayashi can at most only question the presence of a single component in each query; e.g., “at step 118, the installer is asked if there is a heat pump” and at “step 120, if the installer responds with a positive reply, the response is stored.” (Kobayashi col. 8:27-29.) Id. We disagree. Kobayashi describes providing yes or no answers in response to grammatically correct sentences. These responses at least identify system component characteristics. “For example, in the example above, the installer is asked if there is a heat pump. The selectable responses “YES” and “NO” identify the existence or non-existence of a heat pump in the system, which are characteristics of the heat pump.” TPR Comments 73- 74; see also ACP (adopting the Requester’s comments); Kobayashi 8:23–43 (describing other system component characteristics, such as information identifying “a crossover temperature where one heat source will be more economical than the other,” and “the number of zones”). Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 21 Therefore, for the reasons discussed above and identified by the Examiner, we sustain the rejection of claims 19–21, 23, 24, 26–29, 38, 40, and 45–48 as unpatentable over Kobayashi and Rosen. Claims 22, 30, and 43 Patent Owner does not present separate patentability arguments for claims 22, 30, and 43, but instead rely on the arguments presented for claims 19 and 26. See App. Br. 18–19. For the reasons discussed above, we find these arguments unpersuasive. Therefore, we sustain the rejection of claims 22, 30, and 43 as unpatentable over Kobayashi, Rosen, and Invensys. Claims 31–36, 41, 44, and 49–51 With respect to claims 31–36, 41, 44, and 49–51, Patent Owner relies on the arguments presented for claims 19 and 26. Namely, that Kobayashi in view of Rosen fails to teach or suggest “selectable response indicators, where each selectable response indicator identifies a system component type (i.e., the words "YES" and "NO" do not each identify a system component type), and that the selectable response indicators are simultaneously displayed (for claims 49 and 51), as required by claims 31, 49 and 51.” App. Br. 20. As discussed above, we find these arguments unpersuasive. Additionally, Patent Owner contends that the Kobayashi, Rosen, and Invensys combined does not teach or suggest a “‘second query requesting additional information based on the type of system component selected in the first selection,’ as recited in claim 31 and using similar language in claims 49 and 51.” App. Br. 20; see also App. Br. 21 (arguing that the Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 22 Invensys does not teach dependency). Claim 31, however, recites that the requested additional information is regarding the type of system component selected. See App. Br. 38 (claim 31), Claims App’x; see also RAN 5–6 (denying enter of Patent Owner’s submitted amendment). As such, we find these arguments regarding the claim’s dependency unavailing. Patent Owner also alleges that Invensys does not teach the recited sequence or order of displays. The Examiner, however, relies on Kobayashi for the limitation of the second query immediately succeeding the first query. See TPR Comments 102; RAN 30 (incorporating by reference TPR Comments 85–123). One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Therefore, for the reasons discussed above and identified by the Examiner, we sustain the rejection of claims 31–36, 41, 44, and 49–51 as unpatentable over Kobayashi, Rosen, and Invensys. Claims 52–54 Patent Owner asserts that the language of claim 52 is similar to claim 31 and relies on the arguments presented for claim 31. App. Br. 22. For the reasons discussed above, we find these arguments unpersuasive. Therefore, we sustain the rejection of claims 52–54 as unpatentable over Kobayashi, Rosen, Invensys, and Wacker. Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 23 F. The Written Description Rejection of Claims l, 2, 4–10, 19–25, 37–39, 42, 43, 45, and 46 Based on the record before us, we are not persuaded that the Examiner erred in rejecting claims 1, 2, 4–10, 19–25, 37–39, 42, 43, 45, and 46 under 35 U.S.C. § 112, first paragraph (pre-AIA). The Examiner agrees with Requester that because the configuration information limitation excludes indicating an off or on status,3 it is a negative limitation and there is insufficient written description support for this negative limitation. RAN 24 (incorporating by reference TPR Comments 6–7). In adopting the proposed rejection, the Examiner points out that nothing in the specification shows the inventors possessed a method where configuration information excludes indicating an off or on status of any system component. ACP 31. Patent Owner, on the other hand, alleges that Figures 12, 13A–13J, and corresponding disclosure support the limitation that the configuration information cannot indicate an off or on status of any system component. App. Br. 4; Reb. Br. 1–2. In particular, Patent Owner asserts that The configuration information presented in the drawings and in the supporting sections of the specification (see ’504 patent col. 17:1 – 19:32) refer to configuration choices and does not include a configuration option information indicating an “Off” or “On” status for any of the controlled system components. Thus, one of 3 Specifically, claim 1 recites “wherein the configuration information is related to characteristics of one or more system components of the HVAC system to be controlled by the HVAC controller, and wherein the configuration information is not indicating an Off or On status of any system component that is to be controlled by the HVAC controller.” App. Br. 29 (claim 1), Claims App’x. This limitation is also recited in independent claims 19 and 46. Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 24 ordinary skill in the art would have known that configuration option information as described in the ’504 specification does not include operational status indicators including “Off” and “[O]n.” App. Br. 4; see also Reb. Br. 2 (repeating the same). As such, we understand Patent Owner to be relying on the absence of any depiction or discussion of “off” and “on” indicators to provide written description support. In other words, because there is no discussion of these indicators in the general discussion of configuration choices, an ordinarily skilled artisan would have understood the inventor to be in possession at the time of filing of the claimed limitation that configuration information cannot indicate the “off” or “on” status as recited by claim 1. We disagree. The absence of a depiction or discussion of a negative limitation is insufficient to establish written description support. See, e.g., MPEP § 2173.05(i)(“Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.”(emphasis added)). Specifically, in the case of a negative limitation, there is sufficient description support when the specification provides a reason to exclude the particular limitation. Santarus v. Par Pharm, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012); see also Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1354 (Fed. Cir. 2015). Patent Owner fails to identify any disclosure of the specification that provides a reason to exclude the off and on indicators. For example, the specification does not discuss any advantages or disadvantages of excluding the off and on indicators. Nor are the off and on indicators presented as alternatives to some other types of indicators. Moreover, while Patent Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 25 Owner identifies the specification’s discussion of configuration information, notably absent is any suggestion that indicating an off or on status would be excluded or that these indicators are alternatives. Instead, the ’504 patent specification “says nothing one way or the other about configuration information being (or not being) an ‘Off or On status’ of a piece of equipment.” TPR Comments 7. This lack of discussion “does not describe a reason why the controller shown in the patent's configuration information needs to exclude on/off status. . . .” Id. (citing Peffer Decl. III ¶ 13). As such, we are not persuaded that the Examiner erred in finding insufficient written description support. Therefore, for the reasons discussed above and identified by the Examiner, we sustain the rejection of 1, 2, 4–10, 19–25, 37–39, 42, 43, 45, and 46 under 35 U.S.C. § 112, first paragraph (pre-AIA) for insufficient written description support. G. The Written Description and Indefiniteness Rejections of Claims 26–30 and 52–54 We are similarly not persuaded that the Examiner erred in rejecting claims 26–30 and 52–54 for lack of written description support under 35 U.S.C. § 112, first paragraph (pre-AIA), and as indefinite under 35 U.S.C. § 112, second paragraph (pre-AIA). The Examiner, in particular, explains that “it is unclear how the ‘relationship’ between the response indicators and the second query make the response indicators ‘independently selectable’. None of this is explained by the PO nor does it make clear in the specification Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 26 what is meant by this limitation.” ACP 32–33 (rejecting the claims for lack of written description); see also ACP 34 (rejecting the claims as indefinite). With respect to the written description rejection, Patent Owner contends that the specification describes multiple instances of response indicators where the user can independently select between multiple choices. App. Br. 5. Patent Owner then addresses the indefiniteness rejection by asserting that “the word ‘independently’ accurately describes the relationship between the possible selections presented to a user during configuration. Specifically, the selections presented to the user have no inter-dependencies, and thus the user is able to select any of the presented options.” App. Br. 5–6. Neither argument, though, addresses the Examiner’s points that limitation requiring the indicators to be independently selectable in response to a query is unsupported and unclear. As such, Patent Owner fails to persuade us of error in the Examiner’s rejections. Therefore, for the reasons discussed above and identified by the Examiner, we sustain the rejection claims 26–30 and 52–54 for lack of written description support under 35 U.S.C. § 112, first paragraph (pre- AIA), and as indefinite under 35 U.S.C. § 112, second paragraph (pre-AIA). H. Rejection under 35 U.S.C. § 314(a) for Enlarging the Scope of the Claims Claims 1, 2, 4–16, and 19–54 Based on the record before us, we are not persuaded that the Examiner erred in rejecting claims 1, 2, 4–16, and 19–54 under 35 U.S.C. § 314(a) for enlarging the scope of the claims. Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 27 Patent Owner amended claim 1 to delete “when controlling” and replace it with “to generate control signals for the.” Specifically, the amendment to the limitation at issue is as follows: using the modified configuration information of the HVAC controller to generate control signals for the [when controlling] one or more system components of the HVAC system. According to the Patent Owner, It is simply not logical for the RAN to contend that the very specific recitation of generating a control signal is broader than the general recitation of “controlling.” Put another way, generating a control signal is a subset of “controlling”; that is, a particular way of controlling. It cannot possibly broaden the term “controlling.” Reb. Br. 4 (emphasis omitted); see also App. Br. 6 (asserting the same). While we agree that the amendment may be more specific or narrower as to how the controlling is done (i.e., to generate control signals), the deletion of “when” also broadens the claim as to when the modified configuration information must be used. See RAN 12 (“A claim is broadened if it is broader in any one respect, even though it may be narrower in other respects”). As such, we agree with the Examiner that claim 1, as well as claim 11, which was also amended, and new claims 19, 26, 31, 46, 47, 49, 51, and 52, which each include a similar limitation, improperly enlarge the scope of the claims. Therefore, for the reasons discussed above and identified by the Examiner, we sustain the rejection of claims 1, 2, 4–16, and 19–54 under 35 U.S.C. § 314(a) as enlarging the scope of the claims of the patent being reexamined. Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 28 I. The Remaining Obviousness Rejections Because our decision is dispositive regarding patentability of all appealed claims based on the foregoing prior art references, we need not reach the merits of the Examiner’s decision to reject also the claims based on the additionally cited combinations of prior art. See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching other rejections after upholding an anticipation rejection); see also Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (approving ITC’s determination based on a single dispositive issue, and not reaching other issues not decided by the lower tribunal). V. CONCLUSION We affirm the Examiner’s decision to reject claims 1, 2, and 4–54. VI. TIME PERIOD FOR RESPONSE Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED Appeal 2017-000943 Patent 7,634,504 B2 Reexamination Control 95/002,041 29 Patent Owner: HONEYWELL/HUSCH PATENT SERVICES 101 COLUMBIA ROAD P.O. BOX 2245 MORRISTOWN, NJ 07962 Third Party Requestor: FISH & RICHARDSON PC (TC) P O BOX 1022 MINNEAPOLIS, MN 55440-1022 Copy with citationCopy as parenthetical citation