Ex Parte 7,775,452 B2 et alDownload PDFPatent Trial and Appeal BoardMar 31, 201695002314 (P.T.A.B. Mar. 31, 2016) 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. 95/002,314 09/14/2012 7,775,452 B2 074908.0116 9825 26111 7590 04/01/2016 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER ENGLISH, PETER C ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 04/01/2016 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 ____________________ GOODMAN GLOBAL HOLDINGS, INC. Third Party Requester v. CARRIER CORP. Patent Owner ____________________ Appeal 2015-004769 Reexamination Control 95/002,314 Patent US 7,775,452 B21 Technology Center 3900 ____________________ Before: STEVEN D.A. McCARTHY, DANIEL S. SONG, and BRETT C. MARTIN, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL 1 Issued to Shah et al. on August 17, 2010 (hereinafter the ’452 patent). Appeal 2015-004769 Reexamination Control 95/002,314 Patent US 7,775,452 B2 2 STATEMENT OF THE CASE Appellant/Patent Owner appeals under 35 U.S.C. §§ 134(b) and 315(a) from the Examiner’s rejections of claims 1–81. We have jurisdiction under 35 U.S.C. §§ 134(c) and 315(b). The Patent Owner requested, but subsequently waived, an oral hearing. We AFFIRM. We are informed that the ’452 patent is involved in a litigation between the parties styled Carrier Corporation v. Goodman Global Inc. et al., 1:12-cv-00930-SLR (D. Del.) and that there is also a reexamination proceeding ongoing of the related patent US 7,243,004. THE INVENTION The Patent Owner’s invention is directed generally to “a heating, ventilating and air conditioning ([H]VAC) system wherein several interconnected units communicate control signals to and from each other over a communication bus.” Spec., col. 1, ll. 5–8. Claims 1 and 12, reproduced below, are illustrative of the claimed subject matter: 1. An HVAC system comprising: a thermostat incorporating a central control, and operator input switches; a data bus communicating control signals from said central control to an indoor HVAC unit, said indoor HVAC unit being operable to provide a heating function to air within an environment, said indoor HVAC unit being provided with a control that directly controls said indoor HVAC unit, and which receives control signals on said data bus from said central control. Appeal 2015-004769 Reexamination Control 95/002,314 Patent US 7,775,452 B2 3 12. An HVAC system comprising: a data bus including four wires communicating signals from a central control to a control for an indoor HVAC unit, said data bus including two control wires carrying a plurality of distinct control signals and two power wires carrying power, said indoor HVAC unit providing a power source for providing power over said two power wires, said central control being a system control for generating and sending controls signals to said indoor HVAC unit control, said indoor HVAC unit being operable to provide heating and a fan function to move air within an environment; and an outdoor HVAC unit provided with four wires, with two power wires carrying power signals, and two control wires carrying a plurality of distinct control signals from said outdoor HVAC unit to said central control, said central control providing control signals to said outdoor HVAC unit control to operate said outdoor HVAC unit. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Hartsell Stewart Heckenbach Dushane Bessler Bahel Sugiyama Wada US 4,298,946 US 4,382,544 US 4,616,325 US 5,348,078 US 5,410,230 US 5,475,986 US 5,632,155 US 6,453,689 Nov. 3, 1981 May 10, 1983 Oct. 7, 1986 Sep. 20, 1994 Apr. 25, 1995 Dec. 19, 1995 May 27, 1997 Sep. 24, 2002 Appeal 2015-004769 Reexamination Control 95/002,314 Patent US 7,775,452 B2 4 THE REJECTIONS ON APPEAL The Examiner made the following rejections: 2 1. Claims 1–3, 5, 6, 8–13, 18, 19, 21–29, 31–39, 57, 59–62, and 81 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Bahel. RAN 4, 25. 2. Claims 12, 13, 18, 19, and 21–25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bahel and Sugiyama. RAN 10, 26. 3. Claims 4, 6, 13, 15–17, 52, 58, 73, and 80 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bahel and Dushane. RAN 12, 27. 4. Claims 10, 15–17, 22, 44, 46, 65, and 67 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bahel and Heckenbach. RAN 14. 5. Claims 7 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bahel and Stewart. RAN 16. 6. Claims 14, 53, and 74 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bahel, Dushane, and Heckenbach. RAN 17. 7. Claims 13 and 15–17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bahel, Sugiyama, and Dushane. RAN 18, 28. 8. Claims 15–17 and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bahel, Sugiyama, and Heckenbach. RAN 20. 2 The numbers assigned to the rejections are for the convenience of the present opinion and do not correspond in all cases to those appearing in the RAN. Appeal 2015-004769 Reexamination Control 95/002,314 Patent US 7,775,452 B2 5 9. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Bahel, Sugiyama, and Stewart. RAN 21. 10. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Bahel, Sugiyama, Dushane, and Heckenbach. RAN 22. 11. Claims 1, 5–7, 9, 11, and 81 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Stewart. RAN 22. 12. Claim 43 stands rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to point out and distinctly claim the subject matter regarded as the invention. RAN 28. 13. Claims 38, 39, 61, and 62 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bahel and Bessler. RAN 29. 14. Claims 30, 40, 41, 63, and 64 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bahel and Wada. RAN 30. 15. Claims 42 and 78 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bahel, Wada, and Dushane. RAN 32. 16. Claims 43 and 79 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bahel, Wada, Dushane, and Heckenbach. RAN 33. 17. Claims 45 and 66 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bahel, Heckenbach, and Dushane. RAN 33. 18. Claims 47–51 and 68–72 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bahel, Heckenbach, and Wada. RAN 34. 19. Claims 54, 55, 75, and 76 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bahel, Dushane, and Wada. RAN 34. Appeal 2015-004769 Reexamination Control 95/002,314 Patent US 7,775,452 B2 6 20. Claims 56 and 77 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bahel, Dushane, Wada, and Heckenbach. RAN 35. 21. Claims 31 and 32 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bahel and Hartsell. RAN 35. 22. Claim 30 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Stewart and Wada. RAN 36. 23. Claims 38–56 and 61–79 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. RAN 37. 24. Claims 30, 47, 48, 68, and 69 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. RAN 39. ANALYSIS Written Description The Examiner makes two written description rejections, one of claims 38–56 and 61–79; and the other of claims 30, 47, 48, 68, and 69. Both rejections arise out of amended claim subject matter that is not described using the same words as in the Specification, but using terminology that is similar. In both instances, we must determine whether the claim language at issue is supported by this similar, but not identical language found in the Specification. The first rejection deals with the term “control information” such as that in claims 38 and 61, which recite “control information for both a furnace and a fan/heater combination.” Claims 39–56 and 62–79 depend ultimately either from claim 38 or claim 61, and incorporate the challenged Appeal 2015-004769 Reexamination Control 95/002,314 Patent US 7,775,452 B2 7 language by reference. As the Patent Owner admits, the Specification does “not use the words ‘control information’ in ipsis verbis, [but] the ’452 specification still nevertheless describes that the central control has the information to control the various HVAC units in the system” via the generation and communication of “control signals.” See App. Br. 38, citing Spec. Abstract. As the Patent Owner further explains “the central control can generate control signals for a furnace, fan/heater combination, air conditioner, or heat pump depending on the particular system configuration.” App. Br. 38. We also note that original claim 12 clearly recites that the central control is “a system control for generating and sending control signals to said indoor HVAC unit control.” See also Spec. col. 2, ll. 58–66 and col. 3, ll. 4–6. By being able to generate as well as communicate control signals, the central control necessarily must include control information required to generate those control signals. See App. Br. 38. We do not agree with the Requester that this is an instance where the Patent Owner is arguing that the control information is an obvious teaching derived from the specific teaching of control signals (see Resp. Br. 37), but rather we find that the original Specification describes the generation and communication of control signals sufficiently to find that the Patent Owner had possession of those control signals containing control information. Accordingly, we do not sustain this rejection. The second rejection relates to the use of the terms “access module” and “remote access module.” The Requester argues that the Specification merely states “at most that an ‘access module’ would be a desired feature” Appeal 2015-004769 Reexamination Control 95/002,314 Patent US 7,775,452 B2 8 and that there is “insufficient [support] to demonstrate that the patentee was in possession of the feature.” Resp. Br. 37. We disagree. As the Patent Owner points out, the Specification describes a “systems access module 68” as shown in Figure 2. The Specification describes that “[a]n access module 68 may also be connected into the data bus 59, through its own data bus 69. As known, an access module allows remote access to the HVAC system.” Spec. col. 4, ll. 49–54. We agree that “[t]he ’452 patent explains not only what the access module does, but how it communicates with the rest of the overall system.” App. Br. 40. As such, we conclude that the Specification sufficiently supports the claim language at issue and thus do not sustain the rejection of claims 30, 47, 48, 68, and 69. Indefiniteness The Examiner rejects claim 43 for reciting “said at least one peripheral HVAC unit” for lack of antecedent basis because claim 42 recites only “a peripheral HVAC unit.” While it certainly would be clearer if claim 43 were amended to use the same language used in claim 42 (or vice versa), given that these are the only uses of “peripheral HVAC unit” we agree with the Patent Owner that one of ordinary skill in the art would have been able to reasonably ascertain the scope of the claim. See App. Br. 40. Accordingly, we do not sustain this rejection. Anticipation The Examiner rejected claims 1–3, 5, 6, 8–13, 18, 19, 21–29, 31–39, 57, 59–62, and 81 as anticipated by Bahel. This rejection encompasses all of the independent claims at issue in this reexamination. The main thrust of the Patent Owner’s argument regarding this rejection is that Bahel does not Appeal 2015-004769 Reexamination Control 95/002,314 Patent US 7,775,452 B2 9 properly teach the claimed “central control” and also that whatever Bahel does teach, it is not located at the thermostat as required by the claims, but rather “Bahel discloses an indoor control unit that ‘functions as the master.” App. Br. 10. The Patent Owner asserts that Bahel cannot teach centralized control because it teaches “distributed control, which is diametrically opposed to the centralized control claimed in the ’452 patent.” App. Br. 9. As the Patent Owner points out, the Examiner does not dispute that Bahel is a distributed architecture, but “contends that Bahel discloses distributed operational control, but centralized system control.” App. Br. 9 (citing RAN 6 (describing “operational control” as “direct control of an HVAC unit” and “system control” as “overall control of an HVAC system.”); see also Resp. Br. 7). The Patent Owner further argues that Bahel’s “distributed system does not render it capable of receiving user desired settings, receiving information from HVAC units, and communicating several distinct control signals to an indoor unit, much less in a centralized architecture.” App. Br. 10. We agree, however, with the Requester that “[d]istributed operational control does not preclude central system control.” Resp. Br. 8. We also agree with the Requester that in the systems taught by both Bahel and the ’452 patent, “[o]perational control is distributed among the HVAC unit controllers, but system control is limited to the central system master.” Resp. Br. 8; see Dec. Auslander, paras. 16–20, 23–28. We are also unpersuaded by the Patent Owner’s argument that “[t]he Examiner attempts to make up for these [alleged] deficiencies in Bahel by Appeal 2015-004769 Reexamination Control 95/002,314 Patent US 7,775,452 B2 10 pointing to a single boilerplate sentence describing a potential modification to Bahel that ‘from a system standpoint, any one of the microprocessor- based modules could serve as the master.’” App. Br. 10 (citing RAN 4, Bahel col. 9, l. 59 – col. 10, l. 7). Far from being boilerplate, this sentence teaches that while the preferred embodiment describes the master control features as being at the indoor unit, such features could reside at either of two other locations, one of which being the claimed location of the thermostat. Furthermore, we agree with the Requester that the Patent Owner’s “argument that Bahel does not describe ‘what functions must be moved to the thermostat and what function must stay with the indoor unit’ is irrelevant” because the claims refer only generally to system control and do not claim specific control features that may or may not need to be moved. Resp. Br. 8 (quoting App. Br. 11). Bahel sufficiently describes that overall, general system/master control features may reside at any one of three locations, including the thermostat, which is all that is claimed. Furthermore, contrary to the Patent Owner’s assertion, this is not a modification that moves the rejection from the anticipation realm to the obviousness realm, but it is a teaching within Bahel itself that the master controls may be located at any one of three locations, including the thermostat as claimed. The Patent Owner also argues that moving the master control functions to the thermostat would have been beyond one of skill in the art (App. Br. 11). We do not subscribe to the Patent Owner’s characterization of the rejection as “moving” the functions in the sense of modifying the Appeal 2015-004769 Reexamination Control 95/002,314 Patent US 7,775,452 B2 11 system so that a microprocessor at the thermostat performs functions already resident elsewhere. Bahel teaches a system in which the master control functions reside at any one of a small number of locations, including the thermostat. Given that Bahel specifically teaches that the master controls may be located in any of three locations, we are not persuaded that one of skill in the art would have been incapable of implementing a system in which master control functions resided at the thermostat. On the contrary, the implementation merely would have required applying well-known bus communication technology to a field where it had previously not been widely used, although both Bahel and Stewart show that such field-specific bus communication was known prior to Patent Owner’s patent. That there may have been technical hurdles in accomplishing this, as the Patent Owner argues, is not dispositive of this issue. Given that a prior art patent is presumed enabled for that which it teaches, and Bahel specifically teaches the master controls being located at the thermostat, we agree with the Requester that implementing such a system would not have been beyond the level of ordinary skill in this art. See Resp. Br. 9, citing Dec. Auslander, paras. 30–32. The Patent Owner next argues that “Bahel, however, does not anticipate . . . a power source located in its indoor unit” as recited in claims 12, 34 and 81. See App. Br. 12–13. As the Requester points out, Bahel specifically teaches that “communication link 48 is a four wire bus supplying AC power and ground to all three units and also providing a pair of serial communication data lines.” Resp. Br. 9 (quoting Bahel col. 7, ll. 34–37). The Requester sufficiently explains how this teaching provides Appeal 2015-004769 Reexamination Control 95/002,314 Patent US 7,775,452 B2 12 power as claimed and thus we are not persuaded of error on this point. See Resp. Br. 9–10. The Patent Owner further argues that “Bahel does not anticipate ‘at least one peripheral unit’ because Bahel’s ‘auxiliary electronic heater’ is not a ‘peripheral unit,’ as recited in claim 6.” App. Br. 13. The Patent Owner first argues that the auxiliary heater cannot be the peripheral unit of claim 6 while also serving as the furnace of claim 37. Id. While this might be true if claim 37 depended from claim 6, thus potentially requiring two separate elements to anticipate the two claimed elements, claim 37 in this instance is entirely separate from claim 6. Accordingly, it is acceptable for an element of Bahel to be considered a peripheral unit for one claim while also being a furnace in relation to an entirely separate claim. Additionally, as the Requester states, it is not necessary for the auxiliary heaters to be wired to the thermostat because, as Bahel teaches, the auxiliary heaters are wired to the indoor unit (Bahel col. 7, ll. 56–61) and then “[t]he thermostat exercises system control while the indoor unit exercises operational control over the auxiliary heaters.” Resp. Br. 10. Regarding claims 37 and 60, while we are unpersuaded by the Patent Owner’s argument, we agree that the Examiner erred in rejecting these claims as anticipated by Bahel. We do not agree with the Patent Owner that the claimed “furnace” necessarily requires combustion, but we ascertain from the state of the art that a furnace and a heat pump fall into two different classes of devices and one of skill in the art of HVAC systems would not have referred to a heat pump as a furnace. That said, the furnace recited in claims 37 and 60, and the heat pump described by Bahel, are both Appeal 2015-004769 Reexamination Control 95/002,314 Patent US 7,775,452 B2 13 conventional HVAC units. We also agree with the Requester that the Patent Owner “acknowledged that it had not invented either a furnace or a fan/heater combination [or a heat pump, for that matter], but clarified that its invention ‘was to incorporate a control on [an indoor HVAC unit or an outdoor HVAC unit] and communicate with the central control over the data bus.’” Resp. Br. 5 (citing January 30, 2008 Appeal Brief 36-37). We see no evidence that there was any specific technical hurdle in communicating with a heat pump versus a furnace in the manner described in the ʼ452 patent so as to lend novelty to this recitation of a furnace. We recognize that while they operate by different thermodynamic principles, heat pumps and furnaces are essentially interchangeable from a control standpoint. Additionally, the ’452 patent asserts that “all of this control may be known in the art. It is how the control signals are communicated that is novel.” Spec. col. 4, ll. 65-67. Accordingly, having determined above that Bahel does teach the allegedly novel manner of communicating control signals, we conclude that it would have been an obvious substitution to use a furnace as the heating device as claimed rather than a heat pump as disclosed in Bahel. This finding amounts to new grounds of rejection not previously made by the Examiner. Obviousness Rejections Bahel and Dushane The Patent Owner’s main argument regarding this combination is that Dushane fails to teach the requisite central control. See App. Br. 23–24.3 3 The Patent Owner also asserts, in summary fashion, that the Examiner’s stated reason for combining the teachings of Bahel and Dushane is conclusory (see App. Br. 28–29). As the Requester points out, the Patent Appeal 2015-004769 Reexamination Control 95/002,314 Patent US 7,775,452 B2 14 As the Requester properly points out, however, the Examiner does not need to rely upon Dushane for that element because it is already taught in Bahel. Resp. Br. 16. Dushane is merely used for the teaching in the claims at issue that there be a peripheral HVAC unit that is hard-wired to the indoor HVAC unit control and, as the Requester notes, “Patentee does not contest that ‘room thermostat 50’ or ‘registers or dampers 30’ meet the limitation ‘peripheral HVAC unit [that] includes its own control.’” Id. Additionally, we agree with the Requester that Dushane discloses the hard-wired aspect by disclosing that “the thermostat units 50 [i.e., the peripheral units] may be hardwired to the central controller 60 [i.e., the indoor HVAC unit control].” Id (quoting Dushane col. 16, ll. 44–46). Accordingly we sustain this rejection of claims 4, 6, 13, 42, 52, 73, 78, and 80. Regarding claim 58, which, as noted by the Requester, recites a connection admitted by the ’452 patent as being known in the art,4 Patent Owner argues what appears to be an overly-narrow claim interpretation. The Patent Owner argues the Examiner errs by relying “on Dushane’s statement that an ‘individual zone thermostat may be mounted in a…specifically designed junction box.” App. Br. 25 (quoting Dushane col. 3, ll 29–32); see also RAN 12–14. Patent Owner believes the finding is incorrect because “‘an individual zone thermostat’ is clearly not an outdoor unit.” App. Br. 25. Claim 58, however, only requires that “said outdoor Owner fails to explain this assertion further (see Resp. Br. 19). The Examiner’s reasoning is not conclusory on its face and the argument is not persuasive. 4 “Wires 43A-D are connected to wires 28A-D, as known, such as at a routing or junction box 31.” Spec. col. 3, ll. 15–16 (emphasis added). Appeal 2015-004769 Reexamination Control 95/002,314 Patent US 7,775,452 B2 15 HVAC unit is connected to said data bus through a junction box.” This claim language does not place any specific location restriction upon the junction box and only requires that one thing be connected to another through a junction box. As we understand the Examiner’s interpretation, Dushane teaches the zone thermostat to be mounted in a junction box and that zone thermostat sits between an outdoor unit and a data bus, thus satisfying the claim. Given that a) the ’452 patent admits that connecting through a junction box is a known manner of connection and b) the arguments provided are not commensurate with the much more general scope of claim 58, we are not persuaded of error in this rejection. Bahel and Stewart The Examiner relies on Stewart to teach the “interface module” recited in claims 7 and 20. RAN 16–17. The Patent Owner’s argument regarding this limitation is that the Examiner improperly relies upon a single element, the energy controller, to teach both the “indoor HVAC unit control” and the “interface module.” App. Br. 17–18. As the Requester points out, “[t]he Federal Circuit has held that the same structure may satisfy distinct claim elements.” Resp. Br. 16 (citing Powell v. Home Depot, 663 F.3d 1221, 1231 (Fed. Cir. 2011)). We agree with the Requester that “the energy controller 12 of Stewart wears several hats and can meet several elements.” Resp. Br. 17. Given that these elements are essentially microprocessors, we see no reason that a single microprocessor cannot perform two different functions. Accordingly we sustain this rejection of claims 7 and 20. Remaining Rejections Appeal 2015-004769 Reexamination Control 95/002,314 Patent US 7,775,452 B2 16 The Patent Owner provides no specific arguments regarding the remaining obviousness rejections over Bahel in combination with one or more of Dushane, Heckenbach, Bessler, and Wada, which encompass all of the remaining claims. The Patent Owner’s only argument against the remaining rejections is to allege deficiencies in the Examiner’s bases for combining the various references. See App. Br. 26–30. Contrary to the Patent Owner’s assertion, and as the Requester points out, the Examiner provided a detailed explanation for each combination that includes a reasonable basis for combining with rational underpinnings. See Resp. Br. 17–19. Accordingly, we agree with the Requester that these rejections are proper and “each Ground of Rejection Patent Owner cited as lacking ‘any reason’ to ‘combine the[] references’ cites the specific reasons first given for each combination.” Resp. Br. 18–19. Because the obviousness rejections over Bahel in combination with one or more of Dushane, Heckenbach, Bessler, and Wada encompass all of the appealed claims, we decline to reach the obviousness rejections based on Bahel and Sugiyama, alone or in combination with other references. Also, because anticipation and obviousness rejections based upon Bahel encompass all of the pending claims, we decline to reach the remaining rejections based upon Stewart as an anticipatory or primary reference. Secondary Consideration Evidence After a careful review of the declaration evidence (see RAN 40–44), the Examiner concluded that the prior art demonstrating obviousness was more persuasive than the Patent Owner’s evidence of non-obviousness based on secondary considerations. We do not give the declaration executed by Appeal 2015-004769 Reexamination Control 95/002,314 Patent US 7,775,452 B2 17 Dr. C. Keith Rice as much weight as granted by the Examiner. Nevertheless, we agree with the Examiner’s conclusion and adopt the Examiner’s findings by reference. The Patent Owner argues that its evidence establishes that the claimed subject matter satisfies a long felt but unsatisfied need; a failure by others to solve the same problem; and industry recognition of the solution. The Patent Owner asserts that HVAC systems as of the filing date of the ʼ452 were becoming increasingly complicated; that an increasing number of control wires required was increasing; and that, as a consequence, such systems were increasingly difficult to install and operate. (App. Br. 30, citing Jeffries Decl. ¶ 5; Vickers Decl. ¶¶ 5 & 6; see also col. 1, ll. 9–12, 19–38 and 61–64). The Patent Owner asserts that the teachings of Bahel are embodied in a VARITECH system marketed by a competitor of the Patent Owner (see Henze Decl. ¶ 24; Hickey Decl. ¶¶ 6–10; Hughes Decl. ¶¶ 4–7). One of the Patent Owner’s witnesses, Hughes, testifies that the VARITECH system was prone to control failures and improper installation (see ¶¶ 8–12); and attempts to solve the control failures by replacing the control algorithm for the indoor control unit was unsuccessful (see ¶ 10). Hughes testifies that the VARITECH system was not commercially viable and had to be recalled (Hughes Decl. ¶ 13). The Patent Owner asserts that the subject matter claimed by the ʼ452 patent solved these problems (see App. Br. 30, citing Jeffries Decl. ¶¶ 10 & 11; Vickers Decl. ¶¶ 9–13). More specifically, the Patent Owner asserts that its BRYANT EVOLUTION and INFINITY systems embodied the subject matter claimed in the ʼ452 patent; and that these systems solved the Appeal 2015-004769 Reexamination Control 95/002,314 Patent US 7,775,452 B2 18 problems experienced by the VARITECH system embodying the teachings of Bahel (see Meyers Decl. ¶ 4). One of the Patent Owner’s witnesses, David Meyers, testifies that the BRYANT EVOLUTION and INFINITY systems “received much praise and numerous awards for their revolutionary HVAC control technology,” as detailed in paragraph 7 of his declaration. Meyers also testifies that the sales of the BRYANT EVOLUTION and INFINITY systems increased as a percentage of the Patent Owner’s sales over their first three years on the market. (See Meyers Decl. ¶ 9; see also Jeffries Decl. ¶ 14). At the outset, we observe that claims 1–3, 5, 6, 8–13, 18, 19, 21–29, 31–39, 57, 59–62, and 81, which grouping includes all of the independent claims on appeal, are rejected as anticipated by Bahel. Evidence of secondary considerations is not pertinent to an anticipation rejection under 35 U.S.C. § 102. See In re Malagari, 499 F.2d 1297, 1302 (CCPA 1974). Therefore, the secondary considerations evidence, if ultimately persuasive at all, can only be persuasive as to the remaining claims on appeal. We recognize the testimony of the Patent Owner’s witnesses regarding the commercial failure of the VARITECH system, as well as the testimony of those witnesses as to the performance of the BRYANT EVOLUTION and INFINITY systems. Nevertheless, the Patent Owner has not established sufficient nexus between this testimony and the claims rejected for obviousness in this proceeding. Like the Examiner, we are persuaded that the subject matter of the remaining claims on appeal has been shown to have been obvious despite this testimony. Appeal 2015-004769 Reexamination Control 95/002,314 Patent US 7,775,452 B2 19 The Patent Owner’s witnesses merely testify that the INFINITY system “is a communicating system that connects using four wires, with central control located in the thermostat.” (Meyers Decl. ¶ 4; see also Vickers Decl. ¶¶ 4, 10 & 11). As noted earlier, we credit the Auslander Declaration over the Henze Declarations; and we find that Bahel describes a system with a master controller exercising overall system control and localized controllers controlling the functions of individual system components. We additionally find that a system embodying the subject matter of the appealed claims would operate in a similar manner. In addition, Bahel describes a communication link 48 that is a four wire bus including a pair of serial communication data lines. Resp. Br. 9 (quoting Bahel col. 7, ll. 34–37). In other words, those features that the Patent Owner’s witnesses credit with solving the problems exhibited by the VARITECH system have been described in Bahel. The testimony of the Patent Owner’s witnesses does not address the subject matter of the claims rejected under 35 U.S.C. § 103 specifically; and does not persuade us that the subject matter of the claims rejected for obviousness, as opposed to other advantages possessed by the commercial BRYANT EVOLUTION and INFINITY systems but not by the VARITECH system, overcame the problems with the VARITECH system. The Patent Owner argues that the Requester is using a protective order entered by a district court in pending litigation to hide material evidence from the Examiner and the Board. The scope of the protective order and its use by the Requester are issues to be addressed in the first instance by the Appeal 2015-004769 Reexamination Control 95/002,314 Patent US 7,775,452 B2 20 district court and not by the Board. We will not speculate as to what evidence the Patent Owner might have presented absent the protective order. DECISION We REVERSE the Examiner’s written description rejections of claims 30, 38–56, 61–79; we REVERSE the Examiner’s indefiniteness rejection of claims 37, 38, 43, 60, and 61; and we AFFIRM certain of the Examiner’s art-based rejections that encompass all of pending claims 1–81 as described above. Specifically, we enter a new grounds of rejection with respect to claims 37 and 60. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.77(b) which provides that "[a]ny decision which includes a new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Correspondingly, no portion of the decision is final for purposes of judicial review. For further guidance on new grounds of rejection, see 37 C.F.R. § 41.77(b)–(g). The decision may become final after it has returned to the Board. 37 C.F.R. § 41.77(f). 37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both. Appeal 2015-004769 Reexamination Control 95/002,314 Patent US 7,775,452 B2 21 (2) Request rehearing. The owner may request that the proceeding be reheard under § 41.79 by the Board upon the same record. . . . Any request to reopen prosecution before the Examiner under 37 C.F.R. § 41.77(b)(1) shall be limited in scope to the "claims so rejected." Accordingly, a request to reopen prosecution is limited to issues raised by the new ground(s) of rejection entered by the Board. A request to reopen prosecution that includes issues other than those raised by the new ground(s) is unlikely to be granted. Furthermore, should the Patent Owner seek to substitute claims, there is a presumption that only one substitute claim would be needed to replace a cancelled claim. Requester may file comments in reply to a Patent Owner response. 37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall be limited in scope to the issues raised by the Board's opinion reflecting its decision to reject the claims and the Patent Owner's response under paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not permitted as a matter of right. A newly proposed rejection may be appropriate if it is presented to address an amendment and/or new evidence properly submitted by the Patent Owner and is presented with a brief explanation as to why the newly proposed rejection is now necessary and why it could not have been presented earlier. Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b) for all Patent Owner responses and Requester comments is required. The Examiner, after the Board's entry of a Patent Owner response and Requester comments, will issue a determination under 37 C.F.R. § 41.77(d) as to whether the Board's rejection is maintained or has been overcome. The Appeal 2015-004769 Reexamination Control 95/002,314 Patent US 7,775,452 B2 22 proceeding will then be returned to the Board together with any comments and reply submitted by the Patent Owner and/or Requester under 37 C.F.R. § 41.77(e) for reconsideration and issuance of a new decision by the Board as provided by 37 C.F.R. § 41.77(f). The Requester may also request rehearing under 37 C.F.R. § 41.79, if appropriate. However, the Board may elect to defer issuing any decision on such request for rehearing until such time that a final decision on appeal has been issued by the Board. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. AFFIRMED; 37 C.F.R. § 41.77(b) Klh Appeal 2015-004769 Reexamination Control 95/002,314 Patent US 7,775,452 B2 23 Patent Owner: STERNE, KESSLER, GOLDSTEIN & FOX PLLC 1100 New York Avenue, N.W. Washington, D.C. 20005 Third Party Requester: Michael Hawes Baker Botts LLP 910 Louisiana Street Houston, TX 77002 Copy with citationCopy as parenthetical citation