Ex Parte Amundson et al

Patent Trial and Appeal Board

Jul 31, 2017

12323370 (P.T.A.B. Jul. 31, 2017)

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.
12/323,370 11/25/2008 John Amundson H0016807-1161.1346101 7653
90545 7590
HONEY WET ,T ,/STW
Patent Services
115 Tabor Road
P.O. Box 377
MORRIS PLAINS, NJ 07950
EXAMINER
TRAN, TUYETLIEN T
ART UNIT PAPER NUMBER
2179
NOTIFICATION DATE DELIVERY MODE
08/02/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentservices-us @ honey well, com
Honeywell.USPTO@STWiplaw.com
sherry, vallabh @honeywell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN AMUNDSON and JEFFREY BOLL
Appeal 2016-002424
Application 12/323,370
Technology Center 2100
Before CAROLYN D. THOMAS, JOHN R. KENNY, and
SHARON FENICK, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—14, 16—20, 22, and 23. See Claim
Appendix. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to a heating, ventilation,
and/or air conditioning (HVAC) controller that is more intuitive and user
friendly to program and operate. See Spec. 1:12, Abstract.
Appeal 2016-002424
Application 12/323,370
Claim 1 is illustrative:
1. A thermostat configured to control one or more
components of a Heating, Ventilation, and/or Air Conditioning
(HVAC) system, the thermostat comprising:
a controller configured to operate a control algorithm that
at least partially controls the one or more components of the HVAC
system, the control algorithm controlling the one or more components
of the HVAC system in accordance with a plurality of programmable
operating parameters;
a touch screen dot matrix display coupled to the
controller, the touch screen dot matrix display being configured to
display two or more available choices for a programmable operating
parameter on the touch screen dot matrix display, and further
configured to accept a choice between the two or more available
choices from a user via the touch screen dot matrix display; and
wherein the controller also displays on the touch screen
dot matrix display a help button that, if pressed, causes the controller
to display a help screen on the touch screen dot matrix display that
provides a textual description of one or more of the available choices
to aid the user in making the choice between the two or more
available choices for the displayed programmable operating
parameter.
Appellants appeal the following rejections:
Rl. Claims 1, 2, 4—12, 16, 17, 19, 20, and 23 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Amundson (US
2005/0119794 Al, June 2, 2005), Heffmgton (US 2007/0088465 Al, Apr.
19, 2007), and Johnson (US 2003/0001896 Al, Jan. 2, 2003);
R2. Claims 3, 13, 14, 18, and 22 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable Amundson, Heffmgton, Johnson, and Beezer
(US 6,597,314 Bl, July 22, 2003).
We review the appealed rejections for error based upon the issues identified
by Appellants, and in light of the arguments and evidence produced thereon.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
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Application 12/323,370
ANALYSIS
Claims 1—3, 6—8, 10—14, 16—20, 22, and 23
Issue 1: Did the Examiner err in finding that Amundson, Heffmgton,
and Johnson collectively teach or suggest a help screen that provides a
textual description of one or more of the available choices, as set forth in
claim 1?
Appellants contend that:
the cited paragraphs of Heffmgton at best disclose
providing ‘how to’ information or the like to a user . . . The
cited paragraphs of Heffmgton do not disclose that the help
screens ‘provide information relative to displayed operating
parameters’ . . . The cited paragraphs are simply too general or
generic
(App. Br. 10). Appellants further contend that “there would be no
motivation to modify the help button of Amundson et al. with the ‘how to’
information of Heffmgton in order to ‘eliminate the need for a separate user
manual’” (App. Br. 12). Appellants also contend that in Johnson “[wjhile
the information displayed may be based on which of the plurality of panels
or GUI elements are currently displayed, nothing in the cited passages of
Johnson et al. discloses that the information displayed ‘aids a user in making
the choice . . .’” (App. Br. 13) and “the disputed claim language reaches
well beyond merely describing an intended use since the claims actively
recite an actual state of configuration” (id. at 15). We disagree with
Appellants.
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Application 12/323,370
We refer to, rely on, and adopt the Examiner's findings and
conclusions set forth in the Answer. Our discussions here will be limited to
the following points of emphasis.
The Examiner finds:
In response, . . . the rejection is based on a combination of the
cited references . . . Amundson teaches . . . clicking help button
causing the controller to display the desired servicing
information on the display panel. . . Heffington further
discloses . . . providing help information for the current screen
. . . [and] Johnson discloses that help panel may display
information related to the channel parameters ... to aid the user
in making the choice between the two or more available choices
for the displayed programmable operating parameter
(Ans. 8—9). The Examiner further finds that “the limitation ‘to aid the user
in making the choice . . . ’ does not impose any structural requirement. . .
this limitation is intended use” {id. at 9). We agree with the Examiner.
As an initial matter, we point out that Appellants’ argument against
Heffington separately from Amundson and Johnson does not persuasively
rebut the combination made by the Examiner. One cannot show non­
obviousness by attacking references individually, where the rejections are
based on combinations of references. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425-26 (CCPA
1981). This is applicable here because Appellants seem to ignore the fact
that the Examiner is relying on Johnson to teach that the displayed
information specifically relates to the channel parameters (see Ans. 9; see
also Final Act. 4, citing Johnson 1132), not Heffington, a fact that
Appellants appear to concede (i.e., “[w]hile the information displayed [in
Johnson] may be based on which of the plurality of panels or GUI elements
are currently displayed” (see App. Br. 13)). Further, the Examiner relies
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Application 12/323,370
upon Amundson for a help mode and a help button (see Final Act. 3, citing
Amundson || 30, 41), and Heffmgton for a help screen that provides textual
description of the current screen (see Final Act. 3, citing Heffmgton H 28,
122). Thus, we find unavailing Appellants’ contention that the cited
paragraphs of Heffmgton alone do not disclose that the help screens provide
information relative to displayed operating parameters.
Regarding Appellants’ contention that “there would be no motivation
to modify the help button of Amundson et al. with the ‘how to’ information
of Heffmgton in order to ‘eliminate the need for a separate user manual’”
(see App. Br. 12), we find that the Examiner has found actual teachings in
the prior art and has provided sufficient motivation for modifying
Amundson with the teachings of Heffmgton, particularly since the Examiner
has shown that both references teach help screens (see Final Act 4). We also
point out that “[a]s long as some motivation or suggestion to combine the
references is provided by the prior art taken as a whole, the law does not
require that the references be combined for the reasons contemplated by the
inventor.” In re Beattie, 91A F.2d 1309, 1312 (Fed. Cir. 1992) (citations
omitted).
Regarding Appellants’ contention that “nothing in the cited passages
of Johnson et al. . . . ‘aids a user in making the choice . . .’” (App. Br. 13)
and “the disputed claim language reaches well beyond merely describing an
intended use” (id. at 15), we agree with the Examiner that the
aforementioned limitation in claim 1 “is intended use of the textual
descriptions” (see Ans. 9), and “Johnson clearly teaches that the context
sensitive help screen provides a textual description ... to aid the user in
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Application 12/323,370
making the choice” {id., citing Johnson 1132). For example, Johnson
discloses:
[T]he GUI may present a plurality of panels to the user
which may interactively guide the user through the specification
process. ... a first panel which represents options for
specifying values of a first parameter. . . . where the help
information displayed is based on which . . . GUI elements are
currently displayed
(1132; see also Abstract). In other words, Johnson’s GUI guides the user in
specifying parameters.
In any case, we point out that an intended use of a claimed device
does not limit the scope of the claim. In re Schreiber, 128 F.3d 1473, 1477
(Fed. Cir. 1997) (product claim’s intended use recitations not given
patentable weight); see also Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) (“An intended
use or purpose usually will not limit the scope of the claim because such
statements usually do no more than define a context in which the invention
operates.”). Here, we find that the recited “to aid the user in making the
choice” merely defines the purpose of the textual description, and the
Examiner has shown that Johnson’s help information is capable of providing
aid to the user.
Therefore, for apparatus claim 1 (and claim 13), we agree with the
Examiner that claim 1 ’s statement of intended use does not distinguish over
Johnson’s apparatus (combined with Amundson and Heffmgton) that
discloses all the recited limitations and is capable of performing the recited
function. See Schreiber, 128F.3dat 1477.
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As for independent method claim 16, this claim is rejected by the
Examiner (Final Act. 2—4) and argued by Appellants (Appeal Br. 16) on the
same bases, and our findings above apply for the balance of the claim
recitations of claim 16. However, rather than the intended use recitation in
claim 1, claim 16 recites, “a help screen that provides information that
provides the user with a textual description of one or more choices regarding
the one or more displayed operating parameters and aids the user in
determining the value for one or more of the operating parameters displayed
on the screen.” We find that the recited “aids the user in determining the
value for one or more of the operating parameters displayed” (and similar
recitations in independent method claims 19 and 23) recite non-functional
descriptive material. The Examiner need not give patentable weight to
descriptive material that does not have a new and obvious functional
relationship with the substrate. See In re Gulack, 703 F.2d 1381, 1386 (Fed.
Cir. 1983); see also In reNgai, 367 F.3d 1336, 1338 (Fed. Cir. 2004).
Non-functional descriptive material refers to data content that does
not exhibit a functional interrelationship with the substrate and does not
affect the way the computing processes are performed. See MPEP
§ 2106.01. In one of our precedential decisions, an expanded panel held that
elements that do not affect the claimed process are non-functional material
and are merely descriptive. See Ex parte Nehls, 88 USPQ2d 1883, 1887—88
(BPAI 2008) (precedential).
In Ngai, the inclusion of new printed matter with an existing product,
detailing new instructions for use of the product, was found to be non-
patentable over the existing product and instructions. Ngai, 367 F.3d at
1338. Similarly, in this case, new instructions do not patentably define over
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Application 12/323,370
the prior art. Otherwise, as contemplated by the Federal Circuit in Ngai,
“anyone could continue patenting a product indefinitely provided that they
add a new instruction sheet to the product.” Id. at 1339.
Thus, we do not give the information provided on the help screen in
claim 16 (and claims 19 and 23) patentable weight, and the claims are not
patentably distinguishable over the prior art. Accordingly, we sustain the
Examiner’s rejection of independent claims 1, 13, 16, 19, and 23.
Appellants’ arguments regarding the Examiner’s rejection of independent
claims 13, 16, 19, and 23 rely on essentially the same arguments as for claim
1, and Appellants do not argue separate patentability for the dependent
claims, except as noted below. See App. Br. 8—23. We, therefore, also
sustain the Examiner’s rejection of claims 2, 3, 6—8, 10-14, 16—20, 22, and
23.
Claim 4
Appellants contend that “the help screen shown in Figure 10 [of
Amundson] does not include scroll buttons that may be used to scroll up and
down through the textual description” (App. Br. 17).
In response, the Examiner finds that:
[t]he rejection of claim 4 is based on the combination of
the references. . . . Amundson discloses the help screen
including scroll buttons . . . Heffmgton additionally discloses
that horizontal and vertical scroll bars are provided . . . [and]
Johnson further discloses the help screen including scroll
buttons
(Ans. 11). We agree with the Examiner.
For example, Amundson discloses “user interface 74 includes a
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display panel 76 and a series of buttons 78, 80 that can be pressed by the
user to scroll through various menus” (138; see also Fig. 8; note: Fig. 10
also shows scroll buttons 78, 80 (not labeled)); Heffmgton discloses
“[horizontal scroll bar 768 and vertical scroll bar 769 are provided on
screen 766” (1141; see also Fig. 31); and Johnson discloses “the help panel
may present information related to the channel parameters” (| 215).
Thus, we find unavailing Appellants’ contention that the combined
teachings, particularly Amundson’s Figure 10, do not teach/suggest scroll
buttons.
Claim 5
Appellants contend that “none of Figs 4—17 [in Heffmgton] actually
show a help screen . . . with no help screen actually shown, the Examiner
cannot conclude that ‘Heffmgton teaches . . . embedded variables are
displayed” (App. Br. 17).
In response, the Examiner finds, and we agree, that “[e]ven though
Heffington mentions that the help screen is not shown in the drawings,. . .
Heffmgton does mention that the help screen is to show additional
explanations and/or expanded ‘how to’ information” (Ans. 12, citing
Heffmgton || 119, 122; see also Final Act. 5).
In other words, Appellants rest their contention on the fact that no
help screen is actually shown in Heffmgton’s drawings. However, this
contention ignores the written descriptions about what can be shown on the
help screen. In other words, even if the help screen is not actually shown in
Heffmgton’s drawings, Heffmgton clearly describes in paragraph 119 having
expanded “how to” and additional information included in the help screen.
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Furthermore, as noted by the Examiner, Johnson also discloses illustrating
context sensitive help information on a screen (see Ans. 12—13; see Johnson
1215). Appellants fail to rebut why the aforementioned written description
does not teach and/or suggest the argued limitation.
Thus, we find unavailing Appellants’ contention that the combined
teachings, particularly Heffmgton’s figures, do not teach/suggest the help
screen includes embedded variable, as set forth in claim 5.
Claim 9
Appellants contend that “Amundson ‘794 does not have a Figure 19
or Figure 22. ... these Figures cannot teach what the Examiner contends”
(App. Br. 18).
In response, the Examiner “admits a typo mistake in the citation; the
correct[] citation [in Amundson] should be Figures 6, 9, and paragraph
[0034]” (Ans. 13) and that “Heffington further teaches . . . humidification
and/or dehumidification settings” (id. at 14, citing Heffington 1135).
Appellants fail to rebut the new citations in the Reply Brief.
Accordingly, we sustain the rejection of dependent claim 9.
DECISION
We affirm the Examiner’s § 103(a) rejections R1 and R2.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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