Ex Parte Barton et alDownload PDFPatent Trial and Appeal BoardFeb 21, 201713325300 (P.T.A.B. Feb. 21, 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. 13/325,300 12/14/2011 Eric Barton H0028673-1161.1613101 2323 90545 7590 HONEY WET ,T ,/STW Patent Services 115 Tabor Road P.O. Box 377 MORRIS PLAINS, NJ 07950 EXAMINER PAN, YUHUI R ART UNIT PAPER NUMBER 2121 NOTIFICATION DATE DELIVERY MODE 02/23/2017 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 PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIC BARTON, CARY LEEN, and STAN ZYWICKI Appeal 2015-006948 Application 13/325,300 Technology Center 2100 Before JASON V. MORGAN, NABEEL U. KHAN, and KAMRAN JIVANI, Administrative Patent Judges. KHAN, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review, under 35 U.S.C. § 134(a), of the Examiner’s final decisions rejecting claims 1—3 and 5—20. App. Br., Claims Appx. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellants’ disclosure “relates generally to HVAC systems, and more particularly, to HVAC controllers that may be used for controlling HVAC systems.” Spec. 1,11. 4—5. 1 According to Appellants, the real party in interest is Honeywell International, Inc. App. Br. 3. Appeal 2015-006948 Application 13/325,300 Claim 1, reproduced below, is illustrative of disputed subject matter. 1. A method of monitoring a performance of an HVAC system, the method comprising: initiating a test via a user interface of an HVAC controller that is configured to control one or more components of the HVAC system, the HVAC controller comprising a memory, a controller and the user interface housed by a common housing, the test causing the controller of the HVAC controller to operate the HVAC system and to identify a current delta T of the HVAC system; displaying the identified current delta T on a display of user interface of the HVAC controller; and displaying a total run time expressed as a numerical value in units of time on the display of the HVAC controller during the test. THE REJECTIONS Claims 1—8, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Leen (US 2009/0140056 Al, published June 4, 2009), Pouchak (US 2007/0114291 Al, published May 24, 2007), and Witter et al. (US 7,548,826 B2, issued June 16, 2009). Final Act. 3—11 (July 18, 2014). Claims 9—12 and 20 stand rejected under 35 U.S.C. § 103(a) as patentable over Leen, Pouchak, Witter, and Hoog et al. (US 6,385,510 Bl, issued May 7, 2002). Final Act. 11—15. Claims 13, 14, and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Leen and Pouchak. Final Act. 15—17. Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Leen, Pouchak, and Witter. Final Act. 17—18. 2 Appeal 2015-006948 Application 13/325,300 Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Leen, Pouchak, and Hoog. Final Act. 18—19. ANALYSIS All claims stand rejected as obvious over Leen and Pouchak (and further references in some instances). Appellants argue that the Examiner fails to support a proposed modification of Leen’s invention in view of Pouchak; particularly the addition of Pouchak’s delta T test and readout performed by Pouchak’s PDA (personal digital assistant) to Leen’s user interface 14. App. Br. 8 et seq.; see also Final Act. 4 (citing Leen 125, Pouchak 1223); Ans. 2. We are unpersuaded. The Examiner has provided comprehensive findings supported by evidence. See infra. We adopt those findings as presented by the Final Action’s page 4 and the Answer’s pages 2 and 4. We provide the following for emphasis. Appellants argue: Pouchak requires any delta T test to be initiated through the interface of the PDA (i.e. configuration tool 12), which as detailed above is clearly separate and distinct from the thermostat 11. Thus, the step of ‘initiating a test via a user interface of an HVAC controller that is configured to control one or more components of the HVAC system’ is simply missing from Pouchak, and as such, from the combination of Leen and Pouchak. App. Br. 9; see also Reply Br. 2—3. The Examiner responds: “Pouchak was not applied to teach this feature. Instead, Leen was applied to teach [this feature.]” Ans. 2. Appellants’ argument unpersuasively attacks Pouchack individually and fails to address the Examiner’s findings as a whole. The Examiner cites 3 Appeal 2015-006948 Application 13/325,300 Leen as teaching a thermostat interface 14, Pouchak’s PDA as teaching a delta T test and readout for HVAC interfaces generally, and the combined teachings of both references as collectively suggesting the proposed addition of Pouchak’s delta T test and readout to Leen’s thermostat interface 14. See supra. Appellants’ argument attacks the combination as not implementing the cited prior art feature (the delta T test and readout) within its exactly disclosed context (within a PDA). However, obviousness analysis is not confined to implementing prior art as exactly disclosed. See KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[Obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim[.]”); EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (CAFC 1985) (“A reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing[.]”); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference[.]”). Appellants further argue: [Pouchak’s paragraphs 14—16] clearly teaches away from incorporating the diagnostic features of the PDA of Pouchak into the thermostat of Leen, as all of the noted benefits [of ‘removing the thermostat configuration installer interface from the thermostat operator interface to a PDA’] would be lost. App. Br. 10 (interior quotation marks denote a portion of Pouchak’s paragraph 14 Appellants had quoted and emphasized); see also Reply Br. 2— 4. The Examiner responds: Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments, see MPEP 2123. Pouchak is applied to provide 4 Appeal 2015-006948 Application 13/325,300 teachings of delta T value displays. Pouchak is not applied to teach moving an installer interface into thermostat. The HVAC controller taught by Leen already includes installer and testing interfaces. For example, Fig. 125 of Lean shows an ‘Installer Set Up’ menu and ‘Installer Test’ button. Fig. 172 and paragraph [0339] describes an interface for testing cooling stages. Fig. 174 and paragraph [0343] describes an interface for testing heating stages. Therefore[,] it would have been obvious to a person of ordinary skill in the art to incorporate an additional test—Delta T test, as taught by Pouchak—to the HVAC controller taught by Leen. Ans. 2. Appellants’ argument is not persuasive because, as reiterated within the Answer, the Examiner proposes to add only a delta T test and readout to Leen’s thermostat, not to add all of Pouchak’s diagnostics, as Appellants assert. Thus, Appellants fail to address the proposed combination of teachings. Further, the Examiner provides sufficient and well-articulated reasoning for the combination by finding that Leen’s thermostat already implements multiple HVAC tests and Pouchak evidences the delta T test as another art-recognized HVAC test. See supra (above block quote). Appellants do not assert that a skilled artisan would not view Leen’s thermostat as ready to implement a delta T test and readout. See KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 417-418 (2007) (“mere application of a known technique to a piece of prior art ready for the improvement” is obvious). In the Reply Brief, Appellants argue that the Examiner is not relying on Pouchak as merely suggesting the proposed addition of a delta T test and 5 Appeal 2015-006948 Application 13/325,300 readout to Leen’s thermostat, but rather as suggesting an implementation of further features. Appellants argue: While Leen includes some rudimentary installer and testing interfaces, Leen does not teach or suggest many of the steps recited in the currently claims. The Examiner is relying on Pouchak for allegedly disclosing these features. Pouchak, however, would appear to explicitly teach away from including such more complex features in an HVAC controller, such as the one disclosed by Leen. Reply Br. 2 (emph. added). Because Appellants do not specify the above-emphasized “these features,” the argument is insufficient for consideration on appeal. See e.g., In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (affirming in part because appellant “merely argued that the claims differed from [the prior art], and chose not to proffer a serious explanation of this difference.”); In re Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant[.]”). Further, even assuming, arguendo, the Examiner proposes the implementation of Pouchak’s diagnostic features in their entirety within Leen’s thermostat, Appellants’ argument would still fail to establish that Pouchak’s disclosure of the benefits of implementing those features within a PDA amounts to teaching away from a wholesale implementation of those features within a thermostat. A showing of teaching away requires more than merely noting advantages of one technique over another technique. See e.g., In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (“[J]ust because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.”); DePuy Spine, Inc. v. 6 Appeal 2015-006948 Application 13/325,300 Medtronic Sofamor Danek, Inc., 567 F.3d. 1314, 1326 (Fed. Cir. 2009) (“A reference does not teach away ... if it merely expresses a general preference[.]”); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”). For the foregoing reasons, Appellants have not established “an error in either (1) an underlying finding of fact upon which the final conclusion of obviousness was based, or (2) the reasoning used to reach the legal conclusion of obviousness.” Ex Parte Nancy C. Frye, 94 U.S.P.Q.2d 1072 1075 (BPAI 2010) (precedential). Accordingly, we sustain the Examiner’s rejections of claim 1. Appellants do not present different arguments for the remaining claims, but rather reference the arguments presented for claim 1. See App. Br. 13 et seq.2 Accordingly, for the foregoing reasons, we also sustain the Examiner’s rejections of claims 2, 3 and 5—20. 2 If Appellants view the arguments as differently applicable to different claims, then the difference(s) must be explained. The Board does not speculate as to any argument, much less the separateness of a referenced argument for a given claim. See e.g., In re Lovin, 652 F.3d 1349, 1351 (Fed. Cir. 2011) (“Lovin’s arguments for independent claims 8, 17, 23, and 34 merely adopted his arguments for independent claims 1 and 30, but did not explain why the additional features in those claims should be separately patentable.”); In re Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant[.]”). 7 Appeal 2015-006948 Application 13/325,300 DECISION The Examiner’s rejections of claims 1—3 and 5—20 are affirmed. 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 8 Copy with citationCopy as parenthetical citation