Ex Parte Bergman et al

Patent Trial and Appeal Board

Nov 30, 2017

12886991 (P.T.A.B. Nov. 30, 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.
12/886,991 09/21/2010 Gabriel Albert Bergman H0025946-1161.1501101 1649
90545 7590
HONEY WET ,T ,/STW
Patent Services
115 Tabor Road
P.O. Box 377
MORRIS PLAINS, NJ 07950
EXAMINER
THOMPSON, JASON N
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
12/04/2017 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 GABRIEL ALBERT BERGMAN,
CHRIS MULLARKEY, CARY LEEN,
DAVID SCHULTZ, and MILOS CABEL
Appeal 2017-001876
Application 12/886,991
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gabriel Albert Bergman et al. (Appellants)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 8—13 and 15, which
are the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 The real party in interest is identified as Honeywell International Inc.
Appeal Br. 3.
Appeal 2017-001876
Application 12/886,991
CLAIMED SUBJECT MATTER
Independent claim 8, reproduced below, is representative of the
claimed subject matter:
8. An HVAC controller configured to control an HVAC unit
for conditioning air of an inside space, comprising:
a user interface configured to allow manual modification
by a user of a recurring schedule having two or more time
periods, wherein the user can associate an HVAC-off control
mode with any of the two or more time periods of the recurring
schedule, wherein the HV AC-off control mode does not have an
associated set point temperature, and when in the HV AC-off
control mode, the HVAC controller does not cycle the HVAC
unit on regardless of the temperature of the air in the inside space;
a memory configured to retain the recurring schedule; and
an output configured to issue operational commands to the
HVAC unit in accordance with the recurring schedule.
Appeal Br. 9 (Claims App.).
REJECTIONS
I. Claims 8—12 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schultz (US 2006/0219799 Al, published Oct. 5, 2006),
hereinafter “Schultz ’799,” and Brown (US 5,761,083, issued June 2, 1998)
II. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Schultz ’799, Brown, and Schultz (US 2009/0140064 Al, published
June 4, 2009), hereinafter “Schultz ’064.”
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Appeal 2017-001876
Application 12/886,991
ANALYSIS
Rejection I—Claims 8—12 and 15
As to claim 8, the Examiner finds that Schultz ’799 discloses an
HVAC controller 10 configured to control an HVAC unit, comprising a user
interface configured to allow manual modification by a user of a recurring
schedule having two or more time periods. Final Act. 2 (citing Schultz ’799,
Fig. 1, || 22, 32). The Examiner explains that for Schultz ’799’s HVAC
controller, a user can associate an HVAC-off control mode with any of the
two or more time periods because the HV AC-off mode is satisfied by
pressing button 13 at any of the time periods to turn the HVAC off. Id. at 2—
3 (citing Schultz ’799131). The Examiner finds that Schultz ’799 fails to
disclose that the HVAC controller is capable of incorporating an HV AC-off
control mode into the recurring schedule. Id. at 3. The Examiner finds that
Brown teaches a controller configured to program an HV AC-off mode. Id.
(citing Brown, col. 10,11. 8—17, 26—34, 40-43, col. 11,11. 1—11). The
Examiner concludes that it would have been obvious to modify the HVAC
controller of Schultz ’799 with an HV AC-off mode, as taught by Brown, to
conserve energy. Id. at 3^4.
Appellants argue that Brown’s HV AC-off mode is not the same as the
HV AC-off mode of Schultz ’799 because Brown’s HV AC-off mode has an
associated set point temperature. Appeal Br. 6 (citing Brown, col. 11,11. 7—
9). Appellants also argue that Brown discloses individual buttons 84 that
include an OFF mode button, but the OFF mode button is not assigned to a
particular time period of a recurring schedule. Id. at 5—6 (citing Brown, Fig.
4).
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Appeal 2017-001876
Application 12/886,991
The Examiner responds that Brown is relied upon to teach that an
HVAC-off mode is programmable into a schedule. Ans. 3. The Examiner
reasons that Brown does not have to teach the exact same HV AC-off mode
as the HV AC-off mode of Schultz ’799 to be able to serve as evidence that it
is well known that an HV AC-off mode is “capable of being programmed
into a schedule.” Id. at 5 (emphasis added).
Appellants’ contentions are more persuasive. As explained by
Appellants, Brown’s HV AC-off mode has an associated set point
temperature (Appeal Br. 6), whereas claim 8 requires that “the HV AC-off
control mode does not have an associated set point temperature” (emphasis
added). Consequently, because Brown’s HV AC-off mode is different from
the claimed HV AC-off control mode, the Examiner’s proposed modification
of the HVAC controller of Schultz ’799 with an HV AC-off mode, as taught
by Brown, would not result in the claimed HVAC controller.
Even if the controller of Schultz ’799, as modified by Brown, were
capable of being further modified (e.g., programmed) to perform all the
functions of the HVAC controller and user interface required in claim 8, this
fails to satisfy the “capable of’ test, which requires that the prior art
structure be capable of performing the function without further
programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376,
1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v.
Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). When the
functional language is associated with programming or some other structure
required to perform the function, that programming or structure must be
present in order to meet the claim limitation. Id. The Examiner merely
points out that Schultz ’799 discloses a controller that allows modification of
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Appeal 2017-001876
Application 12/886,991
a recurring schedule having two or more time periods, and a button 13 which
allows the user to turn off the HVAC. Final Act. 2—3; see also Schultz ’799,
Figs. 1, 4, 6—9, 14—25, 28—30; 31—32. The Examiner has not shown by a
preponderance of the evidence that the controller of Schultz ’799, as
modified by Brown, would have programming or structure to operate the
HVAC unit with an HVAC-off control mode, as claimed, for any of the two
or more periods of a recurring schedule. See also Reply Br. 5.
Thus, we do not sustain the rejection of claim 8 and dependent claims
9-12 and 15 as unpatentable over Schultz ’799 and Brown.
Rejection II—Claim 13
Claim 13 depends from claim 8. The Examiner’s application of
Schultz ’064 to reject claim 13 does not cure the deficiencies in the rejection
of claim 8 discussed above. Accordingly, we do not sustain the rejection of
claim 13 as unpatentable over Schultz ’799, Brown, and Schultz ‘064.
DECISION
We reverse the rejections of claims 8—13 and 15.
REVERSED
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