Ex Parte Chen et al

Board of Patent Appeals and Interferences

Mar 2, 2011

10662940 (B.P.A.I. Mar. 2, 2011)

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.
10/662,940 09/16/2003 Kimball C. Chen 64171.000002 2033
21967 7590 03/03/2011
HUNTON & WILLIAMS LLP
INTELLECTUAL PROPERTY DEPARTMENT
1900 K STREET, N.W.
SUITE 1200
WASHINGTON, DC 20006-1109
EXAMINER
BORISSOV, IGOR N
ART UNIT PAPER NUMBER
3628
MAIL DATE DELIVERY MODE
03/03/2011 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)
The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KIMBALL C. CHEN, ALEXANDER W. EVANS, and DANIEL
E. SHPRECHER
____________

Appeal 2010-000055
Application 10/662,940
Technology Center 3600
____________

Before, HUBERT C. LORIN, ANTON W. FETTING and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000055
Application 10/662,940

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-3, 7, 8, 13, 15, 17, 19, 152, 180-182, 186, 187,
192, 194, 196, 198, and 331. Claims 4-6, 9-12, 14, 16, 18, 20-151, 153-179,
183-185, 188-191, 193, 195, 197, 199-330, and 332-432 have been
withdrawn. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
An oral hearing was held on January 20, 2011.

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellants claim a system and method for controlling, monitoring and
managing remote devices for reducing demand/consumption to resource
supply based on user defined data. (Specification 1: 15-19).
Claim 1, reproduced below, is representative of the subject matter on
appeal.

Claim 1. (Previously Presented) A method for controlling one
or more of resource-consumption and resource-production
associated with a plurality of remote devices, the
method comprising the steps of:

automatically generating at least one informational message at a
central server responsive to one or more of resource-
consumption by, resource-production by, operating
characteristics of, and operational state of at least one device of
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the plurality of remote devices; and
transmitting the at least one informational message to at least
one communication device, where the at least one
communication device initiates at least one action for providing
a change of one or more of resource-consumption by, resource-
production by, operating characteristics of, and operational state
of one or more of the following: a) the at least one device of the
plurality of remote devices, b) one or more second devices of
the plurality of remote devices, wherein the one or more second
devices is different from the at least one device and c) one or
more devices of a second plurality of remote devices, wherein
the second plurality of remote devices is different from the
plurality of remote devices.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Brown US 5,544,036 Aug. 6, 1996
Woolard US 6,178,362 B1 Jan. 23, 2001

The following rejection is before us for review.
The Examiner rejected claims 1-3, 7, 8, 13, 15, 17, 19, 152, 180-182,
186, 187, 192, 194, 196, 198, and 331 under 35 U.S.C. § 103(a) as being
unpatentable over Brown in view of Woolard.
ISSUE
Did the Examiner err in rejecting claims 1-3, 7, 8, 13, 15, 17, 19, 152,
180-182, 186, 187, 192, 194, 196, 198, and 331 on appeal as being
unpatentable under 35 U.S.C. § 103(a) over Brown in view of Woolard on
the grounds that a person with ordinary skill in the art would understand that
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the command center computer 24 in Brown automatically provides signals to
the transmitter 20?

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. Brown discloses that the devices are controlled by “programmed
data [which] is normally generated by customer command center computer
22 and transmitted to controllers 14 as paging message signals by transmitter
20….” (Col. 3, ll. 57-60).
2. Brown further discloses:
… [I]n some instances, the "on" signals from
controller 14 merely permits the appliance to turn
on if other conditions are present. For example,
the water heater control "on" signal permits more
hot water to be generated, but the thermostat
associated with the water heater must still indicate
that hot water is needed. On the other hand, the
"off" signal will generally disable the appliance
from being on, regardless of the setting of other
controls associated by the appliance.
(Col. 3, ll.17-25).
3. Brown neither discloses nor infers any human intervention involved
in generating and transmitting programmed data by a customer command
center computer 22.
4. Appellants’ Specification does not specifically define the term
automatically, nor does it utilize the term contrary to its customary meaning.
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5. The ordinary and customary definition of the term automatic as
defined by Merriam Webster’s Collegiate Dictionary is: “done or produced
as if by a machine”. (http://www.merriam- webster.com
/dictionary/automatic).
6. Brown discloses “[i]n certain instances, the energy management
and automation functions programmed by the user may be overridden by the
utility company when it is necessary to reduce the consumption in a
particular area. (Col. 4, ll. 4-7).

ANALYSIS
We affirm the rejection of claims 1-3, 7, 8, 13, 15, 17, 19, 152, 180-
182, 186, 187, 192, 194, 196, 198, and 331 under 35 U.S.C. § 103(a).
Appellants’ arguments against each of independent claims 1 and 180
are based on perceived deficiencies of Brown. Inasmuch as Appellants raise
the same issues with respect to each of these claims, we discuss them
together, addressing each of Appellants’ arguments in turn.
Appellants argue that “[a]t best, Brown discloses a one way
communication channel for sending paging signals from transmitter 20 to
various controllers 14…. [and] nowhere does Brown disclose, or even
suggest, that the signals are automatically generated by the utility command
center computer 24.” (Appeal Br. 8-9).
We disagree with Appellants because we find that in Brown,
programmed data is normally generated by a customer command center
computer 22 and is transmitted to home controllers 14 as paging message
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signals by a transmitter 20 (FF 1). Brown neither, discloses or infers, any
human intervention involved in generating and transmitting such
programmed data by a customer command center computer 22 (FF 1). The
claims only generally require that the at least one informational message at a
central server be responsive to the operational state of a device. We thus
find that because the customer command center computer 22 is programmed
to initiate paging messages at given times in response to ON/OFF conditions
of a device, it in fact responds to an operational state and operating
characteristics. This is because the ON or OFF modes are states of working
operation, and because the messages are tailored for a given appliance, they
thus respond to the characteristics of the given appliance.
We further find that Appellants’ Specification does not specifically
define the term automatically, nor does it utilize the term contrary to its
customary meaning. (FF 4) The ordinary and customary definition of
automatic is “done or produced as if by a machine”. (FF 5) As found, supra,
in Brown, the informational message generated and transmitted by the
customer command center computer 22 contains both operational state and
operating characteristics data which are generated and transmitted to the
device without direct human involvement, except for initial programming
(FF 1). As such, we find that Brown discloses automatically generating and
transmitting at least one informational message at a central server responsive
to operating characteristics of, and operational state of a device because the
generating and transmitting steps are automatically produced by operation of
a machine, i.e., the customer command center computer 22.
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Appellants next argue that Brown teaches away because “messages
are used by the utility company to assist it in more equitably reducing power
consumption under circumstances when the potential demand for power
exceeds the ability of the utility company to generate power...(emphasis
original).” (Appeal Br. 10).
We disagree with Appellants because we find that Brown does not
actually teach away from every aspect of all power control systems. See In
re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). We find instead that Brown
discloses this power reducing scenario only “in certain instances,” (FF 6)
and thus in the normal course of operation, the control system in Brown
operates according to the requirements of the claims, as discussed supra.
Claims 3 and 182.
Representative claim 3 recites in pertinent part, receiving at least one
command at the central server, wherein the at least one command is related
to controlling the at least one device and wherein the at least one
informational message is generated based on the at least one command.
Appellant argues that “[t]here is nothing in Woolard that provides any
teaching or suggestion that an information message is generated based on the
at least one command.” (Appeal Br. 12). We find this argument
unpersuasive because as discussed, supra, Brown explicitly discloses an
information message, namely the paging message, is generated by the
customer command center computer 22 based on the at least one command
which is inputted as programmed instructions. Accordingly, we sustain the
rejection, finding Woolard cumulative to the rejection.
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Claims 13 and 192
Representative claim 13 recites in pertinent part wherein the at least
one command is generated in accordance with a user profile.
Appellants argue that Woolard “…merely discloses a site
configuration function that permits the user to generate a site map for a
newly opened facility which is going to be managed by the apparatus 26.”
(Appeal Br. 14).
We find this argument unpersuasive because as discussed, supra,
Brown explicitly discloses an information message, namely, the paging
message, which is generated by the customer command center computer 22
based on the at least one command which is inputted as programmed
instructions. We interpret the programmed instructions resident in memory
to be a user profile, since like a profile, the instructions are inputted by the
user according to a desired mode of operation. Accordingly, we sustain the
rejection, finding again Woolard cumulative to the rejection.
Appellants’ arguments to claims 2, 7, 15, 17, 19, 152, 181, 186, 187,
194, 196, 198, and 331 are not persuasive because they are statements
merely repeating the claim elements. A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim. See, 37 C.F.R. § 41.37 (c)(1)(vii) (2004)
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-3, 7, 8, 13,
15, 17, 19, 152, 180-182, 186, 187, 192, 194, 196, 198, and 331 under 35
U.S.C. § 103(a) as being unpatentable over Brown in view of Woolard.
Appeal 2010-000055
Application 10/662,940

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DECISION
The decision of the Examiner to reject claims 1-3, 7, 8, 13, 15, 17, 19,
152, 180-182, 186, 187, 192, 194, 196, 198, and 331 is Affirmed.

AFFIRMED

MP

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