Ex Parte Cornwall et al

Patent Trial and Appeal Board

Feb 2, 2016

12891091 (P.T.A.B. Feb. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/891,091 09/27/2010
99269 7590
ITRON, INC
Kristi Mikos - Docketing
2111 N. Molter Road
Liberty Lake, WA 99019
02/04/2016
FIRST NAMED INVENTOR
Mark K. Cornwall
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
OC0-161 9703
EXAMINER
BALSECA, FRANKLIN D
ART UNIT PAPER NUMBER
2685
NOTIFICATION DATE DELIVERY MODE
02/04/2016 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):
Itron-IP@itron.com
LuAnne.DeSantis@itron.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK K. CORNWALL, DANIEL R. KRITZ, and
CHRISTOPHER J. WYKLE
Appeal2013-010711
Application 12/891,091
Technology Center 2600
Before MICHAEL J. STRAUSS, JON M. JURGOV AN, and
JOHN F. HORVATH, Administrative Patent Judges.
HORVATH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's rejection of claims 1---6, 8-13, 15-17, and 19. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2013-010711
Application 12/891,091
SUMMARY OF THE INVENTION
The invention is directed to an apparatus and method for remotely
disconnecting a utility meter via a mobile meter reading device. Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An advanced meter reading system for transmitting between
user locations and a centralized data collection facility data and
commands related to utility usage and utility supply connections,
said system comprising:
a plurality of utility metrology means and associated
endpoint devices, situated at respective locations of utility
consumption, for transmitting utility consumption data
associated with a respective location;
at least one disconnect means, associated with at least one
of said utility metrology means and its associated endpoint
device, for disconnecting a utility supply associated with said at
least one utility metrology means at its respective location in
response to a disconnect signal transmitted to said disconnect
means;
a main communications network for bidirectional
communications with said endpoint devices;
a head end processor for bidirectional communications
with said main communications network, such that utility
consumption data and disconnect signal commands,
respectively, are communicated to and from said head end
processor via said main communications network; and
a mobile device in RF communication with other
components of said system, for controllably receiving utility
consumption data and sending disconnect signal commands.
Reyman
F emandez-Sein
Schleich
REFERENCES
US 6,470,903 B2
US 6,994,309 B2
US 7,116,243 B2
2
Oct. 29, 2002
Feb. 7,2006
Oct. 3, 2006
Appeal2013-010711
Application 12/891,091
Borleske
Shuey
Addy
US 7,262,709 B2
US 2008/0219210 Al
US 8,054, 199 B2
REJECTIONS
Aug.28,2007
Sept. 11, 2008
Nov. 8, 2011
Claims 1-15 stand provisionally rejected on the ground of non-
statutory obviousness-type double patenting as unpatentable over claims 1,
4, 6-10, and 12-13 of co-pending Application No. 12/891,857. Final Act. 4.
Claims 1-5, 10-13, 15-17, and 19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Borleske, Fernandez-Sein, Shuey, and
Schleich. Final Act. 9.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Borleske, Fernandez-Sein, Shuey, Schleich, and Reyman. Final Act. 16.
Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Borleske, Fernandez-Sein, Shuey, Schleich, and Addy.
Final Act. 17.
ISSUES AND ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner has erred. We disagree with Appellants'
contentions, and adopt as our own the findings and reasons set forth by the
Examiner in the Examiner's Answer in response to Appellants' Appeal Brief.
We highlight the following for emphasis.
Double Patenting Rejections
Claims 1-15 stand provisionally rejected on the ground of non-
statutory obviousness-type double patenting as unpatentable over claims 1,
4, 6-10 and 12-13 of co-pending Application No. 12/891857. Final Act. 4.
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Application 12/891,091
Due to the provisional nature of these rejections, we decline to decide their
merits. See Ex parte Moncla, No. 2009-006448, 95 USPQ2d 1884, 1885
(BPAI June 22, 2010) (precedential).
Claims 1-6, 8-13, 15-17, and 19
Issue 1: Whether the Examiner used improper hindsight in rejecting
claim 1 as obvious.
Appellants argue the Examiner relied on improper hindsight in finding
claim 1 obvious in view of the combined teachings of Borleske, Femandez-
Sein, Shuey, and Schleich. App. Br. 7. We are not persuaded by
Appellants' argument.
The Supreme Court rejected an overly formalistic and rigid teaching,
suggestion, or motivation to combine approach to obviousness in KSR Int 'l
Co., 550 U.S. 398, 415--419 (2007). Nonetheless, to prevent the improper
use of hindsight, the Court held that "rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness." Id. at 418 (quotations and citation
omitted). Such articulated reasoning can include findings that "[a]
combination of familiar elements according to known methods ... does no
more than yield predictable results," id. at 416, or that "a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way," id. at 417.
As explained below, we find the reasons provided by the Examiner for
combining each of the Borleske, Fernandez-Sein, Shuey, and Schleich
references have a sufficiently rational underpinning to support the
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Application 12/891,091
Examiner's conclusion of obviousness. We, therefore, agree with and adopt
the Examiner's reasons for combining the references as our own.
First, the Examiner finds it would have been obvious to a person of
ordinary skill in the art at the time of the invention to combine Borleske' s
networked utility meter system with Fernandez-Sein's networked utility
meters having disconnect means to give utilities more control over their
networked meters, e.g., the ability to disconnect meters from gas supply
lines. Final Act. 10. The proposed combination can be viewed as either a
combination of familiar elements that would predictably work in the same
way, or an improvement in one device that would predictably improve
similar devices in the same way. See KSR Int'! Co., 550 U.S. at 415--417.
Next, the Examiner finds it would have been obvious to a person of
ordinary skill in the art at the time of the invention to combine Shuey's
teaching of communicating with networked meters using either mobile
devices or a centralized headend with the combined teachings of Borleske
and Fernandez-Sein (described above) to allow utilities to communicate with
their networked meters even when the centralized network is down. Final
Act. 11. This proposed combination can also be viewed as one of familiar
elements that would predictably work in the same way, or an improvement
in one device that would predictably improve similar devices in the same
way. See KSR Int'! Co., 550 U.S. at 415--417.
Lastly, the Examiner finds it would have been obvious to a person of
ordinary skill in the art at the time of the invention to combine Schleich' s
teaching of using mobile devices to send disconnect commands to
networked meters with the combined teachings of Borleske, Fernandez-Sein,
and Shuey (described above) to allow utilities to disconnect networked
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Application 12/891,091
meters even when the centralized network is down. Final Act. 11. Once
again, the proposed combination can be viewed as one of familiar elements
that would predictably work in the same way, or an improvement in one
device that would predictably improve similar devices in the same way. See
KSR Int'! Co., 550 U.S. at 415--417.
We find each of the combinations proposed by the Examiner is
supported by articulated reasoning with a rational underpinning. The fact
that the Examiner relied on teachings from four prior art references to
support the conclusion of obviousness is of no concern. "The criterion ... is
not the number of references, but what they would have meant to a person of
ordinary skill in the field of the invention." In re Gorman, 933 F.2d 982,
986 (Fed. Cir. 1991); see also KSR Int'! Co., 550 U.S. at 420 ("[I]n many
cases a person of ordinary skill will be able to fit the teachings of multiple
patents together like pieces of a puzzle.").
Issue 2: Whether Shuey teaches or suggests mobile data
collection and transmission infrastructures.
Appellants' argue the Examiner erred in rejecting claim 1 because
Shuey teaches "the alternative use of a fixed network and mobile data
collection infrastructures," but fails to disclose "using a mobile data reader
to send commands directly to a meter to cause the meter to disconnect."
App. Br. 8. We are not persuaded by Appellants' argument.
The Examiner finds Shuey teaches a mobile device that "can receive
consumption data from the meters and send command signals to the meters."
Final Act. 11 (citing Shuey i-fi-19, 106, 110). We agree. For example, Shuey
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teaches "[t]he endpoint meters may include a transceiver that enables the
endpoint meters to transmit and receive data to andfrom the mobile device."
Shuey i-f 9 (emphasis added). Shuey further teaches "the mobile device may
send a sleep signal to the endpoint meter that instructs the endpoint meter to
transition into the sleep state." Id. i-f 106 (emphasis added).
Accordingly, we are not persuaded by Appellants' argument that
Shuey fails to teach a mobile reader that sends command signals to the
networked utility device. We are likewise not persuaded by Appellants'
argument that the Examiner erred because Shuey fails to teach a mobile
reader that sends a disconnect signal. The Examiner did not cite Shuey for
teaching a mobile reader that sends a disconnect signal. See Final Act. 11.
Rather, the Examiner cited Schleich for teaching such a mobile reader. Id.
"Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references." In re Ji;ferck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Issue 3: Whether Schleich teaches or suggests a mobile device
that transmits a command signal to a networked utility meter.
Appellants argue the Examiner erred in rejecting claim 1 because
Schleich fails to teach "the transmission of a command signal from a
mobile device to command a meter to disconnect." App. Br. 9; see also
Reply Br. 2-3. We are not persuaded by Appellants' argument.
The Examiner finds "Schleich teaches that a mobile device can send
disconnect signals to [a] meter." Final Act. 11 (citing Schleich 5:39--45,
6:5-9). The Examiner further finds Schleich "clearly teaches that a
command such as a demand reset command can be sent from the mobile
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reader to the meter," and that "the method used to send a demand reset
command ... can be used to disconnect the meter (send a disconnect
command)." Ans. 5 (citing Schleich 5:39-51, 6:6-9). We agree with the
Examiner.
Schleich teaches a mobile reader that communicates with an endpoint
device (utility meter) by exchanging a series of four communications with
the endpoint device, including "send[ing] a demand reset command 314 to
the endpoint device 304." Schleich 5:49-50 (emphasis added). Schleich
further teaches this four-communication exchange is "not necessarily limited
to demand resets. It is applicable to remote configurations that include ...
disconnection of a meter or a utility measurement device." Id. at 6:5-9
(emphasis added).
Elsewhere, Schleich teaches "the mobile collector can request demand
data, consumption data, power quality data or a disconnection of the meter."
Schleich l 0:49-51 (emphasis added). Appellants argue this passage merely
"set[ s] up a request for disconnection, which possibly would be carried out
via a network but certainly not directly as a command from the handheld
device." App. Br. 10. We are not persuaded. This passage of Schleich
refers to an alternative "communications scheme ... that achieves a
command acknowledgement in only two steps. In the first step, the
reader/transceiver sends a command or request for data." Id. at 10:23-27.
Thus, a request for a disconnection of the meter is a command sent to the
utility meter to disconnect, not a request for utility meter data. Schleich
describes no scenario in which the meter would not disconnect upon
receiving a request.
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Accordingly, for the reasons indicated above, we are not persuaded
the Examiner erred in rejecting claim 1 as obvious in view of the
combination of Borleske, Fernandez-Sein, Shuey, and Schleich, and sustain
the Examiner's rejection. Appellants do not separately argue for the
patentability of claims 2---6, 8-13, 15-17 or 19. See App. Br. 11.
Accordingly, we sustain the Examiner's rejections of these claims for the
same reasons as claim 1.
DECISION
The rejection of claims 1-5, 10-13, 15-17, and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Borleske, Fernandez-Sein, Shuey, and
Schleich is sustained.
The rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable
over Borleske, Fernandez-Sein, Shuey, Schleich, and Reyman is sustained.
The rejection of claims 8 and 9 under 35 U.S.C. § 103(a) as
unpatentable over Borleske, Fernandez-Sein, Shuey, Schleich, and Addy is
sustained.
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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