Ex Parte Grohman et alDownload PDFPatent Trial and Appeal BoardJul 1, 201612603468 (P.T.A.B. Jul. 1, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 12/603,468 115776 7590 Betty E. Ungerman FILING DATE 10/21/2009 07/05/2016 2140 Lake Park Blvd., ST Richardson, TX 75080 FIRST NAMED INVENTOR Wojciech Grohman 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. P080193 6583 EXAMINER MAMO, ELIAS ART UNIT PAPER NUMBER 2184 MAILDATE DELIVERY MODE 07/05/2016 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) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WOJCIECH GROHMAN, JACOB JENNINGS, and AMANDA FILBECK Appeal2015-001940 Application 12/603,468 Technology Center 2100 Before JOSEPH L. DIXON, THU A. DANG, and CATHERINE SHIANG, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1 and 3-11. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal2015-001940 Application 12/603,468 The claims are directed to a programming and configuration in a heating, ventilation and air conditioning network. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for creating a memory of an HV AC device, compnsmg: storing a bootloader into a first protected memory of said HV AC device; storing a device designator into a second protected memory of said HV AC device; storing a control serial number into a third protected memory of said HV AC device; storing a control part number into a fourth protected memory of said HV AC device; storing an application data into a separate application memory of said HV AC device; and invoking said bootloader to flash information into said HV AC device. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Nulkar et al. Kim et al. Cohen US 2008/0082767 Al US 2009/0077423 Al US 2009/0266904 Al REJECTION The Examiner made the following rejections: Apr. 3, 2008 Mar. 19,2009 Oct. 29, 2009 Claims 1 and 3-11 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Nulkar in view of Cohen and Kim. 2 Appeal2015-001940 Application 12/603,468 ANALYSIS Appellants argue independent claims 1 and 7 together. (App. Br. 7; Reply Br. 3--4). Consequently, we select independent claim 1 as the representative claim for the group and address Appellants' arguments thereto. Claim 1 Appellants contend: Nulkar fails to teach or show at least the elements of 1) storing a bootloader into a first protected memory of said HVAC device; 2) storing a device designator into a second protected memory of said HVAC device; and invoking said 3) bootloader to flash information into said HVAC device. The rejection relies on the applied combination of Cohen and Kim to cure the deficiencies of Nulkar with respect to numbers 1) and 3). (App. Br. 4). Appellants further contend: [t]he memory device 200 of Nulkar includes configuration information stored in a serial presence detect (SPD) table; however; none of the plurality of data fields teach; suggest; or even relate to a device designator according to the present disclosure. (See, Nulkar FIG. 2B and paragraphs [0020]-[0024]). (App. Br. 5). The Examiner clarifies the correlation of the teachings of the Nulkar reference and identifies item 208 as the device designator and item 217 "application data into a separate application memory" in Figure 2A. (Ans. 2-3). Appellants contend that field 208 provides a manufacturer ID to which it is not a "device designator." (Reply Br. 2). Appellants further contend that the "a device designator designates a device (not a manufacturer)." (Reply Br. 2). 3 Appeal2015-001940 Application 12/603,468 We note claim terms are to be given their broadest reasonable interpretation, as understood by those of ordinary skill in the art and taking into account whatever enlightenment may be had from the Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Any special meaning assigned to a term "must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention." Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description."). Appellant has neither identified an express definition in the Specification nor identified any ordinary and customary usage in the relevant art. As a result, we find the Examiner's rejection to be reasonable based upon the broadest reasonable interpretation. Additionally, 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 a precedential decision, 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, 18871888 (BPAI 2008) (precedential). Here, the claim terms device designator, control serial number, control part number, and application data are not necessarily "utilized" by the 4 Appeal2015-001940 Application 12/603,468 computing device. The terms are thus a mere descriptions of data that does not functionally change the "memory of an HVAC device." See Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative), ajf'd, No. 06- 1003 (Fed. Cir. Jun. 12, 2006) (Rule 36) ("wellness-related" data in databases and communicated on distributed network did not functionally change either the data storage system or the communication system used in the claimed method). As a result, the content of the data set forth in the claim is not entitled to patentable weight. As such, the Examiner need not give patentable weight to descriptive material absent a new and unobvious functional relationship between the descriptive material and the substrate. See In re Lowry, 32 F.3d 1579, 1582- 1583 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) (nonfunctional descriptive material cannot render nonobvious an invention that would have otherwise been obvious). See also Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (nonprecedential), ajfd, 191 Fed.Appx. 959 (Fed. Cir. 2006). Appellants further contend the Nulkar reference fails to teach or suggest at least storing a device designator into a second protected memory of said HV AC device and the Cohen and Kim references are not relied upon, nor do they contain any teachings, to cure at least the foregoing deficiency of the Nulkar reference. (App. Br. 5). Appellants further argue: item 217 is not a memory separate from the memory of Nulkar equated to the claimed protected memory. On the contrary, item 217 is the same memory as that equated to the claimed protected memory. As noted above, the Examiner's Answer alleges that the memory area in Fig. 2 is the claimed protected memory area. (The Appellants note that there is no Fig. 2 in Nulkar, only Figs. 2A and 2B.) Assuming arguendo that memory device 217 of 5 Appeal2015-001940 Application 12/603,468 Nulkar is the claimed "protected memory," there is no teaching or suggestion in Nulkar of an application memory that is separate from Nulkar's memory device 217. (Reply Br. 2). We disagree with Appellants and find that Figures 2A and 2B of the reference Nulkar clearly evidence the well-known use of two memories in a computer system for storing information and application data. (Ans. 2- 3).Appellants further argue: Nulkar also fails to teach or suggest storing a bootloader into a first protected memory of said HV AC device and invoking said bootloader to flash information into said HV AC device. The rejection relies on the combination of Cohen and Kim to cure these deficiencies of Nulkar. Appellants submits that Cohen, while related to an HV AC system having a memory, fails to provide any teaching or suggestion of a bootloader, or invoking said bootloader to flash information into said HV AC device, and accordingly fails to cure at least the foregoing deficiencies of Nulkar. (App. Br. 6). The Examiner maintains Appellants are arguing the references individually where the rejection is based upon the combination of teachings. (Ans. 4--5). Specifically, the Examiner maintains: it would have been obvious to a person of ordinary skill in the art to modify the teachings of Nulkar and implement the method on HV AC device, and to store a bootloader into a first protected memory of said device; and invoking said bootloader code to flash information into said HV AC device, as taught by Cohen and KIM. The motivation for doing so would have been to configure the microprocessor of an HV AC controller running a control program in communication with sensors and actuators. 6 Appeal2015-001940 Application 12/603,468 (Ans. 4--5). We agree with the Examiner and find Appellants' general allegation to be unpersuasive of error in the Examiner's conclusion of obviousness. The Appellants further argue that the Examiner's rejection is based upon conclusory statements rather than some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. (App. Br. 6-7, Reply Br. 3--4). The Examiner maintains that the rejection is not based upon conclusory statements, but an articulated motivation for combining the references as discussed in the rejection. (Ans. 5-6). We agree with the Examiner and find the Examiner has set forth a rejection based upon the broadest reasonable interpretation of the claim language as interpreted in light of the Specification. Consequently, we find Appellants' arguments to not show error in the Examiner's factual findings and ultimate conclusion of obviousness of independent claim 1. Claims 3-11 Appellants do not set forth separate arguments for patentability of claims 3-11. (App. Br. 6-7). Because we found Appellants' arguments unpersuasive with respect to representative independent claim 1, we sustain the rejection of independent claim 7 and dependent claims 3---6 and 8-11 as falling therewith. 37 C.F.R. § 41.37(c)(iv). CONCLUSION The Examiner did not err in rejecting independent claim 1 based upon obviousness. 7 Appeal2015-001940 Application 12/603,468 DECISION For the above reasons, we sustain the Examiner's rejection of claims 1 and 3-11. 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