ICONTROL NETWORKS, INC.

Patent Trials and Appeals Board

Apr 26, 2021

2020001146 (P.T.A.B. Apr. 26, 2021)

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.
15/198,531 06/30/2016 Jim KITCHEN 102005.024143 1008
71581 7590 04/26/2021
BakerHostetler / Comcast
Cira Centre, 12th Floor
2929 Arch Street
Philadelphia, PA 19104-2891
EXAMINER
HUSSAIN, TAUQIR
ART UNIT PAPER NUMBER
2446
NOTIFICATION DATE DELIVERY MODE
04/26/2021 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIM KITCHEN, COREY GATES,
and CHRIS DECENZO

Appeal 2020-001146
Application 15/198,531
Technology Center 2400

Before JEAN R. HOMERE, JAMES B. ARPIN, and
MICHAEL J. ENGLE, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s rejection of claims 1–21, 23, 24, 26, 27, 29, 31, 32, 35, 37–60,
62, 63, 65, 66, 68, 70, 71, 74, 76–78, and 88–91, all of the claims pending.2

1 We refer to the Specification filed June 30, 2016 (“Spec.”); the Final
Office Action, mailed December 17, 2018 (“Final Act.”); the Appeal Brief,
filed July 22, 2019 (“Appeal Br.”); the Examiner’s Answer, mailed
September 26, 2019 (“Ans.”); and the Reply Brief, filed November 26, 2019
(“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies iControl Networks, Inc., as the real party in interest.
Appeal Br. 1.
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Appeal Br. 1–2. Claims 22, 25, 28, 30, 33, 34, 336, 61, 64, 67, 69, 72, 73,
and 75 are canceled. Id. at 2. Claims 79–87 are allowed. Id. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
II. CLAIMED SUBJECT MATTER
The claimed subject matter relates to a premises automation method
and system for monitoring and controlling premises devices. Spec., 2:23–24.
Figure 2, reproduced and discussed below, is useful for understanding the
claimed subject matter:

Figure 2 above illustrates a premises automation system including a
premises gateway (FlexCore) communicating with premises devices and a
virtual gateway in an external gateway server. Id. at 6:22–7:2.
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In particular, upon receiving state data from the premises gateway and
the premises devices, the virtual gateway determines control data associated
with the premises devices. Id. at 5:21–28.
Claims 1, 40, and 79 are independent. Claim 1, reproduced below
with disputed limitations emphasized, is illustrative:
1. A system comprising:
a premises gateway located at a premises and in
communication with a plurality of premises devices; and
one or more servers located external to the premises and
comprising a virtual gateway, wherein the virtual gateway is
configured based on the premises gateway and in
communication with the premises gateway, and wherein the
virtual gateway is configured to receive, from one or
more of the premises gateway and the plurality of premises
devices, state data of the plurality of premises devices and
determine, based on the state data, control data for the
plurality of premises devices.
Appeal Br. 9 (Claims App.) (emphasis added).
III. REFERENCES
The Examiner relies upon the following references.3
Name Reference Date
Naidoo US 2003/0062997 A1 Apr. 3, 2003
Enns US 2012/0209951 A1 Aug. 16, 2012
Balog US 2013/0191755A1 July 25, 2013
Scholten US 2015/0365217A1 Dec. 17. 2015

3 All reference citations are to the first named inventor only.
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IV. REJECTIONS4
The Examiner rejects claims 1–21, 23, 24, 26, 27, 29, 31, 32, 35, 37–
60, 62, 63, 65, 66, 68, 70, 71, 74, 76–78, and 88–91 as follows:
Claims 1–6, 8, 9, 11, 40–45, 47, 48, 50, 88, and 90 stand rejected as
anticipated under 35 U.S.C. § 102(a) or (b) by Naidoo. Final Act. 3–5.
Claims 7, 15, 16, 26, 27, 29, 31, 32, 37, 38, 46, 54, 55, 65, 66, 68, 70,
71, 76, 77, 89, and 91 stand rejected as obvious under 35 U.S.C. § 103(a)
over the combined teachings of Naidoo and Enns. Id. at 5–10.
Claims 10, 12, 13, 49, 51, and 52 stand rejected as obvious under 35
U.S.C. § 103(a) over the combined teachings of Naidoo and Scholten. Id. at
10–11.
Claims 17–21, 23, 24, 56–60, 62, and 63 stand rejected as obvious
under 35 U.S.C. § 103(a) over the combined teachings of Naidoo, Enns, and
Scholten. Id. at 11–15.
Claims 14 and 53 stand rejected as obvious under 35 U.S.C. § 103(a)
over the combined teachings of Naidoo, Scholten, and Balog. Id. at 15–16.
Claims 35 and 74 stand rejected as obvious under 35 U.S.C. § 103(a)
over the combined teachings of Naidoo and Balog. Id. at 16–17.
Claims 39 and 78 stand rejected as obvious under 35 U.S.C. § 103(a)
over the combined teachings of Naidoo, Enns, and Balog. Id. at 17–18.

4 The Examiner withdraws the rejections previously entered against claims
79–87. Advisory Act. 1.
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V. ANALYSIS
1. Anticipation Rejection
Appellant argues, inter alia, that the Examiner errs in finding that
Naidoo describes a virtual gateway in a server external to the premises
gateway, which forwards state data of the premises devices to the virtual
gateway to determine control data for the premises devices, as recited in
independent claim 1. Appeal Br. 4. In particular, Appellant argues that the
Examiner fails to articulate the requisite reasoning or explanation regarding
how Naidoo’s disclosure of a security gateway communicating with an
external server describes that the server includes a virtual gateway. Id. at 4–
5; Reply Br. 2–4 (citing Naidoo ¶¶ 28, 53).
In response, the Examiner finds because Naidoo discloses a security
server receiving from a premises gateway a signal or notification including
operation data (e.g., alarm, status), the security server includes a virtual
gateway. Ans. 4–6 (citing Naidoo ¶¶ 49, 53).
Appellant’s arguments are persuasive of reversible Examiner error.
As a preliminary matter, we note Appellant’ Specification states the
following:
Embodiments include a cloud hub located in a premises,
and the cloud hub comprises adapters configured for coupling
to premises devices. The cloud hub is configured as a gateway
for the premises devices. The system includes a virtual gateway
located in a cloud server environment and coupled to the cloud
hub. The virtual gateway is configured as a server-side
abstraction of the cloud hub. The cloud hub and the virtual
gateway are configured as an automation platform that
maintains state data of the premises devices, controls
interaction among the premises devices, and monitors and
manages the premises devices.
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Spec., 5:21–28 (emphasis added).
Naidoo discloses a security system including a security gateway
located within a premises being monitored, wherein the security gateway
collects captured sensor data at the premises, and forwards the collected data
to a security server, which subsequently notifies monitored clients of
potential alarms including captured video information. Naidoo ¶¶ 28, 49, 53.
We do not agree with the Examiner that Naidoo’s security server
necessarily includes a virtual gateway. Ans. 4–5. Although the security
server performs the claimed functions of receiving status data from the
security gateway and the premises devices to notify associated clients of
possible security events, the Examiner has not explained how such functions
are necessarily performed by a virtual gateway within the server. To be
clear, Naidoo’s server 131 might disclose, or even teach or suggest, ‘a virtual
gateway,’ consistent with that term’s use in the Specification, but the
Examiner has not yet provided sufficient explanation supporting such a
finding, or an appropriate obviousness rejection, for us to assess. At a bare
minimum, the Examiner needs to show, consistent with the cited portions of
the Specification, that the cited functions are part of a server-side abstraction
of a cloud hub and, thereby, constitute a virtual gateway. Because the record
before us is further devoid of sufficient evidence that the security server
necessarily includes a virtual gateway, we agree with Appellant that the
Examiner fails to show Naidoo expressly or inherently discloses the disputed
limitations.
Because Appellant shows at least one reversible error in the
Examiner’s anticipation rejection of independent claim 1, we do not reach
Appellant’s remaining arguments. Accordingly, we do not sustain the
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Examiner’s anticipation rejection of independent claim 1. Likewise, we do
not sustain the rejection of claims 2–6, 8, 9, 11, 40–45, 47, 48, 50, 88, and
90, which also recite the disputed limitations.
2. Obviousness Rejections
Because claims 7, 10, 12–21, 23, 24, 26, 27, 29, 31, 32, 35, 37–39, 46,
49, 51, 52–60, 62, 63, 65, 66, 68, 70, 71, 74, 76, 77, 78, 89, and 91 recite the
disputed limitations of independent claim 1 discussed above, and the
Examiner does not rely on any of the secondary references for the
obviousness rejections to cure the noted deficiencies, we do not sustain the
Examiner’s obviousness rejections of claims 7, 10, 12–21, 23, 24, 26, 27, 29,
31, 32, 35, 37–39, 46, 49, 51, 52–60, 62, 63, 65, 66, 68, 70, 71, 74, 76, 77,
78, 89, and 91.
VI. CONCLUSION
For the above reasons, we reverse the Examiner’s rejections of claims
1–21, 23, 24, 26, 27, 29, 31, 32, 35, 37–60, 62, 63, 65, 66, 68, 70, 71, 74,
76–78, and 88–91.
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VII. DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8, 9, 11,
40–45, 47,
48, 50, 88, 90
102 Naidoo
1–6, 8, 9, 11,
40–45, 47,
48, 50, 88, 90
7, 15, 16, 26,
27, 29, 31,
32, 37, 38,
46, 54, 55,
65, 66, 68,
70, 71, 76,
77, 89, 91
103 Naidoo, Enns
7, 15, 16, 26,
27, 29, 31,
32, 37, 38,
46, 54, 55,
65, 66, 68,
70, 71, 76,
77, 89, 91
10, 12, 13,
49, 51, 52 103
Naidoo, Scholten 10, 12, 13, 49, 51, 52
17–21, 23,
24, 56–60,
62, 63
103
Naidoo, Enns, Scholten

17–21, 23,
24, 56–60,
62, 63
14, 53 103 Naidoo, Scholten, Balog 14, 53
35, 74 103 Naidoo, Balog 35, 74
39, 78 Naidoo, Enns, Balog 39, 78
Overall
Outcome
1–21, 23, 24,
26, 27, 29,
31, 32, 35,
37–60, 62,
63, 65, 66,
68, 70, 71,
74, 76–78,
88–91

REVERSED