Johnson Controls Technology Company

Patent Trials and Appeals Board

Jun 1, 2021

2020003271 (P.T.A.B. Jun. 1, 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.
15/143,373 04/29/2016 Sudhi Sinha 15BE035-US
(081445-0740)
1439
26371 7590 06/01/2021
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
COMINGS, DANIEL C
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
06/01/2021 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SUDHI SINHA, JOSEPH R. RIBBICH, MICHAEL L. RIBBICH,
CHARLES J. GAIDISH, and JOHN PETER CIPOLLA
____________

Appeal 2020-003271
Application 15/143,373
Technology Center 3700
____________

Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–26. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Johnson Controls Technology Company as the
real party in interest. Appeal Br. 2.
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Application 15/143,373

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CLAIMED INVENTION
Claims 1 and 18 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A thermostat, comprising:
a transparent touch screen display, wherein the matter
behind the display is visible in the non-active display portions to
allow a user to view a wall the thermostat is mounted on through
the transparent touch screen display; and
a control bar connected to one side of the transparent touch
screen display, wherein the control bar comprises:
a housing;
processing circuitry operably connected to the
transparent touch screen display and configured to monitor
and control building equipment; and
a temperature sensor operably connected to the
processing circuitry.

Appeal Br. 28 (Claims Appendix).

REJECTIONS
Claims 1–12 and 18–25 are rejected under 35 U.S.C. § 103 as
unpatentable over Novotny (US 2014/0319233 A1, pub. Oct. 30, 2014), and
Wu (US 2012/0001873 A1, pub. Jan. 5, 2012).
Claim 13 is rejected under 35 U.S.C. § 103 as unpatentable over
Novotny, Wu, and Summers (US 2009/0211171 A1, pub. Aug. 27, 2009).
Claim 14 is rejected under 35 U.S.C. § 103 as unpatentable over
Novotny, Wu, and Mayfield (US 2012/0126700 A1, pub. May 24, 2012).
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Application 15/143,373

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Claim 15 is rejected under 35 U.S.C. § 103 as unpatentable over
Novotny, Wu, and Goodman (US 9,696,055 B1, iss. July 4, 2017).2
Claims 16, 17, and 26 are rejected under 35 U.S.C. § 103 as
unpatentable over Novotny, Wu, and Grondal (US 5,428,912, iss. July 4,
1995).3

ANALYSIS
Independent Claims 1 and 18, and Dependent Claims 2–12 and 19–25
In rejecting independent claim 1 under 35 U.S.C. § 103, the Examiner
relies primarily on Novotny for disclosing the claim limitations. Final Act. 3
(citing Novotny ¶¶ 52, 78, 118, 181, Fig. 1). Novotny is titled “BATTERY
COMPARTMENT FOR AN HVAC CONTROLLER.” Novotny discloses
thermostat 10 having first sub-assembly 14 (e.g., a thermostat body) and
second sub-assembly 16 (e.g., a wall plate), such that second sub-
assembly 16 mounts on a wall, and first sub-assembly 14 connects with
second sub-assembly 16. Novotny ¶ 50. In particular, extensions 26 of first
sub-assembly 14 engage openings 28 of second sub-assembly 16. Id. ¶ 51,
Fig. 9.
First sub-assembly 14 includes housing 13 with cover 13a and
back 13b, which houses touch screen display 24, battery compartment 70,
and first printed circuit board (PCB) or printed wiring board (PWB) 19.

2 We treat dependent claim 15 as rejected over Novotny, Wu, and Goodman,
instead of Novotny and Goodman, in light of claim 15’s dependence from
claim 10. Final Act. 10–11.
3 We treat the Examiner’s omission of claim 26 from the rejection heading
as inadvertent error (Final Act. 11), in light of the Examiner’s rejection of
this claim at page 12 of the Final Office Action.
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Id. ¶ 57, Figs. 8–10; see also id. ¶¶ 6, 71. Second sub-assembly 16 includes
wall plate 18 and second PCB or PWB 20. Id. ¶ 62, Fig. 10. First PCB or
PWB 19 structurally complement one another. Id. ¶ 64. For example,
electronic components 22 extend from a first PCB or PWB to a second PCB
or PWB by varying distances. Id. ¶¶ 64–65. Back 13b of housing 13
includes apertures for accommodating inter-board connectors 30A–30B for
electrically connecting the first and second PCBs or PWBs. Id. ¶ 66. The
first PCB or PWB and second PCB or PWB have a non-overlapping region
that includes first portion 27a for carrying one or more batteries within
battery contacts 71 and second portion 27b for carrying a memory card
connector. Id. ¶ 70. A sensor internal to thermostat 10 may measure the
indoor temperature. Id. ¶¶ 181–82.
The Examiner acknowledges that Novotny does not teach the claimed
“transparent touch screen” and the claimed “control bar connected to one
side of the transparent touch screen display” having, in part, processing
circuitry connected to the transparent touch screen display and configured to
monitor and control building equipment, as recited in claim 1. Final Act. 13;
Ans. 15. However, the Examiner finds that Wu teaches transparent display
screen 30 and a touch screen 10 connected by a fixing member, and a
sensing device that includes control circuitry for the display disposed to one
side of the display. Final Act. 5 (citing Wu ¶ 11, Fig. 2).
Wu is titled “TRANSPARENT TOUCH SURFACE KEYBOARD”
and relates to a transparent touch surface keyboard for use with an electronic
device. Wu ¶ 2. “Touch surface keyboards have the advantage of providing
thinner, lighter input devices.” Id. ¶ 4. Wu’s transparent touch surface
keyboard 100 includes touch screen 10; transparent display screen 30; fixing
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member 50, which receives a side edge of touch screen 10; support
member 70, which is located below fixing member 50 and has a built-in
control circuit; and sensing device 90. Id. ¶ 11, Fig. 1. Touch screen 10,
transparent display screen 30, and sensing device 90 are electronically
connected to the control circuit of support member 70. Id. The control
circuit has a central processing unit (CPU) 20. Id. ¶ 17, Fig. 3. Sensing
device 90 includes transmitter module 92 for transmitting infrared (IR) light
and receiver module 92 for receiving IR light reflected from a user’s hand,
indicating that transparent touch surface keyboard 100 should switch from a
standby state to a working state. Id. ¶¶ 17–21, 30. By sensing whether the
user’s hands are above or on the touch screen through sensing device 90, and
switching between a working state and standby state accordingly, Wu’s
transparent touch surface keyboard 100 consumes less electrical energy.
Id. ¶ 30.
The Examiner reasons that it would have been obvious to modify
Novotny’s thermostat by moving the electronics behind the touch screen to a
housing along an edge of the touch screen display, and by changing the
touch screen display to a transparent display. See Final Act. 15; see also
Ans. 15–16. According to the Examiner, this modification would have been
obvious to one of ordinary skill in the art “to provide a display that is thin
and light . . . and offers reduced energy consumption when not in use.”
Final Act. 4. Yet, given the structural and functional differences between
Wu’s transparent keyboard 100 and Novotny’s thermostat 10, it is not clear
that the proposed modifications would make Novotny’s thermostat lighter or
reduce its energy consumption. Nor is it readily apparent how or why one of
ordinary skill in the art would move Novotny’s sensor and processing
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circuitry for monitoring and controlling building equipment from behind the
display and touch screen to a “control bar” connected to one side of a
transparent display based on Wu’s disclosure of a transparent touch surface
keyboard having support member 70.
For example, Novotny describes arranging the first PCB/PWB and the
second PCB/PWB in stacked layers behind the display to structurally
complement one another. See Novotny ¶ 63, Fig. 10. The components of
each board are arranged to align in certain instances, to provide a region for
carrying batteries and a connector, and to avoid damage caused by
electrostatic discharge (“ESD”) for sensitive components. See id. ¶¶ 64,
70, 78. The first PCB/PWB contains electronic components particularly
sensitive to ESDs because the display and touch screen positioned in front of
the first PCB/PWB (together with other surrounding structures) protect them
from ESDs. Id. ¶ 78. The second PCB/PWB contains electronic
components that are less sensitive to ESDs. Id.
Wu, in contrast, relates to a transparent touch surface keyboard, not a
thermostat for monitoring and controlling building equipment. As such,
Wu’s support member 70 fails to teach or suggest processing circuitry
configured to monitor and control building equipment, and a temperature
sensor, as required by the claimed “control bar” of claim 1. Instead, Wu’s
support member 70 houses a control circuit for the keyboard that comprises
central processing unit 20. See Wu ¶ 17, Fig. 3.
Because the Examiner does not adequately explain why or how one of
ordinary skill in the art would modify Novotny’s thermostat to arrive at the
claimed thermostat in view of Wu’s disclosure of a transparent touch surface
keyboard, we agree with Appellant that the Examiner’s rationale appears to
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be based on impermissible hindsight. See Reply Br. 5. Accordingly, we do
not sustain the Examiner’s rejection of independent claim 1 and dependent
claims 2–12 under 35 U.S.C. § 103 as unpatentable over Novotny and Wu.
Claim 18 recites language similar to claim 1, and the Examiner rejects
claim 18 by applying the same erroneous rationale used to reject claim 1.
See Final Act. 8 (“Regarding the limitations of claim 18, refer to the above
rejection of claim 1.”). Therefore, we do not sustain the rejection of
claim 18 and dependent claims 19–25 for the same reasons described above
with respect to claim 1.

Dependent Claims 13–17 and 26
The Examiner’s rejections of claims 13–17 do not cure the deficiency
in the rejection of independent claim 1. Therefore, we do not sustain the
Examiner’s rejections of claims 13–17 under 35 U.S.C. § 103.
The Examiner’s rejection of claim 26 does not cure the deficiency in
the rejection of independent claim 18. Therefore, we do not sustain the
Examiner’s rejection of claim 26 under 35 U.S.C. § 103.

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Application 15/143,373

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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
1–12, 18–
25
103 Novotny, Wu 1–12, 18–
25
13 103 Novotny, Wu,
Summers
13
14 103 Novotny, Wu,
Mayfield
14
15 103 Novotny, Wu,
Goodman
15
16, 17, 26 103 Novotny, Wu,
Grondal
16, 17, 26
Overall
Outcome
1–26

REVERSED